Ex Parte Dunwoody

Patent Trial and Appeal Board

Sep 6, 2018

14225440 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/225,440 03/26/2014
20350 7590 09/10/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Kimberly Dunwoody
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.
90945-903730 (01581 lUS) 3223
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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 KIMBERLY DUNWOODY 1
Appeal2017-001092
Application 14/225,440
Technology Center 3600
Before ROBERT E. NAPPI, LARRY J. HUME, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3, 4, 8, 10-12, 15, 17, and 18, which are all claims
pending in the application. Appellant has canceled claims 2, 5-7, 9, 13, 14,
16, 19, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is W estem Union
Company. Br. 2.
Appeal2017-001092
Application 14/225,440
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed "invention relate[]
generally to money transfers. More specifically, the invention relates to
money transfers utilizing smart phone technology." Spec. ,r 2
("BACKGROUND OF THE INVENTION").
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to prior-art contested limitations):
1. A method of implementing collaborative funds
transfer, the method comprising:
receiving, by a host computer system, from a charitable
organization a collaborative funds transfer request for a relief
effort to be sourced through a collaborative environment,
wherein funding for the collaborative funds transfer request
originate from users within the collaborative environment;
verifying, by the host computer system, the authenticity of
the charitable organization as a legitimate charity and
verifying compliance with government regulations by
comparing operational details of the charitable organization
with a government database holding information regarding
legitimate charitable organizations;
receiving, by the charitable organization, funds provided
to the entity via the collaborative environment, wherein the
2 Our Decision relies upon Appellant's Appeal Brief ("Br.," filed
Dec. 29, 2015); Examiner's Answer ("Ans.," mailed May 27, 2016); Final
Office Action ("Final Act.," mailed July 29, 2015); and the original
Specification ("Spec.," filed Mar. 26, 2014) (claiming benefit of
US 9,659,293 B2, filed May 15, 2013 (Appl. No. 13/894,436)). We note
Appellant did not file a Reply Brief in response to the factual findings and
legal conclusions in the Examiner's Answer.
2
Appeal2017-001092
Application 14/225,440
collaborative environment provides an interface between the
charitable organization and the funding of the collaborative
funds transfer request for the relief effort by users of the
collaborative environment;
identifying that services necessary to process the
collaborative funds transfer request are offered within the
collaborative environment;
monitoring communications regarding the funds transfer
within the collaborative environment to determine that the
funding of the collaborative funds transfer request are for
legitimate charitable purposes; and
transferring, funds from the users funding the
collaborative funds transfer request, by the host computer, to an
account controlled by the charitable organization and associated
with a user account of the charitable organization for the
collaborative environment.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Fasciano US 7,620,636 B2 Nov. 17, 2009
Rejections on Appeal
RI. Claims 1, 3, 4, 8, 10-12, 15, 17, and 18 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2. 3
3 The Examiner states "the claimed invention is directed to non-statutory
subject matter." Final Act. 2 (emphasis omitted). We find patent-
ineligibility under § 101 to be a more accurate characterization of the
rejection.
3
Appeal2017-001092
Application 14/225,440
R2. Claims 1, 3, 4, 8, 10-12, 15, 17, and 18 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Fasciano in view of the
Examiner's taking of Official Notice. Final Act. 8.
CLAIM GROUPING
Based on Appellant's arguments (Br. 5-13), we decide the appeal of
both Rejections RI and R2 of claims 1, 3, 4, 8, 10-12, 15, 17, and 18 on the
basis of representative claim 1. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1, 3, 4,
8, 10-12, 15, 17, and 18 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner's Answer in response to
Appellant's arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4
Appeal2017-001092
Application 14/225,440
1. § 101 Rejection RI of Claims 1, 3, 4, 8, 10-12, 15, 17, and 18
Issue 1
Appellant argues (Br. 5-13) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus, is patent-ineligible under
§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
5
Appeal2017-001092
Application 14/225,440
omitted). First, we "determine whether the claims at issue are directed to ...
[a] patent-ineligible concept[]." Id. at 2355. If so, we "examine the
elements of the claim to determine whether it contains an 'inventive concept'
sufficient to 'transform' the claimed abstract idea into a patent-eligible
application." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). While the two
steps of the Alice framework are related, the "Supreme Court's formulation
makes clear that the first-stage filter is a meaningful one, sometimes ending
the§ 101 inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). We note the Supreme Court "has not established a
definitive rule to determine what constitutes an 'abstract idea"' for the
purposes of step one. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
(Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
Our reviewing court, however, has held claims ineligible as directed
to an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. 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. Alice 134 S. Ct. at 2355-
57. Under this guidance we must, therefore, ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
6
Appeal2017-001092
Application 14/225,440
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance we must, therefore, ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellant asserts "the Supreme Court, in applying the first step of the
two part analysis, conflates patent eligibility with obviousness or
7
Appeal2017-001092
Application 14/225,440
anticipation." Br. 6. 5 Further, "in order for a claim to require analysis under
the second part of the Alice test, it is not enough that the claim merely
involve, relate to, or 'recite' an abstract idea - the claim must be directed to
the abstract idea. A claim can 'recite' or contain an abstract idea without
being directed to that abstract idea." Id. at 8. Appellant also alleges the
Examiner has oversimplified the claimed subject matter because "the claims
recite far more than simply transferring funds from one entity to another,"
and the "claims recite specific mechanisms for implementing collaborative
funds transfer." Id.
In response, the Examiner concludes "[t]he pending claims are
directed to (describe) a concept of transferring funds from one entity to
another entity. This concept is described ... in independent claims 1, 8
and 15." Final Act. 4. The claimed steps
correspond to concepts of data gathering (steps 1 and 3),
comparing the received data to stored data (steps 2 and 4), and
fundamental economic practice (step 5), each of these concepts
held by courts as an abstract idea. Hence, the claim is directed
to an abstract idea in collaborative funds transfer.
Ans. 4.
5 We disagree with Appellant's assessment that the Supreme Court has
conflated patent-eligibility under § 101 with prior art considerations relevant
to§§ 102 or 103. The Supreme Court guides, "[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). Our reviewing court further indicates that "[e]ven
assuming" that a particular claimed feature was novel does not "avoid the
problem of abstractness." Affinity Labs, 838 F.3d at 1263.
8
Appeal2017-001092
Application 14/225,440
We also find the Examiner's position in the Answer is consistent with
the Final Action, in which the Examiner concluded:
Claims 1, 3-4, 8, 10-12, 15 and 17-18, in steps 1-5 as outlined
herein are directed to ( or describes or sets forth a concept of)
transferring funds from one entity ( or account) to another entity
( or account) which is established and fundamental economic
practice. Transferring funds from one entity to another,
including via charitable donations by monetary payments from
donor's accounts ( e.g. transfer from pay checks of a donor) to
an account of a designated charitable organization is old
practice.
Final Act. 5.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 (citation omitted).
Turning to the claimed invention, claim 1 recites: "A method of
implementing collaborative funds transfer." Claim 1 (preamble). Method
claim 1 's limitations also require the steps of:
(a) "receiving ... a ... funds transfer request";
(b) "verifying ... authenticity of the charitable
organization ... and verifying compliance with ... regulations
by comparing ... details ... with a ... database";
( c) "receiving ... funds ... via the collaborative
environment"·
'
( d) "identifying that services necessary to process the
collaborative funds transfer request are offered within the
collaborative environment'';
( e) "monitoring communications regarding the funds
transfer within the collaborative environment to determine that
9
Appeal2017-001092
Application 14/225,440
the funding of the collaborative funds transfer request are for
legitimate charitable purposes; and"
(f) "transferring, funds ... to an account controlled by
the charitable organization and associated with a user account
of the charitable organization for the collaborative
environment."
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 8, and 15 are directed to an abstract
idea, i.e., transferring funds from one account to another, which we also
conclude is a fundamental economic practice or, alternatively, a method of
organizing human activity. See Ans. 3. 6
We agree with the Examiner because, as the Specification discloses,
" [ t ]his invention relates generally to money transfers. More specifically, the
invention relates to money transfers utilizing smart phone technology."
Spec. ,r 2. 7 We find this type of activity, i.e., transferring money between
6 Merely combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea
... does not render the claim non-abstract."); see also FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining
the pending claims were directed to a combination of abstract ideas).
7 See also Spec. 17 ("Abstract"):
A method of implementing collaborative funds transfer
includes receiving, by a host computer system, from an entity a
collaborative funds transfer request for a relief effort to be
executed within a collaborative environment. The methods
further includes verifying, by the host computer system,
validity of the entity, receiving funds provided to the entity via
the collaborative environment, reviewing services offered
within the collaborative environment, reviewing
communications regarding the funds transfer within the
10
Appeal2017-001092
Application 14/225,440
accounts, includes longstanding conduct that existed well before the advent
of computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 8
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to '"treat[ ] analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category."' Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
collaborative environment, and transferring the funds to the
entity.
8 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
11
Appeal2017-001092
Application 14/225,440
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category"). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Further, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is abstract. Digitech
Image Techs., LLCv. Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014). Also, more recently, our reviewing court has also concluded that
acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant argues against the Examiner's conclusion of abstractness
at least because the claims recite far more than simply
transferring funds from one entity to another. This is an extreme
oversimplification of the claimed subject matter. The present
claims recite specific mechanisms for implementing
collaborative funds transfer by, for example, monitoring
communications regarding the funds transfer within the
collaborative environment to determine that the funding of the
collaborative funds transfer request are for legitimate charitable
purposes. This is an insufficient analysis as required by the
relevant law.
Br. 8-9. We disagree.
We disagree because, while we find the "specific mechanisms" or
technology implemented in the claimed invention may be useful to solve a
business problem, we also find the additional elements are not a
technological solution to a technological problem, or a solution to a problem
introduced by the technology itself. See Alice Step 2 analysis, infra.
Appellant further argues:
12
Appeal2017-001092
Application 14/225,440
Br. 9.
the Office has failed to present a prima facie case of
obviousness with regard to the independent claims, as well as
multiple dependent claims, which shows that the Office has not
presented any adequate evidence illustrating that the claimed
methods are actually "well-established" if no art can be located
to anticipate or render obvious the claimed recitations.
We disagree with Appellant because, unlike an evidence-based
rejection under 35 USC§ 102 and/or 35 USC§ 103, 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. See, e.g., In re Roslin Institute, 750 F.3d 1333, 1335 (Fed.
Cir. 2014 ); Accenture Global Services, GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1340-41 (Fed. Cir. 2013); Fort Properties, Inc. v. Am.
Master Lease LLC, 671 F.3d 1317, 1320 (Fed. Cir. 2012); CyberSource, 654
F.3d at 1369; SiRF Tech., Inc. v. Int'! Trade Comm'n, 601 F.3d 1319, 1331
(Fed. Cir. 2010); In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009); In
re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en bane), affirmed by Bilski v.
Kappas, 561 U.S. 593 (2010). 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.
Appellant also argues their "claims pose no risk of pre-emption of any
fundamental business practice or abstract idea, and are therefore patent-
eligible." Br. 9. We disagree. Appellant's argument that the claims do not
preempt all methods of verified funds transfers do not make them any less
abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (collecting cases); Accenture, 728 F.3d at 1345; Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While
13
Appeal2017-001092
Application 14/225,440
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility").
Further, Appellant's reliance on DDR9 (Br. 11) in the Step 1 abstract
idea analysis is misplaced as the recited claims do not improve the computer.
In DDR, the claims at issue involved, inter alia, "web pages displays [with]
at least one active link associated with a commerce object associated with a
buying opportunity of a selected one of a plurality of merchants" ( claims 1
and 19 of US 7,818,399). DDR, 773 F.3d at 1249. The Federal Circuit
found the claims in DDR to be patent-eligible under step one of the
Mayo/Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." Id. at 1257. Specifically, the Federal
Circuit found the claims addressed the "challenge of retaining control over
the attention of the customer in the context of the Internet." Id. at 1258. We
find the rejected claims are dissimilar to DDR's web page with an active
link, and the Specification does not support the view that the computer
related claim elements are unconventional. See Spec. ,r,r 39-46.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than verifying and transferring funds between
accounts - an abstract idea. See Elec. Power Grp., 830 F.3d at 1354. 10
Accordingly, on this record, and under step one of Alice, we agree with the
Examiner's conclusion the claims are directed to an abstract idea.
9 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014).
10 Merely automating previously manual processing by using computers
does not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
14
Appeal2017-001092
Application 14/225,440
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and, thus, transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
The Examiner concludes:
The limitations of the subject claims do not transform the
abstract idea into patent-eligible subject matter because the
claims simply instruct the practitioner to implement the abstract
idea on a generic computer ( e.g. the host computer in the
method claims 1 and 3-4) with routine, conventional activity
(receiving, reviewing, verifying, identifying and transferring as
described in claim are routine and conventional steps that any
generic computer is capable of performing). None of individual
steps in claims 1, 3-4, 8, 10-12, 15 and 17-18 transform the
nature of the claim into patent-eligible subject matter. The
15
Appeal2017-001092
Application 14/225,440
claimed sequence of steps comprises only conventional steps,
specified at a high level of generality ( e.g. extra-solution
activities of receiving data, verifying the validity, identifying
services necessary to process the funds transfer request and
transferring funds) which is insufficient to supply an "inventive
concept."
Final Act. 6.
In response, Appellant contends:
Appellant[] disagree[ s] that the claimed methods are
performed on generic computers as alleged. To the contrary,
Appellant[] submit[ s] that particular, non-generic, machines/
computers are necessary to implement the systems and methods
of the claims especially from the financial server side of the
operations. For example, a server capable of implementing the
systems and methods must include specialized programming for
determining the claimed [sic], which a generic computer cannot
perform. Moreover, the system must also be able to monitor
communications regarding the funds transfer within the
collaborative environment to determine that the funding of the
collaborative funds transfer request are for legitimate charitable
purposes, which is not a standard receiving, computing, or
calculating operation. Off-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 an industry during peak trading and trending
hours.
Combined, these aspects are not typical of generic
computers, and thus only particularized computers are capable
of performing these methods, thereby providing yet another
reason the claims overcome any analysis of patentable subject
matter.
Br. 10.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
16
Appeal2017-001092
Application 14/225,440
transforms the abstract idea of making verified money transfers into a
patent-eligible application of that abstract idea. See Ans. 6.
We agree because, as the Examiner concludes when considering the
claims as a whole, and in response to Appellant's arguments (similar to the
Final Action):
Id.
The limitations of the subject claims do not transform the
abstract idea into patent-eligible subject matter because the
claims simply instruct the practitioner to implement the abstract
idea on a generic computer ( e.g. the host computer in the
method claims 1 and 3-4) with routine, conventional activity
(receiving, reviewing, verifying, identifying and transferring as
described in claim are routine and conventional steps that any
generic computer is capable of performing). None of individual
steps in claims 1, 3-4, 8, 10-12, 15 and 17-18 transform the
nature of the claim into patent-eligible subject matter. The
claimed sequence of steps comprises only conventional steps,
specified at a high level of generality ( e.g. extra-solution
activities of receiving data, verifying the validity, identifying
services necessary to process the funds transfer request and
transferring funds) which is insufficient to supply an "inventive
concept." Indeed, the steps of receiving, verifying, identifying
and transferring do not add anything to the concept of funds
transfer and have no practical significance to the underlying
abstract idea.
As evidence of the conventional nature of the claimed network
components and processes, we note the disclosure in Appellant's
Specification at paragraphs 39 through 46. For example:
The computer system 7 00 is shown comprising hardware
elements that can be electrically coupled via a bus 705 ( or may
otherwise be in communication, as appropriate). The hardware
elements can include one or more processors 710, including,
without limitation, one or more general-purpose processors
17
Appeal2017-001092
Application 14/225,440
and/or one or more special-purpose processors (such as digital
signal processing chips, graphics acceleration chips, and/or the
like); one or more input devices 715, which can include,
without limitation, a mouse, a keyboard and/or the like; and one
or more output devices 720, which can include, without
limitation, a display device, a printer and/or the like.
Spec. ,r 39.
Notwithstanding Appellant's arguments cited above, we agree with the
Examiner that the claim limitations may be broadly but reasonably construed
as reciting conventional computer components and techniques, particularly
in light of Appellant's Specification, as quoted above. 11
Thus, with respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a " [a] method of implementing
collaborative funds transfer" utilizing a "host computer system" and
"collaborative environment" ( claim 1 ); a "system for implementing
collaborative funds transfer" including "a memory device" and "a computer
processor" ( claim 8); or a "non-transitory computer-readable medium for
implementing collaborative funds transfer having sets of instructions stored
thereon" ( claim 15) is simply not enough to transform the patent-ineligible
abstract idea here into a patent-eligible invention. See Alice, 134 S. Ct. at
11 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
18
Appeal2017-001092
Application 14/225,440
2357 ("[C]laims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention.").
Our reviewing court has held, "the use of generic computer elements
like a microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter." Fair Warning IP v. Iatric
Sys. Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR, 773 F.3d at
1256).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's§ 101 rejection of independent claim 1, and grouped claims 3, 4,
8, 10-12, 15, 17, and 18, not argued separately, and which fall therewith.
See Claim Grouping, supra.
2. § 103 RejectionR2 of Claims 1, 3, 4, 8, 10-12, 15, 17, and 18
Issue 2
Appellant argues (Br. 13) the Examiner's rejection of claim 1 under 35
U.S.C. § 103(a) as being obvious over Fasciano in view of the Examiner's
taking of Official Notice is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art teaches or suggests
a "method of implementing collaborative funds transfer" that includes, inter
alia, the step of "verifying, by the host computer system, the authenticity of
the charitable organization as a legitimate charity and verifying compliance
with government regulations by comparing operational details of the
19
Appeal2017-001092
Application 14/225,440
charitable organization with a government database holding information
regarding legitimate charitable organizations," as recited in claim 1?
Analysis
Appellant contends:
Fasciano fails to teach or suggest "verifying, by the host
computer system, the authenticity of the charitable organization
as a legitimate charity and verifying compliance with
government regulations by comparing operational details of the
charitable organization with a government database holding
information regarding legitimate charitable organizations", as
recited by claim 1 and similarly by claims 8 and 15.
Br. 13.
We disagree with Appellant's argument because it is not responsive to
the actual rejection set forth by the Examiner. The Examiner took Official
Notice of the contested limitation (see Final Act. 9; Ans. 8-9), and Appellant
did not properly traverse or otherwise rebut the Examiner's taking of Official
Notice in either the Appeal Brief or by filing a Reply Brief.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art and taking
of Official Notice to teach or suggest the disputed limitation of claim 1, nor
do we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 3, 4, 8, 10-12, 15, 17, and 18 which fall
therewith. See Claim Grouping, supra.
20
Appeal2017-001092
Application 14/225,440
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subjectmatterRejectionRl of claims 1, 3, 4, 8, 10-12, 15, 17, and 18 under
35 U.S.C. § 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1, 3, 4, 8, 10-12, 15, 17, and 18 under 35 U.S.C. § 103(a) over
the cited prior art of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 4, 8, 10-12,
15, 17, and 18.
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). See 37
C.F.R. § 4I.50(f).
AFFIRMED
21