Ex Parte Mankad et al

Patent Trial and Appeal Board

Oct 25, 2018

13965664 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/965,664 08/13/2013 RupaMankad
13708 7590 10/26/2018
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
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.
CITI-0744 5250
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
10/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUPA MANKAD, MAHANTESH MUKARTIHAL,
and RAMIRO MUNOZ
Appeal2017-002920
Application 13/965,664 1
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and CARLL. SILVERMAN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-8, 11-14, 16, 18, and 20-22, which are all claims
pending in the application. Appellants have canceled claims 9, 10, 15, 17,
and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Citibank, N.A. Br. 3.
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Application 13/965,664
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to the field of transactional risk management, and more
particularly to methods and systems for assessing and managing
transactional risk." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for managing transactional risk,
compnsmg:
receiving, using a processor coupled to memory, payment
transaction information by a financial institution for executing a
payment by the financial institution for a customer of the
financial institution to a payee;
assessing, using the processor, the payment transaction
information by the financial institution before executing the
payment for the customer of the financial institution to the
payee for a predetermined level of risk based at least in part on
a payment transaction history of the customer of the financial
institution;
providing, using the processor, a report of the
predetermined level of risk by the financial institution to the
customer of the financial institution before executing the
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Jan. 11, 2016); Examiner's Answer ("Ans.," mailed June 29, 2016); Final
Office Action ("Final Act.," mailed Aug. 4, 2015); and the original
Specification ("Spec.," filed Aug. 13, 2013). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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payment for the customer of the financial institution to the
payee;
receiving, using the processor, a decision by the financial
institution from the customer of the financial institution for
approval or denial of executing the payment for the customer of
the financial institution to the payee before executing the
payment by the financial institution; and
executing, using the processor, the payment by the
financial institution for the customer of the financial institution
to the payee according to predefined processing instructions of
the customer of the financial institution if a decision approving
execution of the payment is received by the financial institution
from the customer of the financial institution and declining
execution of the payment if a decision denying execution of the
payment is received by the financial institution from the
customer of the financial institution.
Rejection on Appeal
Claims 1-8, 14, 15, 18, and 23-30 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 5.
CLAIM GROUPING
Based on Appellants' arguments (Br. 8-18), we decide the appeal of
the patent-ineligible subject matter rejection of claims 1-8, 14, 15, 18,
and 23-30 on the basis of representative claim 1. 3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUE
Appellants argue (id.) the Examiner's rejection of claim 1 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter is in error.
These contentions present us with the following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
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The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice Corp., 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. Ifso, we
"examine the elements of the claim to determine whether it contains an
'inventive concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Id. at 2357 ( quoting Mayo, 566 U.S. at 72, 79).
Although the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed.
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Cir. 2016). The disclosed technique enabled faster searching and more
effective storage of data than previous methods. Id. at 1333. The court
found the claims directed to "a specific improvement to the way computers
operate, embodied in the self-referential table" (id. at 1336), and explained
that the claims are "not simply directed to any form of storing tabular data,
but instead are specifically directed to a self-referential table for a computer
database" that functions differently than conventional databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "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. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
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the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes the claims "are directed to receiving
transaction information from a customer, assessing a level of risk, sending a
report of level of risk and then potentially executing the transaction. This is
considered to be an abstract idea inasmuch as such activity is considered a
fundamental economic practice." Final Act. 5. Further, "the invention is
nothing more than human and mental steps aided by a computer ... [ and
thus], it is nonstatutory." Ans. 5.
Appellant generally contends the § 101 rejection of claim 1 "lacks
evidence, articulated reasoning and analysis ... to establish a basis for
alleging that the claims are directed to an abstract idea." Br. 8. More
specifically, Appellant argues "the Examiner must provide documentary
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evidence to support a conclusion that the claims are directed to a judicial
exception. Br. 9. "As to the role of evidence, the Examiner must cite
authoritative documentary evidence, such as textbooks or similar
publications to support a conclusion that a claim recites a judicial exception
or that certain practices are well known, conventional or routine." Id.
"[T]he Examiner's allegation that applicants' claimed invention is an 'abstract
idea' is in direct conflict with the clear reasoning of the Court in Alice Corp.
To establish that an idea is abstract, the Examiner must show that the idea is
'fundamental' in the sense of being 'long-standing' and 'prevalent,' following
the statements of the Supreme Court in Alice Corp." Br. 10.
Appellants' argument concerning the absence of evidence supporting
the § 101 rejection also does not persuade us of Examiner error. "Patent
eligibility under § 101 presents an issue of law." Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea.
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Rapid Litig. Mgmt. v. CellzDirect, 827 F .3d 1042, 104 7, 119
USPQ2d 1370, 1372 (Fed. Cir. 2016); OIP Techs. v.
Amazon.com, 788 F.3d 1359, 1362, 115 USPQ2d 1090, 1092
(Fed. Cir. 2015); DDR Holdings v. Hotels.com, 773 F.3d 1245,
1255, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014); In re Roslin
Institute (Edinburgh), 750 F.3d 1333, 1335, 110 USPQ2d 1668,
1670 (Fed. Cir. 2014); In re Bilski, 545 F.3d 943, 951, 88
USPQ2d 1385, 1388 (Fed. Cir. 2008) (en bane), aff d by Bilski
v. Kappas, 561 U.S. 593, 95 USPQ2d 1001 (2010). Thus, the
court does not require "evidence" that a claimed concept is a
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judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues. FairWarning IP,
LLC v. Iatric Sys., 839 F.3d 1089, 1097, 120 USPQ2d 1293,
1298 (Fed. Cir. 2016) (citing Genetic Techs. Ltd. v. Merial
LLC, 818 F.3d 1369, 1373, 118 USPQ2d 1541, 1544 (Fed. Cir.
2016)); OIP Techs., 788 F.3d at 1362, 115 USPQ2d at 1092;
Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1349, 113 USPQ2d 1354, 1359 (Fed.
Cir. 2014).
MPEP § 2106.07(a) (III).
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 83 8 F .3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites: " [a] method for
managing transactional risk." Claim 1 (preamble). Method claim 1 's
limitations also require the steps of:
(a) "receiving ... payment transaction information ... ";
(b) "assessing ... the payment transaction ... before
executing the payment ... for a predetermined level of risk
based at least in part on a payment transaction history of the
customer . . . ; "
( c) "providing ... a report of the predetermined level of
risk ... before executing the payment .... ";
( d) "receiving ... a decision by the financial institution
... for approval or denial of executing the payment ... before
executing the payment ... ; " and
( e) executing ... the payment ... to the payee according
to ... instructions ... if a decision approving execution of the
payment is received ... and declining execution of the payment
if a decision denying execution of the payment is received."
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Our reviewing courts have often identified abstract ideas by referring
to earlier precedent, e.g., by comparing a claimed concept to the concepts
previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). For example, in
Alice, the Supreme Court identified the claimed systems and methods as
describing the concept of intermediated settlement, and then compared this
concept to the risk hedging concept identified as an abstract idea in Bilski.
Because this comparison revealed "no meaningful distinction between the
concept of risk hedging in Bilski and the concept of intermediated settlement
at issue here", the Court concluded that the concept of intermediated
settlement was an abstract idea. Alice, 134 S. Ct. at 2356-57. Similarly, the
Federal Circuit in Amdocs compared the claims at issue with "eligible and
ineligible claims of a similar nature from past cases" as part of its eligibility
analysis. 841 F.3d at 1295-1300.
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e., managing
payment transaction risk, which we also conclude is a fundamental
economic practice or, alternatively, can be considered either a method of
organizing human activity or an idea of itself. See Ans. 6 ("In this case,
there is no dispute as to what is being claimed, only whether what is being
claimed is abstract or not. The claim receives transaction information,
determines a level of risk for the customer, and then decides whether or not
to allow the transaction. The examiner maintains that this is a simple,
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fundamental economic practice using routine functions well-known and
understood in this area."). 4
As the Specification discloses, " [ t ]he present invention relates
generally to the field of transactional risk management, and more
particularly to methods and systems for assessing and managing
transactional risk." Spec. ,r 1. 5 We find this type of activity, i.e., managing
payment transaction risk, for example, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson."). 6
4 We acknowledge there can be considerable overlap in the classification of
an abstract idea. For example, mitigating payment transaction risk can be
analogized to mitigating settlement risk as in Alice, which either can be
considered a fundamental economic practice or a method of organizing
human activity. Additionally, comparing data to determine a risk level as in
PerkinElmer, Inc. v. Intema Ltd., 496 Fed. Appx. 65 (Fed. Cir. 2012) (non-
precedential) can be considered an abstract idea as "an idea of itself."
5 See also Spec. 18 ("Abstract"):
Methods and systems for managing transactional risk involve,
for example, receiving and assessing, using a processor coupled
to memory, entity payment transaction information for a
predetermined level of risk based at least in part on a payment
transaction history of the entity. Likewise using the processor, a
report of the predetermined level of risk may be generated, and
the payment transaction may be processed for the entity
according to predefined processing instructions of the entity.
6 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] 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." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). 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). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the #283 patent states the idea of
collecting and comparing known information"). Further, a process that
employs mathematical algorithms to manipulate existing information to
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generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellants suggest claim 1 is patent-eligible because its practice does
not preempt or tie up practice by others. Br. 15-16. We disagree with
Appellants' argument. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility").
Further, in Intellectual Ventures I, similar at least in some respects to
the claims before us on appeal, tailoring content based on information about
the user has also been determined as being directed to an abstract idea and,
thus, patent-ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, 134 S. Ct. at 2356. As
noted, the claim relates to customizing information based on (1)
information known about the user and (2) navigation data ....
[T]ailoring is "a fundamental ... practice long prevalent in our
system ... . "Id.There is no dispute that newspaper inserts had
often been tailored based on information known about the
customer-for example, a newspaper might advertise based on
the customer's location. Providing this minimal tailoring----e.g.,
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providing different newspaper inserts based upon the location
of the individual-is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015).
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data- an abstract idea. See Elec. Power Grp., 830 F.3d
at 1354.7
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
7 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of managing payment transaction risk into a
patent-eligible application of that abstract idea. See Final Act. 6. 8
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
8 The Examiner concludes:
The elements of the instant process, when taken alone, each
execute in a manner routinely and conventionally expected of
these elements. The elements of the instant process, when taken
in combination, together do not offer substantially more than
the sum of the functions of the elements when each is taken
alone. That is, the elements involved in the recited process
undertake their roles in performance of their activities
according to their generic functionalities which are well-
understood, routine and conventional. The elements together
execute in routinely and conventionally accepted coordinated
manners and interact with their partner elements to achieve an
overall outcome which, similarly, is merely the combined and
coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities
previously known to the industry.
Final Act. 6.
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conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note the Examiner's citation to Appellant's
Specification in paragraphs 19, 23-24, and 35-38. For example:
Physical computer hardware machines employed in
embodiments of the invention comprise, for example,
input/output devices, motherboards, processors, logic circuits,
memory, data storage, hard drives, network connections,
monitors, and power supplies. Such physical computer
hardware machines include, for example, user machines and
server machines that may be coupled to one another via a
network, such as a local area network, a wide area network, or a
global network through telecommunications channels which
may include wired or wireless devices and systems.
Spec. i-fl9.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 9
9 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Further, Appellants' reliance on DDR (Br. 15) is misplaced as the
recited claims do not improve the computer. In DDR, the claims at issue
involved, inter alia, "web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of US 7,818,399). The
Federal Circuit found the claims in DDR to be patent-eligible under step one
of the Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
Internet." Id. at 1258. We find the rejected claims are dissimilar to DDR's
web page with an active link, and the Specification does not support the
view that the computer related claim elements are unconventional. See
Spec. ,r,r 19, 23-24, and 35-38.
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of a "method for managing transactional
risk" using a "processor" and a "memory" ( claim 1) is simply not enough to
transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention."). 10
10 Appellant merely alleges "the claimed invention provides a significant
improvement to the function of a firm's processors by providing entities'
processors access via web portal, for example, to internal processing
engines, rules engines, risk engines, and alerting engines to generate risk
warnings, notices and alerts." Br. 15. We note Appellants' arguments are not
17
Appeal2017-002920
Application 13/965,664
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2-8,
14, 15, 18, and 23-30, not argued separately, and which fall therewith. See
Claim Grouping, supra.
CONCLUSION
The Examiner did not err with respect to the patent-ineligible subject
matter of claims 1-8, 14, 15, 18, and 23-30 under 35 U.S.C. § 101, and we
sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-8, 14, 15, 18,
and 23-30.
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
commensurate with the scope of the claims, which do not recite such
limitations.
18