Ex Parte Blair et al

Patent Trial and Appeal Board

Jul 31, 2018

14332107 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/332,107 07/15/2014
20350 7590 08/02/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Paul Blair
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.
90945-913786 (005520US) 7282
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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 PAUL BLAIR, REX LIEURANCE, and
DIANE SCOTT
(Applicant: The Western Union Company)
Appeal2017-003650
Application 14/332, 107 1
Technology Center 3600
Before HUNG H. BUI, MICHAEL J. ENGLE, and PHILLIP A. BENNETT,
Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 References herein to "Appellant" are to the applicant, The Western Union
Company, also identified as the real party in interest. Br. 2.
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Application 14/332, 107
CLAIMED SUBJECT MATTER
According to the Specification, "[t]he present invention generally
provides systems and methods for performing money transfer transactions
via a wireless communication device." Spec. ,r 1 7.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, at a computer system, a request for a funds
transfer transaction from a user via a mobile device, wherein:
the mobile device is associated with at least a first account;
the mobile device is associated with a second account
maintained by a wireless communication services provider; and
the request includes a biometric reading of the user, an
amount, and a recipient;
receiving, at the computer system, a biometric record
associated with the account from the wireless communication
services provider;
authorizing, by the computer system, the funds transfer
transaction if the first account may be charged the amount and if
the biometric reading matches the biometric record.
Br. 8 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bansal
Emmoft
Rudisill
us 6,206,283
us 6,424,845
us 6,816,721
2
Mar. 27, 2001
July 23, 2002
Nov. 9, 2004
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Application 14/332, 107
REJECTIONS
(1) Claims 1-20 are rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 3-5.
(2) Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bansal, Rudisill, and Emmoft. Final Act. 5-12.
ANALYSIS
SECTION 101 REJECTION
Legal Standard for Patent-Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). The
Supreme Court instructs us to "first determine whether the claims at issue
are directed to a patent-ineligible concept," Alice, 134 S. Ct. at 2355, and, in
this case, the inquiry centers on whether the claims are directed to an
abstract idea. If the initial threshold is met, we then move to the second
step, in which we "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
79, 78 (2012)). The Supreme Court describes the second step as a search for
"an 'inventive concept'-i.e., 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."' Id. ( quoting Mayo, 566
U.S. at 72-73).
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The Examiner's Findings & Conclusions
The Examiner rejects claims 1-20 under the two-step Alice
framework. Under the first step, the Examiner determines the claims are
directed to the abstract idea of "funds transfer transactions via wireless
communication[ s] devices." Final Act. 3. In so doing, the Examiner
determines that the claims are directed to "a fundamentally economic
process" and that "it is a longstanding commercial practice." Id.
Analyzing the claims under the second step of the Alice framework,
the Examiner determines the additional claim limitations do not amount to
significantly more than the abstract idea itself because the "steps would be
routinely used by those of ordinary skill in the art to facilitate funds transfer
transactions." Final Act. 4. The Examiner further determines "the computer
system and communication network, as recited is a generic computer
component that performs functions that are generic computer functions that
are well-understood, routine, and conventional activities previously known
to the industry." Id. The Examiner further determines that "[c]onsidered as
an ordered combination, the computer components of the claim add[]
nothing that is not already present when the steps are considered separately,
and thus simply recite a funds transfer transaction[] via wireless
communication devices as performed by a generic computer." Id.; see also
Ans. 3 ("There is no actual improvement made to the operations and/or
physical structure of the additional elements claimed in the instant
application.").
Appellant's Arguments
Appellant presents several arguments in favor of patent eligibility.
First, Appellant argues the claims "improve[] other technical fields beyond
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'funds transfer transactions via wireless communications devices' ...
[because] at least personal finance management technology is improved by
allowing both senders and recipients of funds to conveniently use their
mobile communication devices .... " Br. 4. In support of this argument,
Appellant asserts "security technologies are improved by using biometric
readings and records to validate senders." Id.
Second, Appellant argues "[p ]articular, non-generic
machines/computers are necessary to implement the systems and methods of
the claims." Id. Specifically, Appellant argues "a server capable of
implementing the systems and methods must be able to communicate digital
data with a multitude of differing mobile communication networks, as well
as financial networks, and their associated protocols." Id. According to
Appellant, "[ o ]ff-the-shelf generic computers are not capable of performing
such functions, much less concurrently during a[] period of intense heavy
transaction load as may be necessary in such industry." Id.
Third, Appellant argues the claims "include[] specific limitations
other than what is well-understood, routine and conventional in the field, or
add unconventional steps that confine the claim to a particular useful
application." Id. According to Appellant, the claims are novel and non-
obvious which, "by their very definition, must include limitations other than
what is well-understood, routine, and conventional in the field, or else they
wouldn't be novel and non-obvious." Id. at 5.
Analysis
Appellant's arguments are not persuasive, and we address each in
tum. Although Appellant asserts the claims effect a technological
improvement to personal finance management, Appellant does not
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sufficiently explain how this is so. Appellant argues the improvement is
found in the ability for "senders and recipients of funds to conveniently use
their mobile communication devices to transfer funds instead of having to
resort to traditional methods." Appellant does not claim, however, to have
invented mobile communication devices. Nor does Appellant claim to have
invented the use of such devices in connection with personal finance.
Moreover, the alleged improvement described by Appellant is better
characterized as an improvement to the business process of personal finance
management, as Appellant's claims and Specification do not provide any
indication that the recited method leads to improvement in the operations of
any computer, but instead merely affords the benefit of convenience for
participants in a funds transfer transaction.
We also are not persuaded by Appellant's second argument that non-
generic computers are required to perform the claimed method. Appellant's
contention rests on an assertion that computers "implementing the systems
and methods must be able to communicate digital data with a multitude of
differing mobile communication networks, as well as financial networks,
and their associated protocols." However, nothing in the claim requires any
"multitude of differing mobile communication networks" nor does it require
"financial networks." Rather, the recited method merely includes two steps,
a receiving step which involves obtaining a biometric record from a
network, and an authorizing step which does not specify any particular
source or destination for the authorization. Thus, Appellant's argument is
not commensurate with the broad scope of the claimed method. Appellant's
argument regarding "[ o ]ff-the-shelf generic computers are not capable of
performing such functions, much less concurrently during a[] period of
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intense heavy transaction load as may be necessary in such industry," is also
not persuasive because nothing in the claim or the specification indicates
that functions must be performed concurrently or that they must be
performed during a period of intense heavy transaction load. As such,
Appellant's contention is again not commensurate with the scope of the
claim, and relies on specific features which are not recited therein.
Finally, Appellant's third argument is also not persuasive. Appellant
contends the alleged novelty and non-obviousness of the claims is
determinative of the Alice step 2 inquiry. We do not agree. This argument
lacks merit because it presupposes that any claim found to be novel and non-
obvious over prior art cannot be found to be lacking an inventive concept in
the Alice/Mayo framework. We are aware of no case supporting this
proposition, nor does Appellant cite to any legal authority. Patent-eligibility
of a claimed invention under 35 U.S.C. § 101 is a threshold requirement that
must be satisfied in addition to being novel, nonobvious, and fully and
particularly described. See Bilski v. Kappas, 561 U.S. 593, 602 (2010). As
the Supreme Court and Federal Circuit have recognized, "[g]roundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S.
Ct. 2107, 2117 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility
that claimed techniques be novel and nonobvious in light of prior art,
passing muster under 35 U.S.C. §§ 102 and 103. See Mayo, 566 U.S. at 89--
90; Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) ("[A] claim for a new abstract idea is still an abstract idea").
Appellant's approach to the Alice step 2 search for an inventive concept is
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inconsistent with the legal framework established in the Patent Act, as it
would limit the application of 35 U.S.C. § 101 to only those claims found to
be otherwise unpatentable under other sections of the Act (e.g., 35 U.S.C.
§§ 102 and 103).
SECTION 103 REJECTION
The sole issue presented in connection with the obviousness rejection
under 35 U.S.C. § 103 is whether the cited prior art teaches or suggests
"receiving, at the computer system, a biometric record associated with the
account from the wireless communication services provider," as recited in
the independent claims.
The Examiner finds Emmoft teaches receiving a biometric record
associated with the account from the wireless communication services
provider because it teaches the use of an authorized image stored on the
handset for authentication purposes. Ans. 5. Appellant argues Emmoft is
deficient because the biometric record is stored on the handset, and it is not
received from the wireless carrier. App. Br. 6. We agree with Appellant
that the Examiner has failed to show by a preponderance of evidence that
Emmoft' s device "receiv[ es] a biometric record ... from the wireless
communication services provider." There is no indication in Emmoft that
the authorized image (i.e., the biometric record) is stored anywhere other
than the "transaction processor 20" which is part of the handset device. See
Emmoft col. 3, 11. 65---66. Nor is there any indication in Emmoft that the
authorized image is received by the handset device from any network.
Accordingly, we are persuaded the Examiner erred in finding Emmoft
teaches or suggests the disputed limitation. We, therefore, do not sustain the
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rejection claims 1, 8, and 15 or their respective dependent claims 2-7, 9-14,
and 16-20 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101.
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103.
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject claims 1-20.
37 C.F.R. § 4I.50(a)(l).
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)(l )(iv).
AFFIRMED
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