Ex Parte Rekhi et al

Patent Trial and Appeal Board

Jun 29, 2018

13543073 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/543,073 07/06/2012 Gaurav Rekhi
132897 7590 07/03/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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.
P2395.10309US02 9088
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAVRA V REKHI, DONALD JAMES PERCIFUL, and
SCOTT ROBERT SHIPMAN
Appeal2017-006980 1
Application 13/543,0732
Technology Center 3600
Before KAL YANK. DESHPANDE, IRVINE. BRANCH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-7, 9-17, 19, and 20. We have
jurisdiction under § 6(b ). We AFFIRM.
1 Our Decision references Appellants' Specification ("Spec.," filed July 6,
2012) and Appeal Brief ("Br.," filed Mar. 21, 2016), as well as the
Examiner's Final Office Action ("Final Act.," mailed Oct. 16, 2015) and
Answer ("Ans.," mailed Aug. 25, 2016).
2 Appellants identify PayPal, Inc. as the real party in interest. Br. 2.
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Application 13/543,073
SUBJECT MATTER ON APPEAL
The invention relates to utilizing student accounts. Spec., Title.
Claims 1, 11, and 20 are the independent claims on appeal. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A non-transitory machine-readable storage medium
storing instructions which, when executed by the at least one
processor of the machine, cause the machine to perform
operations comprising:
transmitting instructions to present a user interface to a
verified adult, the user interface including a plurality of fields
requesting information for establishing an account for a minor
and for establishing constraint settings;
receiving instructions, via the user interface, to establish
the account for the minor from the verified adult, the verified
adult being verified as an adult based on financial information
associated with an adult account established for the verified
adult;
creating the account for the minor linked to the adult
account of the verified adult, the creating comprising updating a
storage device maintaining account information for the minor,
the account information including the constraint settings;
determining that the account for the minor has consent
from the verified adult for the minor to perform monetary
transactions;
based on the determining that the account for the minor
has the consent for the minor to perform monetary transactions,
establishing a secondary payment account for the minor linked
to the account of the minor;
linking the secondary payment account of the minor to an
adult payment account ultimately financially responsible for the
secondary payment account based on the secondary payment
account having insufficient funds, the adult payment account
associated with the adult account of the verified adult;
receiving a request, from a server of an external website,
to verify consent for the minor to perform a transaction at the
external website;
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determining, from the constraint settings maintained in the
storage device, whether the minor has the consent to perform the
transaction at the external website; and
transmitting, to the server of the external website, a
response indicating whether the minor has consent to perform the
transaction at the external website, the response causing the
server of the external website to process the transaction or deny
the transaction.
REJECTION
The Examiner rejects claims 1-7, 9-17, 19, and 20 under 35 U.S.C.
§ 101 as non-statutory subject matter.
ANALYSIS
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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
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significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
Appellants argue the Examiner has not made a prima facie case that
the claims are patent ineligible. Br. 10-17. More specifically, Appellants
contend the Examiner has not made a prima facie case because: the
Examiner's rejection lacks sufficient evidence (id. at 11-13); the Examiner
fails to consider all of the claim limitations (id. at 13-15); the Examiner has
not shown the alleged abstract idea is similar to at least one concept a court
has held to be an abstract idea (id. at 15-16); and the Examiner has failed to
consider the dependent claims (id. at 16-17). We disagree with Appellants
that the Examiner failed to make a prima facie case.
The Federal Circuit has held that an examiner establishes a prima
facie case by satisfying the notice requirement set forth in 35 U.S.C. § 132.
According to the court,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting§ 132). All that is required of the Office is to set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner. Id.
at 1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
("Section 132 is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
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Here, in determining that the claims are patent ineligible under
35 U.S.C. § 101, the Examiner analyzes the claims using the Alice two-step
framework. Final Act. 3---6; Ans. 2-7. Pursuant to the first step, the
Examiner determines the claims are directed to the abstract idea of "creating
accounts and sales transactions/verifications in a network." Ans. 2.
According to the Examiner, this concept is an abstract idea because it is
similar to fundamental economic practices, methods of organizing human
activity, and other concepts the courts have held to be abstract ideas. Id. at
5-7.
Under the second step, the Examiner determines that the claims do not
recite significantly more than the abstract idea because the additional
elements, considered alone and in combination, amount to no more than
instructions to implement the abstract idea on a computer. Id. at 2. The
Examiner further determines the additional elements are a generic recitation
of a computer and a computer network performing generic computer
functions. Id. at 7.
In analyzing the claims, the Examiner refers to the limitations of
independent claim 1 as exemplary. Id. at 4--5. The Examiner, however,
determines that independent claims 11 and 20 and the dependent claims are
patent ineligible for the same reasons as independent claim 1. Id. at 8.
As such, the Examiner sufficiently informs Appellants that the claims
are ineligible. Furthermore, there is no indication that Appellants do not
recognize or understand the Examiner's rejection, as Appellants'
understanding is manifested in their arguments traversing it. The
Examiner's rejection satisfies the notice requirement of 35 U.S.C. § 132 and
sets forth a prima facie case of patent-ineligible subject matter. We,
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therefore, consider Appellants' remaining arguments to determine whether
the Examiner erred in rejecting the claims as patent ineligible. See Ex Parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (explaining that
the Board reviews a rejection for error "based upon the issues identified by
appellant, and in light of the arguments and evidence produced thereon").
Pursuant to the first step of the Alice analysis, Appellants argue the
Examiner has not considered the actual language of the claims. Br. 19.
According to Appellants, the claims are not directed to an abstract idea, but
rather to
a specific set of operations for verifying consent for transactions
performed by minors that require adult consent in a networked
environment (e.g., online or mobile), and providing a response
verifying consent to perfon11 the transaction to an external
website, whereby the response causes the server of the external
website to process the transaction for the minor.
Id. at 17. Appellants' argument does not apprise us of effor.
In determining whether a claim is directed to excluded subject matter,
e.g., an abstract idea, under the first step of the Alice analysis, the Federal
Circuit has explained that "the 'directed to' inquiry 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."' Enjish, LLC v.
kficrosoft Cmp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting internet
Patents Cmp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). For computer-implemented inventions in particular, such
as the present invention, "the first step in the Alice inquiry ... asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Id. at 1335-36.
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Here, independent claim 1, for example, recites steps for: transmitting
instn1ctions to a verified adult requesting information for establishing an
account for a minor and constraint settings; receiving instructions to create
the account from the verified adult creating the account for the minor and ' .___,
updating a storage device maintaining the account infonnation including the
constraint settings; determining that the account for the minor has consent to
perforrn monetary transactions; based on dete1mining that the account has
consent to perform monetary transactions, establishing a secondary payment
account linked to the account for the minor; linking the secondary payment
account to an adult payment account associated with the verified adult;
receiving a request to verify consent for the minor to perform a transaction;
determining, from the constraint settings, whether the minor has consent to
perfon11 the transaction; and transmitting a response indicating whether the
minor has consent and causing the processing or denial of the transaction.
As such, the claimed steps result in creating an account for a minor,
verifying consent for a minor to perform transactions, and processing the
transactions.
Similarly, the Specification explains that the invention relates to
utilizing student accounts. Spec. i-f 2. According to the Specification, it is
difficult for minors to perform transactions, i.e., buying or selling items,
accessing information, and posting information, in a networked environment
because legal regulations require parental consent to create accounts. Id. i-f 3.
The Specification further explains that "[ t ]he student accounts provide a
consent-based solution where minors can have their own accounts on a
networking environment, but their parents or legal guardians (collectively
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referred to as "adult" or "adults") are held accountable for the minor's
actions." Id. i-f 17.
Independent claim 1 further recites a networked environment, namely
a machine having a processor, a user interface, a storage device, and an
external website. The Specification, however, does not describe any
improvement to the computer components or to the networked environment.
Rather, the Specification describes a network architecture that enables the
use of student accounts (Spec. i-fi-122, 89, 90), which, as set forth above,
provide a consent-based solution to a minor transacting business.
In light of the above, the claimed invention uses the recited computer
infrastructure to perform the steps that enable a minor to conduct
transactions with an adult's consent. The focus of the claimed invention is
not on an improvement in computer capabilities, but rather on enabling a
minor to conduct transactions with the requisite consent. Appellants,
therefore, do not apprise us of error in the Examiner's determination that the
character of independent claim 1, as a whole, is directed to the abstract idea
of "creating accounts and sales transactions/verifications in a network."
Appellants also assert that the Examiner has not shown how the claim
lirnitations are similar to other concepts the courts have held to be abstract
ideas. Br. 18. Appellants' argument is not persuasive of error.
As set forth above, Appellants do not apprise us of error in the
Examiner's determination that the claims are directed to "creating accounts
and sales transactions/verifications in a network," and we do not see any
meaningful distinction between this concept and similar concepts the courts
have held to be abstract ideas. For example, we agree with the Examiner
that the concept of "creating accounts and sales transactions/verifications in
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a network" is similar to the abstract idea of "inte1mediated settlement" in
Alice because, like using an intermediary for settlement, verifying
transactions mitigates risk and is a fundamental economic practice long
prevalent in our system of commerce.
Seeing no error in the Examiner's determination that the claims are
directed to the abstract idea of "creating accounts and sales
transactions/verifications in a network," we tum to Appellants' arguments
under the second step of the analysis. Appellants contend that determining
whether a claim recites an inventive concept requires consideration of many
factors, and that these factors weigh in favor the eligibility of the claims.
Br. 19--20. We have considered each asserted factor, and, for the reasons set
forth above, we agree with the Examiner that the claims do not amount to
significantly more than the abstract idea.
Appellants argue that the operations recited in the claims are specified
at a low level of generality, rather than a high-level articulation of an
abstract idea. Br. 20-21. Appellants' argument does not apprise us of error.
As set forth above, the second step of the Alice analysis considers whether a
claim recites an element or combination of elements that transforms the
nature of the claim into a patent-eligible application. Alice, 134 S. Ct. at
2355. Specifying an abstract idea at different levels of abstraction does not
transform the nature of a claim into a patent-eligible application.
Appellants also argue that, like the claims in Diamond v. Diehr, 101
S. Ct. 1048 (1981), the present claims solve a technological problem in
conventional industry practice. Br. 21-22. According to Appellants, the
claimed invention alleviates the difficulties associated with a minor
transacting business in a networked environment. Id. at 21 (citing
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Spec. i-f 3). The alleged difficulties, however, are not unique to networked
environments. For example, a minor would need consent to open an account
at financial institution whether the institution is a brick and mortar store or
online. Given that the claimed invention does not solve a problem with
networked environments but instead solves a business problem associated
with a minor's ability to make transactions, the claimed invention does not
solve a technological problem.
Appellants further assert the functions of each step of the claims are
not purely conventional because, like the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the actual effect of the
claim limitations is a solution to a problem that exists only in the realm of
computer technology. Br. 23-27. According to Appellants, "the claims at
issue solve a technological problem in conventional industry practice of
creating accounts for minors that require adult consent in a networked
environment (e.g., online or mobile)." Id. at 26. Appellants also assert that
[ t ]he concept of determining consent based on stored constraint
settings maintained in a networked storage device, and
transmitting a response to the requesting server that provides
verification of that consent in an automatic manner is one that
simply did not exist prior to the rise in prominence of the Internet
and the proliferation of computer technology.
Id. Appellants' arguments are not persuasive of error.
The claimed invention being implemented in a networked
environment does not, in and of itself, mean the claimed invention is
necessarily rooted in computer technology. Rather, as set forth above, the
problem of creating accounts for minors that require adult consent is not an
issue unique to networked environments and is not a technological problem.
For example, an employee of a financial institution could obtain and store
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consent settings from a verified adult and provide verification when a minor
attempts to make a transaction. As such, the claimed invention is not rooted
technology, but instead the generic computer implementation of a business
practice for creating an authorized financial account and authorizing
transactions, which is insufficient for patent eligibility. See DDR Holdings,
773 F.3d at 1256 ("[T]hese claims [of prior cases] in substance were directed
to nothing more than the performance of an abstract business practice on the
Internet or using a conventional computer. Such claims are not
patent-eligible.").
In addition, Appellants argue the claims include detailed limitations,
and, therefore, do not seek to tie up any judicial exception so that others
cannot practice it. Br. 28-29. Appellants' argument does not apprise us of
error. Even if the claims do not preempt all uses of the abstract idea of
"creating accounts and sales transactions/verifications in a network,"
preemption is not the test for determining whether a claim is patent
ineligible. Said differently, although preemption may be the basis for
excluding abstract ideas from eligible subject matter, preemption is not the
test. 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. For this
reason, questions on preemption are inherent in and resolved by the § 101
analysis." (citation omitted)).
Appellants also contend the Final Office Action includes an apparent
contradiction between the Examiner's determination that the claims do not
amount to something more than the abstract idea and the determination that
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the claims are patentable over the prior art. Br. 30. We, however, see no
such contradiction.
Although the second step of the patent-eligibility analysis is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or nonobviousness, but rather, a consideration of "the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transforrn the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct at 2355 (quoting lviayo,
132 S. Ct at 1298, 1297). As such~ the question in the second step is not
whether the claimed invention is noveL but rather whether the
implementation of the abstract idea involves "more than performance of
'well-understood, routine, [and] conventional activities previously known to
the industry. rn Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347----48 (Fed. Cir. 2014) (quoting Alice,
134s. C't 't 7 ''\<') . . . .