Ex Parte Peterson et al

Patent Trial and Appeal Board

Jan 18, 2018

12397720 (P.T.A.B. Jan. 18, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/397,720 03/04/2009 Erik PETERSON 018360/362729 8733
I45744 7590 01/22/2018
TTPS/Aktnn fr RirH T T P
EXAMINER
Bank of America Plaza CRANFORD, MICHAEL D
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000 ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK PETERSON and NAGESH KADABA
Appeal 2016-002593
Application 12/397,720
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Erik Peterson and Nagesh Kadaba (Appellants2) seek review under
35 U.S.C. § 134 of a non—final rejection of claims 1—21, 23—29, and 31, the
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 6, 2015) and Reply Brief (“Reply Br.,” filed December 31,
2015), and the Examiner’s Answer (“Ans.,” mailed November 3, 2015), and
Non-Final Action (“Non-Final Act.,” mailed December 9, 2014).
2 According to the Appellants, the real party in interest is United Parcel
Service of America, Inc.
Appeal 2016-002593
Application 12/397,720
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of validating the identity of business
entities and individuals engaged in loan transactions. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 15, which is reproduced below (bracketed matter and some
paragraphing added).
15. A method of validating a party’s identity via a processor in
order to facilitate a peer-to-peer loan transaction,
wherein the processor is configured to receive
information and to provide an indication of validity
based on the information to at least one server
for use in assessing the risk of engaging the party
in a loan transaction,
the method comprising:
[1] instructing a driver of a vehicle
from among a fleet of vehicles
to drive the vehicle to an address associated with the
party
as part of a parcel delivery transaction;
[2] receiving information comprising confirmation of the
party’s association with the address and the party’s identity and
providing the information to the processor,
wherein the confirmation is made during the parcel
delivery transaction;
and
[3] determining, via a processor, a validity of the party’s
identity based on the information received;
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[4] providing an indication of the validity of the party’s identity
based on the information to at least one server via a
network,
wherein the at least one server is accessible by a peer-to-
peer lending facilitator via the network.
The Examiner relies upon the following prior art:
McGowan US 2006/0224502 A1 Oct. 5, 2006
Colson US 2008/0086759 A1 Apr. 10, 2008
Pinney US 2009/0012802 A1 Jan. 8, 2009
Claims 1—21, 23—29, and 31 stand rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter.3
Claims 1—21, 23—29, and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pinney, Colson, and McGowan.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice.
3 Examiner states that the Answer contains a new ground of rejection.
Ans. 16. The Examiner does not indicate which rejection is a new ground,
and as Appellants correctly observe, the rejections in the Answer are those in
the Final Action, and Appellants do not treat any rejection as a new ground.
Reply Br. 1—2. Thus, we do not find or treat any rejection as a new ground.
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The issues of obviousness turn primarily on whether the structural
claims are defined by who operates the structure and whether the method
claims recite who operates the structures.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Colson
01. Colson is directed to verifying and authenticating the identity of
network users. Colson para. 1.
02. Colson describes its verification/authentication engine as able
to “dial” to the appropriate verification level to meet an associated
level of risk when the entity’s system queries the
verification/authentication engine with a new user’s information.
In short, the “dial can also be set to query certain data sources,
databases, or information sources, and to ask a certain number of
questions from each database or information source, specific
examples of which are described below. Depending upon the
nature of the risk level assigned, there may be a specific number
of questions that need to be answered correctly in order for a user
to obtain access to a site, or the difficulty of the questions may
vary, depending upon pre-set levels. Colson para. 38.
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03. Colson describes its user being verified and/or authenticated
according to his/her ability to respond to successive queries for
personal information, and the level of match is attained from
comparing the information provided with reliable data sources.
For example, the user may be initially requested to provide a first
level of identification information, such as name, address, driver’s
license or other information that may be commonly carried on the
person. This information is transmitted to the
verification/authentication engine, which carries out a first level
verification and/or authentication on that information by
comparing the degree of match between the user-supplied
information and known data about the user from other sources. At
the completion of this first level verification and/or authentication
process, the verification/authentication engine determines whether
more questions are necessary depending upon the assigned level
of risk. Colson para. 55.
McGowan
04. McGowan is directed to online peer-to-peer banking.
McGowan para. 2.
05. McGowan describes a user entering information into a web
page that is processed elsewhere in a peer-to-peer network for the
purpose of providing identifying and user financial data for a
financial loan. McGowan paras. 6—8.
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Pinney
06. Pinney is directed to letter and parcel delivery. Pinney para. 2.
07. Pinney describes a delivery truck, driver and/or parcel equipped
with a position locating system, such as a GPS locating system, a
cellular or radio position locating system, or other system. In the
event of a missed delivery, the recipient can contact a service and
receive instructions on how to rendezvous with the vehicle and
retrieve the parcel, en route, from the driver. Pinney para. 16.
08. Pinney describes the delivery person normally returning the
parcel to the truck, leaving behind a written notice or other written
indicia informing the recipient of the details regarding the delivery
attempt if the parcel requires a signature and the delivery person
does not make contact with a recipient authorized to sign for the
parcel. Pinney para. 33.
ANALYSIS
Claims 1—21, 23—29, and 31 rejected under 35 U.S.C. § 101 as directed to
non—statutory subject matter
Method claim 15 recites receiving address and identity information, and
using the data to validate the identity. Thus, claim 15 recites receiving and
analyzing data. None of the limitations recite implementation details for any
of these steps, but instead recite functional results to be achieved by any and
all possible means. Data reception and analysis are generic, conventional
data processing operations to the point they are themselves concepts
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awaiting implementation details. The sequence of data reception-analysis is
equally generic and conventional. The ordering of the steps is therefore
ordinary and conventional. The remaining claims merely describe different
parameters used in the verification, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
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,
[] 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. [The Court] 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 ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to validating a party’s identity for facilitating peer-to-peer loan
transactions. Final Act. 3.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 15 recites that it is a method of validating a
party’s identity via a processor in order to facilitate a peer-to-peer loan
transaction. The steps in claim 15 result in validating a party’s identity. The
Specification at paragraph 1 recites that the invention relates to validating
the identity of business entities and individuals engaged in loan transactions.
Thus, all this evidence shows that claim 15 is directed to validating a party’s
identity, i.e., fraud prevention.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of fraud
prevention is a fundamental business practice long prevalent in our system
of commerce. The use of fraud prevention is also a building block of debt
financing. Thus, fraud prevention, like hedging, is an “abstract idea” beyond
the scope of § 101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of fraud prevention at issue here.
Both are squarely within the realm of “abstract ideas” as the Court has used
that term. See Alice at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
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1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, 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 TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 15, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
presentation, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 15 is directed to the abstract idea of retrieving, analyzing,
and presenting data.
The remaining claims merely describe different parameters used in the
verification. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. [] Nor is limiting the use of
an abstract idea “‘to a particular technological environment.’”
[] Stating an abstract idea while adding the words “apply it
with a computer” simply combines those two steps, with the
same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implemen[t]” an
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abstract idea “on ... a computer,” that addition cannot impart
patent eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, [] wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, analyze, and present data amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of fraud prevention as performed by a generic
computer. To be sure, the claims recite doing so by advising one to get
information useful for validating an identity and using that information
somehow for such validation. But this is no more than abstract conceptual
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advice on the parameters for such fraud prevention and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 16 pages of written description
in the Specification do not bulge with disclosure, but only spell out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of validating identity under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of validating identity using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting
§ 101“in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’”
Alice at 2360.
We are not persuaded by Appellants’ argument that the Examiner “fails
to specifically point out factual evidence that supports a finding that Claims
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1—21, 23—29, and 31 are directed to an abstract idea.” App. Br. 4. We find
the record itself provides sufficient substantial evidence supra.
We are not persuaded by Appellants’ argument that the Examiner finds
the claims
do not provide meaningful limitation(s) to transform the
abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amount to significantly more than
the abstract idea itself—without identifying the specific
limitations considered or any support or rationale as to why
these limitations are not enough to quality as “significantly
more.”
App. Br. 4-5.
We find supra sufficient evidence that the claims do not provide such
meaningful limitations. The limitations recite no more than abstract
conceptual advice as to what a computer is to achieve without reciting the
manner of achieving it.
The patents claim systems including menus with particular
features. They do not claim a particular way of programming or
designing the software to create menus that have these features,
but instead merely claim the resulting systems. Id. Essentially,
the claims are directed to certain functionality—here, the ability
to generate menus with certain features. Alternatively, the
claims are not directed to a specific improvement in the way
computers operate.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
We are not persuaded by Appellants’ argument that each of claims 1—21,
23—29, and 31 has not been considered as a whole. App. Br. 5. The
Examiner’s analysis applies to each claim considered as a whole. The
Examiner describes the analysis in summary form. As we find supra, the
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dependent claims only recite further parameters used in the independent
claims and do not add significantly more to the abstract conceptual advice in
those independent claims.
We are not persuaded by Appellants’ argument that claims 1—21, 23—29,
and 31 are not directed to an abstract idea. App. Br. 5—10. We find supra
that the claims are directed to an abstract idea and provide our reasoning for
this finding.
Appellants further contend that the limitations are not routine use of a
computer because the particular data handled is novel. Id. at 10. But data
itself is an abstraction, being a string of binary numbers thought to
metaphorically mean something. “Adding one abstract idea ... to another
abstract idea . . . does not render the claim nonabstract.” RecogniCorp, LLC
v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017), cert, denied,
2018 WL 311386 (2018). The operations of retrieval, analysis, and
presentation performed on the data are trivially routine.
Appellants further contend that the limitations are not pre-emptive. Id.
at 10. That the claims do not pre-empt all forms of the abstraction or may be
limited to the abstract idea in the e-commerce setting do not make them any
less abstract. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-61 (Fed. Cir. 2015).
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Claims 1—21, 23—29, and 31 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pinney, Colson, and McGowan
Claim 1 is an apparatus claim with four recited parts, viz. a fleet of
vehicles, a data terminal, a server, and a network.
As to structural inventions, such claims must be distinguished from the
prior art in terms of structure rather than function, see, e.g., In re Schreiber,
128 F.3d 1473, 1477—78 (Fed. Cir. 1997). In order to satisfy the functional
limitations in an apparatus claim, however, the prior art apparatus as
disclosed must be capable of performing the claimed function. Schreiber,
128 F.3d at 1478. When the functional language is associated with
programming or some other structure required to perform the function, that
programming or structure must be present in order to meet the claim
limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas
Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). In some circumstances
generic structural disclosures may be sufficient to meet the functional
requirements, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d
1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc.,
612 F.3d 1365, 1376-77 (Fed. Cir. 2010)).
No patentable weight is accorded the modifier “carried by one of the
parcel delivery vehicles” therefore because it is, at best, a description of the
use to which the parts are put and does not limit the structure of the parts,
other than the data terminal be small enough to fit in a delivery vehicle.
Also, a structural invention is not distinguished by the work product it
operates upon, such as data in a computer. “[Expressions relating the
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apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim.” Ex parte
Thibault, 164 USPQ 666, 667 (BPAI 1969). Furthermore, “inclusion of the
material or article worked upon by a structure being claimed does not impart
patentability to the claims. ” In re Otto, 312 F.2d 937, 940 (CCPA 1963).
We are not persuaded by Appellants’ argument that “Pinney does not
describe a data terminal carried by an operator that is used to verify the
identity of a recipient or sender of a parcel during a parcel delivery
transaction.” App. Br. 11. Pinney does describe the well-known practice in
a parcel delivery transaction of verifying the recipient identity. This is not in
dispute. It is the use of a data terminal for verification that is at issue. As
the Examiner finds, Colson describes using a data terminal for verification.
Final Act. 5.
As to the contention that the data terminal is carried by an operator,
method claim 15 does not recite such a terminal. Apparatus claim 1 and its
dependent claims are structural and so are met by a description of their
structure. The structure is the same irrespective of who carries it.
We are not persuaded by Appellants’ argument that
Unlike the presently claimed invention, however, data
relating to a party’s identity is not received from an operator of
a parcel delivery vehicle in Colson. The user seeking access to
the system in Colson is the same user being further verified. In
fact, Colson is silent as to parcel delivery activities all together.
In other words, Colson has nothing to do with parcel delivery
activities.
App. Br. 12. Again, in the structural claims, the structure is the same
irrespective of who receives data. As to method claim 15, this claim is silent
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as to who receives the data. Finally, the Examiner applies Pinney to show
the context of parcel delivery, not Colson. Pinney suggests the need for
some form of verification, which Colson provides.
We are not persuaded by Appellants’ argument that
Colson refers to the verification of a new user who is
attempting to gain access to a system (i.e., the new user is
entering login credentials to access a secured application),
which is not the verification of identity as disclosed by
Appellants] in the independent claims.
App. Br. 13. Colson describes a user’s identity being both verified and
authenticated. FF 03.
The remaining claims are argued on the basis of the independent claims.
CONCLUSIONS OF LAW
The rejection of claims 1—21, 23—29, and 31 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
The rejection of claims 1—21, 23—29, and 31 under 35 U.S.C. § 103(a) as
unpatentable over Pinney, Colson, and McGowan is proper.
DECISION
The rejection of claims 1—21, 23—29, and 31 is affirmed.
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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)(l)(iv) (2011).
AFFIRMED
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