Ex Parte Pacher et al

Patent Trial and Appeal Board

Jul 24, 2018

13940818 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/940,818 07/12/2013
21839 7590 07/26/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Frederick Michael Pacher
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.
0076412-000141 5950
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK MICHAEL P ACHER,
ANA PAULA MARTINEZ PRADA PEYSER,
MICHAEL D. MCCARTHY, FLA VIO SHIBAO,
CRAIG ROBERT DINSMORE, and
MARY MARGARET WILLIAMS
Appeal2017-004164
Application 13/940,818
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 3-9, 15, and 17-
23. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to "the calculation of spending limits
taking into account ongoing installment transactions." Spec. ,r 1.
Claim 1 is illustrative:
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Application 13/940,818
1. A method for identifying a spending budget for a payment
account, comprising:
storing, in an account database, a plurality of account data
entries, wherein each account data entry includes data related to
a payment account and includes at least an account identifier and
a base monthly spending limit;
storing, in an installment database, a plurality of
installment data entries, wherein each installment data entry
includes data related to an ongoing installment transaction and
includes at least an account identifier and an installment amount
of the ongoing installment transaction;
identifying, for a specific account data entry in the account
database, at least one installment data entry wherein the account
identifier included in each of the at least one installment data
entry corresponds to the account identifier included in the
specific account data entry;
calculating, by a processing device, an effective monthly
spending limit, wherein the effective monthly spending limit is
based on the base monthly spending limit and the installment
amount included in each of the identified at least one installment
data entry;
associating, in the account database, the calculated
effective monthly spending limit with the specific account data
entry;
receiving, by a receiving device, an authorization request
for a financial transaction, wherein the authorization request
includes at least a transaction amount and the account identifier
included in the specific account data entry;
updating, by the processing device, the authorization
request to indicate if the transaction amount is less than or equal
to the effective monthly spending limit or exceeds the effective
monthly spending limit; and
transmitting, by a transmitting device, the updated
authorization request for approval or denial of the financial
transaction, wherein the authorization request is updated by the
processing device and the updated authorization request
indicates whether the transaction amount is less than or equal to
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the effective monthly spending limit or exceeds the effective
monthly spending limit.
The Examiner rejected claims 1, 3-9, 15 and 17-23 under 35 U.S.C.
§ 101 as directed to ineligible subject matter in the form of an abstract idea.
We AFFIRM.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
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subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
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Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying ceiiain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a sped fie
asserted improvement in computer animation").
ANALYSIS
The Appellants argue all claims together as a group. See Appeal Br.
6-14, Reply Br. 2-7. We select claim 1 as representative. See 37 C.F.R. §
4I.37(c)(l)(iv).
The Examiner finds the claims "are directed to a method for
identifying a spending budget." Answer 2. The Examiner further finds the
claims recite "comparing and formatting information for transmission during
a transaction. This is simply the organization and manipulation of data
which can be performed mentally." Id.
We agree with the Examiner. Claim 1 recites steps that store, or
receive, a budget amount and recurring installment payment amounts for a
billing cycle, calculate a spending limit by subtracting the installment
payment amounts from the budget amount (see Spec. ,r 60), compare a
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received transaction authorization request to the calculated spending limit,
and communicate the result of the comparison. This is nothing more than
data collection, analysis, and display, which is an abstract idea. See Elec.
Power Grp at 1353.
In addition, the steps recited in the claim can be performed mentally
by a person who can receive, remember, and communicate information and
perform simple mathematical functions, except for the requirement that the
calculating and updating of the request be performed by a "processing
device." The claims recite steps of setting spending limits and comparing
expenditures to the remaining limits as they occur, in light of regular
expenditures that were already authorized. This is a basic description of
managing an account to a budget, which is a common practice in our system
of commerce, which can be performed mentally.
We next examine the claim looking for an "inventive concept" or
"something more" that may transform the abstract idea into eligible subject
matter. We begin by focusing on the use of a processing device, which goes
beyond the mental process of data collection, analysis, and display. In
describing the claimed "processing device" (see e.g., Spec. ,r,r 32-34), the
Specification does not define or describe the processing device, except to
say the "processing server 106 may also include a processing unit 204."
Spec. ,r 34. The Specification provides examples of implementations, such
as that "[i]f programmable logic is used, such logic may execute on a
commercially available processing platform." Id. ,r 74.
Because the "processing device" only receives, stores, updates, and
transmits data, and performs simple calculations, the operations of the claim
can be performed on a general purpose computer. In addition, because the
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claim can otherwise be performed by a human, the "processing device"
language is merely an instruction to implement the manual mental process
on a computer. Mental processes, e.g., computing a score, as recited in
claim 1, remain unpatentable even when automated to reduce the burden on
the user of what once could have been done with pen and paper.
CyberSource at 1375 ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson, [ 409 U.S. 63 (1972)].").
Therefore, we find nothing recited in the claim, either as individual
limitations or as an ordered whole, which transforms the abstract idea into
eligible subject matter, through an "inventive concept" or "something more."
We are not persuaded by the Appellants' arguments that the claim is
are not similar to those in Cyberfone or SmartGene, because, according to
the Appellants, the claims recite a "technical solution" (Appeal Br. 8) and
involve "solving a problem which exists entirely within the realm of
electronic transaction processing" (id. 9). The claim is similar to those in
Elec. Power Grp, and can be performed through mental thought, as set forth
above, and, thus, we are unpersuaded that it requires any particular
technology or transaction processing implementation.
We are unpersuaded by the Appellants' argument that "the Examiner
ignores recited features such as the organization of the databases of the
claims, the format of the authorization request, [ and] the manner in which
the authorization request is updated." Appeal Br. 10. We find no specific
language about these topics recited in the claim in such a way that
distinguishes the claim from the abstract idea it is directed to.
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The Appellants also argue the claim is "directed to improvements to a
particular type of computer network" (id. 11 ), and "are directed to solving a
technical problem which exists within electronic transaction systems and
software related thereto," generally citing Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) (id. 12), and, therefore, "are directed to
methods and systems for improving the functioning of an electronic
transaction processing system (id. 13). These arguments are unpersuasive.
First, no particular network is recited in claim 1. The "payment network"
recited in some dependent claims is defined broadly in the Specification as a
"system or network used for the transfer of money via the use of cash-
substitutes." Spec. ,r 22. This, for example, could simply refer to mailing a
check. Second, because the claim represents a mental task directed to be
implemented on a "processor," the claim is not limited to electronic
transaction (processing) systems.
We separately and additionally point out that the claim ends with
transmitting an updated message that "indicates whether the transaction
amount is less than or equal to the effective monthly spending limit or
exceeds the effective monthly spending limit." This indication data,
however, does not appear to be used within the scope of the claim. Our
reviewing court has held that non-functional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
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("[T]he relevant question is whether 'there exists any new and unobvious
functional relationship between the printed matter and the substrate.'")
( citations omitted). The request update appears to amount to no more than
the addition of printed matter.
We are unpersuaded by the Appellants' argument that the claims are
an "improvement to technology ( e.g., electronic transaction processing
systems)," because, as Appellants argue, the claimed method and system
provide their "benefit to a consumer," not to any particular "technology."
This actually works against Appellants, is if it is the budget-conscious
consumer who is provided with benefits surrounding comparing a
transaction to a spending limit, then the "processor" is merely implementing
the functions to receive, store, compare, and transmit data and perform
simple math, which we are unpersuaded is "significantly more.".
The Appellants have failed to show error on the part of the Examiner
in rejecting the claims as directed to abstract ideas. For this reason, we
sustain the rejection of claims 1, 3-9, 15, and 17-23 under 35 U.S.C. § 101.
DECISION
We affirm the rejection of claims 1, 3-9, 15, and 17-23 under
35 U.S.C. § 101.
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
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