Ex Parte Sun et al

Patent Trials and Appeals Board

Nov 13, 2018

13874790 - (D) (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/874,790 05/01/2013
131244 7590 11/14/2018
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.
72167.000841 9322
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
11/14/2018 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
Appeal2017-007829
Application 13/874,790
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 42, 44, 47-55, 57---63, 67, and 68.
Claims 1--41, 43, 45, 46, 56, 64---66 have been canceled. See App. Br. 10-15
(Claims App'x). We have jurisdiction over the pending claims under 35
U.S.C. § 6(b). We affirm.
1 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. App. Br. 1.
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Application 13/874,790
RELATED APPEAL
Appellants indicate that Appeal 2017-007812 (App. No. 13/735,433),
decided October 30, 2018, is related to the instant Appeal.
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 42, which is
illustrative of the claimed invention, reads as follows:
42. A system of processing trade documents associated with a
trade operation between a buyer and a seller, the system
compnsmg:
a customer profile database that stores a customer profile
comprising (1) letter of credit templates, (2) letter of credit text,
and (3) standard terms and conditions used by the buyer that are
approved for transactions involving the buyer and the seller;
an interface module that receives an initiation document
comprising one of an application for a letter of credit and a
purchase order, the initiation document further comprising
requirement information with respect to the trade operation;
a second database coupled to the interface module, the
interface module mapping at least some of the requirement
information into the second database for tracking and monitoring
of the trade operation;
a letter of credit generation module coupled to the
customer profile database, the letter of credit generation module
automatically generating the letter of credit using the standard
terms and conditions contained in the customer profile;
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a document generation module coupled to the second
database, the document generation module automatically
generating the trade documents utilizing the requirement
information contained in the second database; and
a verification module that verifies the accuracy of the trade
documents by comparing the trade documents to the customer
profile.
Rejections
Claims 42, 44, 47-55, 57---63, 67, and 68 stand rejected under 35
U.S.C. § 101 because the claimed subject matter is judicially-excepted from
patent eligibility under§ 101. Final Act. 2-3.
Claims 42, 44, 47-55, 57---63, 67, and 68 stand rejected on the grounds
of non-statutory obviousness-type double patenting over claims 1-24 of Sun
et al. (US 7,945,492 B 1; issued May 17, 2011) ("Sun"). Final Act. 4.
ANALYSIS
Double Patenting Rejection
In the Briefs, Appellants present no arguments regarding the rejection
of claims 42, 44, 47-55, 57---63, 67, and 68 on the grounds of non-statutory
obviousness-type double patenting. See also Ans. 4. Accordingly, we
summarily sustain the Examiner's rejection.
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,
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natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty.
v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. 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 is the abstract idea and merely invoke generic processes
and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
Step 1
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The Examiner finds the claims are directed to processing trade
documents which "is fundamental to international trade and thus the claims
are directed to an abstract idea." Final Act. 2 (citing cases). Additionally,
the Examiner finds the recited limitations "can be performed mentally, and
are similar to the concepts identified as abstract ideas by the courts ( e.g.,
using categories to organize and store information for transmission or
comparing new and stored information and using rules to identify options."
Ans. 4 ( citing cases) (internal citations omitted).
Initially, Appellants argue the "alleged abstract idea - 'processing
trade documents' - is not an abstract idea within the meaning of Alice."
App. Br. 5. 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 - Cyberfone
(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. 2-3 (footnote omitted). Appellants argue the claims, instead,
"recite improvements to trade document processing." Reply Br. 3.
Second, Appellants argue:
the claims are not simply directed to "processing trade
documents" - instead, they require, inter alia, "a customer
profile database that stores a customer profile comprising ( 1)
letter of credit templates, (2) letter of credit text, and (3) standard
terms and conditions used by the buyer that are approved for
transactions involving the buyer and the seller," "a letter of credit
generation module coupled to the customer profile database, the
letter of credit generation module automatically generating the
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letter of credit using the standard terms and conditions contained
in the customer profile," and "a document generation module
coupled to the second database, the document generation module
automatically generating the trade documents utilizing the
requirement information contained in the second database."
App. Br. 5---6. Appellants argue the claimed method, is rooted in computer
technology and, therefore, "cannot be considered [to be] a fundamental
financial practice or an 'abstract idea' under Alice." App. Br. 6. Appellants
further argue "the claims recite specific hardware, such as a customer profile
database, an interface module, a database coupled to the interface module, a
letter of credit generation module, a document generation module, and a
verification module" and, therefore, "are not directed to any 'judicial
exceptions' - laws of nature, natural phenomena, or abstract ideas." App.
Br. 7.
We do not find Appellants' arguments persuasive. We agree with the
Examiner (Final Act. 2) that the claims are directed to processing trade
documents. The Specification describes processing trade documents 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. Like
risk hedging (see Bilski v. Kappas, 561 U.S. 593 (2010)), intermediated
settlement (see Alice, 134 S. Ct. at 2356-57), credit card transaction
verfication (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011)), information collection and analysis to detect and
notify of misuses (see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016)), and transaction guarantees (see buySAFE,
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Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)), 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. 5. 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). As claim 42's preamble highlights, the
claim recites a "system of processing trade documents associated with a
trade operation between a buyer and a seller." As discussed above, we agree
with the Examiner that this idea is a fundamental economic practice. Final
Act. 2.
Step 2
Turning to the second step of the analysis, the Examiner finds that the
claims do not recite significantly more than the abstract idea because "the
claims fail to include elements that amount to significantly more [than] the
[abstract] idea itself because the claim limitations simply instruct the
practitioner to implement the [abstract] idea." Final Act. 2. The Examiner
further finds the recited limitations
are recited at a high level of generality, and can comprise only a
microprocessor and memory to simply perform the generic
computer functions of receiving, manipulating and transmitting
information to a computer of the remote party. Generic
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computers performing generic computer functions, alone, do not
amount to significantly more than the abstract idea. These
limitation are simply a field of use and does not add a meaningful
limit on the abstract idea. Viewing the elements as a combination
does not add anything further than the individual elements.
Ans. 4.
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. 6. Appellants argue because "the
claims require hardware that maps data to a database, [] generates a letter of
credit, generates trade documents, and verifies the accuracy of the trade
documents" the claims recite limitations that "amount to 'significantly more'
than simply the 'processing of trade documents."' App. Br. 6; see also
Reply Br. 3--4.
Appellants argue the Examiner "has failed to consider all of the claim
elements in combination" and "[ t Jo the extent that the Examiner may
contend that the claimed functions are generic functions ... when
considered together, these elements can still amount to significantly more
than an abstract idea." App. Br. 7. Appellants further argue:
[T]he claims are not merely directed to "processing of trade
documents." Instead, they involve the mapping of data to a
database, the generation of a letter of credit, the generation of
trade documents, and the verification of the accuracy of the trade
documents. Thus, taken as a whole, the claim elements do
significantly more than "simply instruct the practitioner to
implement the idea" of document processing.
App. Br. 7.
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
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claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks."' App. Br. 7-8 ( 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 process could not occur absent a computer."
App. Br. 8 ( emphasis omitted).
We find nothing in Appellants' claims that adds anything
"significantly more" to transform the abstract concept of processing trade
documents into a patent-eligible application. Alice, 134 S. Ct. at 2357.
Limiting such an abstract concept of processing trade documents to a general
purpose computer having generic components such as "a customer profile
database," "an interface module," "a second database," "a letter of credit
generation module," and "a verification module" does not make the abstract
concept of claim 42 patent-eligible under 35 U.S.C. § 101. As recognized
by the Supreme Court, "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
See 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) ("Simply adding 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
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concept that transforms the claims to significantly more than the abstract
idea (Reply Br. 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
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Myriad,
133 S. Ct. 2107, 2117 (2013) ("Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry").
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. 8 (alterations in original); see
also Reply Br. 4---6 (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
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1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 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 42, 44, 47-55, 57---63, 67, and 68 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.
DECISION
We affirm the Examiner's rejection of claims 42, 44, 47-55, 57---63,
67, and 68 under 35 U.S.C. § 101.
We affirm the Examiner's rejection of claims 42, 44, 47-55, 57---63,
67, and 68 on the grounds of non-statutory obviousness-type double
patenting.
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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