Ex Parte LYONS et al

Patent Trial and Appeal Board

Sep 4, 2018

14205122 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/205,122 03/11/2014
21839 7590 09/06/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Garry LYONS
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.
0076412-000244 7084
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRY LYONS, ORAN CUMMINS, and DONGHAO HUANG
Appeal2017-001483 1
Application 14/205, 1222
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 17, 2016) and Reply Brief ("Reply Br.," filed October 28, 2016),
and the Examiner's Answer ("Ans.," mailed September 1, 2016) and Non-
Final Office Action ("Non-Final Act.," mailed November 17, 2015).
2 Appellants identify MasterCard International Incorporated as the real party
in interest. App. Br. 2.
Appeal2018-001483
Application 14/205,122
CLAIMED INVENTION
Appellants' claimed invention relates to "providing virtual currency
micropayments, particularly as applied in a financial transaction system"
and, specifically to "utilizing a universal virtual currency in order to
minimize processing fees and times while facilitating micropayments"
(Spec. ,r 1 ).
Claims 1, 9, 1 7, and 24 are the independent claims on appeal.
Claim 9, reproduced below, is illustrative of the claimed subject matter:
9. A method for processing financial accounts,
compnsmg:
storing, in a database, of a processing device, a plurality of
accounts, the plurality of accounts including a consumer account
associated with a consumer and a transacting personal account
associated with a person other than the consumer, wherein the
consumer account and the transacting personal account each
include an amount of virtual currency associated with the
account;
receiving, by a receiving device, a transaction request for
a financial transaction between the consumer and the merchant,
the transaction request including the consumer account, the
transacting personal account, and a transaction amount of virtual
currency;
approving or denying, by the processing device, the
transaction request based on at least the amount of virtual
currency associated with the consumer account and the
transaction amount of virtual currency;
transferring, by the processing device, the transaction
amount of virtual currency from the consumer account to the
transacting personal account upon approval of the transaction;
processing, by the processing device, the consumer
account or the transacting personal account, wherein the
processing includes converting at least part of the associated
amount of virtual currency into a real currency when the account
meets a predetermined criteria; and
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transmitting, by the processing device, the approval or
denial of the transaction request.
REJECTION
Claims 1-30 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
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. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. 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 there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting claims 1-30 under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to processing currencies or financial
transactions, which the Examiner reasoned is a fundamental economic
practice, and, therefore, an abstract idea (Non-Final Act. 5). The Examiner
also determined that "[ e Jach of the independent claims, as a whole, does not
amount to significantly more than the abstract idea itself' because "each of
the claims does not effect an improvement to another technology or
technical field; ... does not amount to an improvement to the functioning of
a computer itself; and ... does not move beyond a general link of the use of
an abstract idea to a particular technological environment" (id. at 6). More
particularly, the Examiner determined that the claims merely amount to "the
application or instructions to apply the abstract idea (i.e., allowing
consumers to shop for and optionally purchase merchandise) on a computer,
and ... amount to nothing more than requiring a generic computer system
... to merely carry out the abstract idea itself' (id. at 6-7). Addressing the
dependent claims, the Examiner determined that "the additional recited
limitation( s) fail( s) to establish that the claim( s) is/ are not directed to an
abstract idea" (id. at 7).
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We are not persuaded, as an initial matter, by Appellants' argument
that the claims are "eligible for patent protection" because "the use of virtual
currency in conjunction with the other features and limitations set forth in
the appealed claims appl[ies] the shopping for and optional purchasing of
merchandise 'to a new and useful end"' (App. Br. 6). The recitation of a
practical application for an abstract idea is not sufficient to transform the
abstract idea into a patent-eligible invention. Cf CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in
Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable."). Nor does a finding of novelty or non-obviousness
automatically lead to the conclusion that the claimed subject matter is
patent-eligible. A novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("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.").
We also are not persuaded of Examiner error to the extent that
Appellants argue that the claims are patent-eligible because the claims "do
not tie up or pre-empt others from 'allowing consumers to shop for and
optionally purchase merchandise"' (App. Br. 7).
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
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the same as characterizing preemption as the sole test for patent eligibility.
"The 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). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Appellants' further argument that the claims are patent-eligible
because the claims "use computer technology in order to overcome a
problem specifically arising in the realm of computer networks and
transaction processing" is similarly unpersuasive (App. Br. 8).
Claim 9, for example, is directed to a method for processing financial
accounts, and recites that the method comprises: (1) storing a plurality of
accounts in a database; (2) receiving a transaction request for a financial
transaction between a consumer and a merchant; (3) approving or denying
the transaction request; (4) converting an amount of virtual currency into
real currency when an account meets a predetermined criteria; and
( 5) transmitting the approval or denial of the transaction request. The
Specification describes that consumers are increasingly entering into
financial transactions with merchants, i.e., "micropayment" transactions,
where the payment amount is less than the costs of processing the
transaction, and explains that this can result in higher expense to the
consumer, higher costs for the merchant, and loss of revenue to payment
processors (Spec. ,r 3). The claimed invention is ostensibly intended to
address this problem by providing a method and system for facilitating
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micropayments (while minimizing processing fees and times) using a
universal virtual currency for processing financial transactions between a
consumer and multiple merchants (id. ,r,r 1, 5). The Specification, thus,
describes that upon receipt and approval of a consumer request for a
financial transaction between the consumer and a merchant, an amount of
virtual currency equal to the amount of the transaction is transferred from
the consumer account to the merchant account (id.,I 5). This virtual currency
is then converted to real currency when the account meets a predetermined
criteria, e.g., when the corresponding amount of real currency is at least the
fee for processing the transaction (id. ,r 44).
It appears clear, when considered in light of the Specification, that the
problem, to which claim 9 is directed, is minimizing processing fees and
times while facilitating transactions involving small payment amounts. We
are not persuaded that this is a technical problem or one rooted in
technology. This problem existed before, and still exists outside of
computer technology and computer networks (see Spec. ,r 2 ( describing in
the "Background" section that "[ m ]erchants might accumulate small charges
over a period of time" to minimize transaction processing fees)).
We also cannot agree with Appellants that the present claims are
analogous to claim 2 of the USPTO's Example 21 in the "July 2015 Update
Appendix 1: Examples"3 and, therefore, patent-eligible, because the claims
3 Exemplary claim 2, which appears at pages 2-3 of Appendix 1 of the
July 2015 Update (available at https://www.uspto.gov/sites/default/files
/ documents/ieg-july-2015-app 1.pdf), reads:
2. A method of distributing stock quotes over a network to a remote
subscriber computer, the method comprising:
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"recite specific ways to process a transaction that utilizes a virtual currency
based on specific data that is stored, specific data that is recited, and specific
processing that includes the conversion of virtual currency into real currency
based on account data and predetermined criteria" (App. Br. 8).
Exemplary claim 2 was not found patent-eligible merely because it
stored specific data or involved specific processing; nor would that alone
have been sufficient for patent-eligibility. Cf Mayo, 566 U.S. at 88-89
("[O]ur cases have not distinguished among different laws of nature
according to whether or not the principles they embody are sufficiently
providing a stock viewer application to a subscriber for installation on
the remote subscriber computer;
receiving stock quotes at a transmission server sent from a data source
over the Internet, the transmission server comprising a microprocessor
and a memory that stores the remote subscriber's preferences for
information format, destination address, specified stock price values, and
transmission schedule, wherein the microprocessor
filters the received stock quotes by comparing the received stock
quotes to the specified stock price values;
generates a stock quote alert from the filtered stock quotes that
contains a stock name, stock price and a universal resource locator
(URL), which specifies the location of the data source;
formats the stock quote alert into data blocks according to said
information format; and
transmits the formatted stock quote alert over a wireless
communication channel to a wireless device associated with a
subscriber based upon the destination address and transmission
schedule,
wherein the alert activates the stock viewer application to cause the
stock quote alert to display on the remote subscriber computer and to
enable connection via the URL to the data source over the Internet when
the wireless device is locally connected to the remote subscriber computer
and the remote subscriber computer comes online.
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narrow"). Instead, exemplary claim 2 was deemed patent-eligible because it
addressed an Internet-centric challenge, i.e., alerting a subscriber with time
sensitive information when the subscriber's computer is offline. Appellants
have not demonstrated that the present claims address any comparable
Internet-centric challenge.
Responding to the Examiner's Answer in their Reply Brief,
Appellants argue that "Applicant's claims result in the requirement of a
computer system with improved functionality over an unspecified 'generic'
computer" (Reply Br. 4 ). Appellants assert that "[b ]ecause the recitations of
independent claim 1 would require specific programming, the resulting
computer would be a specific purpose computer, which is in contrast to the
claims of Alice" (id.).
The difficulty with Appellants' argument is that In re Alappat,
33 F.3d 1526, 1543 (Fed. Cir. 1994)-the case in which the court used this
explanation to justify an expansive view of§ 101 - "has been superseded
by Bilski and Alice Corp." Eon Corp. v. AT&T Mobility LLC, 785 F.3d 616,
623 (Fed. Cir. 2015) ( citations omitted). And, it is clear from the Supreme
Court decision in Alice that merely implementing an abstract idea on a
general purpose computer is not patent-eligible. See Alice Corp., 134 S. Ct.
at 2358.
We also are not persuaded that there is any parallel between the
present claims and those at issue in Enfzsh, LLC v. Microsoft Corp.,
822 F.3d. 1327 (Fed. Cir. 2016) (Reply Br. 4---6). Appellants argue that,
analogous to Enfzsh, the pending claims are directed to "a technical solution
for utilizing residual alternative currency by eliminating requirements for
implementing specific software" and that this elimination of specific
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software leads to "reducing hardware requirements, providing improvements
of overall system efficiency, and saving bandwidth for communication
network" (id. at 5---6). But, we can find nothing in the record, short of
attorney argument, nor do Appellants direct us to anything in the record,
which ascribes any reduction in hardware requirements, improvement in
computer system efficiency, or savings in network bandwidth to the claimed
invention.
Appellants provide a table at pages 6-8 of the Reply Brief of "claim
features and [an] explanation as to how individually and/or in combination,
the features of the claims are more than well-understood, routin[e],
conventional activity" (Reply Br. 6). But, the only features that even
arguably constitute more than the performance of generic computer
functions ( e.g., storing, comparing, and transferring are transmitting data)
relate to the implementation of "particular protocols." And none of the
pending claims recites any "particular protocols" involved in the
communication of transaction data.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-30 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-30 under 35 U.S.C. § 101 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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