Ex Parte Avari et alDownload PDFPatent Trial and Appeal BoardAug 24, 201813569249 (P.T.A.B. Aug. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/569,249 08/08/2012 Mishez A vari 13708 7590 08/24/2018 Johnson, Marcou & Isaacs, LLC PO Box 691 Hoschton, GA 30548 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. CITI-0728 7322 EXAMINER MADAMBA, CLIFFORD B ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 08/24/2018 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 MISHEZ AV ARI and ANDREW ERIC ZIESMER Appeal2017-005344 Application 13/569,249 1 Technology Center 3600 Before LARRY J. HUME, CARLL. SILVERMAN, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-5 and 8-20. Appellants have canceled claims 6 and 7. See Br. 19. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Citicorp Credit Services, Inc. (USA) as the real party in interest. Br. 3. Appeal2017-005344 Application 13/569,249 STATEMENT OF THE CASE Introduction Appellants' disclosed and claimed invention generally relates to "managing cardholder spending on a transaction card account." Spec. ,r 2; see also Spec. ,r 4 ("managing cardholder spending"). In a disclosed embodiment, a monthly spending budget comprising a plurality of budget categories may be established. Spec. ,r 5. Expenditures are tracked against the budgeted amount. Spec. ,r 7. Additionally, the Specification describes if the spending budget for a category is met or exceeded in a month, future expenditures may be declined, the budget may be adjusted for that category, or future (i.e., the succeeding month) budget amounts may be adjusted. Spec. ,r,r 8-10. Claim 1 is representative of the subject matter on appeal and is reproduced below: 1. A method of managing cardholder spending on a bankcard account for a bankcard issued by a bankcard issuer, comprising: generating, by a bankcard account budget program processor coupled to memory, via a communication platform of the bankcard issuer, a web interface prepopulated with recommended budget figures corresponding to a cardholder's level of annual income; receiving, using the bankcard account budget program processor, a monthly spending budget for the cardholder by a bankcard account budget program database via the communication platform of the bankcard issuer and a setup screen of the web interface prepopulated with the recommended budget figures; tracking, by the bankcard account budget program processor, amounts spent by the cardholder in a current month against the monthly spending budget; and 2 Appeal2017-005344 Application 13/569,249 adjusting, by the bankcard account budget program processor, the monthly spending budget for a succeeding month when the amounts spent by the cardholder in the current month exceed a bankcard account credit line extended by the bankcard issuer to the cardholder, said adjustment being made by reducing a plurality of budget categories according to a reverse order of a predetermined prioritization of the plurality of budget categories up to the amounts spent by the cardholder in the current month that exceed the bankcard account credit line extended by the bankcard issuer to the cardholder or by reducing each of the plurality of budget categories by a percentage equal to a percentage by which the amounts spent by the cardholder in the current month exceed the bankcard account credit line extended by the bankcard issuer to the cardholder in the absence of a predetermined prioritization. The Examiner's Rejection Claims 1-5 and 8-20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 7-11. ANALYSIS 2 Appellants dispute the Examiner's conclusion that the pending claims are directed to patent-ineligible subject matter. Br. 7-16. In particular, Appellants assert the Examiner failed to make an evidentiary showing to establish a prima facie case of ineligibility. Br. 8-9. Further, Appellants assert the Examiner oversimplifies the features of the claimed invention in concluding the claims are directed to patent-ineligible subject matter. Br. 9- 11. Additionally, Appellants argue the claimed invention involves computer 2 Throughout this Decision, we have considered the Appeal Brief, filed August 8, 2016 ("Br."); the Examiner's Answer, mailed December 15, 2016 ("Ans."); and the Final Office Action, mailed March 8, 2016 ("Final Act."), from which this Appeal is taken. Appellants did not file a Reply Brief. 3 Appeal2017-005344 Application 13/569,249 technology and provides "significant improvements to a web interface, communication platform, and database that enable specific credit card spend prioritizations and limits." Br. 13-14. Contrary to Appellants' assertions, there is no requirement that Examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings.") (Emphasis added.) Further, the Office did not change the standard in the May 4, 2016 Memorandum, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection. Evidence may be helpful in certain situations where, for instance, in concluding the claims are directed to an abstract idea, facts are in dispute. 3 However, it is not always necessary. It is not necessary in this case. Additionally, the Federal Circuit has repeatedly noted that "the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. 3 Cf Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination."). 4 Appeal2017-005344 Application 13/569,249 Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011 ). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. Jung, 637 F.3d at 1362; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."). As set forth in the Final Office Action, we find the Examiner has met the notice requirements of Section 132(a) in rejecting claims 1-5 and 8-20 under 35 U.S.C. § 101. See Final Act. 7-11. The Supreme Court's two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 134 S. Ct. at 2355. 5 Appeal2017-005344 Application 13/569,249 Although the independent claims each broadly fall within the statutory categories of patentability, the Examiner concludes the claims are directed to a judicially recognized exception-i.e., an abstract idea. Final Act. 7-11. In particular, the Examiner concludes the claims are directed to the abstract idea of "managing spending on a card account," which the Examiner determines is similar to a fundamental economic concept. Final Act. 8. Further, the Examiner concludes the claims do not recite significantly more than the abstract idea to transform the application into a patent-eligible application. Final Act. 8-11. Additionally, the Examiner finds the claims recite generic computer components performing generic computer functions that are "well-understood, routine and conventional." Final Act. 9. Instead of using a definition of an abstract idea, "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United States Patent and Trademark Office, July 2015 Update: Subject Matter Eligibility (July 30, 2015), https://www.uspto.gov/sites/default/files/ documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea."). As part of this inquiry, we must "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). 6 Appeal2017-005344 Application 13/569,249 Our reviewing court has concluded that abstract ideas include the concepts such as the collection and analysis of information. Elec. Power, 830 F.3d at 1353; see also Elec. Power, 830 F.3d at 1354 ("analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category"). Additionally, the collecting of data, recognizing certain data within the collected data set, and storing the data in memory are also abstract ideas. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Similarly, "collecting, displaying, and manipulating data" is an abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely presenting the results of abstract processes of collecting and analyzing information ... is abstract as an ancillary part of such collection and analysis") ( quotations omitted). Further, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea ... does not render the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) ( determining the pending claims were directed to a combination of abstract ideas). Here, Appellants' claims are generally directed to tracking and adjusting a monthly budget to manage spending associated with a cardholder. A prepopulated monthly budget is received and amounts spent by the cardholder are tracked against the allotted amounts in the budget. 7 Appeal2017-005344 Application 13/569,249 The budget is provided via a user interface. The amount in a budget category may be adjusted for a succeeding month if the amount spent in a month exceeds the budgeted amount. Additional options to configuring the budget include electing for notification when the expended amount in a month reaches a specified threshold; prioritizing certain budget categories; and declining authorization for expenditures after the budget threshold has been reached. The receipt of data (i.e., a budget or expenditures) and categorization of expenditures into budget categories are similar to the abstract ideas of collecting data and recognizing data within the collected data. See Content Extraction, 776 F.3d at 1347; Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017). Further, applying the spent amount to a budgeted category is similar to the abstract idea of performing a mathematical operation on the data. See Elec. Power, 830 F.3d at 1354; Digitech Image Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1350-51 (Fed. Cir. 2014); see also Parker v. Flook, 437 U.S. 584, 595 (1978) ("If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is [patent-ineligible]."). Also, displaying the data (i.e., budget) has been recognized as an abstract idea. See Intellectual Ventures I, 850 F.3d at 1340; SAP Am., 890 F.3d at 1021. Neither these steps, nor those recited in the dependent claims alters the character of the claims, which is directed to a fundamental economic practice (i.e., tracking and adjusting a budget}--an abstract idea. See Alice, 134 S. Ct. at 2356. Because we determine the claims are directed to an abstract idea or combination of abstract ideas, we analyze the claims under step two of Alice 8 Appeal2017-005344 Application 13/569,249 to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to "significantly more" than the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297-98 (2012)). The implementation of the abstract idea involved must be "more than [the] performance of 'well-understood, routine, [and] conventional activities previously known to the industry."' Content Extraction, 776 F.3d at 1347- 48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Berkheimer, 881 F.3d at 1369. Appellants do not dispute the Examiner's findings that the claims recite "generic computer components performing generic computer functions ... [that] are well-understood, routine and conventional." See Final Act. 9. Rather, Appellants argue the claims recite significantly more than the alleged abstract idea because they provide "significant improvements to a web interface, communication platform, and database that enable specific credit card spend prioritizations and limits." Br. 13. We disagree. As the Examiner explains, the claims are not directed to a technological improvement, nor is an actual improvement claimed relating to the claimed operations or physical structures. Ans. 8. In other words, the claims do not recite improvements to the computer elements and functions (i.e., web interface, communication platform, and database) but rather uses the computer elements as a tool. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); see also Alice, 134 S. Ct. at 2359 ("use of a computer to create electronic records, track multiple transactions, 9 Appeal2017-005344 Application 13/569,249 and issue simultaneous instructions" is not an inventive concept). Moreover, contrary to Appellants' assertions (see Br. 13-14), the claims are not addressing a problem rooted in computer technology. Maintaining a budget is not restricted to operation within computer technology, and may be performed without a computer. See Gottschalk v. Benson, 409 U.S. 63, 66 (1972); Bancorp Servs. LLC v. Sun Life Assurance Co. of Can., 687 F .3d 1266, 1279 (Fed. Cir. 2012) ("the computer simply performs more efficiently what could otherwise be accomplished manually"). To the extent Appellants contend the claims are not preemptive (see Br. 14--16) of the abstract idea, we are unpersuaded of Examiner error. "' [W]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."' Fair Warning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). Further, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379. For the reasons discussed supra, we are unpersuaded of Examiner error. According! y, we sustain the Examiner's rejection of independent claim 1 under 35 U.S.C. § 101. For similar reasons, we sustain the Examiner's rejection of independent claim 20, which recites similar limitations and was not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv) 10 Appeal2017-005344 Application 13/569,249 (2015). Additionally, we sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 2-5 and 8-19, which depend directly or indirectly from claim 1 and were not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv). DECISION We affirm the Examiner's decision rejecting claims 1-5 and 8-20 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 11 Copy with citationCopy as parenthetical citation