Ex Parte Cerise et al

Patent Trial and Appeal Board

Oct 31, 2018

13849846 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/849,846 03/25/2013
20350 7590 11/02/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Nicholas Cerise
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.
90945-868796 (006750US) 6210
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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 NICHOLAS CERISE, MICHAEL W. ROGERS,
and WILLIAM R. GRANT
Appeal2017-008121
Application 13/849,846
Technology Center 3600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JASON M. REPKO, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2-21, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Western Union Company of Englewood, Colorado, as
the real party in interest. Br. 2.
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Application 13/849,846
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to "methods for actively optimizing a
credit score and reducing debt." See Spec. ,r 5. Claim 2 is illustrative of the
invention and reads as follows.
2. A system comprising:
a payment center system in communication with a first
party, a second party, and a third party, wherein the payment
center system is configured to:
receive a bill from the first party for a customer;
receive an account statement from the second party
for the customer;
receive income information from the third party
regarding the customer;
determine an amount of available unassigned
income based at least in part on the bill, the account
statement, and the income information; and
allocate at least a portion of the amount to reduce
debt owed to the second party.
The Examiner's Rejections
Claims 2-21 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. See Final Act. 2--4.
Claims 2-21 stand rejected under 35 U.S.C. § I03(a) for being
unpatentable over Libman (US 6,076,072; iss. June 13, 2000) and Galperin
(US 6,185,543 Bl; iss. Feb. 6, 2001). See Final Act. 5-13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief) that the Examiner has erred. With regard to the
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Application 13/849,846
Examiner's rejection under 35 U.S.C. § 101, we disagree with Appellants'
arguments, and agree with and adopt the Examiner's findings and
conclusions in (i) the Final Office Action from which this appeal is taken
(Final Act. 2--4) and (ii) the Examiner's Answer (Ans. 2-14) to the extent
they are consistent with our analysis below. However, we reach the opposite
conclusion with respect to the Examiner's rejection under 35 U.S.C. § 103.
Re} ection Under 3 5 US. C. § 101
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2--4. In
particular, the Examiner determines the claims are directed to a judicial
exception without significantly more and specifically, to the abstract idea of
steps "to determine an amount of available unassigned income based at least
in part on the bill, the account statement, and the income information; and
allocate at least a portion of the amount to reduce debt owed to the second
party." Final Act. 2. The Examiner further determines the claims do not
include any additional elements for performing the abstract idea of
"determine [sic] an amount of available unassigned income based at least in
part on the bill, the account statement, and the income information; and
allocate at least a portion of the amount to reduce debt owed to the second
party, a method of a fundamental economic practice." Final Act. 4, see also
Ans. 4--5. The Examiner finds the claims use generic computer components
to perform generic computer functions that are well-understood and
routine/known in the finance industry. Final Act. 4. Specifically, the
Examiner finds Appellants' Specification describes "no more than a generic
computing device (server), a client (generic computer) interface, and a
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network ( connected generic computers) to perform the [above-mentioned]
generic functions." Ans. 6.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has held that
35 U.S.C. § 101 contains important implicit exceptions including laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court in Alice
reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66,
83-84 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to determine whether the claims at issue are directed to one
of those patent-ineligible concepts, such as an abstract idea. Abstract ideas
may include, but are not limited to, fundamental economic practices,
methods of organizing human activities, an idea of itself, and mathematical
formulas or relationships. Id. at 2355-57. If the claims are not directed to a
patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds
to the second step where the elements of the claims are considered
"individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79-78).
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or instead are directed to a
result or effect that itself is the abstract idea and merely invoke generic
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processes and machinery. See Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Appellants have not persuaded us of error. Regarding Alice step one,
the Examiner explains that the claims recite "a series of steps of determining
an amount of available unassigned income based at least in part on the bill,
the account statement, and the income information; and allocating at least a
portion of the amount to reduce debt, which is a fundamental economic
principle." Ans. 4. The Examiner also finds Appellants' claims relate to
comparing new and stored information, similar to those in SmartGene, Inc.
v. Advanced Biological Labs., SA, 555 F. App'x 950, 951-52, 954--55
(Fed. Cir. 2014), and result in organizing information similar to the claims in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir. 2014). Id.
We agree and further note that the Federal Circuit has "treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Elec. Power, 830 F.3d at 1353 (emphasis added). The rejected
claims "fall into a familiar class of claims 'directed to' a patent-ineligible
concept." Elec. Power, 830 F.3d at 1353. The claims are similar to the
claims of Electric Power, and are focused on the combination of
abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 2 is directed to collecting information ("receive a bill,"
"receive an account statement," and "receive income information"),
analyzing (including determining) information ("determine an amount of
available unassigned income"), and processing/presenting information
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("allocate at least a portion of the amount"). Similarly, independent claims
12 and 18 are directed to collecting information, analyzing (including
generating) information, and presenting information. See Elec. Power, 830
F.3d at 1353. The dependent claims are directed to similar functions or
processes, and Appellants have not shown such claims are directed to other
non-abstract functions or processes. See claims 2-21. As a result, we agree
with the Examiner that the claims are directed to abstract functions or
processes for performing financial transactions.
We conclude the Examiner has adequately explained the rejection
under 35 U.S.C. § 101. As discussed supra, the Examiner determined
claims 2-21 are directed to the abstract idea of problem remediation in
supply chain management (Final Act. 2-3). Also as discussed supra, the
Examiner explained that each of the limitations of claim 2 is directed to a
"fundamental economic practice" that is an abstract idea. Ans. 2-12. The
Examiner also identified several cases wherein subject matter similar to that
found in claim 2 was determined to constitute an abstract idea and why
additional claim limitations do not transform the abstract idea into a
patent-eligible application of the abstract idea. Id.
Regarding Alice step two, contrary to Appellants' assertion (Br. 4--5),
Appellants have not shown the claims in this case require an arguably
inventive set of components or methods, or invoke any assertedly inventive
programming. See Elec. Power, 830 F.3d at 1355. In fact, the Examiner has
correctly cited paragraphs 45, 47, 54, and 58 of Appellants' Specification to
show that the claims are similar to the claims of Electric Power. Ans. 6-10.
As such, the claims do not require any nonconventional computer
components, or even a "non-conventional and non-generic arrangement of
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Application 13/849,846
known, conventional pieces," but merely call for performance of the claimed
information collection and analysis functions on generic computer
components. See Elec. Power, 830 F.3d at 1355; see also claim 12 (reciting
similar elements as claim 2) and claim 18 (reciting "a processor" and "a non-
transitory machine readable medium"). The dependent claims call for
similar generic components and devices, and Appellants have not shown
such claims require any non-conventional components or devices. See
claims 3-11, 13-17, and 19-21. In short, Appellants have not shown the
claims, read in light of the Specification, require anything other than
conventional computer technology for collecting, analyzing, and presenting
the desired information. See Elec. Power, 830 F.3d at 1354. Such
invocations of computer devices are "insufficient to pass the test of an
inventive concept in the application" of an abstract idea. See Elec. Power,
830 F.3d at 1355 (internal citation and quotation marks omitted).
Lastly, contrary to Appellants' assertion that the pending claims are
patent eligible because there are no obviousness or novelty rejections of the
claims (see Br. 5), Appellants improperly conflate the requirements for
eligible subject matter(§ 101) with the independent requirements of novelty
(§ 102) and non-obviousness(§ 103). "The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981); see also Genetic Techs. Ltd. v. Merial L.L.C., 818
F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
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phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility").
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 2-21 under 35 U.S.C. § 101.
Rejection Under 35 US.C. § 103
Claim 2 recites steps to "determine an amount of available unassigned
income based at least in part on the bill, the account statement, and the
income information" and "allocate at least a portion of the amount to reduce
debt owed to the second party," for which the Examiner relied on Galperin.
Final Act. 6-7. Appellants argue the cited portions of Galperin do not teach
or suggest the determining and allocating steps of claim 2. Br. 5-8.
We are persuaded of Examiner error. The cited portions of Galperin,
according to the Examiner (see Ans. 14--15), relate to a system that offers
loan products to consumers having favorable prepayment characteristics and
how pools of mortgage or other debt instruments are purchased by
investment banks. Ans. 14--15 (citing Galperin 4:60-5: 17; 5: 18--49;
3:50-55). The Examiner, however, has not explained how those findings
and analysis regarding Galperin relate to the disputed limitations of
determining an amount of available unassigned income and allocating at
least a portion of the amount to reduce debt, as recited in claim 2.
Appellants' arguments have persuaded us of error in the Examiner's
position with respect to the rejection of independent claim 2 and independent
claims 12 and 18, which recite similar limitations. The Examiner has not
identified any teachings in the other applied prior art that would make up for
the above-mentioned deficiency. We, therefore, do not sustain the rejection
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of claims 2, 12, and 18, as well as claims 3-11, 13-17, and 19-21 dependent
therefrom.
CONCLUSION
The Examiner did not err in rejecting claims 2-21 under 35 U.S.C.
§ 101.
The Examiner erred in rejecting claims 2-21 under 35 U.S.C. § 103.
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision to reject claims
2-21 is affirmed. See 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)(l )(iv).
AFFIRMED
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