Ex Parte Gonthier et al

Patent Trial and Appeal Board

Jun 26, 2018

13803447 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/803,447 03/14/2013
23662 7590 06/28/2018
ROBERT M. MCDERMOTT, ESQ.
1824 FEDERAL FARM ROAD
MONTROSS, VA 22520
FIRST NAMED INVENTOR
Alexandre GONTHIER
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.
PW-120720 8461
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
patents@ lawyer. com
claudia@artlover.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDRE GONTHIER,
MARIO DELAS, and
MICHAEL KONTOROVICH
Appeal2016-005492 1
Application 13/803,447
Technology Center 3600
Before CAROLYN D. THOMAS, DANIEL N. FISHMAN, and
NABEEL U. KHAN, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1-7 5, all remaining claims of the application. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants assert the real party in interest is EWISE Systems USA Inc.
App. Br. 2.
2 In this Opinion, we refer to the Appeal Brief ("App. Br.," filed September
25, 2015), the Reply Brief ("Reply Br.," filed April 22, 2016), the
Examiner's Answer ("Ans.," mailed February 25, 2016), the Final Office
Action ("Final Act.," mailed April 3, 2015), and the original Specification
("Spec.," filed March 14, 2013).
Appeal 2016-005492
Application 13/803,447
STATEMENT OF THE CASE
THE INVENTION
Appellants' invention relates to electronic financial transaction
systems that enable transfer of funds from a user's bank account to a
vendor's bank account. Spec. i-f 1. Figure 2, reproduced below, is a flow
diagram of exemplary operation of systems according to the claimed
invention.
_/ 1.20
Purchaser
Vendor
Svstetn
• ,...,,..,210
1<'f\ /" ,)l.
TransacUon
Sysiem
140,
OnUne
Bank
Receive Purchase • lReceive Transaction Req~n~sd ,,.,r 220
............. Request ..... , (Vendor ID, Amount, etc.) r
;.-uuuu:;uuuuuuuuumfum:uuuuu:uuum~um~ , •. "
------------;i Request and Hece1ve L.-,........ 225
.................................................................... l Purchaser Info i
'.•••••••••••••••••••.••••••••••••••,••.••••••••••••••••••••••••••••.•••: ./2so , , , l Determine Purc~aser's 8ar:k r
~m
240 ~ Oomin Ust of ,!\ccounts t.ind !,..~~~~~~~~~~~~~~~~~=­
~ Br1~ar..ces ~ 24.~, ~:::::::::::::::::::::::::::::::::!::::::::::::::::::::::::::::::::::'.// 5
----------..........,: Present Viable Acoount(s) !
~ .............................................................. ~ ..... l ..
' R . S I .. d A ~ ,,.,,,.- 250 l . eceive e ecte ccount r
: t
25'" •:::> ~ Send Funds Transfer !-.. _____ .... ·•
( Reauest l 275
~uuuuuuuuuuuuuuuu•iuuuuuuuuuuuuuuuuul .. 270 le
: Send Trar:sat.tinn Reoort r,.......----~--......,.
~ . . . . . . . ~- . ~
Debit Purchase
Rece~ve
Confirmation
, ......... ''.' ... '"I
; Rece.~ve 1 ..... 290
i Pun:::hase i.,.....
Se!ected
Acwunt
' I l Funds 1
FIG. 2
Figure 2 describes an exemplary method of operation of the purported
invention to enable transfer of funds between a purchaser's bank account
and a vendor.
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Appeal 2016-005492
Application 13/803,447
According to the'447 patent application, purchaser 120 sends a
purchase request 210 to vendor 130 that is forwarded by vendor 130 as
purchase request 220 to transaction system 150. Id. i-fi-f 16-18. Transaction
system 150 requests and receives purchaser information 225 from purchaser
120, determines purchaser's bank 230, and obtains access information 235
from purchaser 120 for such bank accounts. Id. i-fi-f 18-22. The method next
determines the balance in each of purchaser's accounts 240 by accessing the
account at each bank 140. Id. i-fi-122-24. Transaction system 150 then
presents 245 purchaser 120 with a list of viable accounts with sufficient
balances and receives a selection 250 from purchaser 120 from the selected
account to be used for payment to vendor 130. Id. i-fi-125-27. Transaction
system 150 then transfers 255 the purchase amount from the selected
account of the purchaser to the vendor account.
Independent claim 23, reproduced below, is illustrative:
23. A method for execution on a processing system that
includes one or more processing devices, the method
compnsmg:
receiving, via a communication system, a transaction
request from a vendor, the transaction request including an
identifier of the vendor and a purchase amount;
receiving, via the communication system, purchaser
information from a device of a purchaser;
processing the purchaser information to identify a bank
associated with the purchaser;
determining an access protocol associated with the bank;
receiving from the purchaser device, via the
communication system, access information corresponding to
the access protocol;
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Application 13/803,447
logging into, via the communication system, an online
banking service associated with the bank based on the access
information;
accessing, via said online banking service, account
information associated with the purchaser based on the access
information;
receiving, via said online banking service, account
information from the bank associated with the purchaser, the
account information being associated with one or more bank
accounts associated with the purchaser;
providing, via the communication system, at least a
portion of the account information to the purchaser device;
receiving, via the communication system, a selection of a
select bank account from the purchaser device;
creating and executing a funds transfer request for
transferring the purchase amount from the select bank account
to a bank account associated with the vendor; and
sending, via the communication system, a transaction
report to the vendor in response to the transaction request.
Independent claim 1 is a system claim reciting two elements that,
collectively, perform essentially the same functions as the above method
steps. Independent claim 45 recites a computer readable medium that stores
instructions for performing essentially the same method steps as claim 23.
THE REJECTION
Claims 1-75 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2.
ANALYSIS
Only those arguments actually made by Appellants are considered in
this Decision. Arguments that Appellants did not make in the Briefs are
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Appeal 2016-005492
Application 13/803,447
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Based on Appellants'
arguments, we decide the appeal on the basis of representative independent
method claim 23. Id. ("When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone."). We agree with and adopt as our own the
findings of the Examiner as articulated in the Final Office Action (Final Act.
2-3) and in the Answer (Ans. 3-5).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 134 S. Ct. at 2355. If we determine through the first step that the
claims are directed to an abstract idea, we tum to the second step of Alice in
which "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
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 73 (2012)).
In this regard, the Examiner finds that the claims are directed to an
abstract idea (Alice/Mayo first step }-namely, a "fundamental economic
practice." Final Act. 2. The Examiner further finds the claimed elements,
considered individually or in combination, "do not amount to significantly
more than an abstract idea." Id.
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Appellants contend the Examiner erred specifically arguing: (1) the
claims are directed to a problem that is unique to Internet e-commerce and,
thus, is rooted in computer technology (App. Br. 8-11 ); (2) the claims are
not directed to a "fundamental economic practice," (id. at 11-14); (3) the
claims as a whole amount to significantly more than the abstract idea of
processing a financial transaction (id. at 15-18); and (4) the claimed
invention does not preempt all techniques for transferring funds between a
purchaser and a vendor through a computer network (id. at 18-19). We
address these arguments below.
Alice/Mayo Step I-Abstract Idea
The first two arguments by Appellants relate to whether the claims are
directed to an abstract idea-i.e., Appellants essentially argue the claims are
not directed to an abstract idea because the claims are rooted in
computer/network technology and because the claims are not directed to a
fundamental economic principle.
1. Argument 1 (Rooted in Computer Technology)
Appellants argue processes that are rooted in computer technology,
solving problems unique to computer technology, are not abstract ideas.
App. Br. 8 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). Appellants contend that, prior to the advent of the
Internet, a purchaser desirous of paying a vendor with a check would have to
complete the financial transaction in person, physically present at the
vendor's store to provide the check, or mail the check thereby imposing
delays in the transaction. Id. According to Appellants, using the Internet for
such commercial transactions, purchasers are able to avoid physical travel to
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complete a transaction at the vendor's storefront. Id. at 9. However,
according to Appellants, an online purchaser using the Internet was unable
to pay using a check. Id. Based on DDR, Appellants contend its claimed
method (and associated system and computer readable medium) solves a
problem unique to the Internet (paying a vendor from a purchaser's checking
account in an online purchase transaction) and, thus, the claimed method is
rooted in computer/networking technology and not an abstract idea. Id. at
10-11.
We disagree with Appellants' characterization of its claimed invention
as rooted in computer/networking technology. In DDR, the claims 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. In particular, the DDR court held the claims were 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. In DDR, "the claims addressed the problem of
retaining website visitors who, 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." Ans. 3 (citing DDR, 773 F.3d at 1257). By
contrast, Appellants' claims use computers and the Internet in accordance
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with their normal functions---computers that obtain data, communicate data
over the Internet, analyze exchanged data, and output data. See id.
Although Appellants characterize the problem to be addressed as one that
arises only in the context of computer/networking as applied to online
purchase transactions, nothing in the claims is directed to changes or
improvements in the operation of the underlying computer or networking
technology to achieve the desired solution to the problem. Instead of a
purchaser manually providing identification, in person, to validate a
purchase by check, the claimed method uses standard computing systems to
obtain purchaser, vendor, and banking information via a computer network
(e.g., the Internet). In accordance with typical computer networking
operation, data related to the purchaser, vendor, and banks, is transmitted
and received through standard operations of such communication networks.
Further, in accordance with typical data processing, standard computer
systems are employed to process and analyze the exchanged data to validate
the use of a checking account by a purchaser.
Appellants do not identify any aspects of the claimed invention that
improve upon the standard operation of the claimed network used to
communicate the various data for the transaction or that improve on the
standard operation of the computers used to analyze and process the
exchanged data. Accordingly, we are not persuaded the claims are rooted in
computer/network technology.
2. Argument 2 (Fundamental Economic Practice)
The Examiner asserts "[t]he claim(s) is/are directed to the abstract
idea of a fundamental economic practice." Final Act. 2. More specifically,
the Examiner finds "[ t ]he claims recite the steps of receiving a transaction
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request, receiving account information and transferring funds associated
with the payment request." Id. at 3. The Examiner asserts that processing of
such a financial transaction is similar to the risk management methods
discussed in to Bilski v. Kappas, 561 U.S. 593 (2010) and similar to the
mitigation of settlement risks as discussed in Alice-both found to be
abstract ideas. Id.
Appellants argue that not all claims directed to financial transactions
are abstract ideas. App. Br. 11. Appellants characterize the claims of Bilski
and Alice and contend that, unlike the Court in Bilski and Alice, the
Examiner has not identified a particular economic practice in the claims and,
thus, has failed to establish a prima facie case that the claims are directed to
the abstract idea of a fundamental economic principle. Id. at 13-14.
We are not persuaded the Examiner erred in finding the claims are
directed to an abstract idea-namely a fundamental economic principle.
Specifically, we determine the claims are directed to completing a financial
transaction between a purchaser and a vendor-an ancient economic
transaction. More specifically, the Examiner finds the claims recite the steps
of "receiving a transaction request, transmitting account information,
processing account information, and processing the transaction" and finds
this "is similar to other concepts that have been identified as abstract by the
courts, such as collecting and comparing known information in Classen or
banking transactions using cellular/wireless devices in Joao Bock." Ans. 4
(citing Joao Bock Transaction Sys., LLC v. Fid. Nat. Info. Servs., Inc., 122
F. Supp. 3d 1322 (M.D. Fla. 2015); Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)). We agree. The District
Court in Bock noted that, although the record was devoid of evidence of
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banking or economic textbooks, "the Court has little difficulty deciding that
these 'method[ s] of organizing human activity' are basic commercial
practices." Bock, 122 F. Supp. 3d at 1334 (quoting Alice, 134 S. Ct. at
2356-57. In like manner, we have little difficulty in recognizing that the
claims are directed to a fundamental economic principle of completing a
financial transaction between a purchaser and a vendor.
3. Conclusion Regarding First Step of Alice/Mayo
In view of the above discussion, we are not persuaded the Examiner
erred in finding the claims are directed to an abstract idea. Specifically, the
claims are directed to the fundamental financial principle of a completing a
financial transaction between a purchaser and a vendor. Furthermore, we are
not persuaded by Appellants' argument that the claims are not an abstract
idea because they are rooted in computing/networking technology
addressing a problem unique to such technologies. Instead, the claimed
invention utilizes standard computer system and standard communication
networks in accordance with their normal mode of operation to achieve the
desired purpose of completing a financial transaction between a purchaser
and a vendor.
Thus, we determine the claims are directed to an abstract idea.
However, "[a] claim drawn to an abstract idea can still be patent-eligible if it
adds an 'inventive concept' that transforms the abstract idea into a real
invention, and does not just add the words 'apply it."' Bock, F. Supp. 3d at
1334 (quoting Alice, 134 S. Ct. at 2355, 2357). Hence, we shift our analysis
to the second step of the Alice/Mayo test.
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Alice/Mayo Step 2 - Sufficient Inventive Concept
Argument 3 (Significantly More Than Abstract Idea)
In the second step of the test, we determine whether the claims
contain an inventive concept sufficient to transform the claimed abstract idea
into a patent-eligible claim. Alice, 134 S. Ct. at 2357. Appellants argue the
claims provide a sufficient inventive concept ("significantly more than the
abstract concept of processing a financial transaction") by ( 1) providing
assurance that the purchaser is the owner of the bank account used for the
payment to the vendor (App. Br. 15-16) and (2) enabling the vendor to
control the financial transaction to completion (id. at 17-18).
We are not persuaded the claims recite significantly more than the
abstract idea. The Examiner finds the claims "simply perform the generic
computer functions of receiving, processing and transmitting data" as
generic computer functions and, thus, "do not amount to significantly more
than the abstract idea." Ans. 5. We agree. Initially, we note Appellants'
professed advantages of the claimed invention are not reflected in the claims
and, thus, the arguments are not commensurate with the claims. See In re
Self, 671F.2d1344, 1348 (CCPA 1982). Furthermore, we are not persuaded
that the professed advantages of the claimed invention are lacking in other
means/methods for completing the purchaser/vendor financial transaction
(e.g., payment by paper check (delivered by mail or in person), electronic
payment through Automated Clearing House ("ACH") payments, credit card
transactions, etc.).
Appellants raise additional arguments in the Reply Brief that were not
raised in the Appeal Brief. Reply Br. passim. We are not persuaded that the
arguments raised in the Reply Brief are in response to the Examiner's
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Answer and, thus, we need not address such new arguments first raised in
the Appellants' Reply Brief. See 37 C.F.R. § 41.41(b)(2). Furthermore, the
arguments in the Reply Brief address still further professed advantages of
the claimed invention-aspects not found in the claim limitations and,
hence, not commensurate with the scope of the claims.
Accordingly, we are not persuaded that the claims recite substantially
more than the abstract idea of completing a financial transaction between a
purchaser and a vendor (i.e., a fundamental economic principle).
Argument 4 - Claimed Invention Does Not Preempt Other Techniques
Appellants argue determining whether the claimed invention preempts
every application of the abstract idea is a primary concern of claims directed
to an abstract idea and contends the claims do not so preempt every
application of the idea. App. Br. 18. Regardless of whether the claims
preempt all other applications of network-based payments for a purchase, the
Examiner finds, and we agree, "the absence of complete preemption does
not demonstrate patent eligibility." Ans. 5. That there are other methods for
executing a financial transaction between a purchaser and a vendor, even
other network-based methods, does not mean that Appellants' claims
automatically satisfy the § 101 analysis. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims [directed to the concept of offer-based price optimization] 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."); Kray IP
Holdings, LLC v. Safeway, Inc., 107 F.Supp. 3d 677, 695 (E.D. Tex. May
29, 2015) ("[T]he Supreme Court has made clear that the fact that claims are
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directed to a specific commercial application of an abstract idea does not by
itself render them patentable.").
Accordingly, we remain unpersuaded that the claims are directed to
substantially more than an abstract idea-that of executing a financial
transaction between a purchaser and a vendor (by means of computers and a
network).
Conclusion
For the reasons above, we are not persuaded the Examiner erred in
rejecting independent method claim 23 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Appellants do not separately argue, with
particularity, the rejection of other claims and, thus, we selected claim 23 as
representative of all rejected claims. Therefore, for the same reasons as for
claim 23, we are not persuaded of Examiner error in the rejection of any of
claims 1-75 under 35 U.S.C. § 101.
DECISION
For the above reasons, the Examiner's decision rejecting claims 1-75
is affirmed.
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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