Ravi Acharya et al.Download PDFPatent Trials and Appeals BoardSep 17, 201913326390 - (D) (P.T.A.B. Sep. 17, 2019) Copy Citation 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. 13/326,390 12/15/2011 Ravi Acharya P56154 3550 157693 7590 09/17/2019 JPMorgan Chase / Greenblum & Bernstein 1950 Roland Clarke Place Reston, VA 20191 EXAMINER PUTTAIAH, ASHA ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 09/17/2019 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 RAVI ACHARYA and WILLIAM F. MANN ____________________ Appeal 2018-004285 Application 13/326,390 Technology Center 3600 ____________________ Before JOSEPH L. DIXON, KEVIN F. TURNER, and MATTHEW J. McNEILL, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-004285 Application 13/326,390 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of claims 1–19, 37, and 39. Claims 20–36, 38, and 40 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a method and system for simplifying bill payment for customers, and in particular for simplifying bill payment for recurring bills. (Spec. ¶ 1). Some customers of financial institutions do not participate in online bill payment because the customers “may also find enrollment difficult due to the requirement for entry of account numbers, addresses, and other biller identifiers not readily available to the customer. Thus, these customers may not set up online payment simply because setting up each bill for payment is time consuming or complicated.” (Spec. ¶ 4). Appellant discloses “a solution is needed to simplify the enrollment process for banking customers and otherwise encourage banking customers to utilize the service.” (Spec. ¶ 7). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented bill payment system for facilitating transfer of payments from a customer of a biller to the biller computing system, the bill payment system comprising: 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as JPMorgan Chase Bank, N.A. App. Br. 2. Appeal 2018-004285 Application 13/326,390 3 a host server connected over the Internet with the biller computing system, the host server including at least one computer processor; at least one computer memory accessible to the computer processor of the host server and storing data and instructions; an enrollment engine stored in the computer memory and operated by the host server, the enrollment engine enrolling billers in the bill payment system, the biller computing systems connected over the Internet with the bill payment system, the enrollment engine enrolling customers in the bill payment system upon receiving a customer enrollment request including a bill issued by the biller system at the payment system, the enrollment engine generating a limited purpose automated teller machine (ATM) card or ATM customer code, the limited purpose ATM card or customer code implemented by the customer for bill payment through an ATM; a code generator operated by the host server and generating a unique code corresponding to each biller, the code generator communicating the generated code to the enrollment engine for association with a requesting biller, the enrollment engine providing the code to the biller; and a payment processing engine operated by the host server, the payment processing engine receiving payments to billers from customers through the ATM accessed through the limited purpose ATM card or customer code, each payment including a cash payment accompanied by the unique biller code corresponding to the biller, the payment processing engine processing the customer payment and crediting the payment to the biller. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2018-004285 Application 13/326,390 4 Corona et al. US 2007/0045395 A1 Mar. 1, 2007 (“Corona”) Graves et al. US 2008/0172331 A1 July 17, 2008 (“Graves”) REJECTIONS The Examiner made the following rejections: Claims 1–19, 37, and 39 stand rejected under 35 U.S.C. § 101 because the claimed invention is not directed to eligible subject matter. Claims 1–19, 37, and 39 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Graves further in view of Corona. ANALYSIS 35 U.S.C. § 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 218–19 (“On their face, the claims before us are drawn to the concept of Appeal 2018-004285 Application 13/326,390 5 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.”). 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (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 (1854))); 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 187; 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 Appeal 2018-004285 Application 13/326,390 6 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.”). 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. (alterations in original) (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 January 7, 2019 Memorandum, 84 Fed. Reg. 50, 2019 Revised Patent Subject Matter Eligibility Guidance (“Revised Guidance”). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, 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) (“Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Prong Two”) (see MPEP § 2106.05(a)–(c), (e)–(h)) (9th ed. 2018). Appeal 2018-004285 Application 13/326,390 7 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 is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (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 Revised Guidance. With respect to independent claims 1 and 12, Appellant presents arguments directed to independent claim 1, and Appellant does not set forth separate arguments for patent eligibility of independent claim 12. As a result, we select independent claim 1 as the representative claim for the group and address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. See Revised Guidance. Claim 1 recites “computer- implemented bill payment system.” Appellant does not argue the Examiner erred in concluding claim 1 falls within the four statutory categories of patentable subject matter. (App. Br. 10). We agree with the Examiner’s conclusion because claim 1 falls within the machine category. Appeal 2018-004285 Application 13/326,390 8 Revised Guidance Step 2A(i) Under Step 2A(i) of the Revised Guidance, we determine whether the claims recite any judicial exceptions, 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). See Revised Guidance. With respect to independent claim 1, the Examiner generally maintains that “the claims are directed [to] a method and the system of bill payment using an ATM and using a unique code.” (Final Act. 11). Using the Examiner’s finding of an abstract idea, we determine that the claimed invention does not recite mathematical concepts and does not recite mental processes. The claimed invention recites one of the certain methods of organizing human activity, such as, a fundamental economic practice. The Examiner maintains the invention as claimed and argued by Appellant addresses a “business challenge” and a “business challenge” is an abstract problem not a technical issue. (Ans. 6). The Examiner further maintains that independent claim 1 recites a bill payment system to transfer funds which is akin to processing information through a clearinghouse and collecting and comparing known information which is one of certain methods of human activity such as a fundamental economic practice and thus is an abstract idea. (App. Br. 11). We further refine the Examiner’s determination of the abstract idea to identify that claim 1 recites the following limitations: 1. A computer-implemented bill payment system for facilitating transfer of payments from a customer of a biller to the biller computing system, the bill payment system comprising: Appeal 2018-004285 Application 13/326,390 9 a host server connected over the Internet with the biller computing system, the host server including at least one computer processor; at least one computer memory accessible to the computer processor of the host server and storing data and instructions; an enrollment engine stored in the computer memory and operated by the host server, the enrollment engine enrolling billers in the bill payment system, the biller computing systems connected over the Internet with the bill payment system, the enrollment engine enrolling customers in the bill payment system upon receiving a customer enrollment request including a bill issued by the biller system at the payment system, the enrollment engine generating a limited purpose automated teller machine (ATM) card or ATM customer code, the limited purpose ATM card or customer code implemented by the customer for bill payment through an ATM; a code generator operated by the host server and generating a unique code corresponding to each biller, the code generator communicating the generated code to the enrollment engine for association with a requesting biller, the enrollment engine providing the code to the biller; and a payment processing engine operated by the host server, the payment processing engine receiving payments to billers from customers through the ATM accessed through the limited purpose ATM card or customer code, each payment including a cash payment accompanied by the unique biller code corresponding to the biller, the payment processing engine processing the customer payment and crediting the payment to the biller. (Emphases added). These limitations, under their broadest reasonable interpretation, recite a system of payment processing operated by the host server, the payment processing engine receiving data representative of Appeal 2018-004285 Application 13/326,390 10 payments, to billers from customers through the ATM accessed through the limited purpose ATM card or customer code, which are merely data representative of processing a cash payment to pay a bill. We additionally note that the preamble of independent claim 1 recites a “computer- implemented bill payment system,” but the system provides little details of the “system” beyond reciting “a host server,” a “computer memory,” and “the biller computing systems.”2 We find the steps of “receiving a customer enrollment request including a bill” and “providing the code to the biller” to be directed to insignificant extra-solution activity. Our reviewing court guides that data gathering is a classic example of insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom., Bilski v. Kappos, 561 U.S. 593 (2010). See Inventor Holdings, LLC v. 2 We note that in any further prosecution on the merits, the Examiner should consider the language of independent claim 1 with respect to the various “systems” recited therein. Claim 1 introduces “the biller computing system” and subsequently recites “the biller computing systems.” Additionally, the claim recites “the enrollment engine enrolling billers in the bill payment system” but then enrolls the “customer” rather than the “biller.” Subsequently, claim 1 recites “the code generator communicating the generated code to the enrollment engine for association with a requesting biller,” but the “customer” requested enrollment rather than the “biller.” As an additional consideration, the Examiner should consider the claim language “the enrollment engine generating a limited purpose automated teller machine (ATM) card,” but the Specification in paragraph 30 merely discloses that the enrollment engine may “generate an order for a limited purpose ATM card” rather than generating the card. We further observe that the originally filed claims were directed to a biller enrolling system, but the claims were amended to limit a customer enrolling aspect of the invention. (Amendment filed January 11, 2017). Appeal 2018-004285 Application 13/326,390 11 Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding that concept of “local processing of payments for remotely purchased goods” is a “fundamental economic practice, which Alice made clear is, without more, outside the patent system.”); Voter Verified, Inc. v. Election Sys. & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of “voting, verifying the vote, and submitting the vote for tabulation,” a “fundamental activity” that humans have performed for hundreds of years, to be an abstract idea). We determine the language of independent claim 1 sets forth an embellished method of processing a cash payment to pay a bill which traditionally may not have been readily available to the public. The claimed invention retrieves payment information regarding the biller and the bill and the invention uses this information to associate data regarding a cash payment to the biller. Claim 1 recites various limitations consistent with this characterization. Additionally, the Specification further supports this characterization. The Specification discloses “despite the availability of automated bill payment and the ease of use, many customers do not enroll. . . . Thus a solution is needed for simplifying bill payment that will minimize the burden on customers and billers.” (Spec. ¶ 6). The Specification further discloses “[t]he service is intended to simplify bill payment both for banks and for the banking customers. Accordingly, a solution is needed to simplify the enrollment process for banking customers and otherwise encourage banking customers to utilize the service.” (Spec. ¶ 7). The Specification further states: Appeal 2018-004285 Application 13/326,390 12 the payment system 900 may include its own imaging equipment 910. Customers may send their bills received via the postal service or other mail delivery service to the automated bill payment set up system or may deposit the bills in an ATM machine and the system will itself capture the image of the bill and perform set up operations for the customer. (Spec. ¶ 50). The Specification also discloses a high level description of the computing system (Spec. ¶¶ 53–60) and discloses multiple “modules” used in a system that may be in a single functional unit, in one system or distributed across a network and may be hardware tools, or a combination of software and hardware tools for managing the functionality of the “processors and/or memories of the computer system need not be physically in the same location. Each of the processors and each of the memories used by the computer system may be in geographically distinct locations and be connected so as to communicate with each other in any suitable manner.” (Spec. ¶ 61). Under the 2019 Guidance, judicial exceptions include certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes). We find the Examiner has shown the claimed invention is directed to organizing human activity, such as a fundamental economic practice as described in the 2019 Guidance. Moreover, we find the Examiner’s analysis based on the Examiner’s statement of the abstract idea supports the Examiner’s conclusion of a lack of patent-eligible subject matter. As a result, on the record before us, the invention as recited in representative independent claim 1 is not directed to mathematical concepts, or mental processes, but is directed to certain methods of organizing human Appeal 2018-004285 Application 13/326,390 13 activity such as a fundamental economic practice and thus is directed to an abstract idea. Revised Guidance 52. Revised Guidance Step 2A(ii) Under the Revised Guidance, if a claim recites a judicial exception, in Step 2A(ii) we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Here, claim 1 recites the additional elements of “host server,” “at least one computer memory,” and in the alternative, “a limited purpose automated teller machine (ATM) card or ATM customer code,” and “payment processing engine operated by the host server . . . the payment processing engine processing the customer payment and crediting the payment to the biller.” Appellant did not dispute any of these additional limitations in the claimed invention with respect to the abstract idea, and the Examiner made specific findings and conclusions in the Examiner’s Answer with regards to these additional elements “are done by the generically recited computing devices (Specification [0060] general purpose computer)” as they relate to the Alice analysis. (Ans. 6). Considering the claim as a whole, interaction of all the steps using the available data at an unspecified location “operated by a host server” does not apply or use the abstract idea in a meaningful way Appeal 2018-004285 Application 13/326,390 14 such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Thus, we determine that the abstract idea is not integrated into a practical application. Revised Guidance Step 2B Under the Revised Guidance, 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 is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Here, the Examiner maintains the claims do not include an improvement to another technology or technical field and the limitations are done by generically recited computing devices and using well-known machine-readable codes on bills. (Ans. 6–8; citing Spec. ¶¶ 38, 60). Appellant has not provided specific arguments for patent eligibility, and as a result has not shown that the Examiner erred in concluding a lack of subject matter eligibility. As a result, we sustain the Examiner’s conclusion of a lack of patent- eligible subject matter of independent claim 1 and independent claim 12 and the dependent claims not argued separately. Appeal 2018-004285 Application 13/326,390 15 35 U.S.C. § 103(a) With respect to claims 1–19, 37, and 39, Appellant’s do not set forth separate arguments for patentability. (App. Br. 22). Therefore, we select independent claim 1 as the representative claim and will address Appellant’s arguments thereto. 37 C.F.R. § 41.37(c)(1)(iv). With respect to independent claim 1, the Examiner relies upon the Graves reference to teach all these features except the enrollment engine, each payment including a cash payment accompanied by the unique biller code, and the enrollment engine enrolling the customer including a bill issued by the biller. (Final Act. 13–16). The Examiner also generally identifies some matters of claim interpretation, grammar, and intended use in determining the scope of the claimed invention.3 (Final Act. 16–17). Appellant argues that the portions of the Corona reference identified by the Examiner (¶¶ 50–56 and 70–74) do not disclose the limited purpose ATM card or ATM customer code. (Reply Br. 10–11). 3 At the outset, we note, as discussed above, that claim 1 is limited to a “system” at a host server that is intended to be used with data from an ATM machine. We further note the scope of the originally filed claims were directed to a system for enrolling a biller, but subsequent amendments to the claims introduced enrolling customers in the bill payment system making the system claim somewhat unclear whether it is the biller or the customer involved in requesting the code. We also observe that the customer makes a request with an enrollment engine with a “customer enrollment request,” but the code generator, at the host, provides a unique code corresponding to “each biller” (“the enrollment engine enrolling billers” is previously recited), but there is only a single biller and provides the unique code to the enrollment engine which provides it to the biller. As a result, it appears that two aspects of Appellant’s disclosed invention are mixed in the claimed invention. Appeal 2018-004285 Application 13/326,390 16 But, the Examiner relies upon the Graves reference to teach and suggest use of an (ATM) card to access the ATM functions. (Final Act. 13– 16). The Examiner further identifies that the Graves reference discloses the use of a card for payments and discloses that the card can be loaded with cash value for payments which can be used at an ATM machine. (Final Act. 14, citing Graves ¶ 25). Appellant contends that the Corona reference does not generate the unique limited purpose code enabling the customer identification as required by claimed invention. (Reply Br. 11). Additionally, Appellant contends that the Corona reference does not issue a code to identify the biller receiving the payment which is used at the ATM machine. (Reply Br. 11). Appellant further contends that the references fail to disclose enrolling customers in a bill paying system where the customer enrollment requests include a bill issued by the biller system at the payment system. (App. Br. 24–25, citing Corona ¶¶ 16, 44–46, and 52). As discussed above, the claim recites both enrolling the customer and enrolling the biller with the enrollment engine, but enrolling the customer would involve enrolling the customer and the corresponding biller. Otherwise, the biller would not receive the appropriate payment from the customer. Moreover, the Corona reference discloses that the ATM can take a digital image of a bill or that you can pay at one ATM and then take money out of a second ATM. (See generally Corona ¶¶ 71–83). Consequently, the Corona reference discloses that the biller is enrolled because the biller will receive a payment from the customer. Furthermore, the Corona reference further discloses creating bill payment profiles where customers or biller’s Appeal 2018-004285 Application 13/326,390 17 additionally set this information up and in combination with paragraph 46 evidences that the bill payment can similarly set up this profile. (Corona ¶¶ 46, 47, 54). Also, Appellant argued that the Corona reference, in paragraphs 70 and 81, does not show the features of the limited purpose code or ATM card. (Reply Br. 12). Appellant further contends that the claims require the enrollment engine generates the limited purpose code or ATM card that is used by the customer for bill payment. (Reply Br. 12). Although the Corona reference does not specifically teach or suggest the totality of this limitation regarding the enrollment engine, the limitation is fairly broad and the Corona reference does teach scanning a bill and associating the bill with a payment which also requires some correlation thereto to properly pay the bill to the biller from the customer. The Corona reference also teaches the use of an ATM machine to accept cash payments and generate payment data. Therefore, there has to be some unique ID or code and/or card with respect to use the ATM machine to access the functionality of the ATM machine and correlate the payments. This correlation is further supported by the fact that all customers and billers need to be correlated together with financial transactions to properly process received payments. Therefore, the various individual parts of the claimed invention are disclosed by the Corona reference in addition to the Graves reference. Therefore, we agree with the Examiner that the combination of the Corona and Graves references teaches and suggests all the parts of the claimed invention and specifically teaches and suggests the enrollment engine as broadly recited in the language of independent claim 1. Appeal 2018-004285 Application 13/326,390 18 Moreover, Appellant has not identified any specific definition of the enrollment engine or a specific algorithm with which to differentiate the manner in which customers and billers are enrolled. Appellant further contends that the Corona reference does not generate a “unique” limited purpose code enabling the customer identification, but the limited purpose code is not necessarily “unique” because “unique” is recited with respect to the “unique biller code” in the last limitation, not with respect to limited purpose code. (Reply Br. 12). Appellant’s argument is not commensurate in scope with the express language of representative independent claim 1 and is unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”). It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Additionally, arguments which Appellant could have made, but did not make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant further contends that the customer (remitter) in Corona does not enter a biller code generated by the payment system. (Reply Br. 12). Again, the argument is not commensurate in scope with the language of Appeal 2018-004285 Application 13/326,390 19 independent claim 1 because claim 1 does not expressly recite entry of a biller code generated by the payment system. With respect to the obviousness rejection, Appellant contends that the Examiner relied upon the Graves’ reference to disclose all the features of the invention except the enrollment engine and the Corona reference fails to disclose the generation of a limited purpose ATM card or ATM customer code. Appellant contends paragraphs 50–56 and 70–74 referenced by the Examiner include no such disclosure and are largely irrelevant to the features as claimed. (App. Br. 24–25). Appellant further contends that claims require that an enrollment engine generate a limited purpose code or ATM card that is “used by the customer” and further customer entry of a bill code (Reply Br. 10–11; see generally App. Br. 22–27.) We disagree with Appellant and find Appellant’s arguments are not commensurate in scope with the express limitations of the “system” of representative independent claim 1 because the biller code was provided by the code generator to the enrollment engine to the biller rather than the customer. Therefore, the association may be from the biller and the claim does not specifically identify entry by the customer. We disagree with Appellant and find that paragraph 46 of the Corona reference discloses the user is “prompted to set up sender and/or receiver profiles unless they already exist in the database.” The Corona reference is configured with a digital camera and software to obtain digital images of “a utility payment bill, a credit card bill, a mortgage payment bill a rent contract . . . and any other bill that can verify the remitter information.” (Corona ¶ 46). Therefore, if the Corona system may already contain a sender and/or receiver profile, then there necessarily would be a Appeal 2018-004285 Application 13/326,390 20 corresponding identification code associated therewith to obtain the records from the system memory. As a result, Appellant’s argument to the contrary is not persuasive. The Corona reference further describes the remitter depositing cash into the ATM Hopper. (Corona ¶ 47). Appellant also contends that the claims require that an enrollment engine generate a limited purpose code or ATM card that is used by the customer for bill payment. In Corona, after the remitter enters payment information into the ATM, the ATM can generate a confirmation code (Paragraph 70) that can be used by the receiver to ultimately collect the payment from an ATM, but Corona does not generate a unique limited purpose code enabling the customer identification as required by the presently pending claims. (Reply Br. 12). . Appellant further contends that the Graves’ system discloses variations with a card associated with an account for transferring payments or the card itself stores value. In either case, the bill payment card has an associated value, and modifying Graves with the disclosure of Corona would have fundamentally changed the principal of operation of Graves. (Reply Br. 12.) We note that Appellant did not present an argument to a change in the principle of operation in the principal appeal brief and argument thereto is waived. 37 C.F.R. § 41.37(c)(1)(iv). Alternatively, we find Appellant’s argument to be unpersuasive because we find both the Graves reference and the Corona reference to be directed to the financial transactions interacting with an ATM machine using identification codes for customer identification and biller identification, as discussed above. Furthermore, we note that Appellant’s argument to the “unique limited purpose code enabling the customer identification” is not Appeal 2018-004285 Application 13/326,390 21 commensurate in scope because the limited purpose code is not limited to be “unique,” as discussed above. Although we agree with Appellant that codes that identify people and monetary transactions are more desirable to be “unique,” the language of independent claim 1 does not necessarily require this feature. But, we further note that the Corona reference discloses that the “information may be required to conform with applicable laws” which may require unique identification of both the remitter and receiver. (Corona ¶ 46). Therefore, if the language of independent claim 1 were to require a unique code, we find that the Corona reference clearly suggests the use of unique codes for both remitters and receivers to track monetary transactions. Therefore, Appellant’s argument thereto does not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. The Examiner maintains that the “customer enrollment” and “reference submission of a bill or an invoice” is disclosed in paragraphs 16, 44–46, and 52 of the Corona reference. (Ans. 8). We agree with the Examiner. The Examiner further maintains that paragraphs 70 and 81 of the Corona reference discloses generating a unique ID code “such as a confirmation code or security code which is used (along with profile information) with the transaction ( [¶ 70] unique ID code . . . similar input/output profile may be used at both receiver ATM and remitter ATM)” and shows the identifier is used to access an ATM at a second time. (Ans. 8–9). The Examiner does not rely upon the Corona reference to teach the code used to pay the funds, but rather to teach the code used to access an ATM to execute a transaction. (Ans. 9). Appeal 2018-004285 Application 13/326,390 22 We agree with the Examiner that the Corona reference discloses in paragraphs 46 and 47 that the remitter deposits cash into a hopper of an ATM which necessarily requires an ATM card to initially access the ATM machine or at least a unique code for a user to access the ATM machine for security measures. Additionally, the system requires payer and receiver profiles which are either entered by a user or exists in the database. As a result, it would have been readily apparent to a skilled artisan that to retrieve a stored copy of the payor and receiver profiles, the system would necessarily have to have a unique address or code for the stored profiles. Therefore, we agree with the Examiner that the combination of the Graves reference with the teachings and suggestions of the Corona reference would have suggested to one of ordinary skill in the art at the time of the invention that there would have been an enrollment engine which associates a single customer/payer and single biller so as to facilitate online payment of bills as disclosed and suggested by the Corona reference. (See ¶¶ 46, 47, and 70). As a result, Appellant’s arguments have not shown error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1 and independent claim 12 not separately argued and dependent claims 2–11, 13–19, 37, and 39 not separately argued. CONCLUSIONS The Examiner did not err in rejecting claims 1–19, 37, and 39 based upon obviousness and a lack of patent eligible subject matter. Appeal 2018-004285 Application 13/326,390 23 DECISION For the above reasons, we sustain the Examiner’s patent eligibility rejection of claims 1–19, 37, and 39, and we sustain the examiner’s obviousness rejection of claims 1–19, 37, and 39. DECISION SUMMARY Claims Rejected Basis Affirmed Reversed 1–19, 37, and 39 § 101 1–19, 37, and 39 None 1–19, 37, and 39 § 103 1–19, 37, and 39 None 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) (2017). AFFIRMED Copy with citationCopy as parenthetical citation