Ex Parte Tully et al

Patent Trials and Appeals Board

Apr 25, 2019

13334182 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/334, 182 12/22/2011
90879 7590 04/29/2019
Thomson Reuters c/o Intellectual Property
3 Times Square
New York, NY 10036
FIRST NAMED INVENTOR
Brian Tully
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.
TRTA(CSS)_Ol5_US1 1854
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
IPDocketing@thomsonreuters.com
IPDocketing@clarivate.com
docketing@thomsonreuters.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN TULLY, MICHAEL TENDERENDA,
KATHLEEN MOYER, BRAD JOWERS, TERESITA M. VENTRESCA,
and JOSIAH OSIBODU
Appeal2018-003005
Application 13/334, 182 1
Technology Center 3600
Before DAVID M. KOHUT, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-7, 9-25, 27-36, and 38. Claims 8,
26, and 37 are canceled. Final Act. 2. 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 "Thomson Reuters
Global Resources." Br. 2.
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Application 13/334,182
STATEMENT OF THE CASE
Appellants' Invention
"The [invention's] systems and technique provide a complete 'end to
end' solution for the unclaimed property compliance process including
tracking of potential unclaimed transactions, mailing of confirmation and
due diligence letters, routing responses received from the letters, and the
preparation of the unclaimed property reports." Abstr.
Claim 1, reproduced below, is exemplary.
1. A method of managing unclaimed property comprising:
providing by a workflow module an electronic workflow
for association with a potentially unclaimed asset associated
with an entity, the electronic workflow comprising a set of pre-
defined procedures for processing the potentially unclaimed
asset, wherein
the set of pre-defined procedures is from a
directory server and at least one procedure of the set of
pre-defined procedures comprises a determination of
whether the potentially unclaimed asset is an unclaimed
asset, and
the potentially unclaimed asset is accessed from at
least one of a payroll data store, an account payable data
store, an account receivable data store, a garnishment
data store, and an IT audit data store; and
based upon completion of at least one procedure from the
set of pre-defined procedures, automatically generating by a
filing module a set of unclaimed property forms for submission
to the governmental authority for reporting an existence of the
unclaimed asset based on [ a ]2 determination by the workflow
2 We replace "the" with "a" because there is no corresponding antecedent
basis, i.e., no prior recited "determination ... that communication with a
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module that a communication with a governmental authority is
necessary, the generating of the set of unclaimed property forms
further comprises obtaining[,] by the filing module,
requirements for submission to a government authority
maintained in a requirements database.
Rejections
Claims 1-7, 9-25, 27-36, and 38 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patent
eligibility. Final Act. 8-10.
Claims 1-6, 18-24, 36, and 38 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McDonald (US 7,054,833 Bl; May 30, 2006)
and Froude (US 2006/0136238 Al; June 22, 2006). Final Act. 11-14.
Claims 7, 9, 10, 25, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McDonald, Froude, and Soga
(US 2010/0185477 Al; July 22, 2010). Final Act. 14-15.
Claims 11, 12, 16, 17, and 29-35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McDonald, Froude, and Unclaimed Property
Briefs.3 Final Act. 15-17.
governmental authority is necessary." See Manual of Patent Examining
Procedure (MPEP) § 2173.05(e) ("Lack of Antecedent Basis") (9th Ed.,
Rev. 08.2017, Jan. 2018).
3 This "Unclaimed Property Briefs" reference (i.e., within the application's
file wrapper) does not state a specific location to retrieve it. As best we can
discern, it is one of multiple "Unclaimed Property Briefs" webpages
published by the Treasury of Virginia, but no longer available online. It is
titled "Performing Due Diligence: Please refer to §55-210.12 of the Code of
Virginia," attaches a "Sample Due Diligence Letter" dated August 15, 2003,
and described by its footer as follows: "Unclaimed Property Briefs are
published by the Commonwealth of Virginia, Department of the Treasury,
Division of Unclaimed Property. Comments and questions should be
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Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over McDonald, Froude, Soga, and Unclaimed Property Briefs.
Final Act. 17-18.
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
Regarding the rejection of claims 1-7, 9-25, 27-36, and 38 under
35 U.S.C. § 101, Appellants do not argue the claims separately with
particularity. Instead, Appellants rely on the same arguments for all claims.
See Br. 9-16. We select claim 1 as representative for this rejection. See
37 C.F.R. § 41.37(c)(l)(iv). Accordingly, claims 2-7, 9-25, 27-36, and 38
stand or fall with claim 1.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
submitted to Division of Unclaimed Property, P.O. Box 2478, Richmond,
VA 23218, or call (804) 225-2393. www.trs.virgnia.gov."
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573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and, thus, patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden,
56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at
69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 (internal citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at
77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
PTO GUIDANCE
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
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Procedure (MPEP) § 2106.05(a)-(c), (e)-(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
See Guidance, 84 Fed. Reg. at 52, 54-55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, we conclude the claim is directed to a judicial exception (id. at
54) and then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not "well-understood,
routine, conventional" activity in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
OuRREvrnw
There is no dispute that all claims fall within a category of patentable
subject matter. See 35 U.S.C. § 101 ("process, machine, manufacture, or
composition of matter"); see also Guidance, 84 Fed. Reg. at 5 3-54
("Step l "). We accordingly tum to the further issues raised by the Guidance
(summarized at supra 6-7) and Appellants' arguments (infra 13-15). As
Appellants argue all claims as a group (Br. 7-16), we select claim 1 as
representative for these issues, such that all claims stand or fall with claim 1.
See 37 C.F.R. 41.37(c)(l)(iv) (representative claims).
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1. STEP 2A, PRONG ONE: DOES THE CLAIM RECITE ANY JUDICIAL
EXCEPTIONs4
Turning to the first issue set forth by the Guidance (see supra 6, bullet
"(l )"), claim 1 recites the following features covering abstract ideas
(numerals and some paragraphing added):
1. A method of managing unclaimed property comprising:
[ 1] providing ... [a] workflow for association with a potentially
unclaimed asset associated with an entity, the electronic
workflow comprising a set of pre-defined procedures for
processing the potentially unclaimed asset, wherein
4 The Guidance separates the enumerated issues (1) to (4) (see supra 6-7)
into Step 2A, Prong One; Step 2A, Prong Two; and Step 2B, as follows:
[T]he revised procedure that will be applied by the USPTO
... focuses on two aspects [ for determining whether a claim is
"directed to" a judicial exception under the first step of the
Alice/Mayo test (USPTO Step 2A)]: (1) Whether the claim
recites a judicial exception; and (2) whether a recited judicial
exception is integrated into a practical application. [W]hen a
claim recites a judicial exception and fails to integrate the
exception into a practical application, ... further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) ... is needed (for example to determine whether the
claim merely recites well-understood, routine, conventional
activity) ... in accordance with existing USPTO guidance as
modified in April 2018. [ footnote omitted]
84 Fed. Reg. at 51 (instructing, via the omitted footnote, that Step 2B is
addressed per the "USPTO Memorandum of April 19, 2018, 'Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)' (Apr. 19,
2018), available athttps://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF ([ ... 'USPTO Berkheimer
Memorandum'].").
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[2] ... at least one procedure of the set of pre-defined
procedures comprises a determination of whether the
potentially unclaimed asset is an unclaimed asset, and
[3] and the potentially unclaimed asset is accessed from
at least one of a payroll ... , an account payable ... , an
account receivable ... , a garnishment ... , and an IT
audit ... ; and
[ 4] based upon completion of at least one procedure from the
set of pre-defined procedures, ... generating ... a set of
unclaimed property forms for submission to the governmental
authority for reporting an existence of the unclaimed asset
based on [a] determination ... that a communication with a
governmental authority is necessary, [wherein]
[5] the generating of the set of unclaimed property forms
further comprises obtaining by the filing module,
requirements for submission to a government authority
We find the limitations, as drafted, form a process that, under its
broadest reasonable interpretation, covers "[ c Jertain methods of organizing
human activity- ... commercial or legal interactions." Guidance, 84 Fed.
Reg. at 52; see also Ans. 4 ( citing "certain methods of organizing human
activity" described by the USPTO July 2015 Update to Subject Matter
Eligibility, § III.B, and emphasizing the examples of "managing
relationships or transactions between people" and "satisfying or avoiding a
legal obligation")5 Final Act. 8 ( emphasis omitted). For example, the
5 The Guidance supersedes the July 2015 Update with respect to determining
whether claimed subject matter has been judicially-recognized as an abstract
idea. See Guidance, 84 Fed. Reg. at 51-52. However, in this noted citation
to the Update, the Examiner emphasizes the Update' s examples of abstract
ideas that are shared by the Guidance's examples of "certain methods of
organizing human activity" (see id. at 52).
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limitations cover pre-defined procedures ( organizing) that find assets within
an account ( commercial interactions), determine what assets constitute a
statutorily-defined "unclaimed asset" (legal interactions), and both
determine and populate regulatory forms for reporting an unclaimed asset
( commercial and legal interactions). See, e.g., Spec. (US 2013/0097092 Al;
Apr. 18, 2013)6 ,i,i 3-4 ("The present invention relates to ... accounting
transactions subject to unclaimed property laws ... that allow the state to
claim abandoned property.").
The above-quoted limitations, as drafted, also form a process that,
under its broadest reasonable interpretation, covers "[ m Jental processes-
concepts performed in the human mind ... including an ... evaluation,
judgment." 84 Fed. Reg. at 52; see also Final Act. 8 (citing the "abstract
idea itself' described by the July 2015 Update, § III.C, and emphasizing the
examples of "a mental process ( thinking) that 'can be performed in the
human mind [or] ... using a pen and paper"'). 7 For example, the claimed
procedures include the mental activities of determining assets within
accounts, determining what assets constitute a statutorily-defined
"unclaimed asset," and both selecting and populating forms for reporting an
unclaimed asset. See, e.g., Spec. ,i,i 3-4 (parenthetically quoted above), 6-7
6 We cite to the paragraph numbers of the published Specification because
the originally-filed Specification does not include paragraph numbers or
page line numbers, and because Appellants and the Examiner have
consequently cited to the paragraph numbers of the published Specification.
See, e.g., Br. 17; Ans. 8.
7 Again, the Guidance supersedes the July 2015 Update. See supra fn. 6.
However, in this noted citation to the Update, the Examiner emphasizes the
Update's examples of abstract ideas that are shared by the Guidance's
examples of "mental processes" (see id. at 52 n. 14-15).
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("To manage unclaimed property, institutions typically use ... general
ledger tools to track how unclaimed property is created[.] These tools,
however, tend to be tedious and time consuming[.] ... Accordingly, there is
a need ... [to] automate the management of unclaimed property
information.").
For the foregoing reasons, we find claim 1 recites judicial exceptions
( abstract ideas) recognized by our recent Guidance.
2. STEP 2A, PRONG Two: ARE THE RECITED JUDICIAL
EXCEPTIONS INTEGRATED INTO A PRACTICAL APPLICATION?
Turning to the second issue set forth by the Guidance (see supra 6,
bullet "(2)"), claim 1 also recites the following additional elements:
[ 1] providing by a workflow module an electronic workflow
... comprising a set of pre-defined procedures ... , wherein
[2] the set of pre-defined procedures is from a directory
server and at least one ... comprises a determination
... , and
[3] the ... asset is accessed from [a] ... data store
[ 4] based upon completion of at least one [ of the] pre-defined
procedures, automatically generating by a filing module a set of
... forms ... based on [a] determination by the workflow
module ... , [wherein]
[5] the generating of ... forms further comprises
obtaining[,] by the filing module, requirements
... maintained in a requirements database.
These limitations recite computer technology at a high level of
generality and amount to insignificant extra-solution activity. These
limitations do not impose any meaningful limits on practicing the recited
abstract ideas and are not the kinds of limitations that have been found to
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"solve a technology-based problem, even with conventional, generic
components, combined in an unconventional manner." Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016). For
example, the claims do not: ( 1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine ( except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See Guidance, 84 Fed.
Reg. at 54-55; MPEP §§ 2106.05(a)-(c), (e)-(h). There is only nondescript
modules, data stores, and a database, which are merely accessed to perform
the activities encompassed by abstract ideas ( discussed supra). By
implementing these activities on only nondescript technology needed for
modem business practices ( e.g., using computer "modules" to implement
"pre-defined procedures"), the claim does not integrate the recited abstract
ideas into a practical application. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
For the foregoing reasons, because claim 1 does not integrate the
recited abstract ideas ( e.g., mental processes, certain methods of organizing
human activity (e.g., a fundamental economic practice)) into a practice
application, we find claim 1 is directed to the recited abstract ideas.
Guidance, 84 Fed. Reg. at 54 ("If, however, the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the recited judicial exception, and requires further analysis under Step 2B
(where it may still be eligible if it amounts to an 'inventive concept')."
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3. STEP 2B: DOES THE CLAIM PROVIDE AN INVENTIVE CONCEPT?
Turning to the third issue set forth by the Guidance (see supra 6-7,
bullets "(3)" and"( 4)"), claim 1 does not recite features that are both neither
an abstract idea nor "well-understood, routine, conventional."
84 Fed. Reg. at 56. As reflected above, claim 1 rather recites that
determinations and reports of unclaimed assets ( abstract ideas) are
automated by a network of nondescript modules, data stores, and a database.
We therefore agree with the Examiner that:
[ Appellants are] generically claiming structure[-Jsuch as a
workflow module, transactional databases, a directory server[-
] ... to perform generic computer functions such as[:]
receiving, processing, and storing data[;] electronic record
keeping[;] automating mental tasks[;] and receiving or
transmitting data over a network[.] ... [T]he mechanisms for
performing these functions are not described. The instant
claims merely describe the effect or result dissociated from any
processes by which the workflow module may make a
determination and automatically generate forms[; there is]
... no restriction on how the workflow procedures are
performed[.] As such, ... these functions ... do not rise to
what is considered more than well-understood, routine, and
conventional activity.
Final Act. 9-10 (internal quotation marks and citations omitted)8; see also
8 To show the denoted computer functions are judically-recognized as
generic computer functions, the Examiner provided the following citations:
Alice, 573 U.S. at 224-26; Benson, 409 U.S. at 65-67; Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1275
(Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716-17 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
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MPEP § 2106.05( d)(II) (presenting a substantially similar list of computer
functions that are judicially-recognized as conventional and cited by the
Berkheimer Memorandum (see supra fn. 4), § III.2, as support for such a
finding under Step 2B). 9
For the foregoing reasons, we find claim 1 combines the recited
abstract ideas with merely appended "well-understood, routine,
conventional" activities.
4. APPELLANTS' ARGUMENTS
Appellants argue claim 1 recites technical improvements that are
analogous to the patent-eligible improvements recited by the claims of
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), and
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). 10 Br. 10-16. Appellants contend claim 1 recites a
patent-eligible improvement of "allow[ing] for automated management[,]
determination[,] and reporting of an unclaimed property, while adhering to
1355 (Fed. Cir. 2014); and Cyberfone Sys., LLC v. CNN Interactive Grp.,
Inc., 558 F. App'x 988, 993 (Fed. Cir. 2014).
9 The Memorandum supersedes the July 2015 guidance with respect to
determining whether claimed subject matter has been judicially-recognized
as an abstract idea. 84 Fed. Reg. at 51-52. The Memorandum does not
supersede the July 2015 guidance's identification of computer functions that
are judicially-recognized as "conventional functions when they are claimed
in a merely generic manner" ( at page 7 of the July 2015 guidance).
10 See MPEP § 2106.06(b) ("Clear Improvement to a Technology or to
Computer Functionality [R-08.2017]") (summarizing the specific
improvements of Enfzsh, McRO, and Bascom); Guidance, 84 Fed. Reg. at 53
n. 17 (citing MPEP § 2106.06(b) for that summary).
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the requirements for submission to a government authority[; thereby] ...
allow[ing] for management in a more efficient and timely manner." Br. 12.
Appellants also contend claim 1 recites a patent-eligible improvement of
"substantive transformative steps undertaken in reducing an institution's
unclaimed property liability and significantly minimize potential unclaimed
property audit costs and assessments." Id. at 10.
We are unpersuaded. As explained by the Examiner, claim 1 does not
recite an improvement in computers as tools or an innovative way to use
computers, but rather recites activities for which a computer is used in its
ordinary capacity. See supra 11 (block quote).
Claim 1 is not like the claims addressed by Enfish. The claims in
Enfish were expressly directed to data storage/retrieval (822 F.3d at 1336,
1340) and configured a "self-referential table [as] ... a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory" (id. at 1339). The claims in Enfish accordingly recited how a
computer is mechanized to process information ( the data structure of the
self-referential table) and improved computers as tools (improved access to
memory).
Claim 1 is not like the claims addressed by McRO. The claims in
McRO defined an output morph weight set stream as a function of phoneme
sequence and time, such that a spoken phoneme is adjusted to the prior and
ensuing spoken phonemes. 837 F.3d. at 1306-08. The claims inMcRO
accordingly recited how a computer is mechanized to process information
(how it converts the phonemes into animation) and improved computers as
tools (improved animation).
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Claim 1 is not like the claims addressed by Bascom. The claims in
Bascom recited an internet content filtering located at an internet service
provider (ISP) server and customized to each user, such that a user's
received requests for Internet content are both filtered via the user's filtering
scheme and insusceptible to hacking of the user's local devices. 827 F.3d at
1343-45. The claims in Bascom (unlike claim 1) accordingly recited how a
computer is mechanized to process information (how it converts the content
request into a filter decision and content) and improved computers as tools
(improved filtering).
For the foregoing reasons, we are not persuaded claim 1 improves the
functioning of a computer or any other technology.
CONCLUSION
For the foregoing reasons, we sustain the Examiner's 35 U.S.C. § 101
rejection of claim 1; and claims 2-7, 9-25, 27-36, and 38, which fall with
claim 1.
Rejections under 35 U.S.C. § 103(a)
CLAIMS 1-6, 18-24, 36, AND 38 OVER MCDONALD AND FROUDE
Appellants argue all claims as a group and address only claim 1 with
particularity. Br. 16-18. We select claim 1 as representative for this
rejection. See 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, claims 2-6, 18-24,
36, and 38 stand or fall with claim 1.
Appellants argue the combination of McDonald and Froude does not
teach or suggest the claimed reporting of unclaimed assets. Br. 16-18.
Specifically, Appellants argue the Examiner errs in reading the claimed
"forms ... for reporting an existence of the unclaimed asset" on
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McDonald's form requesting an asset from a state's unclaimed property
repository, contending:
McDonald's disbursement notification for owners, using
unclaimed property information obtained from repositories
containing unclaimed property information (i.e., state and local
government repository ... ) is the opposite of determining and
reporting to a government authority an existence of the
unclaimed asset as claimed.
[T]he Examiner errs in broadly interpreting the term "report" as
communicating ownership of an unclaimed property. (see Final
Office Action, p. 6) As described in the instant specification
and used in the field of the art, "by virtue of state laws, if
unclaimed property assets cannot be returned to the rightful
owner, the asset must be reported and remitted to the state in
which the owner was last known to live once a 'dormancy
period' for the particular type of asset has expired."
(Specification, ,-J[0005]) Accordingly, report is not merely the
communication of ownership, rather "for reporting an existence
of the unclaimed asset based on the determination by the
workflow module that a communication with a governmental
authority is necessary" as recited in the independent claim.
Br. 17 ( emphases omitted).
We are unpersuaded. Appellants interpret the claimed reporting as
requiring a form that remits an unclaimed asset to a state, whereas the
Examiner reads the claimed reporting on a form that recovers an unclaimed
asset from a state. Id.; see also Final Act. 6 ("Response to Arguments"
explanation of why the claimed reporting is drafted broadly enough to read
on McDonald's form that reports, at step 76, the owner of unclaimed
property to a state); id. at 11-12 ("Claim Rejections" explanation of how
McDonald is applied). We agree with the Examiner that the claimed
reporting is drafted broadly enough to encompass both possibilities; i.e.,
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remitting and recovery are two viable outcomes (species) of the claimed
reporting.
The Examiner's reading of the claimed reporting on McDonald is
consistent with the claim language because McDonald's cited form is, as
claimed, (i) "for submission to the governmental authority for reporting an
existence of the unclaimed," (ii) "based on [a] determination ... that a
communication with a governmental authority is necessary," and (iii) "based
upon completion of [the] at least one procedure from the set of pre-defined
procedures." McDonald's form reports ownership of a particular item
within the state's unclaimed property repository (McDonald col. 11, 11. 48-
64; col. 12 11. 42-55), i.e., is submitted to the state and reports the particular
item's existence as one of the repository's unclaimed assets (first limitation).
McDonald's form is a "necessary form[] to request unclaimed property" (id.
at col. 11, 11. 48-64) and "necessary form[] for the ... unclaimed property
repositories" (id. at col. 12, 11. 42-55), i.e., submitted because it is necessary
communication with the state (second limitation). And, McDonald's form is
responsive to the item's inclusion within a state's unclaimed property
repository (id. at col. 12, 11. 20-37), i.e., results from a prior determination
that the item is an unclaimed asset (third limitation). See also Final Act. 12
(reading the claimed "at least one procedure" on Froude's teachings that
businesses determine unclaimed assets for remitting to the state); infra 19
( describing the Examiner's reliance on Froude ).
Appellants have not shown the Examiner's reading of the claimed
reporting on McDonald is erred. In re Jung, 637 F.3d 1356, 1362-63 (Fed.
Cir. 2011) (explaining an appellant's burden in disputing a limitation reads
on prior art). Appellants do not present sufficient persuasive evidence or
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Application 13/334,182
reasoning that a different reading of the claimed reporting is required.
Appellants rather cite to the Specification's teaching that unclaimed assets
must be reported and remitted to states (Spec. ,i 5), which fails to
persuasively show that a report-to-remit meaning (as argued) must be
ascribed to the claimed reporting. The Specification does not ascribe a
special meaning to the claimed reporting-e.g., a meaning of "report" that is
more restrictive than its plain and ordinary meaning-without clear evidence
of such intent. See, e.g., Cont'! Circuits LLCv. Intel Corp., 915 F.3d 788,
796 (Fed. Cir. 2019) ("To act as its own lexicographer, a patentee must
clearly set forth a definition ... other than its plain and ordinary meaning[.]"
(quotation marks omitted)); 3M Innovative Properties Co. v. Tredegar
Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013) ("To the extent possible, claim
terms are given their ordinary and customary meaning ... [.] Idiosyncratic
language, highly technical terms, or terms coined by the inventor are best
understood by reference to the specification."); Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) ("[W]e have expressly rejected
... that if a patent describes only a single embodiment, the claims ... must
be ... limited to that embodiment.").
Appellants also argue:
Froude refers to determining whether candidate entities that
previously reported unclaimed property are under reporters
(Froude ,i [0010]). The determination of whether the entities
are under reporters is not the same as the claimed
["determination of whether the potentially unclaimed asset is an
unclaimed asset."]
Br. 17. We are unpersuaded. The rejection does not rely on Froude's
determination of underreported unclaimed assets, nor must the rejection be
limited to this focus of Froude's disclosure. See In re Fritch, 972 F.2d 1260,
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Application 13/334,182
1264 (Fed. Cir. 1992) ("[A] prior art reference is relevant for all that it
teaches[.]"). The Examiner finds Froude teaches or suggests a business
practice of determining unclaimed assets (which is a reasonable inference
from Froude's cited teaching that businesses must self-report unclaimed
assets to states). Final Act. 12 (citing Froude ,i 26). And, the Examiner
finds Froude teaches or suggests that such assets would be found in general
ledger accounts. Final Act. 12 ( citing Froude ,i 11 ).
For the foregoing reasons, we sustain the rejection of claim 1, and
claims 2-6, 18-24, 36, and 38, which fall with claim 1.
REMAINING CLAIMS
As Appellants do not present separate bases of patentability for
remaining claims 7, 9, 10-12, 16, 17, 25, and 27-35 (Br. 18), we sustain
their rejections under 35 U.S.C. 103(a) for the above reasons to sustain the
rejection of claims 1-6, 18-24, 36, and 38.
DECISION
The Examiner's decision rejecting claims 1-7, 9-25, 27-36, and 38 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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