Charles Schwab & Co., Inc., a Delaware corporati

Patent Trials and Appeals Board

Dec 14, 2021

2020006085 (P.T.A.B. Dec. 14, 2021)

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. 13/686,688 11/27/2012 William Page 1750 4601 30748 7590 12/14/2021 INNOVATION PARTNERS One Pine Street SUITE 2110 San Francisco, CA 94111 EXAMINER ULLAH, SHARIF E ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): ceg@i-plaw.com paralegal@i-plaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES SCHWAB & CO., INC. Appeal 2020-006085 Application 13/686,688 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JASON V. MORGAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 5, and 9. See Appeal Br. 10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. STATEMENT OF THE CASE 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Charles Schwab & Co., Inc. Appeal Br. 2. Appeal 2020-006085 Application 13/686,688 2 Appellant’s invention is directed to a system and method for receiving information among computer systems through user identifiers rather than log-in information. Spec. 1. Claims 1 and 5, reproduced below with disputed limitations emphasized, are representative of the claimed subject matter: 1. A method of transferring data from a first account at a first computer system to a second account at a second computer system, the method comprising: receiving at the second computer system, a request to arrange at least one transfer of data from the first account to the second account; responsive to the request to arrange the transfer of data, providing from the second computer system an identifier of a user of the second account that uniquely identifies the user of the second account but is not required by a user of the second computer system to log in as that user on the second computer system, to a third computer system that is separate from at least one of the first computer system and the second computer system; responsive to said providing step, signaling the first computer system to authenticate a user of the first account; following the signaling step, receiving from the first computer system at the third computer system an identifier of the first account that uniquely identifies a user of the first account on the first computer system but is not required by the first computer system from a user of the first computer system to log in as that user on the first computer system, and corresponds to the same person that the identifier of the second account uniquely identifies; associating at the third computer system the identifier of the first account and the identifier of the second account; Appeal 2020-006085 Application 13/686,688 3 generating and providing from the second computer system to the third computer system a request for information from the first account comprising the identifier of the user of the second account; receiving at the third computer system from the second computer system the request for information from the first account comprising the identifier of the user of the second account; responsive to the request for information from the first account, identifying and providing by the third computer system to the first computer system the identifier of the user of the first account as part of a request for information from that account; receiving at the third computer system the information requested from the first computer system; forwarding from the third computer system the information received from the first computer system to the second computer system; receiving the information at the second computer system; and associating the information received at the second computer system with the second account. 5. A system for transferring data from a first account at a first computer system to a second account at a second computer system, the system c [sic] a data consolidator setup manager at the second computer system having an input for receiving a request to arrange at least one transfer of data from the first account to the second account, the data consolidator setup manager for, responsive to the request to arrange the transfer of data, providing at an output an identifier of a user of the second account that uniquely identifies the user of the second account but is not Appeal 2020-006085 Application 13/686,688 4 required by a user of the second computer system to log in as that user on the second computer system, and for initiating via the data consolidator setup manager output, the first computer system to authenticate a user of the first account; a matching system setup manager at a third computer system that is separate from at least one of the first computer system and the second computer system, the matching system setup manager having an input coupled for receiving from the first computer system an identifier of the first account that uniquely identifies a user of the first account on the first computer system but is not required by the first computer system from a user of the first computer system to log in as that user on the first computer system, and corresponds to the same person that the identifier of the second account uniquely identifies, the matching system setup manager for associating via an output, the identifier of the user of the first account and the identifier of the user of the second account; a data consolidator data request manager, at the second computer system, having an input coupled to the data consolidator setup manager output for receiving the identifier of the user of the second account, the data consolidator data request manager for generating and providing at an output a request for information from the first account comprising the identifier of the user of the second account; a matching system data request manager, at the third computer system, having an input coupled to the data consolidator data request manager output for receiving the identifier of a user of the second account as part of the request for information from the first account, the matching system data request manager for, responsive to the request for information from the first account, identifying and providing at an output coupled to the first computer system the identifier of the user of the first account as part of a request for information from that account, for receiving via the matching system data request manager input the information requested from the first computer system, and for forwarding via the matching system Appeal 2020-006085 Application 13/686,688 5 data request manager output the information received from the first computer system; and a data consolidator data request manager, at the second computer system, having an input coupled to the matching system data request manager output for receiving the information, the data consolidator data request manager associating the information received with the user of the second account. Appeal Br. 25-29, Claims App’x. BACKGROUND Related Application No. 13/686,704 was previously considered in Appeal No. 2017-009259, in which we reversed the Examiner’s § 101 rejection of claim 4, reversed the Examiner’s § 103 rejections of claims 1, 4, and 7 over Yoo and Fiducci, and entered a new ground of rejection under § 112(b) of claims 1, 4, and 7. REJECTIONS2 Claim 5 stands rejected under 35 U.S.C. § 101 as directed to ineligible subject matter. Claims 1, 5, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoo et al. (US 2012/0173348 A1; published July 5, 2012) (“Yoo”) and Fiducci (US 2006/0242273 A1; published Oct. 26, 2006). 2 The Examiner rejected claim 1 under nonstatutory obviousness type double patenting as unpatentable over claims 1, 4, and 7 of co-pending Application No. 13/686,704. Final Act. 6-7. Appellant subsequently filed a terminal disclaimer on November 10, 2014, which was approved and entered on November 21, 2014. Appeal 2020-006085 Application 13/686,688 6 ANALYSIS 35 U.S.C. § 101 Rejection The Examiner finds that “claim 5 is directed towards ‘a setup manager’ and ‘data request manager,’ . . . [which] is drawn only to the program (software per se) and not the program in combination with the apparatus and as such fails to fall into a statutory category of invention as no hardware is claimed.” Final Act. 7; see also Ans. 2. According to the Examiner, the claim’s recitation that the “matching system setup manager at a third computer . . .” is acceptably interpreted “as a software package located ‘at’ a computer system.” Ans. 2. The Examiner states that “if the matching system setup manager is explicitly a hardware element that is part of the computer system, then the Examiner recommends the inclusion of such language further defining the setup manager in the claims.” Ans. 2-3. Appellant contends that claim 5 “recites active functions, in contrast to software itself, which just sits there and doesn’t do anything by itself.” Appeal Br. 11. According to Appellant, “active functions cannot be claims to software per se, because software, by itself, i.e. without a computer system, cannot perform the functions of claim 5.” Appeal Br. 12; see also Reply Br. 2. Appellant further contends that the Specification “describe[s] a processor acting to implement the present invention.” Appeal Br. 12. (citing Spec. 11:5-9). Appellant’s arguments are unpersuasive of reversible Examiner error. The Specification states that “[t]he present invention may be implemented as software on a conventional computer system.” Spec. 11:2-3. Although the Specification states that “[p]rocessor 160 retrieves and executes software instructions stored in storage 162 . . . and may control other components to Appeal 2020-006085 Application 13/686,688 7 perform the present invention,” a “processor” is not recited in claim 5. See Spec. 11:5-9. Therefore, claim 5 neither proscribes nor requires use of any required hardware to perform the argued functions in the claim. Moreover, even if the claimed software functionality is only rendered operable by hardware-e.g., executed by a computer-such a perquisite to operability does not save the claim from reciting software per se; claim 5 has no recitations directed to the claimed system being in an operable state. Accordingly, on the record before us, we sustain the Examiner’s 35 U.S.C. § 101 rejection of independent claim 5. Obviousness over Yoo and Fiducci The Examiner finds that Fiducci discloses “receiving at the second computer system, a request to arrange at least one transfer of data from the first account to the second account,” as recited in independent claim 1 and commensurately recited in independent claims 5 and 9. Final Act. 10 (citing Fiducci ¶¶ 43-46, 62-65, 68, 71). The Examiner states that “[r]equests for data transfer can occur between different accounts or sub-accounts.” Id. The Examiner finds that Yoo discloses “responsive to the request to arrange the transfer of data, providing from the second computer system an identifier of a user of the second account that uniquely identifies the user of the second account but is not required by a user of the second computer system to log in as that user on the second computer system, to a third computer system that is separate from at least one of the first computer system and the second computer system,” as recited in independent claim 1 and commensurately recited in independent claims 5 and 9. Final Act. 8 citing Yoo ¶¶ 56, 57, 60, 63, 68, 109, 218, 219, 234, 239). The Examiner states that “[e]ach account Appeal 2020-006085 Application 13/686,688 8 includes a phone number and/or an identifier that is unique, and separate from the user-id and password for log-in, which is provided to a separate computer system to transfer data.” Id. Appellant contends that Yoo and Fiducci do not disclose these limitations. See Appeal Br. 15-18; Reply Br. 4-8. Appellant contends that because “the request itself is not described in Yoo . . . the portion responsive to the request cannot actually be responsive to it as claimed.” Appeal Br. 15. Appellant further argues that “Yoo does not point out that [the phone number or account number] is provided from one computer system to another in response to a request to arrange data transfer.” Id. at 16; see also id. at 17, Reply Br. 4-5. Appellant argues that Yoo’s phone number “need not uniquely identifier a user,” so only Yoo’s account number could potentially disclose the “identifier of a user of a second account that uniquely identifies the user of the second account but is not required by a user of the second computer system to log in as that user on the second computer system.” Id. at 16 (citing Yoo ¶ 219); see also id. at 17. However, according to Appellant, Yoo’s account number is never provided from one computer system to another. Appellant also presents arguments with respect to other limitations, arguing, for example, that the Examiner has not shown that Yoo or Fiducci teaches an identifier for an account that is not required to log into the account, which is required by the claims. See Appeal Br. 17- 23; Reply Br. 5-8. Having considered the Examiner’s findings with respect to the teachings in Yoo and Fiducci, we agree with Appellant that the Examiner has failed to explain with specificity how the combination of Yoo and Fiducci teach or suggest the limitations in the claims. In the Final Action, Appeal 2020-006085 Application 13/686,688 9 the Examiner provides citations to paragraphs 56, 57, 60, 63, 68, 109, 218, 219, 234, 239 in Yoo, in various groupings for each of the limitations for which the Examiner relies on Yoo, but only provides a general explanation of how the reference is being applied. Final Act. 8-9. Likewise, in the Final Action, the Examiner relies on paragraphs 43-46, 62-65, 68, 71 of Fiducci, and generally refers to Fiducci’s data transfer functionality. Final Act. 9-10. In the Answer, the Examiner relies on substantially different citations to Yoo, paragraphs 62, 72, 94-95, 102-03, 130-34, 189-93, 197, and generally describes Yoo’s functionality without a clear explanation as to how Yoo is being applied to the claims. Ans. 4-5. The claim limitations recite each of the claimed first, second, and third computer systems performing various functions, such as receiving, providing, signaling, identifying, associating, generating, and forwarding certain information relating to a first account or a second account, including an identifier of a user of a first account and an identifier of a user of the second account. See Appeal Br. 25-32, Claims App’x. Yoo describes various computer systems, including a data storage facility, servers, mobile phones, user terminals, and an interchange. Yoo ¶¶ 56, 60. Yoo describes these systems in various different embodiments and teaches that each may, for example, perform the same functionality in different embodiments. See, e.g., Yoo ¶ 218 (user authenticated by servers), ¶ 221 (user authenticated by interchange), ¶ 62 (data stored in data storage facility or on servers); ¶ 102 (user provides phone number directly to merchant); ¶ 130 (user provides account identifier to interchange). The Examiner does not sufficiently identify which of Yoo’s computer systems correspond to each of the first, second, and third computer systems in the claims, or which embodiment(s) Appeal 2020-006085 Application 13/686,688 10 are being relied upon. As one example, because the claimed authenticating is performed by the first computer system, either Yoo’s interchange or server must correspond to the claimed first computer system. Likewise, the third computer system associates the claimed identifiers, so either Yoo’s data storage facility or server may correspond to the third computer system. However, the Examiner does not provide any specific discussion of the embodiments, or how they compare to Appellant’s claims. Yoo also describes using phone numbers, account identifiers, aliases, PINs, and one-time passwords. Yoo ¶¶ 68, 109, 130, 218-23. The Examiner appears to rely on the PIN to teach or suggest the claimed user identifier (Ans. 5), however, the Examiner does not elaborate on how these are provided and received among the various systems in Yoo such that it teaches the limitations of the claims. For example, with respect to Yoo’s PIN, the Examiner does not elaborate on how Yoo teaches that as part of a request to transfer data from the first account to the second account, the PIN for a user of a second account is received at a third computer system, receiving at the third computer system from the first computer system a PIN of a user of a first account, associating at the third computer systems the PINs of a first account and second account, providing from the second computer system to the third computer system a request for information from the first account comprising the PIN of the second account, identifying and providing from the third computer system to the first computer system the PIN of the user of the first account, etc. A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement of § 132. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“The Appeal 2020-006085 Application 13/686,688 11 pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.”); Gechter v. Davidson 116 F.3d 1454, 1460 (Fed. Cir. 1997) (providing that the PTO must create a record that includes “specific fact findings for each contested limitation and satisfactory explanations for such findings.”). Here, the Examiner’s general and broad findings leave us to speculate as to the precise details of how each of the claim limitations are described by the references. It is not our place to speculate as to the basis for rejecting claims. In re Stepan Co., 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (providing that it is the PTO’s obligation to provide prior notice to the applicant of all matters of fact and law asserted prior to an appeal hearing before the Board.) We note the Board is a reviewing body and not a place of initial examination. Therefore, we cannot sustain the Examiner’s 35 U.S.C. § 103 rejection of independent claims 1, 5, and 9. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5 101 Eligibility 5 1, 5, 9 103 Yoo, Fiducci 1, 5, 9 Overall Outcome 5 1, 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART