Ex Parte KANJLIA et al

Patent Trial and Appeal Board

Oct 29, 2018

14267421 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/267,421 05/01/2014
121629 7590
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
10/31/2018
FIRST NAMED INVENTOR
Gagan KANJLIA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
05793.3294-01 9873
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/31/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CapOne_USPTO@finnegan.com
regional-desk@finnegan.com
terri.mcmillan-solomon @finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAGAN KANJLIA, SCOTT ZIMMER, ROBERT J. LARSON,
ALEXANDERS. WILSON, VISHAL PURI, and JAY F POBER
Appeal2017-001465 1
Application 14/267 ,421 2
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 22-28, 30-38, and 40-43. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed May 23,
2016), Reply Brief ("Reply Br.," filed Oct. 31, 2016), the Examiner's
Answer ("Ans.," mailed Aug. 29, 2016), and the Final Office Action ("Final
Act.," mailed Dec. 23, 2015).
2 According to Appellants, the real party in interest is Capital One Financial
Corporation. Appeal Br. 3.
Appeal2017-001465
Application 14/267 ,421
BACKGROUND
According to Appellants, the embodiments disclosed in the
Specification "generally relate to payment systems, and more particularly, to
systems, processes, and computer programs for facilitating users to effect
personal payment transactions." Spec. ,r 2.
CLAIMS
Claims 22, 33, and 41 are the independent claims on appeal. Claim 22
is illustrative of the appealed claims and recites:
22. A system for providing personal payment transactions
compnsmg:
a processor at a server; and
a storage device at the server storing instructions that,
when executed by the processor, cause the system to perform
operations comprising:
receiving payee identifying information from
a client,
determining a confidence level
corresponding to one or more suggested recipients
for receiving a payment from a payer based on the
payee identifying information, the confidence level
indicating a likelihood each of the one or more
suggested recipients is the intended payee,
providing information reflecting the one or
more suggested recipients and confidence level
corresponding to each of the one or more suggested
recipients to the client,
receiving a selection of an identified payee
from the client,
determining one or more suggested payment
routing options to route the payment to the
identified payee,
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Appeal Br. 26-27.
determining whether at least one of the
suggested payment routing options involves a wait
time for delivering the payment and whether the
payee is willing to accept an additional cost for
expedite reception of the payment;
based on determining that the selected
routing option involves a wait time and the payee is
willing to accept an additional cost for expediting
the reception of the payment, determining the
eligibility of the payee to apply for a credit advance;
and
generating information used to generate a
second interface at the client including one or more
options for the payee to apply for the credit advance
when the payee is eligible.
REJECTIONS
1. The Examiner rejects claims 22-28, 30-38, 40-43 under 35 U.S.C. § 101
as claiming ineligible subject matter.
2. The Examiner rejects claims 22-27, 33-37, and 41 3 under 35 U.S.C.
§ I03(a) as unpatentable over Schumacher4 in view of Shah, 5 Henry, 6
Frohwein, 7 and Abhari. 8
3 Although claim 41 is not listed in the heading for this rejection, the body
of the rejection discusses this claim. See Final Act. 6-9.
4 Schumacher et al., US 8,321,383 B2, iss. Nov. 27, 2012.
5 Shah et al., US 2011/0202459 Al, pub. Aug. 18, 2011.
6 Henry, US 8,225,992 B2, iss. July 24, 2012.
7 Frohwein et al., US 2012/0054097 Al, pub. Mar. 1, 2012.
8 Abhari et al., US 2008/0015985 Al, pub. Jan. 17, 2008.
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3. The Examiner rejects claims 28 and 38 under 35 U.S.C. § I03(a) as
unpatentable over Schumacher in view of Shah, Henry, Frohwein,
Abhari, and Cervenka. 9
4. The Examiner rejects claims 30-32 and 40 under 35 U.S.C. § I03(a) as
unpatentable over Schumacher in view of Shah, Henry, Frohwein,
Abhari, Cervenka, and Ostrovsky. 10
5. The Examiner rejects claims 42 and 43 under 35 U.S.C. § I03(a) as
unpatentable over Schumacher in view of Shah, Henry, Frohwein,
Abhari, and Tidwell. 11
DISCUSSION
Subject Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589-90 (2013). Of course, "[a]t some level, 'all inventions
... embody, use, reflect, rest upon, or apply'" these basic tools of scientific
and technological work. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2354 (2014) ( citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
9 Cervenka et al., US 2012/0271765 Al, pub. Oct. 25, 2012.
10 Ostrovsky, US 8,032,457 B2, iss. Oct. 4, 2011.
11 Tidwell et al., 2005/0125351 Al, pub. June 9, 2005.
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into a patent-eligible invention." Id. (internal quotation marks and citations
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
As to the first step of the Alice framework, the Examiner finds that the
claims "are directed to a payment system which is a fundamental economic
practice." Final Act. 2-3 (citing Bilski v. Kappas, 561 U.S. 593 (2010)).
The "directed to" inquiry of the first Alice step "applies a stage-one filter to
claims, considered in light of the specification, based on whether 'their
character as a whole is directed to excluded subject matter.'" Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 11343, 1346 (Fed. Cir.
2015)). "The 'abstract idea' step of the inquiry calls [for] look[ing] at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)).
We agree with the Examiner's characterization of the claim and are
not persuaded of error by Appellants' arguments. See Appeal Br. 10-14; see
also Reply Br. 4--20. The steps of claim 33, for example, are focused on
achieving the result of processing a payment, e.g., the claim requires
"determining a confidence level" to determine that the recipient of the
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payment is the correct payee; "determining" payment routing options; and
"generating information" to allow a payee to apply for a credit advance.
Similarly, the identification of the abstract idea is consistent with the
Specification, which describes that the embodiments are generally related
"to payment systems" and to "facilitating users to effect personal payment
transactions." Spec. ,r 2. Finally, we agree with the Examiner that methods
of effecting payments are fundamental economic practices along the same
lines as risk hedging was found to be a fundamental economic practice in
Bilski. See Bilski, 561 U.S. 593, 611 (2010). Thus, the Examiner's citation
to Bilski alone represents a sufficient consideration of earlier cases under
Alice step one. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016); see also Reply Br. 8-9.
Turning to Alice step two, the Examiner finds that "[t]he claims do not
include additional elements that are sufficient to amount to significantly
more ... than the judicial exception." Final Act. 3. The Examiner indicates
that the specific claim steps are "insignificant extra solution activity" that are
merely themselves steps of enabling a program for effecting a payment
transaction scheme. Id. at 3--4. Further, the Examiner finds that the
additional elements provided in the system claims use only generic computer
systems using generic computer functions and the solutions are not
necessarily rooted in computer technology. Id. at 4--5.
We agree with the Examiner's findings regarding Alice step two, and
we are not persuaded by Appellants' arguments, as discussed below.
Appellants argue that the Examiner's analysis mischaracterizes
claim 22 by ignoring certain elements, and thus, the Examiner has failed to
consider the claim as a whole. Appeal Br. 15. Appellants assert that the
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Examiner has not provided a reasoned explanation as to why these additional
elements are widely prevalent or represent well-understood and conventional
activity. Id. at 15-16. We disagree. Appellants discuss the claim limitation
related to determining a confidence level, but we agree with the Examiner
that this itself is merely an abstract concept that enables the program to
effect the payment transaction scheme. And regarding the computer system
components, the Specification supports the Examiner's finding that these
include generic computer systems performing generic computer functions.
See, e.g., Spec. ,r,r 44, 45, 51 ( describing the computer components as
general purpose computers with off-the-shelf processors). Further,
Appellants only indicate, without adequate explanation, that these
components in combination perform functions that are not merely generic.
Appeal Br. 16.
Appellants also argue that claim 22, when considered as an ordered
combination, "demonstrate[ s] a technically rooted solution" that "amount[ s]
to significant[ly] more than merely performing payment transactions."
Appeal Br. 16. Appellants assert that claim 22 "addresses [an] internet-
centric challenge" related to making payments between remote payers and
payees. Id. at 17-18. Yet, Appellants do not adequately explain how such
problems are "internet-centric." The identified problems related to
processing payments, either locally or remotely, existed long before the
advent of the internet. Further, Appellants do not adequately explain how
the combination of elements represents a "solution that is necessarily rooted
in computer technology." See id. at 18. Rather, Appellants describe only
issues in which computers are used to automate manual processes. Id. For
example, Appellants assert that the claims provide a means for "facilitating
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decisions surrounding the potential routing of payments" or problems related
to a user having to "manually look up payee's information" or "manually
enter such information," which "is fraught with significant risks of
misdirected transfers of funds and assets simply as the result of a
typographic error." See id; see also Reply Br. 16; 25-27. We cannot agree
that systems that merely facilitate manual processes or provide greater
accuracy over entering information manually address technical problems or
are necessarily rooted in computer technology.
Finally, we note Appellants' arguments regarding preemption. See
Reply Br. 12, 19-20. Yet, "[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). "The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the § 101 analysis." Id.
Based on the foregoing, we are not persuaded of error, and we sustain
the rejection under 35 U.S.C. § 101.
Obviousness
We are persuaded by Appellants' argument that the Examiner has not
established that the art of record renders obvious the limitation in each of the
independent claims requiring a determination whether the payment routing
option involves a wait time and "whether the payee is willing to accept an
additional cost for expedite reception of the payment."
With respect to the rejection of each of the independent claims, the
Examiner relies on Abhari as follows:
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Abhari discloses routing options and whether the payee is
willing to accept an additional cost for expedite reception of the
payment, and indicates the payee is willing to accept an
additional cost for expedite reception of the payment [ Abstract;
Figs. 1--4, Fig. 6 (#154), Figs. 9-10, Fig. 17 (delivery time: 3
business days; same day $15.00), Fig. 18 (fee: $15.00), i-f03---07,
i-f 11, i-f32, ,I48, i-f93-96, ,II 87, i-f209]. It would have been obvious
to one ordinary practitioner at the time of invention to combine
the teaching of Schumacher, Shah, Henry, and Abhari to provide
online banking and payment system that provides customers
USR with the ability to make a "last minute" or same day
payment for an additional fee to avoid late charges for expedited
delivery [i-f249].
Final Act. 8-9 (bracketed material in original). Further, in the Answer, the
Examiner reiterates that Abhari is relied upon as teaching a determination of
whether the payee is willing to pay an additional fee to expedite receipt of a
payment. See Ans. 8.
Appellants argue that the art of record does not teach determining
whether the payor is willing to accept an additional cost to expedite receipt
of a payment. Appeal Br. 21-22. In particular, regarding the Examiner's
reliance on Abhari, Appellants argue that "Abhari at best discloses a system
that enables a payer to make an expedited payment to a payee and charges
the payer an additional fee for the expedited payment." Id. at 22 ( emphasis
omitted). Appellants assert that this does not teach a system in which it is
determined whether the payee is willing to pay an additional fee to receive
the payment. Id. We agree.
Abhari discloses systems for processing expedited payments in which
a user, i.e. a bill payer, may select to pay a fee to expedite a payment to a
payee. See, e.g., Abhari Abstract; ,r,r 11, 48, 49. In contrast, the claims
require making a determination regarding whether the payee is willing to
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accept an additional cost to expedite receipt of a payment. The Examiner
does not point to any portion of Abhari in which the payee is offered the
opportunity to pay a fee to expedite receipt of a payment. In fact, Abhari
appears to only be concerned with providing the benefit of an expedited
payment from the perspective of the bill payer. Further, the Examiner does
not go on to explain adequately why the claim limitation at issue would have
been obvious in view of Abhari or any of the art of record alone or in
combination. See Final Act. 6-9; see also Ans. 5-8.
Based on the foregoing, we are persuaded of error in the rejection of
independent claims 22, 33, and 41. For the same reasons and because the
Examiner does not rely on the art of record in a manner that cures the
deficiency in the rejection of the independent claims, we also find error in
the rejections of dependent claims 23-28, 30-32, 34--38, 40, 42, and 43.
Accordingly, we do not sustain the rejections of claims 22-28, 30-38, and
40-43 as obvious.
CONCLUSION
We AFFIRM the rejection of claims 22-28, 30-38, and 40-43 under
35 U.S.C. § 101. We REVERSE the rejections of claims 22-28, 30-38, and
40-43 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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