Ex Parte Bater

Patent Trial and Appeal Board

Dec 14, 2018

14060554 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/060,554 10/22/2013 Paul Bater
33649 7590 12/14/2018
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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.
107687.00040 9812
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
12/14/2018 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 PAUL BATER
Appeal2017-001624
Application 14/060,554 1
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 51-74. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on December 6, 2018.
We REVERSE and enter a NEW GROUND OF REJECTION,
pursuant to 37 C.F.R. § 41.50(b).
1 "The real party in interest in this appeal is BANKCLARITY JERSEY
GROUP LIMITED." Appeal Br. 4.
Appeal2017-001624
Application 14/060,554
ILLUSTRATIVE CLAIM
51. A method of generating account management
information, the method comprising the steps of:
providing a list of contacts to a processor;
securely downloading financial data from a financial data
source using the processor, wherein the financial data
comprises one or more transactions; and
automatically assigning each transaction to a contact on
the list of contacts using the processor as a function of data
fields defining each of the transactions;
wherein, if the processor is unable to automatically
assign one of the transactions to a contact on the list of contacts,
the processor generates a note that the one of the transactions is
not assigned.
REJECTION
Claims 51-74 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
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Application 14/060,554
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply'" these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 2355.
Although "claim construction is not an inviolable prerequisite" to an
analysis under § 101, "a full understanding of the basic character of the
claimed subject matter" is, nevertheless, needed to evaluate questions of
subject-matter eligibility. Bancorp Servs., LLC v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). See also McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016)
("As an initial matter, we note that, in this case, claim construction is helpful
to resolve the question of patentability under § 101. ")
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Appeal2017-001624
Application 14/060,554
In the present Appeal, we are unable to ascertain such an
understanding of the claimed subject matter and, therefore, we do not assess
the merits of the rejection under§ 101. Rather, for the reasons given below,
and pursuant to our authority under 37 C.F.R. § 4I.50(b) to enter a new
ground of rejection, we determine that the claims are indefinite under
35 U.S.C. § 112(b). Accordingly, the rejection under§ 101 must fall,pro
forma, because it is necessarily based upon speculative assumption as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA
1962) (addressing an obviousness rejection). This determination does not
reflect on the merits of the underlying rejection based upon § 101.
Indefiniteness
(New Ground of Rejection)
During the Office's evaluation, under 35 U.S.C. § 112(b), a proposed
patent "claim is indefinite when it contains words or phrases whose meaning
is unclear," i.e., "ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention." In re Packard,
751 F.3d 1307, 1310-11 (Fed. Cir. 2014) (per curiam); see also In re
McAward, No. 2015-006416, 2017 WL 3669566, at *3 (PTAB Aug. 25,
2017) (precedential).
Independent claim 1 includes the limitation "automatically assigning
each transaction to a contact on the list of contacts using the processor as a
function of data fields defining each of the transactions." Neither the word
"assign," nor any variant thereof ( e.g., "assigning"), appears in the
Specification, original claims, or drawings. Although a failure to use the
exact words that appear in the Specification does not necessarily give rise to
indefiniteness, in the present case, the meaning of the claimed "assigning [a]
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Application 14/060,554
transaction to a contact," in the context of claim 1, is unclear. The
uncertainty as to the meaning of this language is emphasized by the
Specification's apparent effort to be precise, in regard to the financial
terminology employed therein. For example, the Specification states:
It should be noted that the allocation of financial data to
one or more headings and/or contacts as described above is
sometimes referred to as the clarification of that data. It is
hereby stated that references herein to the "allocation",
"clarification" and "posting" of data refer to the allocation
process described above. Those terms are therefore
interchangeable.
Spec. 10, 11. 5-11.
Similarly unclear is the meaning of the kindred phrase "the processor
is unable to automatically assign one of the transactions to a contact," which
also appears in claim 1.
Variants of the word "assign" also appear in the other independent
claims in this Appeal ( claims 65 and 70). Therefore, we enter a new ground
of rejection of independent claims 51, 65, and 70 - along with dependent
claims 52---64, 66---69, and 71-74-under 35 U.S.C. § 112(b), for failure to
particularly point out and distinctly claim the subject matter regarded as the
invention.
DECISION
We REVERSE the Examiner's decision rejecting claims 51-74,pro
forma.
We ENTER A NEW GROUND OF REJECTION for claims 51-74,
under 35 U.S.C. § 112(b).
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Appeal2017-001624
Application 14/060,554
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision,
the appellant, within two months from the date of the
decision, must exercise one of the following two options
with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the
proceeding be reheard under§ 41.52 by the Board upon
the same Record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01.
REVERSED; 37 C.F.R. § 41.50(b).
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