Ex Parte Loevenguth et al

Patent Trial and Appeal Board

Nov 5, 2018

12753694 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/753,694 04/02/2010
20350 7590 11/07/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Rebecca Loevenguth
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.
90945-781086 (011030US) 5182
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
11/07/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REBECCA LOEVEN GUTH and SANJA Y CHALLANI
Appeal2017-005544 1
Application 12/753,6942
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20 and 22-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed April 29,
2016) and the Examiner's Answer ("Ans.," mailed November 17, 2016) and
Final Office Action ("Final Act.," mailed November 27, 2015).
2 Appellants identify "The W estem Union Company of Englewood,
Colorado" as the real party in interest. Br. 2.
Appeal2017-005544
Application 12/753,694
CLAIMED INVENTION
Appellants' claimed invention relates to "[ m ]ethods and systems for
redirecting the funds in a money transfer transaction" (Spec., Abstract).
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for redirecting funds during a money
transfer process, the method occurring at a redirection system,
the method comprising:
receiving, at the redirection system, a redirection request
from a recipient of the money transfer, the redirection request
being a first communication between the recipient and the
redirection system regarding the money transfer and the
redirection request instructing that the funds of the money
transfer be redirected from an intended destination to a new
destination, wherein the request comprises identification
information of the recipient;
communicating, via the redirection system, with a
database associated with an account provider to verify that the
recipient has an account associated with the account provider;
receiving, at the redirection system, a transaction identifier
from the recipient, wherein the transaction identifier associates
the money transfer with the recipient;
sending, via the redirection system, the transaction
identifier to a money transfer facilitator, wherein the transaction
identifier is used to obtain a recipient identifier from the money
transfer facilitator, the recipient identifier including personal
information of the recipient;
receiving, at the redirection system, the recipient identifier
from the money transfer facilitator;
verifying, via the redirection system, that the identification
information provided by the recipient matches with the recipient
identifier received by the money transfer facilitator to a
predetermined level of certainty; and
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in the event that the match is acceptable, sending, via the
redirection system, a redirection instruction to the money transfer
facilitator to redirect the funds of the money transfer from the
intended destination to the new destination, wherein the
redirection system comprises one or more non-transitory
computer-readable medium having instructions stored thereon
that are used to execute the above method.
REJECTIONS
Claims 1-20 and 22-24 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1-20 and 22-24 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Weichert et al. (US 2005/0267842 Al, pub. Dec. 1, 2005)
("Weichert") and Ostrovsky (US 2010/0205095 Al, pub. Aug. 12, 2010).
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
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issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending clams under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "redirecting a funds
transfer from an original destination account to a second destination account
where the funds recipient wishes the funds to be received," which the
Examiner reasoned is a fundamental economic practice and/or a method of
organizing activities, and, therefore, an abstract idea (Final Act. 2). The
Examiner also determined that the claims do not include additional elements
sufficient to amount to significantly more than the abstract idea because
"[t ]he additional elements or combination of elements in the claims other
than the abstract idea per se amounts to no more than: (i) mere instructions
to implement the idea on a computer, and/or (ii) recitation of generic
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computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry" (id. at 2-3).
Appellants ostensibly do not dispute the Examiner's determination
that the claims are directed to an abstract idea. Instead, Appellants maintain
that the claims are patent eligible because "significantly more than the
alleged abstract idea is present" in the independent claims (Br. 4).
Citing independent claim 1, for example, Appellants assert that
"personal finance management technology" is improved by "allowing
recipients of funds to conveniently use the invention to move anticipated
funds prior to their arrival, instead of having to resort to traditional methods,
or even travelling to a financial institution, after such a transfer is
completed" (id. at 5). Yet, the focus of claim 1 is not on the improvement of
any technological process, but rather on implementation of the abstract idea
itself, i.e., "redirecting a funds transfer from an original destination account
to a second destination account where the funds recipient wishes the funds to
be received." The Specification supports this view, noting the "need in the
art for methods and systems that allow a recipient of funds to redirect the
funds after the money transfer has been initiated" (Spec. ,r 3), and disclosing
that the claimed invention "provide[s] transfer options to a sender and/or
recipient of funds in a money transfer process including the option to
redirect funds from an intended destination to a new destination" (id. ,r 4).
It appears clear, when considered in light of the Specification, that the
focus of the claimed invention, as recited in claim 1, is on achieving a
personal or business objective (i.e., effective money management), and not
on any claimed means for achieving that goal that improves technology. We
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are not persuaded that money management is a technical problem or that
"personal finance management" is a technical field.
Appellants summarily assert that "other technological areas may also
be improved by the claims" (Br. 5). But, that argument is not persuasive at
least because Appellants neither identify these "other technological areas"
nor explain how, or in what way, these technological areas are allegedly
improved.
Appellants next argue that the claims are patent eligible because
"[p ]articular, non-generic, machines/computers are necessary to implement
the systems and methods of the claims" (id.). That argument likewise fails.
We find no indication in the record, nor do Appellants direct us to any
indication, that the particular operations recited in the claims require any
specialized computer hardware or other inventive computer components,
invoke any assertedly inventive programming, or that the claimed invention
is implemented using other than generic computer components. In fact, the
Specification suggests just the opposite, i.e., that the claimed invention is
implemented using only generic computer components (see, e.g., Spec.
,r,r 40-42).
Appellants further argue that rejection cannot be sustained because
"[e]ach of claims 1, 9, and 17 includes specific limitations other than what is
well-understood, routine and conventional in the field, or add
unconventional steps that confine the claim to a particular useful
application" (Br. 5). Yet, to the extent Appellants maintain that the claimed
invention is patent eligible, i.e., that the claims amount to "significantly
more" than an abstract idea, and/or that the recited functions are not "well-
understood, routine, and conventional," because the claims are allegedly
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novel and/or non-obvious in view of the prior art (see, e.g., id. at 6 ("Novel
and non-obvious claims, by their very definition, must include limitations
other than what is well-understood, routine, and conventional in the field, or
else they wouldn't be novel and non-obvious.")), Appellants misapprehend
the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355 (citation omitted). "Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 101 inquiry."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013). A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-20 and 22-24 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
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Obviousness
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1, 9, and 17 under 35 U.S.C. § 103(a) at least
because Ostrovsky, on which the Examiner relies, does not disclose or
suggest that the redirection request is the first communication between the
recipient and the redirection system regarding the money transfer, i.e.,
receiving, at the redirection system, a redirection request from a
recipient of the money transfer, the redirection request being a
first communication between the recipient and the redirection
system regarding the money transfer and the redirection request
instructing that the funds of the money transfer be redirected
from an intended destination to a new destination, wherein the
request comprises identification information of the recipient[,]
as recited in claim 1, and similarly recited in claims 9 and 17 (Br. 6-8).
Ostrovsky is directed to a method and system for transferring
electronic funds over the Internet, and discloses that when a sender provides
payment information to the transfer processing system, the system sends an
electronic payment message to a recipient indicating the transfer of funds
and a transfer message to a financial institution providing instructions to
debit the sender's account and make those funds available to the recipient
(Ostrovsky, Abstract). Ostrovsky discloses an embodiment, with reference
to Figure 5, in which the payor and payee are both subscribers to the transfer
processing system (id. ,r 56). Thus, once the subscriber payor inputs
payment information, the transfer processing system sends a transfer
message to a transfer processing system associated with a financial
institution where the payee's account is opened; the funds are then directly
transferred from the subscriber payor's personal account into the subscriber
payee's personal account, and the subscriber payee receives a confirmation
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message that the funds have been transferred and are now available (id.
,r 57). At this point, the subscriber payee may withdraw the funds, redirect
the funds, monitor the transaction, and/or perform other related activities
(id.).
Ostrovsky discloses that the payee need not be a system subscriber to
retrieve money (id. ,r 68), and describes that a non-subscriber payee, e.g., Joe
Jones, may "access the web-site of the present invention to access the funds
transferred" (id. ,r 69). Ostrovsky describes, in this example, that Joe Jones
enters the payor's name and a payment control number provided in a
payment message sent by email from the transfer processing system, and a
password sent by a separate communication method (id.). Joe Jones may
then access the money, and redirect the funds to another party, e.g., Green
Lawn's corporate account (id.; see also id. ,r 94).
In rejecting claims 1, 9, and 17 under§ 103(a), the Examiner takes the
position that the portion of the transfer processing system that processes
redirection requests is a separate system, i.e., a type of redirection system,
and that the redirection request from the recipient can, therefore, be
considered a first communication between the recipient and this redirection
system (Final Act. 9; see also Ans. 4). We find nothing in the cited portions
of Ostrovsky, however, that discloses or suggests that the redirection request
is processed by a separate redirection system or subsystem within the
transfer processing system. Additionally, as Appellants observe, any
redirection request received by the Ostrovsky transfer processing system is
not the first communication between the recipient and the transfer
processing system. Instead, Ostrovsky discloses that a
payment/confirmation message is sent to the payee after the payor has
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provided transfer information to the system, and that the payee, on receiving
this message, may then redirect the transferred funds (see, e.g., Ostrovsky
,r 57).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 9, and 1 7. For the same reasons, we also do not
sustain the rejection of dependent claims 2-8, 10-16, 18-20, and 22-24.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
DECISION
The Examiner's rejection of claims 1-20 and 22-24 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 1-20 and 22-24 under 35 U.S.C.
§ 103(a) is reversed.
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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