Ex Parte SHARMA

Patent Trial and Appeal Board

Dec 11, 2018

13963781 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/963,781 08/09/2013
96592 7590 12/13/2018
FIS/FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK A VENUE
WASHINGTON, DC 20001-4413
FIRST NAMED INVENTOR
Dushyant SHARMA
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.
l 1360.0184-02000 4082
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
jeffrey.berkowitz@finnegan.com
regional-desk@finnegan.com
michael. wrobel@fisglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUSHY ANT SHARMA
Appeal2017-010420 1
Application 13/963,781 2
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, 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 23-38. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
April 6, 2017) and Reply Brief ("Reply Br.," filed November 15, 2018), and
the Examiner's Answer ("Ans.," mailed June 2, 2017) and Final Office
Action ("Final Act.," mailed November 4, 2016).
2 Appellant identifies Metavante Corporation as the real party in interest.
App. Br. 3.
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CLAIMED INVENTION
Appellant describes that the claimed invention "relates generally to
electronic commerce," and more particularly to "methods and systems for
integrating electronic bill presentment and payment among billers,
consumers, banks and other financial institutions, electronic payment
facilitators, and web portals and other spaces able to support an interface for
presentment and/or payment of bills" (Spec. 1, 11. 3-7).
Claims 23 and 31 are the independent claims on appeal. Claim 23,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
23. A method for delivering electronic bills, the method
compnsmg:
[ (a)] authenticating a biller usmg a merchant
identification number;
[(b )] displaying on a device, connectable to a
communications network, a list of accounts associated with
clients that desire to receive electronic bills;
[ ( c)] enabling the biller to add information in a new
account for an additional client that desires to receive electronic
bills, wherein the information includes an attribute associated
with one of several groups of clients; and
[( d)] delivering electronic bills to a group of clients
substantially at a same time based on the biller added
information.
REJECTION
Claims 23-38 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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ANALYSIS
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. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
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(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting independent claim 23 under§ 101, the Examiner
determined that the claim is directed to "[ m ]anaging the delivery of e-bills to
a group of clients," which the Examiner concluded is a method of organizing
human activity and, therefore, an abstract idea (Final Act. 2-3). The
Examiner also determined that the claim does not include additional
elements or a combination of elements sufficient to ensure that the claims
amount to significantly more than the abstract idea itself (id. at 3). More
particularly, the Examiner determined that the only element in claim 23,
beyond the abstract idea, is the processor configured to execute the delivery
of e-bills to clients - a generic computer component that performs no more
than generic computer functions (id.). The Examiner explained that the
analysis with respect to independent claim 23 also applies to independent
claim 31, and that the dependent claims do not resolve the issues raised with
respect to the independent claims (id.).
Appellant argues that the§ 101 rejection cannot be sustained because
it is "conclusory, lacks sufficient analysis, and is deficient in view of the
May 2016 Memorandum"3 (App. Br. 5; see also Reply Br. 4--5). In fact, the
Examiner provided a reasoned analysis ( consistent with the USPTO
guidance in effect at the time the rejection was made) that identifies the
judicial exception recited in the claims, i.e., an abstract idea, and explains
3 USPTO's May 4, 2016 Memorandum to Patent Examining Corps,
Formulating a Subject Matter Eligibility Rejection and Evaluating the
Applicant's Response to a Subject Matter Eligibility Rejection ("May 2016
Guidance"), available at https://www.uspto.gov/sites/default/files/
documents/ieg-may-2016-memo.pdf.
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why it is considered a judicial exception, and also explains why the
additional elements in the claim do not amount to significantly more than the
identified judicial exception (Final Act. 2-3).
The Federal Circuit has held repeatedly that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, "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)
(alteration in original). Thus, what is required of the Office is that it sets
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id.; 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.");
USPTO's "July 2015 Update: Subject Matter Eligibility"4 6 (setting forth a
general notice requirement to establish a prima facie rejection under
35 U.S.C. § 101); May 2016 Guidance 2 ("[T]he rejection ... must provide
an explanation ... which [is] sufficiently clear and specific to provide
applicant sufficient notice of the reasons for ineligibility and enable the
applicant to effectively respond.") ( emphasis added).
Here, the Examiner set forth the statutory basis of the rejection in a
sufficiently articulate and informative manner so as to meet the notice
requirement of§ 132. And we find that, in doing so, the Examiner set forth
4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
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a proper rejection under§ 101. Appellant cannot reasonably maintain either
that the rejection was not understood or that the Examiner otherwise failed
to comply with the notice requirement of§ 132.
We also are not persuaded of Examiner error by Appellant's argument
that claims 23 and 31 recite a specific technological solution for delivering
electronic bills, i.e., delivering electronic bills to a group of clients
substantially at the same time based on biller added information, and like the
hypothetical claims of Example 1 in the US PTO' s "Examples: Abstract
Ideas" ("Examples"), are inextricably tied to computer technology (App.
Br. 7). 5 In Example 1, as Appellant acknowledges, the claimed invention
relates to isolating and removing malicious code from electronic messages to
prevent a computer from being compromised (id.). The USPTO determined
that the claims in Example 1 are patent-eligible because the claimed
invention "is directed towards performing isolation and eradication of
computer viruses, worms, and other malicious code, a concept inextricably
tied to computer technology." Examples, p. 3. We fail to see how, and
Appellant does not adequately explain how, the present claims involve any
comparable feature( s ).
Further pointing to the claim in Example 2, which is based on a claim
found patent-eligible by the Federal Circuit in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellant argues that the
present claims are patent-eligible because the claims, like the claim of
Example 2, "address a business challenge that is well rooted in computer
technology, and has no analogue in the 'pre-Internet world"' (App. Br. 8).
5 Available at http://ptoweb.uspto.gov/patents/exTrain/documents/abstract-
idea-examples-published. pdf#search = Examples%20Abstract%20ideas.
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But, the court did not conclude in DDR Holdings that the claims were
patent-eligible merely because the claims did not recite the performance of a
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the Federal Circuit held
that the claims were directed to statutory subject matter because they
claimed a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
and effected a change to the routine, conventional functioning of Internet
hyperlink protocol. DDR Holdings, 773 F.3d at 1257.
Appellant asserts here that the Specification identifies two problems
in electronic bill presentment and payment ("EBPP") systems that relate to
the business challenge of scaling distribution of electronic bills, i.e., (1) from
the customer end, the inability of customers to connect with every biller
which whom they interact without having to go to each biller's website to
get their bill and pay it; and (2) from the billers' viewpoint, the need to send
bill out at different times for a variety of reasons, including the date of
account origination (App. Br. 9). And Appellant argues that the present
claims "address these problems in EBPP systems by simultaneously
delivering electronic bills to a large number of users associated with a
common attribute," i.e., by "enabling the biller to add information in a new
account ... wherein the information includes an attribute associated with
one of several groups of clients" and "delivering electronic bills to a group
of clients substantially at a same time based on the biller added
information," as recited in claim 23, and similarly recited in claim 31 (id.).
Appellant maintains that this is "a technical solution that is relevant
only in computerized billing systems" and that "Appellant's claims, like that
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of Example 2, are not directed to an abstract idea" (id.). Yet, as the court
cautioned in DDR Holdings, "not all claims purporting to address Internet-
centric challenges are eligible for patent." DDR Holdings, 773 F.3d at 1258.
Thus, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014),
although the patentee argued that its claims were "directed to a specific
method of advertising and content distribution that was previously unknown
and never employed on the Internet before," 772 F.3d at 714, the court found
that this alone could not render the claims patent-eligible where the claims
merely recited the abstract idea of "offering media content in exchange for
viewing an advertisement," along with "routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet." Id. at 715-716.
Similarly here, we find that the invocation of a communications
network is not sufficient to transform Appellant's otherwise patent-ineligible
abstract idea into patent-eligible subject matter. That the bills are in
electronic form, as opposed to paper bills, also merely limits the use of the
abstract idea to a particular technological environment, which the Court
made clear in Alice is insufficient to transform an otherwise patent-ineligible
abstract idea into patent-eligible subject matter. See Alice Corp., 134 S. Ct.
at 2358. Unlike the situation in DDR Holdings, there is, moreover, no
indication here that a computer network, or the Internet, in particular, is used
other than in its normal, expected, and routine manner, e.g., for receiving
and transmitting information.
The relevant inquiry is not whether there is a business challenge
resolved by the claimed invention but whether the challenge is one rooted in
technology, or one where the proposed solution is merely using computers
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as a tool. See Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327, 1335-36
(Fed. Cir. 2016). We are not persuaded that simultaneously delivering
electronic bills to a large number of users associated with a common
attribute is a technological improvement in computerized billing systems as
opposed to an alleged improvement to a business practice, i.e., delivering
electronic bills, in which a computer is used as a tool in its ordinary
capacity.
Claim 23, for example, recites four steps for delivering electronic
bills, i.e., (1) authenticating a biller using a merchant identification number;
(2) displaying a list of accounts associated with clients that desire to receive
electronic bills; (3) enabling the biller to add information in a new account
for an additional client that desires to receive electronic bills, including an
attribute associated with one of several groups of clients; and (4) delivering
electronic bills to a group of clients substantially at a same time based on the
biller added information. Appellant's Specification describes that the
claimed invention enables billers to add, modify, or delete consumer
accounts, and that the attribute field can be used "to define groups of
consumer accounts and to simplify bill generation and delivery" (see
Spec. 15; see also id. 15-16 ("Billers 12 and/or 14 may use consumer groups
to define and generate bills without the need for repetition. For example,
when creating a list of consumer accounts, a biller 12 and/or 14 may assign a
specific zip code attribute to a group of accounts, which would enable the
biller 12 and/or 14 to generate and deliver all bills of the specific zip rode at
the same time."). Considered in light of the Specification, it clearly appears
that the focus of the claimed invention is on addressing a business need, i.e.,
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simplifying electronic bill generation and delivery, and not on any claimed
specific means for accomplishing this goal that improves technology.
Contrary to Appellant's assertion, we also are not persuaded that there
is any parallel between the present claims and those at issue in Trading
Technologies Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017)
(App. Br. 9-10). There, the Federal Circuit affirmed the district court's
holding that the patented claims (which recited a method and system for
displaying market information on a graphical user interface) were not
directed to an abstract idea because the district court found, and the Federal
Circuit agreed, that the challenged patents did not simply claim displaying
information on a graphical user interface; instead, the claims required "a
specific, structured graphical user interface paired with a prescribed
functionality directly related to the graphical user interface's structure that is
addressed to and resolves a specifically identified problem in the prior state
of the art." Id. at 1004. 6 The Federal Circuit, thus, found that the district
court's ruling was in accord with precedent that has recognized that "specific
technologic modifications to solve a problem or improve the functioning of a
6 Specifically, the district court found that with prior art GUis, the best bid
and best ask prices changed based on updates received from the market;
therefore, there was a risk with these GUis that a trader would miss her
intended price as a result of prices changing from under her pointer at the
time she clicked on the price cell on the GUI. The patents-in-suit provided a
system and method whereby traders could place orders at a particular,
identified price level, not necessarily the highest bid or the lowest ask price
by keeping the prices static in position, and allowing the quantities at each
price to change. Trading Techs. Int'!, Inc. v. CQG, Inc., No. 05-cv-4811,
2015 WL 774655 *4 (N.D. Ill. Feb. 24, 2015).
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known system generally produce patent-eligible subject matter." Id.
at 1004---05.
Appellant asserts here that the claimed graphical user interface
method recited in claim 23 is directed to a specific implementation of a
solution to a problem in EBPP systems (App. Br. 10). But, unlike the
situation in Trading Technologies, Appellant does not identify any problem
with prior art user interfaces that the present interface was specifically
designed to resolve.
Graphical user interfaces ("GUis") are a standard and common
method for users to enter and view information on a computer network. We
find no indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in claim 1, for example, require any
inventive or specialized graphic interface or that the claimed invention
involves any more than the use of a generic GUI for entering and displaying
client billing information.
The present claims, in our view, are like those claims that the district
court in Trading Technologies distinguished as patent-ineligible. They
simply call for entering data and displaying certain information, e.g., a list of
accounts associated with clients that desire to receive electronic bills. See
Trading Techs., 2015 WL 774655 at *4 ("If the claims simply provided for
'setting, displaying, and selecting' data information, CQG would be correct
in its assessment that the claims are directed to an abstract idea").
Appellant's further argument that none of the claims threatens to
monopolize or preempt the abstract idea of "managing the delivery of e-bills
to a group of clients" is also not persuasive of Examiner error (App. Br. 11 ).
There is no dispute that the Supreme Court has described "the concern that
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drives [the exclusion of abstract ideas from patent eligible subject matter] as
one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[ fJor this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
( citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
Turning to step two of the Mayo/Alice framework, Appellant argues
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claims amount to "significantly
more" than an abstract idea (App. Br. 11-12; see also Reply Br. 5---6). Yet,
to the extent Appellant maintains that the claimed invention is patent-
eligible, i.e., that the claims amount to "significantly more" than an abstract
idea, because the claims are allegedly novel and/or non-obvious in view of
the prior art, 7 Appellant misapprehends the controlling precedent.
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice framework is
7 See, e.g., App. Br. 12 ("These meaningful limitations [i.e., limitations (a)
through ( d), as recited in claim 23] amount to significantly more than
delivery of electronic bills, because at the time the invention was made
(January 13, 2000)[,] they provide[d] a novel and nonobvious way to deliver
electronic bills to a group of clients substantially at a same time.").
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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 Corp., 134 S. Ct. at 2355. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90;
see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter.").
Finally, Appellant ostensibly argues that the rejection cannot be
sustained, and that the Examiner has failed to establish a prima facie case of
patent-ineligibility, because the Office Action does not address each of the
dependent claims individually (App. Br. 12-13). That argument is not
persuasive.
There is no dispute that USPTO guidance directs examiners to
examine each claim individually. But, consideration of each claim
individually does not require a separate written analysis for each individual
claim. Also, as described above, the Examiner set forth the statutory basis
of the § 101 rejection in a sufficiently articulate and informative manner as
to meet the notice requirement of§ 132, and, in doing so, the Examiner set
forth a prima facie case of patent-ineligibility.
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Responding in the Reply Brief, Appellant argues that the § 101
rejection should be reversed because the Examiner's Answer fails to comply
with the requirements of Manual of Examining Procedure ("MPEP")
§ 1207 .02, i.e., that the Examiner did not use headings paralleling the
headings used in Appellant's Appeal Brief and failed to address the content
of Appellant's arguments (Reply Br. 2-3). Insofar as these alleged
deficiencies exist in the Answer, and insofar as these alleged deficiencies
could be remedied by remanding the application to the Examiner to provide
an Answer in perfect compliance with MPEP § 1207.02, in the interest of
administrative efficiency and fairness to Appellant, we have entered a
decision on the merits of this appeal.
Further acceding to what Appellant characterizes as an assertion by
the Examiner in the Answer that Appellant has the initial burden of
identifying limitations in the dependent claims that amount to significantly
more than the alleged abstract idea, Appellant asserts in the Reply Brief that
the following recitations amount to significantly more than the alleged
abstract idea:
• wherein authenticating the biller includes automatically
accessing a credit report supplied by a credit verifier;
• wherein authenticating the hiller includes automatically
accessing a credit report supplied by a credit verifier;
• wherein the attribute is a zip code and wherein delivering
electronic bill includes delivering a plurality of electronic bills
associated with a specific zip code substantially at the same time;
• wherein the at least one processor is further configured to enable
the biller to define a presentation of the electronic bills; and
• wherein the at least one processor is further configured to enable
the biller to select a bill generation criteria, to set up multiple
groups of clients based on predefined rules, or to create reports
showing transactional statistics.
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(Reply Br. 6-7). Yet, the difficulty with that position is that these
limitations are part of the abstract idea itself; they are not additional
elements to be considered when determining whether the claims include
additional elements or a combination of elements that is sufficient to amount
to significantly more than the judicial exception.
The Examiner determined, and we agree, that the only claim element
beyond the abstract idea is the processor configured to execute the delivery
of e-bills to clients, i.e., generic computer hardware used to perform generic
computer functions, which is not enough to transform an abstract idea into a
patent-eligible application. See DDR Holdings, 773 F.3d at 1256 ("After
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 23-38 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claims 23-38 under 35 U.S.C. § 101 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)(l )(iv).
AFFIRMED
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