Harold, Michelle et al.

Patent Trials and Appeals Board

Dec 27, 2019

14494267 - (R) (P.T.A.B. Dec. 27, 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.
14/494,267 09/23/2014 Michelle Harold 2174.000400 9172
23720 7590 12/27/2019
WILLIAMS MORGAN, P.C.
6464 Savoy
Suite 600
HOUSTON, TX 77036
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
Docketing@wmalaw.com
jjohn@wmalaw.com
nnolan@wmalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELLE HAROLD, MARK BREUR, and
JOHN F. TANGREDI
____________

Appeal 2018-007578
Application 14/494,267
Technology Center 3600
____________

Before KRISTEN L. DROESCH, JENNIFER S. BISK, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal entered September 30, 2019 (“Decision,” “Dec.”) affirming the
Examiner’s rejection of claims 1–21 under 35 U.S.C. § 101.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant indicates the real party-in-interest is INSPERITY
SERVICES, L.P. App. Br. 2.

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CLAIMED SUBJECT MATTER
Claim 1, which is representative of the subject matter of the appeal
and is reproduced from the Claims Appendix of the Appeal Brief, reads as
follows:
1. A method for providing an automated transfer of funds,
comprising:
receiving data relating to an unused amount of funds in
an account associated with a first payment mechanism, the
unused funds having been deposited in the account associated
with the first payment mechanism by a third party;
determining if a user of a second payment mechanism
has a pending request for funding from the third party;
transferring at least a portion of said unused amount of
funds from said account associated with said first payment
mechanism to an account associated with the second payment
mechanism in response to determining that said user of said
second payment mechanism has a pending request for funding
from the third party; and
transferring at least a portion of said unused amount of
funds from said account associated with said first payment
mechanism to a master account in response to determining that
said user of said second payment mechanism does not have a
pending request for funding from the third party.

SUMMARY OF THE DECISION ON REHEARING
In the Decision, we affirmed the Examiner’s rejection of claims 1–21
under 35 U.S.C. § 101. Specifically, in concluding that the claims are not
patent eligible under 35 U.S.C. § 101, we found that claim 1 recites a
judicial exception––a fundamental economic practice, which is one of
certain methods of organizing human activity identified in the Guidance, and
thus, an abstract idea. See Dec. 8–10. We further determined that the
additional elements of claim 1 (i.e., “receiving data . . .” and “automated”)
do not integrate the judicial exception into a practical application. See id. at
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10–13. Finally, we also determined the additional elements, individually, or
as an ordered combination, do not provide an inventive concept. See id. at
13–15.
THE REQUEST FOR REHEARING
Appellant seeks reconsideration of the Decision affirming the
rejection of claims 1–21 under 35 U.S.C. § 101. Appellant argues that the
Board failed to consider evidence urged by Appellant that the operation of
the computer is improved by virtue of the claimed method and apparatus.
See Appellant’s Request for Reconsideration, filed December 2, 2019 (“Req.
Reh’g”) 2. Appellant also argues the Board incorrectly concluded that the
claims do not improve the functioning of a computer or other technology.
STANDARD OF REVIEW
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. 37 C.F.R.
§ 41.52(a)(1). Arguments not raised in the briefs before the Board are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4). See id. New argument based upon a recent relevant
decision of either the Board or a Federal Court may be presented. 37 C.F.R.
§ 41.52(a)(2).
DISCUSSION
Appellant argues that the Board failed to consider evidence urged by
Appellant that the operation of the computer is improved by virtue of the
claimed method and apparatus. See Req. Reh’g 2, 6 (citing 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 54–55 (USPTO
Jan. 7, 2019) (“Revised Guidance”)). Appellant argues that the Appeal Brief
provided a description of each claim with citations to the specification where
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each element of the claims was set forth and described in context with other
elements of each claim, and set forth an exemplary operation of the system
that necessarily flows from the description and claims set forth in the cited
portions of the Specification. See Req. Reh’g 3–5 (quoting Appeal Br. 2,
section entitled “Summary of Claimed Subject Matter,” id. at 13–14).
Appellant contends the quoted “exemplary explanation is entirely supported
by the Specification as a whole, including each of the paragraphs identified
above (and in Appellant’s Amended Appeal Brief) with particular attention
to paragraphs [0021], [0028], [0068], [0071], [0078-0079].” Id. at 5.
Appellant contends that “[t]he notion that the claimed method results in half
the number of funds transfers necessarily flows from the very language of
the claims and is further supported by the description . . . in the
[S]pecification, as identified in Appellant’s Amended Appeal Brief.” Id.
Appellant further disagrees with the Board’s characterization of
Appellant’s arguments as attorney argument. See Req. Reh’g. 5. Appellant
contends that Appellant correctly identifies and describes the claimed
operation of the funding process and what necessarily flows therefrom. See
id. Appellant asserts that what necessarily flows from the described and
claimed funding process is that previously, two transactions were required to
complete the funding process, whereas only a single transaction is required
using the claimed process, which is necessarily faster than performing two
transactions. See id. Appellant contends “[t]his is not attorney argument; it
is a fact to which no countervailing facts or arguments were provided by the
Board.” See id. Appellant argues “the Board simply rejects Appellant’s
position out-of-hand without stating any reason.” See id. (citing Dec. 14).
Appellant further contends “[t]he Board never identifies how any statement
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made by Appellant is incorrect, or more importantly why the Board
disagrees.” Id. at 5–6.
Appellant’s arguments on Rehearing do not persuade us that we
misapprehended or overlooked arguments in the Appeal Brief and/or Reply
Brief. Appellant’s Request for Rehearing expresses disagreement with a
misunderstanding of the Decision, as demonstrated by Appellant’s
arguments which focus on the Specification disclosing a reduction in the
number of transfers for funds reallocation (see Req. Reh’g 3–6). In contrast
to Appellant’s understanding, in the Decision we considered the following
arguments: (1) embodiments described in the claims “reduce the number of
transfers so that funding may occur automatically and efficiently to achieve
real time or near real time funding . . . reducing the number of transactions
by up to 50%;” (2) “the process will experience a dramatic (i.e., 100%)
boost in operating speed;” and (3) “[w]ithout Appellant’s contribution,
software for controlling transfers would be substantially slower such that
real time or near real time transfers would not be achievable.” Dec. 12
(citing App. Br. 13–14; Reply Br. 7). In other words, we considered
Appellant’s arguments linking a reduced number of transfers to achieving
real time or near real time funding, a dramatic boost in operating speed, and
the achievement of real time or near real time transfers compared to
substantially slower operations using a conventional or non-reduced number
of transfers. See id. at 12–13. And we explained that we considered these
arguments to be attorney arguments because Appellant did not direct us to
evidence, such as the Specification, to support Appellant’s asserted links.
See id. at 12–13. As Appellant admits, these arguments are an “exemplary
explanation.” See id. at 5.
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To the extent that Appellant points out certain paragraphs cited in the
“Summary of the Claimed Subject Matter” section of the Appeal Brief,
Appellant does point out where in the Appeal Brief and/or Reply Brief, that
Appellant asserted that paragraphs 8, 20, 28, 78, 79, and 86 of the
Specification discloses a reduced number of transfers is linked to achieving
real time or near real time funding, a dramatic boost in operating speed, and
real time or near real time transfers compared to substantially slower
operations using a conventional or non-reduced number of transfers.
Paragraphs 8, 20, 28, 78, 79, and 86 of the Specification provide no such
links, and instead summarize the disclosed subject matter and the types of
remote devices that may be used, and explain the flow chart depicted in
Figure 7 for reallocating funds. See Spec. ¶¶ 2, 8, 20, 28, 78, 79, 86.
In support of the Request for Rehearing, Appellant also cites
paragraphs 21, 68, 71, and 88 of the Specification, but Appellant does not
direct us to where in the Appeal Brief and/or Reply Brief these paragraphs of
the Specification were addressed previously. See Req. Reh’g 5 (citing Spec.
¶¶ 21 28, 68, 71, 78–79, 88). We cannot misapprehend or overlook evidence
that was not presented previously. In any event, paragraphs 21, 68, 71, and
88 of the Specification also do not disclose that a reduced number of
transfers is linked to achieving real time or near real time funding, a
dramatic boost in operating speed, and real time or near real time transfers
compared to substantially slower operations using a conventional or non-
reduced number of transfers. Paragraphs 21, 68, 71, and 88 instead disclose
the following: (1) the funds reallocation process may be made automatically
on a periodic basis, when a funds request is detected, or upon receipt of an
instruction; (2) an accounting unit requesting transfer and/or reallocation of
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funds by communicating the request to a funds transfer unit, and the
reallocation of funds in response to detecting a request; (3) a funds transfer
unit may relay a request for reallocation to a reallocation unit; and (4) an
apparatus of similar scope to the apparatus described in claim 9. See Spec.
¶¶ 21, 68, 71, 88.
Appellant also contends the Board incorrectly concluded that the
claims do not improve the function of a computer or other technology. See
Req. Reh’g 2 (citing Dec. 13). Appellant asserts the Board’s conclusion
rests on its interpretation of OIP Techs, which, according to Appellant, is
contrary to the more recent Federal Circuit decision in Trading Techs. Int’l
v. CQG, Inc., 675 Fed. Appx. 1001, 1006 (Fed. Cir. 2017). Appellant argues
“that improving the efficient transfer of funds between payment mechanisms
within an organization to provide funding on a real time or near real time
basis plainly improves the functioning of the computer in much the same
way the Federal Circuit found improved operation of a computer in Trading
Techs[.] Int’l where the [c]ourt held that ‘[t]he patents are for a method and
system for reducing the time it takes for a trader to place a trade when
electronically trading on an exchange.’” Id. (citing Trading Techs. at 3); see
id. at 3 (arguing the improvement by the invention in the present claims is
parallel to the improvement of the computer operation in Trading Techs.).
According to Appellant, Trading Techs. establishes that software that
reduces the time to complete a financial transaction improves the
functioning of a computer and is eligible subject matter. See id. at 2. On the
foregoing bases, Appellant contends that because the Federal Circuit in
Trading Techs. recognized that improving the speed at which electronic
trade may be completed improves the functioning of the computer, it must
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necessarily follow that improving the speed at which electronic funding is
completed also improves the functioning of the computer. See id. at 3.
We are not persuaded that Rehearing should be granted based on
Appellant’s new arguments relying on Trading Techs. Appellant filed its
Appeal Brief on March 3, 2018, citing Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed Cir. 2016) and McRO Inc. v. Bandai Namco Games Amer.
Inc., 837 F.3d 1299 (Fed. Cir. 2018) to support its argument that the
application is directed to a solution in the software arts and a technological
problem, not an abstract idea. See Appeal Br. 12–15. Although new
argument based upon a recent relevant decision may be presented on
rehearing (see 37 C.F.R. § 41.52(a)(2)), Appellant does not explain why
Trading Techs. should be considered a recent relevant decision under 37
C.F.R. § 41.52(a)(2) and, thus, the basis for new arguments. Trading Techs.
was entered in 2017, and predates both the March 3, 2018 filing of the
Appeal Brief and the 2018 McRO decision cited therein. Appellant could
have presented arguments in the Appeal Brief and/or Reply Brief based on
Trading Techs., but did not do so. A decision of either the Board or a
Federal Court, newly discovered by an appellant, is not a proper basis for
presenting new arguments in a request for rehearing.
For all of the foregoing reasons, Appellant’s Request for Rehearing is
denied.
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CONCLUSION
Appellant’s Request for Rehearing is DENIED.
In summary,
Outcome of Decision on Rehearing:
Claims 35 U.S.C. § Basis Denied Granted
1–21 101 Eligibility 1–21
Outcome 1–21

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C. § Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 112 Written Description 1–21
Outcome 1–21

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).

DENIED