Ex Parte Rekhi et al

Patent Trial and Appeal Board

Jun 29, 2018

13286938 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/286,938 11/01/2011 Gaurav Rekhi
132897 7590 07/03/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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.
P2395.10309US01 1242
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07 /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):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAVRA V REKHI, DONALD JAMES PERCIFUL, and
SCOTT ROBERT SHIPMAN
Appeal 2016-006331 1
Application 13/286,93 82
Technology Center 3600
Before KAL YANK. DESHPANDE, IRVINE. BRANCH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1, 3-11, 13, 15, 16, and 18-22. We
have jurisdiction under § 6(b ). We AFFIRM.
1 Our Decision references Appellants' Specification ("Spec.," filed Nov. 1,
2011), Appeal Brief ("Appeal Br.," filed Nov. 16, 2015), and Reply Brief
("Reply Br.," filed June 8, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed July 13, 2015) and Answer ("Ans.," mailed
Apr. 8, 2016).
2 Appellants identify PayPal, Inc. as the real party in interest. Appeal Br. 2.
Appeal2016-006331
Application 13/286,938
SUBJECT MATTER ON APPEAL
The invention is directed to utilizing student accounts. Spec., Title.
Claims 1 and 18 are the independent claims on appeal. Independent claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
receiving instructions to establish a student account for a
minor from a verified adult that is verified as an adult based on
financial information provided to establish and maintain an adult
payment account that is linked to an adult account of the verified
adult;
verifying, by at least one processor, a legal relationship
between the verified adult and the minor for which the student
account is being established;
based on the verifying of the legal relationship, creating
the student account for the minor that is linked to the adult
account of the verified adult;
transmitting instructions to present a user interface, to the
verified adult, that presents list of one or more websites that have
an agreement with a networked system for the networked system
to provide consent for the minor, the user interface further
including constraint selections for each of the one or more
websites;
receiving, via the user interface, an indication of a selected
website from the list and at least one constraint selection
indicating a customized constraint for transactions engaged at the
selected website; and
creating a consent setting that grants the consent to the
minor to create an account at the selected website in order to
engage in a transaction at the selected website subject to the
customized constraint for the selected website, the receiving of
the indication occurring prior to the minor attempting to create
the account at the selected website, the creating the consent
setting comprising updating a storage device maintaining
account information for the minor;
receiving a request from a server of the selected website
on behalf of the minor to create the account at the selected
website;
2
Appeal2016-006331
Application 13/286,938
determining, from the account information maintained in
the storage device, that minor has the consent setting to create
the account at the selected website; and
transmitting a response verifying consent to create the
account to the selected website, the response causing the server
of the selected website to create the account for the minor.
REJECTION
The Examiner rejects claims 1, 3-11, 13, 15, 16, and 18-22 under
35 U.S.C. § 101 as non-statutory subject matter.
ANALYSIS
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. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
3
Appeal2016-006331
Application 13/286,938
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
Appellants argue the Examiner has not made a prima facie case that
the claims are patent ineligible. Appeal Br. 13-19. More specifically,
Appellants contend the Examiner has not made a prima facie case because:
the Examiner's rejection lacks sufficient evidence (id. at 13-15); the
Examiner fails to consider all of the claim limitations (id. at 15-16); the
Examiner has not shown the alleged abstract idea is similar to at least one
concept a court has held to be an abstract idea (id. at 17); and the Examiner
has failed to consider the dependent claims (id. at 17-19). We disagree with
Appellants.
The Federal Circuit has held that an examiner establishes a prima
facie case by satisfying the notice requirement set forth in 35 U.S.C. § 132.
According to the court,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting § 132). All that is required of the Office is to set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner. Id.
at 1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
("Section 132 is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
4
Appeal2016-006331
Application 13/286,938
Here, in determining that the claims are patent ineligible under
35 U.S.C. § 101, the Examiner analyzes the claims using the Alice two-step
framework. Final Act. 3---6; Ans. 2-7. Pursuant to the first step, the
Examiner determines the claims are directed to the abstract idea of "creating
an authorized financial contract." Ans. 2. According to the Examiner, the
concept of "creating an authorized financial contract" is similar to
fundamental economic practices the courts have held to be abstract ideas,
such as "hedging" in Bilski3 and "mitigating settlement risk" in Alice. Id. at
4--5. The Examiner further determines the concept of "creating an
authorized financial contract" is similar to certain methods of organizing
human activity that are abstract ideas, such as "creating a contractual
relationship" in buySAFE4 and "using advertising as an exchange or
currency" in Ultramercial. 5 Id. at 5.
Under the second step, the Examiner determines that the claims do
not recite significantly more than the abstract idea because the additional
elements, considered alone and in combination, amount to no more than
instructions to implement the abstract idea on a computer. Id. at 2. The
Examiner further determines the additional elements are a generic recitation
of a computer and a computer network performing generic computer
functions. Id. at 5---6 (citing Spec. i-fi-122, 23).
In analyzing the claims, the Examiner refers to the limitations of
independent claim 1 as exemplary. Id. at 4. The Examiner, however,
3 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), aff'd sub nom. Bilski v. Kappas,
130 S. Ct. 3218 (2010).
4 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
5 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
5
Appeal2016-006331
Application 13/286,938
determines that independent claim 18 and the dependent claims are patent
ineligible for the same reasons as independent claim 1. Id. at 6-7.
As such, the Examiner sufficiently informs Appellants that the claims
are ineligible. Furthermore, there is no indication that Appellants do not
recognize or understand the Examiner's rejection, as Appellants'
understanding is manifested in their arguments traversing it. The
Examiner's rejection satisfies the notice requirement of 35 U.S.C. § 132 and
sets forth a prima facie case of patent-ineligible subject matter. We,
therefore, consider Appellants' remaining arguments to determine whether
the Examiner erred in rejecting the claims as patent ineligible. See Ex Parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (explaining that
the Board reviews a rejection for error "based upon the issues identified by
appellant, and in light of the arguments and evidence produced thereon").
Pursuant to the first step of the Alice analysis, .Appellants argue the
Examiner has not considered the actual language of the claims.
Appeal Br. 20. According to Appellants, the claims are not directed to an
abstract idea, but rather to
a specific set of operations for determining, from the account
information maintained in the storage device, whether the minor
has pre-established consent to create an account at an external
website that requires adult consent, and providing a response
verifying consent to create the account to the external website,
whereby the response causes the server of the external website to
create the account for the minor.
Id. at 19. Appellants' argument does not apprise us of error.
In determining whether a claim is directed to excluded subject matter,
e.g., an abstract idea, under the first step of the Alice analysis, the Federal
Circuit has explained that "the 'directed to' inquiry applies a stage-one filter
6
Appeal2016-006331
Application 13/286,938
to claims, considered in light of the specification, based on whether 'their
character as a whole is directed to excluded subject matter.'" Enfish, LLC v.
kficrosoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). For computer-implemented inventions in particular, such
as the present invention, "the first step in the Alice inquiry ... asks whether
the focus of the claims is on the specific asse1i.ed improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Id. at 1335-36.
Here, as Appellants point out, the claims recite steps for determining
whether the minor has consent to create an account that requires adult
consent and, when the minor tries to create an account, sending a response
verifying consent and causing the creation of an account for the minor.
.Appeal Br. 19. As such, the claimed steps result in an authorized financial
account for the minor. Said differently, the claims recite a way to create an
authorized account for the minor.
Similarly, the Specification explains that the invention relates to
utilizing student accounts. Spec. i-f 1. According to the Specification, it is
difficult for minors to perform transactions, i.e., buying or selling items,
accessing information, and posting information, in a networked environment
because legal regulations require parental consent to create accounts. Id. i-f 2.
The Specification further explains that "[t]he student accounts provide a
consent-based solution where minors can have their own accounts on a
networking environment, but their parents or legal guardians (collectively
referred to as "adult" or "adults") are held accountable for the minor's
actions." Id. i-f 16.
7
Appeal2016-006331
Application 13/286,938
The claims further recite a networked environment. For example,
independent claim 1 recites a processor, a user interface, a storage device,
and a server of a selected website. The Specification, however, does not
describe any improvement to the computer components or to the networked
environment. Rather, the Specification describes a network architecture that
enables the use of student accounts (Spec. i-fi-121, 88, 89), which, as set forth
above, provide a consent-based solution to a minor transacting business.
In light of the above, the claimed invention uses the recited computer
infrastructure to perform the steps that create an authorized account for a
minor. The focus of the claimed invention is not on an improvement in
computer capabilities, but rather on enabling a minor to have an account
with the requisite consent. Appellants, therefore, do not apprise us of error
in the Exarniner' s determination that the character of independent c1ai m l, as
a whole, is directed to the abstract idea of "creating an authorized financial
contract."
Appellants also asse1i that the Examiner has not shown how the claim
limitations are similar to other concepts the courts have held to be abstract
ideas. Appeal Br. 20; Reply Br. 2-5. Appellants' argument is not
persuasive of en-or.
As set forth above, Appellants do not apprise us of error in the
Examiner's determination that the claims are directed to ''creating an
authorized financial contract," and we do not see any meaningful distinction
between this concept and similar concepts the courts have held to be abstract
ideas. For example, we agree with the Examiner that the concept of
"creating an authorized financial contract," is similar to the abstract idea of
"intermediated settlement" in Alice because, like using an intermediary for
8
Appeal2016-006331
Application 13/286,938
settlement, seeking authorization to create a financial contract mitigates risk
and is a fundamental economic practice long prevalent in our system of
commerce.
Seeing no error in the Examiner's determination that the claims are
directed to the abstract idea of "creating an authorized financial contract,"
we tum to Appellants' arguments under the second step of the analysis.
Appellants contend that determining whether a claim recites an inventive
concept requires consideration of many factors, and that these factors weigh
in favor the eligibility of the claims. Appeal Br. 22. We have considered
each asserted factor, and, for the following reasons, we agree with the
Examiner that the claims do not amount to significantly more than the
abstract idea.
Appellants argue that the operations recited in the claims are specified
at a low level of generality, rather than a high-level articulation of an
abstract idea. Appeal Br. 23-24. Appellants' argument does not apprise us
of error. As set forth above, the second step of the Alice analysis considers
whether a claim recites an element or combination of elements that
transforms the nature of the claim into a patent-eligible application. Alice,
134 S. Ct. at 2355. Specifying an abstract idea at different levels of
abstraction, i.e. low-level versus high-level of generality, does not transform
the nature of a claim into a patent-eligible application.
Appellants also argue that, like the claims in Diamond v. Diehr,
101 S. Ct. 1048 (1981 ), the present claims solve a technological problem in
conventional industry practice. Appeal Br. 24--25; Reply Br. 5---6.
According to Appellants, the claimed invention alleviates the difficulties
associated with a minor transacting business in a networked environment.
9
Appeal2016-006331
Application 13/286,938
Appeal Br. 24 (citing Spec. i-f 2). The alleged difficulties, however, are not
unique to networked environments. For example, a minor would need
consent to open an account at financial institution whether the institution is a
brick and mortar store or online. Given that the claimed invention does not
solve a problem with networked environments but instead solves a business
problem associated with a minor's ability to make transactions, the claimed
invention does not solve a technological problem.
Appellants further assert the functions of each step of the claims are
not purely conventional because, like the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the actual effect of the
claim limitations is a solution to a problem that exists only in the realm of
computer technology. Appeal Br. 25-29; Reply Br. 6-7. According to
Appellants, "the claims at issue solve a technological problem in
conventional industry practice of creating accounts for minors that require
adult consent in a networked environment (e.g., online or mobile)."
Appeal Br. 28. Appellants also assert that
[t]he concept of determining consent based on stored consent
settings maintained in a networked storage device, and
transmitting a response to the requesting server that provides
verification of that consent in an automatic manner is one that
simply did not exist prior to the rise in prominence of the Internet
and the proliferation of computer technology.
Id. at 28-29. Appellants' arguments are not persuasive of error.
The claimed invention being implemented in a networked
environment does not, in and of itself, mean the claimed invention is
necessarily rooted in computer technology. Rather, as set forth above, the
problem of creating accounts for minors that require adult consent is not an
issue unique to networked environments and is not a technological problem.
10
Appeal2016-006331
Application 13/286,938
For example, an employee of a financial institution could obtain and store
consent settings from a verified adult and provide verification when a minor
attempts to open an account. As such, the claimed invention is not rooted
technology, but instead the generic computer implementation of a business
practice for creating an authorized financial account, which is insufficient
for patent eligibility. See DDR Holdings, 773 F.3d at 1256 ("[T]hese claims
[of prior cases] in substance were directed to nothing more than the
performance of an abstract business practice on the Internet or using a
conventional computer. Such claims are not patent-eligible.").
In addition, Appellants argue the claims include detailed limitations,
and, therefore, do not seek to tie up any judicial exception so that others
cannot practice it. Appeal Br. 29--31. Appellants' argument does not
apprise us of error. Even if the claims do not preempt all uses of the abstract
idea of "creating an authorized financial account," preemption is not the test
for determining whether a claim is patent ineligible. Said differently,
although preemption may be the basis for excluding abstract ideas from
eligible subject matter, preemption is not the test. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability. For this reason, questions on preemption
are inherent in and resolved by the § 101 analysis." (citation omitted)).
Appellants also contend the Final Office Action includes an apparent
contradiction between the Examiner's determination that the claims do not
amount to something more than the abstract idea and the determination that
the claims are patentable over the prior art. Appeal Br. 31-32. We,
however, see no such contradiction.
11
Appeal2016-006331
Application 13/286,938
Although the second step of the patent-eligibility analysis is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or nonobviousness, but rather, a consideration of "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." Alice, 134 S. Ct. at 2355 (quoting Afayo,
132 S. Ct. at 1298, 1297). As suck the question in the second step is not
whether the claimed invention is noveL but rather whether the
implementation of the abstract idea involves "more than perfrnmance of
'well-understood, routine, [and] conventional activities previously known to
the industry. rn Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice,
134 S. Ct. at 2359).
Here, the Examiner determines, and Appellants do not refute, that the
claimed steps can be implemented by computer hardware performing
computer functions that are well-understood, routine, and conventional, such
as receiving, transmitting, and analyzing data. Ans. 5-8 (citing Spec.i-fi-f 22,
23, 85, 86). Consequently, even if the claimed invention is novel and
nonobvious, we nevertheless fail to see how the computer implementation of
the claimed steps requires something other than computer functions that are
well-understood, routine, and conventional, which is insufficient to
transform the claim into a patent-eligible application.
Appellants additionally argue that the dependent claims add
significantly more to the abstract idea. Appeal Br. 18. According to
Appellants, claims 4, 5, 11, 13, 15, 16, and 19-21 recite customized
constraint settings for the selected website and various details of these
12
Appeal2016-006331
Application 13/286,938
constraints. ld. Appellants further assert that claims 7----9 deal with
notifications sent to verified adults based on activities of the minor, and that
claim 10 recites unlinking and converting accounts. ld. Appellants do not
apprise us of error. Defining the customized constraint settings, sending
notifications to the verified adults, and unlinking and converting accounts
further describe the abstract idea and, therefore, do not transform the nature
of the claims to a patent-eligible application.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that the claims are patent ineligible. Accordingly,
we sustain the rejection of claims 1, 3-11, 13, 15, 16, and 18-22 under
35 U.S.C. § 101 as non-statutory subject matter.
DECISION
The Examiner's decision to reject claims 1, 3-11, 13, 15, 16, and 18-
22 is 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
13