Ex Parte McWhinney et al

Patent Trial and Appeal Board

Dec 21, 2018

13462999 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/462,999 05/03/2012 Deborah D. McWhinney
13708 7590 12/21/2018
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-0709 5924
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
12/21/2018 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 DEBORAH D. McWHINNEY, WLIA C. PUKAS,
KEVIN TISSOT, GUY B. SEREFF, CECILIA LEUNG, WLIE MONACO,
DAVID STRONG, and CRAIG HANSEN
Appeal2017-005839
Application 13/462,999
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Deborah D. McWhinney, Julia C. Pukas, Kevin Tissot, Guy B. Sereff,
Cecilia Leung, Julie Monaco, David Strong, and Craig Hansen (Appellants2)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1-10, 16,
1 Our Decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed January 25, 2016) and the Examiner's Answer ("Ans.," mailed October
4, 2016), and Final Office Action ("Final Act.," mailed July 27, 2015).
2 According to Appellants, the real party in interest is Citigroup Technology
Incorporated. Br. 3.
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Application 13/462,999
and 18-20, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way of routing and settling payment
transactions electronically for vendors. Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for routing and settling payment transactions
electronically for multinational vendors in a transnational
business environment, comprising:
[1] receiving, by an integrated payments platform processor of a
financial institution, payment transactions
consisting of both transaction card payment transactions
and non-transaction card payment transactions related to a
plurality of different countries for online purchases by
purchasers from at least one vendor having an account
with the financial institution;
[2] interrogating, by the integrated payments platform processor,
each said payment transaction
to identify each said payment transaction as an internal
type of transaction processed internally by the financial
institution or an external type of transaction processed
other than internally by the financial institution and a
country to which each said external type payment
transaction relates;
[3] interrogating, by the integrated payments platform processor,
each payment transaction identified as an internal type
transaction
to identify each said internal type of transaction as one of
an internal funds transfer transaction and an internal
merchant acquirer transaction;
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[ 4] routing, by the integrated payments platform processor, each
of said internal types of transactions identified as an internal
funds transfer transaction
to an internal funds transfer processor and each of said
internal types of transactions identified as an internal
merchant acquirer transaction to an internal merchant
acquirer processor of the financial institution;
[ 5] crediting, by the internal funds transfer processor, said at least
one vendor's account
with the financial institution and debiting a purchaser's
payment source account with the financial institution for
each of said internal types of transactions identified as an
internal transfer transaction;
[6] crediting, by the internal merchant acquirer processor, said at
least one vendor's account
with the financial institution and debiting a purchaser's
transaction card account with the financial institution for
each of said internal types of transactions identified as an
internal merchant acquirer transaction;
[7] routing, by the integrated payments platform processor, each
of said external types of transactions identified as an external
type of transaction processed other than internally by the
financial institution[],
via a regional transaction processor of the financial
institution, to one of a regional central bank processor for
the country to which the transaction relates, a regional
financial institution partner processor for the country to
which the transaction relates, and a regional card
processing association processor for the country to which
the transaction relates or, via an in-country transaction
processor of the financial institution, to one of an in-
country central bank processor for the country to which
the transaction relates, a local financial institution partner
processor for the country to which the transaction relates,
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and a local card processing association processor for the
country to which the transaction relates.
Claims 1-10, 16, and 18-20 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. 3
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
Claims 1-10, 16, and 18-20 rejected under 35 U.S. C. § 1 OJ as directed to a
judicial exception without significantly more
The Examiner determines that the claims are directed
to the abstract idea of comparing new and stored information and
using rules to identify options. While the claims do not explicitly
recite "comparing new and stored information and using rules to
identify options", the concept of "comparing new and stored
information and using rules to identify options" is described by
the receiving, interrogating, routing, and crediting steps in claim
1.
Final Act. 5.
The Examiner goes on to determine:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
3 Rejections under 35 U.S.C. § 103(a) were withdrawn. Ans. 9.
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exception because the computer as recited is a generic computer
component that performs functions (i.e., receiving, by an
integrated payments platform processor of a financial institution,
payment transactions and interrogating, by the integrated
payment platform processor, each said payment transaction to
identify each said payment transaction). These are generic
computer functions (i.e., receiving, by an integrated payments
platform processor of a financial institution, payment
transactions and interrogating, by the integrated payment
platform processor, each said payment transaction to identify
each said payment transaction) that are well-understood, routine,
and conventional activities previously known to the industry.
The claims also recite interrogating, by the integrated payments
platform processor, each payment transaction identified as an
internal type transaction to identify each said internal type of
transaction as one of an internal funds transfer transaction and an
internal merchant acquirer transaction, which do not add
meaningful limitations to the idea of comparing new and stored
information and using rules to identify options beyond generally
linking the system to a particular technological environment, that
is, implementation via computers. The claims do not amount to
significantly more than the underlying abstract idea of comparing
new and stored information and using rules to identify options.
Final Act. 5---6.
We adopt the Examiner's determinations and analysis from the Final
Office Action at pages 5---6 and the Answer at pages 8-18 and reach similar
legal conclusions.
In particular, we are not persuaded by Appellants' argument that "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."
Br. 10. Method claim 1 recites receiving, interrogating, and routing
transaction data, crediting account data and further routing transaction data.
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Thus, claim 1 recites receiving, analyzing, updating, and transmitting data.
None of the limitations recite implementation details for any of these steps,
but instead recite functional results to be achieved by any and all possible
means.
Data reception, analysis, update, and transmission are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. See Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting
information, analyzing it, and displaying certain results of the collection and
analysis" are "a familiar class of claims 'directed to' a patent ineligible
concept"). See also In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011)
("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). The sequence of
data reception-analysis-update-transmission is equally generic and
conventional or, otherwise, held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring).
As to the criteria data operated upon, "even if a process of collecting and
analyzing information is 'limited to particular content' or a particular
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'source,' that limitation does not make the collection and analysis other than
abstract." SAP Am. Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (internal citation omitted).
We are also not persuaded by Appellants' argument that
Applicants' claims are directed to the internal operation of a
particular physical infrastructure ( an integrated payments
platform), with particular physical components (an integrated
payments platform processor, an internal funds transfer
processor, an internal merchant acquirer processor, a regional
transaction processor, a regional central bank processor, a
regional partner processor, a regional card processor, an in-
country central bank processor, a local partner processor, and a
local card association processor), using specific multiple
different relationships that differ completely from the prior art.
Br. 11-12. The "particular physical infrastructure (an integrated payments
platform), with particular physical components" discussed supra is a
collection of appropriately programmed general purpose processors. 4
"When claims like the Asserted Claims are directed to an abstract idea and
merely require generic computer implementation, they do not move into
section 101 eligibility territory." Smart Systems Innovations, LLC v.
Chicago Transit Authority, 873 F.3d 1364, 1374 (2017) (internal citations,
bracketed alterations, and quotations omitted).
As to "using specific multiple different relationships that differ
completely from the prior art," this is a rejection under 35 U.S.C. § 101
rather than§§ 102 and 103.
4 The Specification describes the computers as any suitable type of
processor-based platform or processor-based device. Spec. para. 48.
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We may assume that the techniques claimed are
"[g]roundbreaking, innovative, or even brilliant," but that
is not enough for eligibility. Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
... (2013); accord buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for
subject-matter eligibility that claimed techniques be
novel and nonobvious in light of prior art, passing muster
under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 ...
(2012); Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new
abstract idea is still an abstract idea. The search for a §
101 inventive concept is thus distinct from demonstrating
§ 102 novelty."); Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for
obviousness) (Symantec). The claims here are ineligible
because their innovation is an innovation in ineligible
subject matter. Their subject is nothing but a series of
mathematical calculations based on selected information
and the presentation of the results of those calculations (in
the plot of a probability distribution function). No matter
how much of an advance in the finance field the claims
recite, the advance lies entirely in the realm of abstract
ideas, with no plausibly alleged innovation in the non-
abstract application realm. An advance of that nature is
ineligible for patenting.
SAP Am. Inc., 898 F.3d at 1163.
We are also not persuaded by Appellants' argument that "[t]aken as a
whole, the claim recitations amount to significantly more than the alleged
abstract idea itself." Br. 1 7. The claims do not recite any technological
implementation, but instead only recite functions to be performed by any
and all means.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
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identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016). As to the remaining arguments, again, we adopt the Examiner's
determinations supra.
CONCLUSIONS OF LAW
The rejection of claims 1-10, 16, and 18-20 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 1-10, 16, and 18-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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