Ex Parte Mehew et al

Patent Trial and Appeal Board

Jun 29, 2018

12890296 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/890,296 09/24/2010
20350 7590 07/03/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Evans Mehew
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.
90945-788297 (018400US) 8046
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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 EV ANS MEHEW and KIMBERLY DUNWOODY
Appeal2017-002489
Application 12/890,296
Technology Center 3600
Before ST. JOHN COURTENAY III, LINZY T. McCARTNEY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
6, 8, 9, and 15-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-002489
Application 12/890,296
CLAIMED INVENTION
Claim 1 illustrates the claimed subject matter:
1. A method for providing financial services to a disaster
area, the method comprising:
receiving, by a remote server system, a first record for an
intended financial transaction, wherein the record comprises: a
first set of biographical information of a disaster victim received
from a payor, a first image of the disaster victim's face received
from the payor, and an indication of an amount of funds has been
received from the payor;
storing the first record within a plurality of records for
intended financial transactions;
providing a vehicle outfitted with a computer system,
wherein the computer system comprises: a user terminal, a
camera, and a wireless communication interface m
communication with the remote server system;
receiving, by the user terminal, a second set of
biographical information of the disaster victim;
capturing, by the camera, a second image of the disaster
victim's face;
transmitting, by the computer system, the second set of
biographical information and the second image of the disaster
victim's face to the remote server system via the wireless
communication interface;
comparing, by the remote server system, the second set of
biographical information to the plurality of records for intended
financial transactions to identify the first record as having the
first set of biographical information which matches the second
set of biographical information;
based at least in part on the the first record being identified,
comparing, by the remote server system, the first image of the
disaster victim's face with the second image of the disaster
victim's face;
based on the first image of the disaster victim's face
corresponding to the second image of the disaster victim's face,
2
Appeal2017-002489
Application 12/890,296
sending, by the remote server system, to the computer system, an
indication of an amount of funds to be distributed to the disaster
victim;
based on receipt of the indication of the amount of funds
to be distributed, causing, by the computer system, a locked
container containing cash on the vehicle to be unlocked; and
providing, to the disaster victim, from the locked
container, cash corresponding to the amount of funds to be
distributed.
REJECTION 1
1, 6, 8, 9, 15-17 § 101
DISCUSSION
Appellants do not present separate patentability arguments for the
Examiner's rejection of claims 1, 6, 8, 9, and 15-17 under 35 U.S.C. § 101.
See App. Br. 7-15. As permitted by 37 C.F.R. § 41.37, we select claim 1 as
representative of the claims for this ground of rejection and decide the
appeal for this ground based on claim 1.
Appellants argue the Examiner erroneously found claim 1 directed to
the abstract idea of "providing financial services to a disaster area." App.
Br. 11; Reply Br. 1-2, 3--42. Appellants contend the Examiner
oversimplified claim 1 because, in Appellants' view, claim 1 recites "far
1 The Examiner entered a new ground of rejection for claims 1, 6, 8, 9, and
15-17 under 35 U.S.C. § 101 in the Answer. Ans. 3---6. Because we sustain
the Examiner's original ground of rejection of these claims under§ 101, we
do not address the Examiner's new ground of rejection.
2 The Reply Brief lacks page numbers. We treat the Reply Brief as if it were
sequentially numbered beginning with the page containing the "Status of
Claims" header.
3
Appeal2017-002489
Application 12/890,296
more than routine financial relief in a disaster situation." App. Br. 11.
Appellants argue that even if claim 1 were directed to an abstract idea, claim
1 would still be patent eligible because the claim ( 1) presents no pre-emption
risk, (2) requires specialized computing devices, (3) recites a novel,
nonobvious method, and ( 4) corresponds to claims determined patent
eligible in Diehr, 3 DDR Holdings, 4 and SiRF Tech 5 . App. Br. 11-14; Reply
Br. 4
Appellants have not persuaded us the Examiner erred. Under § 101 of
the Patent Act, "[ w ]hoever 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 therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. "[T]his provision contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. v. CLS Bank Int 'l, 134 S.
Ct. 2347, 2354 (2014). The Supreme Court has set forth the following two-
step test for determining whether a patent claim falls within one of these
exceptions:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. We have described step
two of this analysis as a search for an "'inventive concept"'-
i.e., an element or combination of elements that is "sufficient to
3 Diamond v. Diehr, 450 U.S. 175 (1981).
4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
5 SiRF Tech., Inc. v. Int'! Trade Comm'n, 601F.3d1319 (Fed. Cir. 2010).
4
Appeal2017-002489
Application 12/890,296
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."
Alice, 134 S. Ct. at 2355 (citations omitted) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-79 (2012)).
As required by this test, we first consider whether claim 1 is directed
to an abstract idea. To determine whether a claim is directed to an abstract
idea, "we must look at 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). This often involves "ask[ing] whether the
claim[] [is] directed to an improvement to computer functionality versus
being directed to an abstract idea." In re TL! Commc 'ns LLC Patent Litig.,
823 F.3d 607, 612 (Fed. Cir. 2016).
By its own terms, claim 1 is drawn to providing financial services in a
disaster area by comparing disaster victim data. See App. Br. 17-18.
Although the claimed invention requires, among other things, "a remote
server system" and "a vehicle outfitted with a computer system,"
Appellants' written description makes clear claim 1 is not directed to an
improvement in computer functionality but instead to an abstract idea.
The written description discloses that the recited vehicle (referred to
as a "mobile response vehicle") "may be a car, truck, airplane, helicopter,
boat, ATV, motorcycle, bicycle, etc." Spec. i-f 39. The written description
does not explain in detail how one of ordinary skill in the art would outfit
any of these vehicles with the recited computer system; the written
description simply notes the claimed vehicle "may be equipped with a
computer system." Spec. i-f 38. The written description then discloses that
"[t]o perform the actions of ... the computer system of the mobile response
5
Appeal2017-002489
Application 12/890,296
vehicle ... or any other previously mentioned computing devices, a
computer system as illustrated in FIG. 6 may be used." Spec. i-f 68. The
written description indicates that the "other previously mentioned computing
devices" include "the money transfer system, the various components of the
money transfer system, ... the handheld device," and a remote server. Spec.
i-f 68; see also id. i-f 41 (explaining that "a remote server ... may be part of
money transfer server system 11 O").
Figure 6 and the accompany portion of the written description
describe a generic computer system. Specifically, Figure 6 depicts a block
diagram of computer system 600 that includes boxes labeled "Processor(s),"
"Storage Device(s)," "Input Device(s)," "Output Device(s),"
"Communications Subsystem," and "Working Memory." Spec., Fig. 6. The
accompanying portion of the written description discloses that each of these
elements may consist of generic components. See Spec. i-f 69 (disclosing
processors 610 can include "one or more general purpose processors," input
devices 615 can include "a mouse, a keyboard, and/ or the like," output
devices 620 can include "a display device, a printer, and/or the like"), i-f 70
(storage devices 625 can include "a disk drive"), i-f 71 (communications
subsystem 630 can include, among other things, "a wireless communication
device and/ or chip set" and working memory 63 5 can include "a RAM or
ROM device").
Other parts of the written description also indicate the recited
computer system is generic. For the example, the written description
describes an embodiment of the computer system in largely functional terms,
with little to no technical detail. See Spec. i-fi-1 3 9-41; see also TL!
Commc 'ns, 823 F.3d at 612 (concluding a claim recited an abstract idea
6
Appeal2017-002489
Application 12/890,296
where "the specification fail[ ed] to provide any technical details for the
tangible components, but instead predominately describe[ d] the system and
methods in purely functional terms"). This same section discloses that
elements of the recited computer system may consist of off-the-self
components. Spec. i-f 39 (explaining that user terminals can include
"[ c ]ommerically available tablet computers" such as "an APPLE iP AD"). In
light of these disclosures, claim 1 is not directed to an improvement in
computer functionality. Instead, claim 1 recites using generic technology to
implement the abstract idea of providing financial services in a disaster area
by comparing disaster victim data.
Moreover, we frequently look to prior decisions to determine whether
a claim is directed to an abstract idea. See Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Here, claim 1 recites a
method that essentially collects data about a disaster victim from different
sources, compares that data, and based on that comparison, provides cash to
the victim. See App. Br. 17-18. The Federal Circuit has concluded claims
reciting similar steps are directed to abstract ideas. See, e.g., Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("The
advance [the claims] purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.
They are therefore directed to an abstract idea."). Although claim 1 recites
other steps, such as "providing a vehicle outfitted with a computer system,"
these additional steps merely limit the abstract idea to a particular
environment, which does not transform the abstract idea into a patent-
eligible application of the idea. See TL! Commc'ns, 823 F.3d at 613
7
Appeal2017-002489
Application 12/890,296
("Lastly, although the claims limit the abstract idea to a particular
environment-a mobile telephone system-that does not make the claims
any less abstract for the step 1 analysis.").
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next consider whether claim 1 has an "inventive concept."
It does not. Contrary to Appellants' argument, see App. Br. 13; Reply Br.
3--4, claim 1 does not require specialized devices. As discussed above,
Appellants' written description describes using generic technology to
perform an abstract idea. See, e.g., Spec. i-fi-168-79. And even assuming
Appellants are correct that claim 1 does preempt all uses of the abstract idea,
see App. Br. 12, this fact does not render claim 1 patent eligible. See 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."). As noted
above, simply limiting an abstract idea to a particular environment does not
make the idea any less abstract. See TL! Commc'ns, 823 F.3d at 613.
As for Appellants' argument that claim 1 recites a novel and
nonobvious method and is therefore patent eligible, see App. Br. 11, even
assuming claim 1 is novel and nonobvious, a novel and nonobvious abstract
idea is still patent ineligible. See SAP Am., Inc. v. Investpic, LLC, 890 F .3d
1016, 1018 (Fed. Cir. 2018) ("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."); 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."); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (explaining that a
8
Appeal2017-002489
Application 12/890,296
jury's determination that certain prior art did not anticipate or render obvious
the asserted claims did "not resolve the question of whether the claims
embody an inventive concept at the second step of Mayo/Alice").
Finally, Appellants have not persuaded us that claim 1 is analogous to
the claims at issue in Diehr, DDR Holdings, and SiRF Tech. Appellants
contend claim 1 is similar to the claims discussed in these cases in part
because claim 1 is allegedly directed to "operating an electronic
environment where a host of securities in a client portfolio can be analyzed
and recommended allocations can be performed before a host of tables are
provided with discrete reasons for providing the recommendations" and
"transmission of real-time security data from financial server systems
coupled with the market trading platforms to client computer systems for
display in real time." App. Br. 13, 14. But claim 1 does not recite analyzing
client securities, recommending allocations, or financial server systems
coupled with market trading platforms. See App. Br. 17-18.
Claim 1 recites using generic technology to provide financial services
in a disaster area by comparing disaster victim data. Claim 1 is not directed
to a solution to a "technological problem" as in Diehr. Diehr, 450 U.S. at
177-79; Alice, 134 S. Ct. at 2358 (explaining that the claim at issue in Diehr
"employed a 'well-known' mathematical equation, but it used that equation
in a process designed to solve a technological problem in 'conventional
industry practice"'). Nor does claim 1 recite specific interactions that yield a
result that overrides the routine and conventional sequence of events as in
DDR Holdings. See DDR Holdings, 773 F.3d at 1258. And contrary to
Appellants' argument that claim 1 is similar to the claims at issue in SiRF
Tech because claim 1 requires specialized hardware, Reply Br. 4, as
9
Appeal2017-002489
Application 12/890,296
discussed above, Appellants written description makes clear claim 1 uses
generic computing devices. Moreover, using a "physical machine" does not
impart patent eligibility. See Mayo, 566 U.S. at 84. In Alice, for example,
"[a]ll of the claims [we]re implemented using a computer." 134 S. Ct.
at 2353, 2360.
In sum, the claimed elements, whether considered individually or as a
combination, simply disclose using generic components to perform an
abstract idea. This is not enough to transform the abstract idea into a patent-
eligible application of the idea. "It is well-settled that mere recitation of
concrete, tangible components is insufficient to confer patent eligibility to an
otherwise abstract idea." TL! Commc 'ns, 823 F.3d at 613. For the above
reasons, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 101.
10
Appeal2017-002489
Application 12/890,296
1, 6, 8, 9, 15-17
Summar
CONCLUSION
§ 101 1, 6, 8, 9, 15-17
1, 6, 8, 9, 15-17
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.
§ 41.50(f).
AFFIRMED
11