Ex Parte Allen-Rouman et al

Patent Trial and Appeal Board

Mar 28, 2019

13425051 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/425,051 03/20/2012
20350 7590 04/01/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Terry Allen-Rouman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
87188-833783 (002760US) 2414
EXAMINER
LIU,IJUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS
TERRY ALLEN-RODMAN, JACK MICHAEL ARRINGTON,
KEV AL DESAI, ROBERT EDWIN DRA VENSTOTT,
WENDY D. LARSON, SCOTT J. LEVOKOVE,
JOHN JOSEPH MASCA V AGE III, PETER ERIC PHILIPP,
and MARGARET MORGAN WEICHERT
Appeal2017-008088
Application 13/425,051
Technology Center 3600
Before ALLEN R. MacDONALD, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 23, 25-29, 31-35, and 37--46, which are all of the pending claims. 2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as The W estem Union
Company. App. Br. 3.
2 Claims 1-22, 24, 30, and 36 are cancelled. See App. Br. 11-17.
Appeal2017-008088
Application 13/425,051
Illustrative Claim
Illustrative claim 23 reads as follows:
23. A method for performing an electronic funds
transfer transaction, the method comprising:
receiving by the processor, from a user, a selection of an
icon that indicates a payment option from a plurality of
payment options via a store-based input console associated with
a vendor, wherein
the store-based input console presents the icon
associated with the payment option;
in response to the selection of the icon, the processor
presents, via the store-based input console, a graphical interface
comprising multiple input fields to be completed by the user;
receiving by the processor, from the user, validation
information input to the store-based input console via the
multiple input fields of the graphical interface, wherein:
the validation information comprising a password;
and
account information of the user is not exposed to a
vendor system associated with the vendor;
validating, by a server of the funds transfer system over a
network, the validation information that comprises the
password with the account information of the user stored by the
funds transfer system by checking validation information,
including the password, against a database of the funds transfer
system to determine the validation information is correct; and
in response to validating the validation information that
comprises the password with the account information specific
to the user stored by the funds transfer system, transmitting
over the network, by the server of the funds transfer system, a
digital I OWE YOU to the vendor;
after a period of time, receiving over the network, by the
server of the funds transfer system, the digital I OWE YOU;
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confirming, by the server of the funds transfer system,
authenticity of the digital I OWE YOU; and
after confirmation of the authenticity of the digital I
OWE YOU, conducting a funds transfer to the vendor over the
network.
Rejections
The Examiner rejects claim 23 under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2.
The Examiner rejects all pending claims under 35 U.S.C. § 101 as
ineligibly directed to an abstract idea. Final Act. 2-27.
ANALYSIS
A. The § 101 Re} ection
Appellants argue error in the§ 101 rejection based on the independent
claims, from which we select claim 23 as representative. See App. Br. 5-10
and 37 C.F.R. § 4I.37(c)(l)(iv).
1. 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
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. 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,
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we first determine what concept the claim is "directed to." See Alice, 573
U.S. 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. Kappas, 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 (Gottschalkv. 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 182 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 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
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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 tum 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 and 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. ( 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 United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. US PTO' s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("2019 Guidance"). Under that guidance, we
first look to whether the claim recites:
( 1) (see 2019 Guidance Step 2A - Prong One) 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
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(2) (see 2019 Guidance Step 2A - Prong Two) additional elements
that integrate the judicial exception into a practical application (see
MPEP 3 § 2106.05(a}-(c), (e}-(h)). 4
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
(see 2019 Guidance Step 2B):
(3) adds a specific limitation beyond the judicial exception that are 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 2019 Guidance.
2. The Examiner's Determination and Appellants' Contentions
Applying step one of the Alice/Mayo analysis, the Examiner
determines the pending claims are "directed to [the] abstract idea of
performing an electronic funds transfer transaction." Final Act. 3, 11, 20;
see also id. at 3-8 (providing detailed analysis for claim 23). Applying step
two of the Alice/ Mayo analysis, the Examiner determines claim 23 "does[]
not include additional elements that are sufficient to amount to significantly
3 Manual of Patent Examining Procedure (MPEP) citations are to Revision
08.2017 (January 2018).
4 We acknowledge some of these considerations may properly be evaluated
under Step 2 of Alice (Step 2B of Office guidance). To maintain consistent
treatment within the Office, we evaluate them under Step 1 of Alice (Step
2A of Office guidance). See USPTO's January 7, 2019 Memorandum,
"2019 Revised Patent Subject Matter Eligibility Guidance."
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more than the judicial exception because the additional computer elements,
which are recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to practicing the
abstract idea." Id.
Appellants contend the Examiner errs by "overgeneraliz[ing] the
claims in order to find an abstract idea." App. Br. 5. Appellants further
contend the post-Alice precedent of DDR Holdings, 5 McRO, 6 and Enfzsh 7
compel a conclusion that claim 23 is not directed to a patent-ineligible
abstract idea at step one of the Alice/Mayo analysis.
3. Our Analysis
Our decision to reverse the Examiner on the § 101 rejection discusses
only those issues necessary for our conclusion. We agree with Appellants
that the Examiner errs in the § 101 rejection because, as discussed below, on
the record before us, we determine claim 23 recites limitations that integrate
the abstract idea(s) to which the claim is directed into a patent-eligible
application.
Alice/Mayo Step One
To be clear, consistent with its preamble, claim 23 recites limitations
directed to electronic funds transfer transactions. For example, claim 23
recites a series of steps performed "by a server of the funds transfer system
over a network," which includes "conducting a funds transfer ... over the
network." By reciting limitations directed to electronic funds transfer
5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
6 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
7 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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transactions, claim 23 is directed, at least in part, to the idea of electronic
funds transfer transactions. Electronic funds transfers are a fundamental
economic practice, which is one of certain methods of organizing human
activity. See, e.g., Inventor Holdings, LLC v. 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.").
But in terms of our ultimate conclusion as to whether claim 23 is
directed to a patent-ineligible abstract idea at step one of Alice/Mayo, we
must not express the idea to which the claim is directed in a way that is
"untethered from the language of the claims." Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). In particular, when we assess
what the claims are directed to, we must do so at the same level of generality
or abstraction expressed in the claims themselves. Id.; see also McRO, 837
F.3d at 1313 (quoting In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607,
611 (Fed. Cir. 2016)) (cautioning to "'be careful to avoid oversimplifying
the claims' by looking at them generally and failing to account for the
specific requirements of the claims"). Thus, we look to whether: (1) the
claims focus on a specific means or method that improves the relevant
technology or (2) the claims are instead directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1335-36 (Fed. Cir. 2016). That is, we
look to whether the claims are "specifically designed to achieve an improved
technological result in conventional industry practice." McRO, 837 F.3d at
1316; see also Alice, 573 U.S. at 223 (explaining that a claim reciting use of
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a generic computer along with other ineligible subject matter nevertheless
was patent eligible because the claim employed those limitations "in a
process designed to solve a technological problem in 'conventional industry
practice"' (quoting Diehr, 450 U.S. at 178)).
Alice Mayo Step One, 2019 Guidance Prong Two
Thus, in accordance with the 2019 Guidance, as part of our
Alice/Mayo step one analysis, we consider whether claim 23, which recites
the patent-ineligible abstract idea of an electronic funds transfer transaction,
is directed to a practical application, such that the claim is not patent-
ineligibly directed to an abstract idea. See 2019 Guidance 54--55. Here, in
describing the state of the art for electronic funds transfer, Appellants
identify a variety of practical "challenges and limitations of existing Internet
payment methods." See Spec. 1-7 (quoting id. at 3). Claim 23 recites
limitations directed to these practical challenges, such as requirements for a
graphical user interface (GUI) on a vendor system, which is used to obtain
user validation information, while shielding user account information from
(i.e., "is not exposed to") the vendor system. The Examiner treats these
claim 23 limitations as being "generic." Final Act. 8. We disagree. While
the limitations in claim 23 are not as specifically recited as the claims
reviewed in Technologies Int'!, Inc. v. CQG, INC, 675 F. App'x 1001 (Fed.
Cir. 2017)8, neither are they recited as "conventional steps, specified at a
high level of generality." Alice, 573 U.S. at 222. The Examiner's analysis
cites to a number of Federal Circuit decisions ( e.g., Ultramercial, buySAFE
(Final Act. 8), but fails to explain how these decisions are relevant to these
8 Also, contrast the specificity of claim 23 to the claims in Appellants'
parent patent U.S. Patent 7,366,695 B 1.
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particular claim 23 limitations. Therefore, on the record before us, we
determine that the Examiner's articulated reasoning is insufficient, and we
reverse the Examiner's rejection on procedural grounds.
Furthermore, at step one of the Alice/Mayo analysis, on this record,
we conclude claim 1 is directed to a practical application for electronic funds
transfer transactions. On its face, without further articulated reasoning from
the Examiner, claim 23 is more akin to the claims at issue in Trading
Technologies Int 'l, Inc. v. CQG, INC, where the Federal Circuit determined
claims that recited electronic trading of commodities were patent-eligible
because they were directed to improvements in existing GUis that had no
pre-electronic trading analog. See 675 F. App'x at 1003---05 (citing, inter
alia, DDR Holdings, McRO, and Enfish); see also Core Wireless Licensing
S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1359---60, 1362---63 (Fed.
Cir. 2018) (determining at Alice/Mayo step one "[t]he asserted claims in this
case are directed to an improved user interface for computing devices, not to
the abstract idea."); see also Finjan, Inc. v. Blue Coat Systems, Inc., 879
F.3d 1299, 1305 (Fed. Cir. 2018) (holding the claims at issue were "directed
to a non-abstract improvement in computer functionality, rather than the
abstract idea.
Absent adequate analysis by the Examiner to show the limitations are
conventional steps, specified at a high level of generality, we are constrained
to conclude claim 23 focuses on ( and is directed to) a specific means to
improve technology for electronic payment systems, i.e., it is not directed to
a result or effect that itself is the abstract idea while merely invoking generic
technological limitations. Enfzsh, 822 F.3d at 1335-36 (Fed. Cir. 2016).
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Accordingly, we do not sustain the § 101 rejection of claim 23 and, for the
same reasons, of claims 25-29, 31-35, and 37--46.
B. The§ 112 Rejection
The Examiner rejects claim 23 as indefinite due to a lack of
antecedent basis for "the processor," as recited. Final Act. 2. Appellants
had submitted a post-final action amendment to correct this by amending
claim 23 's first recitation of "the processor" to "a processor." See Response
After Final Action (Sept. 12, 2016). The Examiner agreed that Appellants'
proposed amendment corrected the antecedent basis problem, but exercised
discretion to refuse entry of the amendment "because applicant's proposed
amendment does not overcome the 101 rejection." See Advisory Action
(Sept. 12, 2016) (quoting the Examiner-Initiated Interview Summary). In
view of this situation, pursuant to our authority under 37 C.F.R.
§ 4I.50(a)(l), because the Examiner errs in the§ 101 rejection, we remand
the application back to the Examiner to enter the post-final action
amendment to claim 23.
DECISION
We affirm the rejection of claim 23 under 35 U.S.C. § 112, second
paragraph. 9
We reverse the rejection of claims 23, 25-29, 31-35, and 37--46 under
35 U.S.C. § 101.
9 Although claims 25-28, 41, 42, and 44--46 depend from rejected claim 23,
we decline to exercise our discretion to issue a new ground of rejection on
this basis and leave it to the Examiner to address this issue.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
REVERSED AND REMANDED
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