Ex Parte Davis et al

Patent Trial and Appeal Board

Mar 28, 2018

13922741 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/922,741 06/20/2013 Darren Davis
13708 7590 03/29/2018
Johnson, Marcou & Isaacs, LLC
27 City Square, Suite 1
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-0715Cl 1097
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
MAILDATE DELIVERY MODE
03/29/2018 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 DARREN DA VIS, TOM KOCH, JOHN D. MILLER,
ERIC PHILIPS, GUY B. SEREFF, STACY TOBIAS, VASU VEMURI,
ROCHELLE WESSELINK, SCOTT TANGUAY, ROBERT STRUB,
CALEB WILLIAMS, and SHAMUS WEILAND
Appeal2017-000878
Application 13/922,741
Technology Center 3600
Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and
CARLL. SILVERMAN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 22-26 and 28--40, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appeal2017-000878
Application 13/922,741
According to the Specification, the present invention relates to
electronic financial transactions. See generally Spec. 1. Claim 22 is
exemplary:
22. A method of processing payments globally over one
of a plurality of payment processing paths for a user,
compnsmg:
receiving, by a global payment utility processor,
information consisting at least in part of a payment source
account identifier, a payment destination account identifier, and
a user-designated payment vehicle;
selecting, by the global payment utility processor, one of
a plurality of
payment processing paths for a payment according to a
clearing rules aspect of a rules engine of the global payment
utility based at least in part on payment processing paths
available via the user-designated payment vehicle and at least in
part on a comparison of processing costs of each of the payment
processing paths available via the user designated payment
vehicle; and
routing, by the global payment utility processor, the
payment via the selected payment processing path.
Rejection
Claims 22-26 and 28--40 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 2-5) and (ii) the Answer (Ans. 3---6) to the extent
they are consistent with our analysis below.
On this record, the Examiner did not err in rejecting claim 22.
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Application 13/922,741
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2-5; Ans. 3-
6. In particular, the Examiner concludes the claims are directed to the
abstract idea of receiving, manipulating, and transmitting information. See
Ans. 4. The Examiner further finds the claims use generic computer
components to perform generic computer functions. See Ans. 4. Appellants
argue the Examiner erred. See Br. 10-17.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. That provision "'contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" . . . To answer
that question, 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 .... We have
described step two of this analysis 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
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significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, 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).
Regarding Alice step one, 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); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc 'ns. LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellants' arguments (Br. 10-17), the claims are similar to the claims of
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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 22 is directed to collecting (including receiving or routing)
information ("receiving ... routing ... "), and analyzing or manipulating
information ("selecting .... "). Claim 40 is a system claim directed to
performing similar collecting information and analyzing (or manipulating)
information functions. 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 23-26 and 28-39.
Appellants' assertion that "the Examiner's 'analysis' amounts to
nothing more than a recitation of two words from the preamble of the
independent claims followed by stock boilerplate conclusions" (App. Br. 1 O;
see also Br. 13) contradicts the record. For example, as discussed above, the
Examiner correctly finds the claims are directed to the abstract idea of
receiving, manipulating, and transmitting information. See Ans. 4. 1 The
Examiner also correctly finds the claims use generic computer components
to perform generic computer functions. See Ans. 4. Those finding are not
"recitation of two words from the preamble of the independent claims." Nor
are they "stock boilerplate conclusions."
Appellants' assertion regarding pre-emption (App. Br. 14--16) is
unpersuasive, because "[w]hile preemption may signal patent ineligible
1 As a result, the Examiner does not merely find the claims are directed to
"payment processing," as Appellants assert (Br. 13, 16). Appellants also cite
PTAB cases, which are not precedential. See App. Br. 12-14. In any event,
the Examiner's findings are directed to the specific language of the claims,
and are not merely generalized arguments.
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subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Afayo framework as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362---63 ("that 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").
Regarding Alice step two, contrary to Appellants' assertion (Br. 15-
1 7), 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.
Further, contrary to Appellants' arguments (Br. 15-17), the claims are
similar to the claims of Electric Power, because they do not require any
nonconventional computer or network components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed information collection,
analysis, and display functions on generic computer components and display
devices. See Elec. Power, 830 F.3d at 1355; see also Claim 22 (reciting "a
global payment utility processor ... a rules engine"); Claim 40 (reciting "a
global utility payment processor coupled to memory ... a rules engine").
The Examiner finds--------and Appellants do not persuasively dispute--------
"payment processing protocols have been commonly used for more than 30
years and the collection of the necessary information to route the payment is
common conventional." Ans. 6. The "global payment utility processor" or
"global payment utility processor" is a conventional processor that is utilized
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to process payments. Similarly, the "rules engine" is a conventional
processor that is associated with rules. 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 23-
26 and 28-39.
Appellants' argument that "the claimed invention provides significant
improvement to the function of the global payment utility processor" by
"greatly simplifying processing and decreasing processing costs through
interfacing with multiple internal processors, while at the same time
decreasing processing conventionally performed by disparate external
networks" (App. Br. 15-16) is not commensurate with the scope of the
claims, as Appellants have not shown the claims require such limitations. In
any event, our reviewing court has declared:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
Servs., L.L. C. v. Sun Life Assurance Co. of Can. (US.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Applying this reasoning to the rejected claims, we similarly find any
purported efficient techniques come from the capabilities of general-purpose
computers (discussed above), rather than the claimed steps or functions.
Similar to the claims of FairWarning, the rejected claims "are not directed to
an improvement in the way computers operate" and "the focus of the claims
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is not on ... an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools." FairWarning, 839
F.3d at 1095.
Further, Appellants' argument regarding prior art rejection (Br. 15-
16) is unpersuasive, as prior art rejection is determined under 35 U.S.C. §§
102-103, which are different statutory requirements. As the Supreme Court
emphasizes: "[t]he '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) (emphasis
added). Our reviewing court further guides that "[ e ]ligibility and novelty are
separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc 'ns,
LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
Finally, Appellants advance many conclusory attorney arguments,
which are not supported by evidence. See, e.g., Br. 11-14, 16. Such
arguments are unpersuasive of error.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer and
network technology for collecting and analyzing the desired information.
See Elec. Power, 830 F.3d at 1354. Such invocations of computers and
networks 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.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 22-26 and 28--40 under 35 U.S.C.
§ 101.
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DECISION
We affirm the Examiner's decision rejecting claims 22-26 and 28--40.
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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