Ex Parte Jackman et al

Patent Trial and Appeal Board

Dec 26, 2018

14191220 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/191,220 02/26/2014
20350 7590 12/28/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Richard Jackman
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.
87188-901984 1069
EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
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 RICHARD JACKMAN, MARK HERRINGTON, and
MARK V. PUTMAN
Appeal 2017-011217
Application 14/191,220 1
Technology Center 3600
Before: ELENI MANTIS MERCADER, JENNIFER S. BISK,
and JASON M. REPKO, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 2,
3, 5-10, 12-17, and 19-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is First Data Corporation. App. Br. 3.
Appeal 2017-011217
Application 14/191,220
CLAIMED SUBJECT MATTER
The claims are directed to payer-based account porting to portable
value distribution systems and methods. Claim 2, reproduced below, is
illustrative of the claimed subject matter:
2. A method for porting a value program, the method
compnsmg:
enrolling, by a computer system, a payee into a payroll source
program such that the payee is associated with a stored value
account, wherein:
the payee can access funds in the stored value account using a
presentation instrument and only an employer payer is permitted
to deposit funds, comprising payroll deposits, to the stored value
account of the payroll source program;
determining, by the computer system, a predetermined period of
inactivity has occurred in relation to the stored value account of
the payroll source program;
based on the predetermined period of inactivity being determined
to have occurred in relation to the stored value account,
generating, by the computer system, a porting trigger;
enrolling, by the computer system, based on the porting trigger
being generated, the payee into a target program, such that the
payee's enrollment in the target program replaces
the payee's enrollment in the payroll source program and the
payee is associated with a target account, wherein the target
program permits entities other than the employer payer to deposit
funds to the target account; and
porting, by the computer system, account information associated
with the payee from the payroll source program to the target
program to permit the payee to continue to use the presentation
instrument, wherein porting the account information associated
with the payee from the payroll source program to the target
program comprises porting an account number of the
stored value account to the target program.
App. Br. 12 (Claims Appendix).
REFERENCES
There was no prior art relied upon by the Examiner in rejecting the
claims on appeal.
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Application 14/191,220
REJECTIONS
1. Claims 2, 3, 5-10, 12-17, and 19-21 stand rejected on the ground
of nonstatutory double patenting over claims 1, 2, 9, 11, 12, 16-24 of
U.S. Patent No. 8,700,507.
2. Claims 2, 3, 5-10, 12-17, and 19-21 stand rejected under
35 U.S.C § 101 because the claimed invention is directed to non-statutory
subject matter.
OPINION
Claims 2, 3, 5-10, 12-17, and 19-21 rejected on the ground
of nonstatutory double patenting
The Examiner rejects claims 2, 3, 5-10, 12-17, and 19-21 on the
ground of nonstatutory double patenting over claims 1, 2, 9, 11, 12, 16-24 of
U.S. Patent No. 8,700,507. Final Act. 3. Appellants do not provide any
arguments. Because Appellants do not challenge the merits of the double
patenting rejection, we summarily sustain it.
Claims 2, 3, 5-10, 12-17, and 19-21 rejected under
35 USC§ 101
Appellants argue that similar to DDR Holdings, the claims do not
merely recite the performance of some business practice known from the
pre-internet world along with the requirement to perform it on the internet.
App. Br. 6. Appellants assert that because the claims were not rejected
under 102 or 103, the claimed subject matter did not exist prior to the
internet. App. Br. 7.
Appellants further argue that similar to McRO, the claims do not pre-
empt and will not tie-up any judicial exception such that others cannot
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practice it. App. Br. 7-8. Appellants assert that the claimed invention is
focused on a specific way of authenticating and preforming a transaction.
App. Br. 8.
Appellants argue that claims 2, 9, and 16 involve more than sorting
data or mental steps, and embody the following concepts and steps unlike
Cyberfone and SmartGene:
(1) A computer system enrolls a payee into a payroll source
program in order to associate the payee with a stored value
account with a computer system;
(2) The computer system determines a period of inactivity;
(3) The computer system generates a porting trigger in response
to the period of inactivity;
( 4) The computer system enrolls the payee into a target program
so that the payee's enrollment in the target program replaces the
payee's enrollment in the payroll source program, based on the
porting trigger.
App. Br. 8-9.
Appellants further argue that particular machines (i.e., non-generic
machines/computers) are necessary to implement the systems and methods
of the claims. App. Br. 9. For example, Appellants contend a server capable
of implementing the systems and methods must be able to communicate
digital data with many different financial networks and their associated
protocols. See App. Br. 9, citing Spec. paras. 17-19; Figs. IA, IB.
Appellants add that off-the-shelf generic computers are not capable of
performing such functions. Accordingly, Appellants contend independent
claims 2, 9, and 16 use a particular machine and therefore include
significantly more than the alleged abstract idea. Appellants add that, even
if the computer elements of the claims could be considered generic (i.e.,
computer system), the PT AB recently recognized that general purpose
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computers become special purpose computers (i.e., non-generic or particular
computers) when specially programmed. App. Br. 9.
Appellants also content that because the claims do not stand rejected
under 35 U.S.C. §§ 102, 103 the claims have been found novel and non-
obvious. By definition, novel and non-obvious claims must include
limitations other than what is well understood, routine, and conventional in
the field, or else the claims would not be novel and nonobvious. Appellants
conclude that because independent claims 2, 9, and 16 include elements that
are not well understood, routine, or conventional in the field, Appellants'
claims include significantly more than an abstract idea. App. Br. 10.
We are not persuaded by Appellants' arguments. The Supreme
Court's two-step framework guides our analysis. See Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S.Ct. 2347, 2355 (2014). According to step one, "[w]e
must first determine whether the claims at issue are directed to a patent-
ineligible concept," such as an abstract idea. Id.
Our reviewing court has concluded that abstract ideas include the
concepts such as the collection and analysis of information. Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Additionally, the collecting of data, recognizing certain data within the
collected data set, and storing the data in memory are also abstract ideas.
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776
F.3d 1343, 1347 (Fed. Cir. 2014). 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); see also SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("merely
presenting the results of abstract processes of collecting and analyzing
information ... is abstract as an ancillary part of such collection and
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analysis" ( citation omitted)). Moreover, "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" and
"presenting the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Elec. Power, 830 F.3d at 1354.
Further, 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).
In the instant case, the Examiner finds and we agree, that the steps of
enrolling a payee into a payroll source program, determining a
predetermined period of inactivity, enrolling payee into target program and
porting account information associated with the payee describe manipulating
information by comparing and sorting the information based on a subscriber
preference. Ans. 10. In other words, these steps describe the abstract idea
of comparing and organizing information for transmission. Id.
Because the claims are "directed to an abstract idea," we consider the
claim limitations "both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S.Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court has described this analysis "as a search for an
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Application 14/191,220
'inventive concept."' Alice, 134 S.Ct. at 2355. Put differently, we must
search the claims for an "inventive concept," that is, "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. at2355 (quoting Mayo, 132 S.Ct. at
1294).
Here, we agree with the Examiner that generic computers performing
generic computer functions to apply an abstract idea do not amount to
significantly more than the abstract idea. App. Br. 11. The additional
computer limitations do not add an inventive concept to the abstract idea of
comparing and organizing information for transmission. Viewing the
limitations as a combination does not add anything further than looking at
the limitations individually. Id.
As explained in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015), "relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible." See also Alice, 573 U.S. at 224 ("use of a computer to create
electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept); Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer
"employed only for its most basic function ... does not impose meaningful
limits on the scope of those claims").
We are further not persuaded by Appellants' preemption argument.
"[W]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."
FairWarning IP, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
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Application 14/191,220
788 F.3d at 1362---63 (Fed. Cir. 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."). Further, "[ w ]here 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 1379.
Finally, Appellants improperly conflate the requirements for eligible
subject matter(§ 101) with the independent requirements of novelty(§ 102)
and non-obviousness(§ 103). "The '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); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice framework, a
claim directed to a newly discovered law of nature ( or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility").
For the reasons discussed supra, we are unpersuaded that the
Examiner erred in rejecting under 35 U.S.C. § 101 claim 2 as being directed
to patent-ineligible subject matter. Additionally, we sustain the Examiner's
rejection of independent claims 9 and 16, which recite similar limitations,
and dependent claims 3, 5-8, 12-15, 17, and 19-21, which are not separately
argued.
DECISION
The Examiner's rejections of claims 2, 3, 5-10, 12-17, and 19-21 are
affirmed.
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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)(l )(iv).
AFFIRMED
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