Fiore, Ernest John. et al.

Patent Trials and Appeals Board

Sep 16, 2019

14064794 - (D) (P.T.A.B. Sep. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/064,794 10/28/2013 Ernest John Fiore P57832 2588
157693 7590 09/16/2019
JPMorgan Chase / Greenblum & Bernstein
1950 Roland Clarke Place
Reston, VA 20191
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
gbpatent@gbpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ERNEST JOHN FIORE, GARY JOURA, and
TIMOTHY J. HAMILTON1
_____________

Appeal 2018-007631
Application 14/064,794
Technology Center 3600
______________

Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and
MICHAEL T. CYGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3 through 6, and 8 through 14.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is, JPMorgan Chase
Bank, N.A. App. Br. 2.
2 We note that the Examiner entered an after final amendment canceling
claims 2 and 7 and incorporating the limitations from claims 2 and 7 into
independent claims 1 and 13. See Subsequent Examiner’s Answer mailed
June 25, 2018.
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INVENTION
The invention is directed to a system to detect non-compliance with
travel rules put in place by multiple countries throughout the world for
payment requests or payment orders. Abstract. Claim 1 is illustrative of the
invention and is reproduced below:
1. A computer-implemented method for capturing non-compliant
payment orders, the method comprising:
compiling, into an electronic database at a payment
processing entity, a plurality of travel rules governing
requisite information of payments to at least one foreign
jurisdiction, the step of compiling further comprising
parsing said plurality of travel rules and sorting at least
one expected or required format or template of payment
orders into a data construct in the electronic database;
preparing one or more preset tools for examining
payment compliance by generating business logic in or
for the electronic database or by predefining screening
filters based on the plurality of travel rules;
receiving, by at least one computer processor of
the payment processing entity, payment data concerning
a payment order submitted by an ordering party, the
payment order requesting a payment from said ordering
party to a beneficiary;
automatically determining, by the at least one
computer processor and with the one or more preset
tools, whether the payment data comply with the plurality
of travel rules, the step of automatically determining
further comprising at least one of:
automatically determining, in the payment
data, a presence or absence of one or more data
elements required by at least one of the plurality of
travel rules, and
automatically determining whether a data
element in the payment data meets a content or
formatting requirement of at least one of the
plurality of travel rules;
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generating an output based on the step of
determining whether the payment data comply
with the plurality of travel rules;
generating the output if the payment data
fail to comply with at least one of the plurality of
travel rules; and
automatically revising, by the at least one
computer processor, at least some of the non-
compliant payment data.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 3 through 6, and 8 through 14
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Final Act. 11–15.3
The Examiner has rejected claims 1, 3 through 6, 8, 9, 11, 13, and 14
under 35 U.S.C. § 103(a) as being unpatentable over Henry (US
2012/0074216 A1, pub. March 29, 2012) and Reich (US 7,873,560 B2,
issued January 18, 2011). Final Act. 15–19.
The Examiner has rejected claims 10 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over Henry, Reich, and Venzon (US 2006/0282276
A1, pub. December 14, 2006). Final Act 19–20.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the

3 Throughout this Opinion, we refer to the Appeal Brief, filed January 8,
2018 (“App. Br.”), the Examiner’s Answer, mailed April 5, 2018
(“Answer”), and the Final Office Action, mailed August 8, 2017 (“Final
Act.”).
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Examiner’s rejections of claims 1, 3 through 6, and 8 through 14 under
35 U.S.C. § 101 and under 35 U.S.C. § 103(a).

Rejection 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.

There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. 66, 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. 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. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
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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 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 176; 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 turn 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 (citation omitted). “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. (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. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we
first look to whether the claim is directed to a judicial exception because:
(1) the claim recites a judicial exception, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h) (9th ed. 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 are 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 Memorandum.

ANALYSIS
Abstract Idea.
The Examiner finds that the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 11–15. Specifically, the Examiner provides an analysis of Appellant’s
claims finding that they recite limitations directed to a fundamental
economic practice and a mental process. Final Act. 13–14. Further, the
Examiner concludes that the claims, in addition to the abstract idea merely
recite generic components of a general-purpose computer and that the claims
do not provide an improvement to the functioning of the computer. Final
Act. 14. Thus, the Examiner concludes:
The recitation of the computer elements amounts to mere
instruction to implement the abstract idea on a computer.
Taking the additional elements individually and in combination,
the computer components at each step of the capturing process
perform purely generic computer functions. Therefore the
claims do not amount to significantly more than the abstract
idea itself. Accordingly, the claims are not patent eligible.
Final Act. 14–15.
Appellant argues the Examiner oversimplified the claimed invention
and “the invention does much more than merely implementing a mental
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process of compliance checking with general-purpose computers.” App. Br.
16–17. Appellant argues the claim requires:
parsing and compilation of travel rules into database structures
and preparation of preset tools such as business logic and/or
screening filters require peculiar functions and tools in an
electronic database and therefore cannot be completed mentally
within human brains. Such method steps are anything like a
simple automation of a human process. Similarly, the receipt of
electronic payment data and automatic determination of their
compliance with the numerous travel rules with the preset tools
are much more than the simplistic imitation of a manual
compliance check as the Examiner alleges.
App. Br. 17.
Further, Appellant argues that the Examiner’s analysis does not
consider the terms or the claims but rather just concludes, without evidence,
that the claimed invention recites a fundamental economic practice. App.
Br. 20–22.
The Examiner has provided a detailed and comprehensive response to
Appellant’s arguments on pages 4 through 12 of the Answer. In this
response the Examiner identified that Appellant’s claims are unlike claims
found patent eligible in Enfish, LLC v Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016), where the court found the claimed data structures provided
advances in existing computer capabilities (they improved the operation of
the computer). Answer 5. The Examiner identified that Appellant’s claims
are unlike the claims found patent eligible in McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) where the claims were not
merely the automation of a manual process but rather an improvement in
computer technology. Answer 6–7. We have reviewed the Examiner’s
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rejection, and response to Appellant’s arguments and we concur with the
Examiner’s conclusion that the claims are directed to an abstract idea.
Additionally, the Examiner provides an analysis of claim 1 finding it
recites steps of: compiling rules in a database (analogous to a human
studying rules); automatically determining whether the data complies with
the rules (analogous to human comparing payment data to requirements of
the rules); generating an output (analogous to a human generating a report);
and automatically revising some of the non-compliant payment data
(analogous to human revising the payment data). Answer 7–8. Based upon
this analysis the Examiner concludes that the claimed process essentially
mimics human processing and is unlike the process at issue in McRO.
Answer 8. Further, the Examiner finds that these claimed steps, are
essentially mental processes that people can go through in their mind are
abstract. Answer 8 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016).
We concur with the Examiner that representative claim 1 recites
collecting/gathering information and analyzing it (a mental process). Claim
1 recites “compiling . . . plurality of travel rules” (a data gathering or
observation element); “preparing one or more preset tools . . . by generating
business logic,” (a data analysis or evaluation element); “receiving . . .
payment data” (a data gathering or observation element); and “automatically
determining . . . whether the payment data compl[ies] with the plurality of
travel rules” (a data analysis or evaluation element). We consider these
limitations to recite an abstract mental process.
The claims at issue in Electric Power Group recite several steps of
receiving data from various sources, detecting and analyzing the data and
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displaying the data. Elec. Power Grp., 830 F.3d at 1351–52. The court
stated “we have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.” Id. at 1353. We note that while the
claims in Electric Power Group recite displaying data, the claims in Content
Extraction, cited in support of the decision in Electric Power Group dealt
with a step of storing, and identified it to be abstract, a mental process. “The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed humans have always performed these functions.” Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat, Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014). Thus, Appellant’s arguments have not
persuaded us the Examiner erred in finding the claims recite a mental
process, an abstract idea.
Appellant’s arguments that the Examiner erred in concluding the
claims recite a fundamental economic process are also unpersuasive of error.
The Examiner in response to this argument states:
comparing payment information to laws and regulations to
determine and capture non-compliant payment orders is a
longstanding economic practice. In the U.S., large amount
transactions typically require compliance check, whether by
computer or by manual processing. For example, USA
PATRIOT Act of 2001 places restrictions on foreign accounts
to prevent money laundering. Financial institutions are
required to check payment orders against the rules to ensure
compliance. The claimed invention is essentially performing
such compliance check on computers and displaying result.

Answer 11. We concur with the Examiner that comparing a list of rules, and
logic to apply the rules, concerning payments relates to a financial
transaction and, as such, is a fundamental economic principle. Further, we
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note that Appellant’s Specification identifies “[t]he present invention relates
generally to financial processing” and that the invention is to “overcome one
or more . . . limitations of existing systems and methods for payment
processing” and is “to reduce reputational risk with correspondent banks and
regulators.” Specification paras. 1, 8, and 9. Thus, Appellant’s
Specification provides evidence that the claims are directed to financial
processing, a fundamental economic process. As such, we are not persuaded
by Appellant’s arguments that the Examiner erred in concluding, without
evidence, that the claimed invention recites a fundamental economic
practice.
As a result, Appellant’s arguments have not persuaded us the
Examiner erred in concluding the claims recite an abstract idea, both a
mental process and a fundamental economic practice.

Practical Application of the Abstract Idea
The Examiner finds that the additional claimed elements recite a
computer processor, storage medium and communication interface, which
are generic computer components and do not amount to significantly more
than the abstract idea. Final Act. 14–15 (citing paragraph 60 of Appellant’s
Specification).
Appellant argues that the claims are directed to a practical application
as:
It is indisputable that “using existing computer technologies as
tools to implement an abstract concept” is a practical
application of the concept. The automation reduces human
efforts, improves efficiency and therefore could facilitate the
processing of large batches of payment transactions, which is
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undoubtedly useful. Not only is it useful, the invention is new
and non-obvious, as explained in the sections below.
App. Br. 19.
We are not persuaded by Appellant’s arguments that the claims are
directed to a practical application of the abstract idea. The Examiner finds
and we concur that the additional limitations of representative claim 1,
which recite an electronic database, a computer processor are merely generic
computer elements and that paragraph 60 of Appellant’s Specification
identifies that invention can be implemented on a general purpose computer.
Further, the Examiner finds that the claims do not represent an improvement
to a computer. Answer 8. We concur with the Examiner and do not find
that Appellant’s Specification identify an improvement to the operation of
the computer, but rather as discussed above an improvement to an abstract
idea, which is implemented using the computer as a tool. Appellant’s
argument that use of a computer is indicative of the claims reciting a
practical application is not well taken. The Supreme Court has stated
“merely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Thus, we do not consider representative claim 1 to be directed to practical
application of the abstract idea.

Significantly more than the Abstract Idea
Appellant argues that “the claimed invention is closely tied to
computing and communication equipment and no generic computer is
readily capable of performing the recited steps or functions. A special
purpose computer (e.g., a payment or compliance-checking processor) has to
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be specifically programmed for the novel non-compliance capture functions
recited herein.” App. Br. 22. Further, Appellant argues that the current
claims pose no risk of preemption. App. Br. 23–24.
We are not persuaded the Examiner erred in not considering the
claims to recite significantly more by these arguments. As discussed above,
Appellant’s Specification, in paragraph 60, identifies that the invention may
be implemented on a general-purpose computer, which appears to
undermine Appellant’s argument that “no generic computer is readily
capable of performing the recited steps or functions.” Further, with regard
to Appellant’s preemption argument, our reviewing court has said “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, . . ., preemption concerns are fully addressed
and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). Thus, Appellant’s arguments are not
persuasive of error in the Examiner’s determination that the claims do not
recite significantly more that the abstract idea.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that the claims are directed to an abstract idea;
both a mental processes and a fundamental economic activity. Further,
Appellant’s arguments have not persuaded us that the Examiner erred in
finding that the claims are not: directed to an improvement in the
functioning of the computer or to other technology or other technical field;
directed to a particular machine; directed to performing or affecting a
transformation of an article to a different state or thing; directed to using a
judicial exception in some meaningful way beyond linking the exception to a
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particular technological environment such that the claim as a whole is more
than a drafting effort to monopolize the judicial exception.
Accordingly, we sustain the Examiner’s rejection of representative
claim 1 and claims 3 through 6 and 8 through 14, grouped with claim 1,
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.

Rejections 35 U.S.C. § 103
Appellant argues the Examiner’s rejection of representative
independent claim 1 is in error as the Examiner did not show the
combination of the references teaches the claim 1 limitation of automatically
revising at least some of the non-compliant data. App. Br. 24–25.
Specifically, Appellant argues that Henry, which the Examiner relies upon to
teach this limitation, teaches a human agent can revise non-compliant
payment data. App. Br. 25. However, Appellant argues that the reference
does not teach the automated agent revising the non-compliant payment
data. Id.
The Examiner provides a detailed explanation of how Henry teaches
human agent can change a parameter of a transaction. Answer 14 (citing
Henry para. 40). Further, the Examiner finds that Henry teaches that the
agent may be a person or an automated terminal to perform the functions
which suggests automating the manual activities. Answer 14 (citing Henry
para. 48).
Initially, we note that representative claim 1, recites “automatically
determining . . . whether the payment data comply with the plurality of
travel rules, the step of automatically determine further comprising at least
one of:” and then lists five different steps (one of which is the limitation
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disputed by Appellant). Thus, the claim is reciting five alternative steps; if
any one of them is taught by the reference, the claim is met. The Examiner
in the Final rejection found that Henry teaches all five of the steps. Final
Act. 16–18. Appellant has only contested the Examiner’s findings with
respect to one of these steps. Thus, even if, as Appellant argues, the
Examiner erred in finding Henry teaches the disputed limitation, it would
not show error in the rejection as only one of the five alternatively recited
limitations (all of which the Examiner finds are taught) needs to be met for
the rejection to be proper. Nonetheless, we concur with the Examiner’s
finding that Henry suggests the disputed limitation, while Henry does not
explicitly teach automatically revising non-compliant payment data, we
consider the teachings of it being done by a human agent and that the agent
may be automated, to provide the suggestion to automatically revising non-
compliant payment data. Accordingly, Appellant’s arguments have not
persuaded us of error in the Examiner’s obviousness rejection of
independent claim 1 and claims 3 through 6, 8, 9, 11, 13, and 14 grouped
with claim 1.
Appellant has not presented arguments with respect to the Examiner’s
obviousness rejection of dependent claims 10 and 12. Accordingly, we
sustain the Examiner’s rejection of dependent claims 10 and 12 for the same
reasons as discussed with respect to claim 1.

DECISION
The Examiner’s decision rejecting claims 1, 3 through 6, and 8
through 14 is affirmed.

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Claims
Rejected
Basis Affirmed Reversed
1, 3–6, and 8–
14
§ 101 1, 3–6, and 8–
14

1, 3–6, 8, 9, 11,
13, and 14
§ 103 Henry and
Reich
1, 3–6, 8, 9,
11, 13, and 14

10 and 12 § 103 Henry, Reich,
and Venzon
10 and 12
Outcome 1, 3–6, and 8–
14

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED