Ex Parte LeCuyer et al

Patent Trial and Appeal Board

Dec 14, 2018

14107447 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/107,447 12/16/2013
20350 7590 12/18/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Nicholas LeCuyer
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.
90945-894101 (018010US) 6370
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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 NICHOLAS LECUYER, TERRA GRANTHAM, and
MICHAEL KILBANE
Appeal2017-010317
Application 14/107,447 1
Technology Center 3600
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Western Union Company as the real party in interest.
App. Br. 2.
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Application 14/107 ,44 7
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
transmitting funds directly between financial institutions. Spec. ,r 2. "In
some embodiments, a method for analyzing multiple money transfer routing
schemes to identify a preferable money transfer routing scheme from among
the multiple money transfer routing schemes according to at least one
predefined criterion is presented." Spec. ,r 3. Claim 1 is exemplary:
1. A method comprising:
receiving, by a computer system of a money transfer
network, at least one predefined criterion used to analyze
multiple money transfer routing schemes;
receiving, by the computer system, an indication of a
source and a destination for a money transfer transaction;
selecting, by the computer system, a plurality of money
transfer routing schemes, based at least in part on the at least
one predefined criterion, wherein each the plurality of money
transfer routing schemes comprises a route to transmit funds
from the source for the money transfer transaction to the
destination for the money transfer transaction, wherein at least
one internal money transfer scheme and at least one external
money transfer routing scheme are selected, and wherein:
an internal money transfer routing scheme refers to a
money transfer routing scheme that utilizes a direct money
transfer arrangement between the destination of the money
transfer transaction and the money transfer network; and
an external money transfer routing scheme refers to a
money transfer routing scheme that utilizes at least one third
party money transfer network between the destination of the
money transfer transaction and the money transfer network;
determining, by the computer system, a preferable money
transfer routing scheme from among the plurality of money
transfer routing schemes, based at least in part on predefined
criterion;
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causing, with the computer system, at least a subset of
the plurality of money transfer routing schemes to be presented
at a user interface, wherein the subset includes the preferable
money transfer routing scheme and at least one other money
transfer routing scheme; and
receiving from the user interface, by the computer
system, a selection of a particular money transfer routing
scheme from among the subset of the plurality of money
transfer routing schemes.
Rejection2
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 3-8.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Non-Final Act. 3-8) and (ii) the Answer (Ans. 3-11) to the
extent they are consistent with our analysis below.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Non-Final Act. 3-8;
Ans. 3-11. In particular, the Examiner concludes the claims are directed to
the abstract idea of transferring money, which constitutes a fundamental
economic practice. See Non-Final Act. 3--4, 6-7; Ans. 3, 5---6, 10. The
Examiner determines the claims do not identify an inventive concept to
transform the nature of the claims into a patent-eligible application. See
2 Throughout this opinion, we refer to the (1) Non-Final Rejection dated
September 22, 2016; ("Non-Final Act."); (2) Appeal Brief dated February
22, 2017 ("Br."); and (3) Examiner's Answer dated May 5, 2017 ("Ans.").
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Application 14/107 ,44 7
Non-Final Act. 4--8; Ans. 8-9. Appellants argue the Examiner erred. See
Br. 4--8.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. That provision "contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have
described step two of this analysis as 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 Corp., 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.Ct. 1289, 1294, 1296-98 (2012)).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
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Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016). "And we have recognized that merely 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 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714--15 (Fed. Cir. 2014).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
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Appellants' arguments (Br. 4--8), the claims are similar to the claims of
Electric Power, and are focused on the combination of abstract-idea
processes or functions. See Elec. Power, 830 F.3d at 1354. For example,
claim 1 is directed to receiving information ("receiving ... "), analyzing
information ("selecting ... " and "determining ... "), and displaying
information ("causing ... to be presented ... "). Independent claims 13 and
17 are similarly directed to receiving, analyzing, and displaying information.
See claims 13 and 1 7. The dependent claims are directed to similar
functions or processes, and Appellants have not shown such claims are
directed to other non-abstract functions or processes. See claims 2-12, 14--
16, and 18-20.
We also agree with the Examiner that the claims are directed to the
abstract idea of transferring money, which constitutes a fundamental
economic practice. See Non-Final Act. 4, 6-7; Ans. 3, 9-10. As pointed out
by the Examiner (Non-Final Act. 6-7; Ans. 10), our determination is
consistent with the Specification, which repeatedly explains the invention is
directed to transferring money. See, e.g., Spec. Title, ,r,r 2-6, 74.
Appellants' argument about pre-emption (Br. 7) is unpersuasive,
because"[ w ]hile preemption rnay signal patent ineligible subject 1natter, the
absence of complete preemption does not demonstrate patent eligibility ....
Where a patent's claims are deemed only to disclose patent ineligible subject
matter under the A;Jayo framework, as they are in this case, preemption
concerns are fully addressed and made moot.'' Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP, 788
F.3d at 1362---63 ("that the claims do not preempt all price optimization or
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may be limited to price optimization in the e-commerce setting do not make
them any less abstracf').
Regarding Alice step two, contrary to Appellants' assertion (Br. 6-7),
Appellants have not shown the claims in this case require any "inventive
concept" or inventive set of components or methods, or invoke any
assertedly inventive programming. Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants' arguments (Br. 6-7), the claims are
similar to the claims of Electric Power, because they do not require any
nonconventional computer, network, or display components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed information collection,
analysis, and display functions on generic computer components and display
devices. See Elec. Power, 830 F.3d at 1355; see also independent claims 1,
13, 1 7 ( each reciting "a computer system of a money transfer network").
The dependent claims call for similar generic components and devices, and
Appellants have not shown such claims require any non-conventional
components or devices. See claims 2-12, 14--16, and 18-20.
Similar to the claims of Electric Power, the rejected claims specify
what information is desirable to gather, analyze, and display, but they "do
not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying ... by use of anything but entirely
conventional, generic technology." Elec. Power, 830 F.3d at 1356.
Therefore, similar to the claims of Electric Power, the rejected claims "do
not state an arguably inventive concept in the realm of application of the
information-based abstract ideas." Id. at 1356.
Appellants' argument about the absence of a prior art rejection (Br. 6-
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7) is unpersuasive, because a prior aii rejection is deterrnined under
35 U.S.C. § 102 and§ 103, which are different statutory requirements. As
the Supreme Court emphasizes: "[t]he '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) ( emphasis added). Our reviewing court further guides that
"[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are "insufficient to pass the test of an inventive
concept in the application" of an abstract idea and, therefore, do not add
significantly more to that idea. Id. at 1355 (citation omitted).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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
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