Ex Parte Seifert et al

Patent Trial and Appeal Board

Dec 19, 2018

14171410 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/171,410 02/03/2014
20350 7590 12/21/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Dean Seifert
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.
90945-899144 (006830US) 4765
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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 DEAN SEIFERT, MATT BIXLER, DA VE OWEN, and
ELIZABETH PETRI
Appeal 2017-011083
Application 14/171,410
Technology Center 3600
Before ELENI MANTIS MERCADER, JOHN P. PINKERTON,
and BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-20, all of which are
pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 The real party in interest is W estem Union Company of Englewood,
Colorado. App. Br. 2.
2 Our Decision refers to the Appeal Brief filed Feb. 21, 2017 ("App. Br.");
Examiner's Answer mailed June 16, 2017 ("Ans."); Final Office Action
mailed Sept. 19, 2016 ("Final Act."); and Specification filed February 3,
2014 ("Spec.").
Appeal 2017-011083
Application 14/171,410
STATEMENT OF THE CASE
Appellants' invention is for confirming the identity of a party seeking
to be involved in a financial transaction with another party. Spec. ,r 3.
Claim 1 is representative of Appellants' invention, as reproduced
below:
1. A method comprising:
receiving, from a first party, by a computer system,
verification criteria for verifying an identity of a second party,
wherein the verification criteria specifies at least a verification
procedure and a type of identification that is acceptable for use
in the verification procedure;
sending, by the computer system, the verification criteria
to a remote system;
receiving, by the computer system, from the remote
system, a first indication that the verification procedure
specified by the verification criteria was performed, and that an
identification matching the type of identification specified by
the verification criteria was presented by the second party; and
receiving, by the computer system, from the remote
system, a second indication that the verification procedure
successfully verified the identity of the second party.
Examiner's Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to ineligible subject matter. Final Act. 2---6.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Michelsen (US 2004/0215557 Al; published Oct. 28,
2004) and Jones (US 2003/0139994 Al; published July 24, 2003). Final
Act. 6-12.
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Application 14/171,410
CONTENTIONS AND ANALYSIS
SECTION 101 REJECTION
The Examiner determines claims 1-20 are directed to ideas that have
been identified as abstract by our reviewing court. Final Act. 2-6; Ans. 3-
20. In particular, the Examiner finds that the abstract idea underlying these
claims is comparing new and stored information. Final Act. 4. The
Examiner also finds additional elements recited in the claims do not amount
to significantly more than the abstract idea itself. Id. According to the
Examiner, the claims require no more than performing generic computer
functions. Id. at 5.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 3-6. Appellants contend the claims are not directed to
an abstract idea because the Examiner cited a large portion of the claim.
App. Br. 4--5. Appellants also contend the claims recite significantly more
than an abstract idea. Id. at 5---6.
We are not persuaded by Appellants' arguments. Instead, we observe
the Examiner has provided a comprehensive response to Appellants'
arguments supported by a preponderance of evidence. Ans. 3-20. As such,
we adopt the Examiner's findings and explanations provided therein. Id.;
Final Act. 2-5. At the outset, we note the Supreme Court has long held that
"[l]aws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting
Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013)). "The 'abstract ideas' category embodies 'the longstanding rule that
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Application 14/171,410
'[a]n idea, of itself, is not patentable."' Id. at 2355 (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66 (2012)). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id. (citing Mayo, 566 U.S. at
77-78).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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). In other words, the
second step is to "search for an 'inventive concept'-i.e., 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."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73). The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are directed to an abstract idea of
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Application 14/171,410
comparing new and stored information. Ans. 5. All the steps recited in
Appellants' claims, including, (i) receiving verification criteria, (ii) sending
the verification criteria to a remote system, (iii) receiving a first indication,
and (iv) receiving a second indication, are abstract processes of receiving
and sending data.
Our reviewing court finds an abstract idea in receiving and sending
data. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) ("[C]ollecting information, analyzing it, and displaying certain
results of the collection and analysis" is abstract); In re Salwan, 681 F.
App'x 938, 941 (Fed. Cir. 2017) (nonprecedential) (affirming the rejection
under § 101 of claims directed to "storing, communicating, transferring, and
reporting patient health information," noting that "while these concepts may
be directed to practical concepts, they are fundamental economic and
conventional business practices"); Cyberfone Sys., LLC v. CNN Interactive
Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) (nonprecedential)
("[U]sing categories to organize, store, and transmit information is well-
established"). Similarly, all the steps executed by claim 1 are abstract
processes of receiving and sending data.
Turning to the second step of the Alice inquiry, we find nothing in
Appellants' claims that adds anything "significantly more" to transform
them into a patent-eligible application of the abstract idea. Alice, 134 S. Ct.
at 2357.
Appellants do not persuade us why the claims or Specification provide
specific, technical improvements. Rather, as the Examiner points out, the
computer system does not add meaningful limitations to the abstract idea.
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Application 14/171,410
Indeed, as the Examiner finds, the Specification supports the finding that the
claimed system is implemented on a generic computer. Ans. 15 ( citing
Spec. ,r,r 7-10, 17, 23, 24, 26, and Fig. 1). Thus, the Specification does not
describe the system as made up of special-purpose or specially configured
computer components, but rather, as a general-purpose computer that
includes generic components. As a result, nothing recited by the claims
"offers a meaningful limitation beyond generally linking 'the use of the
[ method] to a particular technological environment,' that is, implementation
via computers." Alice 134 S. Ct. at 2360 (quoting Bilski, 561 U.S. at 610-
11 ).
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" are not patent eligible);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir.
2014) (claims merely reciting an abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
are not patent eligible); Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting
"generalized software components arranged to implement an abstract
concept [of generating insurance-policy-related tasks based on rules to be
completed upon the occurrence of an event] on a computer" are not patent
eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("Simply adding a 'computer aided' limitation to a claim covering an
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Application 14/171,410
abstract concept, without more, is insufficient to render [a] claim patent
eligible"); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044,
1056 (Fed. Cir. 2017) (generic computer elements did not represent
improvement in computer technology but rather were invoked merely as
tools, and did not transform the claims into significantly more than claims to
an abstract idea itself); Elec. Power Group, 830 F.3d 1351 (rejection
affirmed for a method of performing real-time performance monitoring of an
electric power grid because "the claims do not go beyond requiring the
collection, analysis, and display of available information in a particular field
over conventional computer and network technology").
The claims are neither rooted in computer technology as outlined in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
nor do they seek to improve any type of computer capabilities, such as a
"self-referential table for a computer database" outlined in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). "[M]erely
'configur[ing]' [a] generic computer[] in order to 'supplant and enhance' an
otherwise abstract manual process is precisely the sort of invention that the
Alice Court deemed ineligible for patenting." Credit Acceptance Corp., 859
F.3d at 1056.
Appellants overlook that "the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." Elec. Power Group, 830 F.3d at 1354.
In this case, as in Electric Power Group, the claims do not even require a
new source or type of information. Id. at 1355.
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We have also carefully considered Appellants' arguments regarding
preemption. App. Br. 5, 6. However, although "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). Where claims are deemed to
recite only patent ineligible subject matter under the two-step Alice analysis,
as they are here, "preemption concerns are fully addressed and made moot."
Id.
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
SECTION 103 REJECTION
Appellants argue the Examiner erred because Jones fails to teach
allowing a first party to specify what type of identification a second party
must present to be successfully verified by a remote system, as well as a
procedure to use with such an identification type. App. Br. 7. Appellants
identify an example of verification criteria as a library card. Id. Appellants
argue Jones merely states that a remote system requests a biometric
identifier such as a photo. Id. Appellants argue Jones does not state that a
"first party specifies what type of identification is necessary for a
verification procedure, or what procedure should be performed thereafter."
Id. Appellants argue the "difference then between Jones and the instant
claims is that the instant claims allow a party to specify what type of
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Application 14/171,410
identification and what type of procedures should be used with the type of
identification, while Jones does not." Id.
Appellants' arguments regarding Jones' individual shortcomings in
this regard are unavailing, because the Examiner does not rely solely on
Jones for teaching this limitation. Instead, the Examiner relies on
Michelsen, and not Jones, as teaching "receiving, from a first party, by a
computer system, verification criteria for verifying an identity of a second
party," which is the element Appellants argue is missing in Jones. Final Act.
6, 7.
Although Appellants cut and paste other limitations from the claim
into the Appeal Brief (App. Br. 7), Appellants make no other substantive
arguments regarding the claims other than those addressed above. Our
reviewing court has explicitly held that "[37 C.F.R. §] 41.37 [] require[s]
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Upon review of the record, we agree with and adopt the Examiner's
findings and conclusions in the Final Rejection and Answer.
Accordingly, we sustain the Examiner's rejection of claim 1 under 35
U.S.C. § 103. Because Appellants have not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claim 1 above (App. Br. 6-8),
claims 2-20 fall therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-20 under 35 U.S.C.
§ 101.
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-20 under 35 U.S.C.
§ 103.
DECISION
We affirm the Examiner's rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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