Ex Parte Mohsenzadeh

Patent Trials and Appeals Board

Mar 21, 2019

13440973 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/440,973 04/05/2012 Hossein Mohsenzadeh
127660 7590 03/25/2019
Behmke Innovation Group LLC
One International Place
Suite 1400
Boston, MA 02110
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.
0160007.U 5125
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
patent@bigiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOSSEIN MOHSENZADEH 1
Appeal 2018-001265
Application 13/440,973
Technology Center 3600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 1, 3-9, 11, 13-16, 19-22, 25-34,
36-40, 43, 45-55, and 57-64, all the pending claims in the present
application. Claims 2, 10, 12, 17, 18, 23, 24, 35, 41, 42, 44, and 56 are
canceled (see Claims Appendix). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant names Hossein Mohsenzadeh as the real party in interest
(App. Br. 1 ).
Appeal 2018-001265
Application 13/440,973
The present invention relates generally to automating bill presentment
and payment (see Abstract).
Claim 1 is illustrative:
1. A method for provisioning bill presentment and payment
using an electronic bill presentment and payment (EBPP)
system, the method comprising:
(a) configuring, by a biller provisioning engine
module, the EBPP system, the EBPP system includes:
(i) a computer server having:
( 1) one or more processors,
(2) a routing engine module coupled
to one or more payment processing gateways and
one or more communication interfaces,
(3) one or more storage devices
coupled to the one or more processors, the one or
more storage devices storing a database, wherein
one or more bill presentment and payment
capabilities are stored in the database, and
( 4) one or more modules, including
the biller provisioning engine module, a data
mapping module, and a services module,
implemented by the one or more processors; and
(b) receiving over one or more communication
interfaces one or more instructions from a user interface that is
coupled to the EBPP system;
( c) selecting, by the biller provisioning engine
module, one or more of the stored bill presentment and payment
capabilities based on the received one or more instructions,
wherein selecting comprises accessing configuration parameters
for a channel and routing payment instructions, by the routing
module, to the payment processing gateway based on the
configuration parameters;
( d) loading input bill data, by the data mapping
engine module, wherein the data mapping engine module
reformats the input bill data into an EBPP format;
( e) provisioning, by the biller provisioning engine
module, a biller on the EBPP system based on the selected bill
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Application 13/440,973
presentment and payment capabilities wherein the provisioning
is configured by at least one of the channel, a facilitator, a biller
aggregator, and a biller;
(f) deploying, by the biller provisioning engine
module, a test site to verify the bill presentment and payment
capabilities including making test payments, wherein deploying
the test site includes:
(i) generating a test environment for the
EBPP system; and
(ii) rendering and validating test payment for
the biller;
(g) upon verifying, activating, by the services
module, live operation of the EBPP system to perform the
selected bill presentment and payment capabilities on the
computer server; and
(h) processing payments for the biller through the
one or more payment processing gateways.
Appellant appeals the following rejection: 2
Claims 1, 3-9, 11, 13-16, 19-22, 25-34, 36-40, 43, 45-55, and 57-
643 are rejected under 35 U.S.C. § 101 because the claimed invention is
directed to patent-ineligible subject matter (Non-Final Act. 16-19).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
2 The Non-Final Rejection fails to clearly identify a rejection under
35 U.S.C. § 112 under an appropriate heading (see Non-Final Act. 19). As
such, we shall treat the Non-Final Office Action as only including a rejection
under§ 101.
3 Although the preamble to the rejection only lists claims 1, 3-9, 11, 13-16,
19-22, 25, 40, 43, 45-55, and 57-64, the body of the rejection indicates that
all claims are included (see Non-Final Act. 16-18). Therefore, we shall treat
this rejection as applying to each of the pending claims.
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Appeal 2018-001265
Application 13/440,973
ANALYSIS
Issue: Did the Examiner err in finding that the claims are directed to
patent-ineligible subject matter?
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. E.g.,Alice Corp. v. CLS Bankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with the framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (e.g., Alice, 573 U.S. at 219-20;
Bilski, 561 U.S. at 611); mathematical formulas (e.g., Parker v. Flook, 437
U.S. 584, 594-95 (1978)); and mental processes (e.g., Gottschalk v. Benson,
409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
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elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotations marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely require[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Red. 50 (January 7, 2019) ("Memorandum"). Under that guidance,
we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP §
2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
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See id.
With respect to independent method claim 1, and similarly, system
claims 11, 21, 34, and 59, the Examiner determines, and we agree, that the
claims are at least directed to the abstract idea of "billing presentment"
(Non-Final Act. 4) which is similar to "organization and comparison of
information ... [which] is a mental process that could be performed in the
human mind" (id. at 17-18 ( citing SmartGene; CyberSource)). Specifically,
claim 1 recites, inter alia, "selecting ... bill presentment and payment
capabilities," "loading input bill data," and "processing payments" (see
claim 1 ). These limitations, under their broadest reasonable interpretation,
recite the mental process of selecting a bill and payment type and
completing a payment transaction because all such steps are familiar actions
sales personnel can performed in their heads or using a pen and paper.
Similarly, in SmartGene, the Federal Circuit concluded that claims
reciting methods and systems of selecting a therapeutic treatment regimen
for a patient with a known disease were directed to an abstract idea.
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014) (Nonprecedential). The court concluded the claims at issue were
abstract because the claims did "no more than call on a 'computing device,'
with basic functionality for comparing stored and input data and rules, to do
what doctors do routinely." Id. at 954. The court explained that "every
[ claimed] step is a familiar part of the conscious process that doctors can and
do perform in their heads." Id. at 955. Similarly, we conclude that in the
claimed invention the EBPP system uses a computer server to do what
human billers and human payers do routinely in their heads, i.e., present bills
and collect payments.
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Thus, we agree with the Examiner that method claim 1 is at least
directed to "mental processes," particularly because claim 1 recites the steps
of receiving instructions, selecting one or more stored bill presentment and
payment capabilities based on the instructions, loading bill data,
provisioning a biller, and processing payments, which are mental processes
that can be performed in the human mind. See also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (Noting, in the
context of the claims in that case, that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 10 l.").
The Examiner also determines that the claims are directed to "using
categories to organize, store, and transmit information ( Cyberfone )" (Non-
Final Act. 4), which we conclude are certain methods of organizing human
activity, i.e., managing interactions between people, e.g., a biller and a
payor. Specifically, claim 1 recites, inter alia, "receiving ... instructions
from a user interface," and "provisioning ... a biller" (see claim 1 ). These
limitations, under their broadest reasonable interpretation, recite interactions
between a biller and a payor because these steps are familiar actions between
individuals during a sales transaction.
Similarly, in Cyberfone, the Court held that "using categories to
organize, store, and transmit information is well-established," and "the well-
known concept of categorical data storage, i.e., the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible." Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558
Fed. App'x. 988, 992 (Fed. Cir. 2014).
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Additional cases from the Federal Circuit also have "applied the
'abstract idea' exception to encompass inventions pertaining to methods of
organizing human activity." In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607,613 (Fed. Cir. 2016) (Finding the claimed method of classifying
and storing images in an organized manner was a well-established basic
concept analogous to methods of organizing human activity.); see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1367 (Fed. Cir. 2015) (Finding the claim at issue was directed to the abstract
idea of budgeting, which was "not meaningfully different from the ideas
found to be abstract in other cases before the Supreme Court and our court
involving methods of organizing human activity."); see, e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (Finding claims directed to collecting data,
recognizing certain data within the collected data set, and storing the
recognized data drawn to an abstract idea and noting that "humans have
always performed these functions.").
Appellant challenges the Examiner's aforementioned determinations
on the ground that the present application "is not similar to the facts at issue
in SmartGene" (App. Br. 8) and "'[E]xaminers should avoid relying upon or
citing non-precedential decisions ... unless the facts of the application under
examination uniquely match the facts at issue in the non-precedential
decision"' (id.).
Here, the Examiner followed the requisite Alice analysis and cited
SmartGene, even if non-precedential, as being one of many exemplary cases
in USPTO Guidelines that provide a useful tool for determining patent
eligibility. We recognize that there are differences in the claims, but the
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differences do not distinguish claim 1 from the SmartGene claims for patent
eligibility purposes.
Furthermore, Federal Circuit Rule 32.1 ( d) states: "The court may refer
to a nonprecedential disposition in an opinion or order and may look to a
nonprecedential disposition for guidance or persuasive reasoning .... "
Appellant does not persuasively argue why we, also, may not look to a non-
precedential opinion of the Federal Circuit for guidance or persuasive
reasoning. In view of the above, we do not find persuasive Appellant's
argument that SmartGene (or Cyberfone) is non-precedential and, therefore,
should be avoided.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that the claims are directed to an abstract idea, which we conclude
is at least a mental process and/or method of organizing human activity.
However, for the reasons which follow, we conclude that Appellant's
claims do integrate the judicial exception into a practical application. See
MPEP § 2106.0S(a)-(c), (e)-(h)).
MPEP § 2106.0S(a), entitled "Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field," states, "In
determining patent eligibility, examiners should consider whether the claim
'purport(s) to improve the functioning of the computer itself" or "'any other
technology or technical field."' MPEP § 2106.0S(a).
With respect to improving a technical field, Appellant contends that
the claimed techniques go well beyond simply using a computer
to make traditional decisions, but instead are related to a
specific process which is able to test and verify the bill
presentment and payment capabilities prior to activating them
on the system ... significant and non-routine actions performed
by one or more processors
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(App. Br. 10), "e.g., provide proof of concept functionality" (id.). Appellant
further contends that the claimed invention "is clearly [an] improvement to
... electronic bill present systems" (id. at 12; see also id. at 14), because
Appellant's "claimed invention provides an EBPP system that is self-
provisioning or automated without a need for custom programming and/or
software development" (id. at 16), i.e., "a solution to a technical problem"
(id.). We agree with Appellant.
According to Appellant's Specification, "[w]hen a commercial
enterprise would like to use an electronic billing and payment system, the
enterprise may have a software development team generate a custom
software solution to interface and interact with the accounting systems
utilized by the enterprise" (Spec. 1: 11-13 ), "the developed billing system is
often 'hard coded' or static into a particular billing paradigm" (id. at 1: 16-
17). In the present invention, "the system may be configured by the user or
biller without a need for custom programming and/or software development"
(id. at 2:36-38), and "[o]nce the look and feel is configured, a test payment
site may be implemented via the billing software to enable [test] payments to
be made to, e.g., provide proof of concept functionality" (id. at 2:42-44),
prior to activating the system. In other words, the present invention allows
billers to self-configure a bill presentment and payment website, and test the
same, without the need to design a customized software solution.
Therefore, we find that Appellant's Specification sufficiently explains
how the claimed method enables the automation of bill presentment,
payment reception, and system verification, tasks that previously were "hard
coded" by custom development software. As such, we agree with Appellant
that the claimed invention is an "improvement" to the functioning of
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electronic bill presentment systems (see App. Br. 12) and, thus, "provides a
solution to a technical problem with existing EBPP systems" (id. at 16).
Here, the Examiner merely determines that "the claims do no more
than implement the abstract idea of bill presentment" (Ans. 6), which "is no
more than electronic data processing, which is one of the most basic
functions of a computer ... mere data gathering" (id.). The Examiner then
admits that the claimed invention "may be an improvement to a business
process of bill presentment" (id. at 5), but broadly adds it "does not amount
to a technological solution to a technological problem" (id.), without
adequately explaining why it does not amount to a technical solution.
However, we find that the Examiner's conclusory statement is contrary to
the description in Appellant's Specification, e.g., describing automating the
provision of a bill presentment and payment system and verifying the same
prior to activation, without the need for custom software development.
Therefore, we conclude that Appellant's Specification has adequately shown
an improvement to a technical field, i.e., provisioning a bill presentment and
payment system.
Appellant further contends that they "strongly disagree that this
combination of actions amounts to a 'merely insignificant extra-solution
activity"' (App. Br. 10). See MPEP § 2106.05(g) Insignificant Extra-
Solution Activity. We agree with Appellant.
The prohibition against patenting an abstract idea "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment or adding insignificant post-solution activity."
Bilski, 561 U.S. at 610-11 (citation and internal quotation marks omitted).
Here, the central purpose of the claimed invention is to automate
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development of a bill presentment and payment method, wherein the
deploying of a test site does not constitute "insignificant post-solution
activity" because only upon testing/verification of the bill presentment and
payment capabilities does activation of the presentment method occurs, i.e.,
build and test/verify bill presentment and payment capabilities prior to
activating it. Therefore, we find that the recited "deploying [a] test site" is
not insignificant post-solution activity given that it is integral to activating
the system.
Thus, under Memorandum prong (2), the Examiner has not properly
consider the elements of the claims, both individually and "as an ordered
combination," to determine whether the additional elements integrate the
judicial exception into a practical application.
For at least the above reasons, the Examiner's rejection of claims 1,
3-9, 11, 13-16, 19-22, 25-34, 36-40, 43, 45-55, and 57-64 under
35 U.S.C. § 101 is reversed.
DECISION
We reverse the Examiner's§ 101 rejection.
REVERSED
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