Ex Parte Thomas

Patent Trial and Appeal Board

Aug 31, 2016

12710566 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121710,566 02/23/2010 Tracey R. Thomas
35690 7590 09/02/2016
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
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.
6657-32600 9000
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRACEY R. THOMAS
Appeal2014-005828
Application 12/710,566 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Tracey R. Thomas (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's Final rejection of claims 1--4, 6-10, 20-22, 24, and
26-30, which are all the claims pending and rejected in the application. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellant identifies Propulsion Remote Holdings, LLC as the real
party in interest (App. Br. 3).
Appeal2014-005828
Application 12/710,566
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
rece1vmg, at a computer-based system, financial
information relating to a user, wherein the financial information
includes user savings goal information and user income
information;
determining, by the computer-based system, user debt
obligations including a monetary penalty and a non-monetary
penalty associated with late payment of the user debt obligations;
and
determining, by the computer-based system, a payment
hierarchy for the user based upon the received financial
information, the user debt obligations, the monetary penalty, and
the non-monetary penalty, wherein the payment hierarchy
specifies a savings amount of the user, a timing for transferring
the savings amount to an account of the user, and timings for
paying one or more of the user debt obligations.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pickering
An to gnini et al.
("Antognini")
Crane
US 5,684,965 Nov. 4, 1997
US 2002/0023055 Al Feb. 21, 2002
US 7,313,543 Bl Dec. 25, 2007
2
Appeal2014-005828
Application 12/710,566
Claims 1-3, 6, 8-10, 20, 21, 24, 27, 28, and 30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Crane and Antognini. 2
Claims 4, 26, and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crane, Antognini, and Pickering.
Claims 7 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crane, Antognini, and Official Notice.
ISSUES
Did the Examiner err in rejecting claims 1-3, 6, 8-10, 20, 21, 24, 27,
28, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Crane and
Antognini; claims 4, 26, and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Crane, Antognini, and Pickering; and claims 7 and 22
under 35 U.S.C. § 103(a) as being unpatentable over Crane, Antognini, and
Official Notice?
ANALYSIS
The rejection of claims 1-3, 6, 8-10, 20, 21, 24, 27, 28, and 30 under 35
USC§ 103(a) as being unpatentable over Crane and Antognini.
The independent claims are claims 1, 20, 27, and 30. Claim 1
includes the limitations "a non-monetary penalty" and "determining ... a
payment hierarchy for the user based upon ... the non-monetary penalty."
Claims 20, 27, and 30 include similar limitations.
2 Notwithstanding that the statement of the rejection does not include it,
claim 30 is pending as added by the amendment filed on May 13, 2013 and
entered via the filing of the RCE on the same date. Claim 30 is an
independent apparatus claim that mirrors method claim 1 and product claim
20.
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Appeal2014-005828
Application 12/710,566
The Examiner finds the "non-monetary penalty" of claim 1 in the
"hold and review code" and the examples thereafter disclosed in Crane at
col. 3, 11. 32--45, and finds the claimed "payment hierarchy" in Crane in
payment hierarchies 19 and 24 of Figure 2 and in step 320 of Figure 3b
(Non-Final Act. 3--4).
The Appellant argues, inter alia, that the payment hierarchy in Crane
is not based on the "hold and review code" or the collections process and
therefore does not meet the claim 1 limitation "based upon ... the non-
monetary penalty" (Appeal Br. 13-15).
We agree with the Appellant.
Claim 1 requires that the payment hierarchy is determined "based
upon" the non-monetary penalty, and therefore the claim requires that at
least some information about the non-monetary penalty is used to determine
the payment hierarchy. We have reviewed the cited disclosure and we see
no evidence that either of the payment hierarchies in Crane are determined
based on any information about the "hold and review code" or the other
examples (e.g., collections process) disclosed in Crane.
Crane discloses two distinct payment hierarchies 19 and 24 for
allocating remitted funds to charges and investments, respectively. First,
payment hierarchy system 19 "applies a payment hierarchy to the remitted
funds to determine the ordering for applying payments to the outstanding
amounts owed" to merchants based on card charges (Crane, col. 10, lines
23-29). This application of payment hierarchy 19 corresponds to step 320 in
Figure 3B (Crane, col. 9, lines 51-55). Second, ifthe remitted funds were
sufficient to satisfy all the card charges, "payment hierarchy system 24
processes the remitted payments to determine the allocation of funds to the
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Appeal2014-005828
Application 12/710,566
preselected investment products" (Crane, col. 10, lines 40-45). In other
words, payment hierarchy 19 is designed to avoid default on any of the card
charges, and thereby avoids the collections process. Payment hierarchy 24 is
used to allocate investment funds only if all card charges have been paid.
We do not see any disclosure in Crane indicating that either payment
hierarchy 19 or 24 is determined based upon any information about the
collections process or any other example of a "hold and review code."
Accordingly, the rejection is not sustained.
The rejection of claims 4, 26, and 29 under 35 US.C. § 103(a) as being
unpatentable over Crane, Antognini, and Pickering.
The rejection of claims 7 and 22 under 35 US.C. § 103(a) as being
unpatentable over Crane, Antognini, and Official Notice.
The rejections of dependent claims 4, 7, 22, 26, and 29 are also not
sustained. These rejections rely on the erroneous finding in Crane discussed
above. Because there is inadequate evidence in support for said finding, a
prima facie case of obviousness has not been made out in the first instance
by a preponderance of the evidence.
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Appeal2014-005828
Application 12/710,566
NEW GROU-ND OF REJECTION
Claims 1--4, 6-10, 20-22, 24, and 26-30 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According
to Alice step one, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S.Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to the abstract idea of determining a payment
hierarchy. Cf Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1333 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2510 (2016) ("Using
organizational and product group hierarchies to determine a price is an
abstract idea that has no particular concrete or tangible form or
application.")
Step two is "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 at 1297.
We see nothing in the subject matter claimed that transforms the
abstract idea of determining a payment hierarchy. Claims 1 and 27 cover
methods employing a generic "computer-based system," i.e., a general
purpose computer (see Specification para. 165) to determine a payment
hierarchy. Claim 20 is directed to a "non-transitory computer readable
medium having program instructions stored thereon that" determine a
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Application 12/710,566
payment hierarchy. Claim 30 is directed to a conventional "computer
system" comprising a generic "processor" and "memory having program
instructions stored therein that are executable by the processor to cause the
computer system to" determine a payment hierarchy.
Therefore, we enter a new ground of rejection of claims 1--4, 6-10,
20-22, 24, and 26-30 under 35 U.S.C. § 101.
CONCLUSION
The rejection of claims 1-3, 6, 8-10, 20, 21, 24, 27, 28, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Crane and Antognini is not
sustained.
The rejection of claims 4, 26, and 29 under 35 U.S.C. § 103(a) as
being unpatentable over Crane, Antognini, and Pickering is not sustained.
The rejection of claims 7 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Crane, Antognini, and Official Notice is not sustained.
DECISION
The decision of the Examiner to reject claims 1--4, 6-10, 20-22, 24,
and 26-30 under 35 U.S.C. § 103(a) is reversed.
Claims 1--4, 6-10, 20-22, 24, and 26-30 are newly rejected under 35
U.S.C. § 101.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
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Appeal2014-005828
Application 12/710,566
review." 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WlTHfN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
REVERSED; 37 C.F.R. § 41.50(b)
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