Ex Parte Paintin

Patent Trial and Appeal Board

Apr 16, 2018

13774583 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131774,583 02/22/2013
20350 7590 04/18/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Scott Paintin
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.
90945-012010US-867369 9280
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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 SCOTT P AINTIN
Appeal2016-006744 1
Application 13/774,5832
Technology Center 3600
Before ANTON W. PETTING, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 22--43. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed
September 23, 2015) and the Examiner's Answer ("Ans.," mailed April
15, 2016), Final Office Action ("Final Act.," mailed March 23, 2015), and
Non-Final Office Action ("Non-Final Act.," mailed September 8, 2014).
2 Appellant identifies "The W estem Union Company" as the real party in
interest (Br. 2).
Appeal2016-006744
Application 13/774,583
CLAIMED INVENTION
Appellant's claims relate generally "to money transfers, and more
particularly, to location-based money transfers" (Spec. i-f 1 ).
Claims 22, 33, and 41 are the independent claims on appeal. Claim
22, reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
22. A method for transferring funds comprising:
[a] receiving at a money transfer system that transmits and
receives data over a network a money transfer request for sending
money from a proposed sender to a receiver that includes a
proposed sender's contact information and a money transfer
amount;
[b] tracking the location of the proposed sender's mobile
device location;
[ c] sending from the money transfer system a notification
of the money transfer request to the proposed sender's mobile
device, wherein the notification of the money transfer request
comprises at least the money transfer amount;
[ d] in the event that the proposed sender's location is
proximate to a certain location, sending a notification to the
proposed sender's mobile device regarding the certain location
where the sender can initiate the money transfer; and
[ e] receiving from the money transfer system an
authorization notification from the proposed sender to proceed
with the money transfer.
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Application 13/774,583
REJECTIONS
Claims 22--43 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 22--43 are rejected on the ground of Non-Statutory Double
Patenting over claims 1-14 of Paintin (US 8,407,121 B2, issued Mar. 26,
2013). 3
ANALYSIS
Non-statutory subject matter
Appellant argues independent claims 22, 33, and 41 as a group. See
Br. 3---6. We select independent claim 22 as representative. Claims 33 and
41 stand or fall with independent claim 22. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting independent claim 22 under 35 U.S.C. § 101, the
Examiner determines that the claim, considered as a whole, is "directed
towards performing a money transfer" (Non-Final Act. 2). More
particularly, the Examiner determines that "[p]erforming a money transfer is
a fundamental economic practice and thus, the claims include an abstract
idea" (id.). The Examiner finds that independent claim 22 does not amount
to significantly more than the abstract idea because the steps are performed
by "the generically recited mobile device and payment processing system"
3 In response to this rejection (see Non-Final Act. 3), Appellant filed a
Terminal Disclaimer on December 8, 2014, however, the Office disapproved
it on December 19, 2014. In the Final Office Action, the Examiner notified
Appellant that "[t]he terminal disclaimer failed to overcome the[] rejection[]
and is made FINAL" (see Final Act. 3). The Examiner's Answer does not
withdraw the rejection (see Ans. 2). Because Appellant has not offered any
response or arguments against the Examiner's pending rejection of claims
22--43 on the ground of non-statutory double patenting, we summarily
sustain this rejection.
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Application 13/774,583
using "well-understood, routine and conventional activities previously
known to the industry" (id.).
Appellant does not dispute the Examiner's determination that the
claims are directed to an abstract idea (see Br. 3---6). Instead, Appellant
argues that the claims are directed to patent-eligible subject matter "at least
because significantly more than the alleged abstract idea is present in these
claims" (id. at 4).
Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In determining whether independent claim 22 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., 132 S. Ct.
1289, 1296-97 (2012)). In accordance with that framework, we first must
determine whether the claim is "directed to" a patent-ineligible abstract idea.
If so, 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. Id. 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.
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Application 13/774,583
Here, we agree with the Examiner that claim 22 is directed to
"performing a money transfer" (Non-Final Act. 2). We also agree with the
Examiner that independent claim 22 is directed to a fundamental economic
practice, which is similar to other claims our reviewing courts have deemed
abstract, such as Alice, 134 S. Ct. at 2356 (using a third party to mitigate
settlement risk), buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (guaranteeing transactions), CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (verifying the
validity of credit card transactions over the Internet), and Smart Systems
Innovation, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1371-72
(Fed. Cir. 2017) (forming and collecting data for financial transactions in a
certain field).
Turning to the second step of the framework, we find unpersuasive
Appellant's arguments that independent claim 22 includes "significantly
more" than an abstract idea to which the claim is allegedly directed (see Br.
3-6).
Appellant first argues that the claims include "significantly more"
than an abstract idea because "[ e Jach of the claims improves other technical
fields beyond 'performing a money transfer' (the alleged abstract idea)" (id.
at 4). More particularly, Appellant alleges that independent claim 22
improves the "personal finance management of both the recipient and
sender" (id. at 5). However, we agree with the Examiner that "the claims do
not include an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment" (Non-Final Act. 2).
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Application 13/774,583
In this regard, we note that there is a fundamental difference between
computer functionality improvements, on the one hand, and uses of existing
computers as tools to perform a particular task, on the other. Here, the
alleged improvements that Appellant refers to, e.g., "[t]he recipient can
request money rather than await a sua sponte transfer by the sender. The
recipient can be assisted by being informed of geographically proximate
locations where such transfers can be initiated" (Br. 5) does not concern an
improvement to computer capabilities, but instead relates to improvements
in marketing and customer service, that simply instruct the practitioner to
implement the abstract idea on a generic computer.
There is no inventive concept or technological advance here that
would support patent eligibility. Claim 22 is not focused on an improvement
to the claimed "money transfer system" or "mobile device." Cf In re TL!
Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016)
(The claims' focus "was not on an improved telephone unit or an improved
server."). And merely limiting the scope of the claims to a particular
technological environment or application, without more, does not change the
outcome. Alice, 134 S. Ct. at 2358.
Appellant next argues that the claims include "significantly more"
than an abstract idea because "[p]articular, non-generic, machines/computers
are necessary to implement the systems and methods of the claims" (Br. 5).
More particularly, Appellant argues that "a server capable of implementing
the systems and methods must be able to communicate digital data with a
multitude of differing financial networks and their associated protocols" and
"[ o ]ff-the-shelf generic computers are not capable of performing such
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functions, much less concurrently during an period of intense heavy
transaction load as may be necessary in such industry" (id.).
However, independent claim 22 merely requires "a money transfer
system that transmits and receives data over a network." There is no
indication in the record that any specialized computer hardware or other
"inventive" computer components are required by the "money transfer
system" of independent claim 22. To the contrary, Appellant's Specification
discloses "a computer system 700 that can perform the methods of the
invention" (Spec. i-f 40) and "can include one or more processors 710,
including, without limitation, one or more general purpose processors and/or
one or more special purpose processors (such as digital signal processing
chips, graphics acceleration, chips, and/or the like)" (id. i-f 41 ). Thus,
independent claim 22 merely employs generic computer components to
perform generic computer functions, which is not enough to transform the
abstract idea into a patent-eligible invention.
Also, considered as an ordered combination, we are unclear as to how
the claimed "money transfer system" or "mobile device" (see Spec. i-f 19)
adds anything that is not already present when the steps of the method are
considered separately. In this regard, Appellant does not adequately show
how the claimed steps are technically performed such that they are not
routine, conventional functions of a generic computer. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) ("Rather, the 'interactive interface' simply describes a generic web
server with attendant software, tasked with providing web pages to and
communicating with the user's computer."). Appellant has not established
that the claimed invention relates to a software-based invention that
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improves the performance of the computer system itself. And it is well-
settled that "merely recit[ing] the abstract idea ... with the requirement to
perform it ... on a set of generic computer components ... would not
contain an inventive concept." See BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
We last are not persuaded by Appellant's argument that because the
"claims do not stand rejected under§ 102 or§ 103," the claims cannot be
"labeled a fundamental economic practice," and thus, something
"significantly more than the alleged abstract idea is present in the claim"
(Br. 5---6). To the extent that Appellant argues that independent claim 22
necessarily contains an "inventive concept" because Appellant's claims
recite particular features which they alleged are not disclosed in the prior art
(id.), Appellant misapprehends the controlling precedent. Although the
second step in the Alice/ Mayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 22, including independent claims 33
and 41, which fall with claim 22.
Appellant also addresses dependent claims 23-32, 34--40, 42, and 43
separately (see Br. 6). Appellant states "the Office Action makes no effort
to analyze these claims and state any grounds for why the recitations of these
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claims do not amount to significantly more than the alleged abstract idea"
(id.).
Appellant's argument is not persuasive at least because Appellant
offers no arguments in support of the patent eligibility of the dependent
claims. As we find, however, that dependent claims 23-32, 34--40, 42, and
43 merely describe further characteristics of the underlying concept and lack
additional elements that would render the claims patent-eligible, we also
sustain the rejection under § 101 of these dependent claims on the same
basis as the independent claims from which they depend. In particular, the
dependent claims merely recite variations of receiving and processing
information related to the abstract idea, as well as determining a sender's
location using well-known techniques, i.e., "information received, either
from the cellular triangulation or GPS location information" (Spec. i-f 20),
which we discern sits squarely within, and does not alter appreciably, the
broader concept of "performing a money transfer" (cf Non-Final Act. 2).
DECISION
The Examiner's rejection of claims 22--43 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 22--43 on the ground of non-
statutory double patenting is summarily 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)(l )(iv).
AFFIRMED
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