Ex Parte Sun et al

Patent Trial and Appeal Board

Oct 29, 2018

13735433 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/735,433 01/07/2013
131244 7590 10/30/2018
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Albert Kwang-Hwa Sun
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.
72167.000820 8879
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
10/30/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ALBERT KWANG-HWA SUN, TAK MING CHAN,
JACQUELINE LA YER, NICOLE GABRIELLE RODRIGUEZ TOULIS,
STEPHEN PAN CHEUNG, PA TRICK SHU PUI KO,
SAMMY SHUN YUEN FUNG, THOMAS WILLIAM HALPIN,
YOKE BEE YAP, ZENO FOOK CHUEN CHOW,
KELVIN YATSUN LEUNG, KWOK KEUNG YEUNG, MAN PUI TSIM,
and SOL SOLOMON
Appeal2017-007812
Application 13/735,433
Technology Center 3600
Before JASON V. MORGAN, JON M. JURGOV AN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 64--74, 76-78, 80, 88-92, and 94--98.
Claims 1---63, 75, 79, 81-87, and 93 have been canceled. See App. Br. 12-
1 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. App. Br. 1.
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Application 13/735,433
20 (Claims App'x). We have jurisdiction over the pending claims under 35
U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "systems and methods for
managing trading operations and more particularly to a system and method
for generating, processing and tracking documents and processes associated
with import/export trading operations." Spec. 1. Claim 64, which is
representative, reads as follows:
64. A computer-implemented method for processing trade
documents associated with a trade operation, comprising:
receiving over a computer network an electronic copy of a
payment contract associated with a trade receivables transaction;
at least one computer processor automatically preparing
electronic transaction documents required for settlement of the
trade receivables transaction, wherein at least one of the
electronic transaction documents is dependent upon a type of the
payment contract, and wherein at least one of the electronic
transaction documents comprises transaction information for the
trade receivables transaction;
the at least one computer processor determining if any of
the electronic transaction documents is incomplete;
the at least one computer processor requesting incomplete
electronic transaction documents determined to be repaired;
the at least one computer processor verifying that the
electronic transaction information is compliant with a banking
standard; and
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the at least one computer processor causing the electronic
transaction documents to be output electronically to at least one
party to the transaction, whereby an association is provided
among the electronic transaction documents.
Rejection
Claims 64--74, 76-78, 80, 88-92, and 94--98 stand rejected under 35
U.S.C. § 101 because the claimed subject matter is judicially-excepted from
patent eligibility under§ 101. Ans. 2-3; see also App. Br. 2 n.1 ("Appellant
has confirmed with the Examiner that claims 64--67, 71, and 89 are also
rejected under 35 U.S.C. § 101 despite not being identified as rejected in the
Final Office Action.").
Issue on Appeal
Did the Examiner err in finding that claims 64--74, 76-78, 80, 88-92,
and 94--98 are directed to subject matter that is judicially-excepted from
patent eligibility under § 101?
ANALYSIS
Rejection under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "'long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty.
v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quoting with internal
quotation marks and brackets omitted Ass 'n for Molecular Pathology v.
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Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). 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, 82-
84 (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, 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," such as an abstract idea. Id. The
inquiry often is whether the claims are directed to "a specific means or
method" for improving technology or whether they are simply directed to an
abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016). If the claims are not directed to a patent-
ineligible concept, 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 the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79).
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F .3d
1327, 1336 (Fed. Cir. 2016).
Step 1
The Examiner finds the claims are directed to the abstract idea of "1)
collecting data, 2) recognizing certain data within the collected data set, and
3) preparing a document." Final Act. 3; see also Ans. 2-3 (citations
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omitted). Additionally, the Examiner finds the claims are directed to an
abstract idea because processing trade documents is a fundamental economic
practice. Ans. 2.
Initially, Appellants argue the "alleged abstract idea- 'data collection,
recognition, and document preparation' - is not an abstract idea within the
meaning of Alice." App. Br. 7. Appellants argue:
[T]he Examiner has not alleged that the claims recite a concept
that is "similar to concepts previously found abstract by the
courts." Indeed, the cases cited by the Examiner - Cybeifone
(e.g., using categories to organize and store information for
transmission), SmartGene (e.g., comparing new and stored
information and using rules to identify options), TDE Petroleum
(e.g., storing, gathering, and analyzing data) and Electric Power
(e.g., collecting information, analyzing it, and displaying certain
results of the collection and analysis)- do not have abstract ideas
that are similar to the alleged abstract idea.
Reply Br. 2 (footnote omitted). Appellants further argue:
the claims are not simply directed to "data collection,
recognition, and document preparation" - instead, they require,
inter alia, the receipt of an electronic copy of a payment contract,
a computer preparing electronic transaction documents, the
verification of the electronic transaction documents, and the
output of and association of the electronic transaction
documents.
App. Br. 8. Appellants argue the claimed method, therefore, is rooted in
computer technology and, therefore, "cannot be considered to be a
fundamental electronic financial practice or an 'abstract idea' under Alice."
App. Br. 8; see also Reply Br. 3.
We do not find Appellants' arguments persuasive. The claims are
directed to processing trade documents associated with a trade operation.
The Specification describes processing trade documents associated with a
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trade operation as a conventional business practice manually performed by
buyers, sellers, and/or financial entities in performing trade operations.
Spec. 1-3. As such, the claims are directed to a fundamental business
practice and method of organizing human activity, long prevalent in our
system of commerce. That is, like the intermediated settlement in Alice (see
134 S. Ct. at 2356-57) and in similar cases, the claims are directed to an
abstract idea.
We are also not persuaded by Appellants' argument that the claims
are not directed to an abstract idea because the claims "are admittedly novel
and nonobvious-there are no prior art rejections." App. Br. 8. The issue
of whether all of the limitations of the claim are well-known is not
dispositive for whether the Examiner errs in step one of the Alice analysis.
The dispositive issue is whether the idea to which the claim is directed (as a
whole) is a fundamental economic practice. Cf Alice, 134 S. Ct. at 2352
n.2, 2355-57 (determining a claim with a variety of specific limitations was
directed simply to risk hedging). Claim 64's preamble highlights that the
claim recites a "method for processing trade documents associated with a
trade operation." As discussed above, we agree with the Examiner that this
idea is a fundamental economic practice. Ans. 2.
Step 2
Turning to the second step of the analysis, the Examiner finds that the
additional elements recited in the claims are not sufficient to amount to
significantly more than the abstract idea but "merely recite the use of this
existing computer processors and processing technology to recognize and
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store data from specific data fields and prepare a document." Final Act. 3;
see also Ans. 2-3.
Appellants contend "even if the claims were directed to an abstract
idea ... the Examiner has not considered the claims as a whole in evaluating
whether the combination of the claim elements amounts to 'significantly
more' than the alleged abstract idea." App. Br. 8. Appellants argue the
claims recite "meaningful limitations - which distinguish the claims from
the cited art - [that] are significantly more than any alleged abstract idea."
App. Br. 8. Appellants argue because the claims consider the inputs from
multiple elements in processing electronic documents, "the claims qualify as
'meaningful limitations' that qualify as 'significantly more' than any
unidentified abstract idea." App. Br. 9; see also Reply Br. 3--4 (citing
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016)).
Appellants also argue "the claims 'do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet"' but, instead, "'the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks."' App. Br. 9 ( citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014)). Appellants argue the claims are
necessarily rooted in computer technology because they "are not an example
of 'implementing an abstract concept faster and more efficiently on a
computer"' and because the recited limitations "could not occur absent a
computer." Id. at 10 (emphasis omitted).
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We find nothing in Appellants' claims that adds anything
"significantly more" to transform the abstract concept of collecting, storing,
and analyzing information into a patent-eligible application. Alice, 134 S.
Ct. at 2357. Limiting such an abstract concept of processing trade
documents associated with a trade operation a general purpose computer
having generic components such as, for example, "at least one computer
processor" recited in claim 64 does not make the abstract concept patent-
eligible under 35 U.S.C. § 101. "[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2359 (concluding claims "simply
instruct[ing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer" not patent eligible); see also Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[A]dding a
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible" (internal citation
omitted)).
To the extent Appellants argue the claims are directed to novel and
nonobvious subject matter and, therefore, necessarily entail an inventive
concept that transforms the claims to significantly more than the abstract
idea (Reply Br. 3--4 ), we disagree. Although the second step in the Alice/
Mayo framework is termed a search for an "inventive concept," the analysis
is not an evaluation of novelty or non-obviousness, but rather a search for
"'an element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (citation omitted). A
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novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
We are also not persuaded by Appellants' argument that the claims
recite significantly more than an abstract idea because "as a result of the
computer implementation, these claims are 'more than [an] [] effort designed
to monopolize the [abstract idea]."' App. Br. 10 (brackets in original); see
also Reply Br. 4--5 (citing McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1313-16 (Fed. Cir. 2016)). To be sure, the Supreme Court
has described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption." See Alice, 134 S. Ct. at 2354. However, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the test for patent eligibility. As our reviewing
court has explained: "The Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability" and
"[ f]or 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, 134 S. Ct. at 2354). Although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.
Conclusion
Because Appellants' claims 64--74, 76-78, 80, 88-92, and 94--98 are
directed to a patent-ineligible abstract concept, and do not recite something
"significantly more" under the second prong of the Alice analysis, we sustain
the Examiner's rejection of these claims under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's rejection of claims 64--74, 76-78, 80, 88-
92, and 94--98 under 35 U.S.C. § 101.
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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