Carl Christopher. Tierney et al.

Patent Trials and Appeals Board

Aug 15, 2019

13887267 - (D) (P.T.A.B. Aug. 15, 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.
13/887,267 05/03/2013 Carl Christopher Tierney AV2SY.0102 2109
22858 7590 08/15/2019
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
08/15/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CARL CHRISTOPHER TIERNEY and
MATTHEW JOEL CRANE
____________________

Appeal 2017-010977
Application 13/887,267
Technology Center 3600
____________________

Before LARRY J. HUME, LINZY T. McCARTNEY, and
JASON J. CHUNG, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 56–99. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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BACKGROUND
This patent application “relates to gift processing systems/methods
and generally includes gifting operations related to financial transfers
utilizing credit card, debit card, and/or ACH transactions, as well as non-
financial gift transactions of time, labor, and the like.” Specification 4:20–
24, filed May 3, 2013 (“Spec.”). Claim 56 illustrates the claimed invention:
56. A gift transaction processing system comprising:
(a) a gift interchange hub connected to a network;
(b) a gift information system; and
(c) a donor information system; wherein
the donor information system and the gift information
system communicate with the gift interchange hub via the
network;
the gift information system comprises connection to a
graphical user interface, a plurality of gift options, and a plurality
of donees, wherein each donee is associated with financial
information;
the graphical user interface is configured for use by a
donor or the donor’s authorized representative to create or access
the donor’s account, access or provide payment information
related to the donor’s account, access or provide documentation
related to the donor’s account history, access or provide personal
information related to the donor; access or provide the plurality
of gift options;
the donor information system is configured to store a
plurality of donor identification tokens, wherein each donor
identification token is associated with personal and payment
information related to the donor, received via the graphical user
interface;
the gift interchange hub is configured to:
receive donor information from a donor through the
graphical user interface, wherein the donor information
comprises donor identification information;
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transmit the donor identification information to the
donor information system;
determine whether the donor identification
information exists in the donor information system;
generate a donor identification token if the donor
identification information does not exist in the donor
information system;
retrieve the donor identification token if the donor
identification information exists in the donor information
system;
transmit the plurality of gift options to the donor
through the graphical user interface
receive at least one selected gift option from the
donor through the graphical user interface;
activate a specified financial transaction process
associated with the donor identification token and the at
least one selected gift option;
the specified financial transaction process is configured to;
form a financial data bridge allowing data transfer
from the donor to the donee of the at least one selected gift
option using the donor identification token and the
plurality of financial information associated with the
donee; and
activate a funds transfer from the donor using the
donor identification token to the donee;
the gift interchange hub and the graphical user interface
are embodied in one or more computer systems executing
software retrieved from a tangible non-transitory computer
readable medium; and
said computer systems are linked via a computer network.
Appeal Brief 30–31, filed December 7, 2016 (“App. Br.”).
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REJECTION1
Claims Basis
56–99 § 101

DISCUSSION
We have reviewed the Examiner’s rejection of claims 56–99 under
§ 101 and Appellants’ arguments. Appellants have not persuaded us that the
Examiner erred. Consistent with the discussion below, we adopt the
Examiner’s reasoning, findings, and conclusions on pages 3 and 5–6 of the
Final Office Action mailed May 16, 2016 (“Final Act.”) and on pages 13–16
of the Answer mailed May 16, 2017 (“Ans.”).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a

1 The Examiner withdrew the rejections of claims 87–99 under 35 U.S.C.
§ 112 and claims 56–99 under 35 U.S.C. § 103. Answer 12, mailed
May 16, 2017.
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patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the merits of the § 101
rejection. Appellants argue claims 56–99 together for this rejection, so as
permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this
rejection based on claim 56.
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Abstract Idea
The Revised Guidance explains that the abstract idea exception
includes “mental processes,” “mathematical concepts,” and “certain methods
of organizing human activity.” Revised Guidance, 84 Fed. Reg. at 52. The
Examiner determined that claim 56 recites subject matter that falls within the
certain methods of organizing human activity grouping. See Final Act. 5–6
(determining that claim 56 recites “processing a gift transaction” and
explaining that this concept is “a longstanding commercial practice[]” and “a
fundamental economic practice long prevalent in our system of commerce”);
Ans. 13 (determining that “[t]he concept described in claim 56 is not
meaningfully different than those economic concepts found by the courts to
be abstract ideas”); see also Revised Guidance, 84 Fed. Reg. at 52
(explaining that certain methods of organizing human activity include
fundamental economic principles or practices and commercial or legal
interactions).
We agree. Claim 56 recites “[a] gift transaction processing system”
that (1) receives and transmits donor information from a donor, the donor
information including donor identification information; (2) determines
whether the donor identification information exists in the donor information
system; and (3) generates or retrieves a donor identification token depending
on whether the donor identification information exists in the donor
information system. See App. Br. 30. The system also (4) transmits gift
options to the donor, (5) receives at least one selected gift option from the
donor, and (6) activates a specified financial transaction process associated
with the donor identification token and the at least one selected gift option.
See App. Br. 30–31. The specified financial transaction process (7) forms a
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financial bridge using the donor identification token and the plurality of
financial information associated with the donee and (8) activates a fund
transfer from the donor to the donee using the donor identification token. See
App. Br. 31.
These steps concern the data collection and processing involved in
arranging a particular type of financial transaction: giving a gift. Courts have
determined that claims directed to arranging financial transactions in a
specific field are drawn to abstract ideas. See, e.g., Smart Sys. Innovations,
LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017)
(determining that claims “directed to the formation of financial transactions
in a particular field (i.e., mass transit) and data collection related to such
transactions” are patent ineligible); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (explaining that “claims directed to the mere formation and
manipulation of economic relations may involve an abstract idea”). And we
see no meaningful distinction between the financial transaction recited in
claim 56 and other commercial or economic interactions that courts have
determined are abstract ideas. See, e.g., Bilski v. Kappos, 561 U.S. 593, 611
(2010) (hedging risk); Alice, 573 U.S. at 219 (intermediated settlement);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(creating a contractual relationship). We thus determine that claim 56 recites
certain methods of organizing human activity, one of the abstract idea
groupings recited in the Revised Guidance. See Revised Guidance, 84 Fed.
Reg. at 52 (explaining that certain methods of organizing human activity
includes fundamental economic principles or practices and commercial or
legal interactions).
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The functional nature of claim 56 confirms that the claim recites an
abstract idea. Claim 56 recites that “the gift interchange hub” performs steps
(1)–(8) discussed above. See App. Br. 30–31. But claim 56 does not recite
how the hub performs these steps; the claim merely recites that the hub does
so. For example, claim 56 recites that the hub “generate[s] a donor
identification” and “activate[s] a specified financial transaction” that in turn
“form[s] a financial data bridge” and “activate[s] a funds transfer.” App.
Br. 30–31. Claim 56 describes these steps in functional, result-oriented terms
and provides almost no detail about how the hub performs these steps. “The
purely functional nature of the claim confirms that it is directed to an
abstract idea, not to a concrete embodiment of that idea.” Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016).
Because we determine that claim 56 recites an abstract idea, we next
consider whether claim 56 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
consider whether there are any additional elements beyond the abstract idea
that, individually or in combination, “integrate the [abstract idea] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit.” Revised Guidance, 84 Fed. Reg.
at 54–55.
The Examiner determined that the additional elements recited in
claim 56 include the “gift interchange hub,” “network,” “gift information
system,” “donor information system,” and “graphical user interface.” See
Final Act. 6; Ans. 14–15. The Examiner determined that these components
are generic and perform generic functions. See Ans. 14.
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We agree. To the extent that the written description describes these
elements, the written description describes them in manner that indicates the
elements are conventional and perform conventional functions. For example,
the written description describes “[a] preferred financial gifting exemplary
system embodiment of the present invention” in which “a financial gifting
donor interacts with a Graphical User Interface running on some form of a
computerized device executing software read from a computer readable
medium to access the Internet.” Spec. 48:1–8 (reference numbers omitted);
see also Spec. Fig. 33 (illustrating a preferred embodiment of the present
invention). The written description goes on to disclose that the exemplary
system includes generically described servers and a donor database that
“may have many forms.” Spec. 48:9–30; see also App. Br. 4–5 (mapping
aspects of the claimed system to elements of the preferred embodiments
disclosed at pages 48 and 49 of the written description). The written
description also notes that “[w]hile the present invention specifically
anticipates that the use of the Internet for most applications, the present
invention makes no limitation on the type of communication technology or
computer networking that may be used.” Spec. 41:11–15. The written
description describes other embodiments of the present invention in a similar
manner. See, e.g., Spec. 44:10–45:10 (describing preferred embodiments of
the present invention), Figs. 25, 26 (illustrating preferred embodiments of
the present invention).
As illustrated by these portions of the written description, when the
written description describes the recited additional elements, it does so at a
high level of generality with few technical details. The written description
thus indicates that the additional elements are conventional computer and
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software components that perform conventional functions. See Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(“[A] patent need not teach, and preferably omits, what is well known in the
art.”); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331
(Fed. Cir. 2017) (“The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
(software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources.”). Using
conventional computer and software components as tools to perform an
abstract idea is not enough to integrate the abstract idea into a practical
application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)).
Appellants’ arguments have not persuaded us otherwise. Appellants
argue that claim 56 is patent eligible because the claim improves the
functioning of a computer system. See App. Br. 14. Appellants assert that
the claimed invention “puts forth the use of a donor identification token” so
“sensitive financial information associated with the donor is not transmitted
via the Internet but rather contained locally within the donor information
system” and can be accessed only by the gift interchange hub. App. Br. 14
(quotation marks omitted) (quoting Spec. 48:20–22). As such, Appellants
contend that claim 56 “merely involve[s]” an abstract idea rather than “being
directed to” an abstract idea as determined by the Examiner. App. Br. 14.
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We disagree. The relevant inquiry is whether the recited additional
elements integrate the abstract idea into a practical application such as
improving the functioning of a computer. See Alice, 573 U.S. at 217;
Revised Guidance, 84 Fed. Reg. at 54–55 (explaining that evaluating
integration into a practical application involves “evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application” (emphasis added)). Yet
Appellants argue that part of the identified abstract idea—using a donor
identification token to transfer funds—provides a practical application. The
abstract idea itself cannot provide a practical application of the abstract idea.
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“We
may assume that the techniques claimed are ‘[g]roundbreaking, innovative,
or even brilliant,’ but that is not enough for eligibility.” (alteration in
original) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 591 (2013))).
The outcome would be the same even if we considered the donor
identification token as an additional element. The Examiner found that the
claimed invention does not “improve the token technology or the computer
itself, or solve a technical problem associated with tokenizing financial
information.” Final Act. 15. Instead, the Examiner found that the claimed
invention “limit[s] the abstract idea to a technical environment by merely
performing routine token operations on a computer, without specifying how
the technological problem is manipulated to reach the inventive solution.”
Final Act. 15. The written description supports these findings. As with the
other additional elements recited in the claim, the written description
discusses tokens in functional terms and does not suggest that the claimed
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invention improves token technology or changes how computers operate.
See, e.g., Spec. 29:25–30, 48:19–49:19, 65:19–28. This indicates that the
recited donor identification token is conventional and performs conventional
functions. See Hybritech, 802 F.2d at 1384; Intellectual Ventures I, 850 F.3d
at 1331; see also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 615
(Fed. Cir. 2016) (determining that “vague, functional descriptions of server
components are insufficient to transform the abstract idea into a patent-
eligible invention”). Simply using conventional computer implementation
does not transform an abstract idea into a patent-eligible invention.
buySAFE, Inc. v. Google, Inc., 765 F.3d at 1354 (“The Court in Alice made
clear that a claim directed to an abstract idea does not move into section 101
eligibility territory by ‘merely requir[ing] generic computer
implementation.’” (quoting Alice, 573 U.S. at 221)).
Appellants also contend that claim 56 is not directed to an abstract
idea because the claim does “not effectively preempt or foreclose all
possible applications of the abstract idea.” App. Br. 18. Even if claim 56
does not entirely preempt the identified abstract idea, the lack of complete
preemption does not show that claim 56 is patent eligible. See, e.g., Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”).
For at least the above reasons, we determine that the additional
elements recited in claim 56, considered individually or together, do not
integrate the recited abstract idea into a practical application.
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Inventive Concept
Finally, we consider whether claim 56 has an inventive concept, that
is, whether the claim has additional elements that “‘transform the nature of
the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). As discussed above, this requires us to evaluate
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
Whether an additional element adds well-understood, routine, conventional
activities is a factual determination that must be adequately supported. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also
USPTO, Memorandum on Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (“Berkheimer Memo”).
The Examiner determined that the additional elements recited in claim
56 perform well-understood, routine, and conventional activities. See Final
Act. 6; Ans. 14–15. As discussed above, to the extent that the written
description discusses the additional elements, the written description does so
in a manner that indicates that the elements are conventional and perform
conventional functions. See, e.g., Spec. 29:25–30, 41:11–18, 48:1–49:19,
65:19–28; see also Hybritech, 802 F.2d at 1384; Intellectual Ventures I, 850
F.3d at 1331. This is sufficient to support the Examiner’s determination. See
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Berkheimer Memo 3 (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Appellants assert that claim 56 “involves limitations that when
considered individually and as an ordered combination recite an inventive
concept through the system’s financial security architecture.” App. Br. 15.
Appellants acknowledge that embodiments of the claimed invention use
“known elements” but argue that invention implements these elements “in a
non-conventional and non-generic arrangement.” App. Br. 17. Appellants
assert that Figure 41 of the application shows known components interacting
with security service 4104 and argue that “[t]his arrangement is non-
conventional and non-generic because conventional and generic
arrangements of components of Figure 41 generally do not include as much
information passing through the security service.” App. Br. 17. Appellants
make similar arguments for the “multi-channel gift processing system with
embedded payment processing and an embedded revenue subledger” shown
in Figure 49 of the application. See App. Br. 17–18.
We find these arguments unpersuasive because claim 56 does not
explicitly recite the elements shown in Figures 41 and 49. Claim 56 does not
explicitly recite a security service, let alone recite that known components
transmit information through the security service. See App. Br. 30–31. Nor
does claim 56 explicitly recite a multi-channel gift processing system with
embedded payment processing and an embedded revenue subledger.
Because these features are not recited in claim 56, these features do not
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provide an inventive concept. Alice, 573 U.S. at 221 (explaining that to
determine whether a claim has an inventive concept, “we must examine the
elements of the claim” (emphasis added)).
Appellants also point to “various objectives to circumvent the
deficiencies in the prior art” discussed in the written description to show that
claim 56 has an inventive concept. App. Br. 16. But claim 56 does not
purport to achieve these objectives, and Appellants have not shown that the
system recited in claim 56 does so. For example, claim 56 does not require
providing “a one click experience,” “a single integrated solution that
eliminates the manual process of moving data to and from disparate channel
based gift processing systems,” or an “integrated payment processing
mechanism with the gift processing system for all channels that
automatically reconciles merchant processing transactions with gift
payments, charitable event payments, and grants.” App. Br. 16. And
Appellants have not shown that the system recited in claim 56 achieves these
results, let alone established that the recited additional elements do so
instead of the abstract idea. See App. Br. 16–18. Similarly, although claim
56 recites a donor identification token, claim 56 does not recite that this
token is “a secure token” or require transmitting the token “over the network
without transmitting sensitive donor information.” App. Br. 16. Even if the
donor identification token were equivalent to the secure token identified by
Appellants, for the reasons discussed above, the token would not provide an
inventive concept.
In sum, the additional elements “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
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at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. We
therefore determine that claim 56 does not recite an inventive concept.
Conclusion
For the reasons discussed above, we determine that claim 56 is
directed to an abstract idea and does not have an inventive concept. We
therefore sustain the Examiner’s rejection of claim 56 under § 101.

DECISION

Claims
Rejected Basis Affirmed Reversed
56–99 § 101 56–99
Outcome 56–99

No period for taking any action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).

AFFIRMED