Ex Parte SHAKKARWAR

Patent Trial and Appeal Board

Oct 24, 2018

13011536 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/011,536 01/21/2011
107456 7590 10/26/2018
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
FIRST NAMED INVENTOR
Rajesh G. SHAKKARW AR
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.
VERI/0011 4831
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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):
algdocketing@artegislaw.com
kcruz@artegislaw.com
j matthews @artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RAJESH G. SHAKKARWAR1
Appeal2017-009018
Application 13/011,536
Technology Center 3600
Before JAMES R. HUGHES, BETH Z. SHAW and
SCOTT E. BAIN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-7, 10-16, 18-26, 29-35,
37--41, and 43, all of which are pending on appeal. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellant identifies the real party in interest as Verient, Inc. App. Br. 3.
2 Our Decision refers to the Appeal Brief filed January 3, 2017 ("App. Br.");
Reply Brief filed June 5, 2017 ("Reply. Br."); Examiner's Answer mailed
April 3, 2017 ("Ans."); and Final Office Action mailed June 30, 2016
("Final Act.").
Appeal2017-009018
Application 13/011,536
STATEMENT OF THE CASE
Appellant's invention relates to a method for generating an accounts
payable financial product, i.e., a virtual card, used for payment transactions.
Spec., Abstract, ,r 32.
Claim 1 is illustrative of Appellant's invention, as reproduced below:
1. A computer-implemented method for generating a first
accounts payable financial product that is configured to
be used for one or more payment transactions, the method
compnsmg:
receiving, via a network, a device profile from a security
agent executing on a user device;
authenticating the user device by comparing the device
profile with data stored on an authentication database;
receiving, from the user device via the network, a
selection of one or more core accounts for providing financial
backing for the first accounts payable financial product, the first
accounts payable financial product being a virtual card
available to the user device via a web browser;
receiving a selection of a first recipient payee to which
the first accounts payable financial product is to be distributed
as a form of payment;
receiving, from the user device via the network, a
selection of one or more control parameters that define use
restrictions for the first accounts payable financial product;
generating, via one or more computer processors of a
payment processing platform distinct from one or more
financial institutions with which the one or more core accounts
are held, the first accounts payable financial product based on
the received selection of one or more control parameters and the
received selection of one or more core accounts;
transmitting the first accounts payable financial product
electronically to the first recipient payee; and
in response to the first recipient payee initiating a
transaction to redeem the first accounts payable financial
product, causing funds to be transferred from one or more core
accounts that provide financial backing for the first accounts
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Application 13/011,536
payable financial product to an account held by the first
recipient payee if the one or more control parameters are
satisfied.
REJECTIONS
Claims 1-7, 10-16, 18-26, 29-35, 37--41, and 43 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to ineligible
subject matter. Final Act. 2-5.
Claims 1-5, 7, 11-16, 20-24, 26, 30-35, 39, and 40 stand rejected
under 35 U.S.C. § 103 as unpatentable over Hutchison (US 2005/0102188
Al; published May 12, 2005) and Kim (Korean Patent Unexamined
Publication No. 1020020081631; published Oct. 30, 2002). Final Act. 5.
Claims 6 and 25 stand rejected under 35 U.S.C. § 103 as unpatentable
over Hutchison, Kim and Cohen (US 2004/0139004 Al, published July 15,
2004). Final Act. 10.
Claims 10, 18, 19, 29, 37, 38, 41, and 43 stand rejected under
35 U.S.C. § 103 as unpatentable over Hutchison, Kim, Official Notice and
Hamilton (US 7,653,598 Bl, issued Jan. 26, 2010). Final Act. 11.
ANALYSIS
Section 101 Rejection
The Examiner finds claims 1-7, 10-16, 18-26, 29-35, 37--41, and 43
are directed to abstract ideas. Final Act. 2-5; Ans. 2-7. In particular, the
Examiner finds that the abstract idea underlying these claims is funds
transfer. Final Act. 3. The Examiner also finds additional elements recited
in the claims do not amount to significantly more than the abstract idea
itself. Final Act. 4; Ans. 3-5.
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Application 13/011,536
Appellant presents several arguments against the 35 U.S.C. § 101
rejection. App. Br. 14--20; Reply Br. 3--4. Appellant contends the claims
are not directed to an abstract idea because the claims enable a specific
improvement in the way computer systems generate and process electronic
payments securely. App. Br. 14--15. Appellant also contends the claims
recite significantly more than an abstract idea because the claims add at least
one unconventional step. Id. at 19.
We do not find Appellant's arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellant's
arguments supported by a preponderance of evidence. Ans. 2-8. As such,
we adopt the Examiner's findings and explanations provided therein. Id.
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., 133 S. Ct. 2107, 2116
(2013)). "The 'abstract ideas' category embodies 'the longstanding rule that
'[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
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Application 13/011,536
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 Appellant's claims are directed to an abstract idea of funds
transfer. Ans. 3. All the steps recited in Appellant's claims, including, for
example: receiving a device profile; receiving a selection of one or more
core accounts; receiving a selection of a first recipient payee; generating the
first accounts payable financial product; transmitting the first accounts
payable financial product; and causing funds to be transferred; are abstract
processes of receiving, generating, and outputting data.
The Supreme Court has found similar arrangements involving
contractual relations to be abstract. Bilski involved a method of entering into
contracts to hedge risk in commodity prices, and Alice involved methods and
systems for "exchanging financial obligations between two parties using a
third-party intermediary to mitigate settlement risk," Alice, 134 S. Ct. at
2356. The Court in both cases found the contractual relations at issue
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constituted "a fundamental economic practice long prevalent in our system
of commerce." Bilski, 561 U.S. at 611; see Alice, 134 S. Ct. at 2356, 2357.
Similarly, in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014), the Federal Circuit found "[t]he claims are squarely about
creating a contractual relationship--a 'transaction performance guaranty'-
that is beyond question of ancient lineage." We agree with the Examiner's
determination that the claims in this case recite contractual relations
analogous to those in the foregoing cases. Ans. 3--4.
Moreover, as the Examiner determined, Appellant's claimed funds
transfer is a fundamental economic practice that would fall under the
umbrella of managing transactions or sales activities. Ans. 4. See Alice, 134
S. Ct. at 2356; see, e.g., Intellectual Ventures I LLC v. Capital One Bank,
792 F.3d 1363 (Fed. Cir. 2015) (an advertisement taking into account the
time of day and tailoring the information presented to the user based on that
information is another "fundamental ... practice long prevalent in our
system"); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed.
Cir. 2017) (patent claims directed to a system and method for providing
financing to allow a customer to purchase a product selected from an
inventory of products maintained by a dealer patent-ineligible as directed to
the abstract idea of processing an application for financing a purchase, an
economic practice long prevalent in commerce). Funds transfer is a
fundamental economic practice. Accordingly, we are not persuaded the
Examiner erred under the first step of the Alice inquiry.
Turning to the second step of Alice, we also find nothing in
Appellant's claims that adds anything "significantly more" to transform
them into a patent-eligible application of the abstract idea. Alice, 134 S. Ct.
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at 2357. The claimed steps are ordinary steps in data processing and are
recited in an ordinary order. We are not persuaded by Appellant's
unsupported attorney argument that the claims recite an "unconventional
step." App. Br. 19. 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).
Limiting an abstract concept of a funds transfer to a general purpose
computer having generic components, such as the "computer processor"
recited in Appellant's claims, does not make the abstract concept patent-
eligible under 35 U.S.C. § 101. 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) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
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insufficient to render [a] claim patent eligible"); Credit Acceptance Corp.,
859 F.3d at 1056 (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, LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016) (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").
Contrary to Appellant's arguments (see App. Br. 7-9; Reply Br. 2),
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 Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The "user device"
recited in Appellant's claims is described in the Specification as "any type of
individual computing device." Spec. ,r 23. The claimed "computer
processors" are not described or drawn with any specificity in the
Specification. "[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.
We are also not persuaded by Appellant's argument that the claims
"focus[] on a specific means or method that improves the relevant
technology," similar to the patent-eligible claims in
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Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). App. Br. 15-
16. In McRO, the Federal Circuit found that "the claims themselves set out
meaningful requirements for the first set of rules: they 'define[] a morph
weight set stream as a function of phoneme sequence and times associated
with said phoneme sequence."' 837 F.3d at 1313 ( citation omitted). The
Federal Circuit further explained that "[t]he specific, claimed features of
these rules allow for the improvement realized by the invention." Id.
Appellant's claims, in contrast, do not define meaningful requirements for
any "specific rules" as in McRO. Claims App 'x. Rather, the claims are
directed to automation of conventional funds transfer. Cf McRO, 837 F.3d
at 1314 ("This [conventional] activity, even if automated by rules, would not
be within the scope of the claims because it does not evaluate sub-sequences,
generate transition parameters or apply transition parameters to create a final
morph weight set. It is the incorporation of the claimed rules, not the use of
the computer, that 'improved [the] existing technological process' by
allowing the automation of further tasks.") (citing Alice, 134 S. Ct. at 2358).
Because Appellant's 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
Appellant argues Kim fails to teach or suggest transmitting the first
accounts payable financial product electronically to the first recipient payee,
where the first accounts payable financial product comprises a virtual card
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Application 13/011,536
available to the user device via a web browser, as recited in claim 1. App.
Br. 21. We are not persuaded of error.
The Examiner relies on the combination of Hutchinson and Kim, not
Kim alone, as teaching the foregoing disputed limitation. As the Examiner
finds, Kim teaches transmitting the first accounts payable financial product
electronically to the first recipient payee. Ans. 8, 9; Final Act. 8 (citing
Kim, p. 3, p. 4). The Examiner only relies on Kim, however, to show
transmitting a first accounts payable financial product electronically to the
payee. Final Act. 7, 8. The "virtual card," as the Examiner finds, is taught
by Hutchinson. Final Act. 6 ( citing Hutchison, ,r,r 10, 11, 69--72 ("[T]he
virtual payment system of the present invention is a closed system that
provides buyers a secure method for purchasing products over the
Internet.")). Appellant does not identify any specific deficiencies in
Hutchison's teachings, and further does not identify error in the Examiner's
findings regarding the combination of Kim and Hutchinson.
Therefore, we sustain the § 103 rejection of claim 1. For the same
reasons, we sustain the§ 103 rejections of the remaining pending claims, for
which Appellant presents no new arguments. See App. Br. 21-22.
For these reasons, and for the additional reasons stated in the Final
Office Action and Answer, we sustain the§ 103 rejections of claims 1-7, 10-
16, 18-26, 29--35, 37--41, and 43.
CONCLUSION
Appellant has not demonstrated the Examiner erred in rejecting claims
1-7, 10-16, 18-26, 29--35, 37--41, and 43 under 35 U.S.C. § 101.
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Appellant has not demonstrated the Examiner erred in rejecting claims
1-7, 10-16, 18-26, 29-35, 37--41, and 43 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1-7, 10-16, 18-26, 29-
35, 37--41, and 43.
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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