13609741 (P.T.A.B. Aug. 22, 2018)

Ex Parte Mascavage et al

Patent Trial and Appeal BoardAug 22, 2018

13609741 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/609,741 09/11/2012 John Joseph Mascavage III 20350 7590 08/24/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 UNITED ST A TES OF AMERICA 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. 90945-851642 (014921US) 8408 EXAMINER BRINDLEY, BENJAMIN S ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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 JOHN JOSEPH MASCA V AGE III, MARGARET MORGAN WEICHERT, and MARK THOMPSON 1 Appeal2017-006810 Application 13/609,741 Technology Center 3600 Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and AARON W. MOORE, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-18 and 20-24. Br. 4--7. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. THE INVENTION Appellants describe the present invention as follows: A method is provided for transferring funds related to a checkout process for a transaction initiated between a user and a merchant. The method may include storing information on a 1 Appellants identify W estem Union Company as the real party in interest. Appeal Brief 2 (filed June 27, 2016) ("Br."). Appeal2017-006810 Application 13/609,741 plurality of asset accounts associated with the user and receiving selection of a first account from the plurality of asset accounts as possible choices. The method may also include receiving authorization via the interface from the user to pay the merchant from the first account. The method may further include providing a digital IOU to the merchant and receiving a redemption request of the digital IOU. The method may additionally include determining, automatically with a funds transfer server, a second account associated with the merchant, and initiating, automatically with the funds transfer server in response to the redemption request, an electronic transfer between the first account and the second account that is related to the checkout process for the transaction. Abstract. Independent claim 1 illustrates the claimed invention: 1. A method for transferring funds related to a checkout process for a transaction initiated online between a user and a merchant, the method comprising steps of: storing, by way of an automated programmed computer, information on a plurality of asset accounts associated with the user, wherein each of the plurality of asset accounts comprises a source of funds; receiving, by way of the automated programmed computer, selection of a first account from the plurality of asset accounts as possible choices; receiving, by way of the automated programmed computer, authorization via the interface from the user over a wide area network to pay the merchant from the first account; providing, by way of the automated programmed computer, a digital IOU to the merchant; receiving, by way of the automated programmed computer, a redemption request of the digital IOU; determining, by way of the automated programmed computer, a second account associated with the merchant; and 2 Appeal2017-006810 Application 13/609,741 initiating, by way of the automated programmed computer, in response to the redemption request, an electronic transfer between the first account and a third account, and between the third account and the second account that is related to the checkout process for the transaction. THE REJECTION Claims 1-18 and 20-24 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 2. 2 The Examiner finds that the claims are directed to an abstract idea entailing transferring funds related to a checkout process. Id. at 3. The Examiner further determines that the additional elements, considered alone and as an ordered combination, constitute no more than mere instructions to implement the abstract idea on a computer. Id. According to the Examiner, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent-eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Id. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential). 2 Rather than repeat the Examiner's positions and Appellants' arguments in their entirety, we refer to the above-mentioned Appeal Brief, as well as the following documents for their respective details: the Final Action mailed January 25, 2016 ("Final Act.") and the Examiner's Answer mailed November 29, 2016 ("Ans."). 3 Appeal2017-006810 Application 13/609,741 Regarding the question of patent eligibility under 35 U.S.C. Â§ 101, the Supreme Court has set forth an analytical "framework 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. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine whether the claim at issue is "directed to" a judicial exception, such as an abstract idea. Id. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claim is determined to be directed to an abstract idea, then we consider under step two whether the claim contains an "inventive concept" sufficient to "transform the nature of the claim into a patent- eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation omitted). In considering whether a claim is directed to an abstract idea, we acknowledge, as did the Supreme Court, 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 claim focuses on a specific means or method that improves the relevant technology or is instead directed to a result or effect that, itself, is the abstract idea and merely invokes generic processes and machinery. See Enfish, 822 F.3d at 1336. If the claim is directed to an abstract idea, we then must consider whether the claim contains an element or a combination of elements that is sufficient to transform the nature of the claim into a patent-eligible 4 Appeal2017-006810 Application 13/609,741 application. Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 714 (Fed. Cir. 2014); Alice, 134 S. Ct. at 2355. In applying step two of the Alice analysis, we must "determine whether the claim[] do[es] significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patentable subject matter. We look to see whether there are any "additional features" in the claim[] that constitute an "inventive concept," thereby rendering the claim[] eligible for patenting even if [it is] directed to an abstract idea. Those "additional features" must be more than "well-understood, routine, conventional activity." Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017) ( citations omitted). A claim that "merely require[ s] generic computer implementation[] fail[s] to transform [an] abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2357. CONTENTIONS AND ANALYSIS Appellants argue the Final Action does not support a conclusion that the claims are directed to an abstract idea because the conclusion is unsupported by evidence. Br. 5. More specifically, Appellants allege that the "[Final] Action cites no references whatsoever to justify its position that the alleged abstract idea here is a 'long prevalent' and 'longstanding' fundamental economic practice or method of organizing human activity." Id. This argument is unpersuasive because the Examiner does cite case law to support the determination. Final Act. 4 ( citing Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011); Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 5 Appeal2017-006810 Application 13/609,741 F.3d 1344 (Fed. Cir. 2014); Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014)). In the Answer, the Examiner additionally cites buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). Ans. 4. Furthermore, Appellants provide no persuasive rebuttal regarding these cases. See generally Br. Appellants next argue that even if the claims were found to be directed to an abstract idea, the claims add significantly more than an abstract idea because the claims do not tie up the use of the underlying abstract idea or "pose a risk of pre-empting others from exploiting these 'building blocks' of human ingenuity." Id. at 6. This argument is unpersuasive. To be sure, the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." See Alice Corp., 134 S. Ct. at 2354. However, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As our reviewing court has explained: "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 theÂ§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ( citing Alice Corp., 134 S. Ct. at 2354). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Appellants additionally argue that the Office Action's determination that the claims don't add anything more to the abstract idea itself is merely 6 Appeal2017-006810 Application 13/609,741 conclusory. Br. 6. This argument is unpersuasive. The Examiner supports the conclusion with rationales for why the additional elements that carry out the abstract idea are merely components of generic computer systems. Final Act. 5-6. Moreover, Appellants do not present persuasive arguments for why the Examiner's determinations are erroneous. See Br. Appellants argue that the fact the Examiner does not reject the claims under either 35 U.S.C. Â§Â§ 102 or 103 evidences that the claims are directed to more than an abstract idea that is implemented in a standard non-inventive fashion. Br. 6. This argument is unpersuasive. "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 theÂ§ 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). Anovelandnonobviousclaimdirectedtoa purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. Appellants lastly argue that "the blanket rejection of all claims without analysis of each claim under the Alice test is improper, as ' [ e ]very claim must be examined individually, based on the particular elements recited therein, and should not be judged to automatically stand or fall with similar claims in an application." Br. 7 ( emphasis omitted) ( citing the 2014 Interim Guidance on Patent Subject Matter Eligibility, available at https://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf). This argument is unpersuasive of reversible error because the recourse for addressing such an alleged deficiency of the rejection is for Appellants to file a petition to the Director under 37 C.F .R. Â§ 1.181. It is not an appealable matter. 7 Appeal2017-006810 Application 13/609,741 DECISION The Examiner's decision rejecting claims 1-18 and 20-24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8