Ex Parte Loman et al

Patent Trials and Appeals Board

Jun 14, 2019

13906996 - (D) (P.T.A.B. Jun. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/906,996 05/31/2013 Jeff Loman
132906 7590 06/18/2019
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
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.
70481.869_82053 3814
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
06/18/2019 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF LOMAN, ADAM PRISHTINA, EGAN SCHULZ,
TIM SMITH, and LAURA WARD
Appeal 2017-011420
Application 13/906,996
Technology Center 3600
Before BARBARA A. PARVIS, CARLL. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
PARVIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-011420
Application 13/906,996
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-24. App Br. 10. 1 We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
II. THE INVENTION
Appellants' 2 disclosed invention relates to managing online payments.
Spec. ,r 2. Independent claim 1 is representative3 of the appealed claims.
Independent claim 1 with emphasis added recites
[a] system comprising:
a non-transitory memory storing data associated with a user
account information; and
one or more hardware processors coupled to the non-transitory
memory and configured to retrieve data associated with the
stored user account information, the data comprising:
an identity of a payer owing the user money;
a first obligation between the payer and the user;
an identity of a payee to whom the user owes money; and
a second obligation between the user and the payee; and
the one or more hardware processorsfurther configured to
read instructions from the nontransitory memory to cause
the system to perform operations comprising:
identify a first image associated with the user;
1 All citations to the "Appeal Brief' or "App. Br." are to the Appeal brief
mailed on March 18, 2016.
2 Appellants indicate the real party in interest is PAYPAL, Inc. App Br. 2.
3 Appellants argue claims 1-24 together as a group. See App. Br. 10, 15-16,
18-19. Accordingly, we select independent claim 1 as representative. See
37 C.F.R. § 4I.37(c)(l)(iv).
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identify a second image associated with the payer;
identify a third image associated with the payee;
generate an interactive display of a payment tree using the.first,
second, and third images, the.first image located at a top
portion of the interactive display, the second image located
at a .first side portion of the interactive display and
co11:figured as a.first selectable button, and the third image
at a second side portion of the interactive display opposite
the first side portion and configured as a second selectable
button;
cause a display of a user device to display the generated
interactive display of the payment tree, wherein the payment
tree displays a.first parameter dependent on a.first
obligation between the payer and the user and a second
parameter dependent on a second obligation between the
user and the payee;
receive, from the user device, a selection of the second and
third images from the user device;
cause a display of the second and third images to move into
alignment and display a third selectable button in response
to the selection of the.first and second selectable buttons;
and
in response to receiving a selection of the third selectable
button, causing the first obligation between the payer and
the user to be transferred to the payee to satisfy at least part
of the second obligation between the user and the payee and
transmitting a notffication to the payer and the payee of the
transfer.
App. Br. 22-23 (Claims Appendix). 4
4 For ease of reference, emphasis is added to claim recitations throughout
this Decision.
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III. THE REJECTION5
Claims 1-24 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 2-14.
IV. ANALYSIS
A. Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See id. at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
5 Throughout this opinion, we refer to the Final Action mailed October 20,
2015 ("Final Act."); the Examiner's Answer mailed July 12, 2017 ("Ans.");
and the Reply Brief filed September 12, 2017 ("Reply Br.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 67---68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S.
175, 192 (1981)); "tanning, dyeing, making waterproof cloth, vulcanizing
India rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221. "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [ abstract idea]."' Id.
(alterations in original) ( quoting Mayo, 566 U.S. at 77). "[M]erely
requir[ ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (USPTO Jan. 7, 2019) ("Guidance"). Under that guidance, we first
look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed. Rev.
08.2017, Jan. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
B. The Examiner's Rejection
The Examiner determines that although representative claim 1 is a
system, the claim is directed to a judicial exception: an abstract idea. Final
Act. 5-6; Ans. 3-5. According to the Examiner, claim 1 is directed to
methods of organizing human activities, in particular, the fundamental
economic practice of performing financial transactions or facilitating
payments. Final Act. 6; Ans. 5. The Examiner also determines that claim 1
is directed to mathematical relationships and formulas. Id.
C. Discussion-Claim 1
We have reviewed the Examiner's rejection in light of Appellants'
contentions that the Examiner has erred. We disagree with Appellants'
contentions. Except as noted below, we agree with the Examiner and adopt
as our own the findings and reasons set forth by the Examiner in the Final
Action from which this appeal is taken; and the reasons set forth by the
Examiner in the Examiner's Answer in response to Appellants' Appeal
Brief. Final Act. 5-8; Ans. 3-13. We concur with the Examiner's
conclusions. We highlight the following additional points.
According to the Specification, difficulties arise with tracking and
managing "everyone who owes money and is owed money" and
"collect[ing] money from others and pay[ing] others." Spec. ,r 4. The
Specification describes showing "who a user owes money to (people or
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entities/accounts) on one side" and "who the user is owed money by (people
or entities/accounts) on the other side." Id. ,r 10. The "easy" to use visual
interface is "for managing money owed by and to the user and to facilitate
payments between the two sides." Id. ,r 12; see also id. ,r 29 ("[U]sing
embodiments described herein, a user can easily see and understand who the
user owes money to and who owes the user money and in what amounts" so
that the user can "satisfy, partially or completely, various obligations by
having one or more user payer pay one or more user payee directly").
D. Does the claim recite ajudicial exception?
In the rejection, the Examiner indicates "the claim describes steps for
facilitating fund transfers between entities," which is "similar to other
concepts that have been identified by the courts as abstract, such as a
fundamental economic practice ( e.g., performance of financial transactions),
as well as certain methods of organizing human activity ( e.g., managing
transactions between people)" and "mathematical relationships and/or
formulas (e.g., generating a financial analysis output; calculating the
differences between data values, etc.)." Final. Act. 6; Ans. 5. The Examiner
determines that the claim, therefore, is directed to an abstract idea. Id.
Viewing the Examiner's rejection through the lens of the Guidance,
we first consider whether the claim recites a judicial exception. Guidance,
84 Fed. Reg. at 51. In particular, we consider subject-matter groupings as
follows: mathematical concepts, certain methods of organizing human
activities ( e.g., a fundamental economic practice), and mental processes. Id.
at 52. For the reasons discussed below, claim 1 recites an abstract idea that
falls in the Guidance's groupings of mathematical concepts and certain
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methods of organizing human activities, e.g., a fundamental economic
practice.
First, claim 1 recites "retriev[ing] data associated with the stored user
account information, the data comprising: an identity of a payer owing the
user money; a first obligation between the payer and the user; an identity of
a payee to whom the user owes money; and a second obligation between the
user and the payee," and ''perform[ing] operations comprising: identify a
first image associated with the user; identify a second image associated with
the payer; identify a third image associated with the payee." The recitation
of "retriev[ing] . .. data" comprising "an identity of a payer owing the user
money; a first obligation between the payer and the user; an identity of a
payee to whom the user owes money; and a second obligation between the
user and the payee" pertains to a method of organizing human activity,
specifically the fundamental economic practices of commercial interactions
and sales activities. Cf Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that concept of "local
processing of payments for remotely purchased goods" is a "fundamental
economic practice, which Alice made clear is, without more, outside the
patent system"); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362---63 (Fed. Cir. 2015) (concluding that claimed concept of "offer-based
price optimization" is an abstract idea "similar to other 'fundamental
economic concepts' found to be abstract ideas by the Supreme Court and
this court" after considering "the claims' recitation of ... 'gathering
... statistics generated during said testing about how the potential customers
responded to the offers"'). Each image in claim 1 is a simply visual
representation associated with the user, the payer, and the payee,
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respectively. Ans. 6; see also Spec. ,r 10 ( describing "a visual representation
( e.g., a photo or text), a name, and an amount"). Such visual representation
could be set forth in a written record or conveyed by written communication,
for example, from a bank or bill collector. The recitation of identifying
these images pertains to the same method of organizing human activity,
specifically the fundamental economic practices of commercial interactions
and sales activities.
Second, claim 1 recites "generat[ing] . .. a payment tree using the
first, second, and third images, the first image located at a top portion ...
the second image located at a first side portion ... and the third image at a
second side portion ... opposite the first side portion" and "wherein the
payment tree [depicts] a first parameter dependent on a first obligation
between the payer and the user and a second parameter dependent on a
second obligation between the user and the payee." Organizing payment
information in a tree-form so the user can understand who the user owes
money to and who owes the user money and in what amounts pertains to the
same method of organizing human activity, specifically the fundamental
economic practices of commercial interactions and sales activities. Cf
Inventor Holdings, 876 F.3d at 1378 (holding that concept of"local
processing of payments for remotely purchased goods" is a "fundamental
economic practice"); OIP Techs., 788 F.3d at 1362---63 ( concluding that
claimed concept of "offer-based price optimization" is an abstract idea); see
also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed.
Cir. 2015) ( determining claim ineligible although it involves "arranging a
hierarchy of organizational and product groups" and "sorting pricing
information").
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Third, claim 1 recites "in response to receiving a selection ... causing
the first obligation between the payer and the user to be transferred to the
payee to satisfy at least part of the second obligation between the user and
the payee and transmitting a notification to the payer and the payee of the
transfer." Making a payment by directing money owed to satisfy one of the
user's obligations pertains to the same method of organizing human activity,
specifically the fundamental economic practices of commercial interactions
and sales activities, as discussed above with respect to the prior recitations.
Additionally, determining the extent the obligation is satisfied also pertains
to a mathematical concept, in particular a mathematical formula. Cf SAP
Am. Inc. v. InvestPic LLC, 898 F.3d 1161, 1163, 1168 (Fed. Cir. 2018)
(holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas).
For all the above reasons, claim 1 recites an abstract idea that falls in
the Guidance's groupings of mathematical concepts and certain methods of
organizing human activities, specifically the fundamental economic
practices of commercial interactions and sales activities. Fair Warning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-
ineligible claims were directed to a combination of abstract ideas).
E. Is the claim "directed to" the recited judicial exception?
Because claim 1 recites an abstract idea, we now proceed to determine
whether the recited judicial exception is integrated into a practical
application. Guidance, 84 Fed. Reg. at 51. When a claim recites a judicial
exception and fails to integrate the exception into a practical application, the
claim is "directed to" the judicial exception. Id.
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The claim may integrate the judicial exception when, for example, it
reflects an improvement to technology or a technical field. Id. at 55. Here,
the problem to be solved, according to the Specification, relates to
difficulties that arise with tracking and managing "everyone who owes
money and is owed money" and "collect[ing] money from others and
pay[ing] others." Spec. ,r 4. The described improvement is a visual
interface "for managing money owed by and to the user and to facilitate
payments between the two sides." Id. ,r 12; see also id. ,r 29 ("[U]sing
embodiments described herein, a user can easily see and understand who the
user owes money to and who owes the user money and in what amounts" so
that the user can "satisfy, partially or completely, various obligations by
having one or more user payer pay one or more user payee directly").
Claim 1 recites "[a] system comprising: a non-transitory memory"
and "one or more hardware processors coupled to the non-transitory
memory and configured to retrieve data." At best, the "one or more
hardware processors" simply execute the process described above by
reading data from memory, including instructions that cause the system to
perform operations to execute the judicial exception. Guidance, 84 Fed.
Reg. at 55. The processor can be a general-purpose computer. Spec. ,r 13
( describing that "the payment provider device may be a server, processor, or
other computing device that is able to receive electronic information"), ,r 4 7
( describing "processor 512" as "a micro-controller, digital signal processor
(DSP), or other processing component"). But the claimed one or more
processors, which may be one or more general-purpose processors, merely
execute the judicial exception and do not comprise a particular machine. See
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Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); cited in
MPEP § 2106.05(b )(I).
Claim 1 also recites "the one or more hardware processors further
configured to read instructions from the non-transitory memory to cause the
system to perform operations" to
generate an interactive display of a payment tree using the.first,
second, and third images, the.first image located at a top
portion of the interactive display, the second image located
at a .first side portion of the interactive display and
co11:figured as a.first selectable button, and the third image
at a second side portion of the interactive display opposite
the.first side portion and co11:figured as a second selectable
button.
The "one or more hardware processors" read instructions from
memory to "generate an interactive display of a payment tree," which
simply is payment information organized in a tree-form. We are not
persuaded by Appellants' arguments that the aforementioned "interactive
display of a payment tree" is "a very specific type of dynamic user interface
with very specific functionality" and, therefore claim 1 is not directed to an
abstract idea. App. Br. 14--15. Instead, the payment tree is a visual
representation of a user at the top, the payer on one side, and the payee on
the other side, so the user can understand who the user owes money to and
who owes the user money and in what amounts. That specificity does not
remove claim 1 from the abstract realm. Cf Versata, 793 F.3d at 1334
( determining claim ineligible although it involves "arranging a hierarchy of
organizational and product groups" and "sorting pricing information"); SAP,
898 F .3d at 1168 ( distinguishing cases holding claims patent eligible
because "[h Jere . . . the focus of the claims is ... an improvement in wholly
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abstract ideas-the selection and mathematical analysis of information,
followed by reporting or display of the results) (emphasis added).
Claim 1 also recites that "the one or more hardware processors"
"cause a display of a user device to display the generated interactive
display" and "receive[] from the user device" user selections. As noted in
the prior recitation, the "interactive display" has "selectable button[s]." The
user device also may be a general-purpose computer. See, e.g., Spec. ,r 13
( describing exemplary user devices as "a smart phone, PC, computing tablet,
or other computing/communication device"). The claim does not rely on a
particular machine, because accepting selections from a user and generating
a display are functions which any general purpose computer is capable. See
MPEP § 2106.05(b ).
Claim 1 further recites that "the one or more hardware processors"
cause "the first obligation between the payer and the user to be transferred
to the payee to satisfy at least part of the second obligation." The claim
merely recites the parties to the financial transfer and which financial
obligation is satisfied, which are details relating to the financial transaction,
i.e., the method of organizing human activity, in particular the fundamental
economic practices discussed above. As discussed in Section IV.D,
determining the extent an obligation is satisfied also pertains to a
mathematical concept, in particular a mathematical formula. Apart from the
financial transaction details, the claim broadly recites "to be transferred''
without any technical detail and is nothing more that insignificant extra-
solution activity that is insufficient to impart eligibility. Cf CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-73 (Fed. Cir. 2011)
(insignificant extra-solution activity is insufficient to impart eligibility);
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cited in MPEP § 2106.05(g). That payment may be facilitated by a
computer, may not render the claim eligible. Cf Bancorp Servs., L.L. C. v.
Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter."); cited in MPEP § 2106.05(g).
Appellants summarily assert that, similar to the claims at issue in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
claim 1 is directed to a solution "necessarily rooted in computer technology,
as the claims are directed to a specific user interface configuration and
functionality for a computing device." App. Br. 15. But Appellants do not
identify the technical problem that the claim allegedly solves. As discussed
above in this Section and in Section IV.D, organizing payment information
in a tree-form so the user can understand who the user owes money to and
who owes the user money and in what amounts pertains to a method of
organizing human activity, specifically the fundamental economic practices
of commercial interactions and sales activities. Here, we do not find, and
Appellants do not identify, any modification to the routine and conventional
functioning of computer technology analogous to DDR Holdings.
Additionally, we are not persuaded by Appellants' arguments, citing
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) and Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), that claim 1 is "clearly directed to an improvement in computer-
related technology." Reply Br. 5. As support, Appellants point to "the
Specification's emphasis on improving computer-related technology"
including "how the display is interactive such that the user can select a
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displayed payee and a displayed payer for a payment directly." Reply Br. 6
( citing Spec. ,r,r 24, 26, 27).
The Specification describes the present application as solving
difficulties that arise with tracking and managing "who owes money and is
owed money" (Spec. ,r 4) with a visual interface "for managing money owed
by and to the user and to facilitate payments between the two sides" (id.
,r 12), which is not an improvement in computer-related technology. Each of
the payment processor and the user device may be a general-purpose
computer. See, e.g., id. ,r 13. Contrary to Appellants' contentions regarding
emphasis on "how" the display is interactive (Reply Br. 6), the first portion
of the Specification identified by Appellants, instead, describes varying
ways that a user's financial obligation may be satisfied including "a user
may select a payer that owes the user $100 and a payee that the user owes
$100 so that the payer can pay the payee directly to cancel both obligations
completely," or "the user may select a payee that the user owes $200" to
reduce the user's obligation. Id. ,r 22. 6 Regarding the interactive nature of
the display, the remaining portions of the Specification relied upon by
Appellants describe that "[s]election may be made in any suitable way." Id.
,r 24; see also id. ,r 25 ("Selection may be the same as in step 118.") We find
no indication in the Specification, nor do Appellants direct us to any
indication, that the operations recited in claim 1, for example, invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
6 Paragraphs 22, 24, and 25 of the Specification are the same as paragraphs
24, 26, and 27 of Published Application US 2014/0108240 Al to which
Appellants refer.
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or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions.
In this way, claim 1 is unlike the technology-based integrations cited
by Appellants. Enfzsh, 822 F.3d at 1337 (holding that the patent-eligible
claim was directed to a self-referential table to improve computer
databases); McRO, 837 F.3d at 1314 (explaining that the patent-eligible
claim focused on a specific asserted improvement in computer animation).
Regarding Enfzsh, our reviewing court found, "the plain focus of the claims
is on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity." Enfzsh,
822 F.3d at 1336.
The claims do not rely on a particular machine (MPEP § 2106.05(b))
or transform a particular article to a different state or thing (MPEP
§ 2106.05( c )). Instead, the claims are merely instructions to implement a
payment, which is a method of organizing human activity, specifically the
fundamental economic practices of commercial interactions and sales
activities. See MPEP § 2106.05( e ), (f), (h). The claimed invention involves
only insignificant data gathering, displaying, and storage which amount to
insignificant extra-solution activity. See MPEP § 2106.05(g). Therefore,
the claims do not integrate the judicial exception into a practical application.
See MPEP § 2106.05(a}-(c), (e}-(h).
On this record, claim 1 is directed to the identified abstract idea. See
Ans. 3-8.
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F. Does the claim provide an inventive concept?
To determine whether a claim provides an inventive concept, the
additional elements are considered-individually and in combination-to
determine whether they ( 1) add a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56.
Claim 1 recites "[a] system comprising: a non-transitory memory
storing data associated with a user account information; and one or more
hardware processors coupled to the non-transitory memory and configured
to retrieve data." Claim 1 does not recite with specificity how data is stored
in memory and, instead, uses memory generically for data storage and
retrieval. Thus, the recited "non-transitory memory storing data" and data
retrieval by "one or more hardware processors" are well-understood,
routine, and conventional. See MPEP ,r 2106.0S(d)(II)(iv).
Claim 1 also recites "the one or more hardware processors further
configured to read instructions from the non-transitory memory to cause the
system to perform operations" to
generate an interactive display of a payment tree using the.first,
second, and third images, the.first image located at a top
portion of the interactive display, the second image located
at a .first side portion of the interactive display and
co11:figured as a.first selectable button, and the third image
at a second side portion of the interactive display opposite
the first side portion and configured as a second selectable
button.
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We are not persuaded by Appellants' arguments that aforementioned
recitation is "a very specific interface tailored to the user" and, therefore, is
an example of a meaningful limitation. App. Br. 17. Appellants assert that
the tailoring is "based on obligations." Id. (emphasis added). But
organizing based on financial obligations pertains to the abstract idea.
Contrary to Appellants' contentions, claim 1 recites displaying stored
financial data. Electronic recordkeeping is an example of a well-understood,
routine, conventional function when claimed generically, as is the case here.
See MPEP § 2106.05( d)(II)(iii). The "selectable button[ s ]" also are well-
understood, routine, and conventional. Cf id.§ 2106.0S(d)(vi) (describing
as another example "[a] web browser's back and forward button
functionality"). Essentially, the claim uses one or more general-purpose
processors to execute the abstract idea. For these reasons, the recited
hardware processors add nothing more than well-understood, routine,
convention activities, specified at a high level of generality, to the abstract
idea.
Claim 1 also recites that "the one or more hardware processors"
"cause a display of a user device to display the generated interactive
display" and "receive[] from the user device" user selections. The claim
recites merely causing the user device to perform functions and receiving
selections from the user device, which also may be a general-purpose
computer (see, e.g., Spec. ,r 13). The claim's recitation of transferring
information and instructions between two general-purposes computers is
well understood, routine, and conventional. Cf MPEP ,r 2106.0S(d) (II)(i).
Claim 1 further recites that "the one or more hardware processors"
cause "the first obligation between the payer and the user to be transferred
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to the payee to satisfy at least part of the second obligation." Apart from the
financial transaction details discussed above in Sections IV.D and IV.E, the
claim broadly recites "to be transferred" without any technical detail and
does not recite any technical improvement to how funds are transferred. As
discussed in Section IV.D, determining the extent an obligation is satisfied
also pertains to a mathematical concept, in particular a mathematical
formula. The claim recites transferring payment, which, apart from the
mathematical calculations, is simply updating data stored in memory and is
well understood, routine, and conventional. Cf MPEP ,r 2106.0S(d) (II)(iv).
Other recitations in claim 1 discussed above in Section IV.Dare not
additional elements beyond the abstract idea, but rather are directed to the
abstract ideas of organizing human activity, specifically the fundamental
economic practices of commercial interactions and sales activities, and the
mathematical concept, in particular a mathematical formula, as discussed
previously. Furthermore, in the arrangement recited in claim 1, including
the recitations discussed above in this Section as well as those discussed in
Sections IV.D and IV.E, the processor simply retrieves data, generates a
display, accepts a user's selections, and transfers payment. The limitations
in claim !----considered individually and as an ordered combination----do not
add significantly more than the abstract idea to provide an inventive concept.
Appellants direct our attention to the Federal Circuit's decision in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016); and Appellants argue that the claims are
unconventional because the interface is "tailored to the user by using images
that are associated with the user and images of the payer/payee that [are]
also linked to the user based on obligations." Reply Br. 9. We are not
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persuaded by Appellants of a parallel between claim 1 and the claim in
BASCOM. BASCOM's patent-eligible ordered combination of claim
limitations improves the performance of the computer system itself with a
"technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems." 827
F.3d at 1350-51. Appellants do not identify any inventive concept in the
recited combination of steps here or any specific arrangement of computing
components.
On this record, the limitations in claim !----considered individually
and as an ordered combination----do not provide an inventive concept. See
Ans. 9-12.
G. Other Arguments
We find unavailing Appellants' contention that the claims "have no
possibility of monopolizing the alleged abstract idea of 'facilitating funds
transfers between entities visually in an automated manner."' App. Br. 19.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
"[Q]uestions on preemption are inherent in and resolved by the § 101
analysis," which has been applied here. Id.
We also are not persuaded by Appellants' arguments that the
Examiner, in rejecting the claims under § 101, failed to establish a prima
facie case of patentability because the Examiner provided limitation-by-
limitation analyses citing applicable cases and Appellants did not have
difficulty, as evidence by their Appeal Brief, in preparing a substantive
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response. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132).
We, therefore, are not persuaded that the Examiner erred in rejecting
independent claim 1.
H. Discussion-Claims 2-24
Our analysis above of claim 1 also applies to claims 2-24.
Independent claims 9 and 17 include substantially the same limitations as
claim 1 and are ineligible for the same reasons given for claim 1. Dependent
claims 2-8, 10-16, and 18-24 recite details that considered individually or
in combination do not alter our analysis above. We agree with the Examiner
regarding claims 2-24 and adopt as our own the findings and reasons set
forth by the Examiner in the Final Action from which this appeal is taken;
and the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief. Final Act. 8-14; Ans. 8-9, 11-13.
Appellant does not argue separately with particularity claims 2-24. App. Br.
16, 18-20; Reply Br. 8, 10. 7 We, therefore, also are not persuaded that the
Examiner erred in rejecting claims 2-24.
I. Conclusion
The Examiner did not err in rejecting claims 1-24 under§ 101.
7 Appellants' arguments for eligibility of claims 9 and 17 are limited to
conclusory sentences asserting eligibility for "similar" reasons as claim 1 or
because of "similar" limitations to claim 1. App. Br. 16, 18; Reply Br. 8, 10.
Appellants' arguments for eligibility of the dependent claims are limited to
"by virtue of their dependency" on the independent claims, or "for similar
reasons." App. Br. 16, 19; Reply Br. 8, 10.
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V. DECISION
We affirm the Examiner's decision rejecting claims 1-24 under 35
U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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