Ujin Chang et al.

Patent Trials and Appeals Board

Sep 18, 2019

11857123 - (D) (P.T.A.B. Sep. 18, 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.
11/857,123 09/18/2007 Ujin Chang P4955 1317
24739 7590 09/18/2019
CENTRAL COAST PATENT AGENCY, INC
3 HANGAR WAY SUITE D
WATSONVILLE, CA 95076
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
info@centralcoastpatent.com
officeactions@CENTRALCOASTPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte UJIN CHANG, WILLIAM YOUNG,
GARY WILLIAMS, PETER HAZLEHURST, and
MATTHEW AMAN
____________________

Appeal 2018-003438
Application 11/857,1231
Technology Center 3600
____________________
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21–24 and 26–30, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1–20 and 25 have been cancelled.
We AFFIRM.

1 According to Appellants, the real party in interest is Yodlee.com, Inc.
(App. Br. 2).
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CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a billing system in
which billers create an electronic bill with payment instructions and the
corresponding bill payment is deposited into multiple bank accounts
according to percentages specified by the bill’s payment instructions (Spec.
18:6–10, 19:13–14, Abstract). Claim 21, reproduced below, is
representative of the claimed subject matter:
21. A system of computerized servers having a connection to
the Internet, each storing and executing software providing
structure and management of electronic deposits remitted from
payers to billers comprising:
a first software routine executing from a computerized
portal server providing a first interface accessible by the payers
using computerized appliances connected to the Internet, said
first interface enabling each one of the payers to register a
plurality of personally owned financial accounts holding
accessible funds for the payers and a second personalized
interface enabling the billers, using computerized appliances
connected to the Internet, to register a plurality of financial
accounts, receiving deposits, and enabling the billers to create
electronic bills including payment instructions to payers;
a second software routine executing from a main
processing server generating a separate financial account
identifier unique from and associated with actual financial
account numbers of each one of the registered financial accounts
owned by the payers and the billers, each of the financial account
identifiers specifically matched directly to the actual financial
account number of each of the registered financial accounts; and
a connection between the portal server, the main
processing server and a data repository, said data repository
storing information for the financial accounts registered and
owned by the billers and the payers including said financial
account identifiers and their respective actual financial account
numbers;
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wherein the electronic bills include the payment
instructions enabled to automatically cause the distribution of
received funds for the bill by indicating the account identifiers
owned by the biller automatically creating a second payment
instruction including directing a withdraw from the payers
financial account and a deposit to two or more of the registered
financial accounts owned by the billers, as identified in the
electronic bills, said payers financial accounts also identified by
the financial account identifiers received with the second
payment instruction, and the payment instructions include
assignments for each of a plurality of the account identifiers for
the billers for said deposit including at least specific separate
percentages of the deposit amount assigned to each of two or
more of the plurality of the account identifiers for the billers, and
the second software matches financial account numbers of the
financial accounts in the data repository with the received
financial account identifiers, the financial account identifier used
in place of the actual financial account number in the second
payment instruction wherein deposit amounts dictated by the
percentages are deposited in each one of the financial accounts
owned by the billers.

REJECTION
Claims 21–24 and 26–30 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter (Non-Final Act. 7–23).
Our review in this appeal is limited only to the above rejection and the
issues raised by Appellants. Arguments not made are waived (see MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv)).

Principles of Law
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
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable (Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014)).
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 (id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012))). In accordance with that
framework, we first determine what concept the claim is “directed to” (see
id. 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.”)).
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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 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
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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.”)).
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 (quotation marks 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.).

USPTO January 7, 2019 Revised Section 101 Memorandum
The USPTO published revised guidance on the application of § 101
(see 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
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50 (Jan. 7, 2019 (“2019 Guidance”)). Under the 2019 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.

ISSUE
The Examiner concluded claims 21–24 and 26–30 are directed to
patent-ineligible subject matter (Non-Final Act. 7–23). Appellants argue the
invention as recited in claims 21–24 and 27–29 is directed to patent-eligible
subject matter (App. Br. 6–8). Therefore, the issue presented by the
arguments is whether the Examiner erred in concluding the invention as
recited is patent-ineligible.

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ANALYSIS
Appellants argue all pending claims as a group (see App. Br. 6–8).
Accordingly, we address all pending claims as a group and we select
independent claim 21 as representative of the claimed subject matter (see 37
C.F.R. § 41.37(c)(1)(iv)).

STEP 1
Section 101 provides that “[w]hoever 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” (35 U.S.C. § 101).
Representative independent claim 21 recites a system and, thus, is directed
to a statutory class of invention within 35 U.S.C. § 101, i.e., a machine.

STEP 2A, Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether the claims, being directed to statutory classes of invention,
nonetheless fall within a judicial exception.
We agree with the Examiner’s determination that the claims recite an
abstract idea, namely certain methods of organizing human activity, because
the claims recite “the sending of bills to payer[s] and having the payers make
deposits to billers[’] accounts in accordance with the biller[s’] instructions,”
which the Examiner determines is a “human activity relating to commercial
practices,” i.e., a commercial interaction (Non-Final Act. 10).
Appellants argue the Examiner erred by “not interpreting the creation
of a new electronic bill, including embedded instructions, as claimed, as a
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new instrument or tool created by software” (App. Br. 6). Appellants
highlight that “the bill provides instructions for withdrawal and creating
instruction[s] for the biller to negotiate payments associated with the bill to
deposit (percentages [of payments]) into two or more accounts” (Reply
Br. 3).
We are not persuaded. Appellants’ argument describes the use of an
electronic bill, but that electronic bill is used to implement the commercial
interaction identified by the Examiner. That is, although the commercial
interaction is implemented using an electronic bill, the claims nonetheless
recite a commercial interaction. In particular, the Examiner determines that
the claims recite “sending . . . bills to payer[s] and having the payers make
deposits to billers[’] accounts in accordance with the biller[s’] instructions”
(Non-Final Act. 10) and enabling “a payee [to] be compensated in multiple
accounts” (id. at 20). Supporting the Examiner’s determination,
representative claim 21 recites, in part,:
[a] payers . . . register a plurality of personally owned financial
accounts holding accessible funds for the payers;
[b] billers . . . register a plurality of financial accounts;
[c] create . . . bills including payment instructions to payers;
[d] a separate financial account identifier unique from and
associated with actual financial account numbers of each one of
the registered financial accounts owned by the payers and the
billers, each of the financial account identifiers specifically
matched directly to the actual financial account number of each
of the registered financial accounts;
[e] the payment instructions enabled to . . . cause the distribution
of received funds for the bill by indicating the account identifiers
owned by the biller . . . creating a second payment instruction
including directing a withdraw from the payers financial account
and a deposit to two or more of the registered financial accounts
owned by the billers, as identified in the . . . bills, said payers
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financial accounts also identified by the financial account
identifiers received with the second payment instruction, and the
payment instructions include assignments for each of a plurality
of the account identifiers for the billers for said deposit including
at least specific separate percentages of the deposit amount
assigned to each of two or more of the plurality of the account
identifiers for the billers, and . . . match[ing] financial account
numbers of the financial accounts . . . with the received financial
account identifiers, the financial account identifier used in place
of the actual financial account number in the second payment
instruction wherein deposit amounts dictated by the percentages
are deposited in each one of the financial accounts owned by the
billers.
(bracketed labels added). Those limitations reflect “commercial practices,”
i.e., commercial interactions, in banking (Non-Final Act. 10). Limitations
[a], [b], and [d] recite registering payer and biller financial accounts and
associating the registered financial accounts with respective unique payer
and biller account identifiers. Such processes establish ownership of
financial accounts, and identifying the owner, or identifying the owner’s
financial accounts, is a process part of a commercial interaction. Limitation
[c] recites the creation of a bill with payment instructions, and limitation [e]
details those payment instructions, specifically, that the bill payment will be
deposited into different financial accounts at specific percentages using
account identifiers. Providing a bill with particular payment instructions is a
common practice in a commercial interaction. Further, making a payment,
e.g., a deposit, into different accounts based on instructed percentages
describes a common commercial interaction. For example, an employee can
provide instructions for the employee’s salary deposit to be split between the
employee’s checking account and the employee’s savings account. And, as
described above, using an account identifier to identify the financial
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accounts to withdraw money from or deposit money into is a process in a
commercial interaction.
As such, the claims recite a system implementing a commercial
interaction. Additionally, taking a payment and depositing that payment into
multiple accounts can also be described as a fundamental economic principle
because directing where, and how much, money is held is a long-standing
economic practice. Both commercial interactions and fundamental
economic principles are certain methods of organizing human activity, as
identified in the 2019 Guidance. Therefore, we determine the claims recite
an abstract idea.

STEP 2A Prong 2
Next, we determine whether the claims are directed to the abstract
concept itself or whether the claims are instead directed to some
technological implementation or application of, or improvement to, the
recited concept, i.e., integrated into a practical application (see, e.g., Alice,
573 U.S. at 223, discussing Diehr, 450 U.S. at 175).
As discussed above, Appellants argue “the creation of a new
electronic bill, including embedded instructions” is “a new instrument or
tool created by software” and so is an “improvement of technology” (App.
Br. 6–7; Reply Br. 2). Appellants further argue the “electronic bill” allows
“separate instructions [to] be generated on the fly changing percentages and
accounts for distributing each payment, which clearly advances the
technology of bill generation and payment from a user’s computer” (App.
Br. 8; Reply Br. 3–4).
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We are not persuaded that Appellants’ broadly claimed electronic
implementation of a bill with payment instructions is an improvement to
technology or otherwise integrates the abstract concept into a practical
application. Rather, we agree with the Examiner’s determination that the
recited bill and associated payment instructions “cannot be seen to improve
the performance of the computer system itself” (Ans. 8; Non-Final Act. 13).
The claims broadly recite that the bill’s payment instructions include
information considered by the system, e.g., “separate percentages of the
deposit amount assigned to each of two or more of the plurality of the
account identifiers,” and recite the results of those payment instructions, e.g.,
“automatically cause the distribution of received funds for the bill . . . to two
or more of the registered financial accounts owned by the billers” and
“deposit amounts dictated by the percentages are deposited in each one of
the financial accounts owned by the billers.” But that recitation of the
information considered and the desired results is not particular to electronic
billing technology such that the improvement is an improvement to
electronic billing technology. Rather, the alleged improvement recited by
the claims splits a payment into multiple identified accounts, which is an
improvement to the abstract idea discussed above. Although Appellants
argue that the bill includes “[e]mbedded software” (Reply Br. 3), claim 21
does not include limitations reciting that the claimed instructions are unique
to software.
Furthermore, the improvements Appellants highlight, i.e., “separate
instructions can be generated on the fly changing percentages and accounts
for making a payment and distributing each payment” (App. Br. 8; Reply
Br. 3–4), are not reflected in the claims. The claims only recite “including
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payment instructions,” but do not recite that those instructions are changed,
much less how the system provides “on the fly” changes.
Accordingly, the claims are not directed to a specific asserted
improvement in computer technological implementation or otherwise
integrated into a practical application and thus are directed to a judicial
exception.

STEP 2B
Next, we determine whether the claims include additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept (Alice, 573 U.S. at 218–219 (quoting Mayo,
566 U.S. at 72–73)).
We agree with the Examiner’s determination that the claims do not
recite significantly more than the abstract idea itself because the claims do
not recite “meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment” (Non-Final Act. 13).
In particular, we agree with the Examiner that the claims “generically
recite[] computer elements such as ‘servers[,’] ‘Internet[,’] ‘software[,’]
‘portal server[,’] and ‘main processing server[,’]” which are “routine in any
computer implementation” (id. at 13) and perform generic computing
functions (id. at 16–17). Indeed, the remaining claim limitations recited in
claim 21, which are not part of the abstract idea discussed above, recite
generic computing elements and functions, e.g., “a first software routine
executing from a computerized portal server providing a first interface
accessible by the payers using computerized appliances connected to the
Internet,” “a second personalized interface,” “a second software routine
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executing from a main processing server,” and “a connection between the
portal server, the main processing server and a data repository, said data
repository storing information for the financial accounts registered” (App.
Br. § Claims)
The Specification supports the Examiner’s determination that those
remaining limitations implement the claimed invention using generic
computing elements performing generic computing functions. For example,
the Specification describes that the processes recited are performed using
generic computers, such as a “main processing server 110” (Spec. 6:17–19)
and “a desktop computer 124 running an instance of browser software (BS)
126” (id. at 7:15–16). Further, the Specification describes that the interfaces
for registering accounts “may be presented in any Web-based language
interface like HTML, SHTML, XML, or other markup versions” (id. at
13:5–6). Still further, the Specification describes that data are stored in a
“mass data repository 111” which can be “any one of a number of known
types such as magnetic or optical storage, RAID array, or other storage
facility” (id. at 6:26–29).
Furthermore, considering the claimed functions of the generic
computing components as an ordered combination, we determine those
computer functions are generic, routine, and conventional computer
activities that are performed only for their conventional uses in an ordinary
manner (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); see also In
re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316
(Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
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‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”)). The
claimed ordering of the steps therefore is ordinary and conventional. We
thus conclude the claims do not provide an inventive concept because the
additional elements recited in the claims do not provide significantly more
than the recited judicial exception.
Additionally, Appellants’ argument that the claims “do[] not preempt
all applications of the exception” does not persuade us that the claims are
directed to patent-eligible subject matter (App. Br. 8; Reply Br. 4).
Although preemption is characterized as a driving concern for patent
eligibility, preemption itself is not the test for patent eligibility. Rather,
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Where claims are deemed to recite only patent-ineligible subject matter
under the Alice analysis, as they are here, “preemption concerns are fully
addressed and made moot” (id.).
Accordingly, the claims do not recite patent-eligible subject matter.
Appellants argue the claims as a group and so we sustain the rejection of
claims 21–24 and 26–30 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
DECISION
The Examiner’s rejection of claims 21–24 and 26–30 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter is affirmed.
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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) (see 37
C.F.R. § 41.50(f)).
AFFIRMED