Ex Parte Paintin

Patent Trial and Appeal Board

Nov 29, 2018

11863906 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/863,906 09/28/2007
20350 7590 12/03/2018
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.
90945-726914 (009900US) 2528
EXAMINER
OBAID,FATEHM
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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 SCOTT P AINTIN
Appeal2017-008037
Application 11/863 ,906
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 5, 8-10, and 12-33, which
constitute all the claims pending in this application. Claims 1--4, 6, 7, and
Appeal2017-008037
Application 11/863,906
11 have been cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
BACKGROUND
Appellant's invention is directed to providing bill aggregation and/or
payment services. Spec. 1
Claim 5 is illustrative:
5. In a relationship between a bill aggregator and a first
user and a second user, a method of providing bill payment
aggregation services for the first user and the second user, the
method comprising:
receiving, at a host computer operated by or for the bill
aggregator, an identification of a plurality of billing entities for
which bills should be consolidated, the plurality of billing
entities comprising a first billing entity and a second billing
entity;
receiving, at the host computer, a first set of billing
information for the first billing entity, the first set of billing
information comprising a first billing identifier for the first
user;
receiving, at the host computer, a second set of billing
information for the second billing entity, the second set of
billing information comprising a second billing identifier for
the first user;
receiving, at the host computer, a third set of billing
information for the first billing entity, the third set of billing
information comprising a third billing identifier for the second
user;
receiving, at the host computer, a fourth set of billing
information for the second billing entity, the fourth set of
billing information comprising a fourth billing identifier for the
second user;
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Application 11/863,906
determining, at the host computer, a first amount due to
the first billing entity, wherein the first amount due corresponds
to the first billing identifier, and determining the first amount
due to the first billing entity comprises:
receiving an authorization from the first user to receive
notification from the first billing entity;
notifying the first billing entity of the authorization; and
receiving from the first billing entity notification of the
first amount due to the first billing entity, wherein the first
amount due received from the first billing entity comprises a
first estimated amount based at least in part on actual and
anticipated billing;
determining, at the host computer, a second amount due
to the second billing entity, wherein the second amount due
corresponds to the second billing identifier, and determining the
second amount due to the second billing entity comprises:
receiving an authorization from the first user to receive
notification from the second billing entity;
notifying the second billing entity of the authorization;
and
receiving from the second billing entity notification of
the second amount due to the second billing entity, wherein the
second amount due comprises a second estimated amount based
at least in part on a weighted average over a predetermined
period of time or an amount corresponding to a particular
month of the prior year;
determining, at the host computer, a third amount due to
the first billing entity, wherein the third amount due
corresponds to the third billing identifier, and determining the
third amount due to the first billing entity comprises:
receiving an authorization from the second user to
receive notification from the first billing entity;
notifying the first billing entity of the authorization; and
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Application 11/863,906
receiving from the first billing entity notification of the
third amount due to the first billing entity;
determining, at the host computer, a fourth amount due to
the second billing entity, wherein the fourth amount due
corresponds to the fourth billing identifier, and
determining the fourth amount due to the second billing
entity comprises:
receiving an authorization from the second user to
receive notification from the second billing entity;
notifying the second billing entity of the authorization;
and
receiving from the second billing entity notification of
the fourth amount due to the second billing entity;
determining a synchronized due date for the first set of
billing information, the second set of billing information, the
third set of billing information, and the fourth set of billing
information, wherein determining the synchronized due date
comprises a selection from a group consisting of:
determining the synchronized due date based at least in
part on an agreement reached by the host computer system with
at least one of the first billing entity, the second billing entity,
the third billing entity, or the fourth entity;
and
determining the synchronized due date based at least in
part on an earliest due date of either the first billing entity or the
second billing entity;
receiving funds from the first user via a first money
transfer transaction having a first money transfer identifier
associated therewith;
determining, at the host computer, based on the first money
transfer identifier, the funds from the first user are associated
with the first billing identifier and the second billing identifier;
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Application 11/863,906
receiving funds from the second user via a second money
transfer transaction having a second money transfer identifier
associated therewith;
determining, at the host computer, based on the second
money transfer identifier, the funds from the second user are
associated with the third billing identifier and the fourth billing
identifier;
causing, by the host computer, based on the
determination that the funds from the first user are associated
with the first billing identifier and funds from the second user
are associated with the third billing identifier, funds to be
transferred to the first billing entity with a first notification of
how the funds should be allocated between amounts owed by
the first user and the second user to the first billing entity; and
causing, by the host computer, based on the
determination that the funds from the first user are associated
with the second billing identifier and funds from the second
user are associated with the fourth billing identifier, funds to be
transferred to the second billing entity with a second
notification of how the funds should be allocated between
amounts owed by the first user and the second user to the
second billing entity.
Appellant appeals the following rejection:
Claims 5, 8-10, and 12-33 stand rejected under §101 as being
directed to a judicial exception without significantly more.
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
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patentable. E.g.,Alice Corp. Pty. Ltd. v. CLS Bankint'l, 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., 132 S. Ct. 1289, 1296-97
(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
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 Benson, 409 U.S. at 69. On
the patent-eligible side of the spectrum are physical and chemical processes,
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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, Benson, 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. CyberSource
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.").
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 inforrnation, 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 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
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Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
Rejection under 35 USC §101
The Examiner determines that the claims are directed to a series of
steps related to a relationship between a bill aggregator and users and that
this is a fundamental economic practice. Final Act. 2. The Examiner also
determines that the claims are similar to claims determined to be abstract by
the courts in that the claims are directed to abstract ideas such as
(1) obtaining and comparing intangible data and (2) collecting information,
analyzing information and displaying certain results. Ans. 5---6.
We agree with the Examiner that the claims are directed to a
fundamental economic practice and are also directed to collecting, analyzing
and displaying information and, therefore, are directed to an abstract idea.
The Examiner finds that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the claims require no more than a general purpose computer to
perform generic computer functions that are well-understood, routine and
conventional. Final Act. 3. We agree.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the Examiner does not provide evidence for the
contention that the claims are directed to an abstract idea. App. Brief 8.
Appellant's argument is not persuasive at least because there is no
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requirement that an Examiner provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea.
Although evidence may be helpful, e.g., where facts are in dispute, it is not
always needed. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also possible, as nmnerous
cases have recognized, that a § 101 analysis may sometimes be undertaken
without resolving fact issues."). Appellant's bare assertion that evidence is
needed here, without any supporting reasoning as to why evidence is needed
and without stating what facts are in dispute, is insufficient to require the
Examiner to provide evidentiary support.
We are also not persuaded that the Examiner erred because the claims
do not risk tying up the use of an abstract idea and, therefore, pose no risk of
pre-empting others from exploiting the building blocks of human ingenuity.
App. Brief 9. "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all
price optimization or may be lirnited to price optimization in thee-
commerce setting do not make them any less abstract.") .. And,"[ w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Af ayo framework, as they are in this case, preemption concerns are
folly addressed and made moot." Ariosa, 788 F.3d at 1379.
We are lastly not persuaded of error on the part of the Examiner by
Appellant's argument that the conclusion that the claims are directed to an
abstract idea is belied by the fact that the Office Action does not reject the
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claims under 35 U.S.C. §§ 102 and 103. To the extent Appellant maintains
that the limitations of claim 5 necessarily amount to "significantly more"
than an abstract idea because the claimed method is allegedly patentable
over the prior art, Appellant misapprehends the controlling precedent
Although the second step in the Alice/l1,{ayo 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 will sustain the Examiner's rejection of
claim 5 under 35 U.S.C. §101. We will also sustain the Examiner's rejection
of the remaining claims because Appellant has not argued the separate
eligibility of these claims.
DECISION
We affirm the Examiner's§ 101 rejection.
TIME PERIOD
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)(1)(2009).
ORDER
AFFIRMED
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