Ex Parte Weiss

Patent Trial and Appeal Board

Oct 20, 2017

13779970 (P.T.A.B. Oct. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/779,970 02/28/2013 Jessica M. Weiss WeCareCard-1-530-11896 6851
77741 7590 10/24/2017
Rrannnn Sowers; Rr rYarraft PP
EXAMINER
1 North Pennsylvania Street
Suite 800
NORMAN, SAMICA L
Indianapolis, IN 46204 ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/24/2017 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):
docket @ bscattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSICA M. WEISS
Appeal 2015-007799
Application 13/779,970
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant1 seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—10 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 Appellant identifies Weiss Enterprises, Inc., as the real party in interest
(App. Br. 1).
Appeal 2015-007799
Application 13/779,970
THE INVENTION
The Appellant’s claimed invention is directed to a multi-source debit
card system which allows multiple individuals to provide funds to a single
card (Spec., para. 5). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A server for providing an interface for a multisource
debit card, said server comprising:
a processor adapted for connection to and communication
over a network;
memory associated with said processor; and
transaction processing module, said transaction
processing module being stored in said memory and executable
by said processor to allow a first individual to engage in an
electronic commerce procedure to create a debit card for a
second individual, said transaction processing module including
further funding module stored in said memory and executable
by said processor to allow a third individual, the third
individual being separate and distinct from the first individual
and the second individual, to provide funding for the debit card.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—10 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1, 2, 6, and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by Morse (US 2009/0089211 Al, published Apr. 2, 2009).
3. Claims 3—5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Morse and Call (US 2006/0175396 Al, published
Aug. 10, 2006).
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Appeal 2015-007799
Application 13/779,970
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellant argues that the rejection of claim 1 is improper because
the subject matter adds substantially more than the alleged abstract idea and
that the claimed function of the modules “are not generic processes” (Reply
Br. 5). The Appellant also makes citations to the Declarations of Camarillo,
Baunis, and Whalen to make this argument (Reply Br. 5—6).
In contrast, the Examiner has determined that rejection is proper (Ans.
6-7).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-007799
Application 13/779,970
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept,” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
Here, we find that the claim is directed to the abstract concept of
funding an account by different users. This is a fundamental economic
practice long prevalent in our system of commerce, and is an abstract idea
beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
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Appeal 2015-007799
Application 13/779,970
We have considered the Declarations cited in the Reply Brief at pages
5 and 6, but this does not change our determination that the claims are
directed to non-statutory subject matter.
Here, the claim is not rooted in technology, but rather in the abstract
concept of funding an account by different users.
For these reasons, the rejection of claim 1 is sustained. The Appellant
does not argue the remaining claims separately and the rejection of these
claims is sustained as well.
Rejection under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 102(b) is improper because it fails to disclose the elements of the claimed
system (App. Br. 15). The Appellant also has supplied and cited to the
Declarations of Camarillo, Rinearson, Baunis, Jackman, and Whelan to
bolster this contention (App. Br. 15—19; Reply Br. 2—4).
In contrast, the Examiner has determined that the limitations of the
claim are disclosed by Morse at para. 19, lines 4—12 (Ans. 2—3).
We agree with the Appellant. Here, the claim requires the transaction
module to allow a first, second, and third individual to engage in the process
of the processing module. The citation to Morse at para. 19 makes reference
to Figure 2 which only shows two parties, a payer and payee in the
transaction. While Morse at para. 19 does state that Figure 2 shows that a
party can set up an account for “others,” the disclosure at Figure 2 only
shows a payer and payee in the system as mentioned, without a third party.
Thus, the term “others” is considered to refer to the other people that may
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Appeal 2015-007799
Application 13/779,970
serve as the single chosen payer in the system. Here, it is not specifically
disclosed in paragraph 19 and its associated Figure 2, that a third individual
is used in the process beyond conjecture into probabilities and possibilities,
which cannot support the conclusion of anticipation. For this reason, the
rejection of claim 1 and its dependent claims under 35 U.S.C. § 102(b) is not
sustained.
With regard to the rejection of claims 3—5 under 35 U.S.C. § 103(a),
the citation of Call in the Answer at pages 3—5 fails to cure the deficiency in
Morse made above in the rejection of record. Accordingly, this rejection is
not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1—10 are rejected under 35 U.S.C. § 101,
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a)
as listed in the Rejections section above.
DECISION
The Examiner’s rejection of claims 1—10 is sustained.
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). See
37 C.F.R. §41.50(f).
AFFIRMED
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