Ex Parte Evans

Patent Trial and Appeal Board

Feb 22, 2018

14021609 (P.T.A.B. Feb. 22, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/021,609 09/09/2013 Scott L. Evans C319 1050US.C10 1663
116800 7590 02/26/2018
Collections Marketing Center, Inc.
c/o Devlin Law Firm LLC
1306 N. Broom St., Suite 1
Wilmington, DE 19806
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
US PTO @ dockettrak. com
gbell @ cmcagile. com
uspto @ devlinlawfirm. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT L. EVANS
Appeal 2016-001879
Application 14/021,609
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claim 1. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Collections Marketing Center, Inc., which,
according to the Brief, is the real party in interest. Appeal Br. 1.
Appeal 2016-001879
Application 14/021,609
BACKGROUND
Appellant’s invention is directed to a system and method for debt
presentment and resolution. Spec. 1.
Claim 1 recites:
1. A method of improving a computerized system
through a web-based transaction community with a client side
and a server side, comprising:
linking within the server side, via a local network and the
Internet, one or more web servers, one or more SQL database
servers, and one or more computer processors to form a
transaction community with creditor servers from multiple
unique creditor institutions, wherein each creditor server's
authorized access within the transaction community is limited
to the unique creditor institution to which the creditor server is
affiliated;
batch processing, through the transaction community's
one or more processors, updated financial information from
each creditor institution, wherein the processed financial
information includes updated debtor account data regarding
overdue debts owed to a specific creditor institution;
hosting, through the transaction community's one or more
SQL database and web servers information related to credit
agency scoring that is specific to a debtor with an overdue debt
account, wherein the hosted information is synchronized,
through the transaction community, with the information of the
creditor institutions, and exchanged at regular intervals;
hyperlinking on the client side of the transaction
community, via the Internet, a passcode secured graphical user
interface that is dynamic based on the determination of the
locality of a debtor and the brand of the creditor institution, as
determined by the transaction community's one or more SQL
database and web servers;
interactively guiding the debtor through a series of web-
based system options presented through the interface regarding
the overdue debt;
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Application 14/021,609
comparing, through the transaction community's one or more
processors, (a) rules established on behalf of the creditor
institution, with (b) account data for the overdue debt;
automatically determining in realtime, through the
transaction community's one or more processors, an acceptable
range of transaction settlement offers to settle the overdue debt
based on the processor(s) comparison;
presenting to the debtor, through the interface, a
hyperlinked binding settlement offer that the debtor may select
through the interface to automatically settle the overdue debt in
real-time without the intervention of a human agent, wherein
the settlement offer does not include the creation of a new debt
instrument.
Appellant appeals the following rejection:
Claim 1 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
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claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594-595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594-95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
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S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
ANALYSIS
The Examiner held that the claims were directed to debt resolution
which is both a fundamental economic practice and a method of organizing
human activity by providing an opportunity for parties to enter into a
specified agreement. Fin. Act. 4.
Appellant argues that the Examiner failed to provide factual evidence
to satisfy the prima facie burden to show that claim 1 is directed to an
abstract idea. App. Br. 5.
Regarding step 1 of Alice, we agree with the Examiner’s explanation
why, and the Examiner’s determination that, the claimed concept is directed
to an abstract idea. Moreover, we deem the Examiner's statement of the
rejection, which Appellant acknowledges he has read, to be sufficient to
place Appellant on notice as to step 1 of Alice as required under 35 U.S.C. §
132. In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). On the issue of prima
fide notice, particularly to anticipation but also generally, our reviewing
court was clear in Jung that:
There has never been a requirement for an examiner to make an
on-the-record claim construction of every term in every rejected
claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prima facie
rejection.
637 F.3d at 1363.
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The Federal Circuit further stated:
“[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132 merely
ensures that an applicant at least be informed of the broad
statutory basis for the rejection of his claims, so that he may
determine what the issues are on which he can or should
produce evidence.” Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, all that is required of the office to
meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references
relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.
Id.
We conclude that the Examiner's determination that the claimed
concept is directed to debt resolution and that debt resolution is a
fundamental economic practice (see Final Act. 3) is sufficient to place the
Appellant on notice of the basis of the rejection. Likewise, the Examiner’s
determination that the act of managing the resolution of debt is a method of
organizing humans {see id.) is also sufficient to notify Appellant of the basis
of the rejection. We further note that the Examiner’s determination of
abstractness is aligned with case law (see Answer 4). As such, the Appellant
has been provided with ample information and opportunity to argue against
the Examiner’s determination that claim 1 is directed to an abstract idea.
In regard to the second step articulated in Alice, the Examiner held
that the elements involved in the recited process undertake their roles in
performance of their activities according to their generic functionalities
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Application 14/021,609
which are well-understood, routine and conventional. The Examiner further
stated that the elements together execute in routinely and conventionally
accepted coordinated manners and interact with their partner elements to
achieve an overall outcome which is merely the combined and coordinated
execution of generic computer functionalities. Fin. Act. 4-5.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the combination of the elements of claim 1 form a
specialized computer network. We agree with the Examiner’s response to
this argument found on pages 5-7 of the Answer and adopt it as our own. In
particular, we agree that the steps which execute the method of claim 1 such
as linking servers and computer processors, batch processing financial
information, hosting databases and web servers, hyperlinking gi
interlaces etc. are conventional steps of conventional elements that
in a conventional manner. We agree with the Examiner and find that one of
ordinaiy skill in the art would be familiar with graphic user interfaces,
computer processors and network communication in the recited
configuration and the combination of elements performi ng in the manner
claimed. Fin. Act. 4.
We do not agree with the Appellant that claim 1 is necessarily rooted
in computer technology and overcomes technological problems that arise in
the realm of the Internet and computer networks and is analogous to the
invention in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014). In. DDR, the Court noted that a claim may amount to more
than any abstract idea recited in the clai ms when it addresses a business
challenge, such as “retaining website visitors,” where that challenge is
.ar to a specific technological environment, such as the Internet.
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In DDR, the court stated that “the [] patent's claims address the
problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an advertisement
and activating a hyperlink.” DDR Holdings, 773 F.3d at 1257. This was
done in the claim by serving a composite page with content based on the link
that was activated to serve the page.
Appellant contends that the invention of claim 1 arose in the realm of
the Internet and computer networks and specifically as they are applied to
resolving overdue debt and is a specific way to automate a functionality
based on data from multiple sources. App. Br. 8-9. We do not agree. In
our view, the problem arose in the realm of debt collection. A debt
collection problem is not a technical problem, it is a business problem. The
alleged improvement that Appellant touts does not concern an improvement
to computer capabilities but instead relates to an alleged improvement in
implementing debt collection for which a computer is used as a tool in its
ordinary capacity.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 1 is a new and nonobvious and thus the
elements do not operate in a routine, conventional and generic fashion. To
the extent that Appellant is arguing that the claim recites significantly more
because the claim is novel and nonobvious over the prior art, Appellant
misapprehends the controlling precedent. Although the second step in the
Alice/Mayo framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “‘an element or combination of elements that is sufficient to
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Application 14/021,609
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself?” Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
Appellant lastly argues that the claims present no risk of
monopolizing one of the basic tools of scientific and technological work.
While preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat 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.”). And,
“[wjhere a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1363, 1379.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1.
DECISION
We affirm the Examiner’s § 101 rejection of claim 1.
TIME PERIOD
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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)(1) (2009).
ORDER
AFFIRMED
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