Ex Parte Paintin et al

Patent Trial and Appeal Board

Mar 26, 2018

14312456 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/312,456 06/23/2014
20350 7590 03/28/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Scott Paintin
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.
90945-912183 (009520US) 2550
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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 SCOTT P AINTIN, LANCE MARR,
MICHELLE KLOOSTERMAN, REBECCA LOEVENGUTH,
and DIANE SCOTT
Appeal2016-005194
Application 14/312,456 1
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify the W estem Union Company as the real party in
interest. (App.Br. 2.)
Appeal2016-005194
Application 14/312,456
SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellants' claimed invention is directed to a method of
transferring funds from a sender to a recipient with a recorded message
(Spec., para.4). Independent claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A method comprising:
receiving, at a first computer system or a second computer
system, a first request for a funds transfer from a sender to a
recipient;
receiving, at the first computer system or the second
computer system, a confirmation that a payment from the sender
has been made for the funds transfer;
assigning, at the first computer system or the second
computer system, an identifier to the funds transfer;
receiving, at the first computer system or the second
computer system, a message from the sender;
receiving, at the first computer system or the second
computer system, a second request from the sender that the
message is provided to the recipient prior to receipt of funds by
the recipient;
associating, at the first computer system or the second
computer system, the message with the identifier or the funds;
receiving, at the first computer system or the second
computer system, a third request from a recipient, wherein the
third request includes the identifier; and
providing, from the first computer system or the second
computer system, the message to the recipient after receiving the
third request.
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Appeal2016-005194
Application 14/312,456
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2, 6, 8, 9, 13, 15, 16, and 20 are rejected under
35 U.S.C. § 112, first paragraph, as failing to show possession of the
claimed invention and comply with the written description requirement.
2. Claims 1-20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Rejection under 35 USC§ 112,first paragraph
The Examiner made a new grounds of rejection on claims 1, 2, 6, 8, 9,
13, 15, 16, and 20 under 35 U.S.C. § 112, first paragraph, as failing to show
possession of the invention and comply with the written description
requirement (Ans. 3-5).
The Appellants have not provided any arguments for this rejection.
Accordingly, this rejection is summarily affirmed.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2016-005194
Application 14/312,456
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is directed to "significantly more" than an abstract idea (App.
Br. 3---6). The Appellants argue the claim: 1) "improves other technical
fields" beyond the alleged abstract idea, 2) uses particular, non-generic
computers to implement the method, and 3) adds limitations beyond what is
well-understood or routine, or adds unconventional steps to the claim (App.
Br. 3-5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 4, Ans. 6, 7).
We agree with the Examiner. 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: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
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Application 14/312,456
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention". Id at 2358.
Here, the Examiner asserts that claims 1-20 are directed to "funds
transfers," with "messaging aspects [that] are ancillary to the fundamental
purpose of transfers." Ans. 2; Final Act. 4. We generally agree with the
Examiner, although we determine that the messaging aspects are not
ancillary, in that the messaging steps are intertwined with the funds transfer
steps. Accordingly, we find that the claims are directed to the concept of
transferring funds between parties with an included message, in that, in
conjunction with the fund transfer steps, the claims also recite steps for
including an appended message. This finding is consistent with the
Specification, which recites as follows: "This disclosure relates in general to
money transfers and by way of example, but not by way of limitation, to
money transfers that include recorded messages amongst other things."
Spec. para. 2; see also Spec. para. 4 ("In one embodiment of the invention, a
computerized method of transferring funds from a sender to a recipient with
a recorded message is disclosed."). In any case, there can be no doubt that
"funds transfers" is a fundamental economic practice long prevalent in our
system of commerce, and is an abstract idea beyond the scope of§ 101, and
that a contemporaneous communication of the funds transfer is no less
fundamental than the funds transfer itself.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
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Application 14/312,456
claim does more than simply instruct the practitioner to implement the
abstract idea with the use of generic computer components. The Examiner
conclude that it does not (Ans. 6), an assessment with which we agree.
Considering each of the claim elements in tum, we are unpersuaded
that the functions performed by the computer system at each step of the
process are other than purely conventional. More specifically, we are
unpersuaded that each step of the claimed system does any more than
require a generic computer to perform a generic computer function. The
Specification at paragraph 15, for instance, describes the system may use
conventional memory devices and that a conventional computer system may
be used. The Specification at paragraph 48 discloses that firmware and
software implementation may be used with conventional machine-readable
mediums. Here, the intrinsic evidence indicates that the claim limitations
use generic computer systems in conventional manner to implement the
system.
For these reasons the rejection of claim 1 is sustained. The Appellants
has provided the same arguments for the remaining claims which are drawn
to similar subject matter. Accordingly, the rejection of these claims is
sustained as well for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 112, first paragraph, as listed in the
Rejections section above.
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Application 14/312,456
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101 as listed in the Rejections
section above.
DECISION
The Examiner's rejection of claims 1-20 is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R.§ 1.136(a).
AFFIRMED
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