Ex Parte Hakim

Patent Trials and Appeals Board

Sep 24, 2018

13660379 - (D) (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/660,379 10/25/2012 Omar Besim Hakim
34399 7590 09/26/2018
GARLICK & MARKISON
106 E. 6th Street, Suite 900
AUSTIN, TX 78701
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.
PBK003Cl 4551
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OMAR BESIM HAKIM
Appeal2017-005359
Application 13/660,379
Technology Center 3600
Before JOHN A. EV ANS, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 31-50, which are all of the claims pending in this
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Gold Innovations, LLC.
App. Br. 2.
2 Claims 1-30 have been canceled. App. Br. 10.
Appeal2017-005359
Application 13/660,379
INVENTION
Appellant's invention relates to collateral-based financial transactions.
Abstract. Claim 31 is illustrative and reads as follows:
31. A method comprising:
receiving tender;
determining identity of the tender by an electro-optical sensor; and
determining a physical composition of the tender by an
electromechanical sensor, the physical composition including a metallic
content and a weight corresponding to the tender; and using one or more
processors to perform
determining a legal tender value and a legal tender decomposition,
based on the identity of the tender and the physical composition of the tender
including the metallic content and the weight corresponding to the tender;
recording the legal tender value of an accounting system entry;
recording the legal tender decomposition of the accounting system
entry; and
preparing a proposed transaction report for a financial services
transaction wherein the proposed transaction report organizes data for
preparing a tax filing via display on a graphical user interface generated by a
device associated with the one or more processors, the transaction report
including terms of a proposed transaction that depend at least in part on the
legal tender value and the legal tender decomposition and that support a
plurality of different tax strategies.
REJECTIONS
Claims 31-50 stand rejected under 35 U.S.C. § 101 because the
claimed invention is not directed to patent eligible subject matter. Final Act.
2---6.
Claims 31-50 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Siemens (US 2002/0011393 Al; published Jan. 31,
2002), Dabic (US 2012/0301009 Al; published Nov. 29, 2012), Thomas et
2
Appeal2017-005359
Application 13/660,379
al. (US 2012/0059746 Al; published Mar. 8, 2012) ("Thomas"), Section 14
of the Leahy-Smith America Invents Act (See US PTO Memorandum, "Tax
Strategies Are Deemed To Be Within the Prior Art," dated Sept. 20, 2011,
https ://www. uspto. gov/ sites/ default/files/ aia_implementation/tax-strategies-
memo. pdf), and Olson et al. (US 2011 /0016062 Al; published Jan. 20,
2011) ("Olsen").
ANALYSIS
We have reviewed the rejections of claims 31-50 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-10) and in the Action from which this appeal
was taken (Final Act. 2-22). We provide the following explanation for
emphasis.
Rejection of Claims 31-50 under 35 US.C. § 101
Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, 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-
3
Appeal2017-005359
Application 13/660,379
step framework, described in Mayo and Alice. Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
76-77 (2012)). In accordance with that framework, we first determine
whether the claim is "directed to" a patent-ineligible abstract idea. See
Alice, at 2356.
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, 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. (internal quotations and
citation omitted). The Court acknowledged in Mayo that "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. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellant first contends the Examiner failed to established a prima
facie case of patent-ineligible subject matter under 35 U.S.C. § 101 because
"the Examiner merely states his opinion as to the nature of present claims
without referring to case law precedent in order to identify abstract ideas by
way of comparison to concepts already found to be abstract." App. Br. 5.
We disagree. The Federal Circuit has explained repeatedly that "the
prima facie case is merely a procedural device that enables an appropriate
4
Appeal2017-005359
Application 13/660,379
shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner carries the burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 2-6. The Examiner's statements satisfy§ 132(a) because they
apply the Mayo/Alice analytical framework and apprise Appellant of the
reasons for the§ 101 rejection under that framework. Appellant has not
responded by alleging a failure to understand the rejection. App. Br. 4--5.
To the contrary, Appellant clearly identifies the abstract idea. See, e.g., App.
Br. 5.
In the first step of the analysis set forth in Alice, the Examiner
concluded claims 31-50 are directed to the abstract idea of determining the
legal tender composition of tender and preparing a transaction report for tax
strategy (Final Act. 5). The Examiner concluded claims 31-50 are similar to
other fundamental economic practices that have been found ineligible by the
courts, such as intermediated settlement ( citing generally to Alice) and
hedging against financial risk of price fluctuation (citing Bilski v. Kappas,
561 U.S. 593 (2010), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014)), where the abstract idea was concepts relating to
agreements between people or performance of financial transactions such as
creating a contractual relationship. Ans. 6. Specifically, the Examiner
5
Appeal2017-005359
Application 13/660,379
concluded the steps of supplying data, providing data, scheduling providers
based on the data, and outputting verification data correspond to concepts
identified as abstract ideas by the courts. Id.
The Examiner also concluded that the concept of preparing a financial
report for tax purposes is similar to other methods of organizing human
activity related to providing financial services, such as processing loan
information (Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331-34 (Fed. Cir.
2012)), managing an insurance policy (Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Canada (US.), 687 F.3d 1266, 1276-77 (Fed. Cir. 2012)),
and tax-free investing (Fort Properties, Inc. v. American Master Lease LLC,
671 F.3d 1317 (Fed Cir. 2012)). Ans. 5---6. The Examiner further concluded
the claims are merely directed to financial services that amount to an
uninstantiated concept, plan, or scheme, and are similar to other concepts
relating to processes of organizing information. Ans. 6 ( citing Cyberfone
Sys., LLC v. CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014)
(nonprecedential), Content Extraction & Transmission v. Wells Fargo Bank,
776 F.3d 1343 (Fed. Cir. 2014), and Digitech Image Tech., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). Ans. 6.
Appellant has not presented persuasive arguments with regard to step
one of the Alice analysis. See App. Br. 5. For the reasons set forth by the
Examiner, we agree with the Examiner that claims 31-50 are directed to
"determining the legal tender composition of tender and preparing a
transaction report for a tax strategy," a combination of concepts that are
identified by the courts as abstract ideas. Final Act. 5; Ans. 4---6.
Accordingly, we are not persuaded of error in the Examiner's conclusion
that the claims are directed to an abstract idea.
6
Appeal2017-005359
Application 13/660,379
Turning to the second step of the Alice analysis, the Examiner
concluded the claims do not recite limitations that are "significantly more"
than the abstract idea because the additional elements or combination of
elements in the claims amount to no more than merely applying the abstract
idea on a computer. Final Act. 5-6. We find nothing sufficient to remove
the claims from the abstract idea exception that is ineligible for patenting.
See Alice, 134 S. Ct. at 2354.
Appellant contends the sensors recited in claim 3 8 perform significant
functions that are at the heart of the claims by providing electro-optical and
electromechanical transformations to generate information that is required
by the processor to perform the recited steps that rely on the information.
App. Br. 6.
The Examiner determined the recited use of the sensors is
conventional and routine and is merely an attempt to tie the abstract idea to
another technological field. Ans. 7. The Examiner explained that
Appellant's Specification does not describe improving the sensors or any
other technology, or solving a technological problem related to identifying
or determining the composition of tender. Id.; see also Spec. ,r,r 109-118.
Moreover, to the extent Appellant relies on the machine-or-
transformation test in arguing "these sensors necessarily provide electro-
optical and electromechanical transformations to generate information," we
are not persuaded. See App. Br. 6. The claims as a whole do not result in
any transformed articles. Further, the fact that the claims involve the use of
well-known machines does not impart patentability under the machine-or-
transformation test. Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
7
Appeal2017-005359
Application 13/660,379
(invalidating as patent-ineligible claimed processes that "can be carried out
in existing computers long in use, no new machinery being necessary").
For these reasons, we are not persuaded the Examiner erred in
concluding claims 31-50 are directed to a judicial exception to patentability,
without significantly more. Accordingly we affirm the Examiner's§ 101
rejection of claims 31-50.
Rejection of Claims 31-50 under 35 US.C. § 103(a)
Appellant contends the Examiner erred because the cited portions of
Dabic do not teach or suggest determining a legal tender decomposition,
based on the metallic content and the weight corresponding to the tender, as
independent claims 31, 38, and 45 require. App. Br. 8.
We are not persuaded of error because Appellant attacks Dabic
individually, even though the Examiner relied on the combination of
Siemens and Dabic in rejecting claim 31. In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981))
("The test for obviousness is what the combined teachings of the references
would have suggested to those having ordinary skill in the art.").
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is suggested
expressly in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F .2d
413,425 (CCPA 1981).
8
Appeal2017-005359
Application 13/660,379
Here, the Examiner found Siemens teaches "determining identity of
the tender by an electric-optical sensor," and "determining a composition of
the tender by an electric mechanical sensor," and "determining a legal tender
value and a legal tender composition, based on the identity of the tender and
the composition of the tender." Final Act. 7-8 ( citing Siemens ,r 51 ); Ans. 9.
The Examiner acknowledged Siemens fails to teach "wherein the physical
composition includes a metallic content and a weight." Final Act. 8; Ans. 9.
The Examiner relied on Dabic for that limitation, finding Dabic teaches a
coin identification method and apparatus that includes an image sensor to
allow collection of image data by which coins are identified, and an
additional sensing region that collects additional data, such as non-visual
characteristics ( weight, composition, etc.). Ans. 9. The Examiner further
found an artisan of ordinary skill would understand that the composition of
coins as taught in Dabic teaches or suggests the metallic content of the coins.
Id.
Because Appellant has not rebutted persuasively the findings on
which the Examiner's rejection was actually based, we are not persuaded of
error in the Examiner's findings that the combination of Siemens and Dabic
teaches or suggests the disputed limitations of claim 31.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 31, as well as the Examiner's§ 103(a) rejection of
independent claims 38 and 45, which Appellant argues are patentable for
similar reasons. App. Br. 7-8. We also sustain the Examiner's rejection of
dependent claims 32-37, 39-44, and 46-50, not argued separately. Id.
9
Appeal2017-005359
Application 13/660,379
DECISION
We affirm the Examiner's decision rejecting claims 31-50.
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
10