Ex Parte Chan et al

Patent Trial and Appeal Board

Jul 31, 2018

14601914 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/601,914 01/21/2015
125619 7590 08/02/2018
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust A venue
New Canaan, CT 06840
FIRST NAMED INVENTOR
David Chan
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.
P00399-US-CONT2(M01.077C2 1013
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):
martin@bmtpatent.com
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHAN, SAMUEL LIM, and RAMA SRIDHAR1
Appeal2017-004802
Application 14/601,914
Technology Center 3600
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
MICHAEL M. BARRY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-8, all the pending claims in the
present application. See Claims Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to funds remittances to non-
payment card accounts. See Abstract.
1 Appellants name MASTERCARD INTERNATIONAL INCORPORATED
as the real party in interest (App. Br. 2).
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Application 14/601,914
Claim 1 is illustrative:
1. An international remittance system comprising:
a remittance request server comprising a storage
device;
an agent bank computer comprising a settlement
account and operably connected to the remittance request
server;
a payment system gateway operably connected to
the remittance request server;
an international payment card system operably
connected to the payment system gateway and to the agent bank
computer; and
a plurality of recipient bank computers operably
connected to the agent bank computer;
wherein the storage device of the remittance
request server stores instructions configured to cause the
remittance request server to:
receive an international funds transfer
request specifying a transaction amount, a source
payment card account located in a first country, and a
destination bank account associated with a recipient bank
located in a second country different from the first
country, and wherein the destination bank account is not
a payment card account;
transmit an international payment
transaction routed from the source payment card account
to the payment system gateway which is routed to the
settlement account of the agent bank computer via the
international payment card system, the settlement
account different from the destination bank account;
store a funds transfer instruction as part of
an electronic funds transfer file in the storage device of
the remittance request server, the funds transfer
instruction configured to cause the agent bank computer
to transfer funds in the transaction amount from the
settlement account to the destination bank account; and
transmit the electronic funds transfer file on
a periodic basis directly to the agent bank computer
wherein the funds transfer instruction causes the agent
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bank computer to transfer the transaction amount from
the settlement account to the destination bank account.
Appellants appeal the following rejections:
RI. Claims 1-8 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (Final Act. 13-
19); and
R2. Claims 1-8 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Chauhan (US 2006/0287953 Al, Dec. 21, 2006), Modi
(US 2006/0006224 Al, Jan. 12, 2006), and Baumgartner (US 7,882,021 B2,
Feb. 1, 2011) (Final Act. 7-13).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Re} ection under § 101
Issue 1: Did the Examiner err in rejecting the claims as being
directed to non-statutory subject matter?
In this regard, with respect to independent system claims 1 and 7, the
Examiner determines that the claims are directed to an abstract idea for
"facilitating international fund remittances and/or fund transfers which is a
fundamental economic practice ... as well as an idea of itself' (Final Act.
15-19). The Examiner adds that "the [claims] elements do not amount to
more than mere instructions to implement the abstract idea in a computing
environment while performing no more than their basic computer functions
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at a high level of generality ... requiring no more than a generic computer"
(id. at 16). We agree with the Examiner for at least the reasons infra.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63,
67 (1972) ("Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work."). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the
Court stated that "to transform an unpatentable law of nature into a patent
eligible application of such a law, one must do more than simply state the
law of nature while adding the words 'apply it."' Id. at 1294 (citation
omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "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
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination' to
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determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at
1298, 1297).
In other words, the second step is to "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. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant post-solution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that "' [ s ]imply
appending conventional steps, specified at a high level of generality,' was
not 'enough' [in Mayo] to supply an 'inventive concept."' Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Appellants contend that the Examiner fails to point "to any specific
authority that compels the conclusion that the claimed invention ... is
'abstract' within the meaning of Section 101" (App. Br. 11 ).
We disagree with Appellants' contentions. Instead, we find that the
Examiner has provided a sufficient response, supported by a preponderance
of the evidence (Final Act. 5-7; Ans. 2---6). As such, we refer to, rely on,
and adopt the Examiner's determinations and conclusions set forth in the
Final Action and Answer. Id. Our discussions here will be limited to the
following points of emphasis.
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As an initial matter, we note that Appellants have not identified any
cases that stand for the proposition that Examiners must provide evidentiary
support in every case before a conclusion can be made that a claim is
directed to an abstract idea. No such requirement has been brought before
us. See, e.g., para. IV "July 2015 Update: Subject Matter Eligibility" to
2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed.
Reg. 74,618 (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)).
Evidence may be helpful in certain situations where, for instance, facts are in
dispute. But it is not always necessary. Therefore, we agree with the
Examiner that "there is no requirement on the Office to provide any prior art
reference and/or evidence for identification of an abstract idea" (Ans. 4)
( emphasis in original).
In any case, contrary to Appellants' aforementioned contention, the
Examiner did indeed cite to authority, e.g., Alice and Content Extraction, for
exemplary abstract concepts and listed specific abstract concepts, i.e.,
"fundamental economic practices; certain methods of organizing human
activities; an idea itself; and mathematical relationships/formulas" (see Final
Act. 4, 14; see also Ans. 4--5). In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607,613 (Fed. Cir. 2016) (finding the claimed method of classifying
and storing images in an organized manner was a well-established basic
concept analogous to methods of organizing human activity); see Intellectual
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Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir.
2015) (finding the claim at issue was directed to the abstract idea of
budgeting, which was "not meaningfully different from the ideas found to be
abstract in other cases before the Supreme Court and our court involving
methods of organizing human activity"); see also, e.g., Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (finding claims directed to collecting data, recognizing
certain data within the collected data set, and storing the recognized data
drawn to an abstract idea and noting that "humans have always performed
these functions").
We find that the Examiner's cogent analysis relying on judicial
examples (id.), shows the Examiner provided adequate basis for making the
abstract concept determination.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
To establish a prima facie case, the Examiner must next identify all of
the additional elements in each claim and explain why these elements,
individually or collectively, do not add significantly more than the abstract
idea. Here, the Examiner determines that the various features recited in the
claims require "no more than a generic computer to perform generic
computer functions that are well-understood, routine[,] and conventional
activities previously known to the industry" (Final Act. 16) and the steps
"are examples of insignificant extra-solution activities and are not
meaningful limitations that add more than generally linking the abstract
idea" (Ans. 7).
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Consistent with the Examiner's conclusions, Appellants' Specification
states that "[ t ]he server computer 204 may be conventional in its hardware
aspects" (8: 14); "[t]he computer processor 300 may be constituted by one or
more conventional processors" (8:20-21 ); "[i]nput device 306 may comprise
one or more of any type of peripheral device typically used to input data into
a computer" (8:26-27); "the computer 202 may be conventional" (10:3); and
each of the computers "may include conventional components such as CPU,
a display, a keyboard and a mouse" (10:22-23). Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) ("[w]hether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination.").
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 2358-59 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" not patent eligible); see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)
( claims merely reciting an abstract idea of using advertising as currency as
applied to particular technological environment of the Internet are not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" are not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("Simply adding a 'computer aided' limitation to a claim covering an
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abstract concept, without more, is insufficient to render [a] claim patent
eligible" (internal citation omitted)).
Although Appellants contend that "when properly evaluated as an
ordered combination, the additional claim limitations as a whole amount to
significantly more ... [i.e.,] a remittance request server which functions in
concert with an international payment card system" (App. Br. 13), we agree
with the Examiner that "[t]he recitation of the computer related devices to
implement the steps described above is not enough by themselves to
transform the exception into [a] patentable exception, because these
limitation are generic computer components" (Ans. 7).
Appellants further contend that "the claim elements solve a problem
rooted in international payment card system technology similar to the
additional elements in the DDR Holdings case ... [because] the novel
process utilized by the international remittance system is necessarily rooted
in payment card system technology" (App. Br. 13).
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." In contrast, we find Appellants' system claim ( claim 1)
does not provide a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR, 773 F.3d at 1257. Because we find that Appellants'
specification illustrates that all claims on appeal merely use a generic
computer or processor as a tool, and other generic components, which is
used in the way a computer normally functions, we conclude the claims fail
to impart any discernible improvement upon the computer or processor, for
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example, nor do Appellants' claims solve "a challenge particular to the
Internet" as considered by the court in DDR, 773 F.3d at 1256-57. Thus, we
conclude none of Appellants' claims are like the claim held patent-eligible
by the court in DDR, in which the claimed invention was directed to the
"challenge of retaining control over the attention of the customer in the
context of the Internet," such that:
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-
party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual "look and
feel" elements from the host website.
DDR, 773 F.3d at 1258-59. Thus, we find unavailing Appellants'
arguments that the claims are similar to DDR Holdings (see App. Br. 13),
given that no convincing "inventive concept" for resolving a "particular
Internet-centric problem" is identified by Appellants. Thus, we agree with
the Examiner that "the parallel between the claims of the instant case and the
DDR Holdings example" fails to be shown (Ans. 9).
Finally, Appellants contend that "the claims do not preempt the field
of international remittance transactions" (App. Br. 15). Although pre-
emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws"' (Alice,
134 S. Ct. at 2354 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012))), "the absence of complete preemption
does not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). Moreover, the
Examiner is correct in that because we find the claimed subject matter
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covers patent-ineligible subject matter under Alice, the pre-emption concern
is necessarily addressed (see Ans. 10). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
[] preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, 788 F.3d at 1379.
Because Appellants' independent claims 1 and 7 are directed to a
patent-ineligible abstract concept and do not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of these claims as well as the respective dependent
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
Rejection under§ 103(a)
Issue 2: Did the Examiner err in finding that the combined teachings
of the cited art teach or suggest transmitting the electronic funds transfer file,
as set forth in claim 1 ?
Appellants contend that Chauhan "functions in a distinctly different
way from that which is claimed ... [and] Claim 1 of the present case does
not recite any such operations" (App. Br. 18). Appellants further contend
that "Chauhan mention[ s] accessing instructions for funds transfers, but
neither of these passages teach[] or even suggest[] instructions configured to
cause the remittance request server to ... transmit the electronic funds
transfer file on a periodic basis directly to the agent bank computer" (id.).
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In response, the Examiner asserts that "[ t ]he limitations for the claims
above as written, do not differentiate from the disclosures described [in
Chauhan]" (Ans. 18). We agree with the Examiner. For example, the cited
portions of Chauhan disclose:
,r 105.
,r 110.
In one aspect, the invention is a distributed remittance system for
transferring monetary payments among users where the users consist
of senders intending to make remittances and beneficiaries designated
by the senders to receive remittances.
Global Transaction Banks 46 of FIG. 1 interact with the SIAMR
system as illustrated in FIG. 13. GTB uploads and downloads
statements of settlements with SIAMR. It accesses instructions for
funds transfers from SIAMR.
SIAMR system 30 sends fund transfer instructions to GTB at step
30A. And GTS generates a Foreign Exchange transaction at step 48
& sends transaction instructions to GTB at step 48A.
In other words, the Examiner has shown that Chauhan teaches a
global web-based financial remittance system for both accessing instructions
for funds transfer and sending instructions to transfer funds to GTB (see also
Chauhan's Figs. 13 &17 and Abstract). Appellants agree that "Chauhan
mention[ s] accessing instructions for funds transfers" (see App. Br. 18).
However, it is unclear which of the claimed features that, according to
Appellants, are missing from Chauhan's disclosure, because Appellants'
arguments merely illustrate Chauhan's teachings and then recite specific
claim language, without presenting substantive arguments and supporting
evidence persuasive of Examiner error. We decline to review the claims sua
sponte, looking for distinctions over the prior art. Cf In re Baxter Travenol
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Labs., 952 F.2d 388,391 (Fed. Cir. 1991) ("It is not the function of this
court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art."). See also Ex parte
Belinne, No. 2009-004693, 2009 WL 2477843 at *3--4 (BPAI Aug. 10,
2009) (informative). Unfortunately, Appellants are predominantly
emphasizing features in Chauhan that claim 1 does not recite or require (see
App. Br. 18), rather than specifically pointing out how the language of the
claims patentably distinguishes them from the references.
Similarly, regarding Modi and Baumgartner, Appellants merely recite
claim language, without specifically identifying how the language of the
claims patentably distinguishes them from the combined teachings (see App.
Br. 19--22). Furthermore, Appellants' arguments do not take into account
what the collective teachings of the prior art would have suggested to one of
ordinary skill in the art and is therefore ineffective to rebut the Examiner's
prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) ("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.") ( citations omitted).
For instance, Appellants fail to rebut whether Modi combined with
Chauhan and Baumgartner teaches or suggests the argued limitations, as
opposed to merely arguing the Modi fails to teach such limitations (see App.
Br. 20). Similar individual/separate arguments were made for Chauhan and
Baumgartner (see App. Br. 19--22). Appellants' argument against Modi
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separately from Chauhan and/or Baumgartner does not persuasively rebut
the combination made by the Examiner. One cannot show non-obviousness
by attacking references individually, where the rejections are based on
combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1-8 for the reasons discussed supra.
DECISION
We affirm the Examiner's§ 101 rejection.
We affirm the Examiner's§ 103(a) rejection.
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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