Ex Parte Mariyal et al

Patent Trial and Appeal Board

Dec 10, 2018

14278567 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/278,567 05/15/2014
826 7590 12/12/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Chandramohan Mariya!
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.
061825/446314 3433
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAND RAMO HAN MARIY AL and KRISHNA MOHAN PAI
Appeal2017-006559
Application 14/278,567
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1--4 and 6-21, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Sept. 1, 2016), Reply Brief ("Reply Br.," filed Mar. 13,
2017), and Specification ("Spec.," filed May 15, 2014), and to the
Examiner's Answer ("Ans.," mailed Jan. 13, 2017) and Final Office Action
("Final Act.," mailed Apr. 5, 2016).
2 According to the Appellants, the real party in interest is Invenger
Technologies Inc. Appeal Br. 2.
Appeal2017-006559
Application 14/278,567
STATEMENT OF THE CASE
The Appellants' invention "relate[ s] generally to insurance coverage
plan management and, more particularly, to a method, apparatus, and
computer program product for obtaining payment authorization for a
coverage request from multiple payees." Spec. ,r 2.
Claims 1, 9, and 15 are the independent claims on appeal. Claim 1
(Appeal Br. 27-28 (Claims App.)) is illustrative of the subject matter on
appeal, and is reproduced below (with added bracketing for reference):
1. A method comprising:
[(a)] receiving, by a request module, a multiple payee
coverage request from a coverage provider to generate a
coverage payment in accordance with a coverage plan, wherein
the multiple payee coverage request is a result of a claim
submitted by a policyholder;
[ (b)] verifying, by the request module, a validity of the
multiple payee coverage request;
[ ( c)] identifying, by the request module, two or more
payees based on the multiple payee coverage request;
[ ( d)] transmitting, by the request module, a request for
transaction data to the identified two or more payees in an
instance in which the validity of the multiple payee coverage
request is verified;
[ ( e)] receiving, by the request module, transaction data
comprising account data from at least one of the two or more
payees;
[(f)] associating, by the request module, the received
transaction data with the multiple payee coverage request;
[ (g)] selecting, by a distribution module in communication
with the request module, a distribution vehicle for each payee of
the two or more payees based on the received transaction data;
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[(h)] receiving by the distribution module, from each
payee of the two or more payees, an authorization to distribute
the coverage payment;
[(i)] receiving, by the distribution module and from a
lender, an authorization to distribute the coverage payment; and
[ U)] causing, by the distribution module, the coverage
payment to be distributed to the two or more payees, wherein a
portion of the coverage payment is distributed to each payee of
the two or more payees according to the respective distribution
vehicles selected for each payee of the two or more payees and
in response to receiving the authorizations from each payee and
from the lender.
REJECTIONS
Claims 1--4 and 6-21 stand rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1--4 and 6-21 stand rejected under pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1--4 and 6-21 stand rejected under pre-AIA 35 U.S.C. § 103 as
being unpatentable over Aquila et al. (US 2002/0035488 Al, pub. Mar. 21,
2002) ("Aquila"), "Lien Holder & Payee Law in Texas," eHow.com,
Oct. 21, 2011 (available at http://web.archive.org, last visited July 8, 2014)
("eHow"), and Doran et al. (US 2012/0143761 Al, pub. June 7, 2012)
("Doran").
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ANALYSIS
35 U.S.C. §JOI-Non-statutory Subject Matter
The Appellants argue the claims as a group. See Appeal Br. 9, 17.
We select claim 1 as representative of the group; claims 2--4 and 6-21 stand
or fall therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
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 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. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (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." Id. (emphasis
added) (citing Mayo, 566 U.S. at 76-79). Ifso, the second step is to
consider the elements of the claims "individually and 'as an ordered
combination'" to determine whether the additional elements "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 78-79).
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The First Step
The step-one analysis requires us to consider the claims "in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). 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.
The question is whether the claim as a whole "focus[ es] on a specific means
or method that improves the relevant technology" or is "directed to a result
or effect that itself is the abstract idea and merely invoke generic processes
and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016). We, therefore, look to "whether the focus of
the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Under the first step of the Mayo/Alice framework, the Examiner looks
to the language of claim 1 and determines that the claim is "directed to
processing coverage payment requests[, which] . . . is a fundamental
economic activity/ an organizing human activity and thus, the claims include
an abstract idea." Final Act. 2; see also Ans. 2-5 (citing to July 2015
Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015)
("2015 July Update"), May 2016 Subject Matter Eligibility Update, 81 Fed.
Reg. 27381 (May 6, 2016) ("2016 May Update"), provided after the mailing
of the Final Action). The Appellants do not state to what they consider the
claim directed. Rather, the Appellants contend that the Examiner's
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characterization of the claim is too broad and is "removed several times
from the language of the claims." Appeal Br. 10; see also id. at 12.
The Specification provides evidence as to what the claimed invention
is directed. Here, the Specification is titled "METHOD, APPARATUS,
AND COMPUTER PROGRAM PRODUCT FOR OBTAINING
COVERAGE REQUEST AUTHORIZATIONS," and the Field of the
Invention section provides that the invention relates particularly to
"obtaining payment authorization for a coverage request from multiple
payees." Spec. ,r 2. The Specification discusses that the problems with
"existing methods and systems for coverage plan management" (Spec. ,r 6)
regarding coverage payments include: (1) "costs incurred by a coverage
provider associated with cutting and mailing a check" (id. ,r 35); (2) when
multiple payees are listed on a check, "the payees must first come to an
agreement about who will deposit the check (e.g., into which account) and
then obtain endorsements on the check from each payee," and "alternative
methods of disbursing the coverage payment, such as by using a prepaid
card or debit card, by electronic direct deposit, etc., which may be preferred
by the payees, are typically unavailable in a multiple payee situation" (id.);
(3) when there is a loss of an insured vehicle, "providers of coverage plans
are generally unable to electronically pay off loans or make electronic
payments to these financial institutions [that issued the loan]" (id. ,r 36), and
( 4) " [ i ]n a mortgage scenario ... [the] processes require time, result in
expensive check printing and distribution costs, limit the payee's distribution
options, and are susceptible to fraud and loss of the check" (id. ,r 37). The
invention solves these problems by "provid[ing] mechanisms for managing
and/or otherwise ascertaining multiple authorizations for a multiple payee
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coverage request to facilitate the distribution of claim funds to payees." Id.
iT 38.
Claim 1 provides for a method comprising the steps of: (a) receiving,
by a request module, multiple payee coverage request data; (b) verifying, by
the request module, a validity of the multiple payee coverage request;
( c) identifying, by the request module, payees based on the coverage request;
( d) conditionally transmitting, by the request module, a request for
transaction data when the coverage request is verified; ( e) receiving, by the
request module, transaction data; (f) associating, by the request module, the
received transaction data with the coverage request; (g) selecting, by a
distribution module, a distribution vehicle for each payee based on the
received transaction data; (h) receiving by the distribution module, from
each payee, an authorization to distribute the coverage payment,
(i) receiving, by the distribution module and from a lender, an authorization
to distribute the coverage payment; and U) causing, by the distribution
module, the coverage payment to be distributed to the payees according to
the selected distribution vehicles and in response to receiving the
authorizations. See Appeal Br. 27-28 (Claims App.). The Specification
defines the term "module" as "includ[ing] hardware, software and/or
firmware configured to perform one or more particular functions," i.e., a
generic computer. Spec. iT 86; see also Fig. 6. There is no further
specification of particular technology for performing the steps.
Although there is no requirement that claim construction must be
performed before a § 101 analysis, in some cases, claim construction can be
desirable and helpful. See Bancorp Servs., LLC. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). Here, the claim
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does not recite details on how, i.e., by what algorithm or technical means,
the verifying, identifying, associating, selecting, or causing steps of
limitations (b), (c), (f), (g), and U) are performed. The Appellants direct
attention to the Specification at paragraph 75 and Figure 4, element 320, for
step (b) of verifying (Appeal Br. 3), which provides for a block to "Verify a
validity of the multiple payee coverage request" (id. Fig. 4, "320") and that
verifying the validity "may be achieved in part by, for example, accessing
coverage provider data" and comparing that with data in the coverage
request (Spec. ,r 75), i.e., accessing and comparing data.
Paragraph 77 and Figure 4, element 340, upon which the Appellants
rely for limitation ( c) of identifying payees (Appeal Br. 3), provide a block
to "Determine two or more payees based on the multiple payee coverage
request" (Spec. Fig. 4, "340") and a module, processor, or database "for
determining two payees based on a multiple payee coverage request," such
as by accessing databases to determine payees who may authorize
distribution of the payment (id. ,r 77). No further details are provided on
how the determination is achieved or in what way the request is used to
determine payees. Similarly, paragraphs 44, 48, 50, 71, 79, and Figures 3, 5,
elements 240, 410, upon which the Appellants rely for limitation (g) of
selecting a distribution vehicle based on the received data (Appeal Br. 4),
provide that such a determination is made, provide examples of such
determinations, and provide that the determination is made based on
transaction data, but do not provide further details on how the determination
or selection is achieved or in what way the data are used to select a vehicle.
The Appellants direct attention to the Specification at paragraphs 78
and 83, Figure 4, element 350, and Figure 7, element 720, for step (f) of
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associating data. Appeal Br. 3--4. Element 350 provides a block to
"associate the transaction data with the multiple payee coverage request"
(Spec. Fig. 4), and element 720 provides a block in a flow chart where
"Payees Authorize and Provide Payment Method Details" (id. Fig. 7).
Paragraph 78 provides that "transaction data may then be associated with the
multiple payee coverage request," and paragraph 83 describes step 720 as
payees authorizing the payment and providing payment details. The
ordinary and customary meaning of "associate" in this context is to connect.
See Merriam Webster online dictionary, available at https://www.merriam-
webster.com/dictionary/associate, last visited Nov. 14, 2018.
For limitation U) of causing a distribution, the Appellants direct
attention to paragraphs 72 and 84 and Figures 3 and 8, elements 250
and 790. Appeal Br. 4. These cited portions provide that payments are
caused to be distributed, that the distribution comprises receiving funds and
transmitting funds, and payments are authorized. But, they do not provide
any details on how the module causes funds to be distributed. At best, the
causing comprises receiving and transmitting funds data.
In light of the Specification's description of the problem and solution,
the purported advance over the prior art by the claimed invention is a way to
process payment requests by distributing authorized payments via a selected
distribution vehicle. This is the heart of the invention and the "character as a
whole" of the claims. See Enfzsh, 822 F.3d at 1335. In that context, the
Examiner's determination that the claims are directed to "processing
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coverage payment requests" (Final Act. 2) is supported. 3 The claims are
akin to the ones our reviewing court has deemed abstract in Smart Systems
Innovation, Inc. v. Chicago Transit Authority, 873 F.3d 1364, 1371-72 (Fed.
Cir. 2017) ("acquiring identification data from a bankcard and funding a
transit ride from one of multiple balances associated with that bankcard" was
directed to the abstract idea of "the collection, storage, and recognition of
data"); Alice, 134 S. Ct. at 2356 (using a third party to mitigate settlement
risk), buySAFE, Inc. v. Google, Inc., 765 F. 3d 1350, 1355 (Fed. Cir. 2014)
(guaranteeing transactions), and Cy her Source Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (verifying the validity of
credit card transactions over the Internet). Here, the claim involves nothing
more than receiving, comparing, determining, transmitting, and selecting
data and distributing funds/data based on the analyses, without any particular
inventive technology- a financial transaction and method of organizing
information that comprises an abstract idea. See Smart Systems, 873 F.3d
at 1372; see also Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016).
As such, we find unpersuasive the Appellants' arguments that "[a]
plain reading of the claims would not lead one to conclude that these claims
are directed to the broad concept of 'processing coverage payment
requests"' ( Appeal Br. 10 ( emphasis omitted), the Examiner oversimplifies
the claim (see id. at 11; see also Reply Br. 2-3), and the Examiner's
3 We note that "[a]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board's "slight revision of its abstract idea analysis
does not impact the patentability analysis." Id. at 1241.
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determination "fails to account for many claim elements recited" (Appeal
Br. 12; see also Reply Br. 2-3). We disagree with the Appellants'
contention that the USPTO' s guidance has been misapplied because "no
basis in the current record that could support the conclusion that 'processing
coverage payment requests' is similar to a concept that has been identified as
abstract by the courts." Appeal Br. 13.
We are also not persuaded by the Appellants' argument that "because
the Final Rejection has failed to compare the identified concept to any
concept previously found to be abstract by a court, the Final Rejection has
not met this minimum threshold set forth by the Patent Office." Id. ( citing
2015 July Update and 2016 May Update). The Examiner compares the
concept to examples provided in the 2015 July Update. Ans. 4. There is no
such requirement that the Examiner must compare the claim to specific
judicial decisions.
To the extent the Appellants argue that the Examiner's rejection is in
error because the Examiner fails to follow Office Guidelines, the Office
Guidelines are "not intended to create any right or benefit, substantive or
procedural, enforceable by any party against the Office." 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74622,
(Dec. 16, 2014) ("2014 Interim Guidelines"). The Appellants' argument that
the Examiner failed to follow Office guidelines is not directed to an
appealable issue. "Failure of Office personnel to follow this Interim
Eligibility Guidance is not, in itself, a proper basis for either an appeal or a
petition." Id. at 7 4619. The Appellants' recourse for addressing such an
alleged impropriety in the examination procedure would be to either
(1) request the Examiner's SPE to exercise supervisory oversight or (2) file a
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petition to the Director to invoke supervisory authority under 37 C.F.R.
§ 1.181(a)(3).
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to an abstract idea.
The Second Step
The second step is to "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 (alteration in
original) (quoting Mayo, 566 U.S. at 72-73). 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. We, therefore, look to whether the claims focus on a specific means
or method that improves the relevant 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, 822 F.3d at 1336.
Under the second step of the Mayo/Alice framework, we find
supported the Examiner's determination that the elements of claim 1 do not
include elements that are sufficient to amount to significantly more than the
abstract idea. See Final Act. 2-3; Ans. 5---6. We are not persuaded of
Examiner error by the Appellants' arguments that assert the opposite. See
Appeal Br. 14--17; Reply Br. 4---6.
We find unpersuasive of Examiner error the Appellants' arguments
that "[b ]ecause the rejection fails to explain what the additional elements are
and then fails to explain why that those additional elements do not amount to
significantly more than 'processing coverage payment requests,' the
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conclusory statements regarding the 'significantly more' analysis are
deficient" (Appeal Br. 14) and that the Examiner fails to consider and
ignores numerous claim elements that "would demonstrate that the claim
recites more than merely 'processing coverage payment requests' itself." Id.
at 16. The Examiner analyzes the claim under the two-step Mayo/Alice
framework, looks to and considers the limitations, and determines that the
claim elements do not amount to significantly more than the abstract idea
because they are not "an improvement to another technology or technical
field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment." Final Act. 2-3; Ans. 3---6. The
Examiner also explains that "the limitations, in the instant claims, are done
by the generically recited processor and computer readable medium." Final
Act. 3. And the Examiner further explains why the limitations do not
amount to significantly more because they "are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry." Id. The Examiner, thus, has notified the Appellants of the
reasons for the rejection in a sufficiently articulate and informative manner
as to meet the notice requirement of 35 U.S.C. § 132. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (all that is required of the Office to meet
the notice requirement of§ 132 is that it sets forth the statutory basis of the
rejection in a sufficiently articulate and informative manner).
We also find unpersuasive the Appellants' argument that "[t]hrough
the combination of unconsidered claim elements, the pending claims recite
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an unconventional way of accomplishing its goals." Appeal Br. 16
( emphasis omitted). The Appellants contend that because the claim provides
a "novel and unobvious" solution to the problem of "making insurance
payments to multiple parties[,] . . . [i]t naturally follows that these claims
recite unconventional ways of achieving its goals and that the combinations
of claim limitations are not well-understood, routine, or conventional." Id.
at 16-17 (citing Internet Patents, 790 F. 3d at 1347.
To the extent the Appellants argue that the claims are significantly
more that an abstract idea because they are not taught by the prior art, an
abstract idea does not transform into an inventive concept just because the
prior art does not disclose or suggest it. See Mayo, 566 U.S. at 91.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Myriad, 569 U.S. at 591. Indeed, "[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); see also Mayo, 566 U.S. at 91
(rejecting "the Government's invitation to substitute§§ 102, 103, and 112
inquiries for the better established inquiry under § 101 ").
Regarding Internet Patents, there the court held that the claimed
invention was directed to "an abstract idea: the idea of retaining information
in the navigation of online forms" with "well-understood, routine, and
conventional activities previously known" and "no restriction on how the
result is accomplished." 790 F.3d at 1348. Similarly, here, the claim recites
steps of receiving and transmitting data, of verifying data by comparing
information, of the results of identifying, associating, and selecting data with
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no restriction or description of how those functions are accomplished, and of
the result of causing a payment to be distributed by, at best, receiving and
transmitting funds. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016).
To the extent the Appellants argue that the claimed functions are not
well-understood, routine, and conventional, we disagree. The claim merely
employs a generic computer (see Spec. ,r,r 39, 40, and Fig. 1) instructed to
perform generic computer functions, without any particular inventive
technology, to implement the abstract idea. See Alice, 134 S. Ct. at 2360.
"When claims like the Asserted Claims are 'directed to an abstract idea' and
'merely requir[e] generic computer implementation,' they 'do[] not move
into section 101 eligibility territory."' Smart Systems, 873 F.3d at 1374
(alterations in original) ( citation omitted). And, receiving, transmitting,
comparing, identifying, associating, and selecting data, are well-understood,
routine, and conventional functions of a generic computer. See id. at 1373-
75; Electric Power, 830 F.3d at 1354--55. The Appellants provide no further
argument such as why the claims' particular arrangement and/or integration
of elements is a technical improvement or is a "non-conventional and non-
generic arrangement of known, conventional pieces." BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016); cf Appeal Br. 16; Reply Br. 5.
To the extent the Appellants argue that claim 1 is significantly more
than the abstract idea because it claims a solution to a problem (Appeal
Br. 16), claim 1 does not claim a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
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1245, 125757 (Fed. Cir. 2015). The problem of "making insurance
payments to multiple parties" (Appeal Br. 16) existed prior to the Internet;
the Appellants acknowledge it is a "historical problem" (id.). And, the
purported solution comprises the use of servers and devices operating in
their normal and ordinary capacities. See Spec. ,r 40; see also supra.
The Appellants further argue that the claim passes the machine or
transformation test, suggesting that the claim is patent-eligible. Appeal
Br. 18-19. "While the Supreme Court has held that the machine-or-
transformation test is not the sole test governing§ 101 analyses, Bilski, 561
U.S. at 604, that test can provide a 'useful clue' in the second step of the
Alice framework" if the claims process "is tied to a particular machine or
apparatus" or "transforms a particular article into a different state or thing."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014).
Here, however, the claim is only tied to a general purpose computer system
with generic computer components. See supra. "That is not enough to find
that the Asserted Claims contain an inventive concept." Ultramercial, 772
F .3d at 716 (holding that a claim does not pass the machine-or-
transformation test if it is "not tied to any particular novel machine or
apparatus, only a general purpose computer");see also Smart Systems,
873 F.3d at 1375.
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to an abstract idea.
Based on the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of claim 1 and of claims 2--4 and 6-21, which fall with
claim 1.
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NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112
Claims 1--4 and 6-21 are rejected under AIA 35 U.S.C. § 112(b)/pre-
AIA 35 U.S.C. § 112, second paragraph.
The text of AIA 35 U.S.C. § 112(b) and pre-AIA 35 U.S.C. § 112,
second paragraph requires "[t]he specification shall conclude with one or
more claims particularly pointing out and distinctly claiming the subject
matter which the [Appellants] regard[] as the invention." "As the statutory
language of 'particular[ity ]' and 'distinct[ ness ]' indicates, claims are
required to be cast in clear - as opposed to ambiguous, vague, indefinite-
terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in
compliance with 35 U.S.C. § 112(b)/second paragraph if "the claims, read in
light of the specification, reasonably apprise those skilled in the art both of
the utilization and scope of the invention, and if the language is as precise as
the subject matter permits." Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v.
Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test
for determining the question of indefiniteness may be formulated as whether
the claims "set out and circumscribe a particular area with a reasonable
degree of precision and particularity." In re Moore, 439 F.2d 1232, 1235
(CCPA 1971). With regard to the reasonableness standard, one must
consider the language in the context of the circumstances. Packard, 751
F.3d at 1313. Language is an imprecise method of drawing boundaries
delineating patent rights, thus unreasonable precision cannot be demanded.
Id. On the other hand, the claims must notify the public of what they are
excluded from making and using. Id. For this reason, while exact precision
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is not required, an applicant is required to use language as precise as the
subject matter reasonably permits. Id.
The subject matter of the claims encompasses a step for receiving
authorizations from each payee, a step for receiving an authorization from a
lender, and a step that causes the payment to be distributed to payees in
response to receiving authorization from each payee and the lender, as
recited in limitations (h), (i), and U) of independent claim 1 and similarly
recited in independent claims 9 and 15. See Appeal Br. 27-28, 30, 33
(Claims App.). This subject matter is indefinite because it can be interpreted
in two different and conflicting ways.
One interpretation of the claims is that the lender is separate from and
not one of the payees. This is viable because the claims have separate
authorization steps for the payees and the lender and require authorization
from both. Otherwise, step (i) of receiving authorization from the lender
would be redundant with step (h) of receiving authorization from each payee
and the requirement to have both authorizations would be unnecessary. For
the rejection under 35 U.S.C § 112(a)/first paragraph, the Examiner
interprets the claims this way. See Final Act. 5. And, the Appellants cite to
paragraph 84 of the Specification as support for this interpretation. See
Appeal Br. 20; Reply Br. 6.
However, dependent claims 2, 3, 10, and 16 each require that at least
one of the payees is a lender. Appeal Br. 28, 30, 33 (Claims App.). Thus,
another viable interpretation is that the lender is not separate from but can be
one of the payees. Otherwise, claims 2, 3, 10, and 16 would be in conflict
with the independent claims. For the rejection under 35 U.S.C § 103(a), the
Examiner interprets the claims this way. See Final Act. 9. And, the
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Specification supports this interpretation in discussing embodiments wherein
the lender is a payee. See Spec. ,r,r 5, 9, 10, 64.
As such, one of ordinary skill in the art would not understand the
metes and bounds of the claimed invention in that one would not understand
whether the lender is separate from and excluded from the payees, or can be
one of the payees.
Therefore, independent claims 1, 9, and 15, and also dependent
claims 2--4, 6-8, 10-14, and 16-21, have ambiguities such that they are
unclear, and are thus indefinite. See Packard, 751 at 1314.
35 U.S. C. § 112 - Written Description
The Appellants contend that the Examiner's rejection is in error
because the Specification provides support for the lender being separate
from and not included as a payee. See Appeal Br. 20; Reply Br. 6. Where
claims do not particularly point out and distinctly claim the invention as
required by the second paragraph of 35 U.S.C. § 112, a rejection of the
claims must be reversed as impermissibly involving speculative assumptions
as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63
(C.C.P.A. 1962).
Because we are unable to determine the metes and bounds of that
limitation, any analysis regarding this rejection would involve considerable
speculation. As such, we are unable to ascertain whether these indefinite
claims recite fail to satisfy the written description requirements under
35 U.S.C. § 112(a)/ first paragraph.
Therefore, the rejection under 35 U.S.C. § 112 of claims 1--4 and 6-21
is not sustained, proforma. We emphasize that this is a technical reversal of
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the rejection under 35 U.S.C. § 112, and not a reversal based upon the merits
of the rejections.
35 U.S. C. § 103 (a) - Obviousness
The Appellants contend that the Examiner does not adequately show
that the prior art discloses receiving an authorization from a lender and
distributing payment based on that authorization, as recited in limitations (i)
and U) of claim 1 and similarly recited in claims 9 and 15. Appeal Br. 21.
Conversely, the Examiner determines that these limitations are met because
Aquila in view eHow teaches a lender as one of the payees and Doran
teaches receiving authorization from each of the payee See Appeal Br. 9;
Ans. 21-23.
Having determined that this subject matter of the claims is indefinite,
we are unable to determine the propriety of the prior art rejection of
claims 1--4 and 6-21. The review of the rejection of these claims under
35 U.S.C. § 103(a) would require considerable speculation as to the scope of
the claims. Such speculation would not be appropriate. In re Steele, 305
F.2d at 862.
We, therefore, reverse proforma the prior art rejection of claims 1--4
and 6-21 under 35 U.S.C. § 103(a). We emphasize that this is a technical
reversal of the rejections under 35 U.S.C. § 103, and not a reversal based
upon the merits of the rejections.
DECISION
The Examiner's rejection of claims 1--4 and 6-21 under 35 U.S.C.
§ 101 is AFFIRMED.
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The Examiner's rejection of claims 1--4 and 6-21 under 35 U.S.C.
§ 112 is REVERSED, proforma.
The Examiner's rejection of claims 1--4 and 6-21 under 35 U.S.C.
§ 103 is REVERSED, proforma.
A NEW GROUND OF REJECTION has been entered for claims 1--4
and 6-21 under AIA 35 U.S.C. § 112(b), pre-AIA 35 U.S.C. § 112, second
paragraph, as indefinite.
In addition to affirming the Examiner's rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
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; 37 C.F.R. § 4I.50(b)
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