Ex Parte Vaux et al

Patent Trial and Appeal Board

Oct 31, 2018

12881831 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/881,831 09/14/2010 Jonathan Vaux
66945 7590 11/02/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
80083-788787 1774
EXAMINER
FELTEN, DANIELS
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN VAUX, BRIAN TRIPLETT, MICHAEL DREYER,
LORAINE MARTIN YEAKLE, ALISTAIR DUNCAN, and
PAULO FERNANDES
Appeal2017-008370
Application 12/881,831
Technology Center 3600
Before JOHN A. JEFFERY, JENNIFERL. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 26-38 and 46-48. Claims 1-25 have been
cancelled. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Visa International
Service Association. App. Br. 3.
Appeal2017-008370
Application 12/881,831
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention "generally relates to
commercial transactions, and more specifically, to a method and system for
conducting a commercial transaction between a buyer and a seller." Spec.
Claim 26 is illustrative of the claimed invention and reads as follows:
26. A system for processing payment transactions
between sellers and buyers, comprising:
an invoice processor configured to receive and process
invoices received from the sellers and generate an output invoice
file;
a payment manager configured to maintain buyer accounts
and seller accounts for the buyers and the sellers respectively, the
payment manager further configured to receive the output
invoice file and generate one or more payment instructions, each
payment instruction corresponding to a payment transaction;
an issuer pricing engine configured to store a plurality of
terms and conditions relating to the buyers, the sellers, issuers
and acquirers, the issuer pricing engine further configured to
calculate one or more fees and a net amount for each payment
transaction based on relevant portions of the plurality of terms
and conditions, wherein the issuer pricing engine further
calculates one or more transaction fees based on a set of pre-
negotiated terms and conditions agreed to by at least an issuer
and an acquirer;
an authorization and settlement interface configured to
communicate with issuer computers to obtain payment
authorizations for the payment transactions respectively; and
a payment results processor configured to report results
relating to the payment authorizations for the payment
transactions and provide the payment manager with the results
so as to allow the payment manager to update the buyer accounts
and the seller accounts.
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THE REJECTION
The Examiner rejected claims 26-38 and 46-48 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Ans. 2-5. 2
ANALYSIS
THEREJECTIONUNDER35 U.S.C. § 101
Claims 26-38 and 46-48
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 26-38 and 46-48 as directed to patent-ineligible
subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts" (id.), for example, to an abstract idea. If
the claims are directed to one of the patent-ineligible concepts, 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
2 Because the Examiner withdrew the § 101 rejection in the Final Office
Action, and entered a new ground of rejection under§ 101 in the Answer
(see Ans. 2-5), only the latter rejection is before us.
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patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 132 S.
Ct. at 1297).
Under the first step of the eligibility analysis, the Examiner
determines that the claims are directed to the abstract idea of processing a
payment transactions between sellers and buyers. The Examiner concludes
that this is a fundamental economic practice. See, e.g., Ans. 2-3. For
example, the Examiner explains that
In particular the system includes a transaction processing system
for facilitating payment for a transaction between the buyer and
the seller whereby the issuer manages an account for the buyer
and the acquirer manages an account for the seller [ see, ,r 09].
The claims relate to financial or fundamental economic practices,
wherein the language of automating a loan activity by conducting
transactions between buyers and sellers and maintaining and
processing terms and conditions relating the buyer seller issuer
and acquirer, relates to creating a contract ( or binding agreement)
between people ....
Ans. 3. As the Examiner indicates, courts have identified similar "concepts
relating to economy and commerce such as agreements between people in
the form or contracts, legal obligations and business relations" as abstract
ideas. Ans. 3 (citing buySAFE, Inc., v. Google, Inc., 765 F.3d 1350 (Fed.
Cir. 2014) and Alice).
The Examiner also finds that the claims are directed to managing
certain methods of organizing human activity and an idea of itself. Ans. 3-
4. For example, the Examiner points out that the claims relate to managing
aspects of a transaction between the buyer and the seller, and are similar to
other cases managing financial transactions between users. Ans. 3 ( citing
information-Dealertrackinc., v. Huber, 674 f.3d 1315 (Fed. Cir. 2012);
buySAFE; and Alice).
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Appellants contend that there is no "evidentiary basis whatsoever" to
support the Examiner's determination that the claims are directed to a
fundamental economic practice and that "[ a ]lthough multiple cases are cited
by the Examiner, none of them has an abstract idea that is even remotely
similar to any of the alleged abstract ideas" of the claimed invention. Reply
Br. 6. Appellants also contend the claims are not directed to an abstract idea
because they are necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
technology and that the claims are directed to an improvement in computer-
related technology. Reply Br. 6-9. For example, Appellants contend that
The relevant technology here is about a specialized system
and corresponding methods for conducting a commercial
transaction between a buyer and a seller. Similar to the problem
in McRO (the prior art relies on manual input of animators and
its automation would produce inaccurate results), the prior art in
the current application would provide a manual accounting of
commercial transactions. The prior art may also include a
manual examination of the terms and conditions of sales
agreements by a human being on an individual basis for each
transaction, which was tedious, time-consuming, and prone to
errors.
Reply Br. 9.
We find these arguments unpersuasive. The claims here are directed
to processing or managing a payment transaction between the buyer and the
seller, which is a fundamental economic practice and also is a method of
organizing human activity. We agree with the Examiner that the claims here
are analogous to the claims of Alice. See Ans. 4. Specifically, in Alice the
claims were directed to a transaction between parties to mitigate settlement
risk, which was a fundamental economic practice being applied to a
computer. See Alice, 134 S. Ct. at 234 7. Similarly, the claims here are for
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processing and managing information related to a financial transaction
between parties. As Appellants acknowledge, this was a known economic
practice in business to business transactions that was performed manually
(see, e.g., Spec. ,r,r 2--4, Reply Br. 6-7), and the claims merely apply this
practice to a computer. Thus, we are not persuaded that the Examiner erred
in finding that the claims are directed to a fundamental economic practice.
See also Credit Acceptance Corp. v. Westlake Services, 859 F. 3d 1044,
1054-55 (Fed. Cir. 2017) (finding ineligible claims directed to the abstract
idea of "processing an application for financing a purchase" and analogizing
the abstract idea to those of Alice and Bilski); buySAFE, Inc., 765 F.3d 1350
(finding ineligible claims directed to the economic practice of creating a
contractual relationship); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
13 59 (2015) ( finding abstract a method for pricing a product for sale).
We also agree with the Examiner that the claims are directed to a
method of organizing human activity. See Ans. 3--4; see also, e.g., Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266 (Fed. Cir. 2012)
( finding claims directed to the abstract idea of managing a life insurance
policy ineligible); Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336 (Fed. Cir. 2013) (finding ineligible claims directed to
generating rule-based tasks for processing an insurance claim).
Although the claimed steps are performed by a processing system,
Appellants fail to identify persuasively how the claims overcome a problem
necessarily rooted in computer technology. Rather, as discussed above, the
claims are directed to a technological solution to manual data entry. See,
e.g., Reply Br. 7. Merely automating a previously manual process does not
render an abstract idea patentable. For example, court decisions indicate
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"merely adding computer functionality to increase the speed or efficiency of
the process does not confer patent eligibility on an otherwise abstract idea."
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015); see also Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1057 (Fed. Cir. 1057) (quoting Capital One Bank,
792 F.3d at 1370); Alice, 134 S. Ct. at 2359 ("use of a computer to create
electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept); Bancorp Servs., L.L.C., 687 F.3d
at 1278 (Fed. Cir. 2012) ("[t]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter").
Appellants' contention that a lack of pre-emption renders the claims
patent eligible is equally unpersuasive to identify error. See App. Br. 20-21;
Ans. 9. Although "preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). We are instructed that "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the [Alice] framework ... ,
preemption concerns are fully addressed and made moot." Id.
Under step two of the eligibility analysis, the Examiner determines
that the claims do not include significantly more than the abstract idea.
Ans. 4. For example, the Examiner explains
The elements describe, under the broadest reasonable
interpretation, generic computer functions (receiving payment
data (invoices), storing, and managing transactions which is
similar to the abstract idea of collecting information, analyzing it
(managing, calculating, etc.,) and displaying certain results of
collection. . . . Thus the elements of the claim analyzed
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individually as an ordered combination does not provide
meaningful limitations to transform the abstract idea of
processing a payment transaction between buyers and a sellers
into a patent eligible application and does not provide
significantly more than the abstract idea itself.
Ans. 4.
Appellants assert that the claims amount to significantly more than the
judicial exception. See Reply Br. 10-12. Specifically, Appellants maintain
that the limitations of "'an invoice processor," "a payment manager," "an
issuer pricing engine," "an authorization and settlement interface," and "a
payment results processor""' are not generic computer functions. Reply
Br. 1 O; App. Br. 10. According to Appellants, "the features in the
Appellants' claims cannot be characterized as mere instructions to apply the
abstract idea itself." Reply Br. 11.
We disagree. Notably, the "transforming" components identified by
Appellants are merely generic computer components, such as processors, a
manager, and an interface. Under Alice, these generic components,
individually or as an ordered combination, do not transform the abstract idea
of the claims into patent eligible subject matter. See Alice, 134 S. Ct. at
2358. Namely, we agree with the Examiner that the computer system is
recited merely as a tool to implement the abstract idea. Ans. 4, 7-8; see also
Electric Power Group, LLC v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016)
(finding that conventional computer, network, and display technology for
gathering, sending and presenting information does not transform the
abstract idea to eligible subject matter). As such, we are not persuaded that
the Examiner erred in determining the claims do not add significantly more
to the claimed abstract idea.
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Appellants' arguments with respect to BASCOM Global Internet
Servs., Inc. v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016) is
similarly unavailing. See Reply Br. 9-10. Namely, as Appellants point out,
BASCOM was found to be significantly more than the abstract idea because
it was found to be a "technology-based solution." See Reply Br. 30
( discussing BASCOM). Appellants do not identify any similar technology
based solution here. As such, we are not persuaded of error in the Examiner
determination.
Accordingly, we affirm the Examiner's rejection of claims 26-38 and
46-48 as directed to patent-ineligible subject matter.
DECISION
We affirm the Examiner's decision to reject claims 26-38 and 46-48.
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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