Ex Parte Jackman et al

Patent Trial and Appeal Board

Nov 28, 2018

14303755 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/303,755 06/13/2014
20350 7590 11/30/2018
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.
87188-910390 (081420US) 1037
EXAMINER
IWARERE, OLUSEYE
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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
Appeal2017-010012 1
Application 14/303,755 2
Technology Center 3600
Before JASON V. MORGAN, JAMES B. ARPIN, and NABEEL U. KHAN,
Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a), the Examiner's decision
rejecting claims 2-21. App. Br. 5. Claim 1 is cancelled. App. Br. 11
(Claims Appx.). We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
February 13, 2017) and Reply Brief ("Reply Br.," filed July 18, 2017); the
Final Office Action ("Final Act.," mailed October 12, 2016); the Examiner's
Answer ("Ans.," mailed June 15, 2017); and the originally filed
Specification ("Spec.," filed June 13, 2014).
2 According to Appellants, First Data Corporation is the real party-in-
interest. App. Br. 3.
Appeal2017-010012
Application 14/303,755
II. STATEMENT OF THE CASE
Appellants explain that:
By some estimates, tens of millions of workers in the
United States do not have a traditional banking relationship. This
fact is driving increasing numbers of employers to assist their
"unbanked" employees by establishing accounts into which
employers may deposit funds and through which employees may
access funds using presentation instruments ( e.g., debit cards,
stored value cards, ATM cards, smart cards or other storage
mediums utilizing card numbers (e.g., RFID chips, and FOBS),
etc., herein "cards") and other means.
Spec. ,r 4. This problem has caused employers to establish accounts for their
unbanked employees, but such accounts established in the employer's or
employee's name have disadvantages. Id. ,r 5. Appellants' recited systems,
methods, and non-transitory memory devices relate to activating a trust
account by an employee with the assistance of the employer, providing
funds by the employer to the trust account for the benefit of the employee,
distributing funds by a third party holder of the trust account pursuant to an
employee's instructions, and printing personalized checks for the employee.
Id. ,r,r 6, 7; see id. ,r 25 (describing a "trust account").
As noted above, claims 2-21 are pending. Claim 2, reciting payroll
receiving and accessing systems for providing payroll funds from an
employer to an employee by a third party; claim 8, reciting methods for
providing payroll funds from an employer to an employee; and claim 14,
reciting non-transitory memory devices having executable instructions for
causing one or more processors to provide payroll funds from an employer
to an employee by a third party, are independent. See App. Br. 11-16
(Claims Appx.). Claims 3-7 depend directly or indirectly from claim 2,
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claims 9--13 depend directly or indirectly from claim 8, and claims 15-21
depend directly or indirectly from claim 14. Id.
Claim 2, reproduced below, is representative.
2. A payroll receiving and accessing system for providing
payroll funds from an employer to an employee by a third party,
compnsmg:
an account activation system, comprising a host computer
system, wherein the host computer system:
receives an activation request over a network, wherein:
the activation request is initiated by the employee;
the activation request compnses an account
identifier;
the activation request compnses a temporary
password;
the employee received the account identifier and the
temporary password from the employer; and
the activation request is received by the third party;
authenticates the activation request, wherein:
the activation request is authenticated using the
account identifier and the temporary password
received from the employee; and
the activation request is authenticated by the third
party;and
activates an account for use by the employee, wherein the
account is a trust account; and
a disbursement system, wherein:
the disbursement system is operated by the third
party with the host computer system; and
the disbursement system is configured to:
receive the payroll funds from the employer;
credit the payroll funds to the account;
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Id.
receive a selection from the employee of one
or more options for distributing the payroll
funds;
disburse at least a portion of the payroll funds
according to the one or more options selected
by the employee for distributing the payroll
funds; and
print personalized checks for the employee.
III. THE REJECTION
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The U.S. Supreme Court has "long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (emphasis added; quoting
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013)). The Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-83 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id.
The Court acknowledged in Mayo "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 method or means that improves the relevant
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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, 1335-36 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends. Id. at
1339; see Ancora Techs., Inc. v. HTC America, Inc., 2018 WL 6005021, *4--
*5 (Fed. Cir. Nov. 16, 2018) ("It therefore passes muster under Alice step
one, as it is not directed to patent-ineligible subject matter. We need not and
do not apply step two of the Alice analysis."). Otherwise, the inquiry
proceeds to the second step where the elements of the claims are considered
"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, 566 U.S. at 78). That
is whether the claims recite elements making the claims significantly more
than the judicially excepted subject matter.
A. Alice Step One
With regard to the first step of the Alice analysis, the Examiner
determines that:
Claims 2-21 stand rejected under 35 U.S.C. § 101 because
they are directed to the abstract idea of payroll account activation
and disbursement.
This is a certain method of organizing human activity,
similar to "processing loan information", "managing an
insurance policy" and "generating rule-based tasks for
processing an insurance claim". The claim is also directed to
concepts relating to interpersonal activities such as managing
relationships or transactions between people.
Final Act. 2--4 ( emphasis added, citations omitted).
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Appellants disagree for three reasons. First, Appellants contend that
the Examiner overgeneralizes the claims in order to find an abstract idea.
App. Br. 5; Reply Br. 2-3. In particular, Appellants contend that the
pending claims are "directed to solving a problem of providing funds to an
unbanked employee and a personalized presentation instrument that enables
them to access funds from a third-party" and that the identified abstract idea
is not properly tethered to the actual language of the claims. App. Br. 5;
Reply Br. 2-3.
As the Examiner notes, the Specification states "[ e ]mbodiments of the
present invention relate generally to payroll distribution systems. More
specifically, embodiments of the present invention relate to systems and
methods for distributing payroll to employees using a trust account that
provides receipt options for the employee." Ans. 3 ( quoting Spec. ,r 1 ). The
claims recite account activation and funds distribution systems, steps, and
instructions. Id. The claims also refer only to an "employee," and, thus, are
not limited to problems associated with "unbanked" employees, as
Appellants contend. App. Br. 5; see Reply Br. 2 ("[T]he specific features
referenced above are those necessary in carrying out the purpose of the
invention, namely setting up secure accounts (not subject to the business risk
of the employer) and providing ready access to the funds.").
We are not persuaded that the Examiner overgeneralized when
identifying the abstract idea under the first step of the Alice analysis.
Moreover, the level of abstraction at which the Examiner describes the
recited device does not change the accuracy of the Examiner's
determination. Apple Inc. v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir.
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Application 14/303,755
2016) ("An abstract idea can generally be described at different levels of
abstraction.").
Second, Appellants contend that, like the claims at issue in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the
pending claims are not directed to an abstract idea, but instead recite a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." App. Br. 6
(quoting DDR Holdings, 773 F.3d at 1257); see Reply Br. 4. Specifically,
noting that the Examiner did not reject the claims based on prior art (see
Final Act. 2), Appellants contend that, like the claims at issue in DDR
Holdings, the pending claims "are not some business practice from the pre-
internet world with a requirement to perform it on the internet" (App. Br. 6).
In response, "the Examiner notes that payroll account activation and
disbursement is a concept that existed before the advent of computers and
existed in the pre-internet world." Ans. 3. The Specification makes clear
that persons of ordinary skill in the art were aware of the problems
associated with paying unbanked employees (see Spec. ,r,r 4 ( defining
"unbanked" employees), 5 ( describing "the ongoing business risk of the
employer")), as well as of the tools recited in the claims for addressing these
problems, including "trust accounts." See Spec. ,r,r 6 ("trustee account"), 18
("well-known circuits, structures and techniques"), 25 ("trust account"), 45
("well-known processes and elements"). Thus, the claims do not recite
improvements rooted in computer technology, but, instead, recite a solution
to a business problem employing computer technology.
Third, Appellants contend that, even accepting the Examiner's
identification of the abstract idea, the claims "do not tie up any judicial
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exception such that others cannot practice it." App. Br. 6; see Reply Br. 4.
We recognize that the U.S. Supreme Court has described "the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption." See Alice, 134 S. Ct.
at 2354. However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained, "[t]he Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability" and "[ f]or this reason, questions on
preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). "While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa, 788 F.3d at 1379. As the
Examiner correctly notes, "although preemption is one of the considerations,
it is not alone dispositive of what is an abstract idea." Ans. 4. A potential
lack of complete preemption is not dispositive here.
We are not persuaded that the Examiner erred in identifying the
abstract idea to which the pending claims are directed.
B. Alice Step Two
Further, the Examiner finds that "[t]he claims do not include
additional elements (individually or in combination) that are sufficient to
amount to significantly more than the judicial exception because the account
activation system, computer, network and disbursement system are
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performing routine machine and computer functions." Id. at 4--5 (emphasis
added). 3 We agree.
Appellants contend, however, that the pending claims (1) describe a
computer programed to perform a specific purpose, i.e., a special-purpose
computer, rather than a generic computer performing conventional
functions, and (2) add unconventional steps that confine the claim to a
particular useful application. App. Br. 7; Reply Br. 3. For the reasons set
forth below, we disagree.
First, Appellants contend that "it is clear the claimed system performs
unique functions, as evidenced by the Examiner not finding any prior art that
discloses or suggests the claimed invention." Reply Br. 3. Having
considered Paragraphs 35 and 38--43 of the Specification cited by Appellants
(App. Br. 8), the Examiner finds that the Specification discloses generic
computers performing Appellants' methods, rather than specially-purposed
computers (Ans. 6). As noted above, we agree that the Specification states
that the disclosed systems, methods, and non-transitory memory devices
employ "well-known circuits, structures and techniques," as well as "well-
known processes and elements." Spec. ,r,r 18, 45 ( emphases added).
Moreover, we find nothing in the claims requiring special programing, such
that a generic computer using known techniques and processes would not
perform the recited functionality.
3 The Examiner states that "Claims 2 - 21 are allowable over the prior art,
however they are still not in condition for allowance because they are
subject to the rejection under 35 U.S.C. § 101." Final. Act. 2. Thus, no
prior art based rejections remain.
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Second, Appellants contend that the claims recite unconventional
steps that confine the claim to a particular useful application. In particular,
Appellants assert 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 non-obvious.
App. Br. 8-9. "[T]he [U.S.] Supreme Court recognized that in making the
§ 101 determination, the inquiry 'might sometimes overlap' with other fact-
intensive inquiries like novelty under§ 102." Berkheimer v. HP Inc., 881
F.3d 1360, 1368 (Fed. Cir. 2018) (quoting Mayo, 566 U.S. at 90). The
eligibility requirements of Section 101 and the patentability requirements of
Sections 102 and 103, however, may not properly be conflated. Ans. 7. As
the Examiner notes,
A claim can be ineligible under section 101, but be specific
enough that it is not found in the prior art. The Examiner takes
the positon that while the claims are specific enough to not be
anticipated or found obvious over the prior art, it is still ineligible
for being an abstract idea and not containing significantly more
than the abstract idea for the previously given reasons.
Id. at 7-8. We agree.
Finally, Appellants contend "independent claims 2, 8, and 14
generally recite printing/print personalized checks for the employee. In
other words, independent claims 2, 8, and 14 disclose transforming an
unmodified object (i.e., a generic check) into a different state (i.e., a
personalized check) that only a specific person can use." App. Br. 9. The
Examiner finds that this "printing" step does not add significantly more to
the identified abstract idea. Final Act. 5; Ans. 4. We further view this
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additional step as insignificant extra-solution activity. See MPEP
2106.05(g). The claims recite disbursing at least a portion of the trust
account funds based on an option selected by the employee. E.g., App. Br.
11 (Claim Appx. (Claim 2: "receive a selection from the employee of one or
more options for distributing the payroll funds; disburse at least a portion of
the payroll funds according to the one or more options selected by the
employee")). The recited account activation, option selection, and funds
disbursement are not dependent on the use of printed checks. "The term
'extra-solution activity' can be understood as activities incidental to the
primary process or product that are merely a nominal or tangential addition
to the claim." Id. In the context of the recited systems, methods, and non-
transitory memory devices, this step is well known and is not significantly
more than the abstract idea. Therefore, the printing of personalized checks
is not sufficient to render these claims patent eligible.
We are not persuaded the Examiner erred in finding that the claims do
not recite limitations amounting to "significantly more" than the identified
abstract idea. Consequently, we are not persuaded that the Examiner erred
in rejecting claims 2-21, and we sustain the rejections thereof.
IV. DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 2-21.
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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