Jucht, Scott J. et al.

Patent Trials and Appeals Board

Aug 19, 2020

12731852 - (D) (P.T.A.B. Aug. 19, 2020)

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.
12/731,852 03/25/2010 Scott J. Jucht 0058052.000120 (T025A) 1925
35979 7590 08/19/2020
Bracewell LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
docketing@bracewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT J. JUCHT and TRENT SORBE
Appeal 2019-001644
Application 12/731,852
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JOHN F. HORVATH,
and SCOTT RAEVSKY, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 41–57. Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Metabank. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The invention is directed to a computer-implemented method for
“enabling movement of funds from a bank account to a payee after a request
verification using text messaging for mobile banking.” Spec. ¶ 1.
Claim 52, reproduced below, is illustrative of the claimed subject
matter:
52. A computer-implemented method to cause one or more
computers, configured as a bank server and having one or more
tangible, non-transitory computer memories associated
therewith, to perform by one or more computer processors a
process of confirming a funds movement request received in
Short Message Service (SMS) format from a mobile device is
valid and a process of executing the funds movement request,
the computer-implemented method comprising:
pre-configuring by the one or more computer processors a
customer account responsive to a first custom identifier and a
second custom identifier, the pre-configuring including:
associating a mobile phone number of the mobile device
with the customer account,
associating the first custom identifier with a first account
number of a debit account, and
associating the second custom identifier with a second
account number of a credit account;
receiving, over the SMS network, by the one or more computer
processors a funds movement request in SMS format, the funds
movement request including a phone number of the mobile
device, the first custom identifier, the second custom identifier,
and a transaction amount;
determining by the one or more computer processors,
responsive to the funds movement request, the customer
account that is associated with the phone number, the debit
account that is associated with the first custom identifier, and
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the credit account that is associated with the first custom
identifier;
generating by the one or more computer processors a funds
movement verification request in SMS format, the funds
movement verification request including a mobile phone user
request to approve the funds movement request with a
verification response in SMS format;
sending, over the SMS network, by the one or more computer
processors the funds movement verification to the mobile
device; and
authorizing by the one or more computer processors, responsive
to receiving the verification response from the mobile device, a
movement of funds from the debit account to the credit account.
REJECTIONS
Claims 41–57 stand rejected under 35 U.S.C. § 101 as directed to non-
patentable subject matter. Final Act. 2–11.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). Appellant argues for the patent eligibility of claims
41–57 as a group. Appeal Br. 7–17. We select claim 52 as a representative
claim and review the rejection of claims 41–57 based on our analysis of the
rejection of claim 52. See 37 C.F.R. § 41.37(c)(iv). Any arguments not
raised by Appellant are waived. Id.
We have reviewed the Examiner’s rejection of claims 41–57 in light
of Appellant’s arguments that the Examiner has erred. We are not persuaded
by Appellant’s arguments, and sustain the Examiner’s rejection for the
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reasons stated in the Final Action and Answer, which we adopt as our own.
We highlight the following for emphasis.
Principles of law
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.”
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. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within a judicially 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)). Accordingly,
we first determine the concept to which the claim is directed. See Alice, 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 that have been determined to be patent ineligible abstract
ideas 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 (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Concepts that have been determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
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(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 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))).
If a claim is “directed to” an abstract idea, we turn 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.
The PTO has published guidance on the application of § 101 to
patentability determinations. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“PEG”). Under step 1
of that guidance, we first determine whether the claim recites a statutory
class (i.e., a process, machine, manufacture, or composition of matter). Id.
at 53–54. If it does not, it is not patent eligible. If it does, we next
determine whether the claim recites:
Step 2A – Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, such as a
fundamental economic practice, or mental processes).
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Id. at 52, 54. If the claim does not recite a judicial exception, it is patent
eligible. Id. at 54. If it does, we next determine whether the claim recites:
Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see Manual of
Patent Examining Procedure (MPEP) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08-2017 (Jan. 2018)).
84 Fed. Reg. at 54–55. If the claim integrates a judicial exception into a
practical application, it is patent eligible. Id. If it does not, we next
determine whether the claim recites:
Step 2B: additional elements beyond the judicial exception that
are more than “well-understood, routine, conventional”
elements in the field (see MPEP § 2106.05(d)).
Id. at 56. If the claim adds more than well-understood, routine, and
convention additional elements, it is patent eligible. Id. If it does not, it is
not patent eligible. Id.
Rejection under 35 U.S.C. §101
The Examiner rejects claim 52 as patent ineligible because it is
“directed to non-statutory Subject matter.” Final Act. 2.
2019 PEG Step 1
Under step 1 of the subject matter eligibility guidance, we first
determine whether the claims recite a statutory class (i.e., a process,
machine, manufacture, or composition of matter). 84 Fed. Reg. at 53–54.
Claims 41–45 recite machines, claims 46–51 recite manufactures (computer
program products), and claims 52–57 recite processes (computer-
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implemented methods). See Appeal Br. 19–27 (Claims App’x.). Thus,
claims 41–57 recite patent-eligible statutory classes. Accordingly, we next
consider whether the claims recite judicial exceptions under step 2A, prong
one.
2019 PEG Step 2A, prong one
Under step 2A, prong one of the eligibility guidance, we determine
whether a claim recites a judicial exception such as an abstract idea, law of
nature, or natural phenomenon. 84 Fed. Reg. at 54. This involves
(1) identifying the limitations in the claim (either individually or in
combination) that recite an abstract idea, and (2) determining whether the
identified abstract idea falls within one of the subject matter groupings
consisting of (a) mathematical concepts (relationships, formulas, equations,
or calculations), (b) methods of organizing human activity (fundamental
economic practices, commercial or legal interactions, or managing behavior
or relationships), and (c) mental processes (concepts performed in the mind
such as observation, evaluation, judgment, and opinion). Id. at 52.
The Examiner finds all the steps of claim 52, taken together as an
ordered combination, recite the judicial exception of organizing human
activity in the form of commercial or legal interactions, e.g., “creating and
fulfilling contractual relationships.” Final Act. 5 (citing buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)). The Examiner further finds
each of the individual steps of claim 52 recites one or more judicial
exceptions, such that the claim as a whole recites a judicial exception. Id. at
3–5. For example, the Examiner finds associating a customer account with a
mobile phone number, a first identifier with a debit account, and a second
identifier with a credit account recites the judicial exceptions of “organizing
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information through mathematical correlations” or “collecting information,
analyzing it, and displaying certain results.” Id. at 3–4 (citing Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). The Examiner finds receiving an SMS request from a mobile
number containing first and second identifiers and a transaction amount
recites the judicial exception of “data recognition and storage . . . obtaining
and comparing intangible data . . . and collecting and comparing known
information.” Id. at 4 (citing Content Extraction and Transmission, LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2017);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed.
Cir. 2011)). The Examiner finds determining the customer, debit, and credit
accounts associated with the mobile number and first and second identifiers
recites the judicial exceptions of “organizing information through
mathematical correlations” or “collecting information, analyzing it, and
displaying certain results.” Id. (citing Digitech 758 F.3d at 1244; Elec.
Power, 830 F.3d at 1350). Finally, the Examiner finds sending a verification
message to the mobile device and authorizing a movement of funds from the
debit to the credit account recites the judicial exceptions of “collecting
information, analyzing it, and displaying certain results” or “creating and
fulfilling contractual relationships.” Id. at 4–5 (citing Elec. Power, 830 F.3d
at 1350; buySAFE 765 F.3d at 1350).
Appellant argues the Examiner erred because “the claims are directed
to an improvement in computer functionality or other technology,” namely,
to “improvements in mobile banking . . . that address problems with SMS
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used in mobile banking.” Appeal Br. 8 (citing Spec. ¶¶ 3–4). Appellant
argues the claims improve mobile banking by associating a “mobile phone
number” with first and second custom identifiers rather than first and second
account numbers, which “eliminates the use of ‘unencrypted account
numbers being sent in text messages.’” Id. at 9–10 (citing Spec. ¶ 8; Claims
App’x).
Appellant further argues the Examiner erred because the cases cited
by the Examiner as evidence that the claims recite judicial exceptions “do
not support the conclusions in the Final Office Action that various claim
elements are abstract ideas.” Id. at 8. For example, Appellant argues, the
claims do not recite judicial exceptions because they are not directed to a
“device profile” like the claims in Digitech, are “not directed to the
generation of menus or a graphical user interface” like the claims in
Ameranth, but are instead directed to “a particular solution that uses a
particular arrangement of identifiers and SMS messages,” which
distinguishes them over the claims found ineligible in Electric Power. Id. at
11–12.
We are unpersuaded by Appellant’s arguments, and agree with the
Examiner that one or more limitations in claim 52, as well as claim 52 as a
whole, recite judicial exceptions. As a preliminary matter, we agree with the
Examiner that when claim limitations are identified as reciting a judicial
exception, “the concepts embedded in the claims/limitations are compared
with the concepts taught by the cited court case[s].” Ans. 8. Thus, the
claims may recite judicial exceptions without reciting a “device profile” like
the claims in Digitech or a graphical interface like the claims in Ameranth.
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The Examiner finds the claim limitations reciting the steps of
associating various customer accounts with mobile phone numbers and
identifiers fall under the judicial exception of collecting and analyzing
information. See Final Act. 3–4. They likewise fall under the “mental
processes” judicial exception expressly recognized in the 2019 PEG because
a person using pen and paper to associate phone numbers (e.g., home, cell)
as well as identifiers (e.g., debit, credit) with particular account numbers is
using “mental processes” to collect and analyze that information. See 84
Fed. Reg. at 52.
Moreover, as the Examiner also finds, claim 52 as a whole recites a
method for requesting and authorizing the transfer of funds between
accounts. See Final Act. 5. Thus, claim 52 recites the judicial exception of
“organizing human activity” in the form of fundamental economic,
commercial or legal interactions, which the 2019 PEG also expressly
recognizes as reciting a judicial exception. Id.; see also 84 Fed. Reg. at 52.
Accordingly, having determined that claim 52 recites one or more
judicial exceptions, we next consider whether the claim is “directed to”
those judicial exceptions or instead integrates them into a practical
application. See 84 Fed. Reg. at 54–55.
2019 PEG Step 2A, prong two
Under step 2A, prong two, a claim that recites a judicial exception is
not “directed to” that judicial exception if the claim as a whole “integrates
the recited judicial exception into a practical application of the exception.”
Id. at 54. This involves (a) identifying whether the claim recites elements in
addition to the judicial exceptions, and (b) determining whether these
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additional elements individually and in combination integrate the judicial
exceptions into a practical application. Id. at 54–55.
Additional elements integrate judicial exceptions into a practical
application when they (i) improve the functioning of a computer or some
other technology, (ii) effect a particular treatment or prophylaxis for a
disease or medical condition, (iii) implement or use the judicial exceptions
in conjunction with particular machines or manufactures that are integral to
the claim, (iv) transform or reduce a particular article to a different state or
thing, or (v) do more than merely link the judicial exceptions to a particular
technological environment. Id. at 55. Additional elements do not integrate
judicial exceptions into a practical application when they (i) merely include
instructions to implement the judicial exceptions on a computer, (ii) add
insignificant pre- or post-solution activity, or (iii) do no more than link the
judicial exceptions to a particular technological environment. Id.
The Examiner finds the elements of claim 52 that do not recite judicial
exceptions are “one or more computer servers suitably programmed to
execute the claimed steps,” and that these elements “do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer itself.” Final Act. 6; Ans. 5–6.
Appellant disagrees, and argues claim 52 recites “significantly more”
than judicial exceptions because it “effect[s] an improvement in another
technology or technical field,” specifically, “the technology or technical
field of mobile banking.” Appeal Br. 13–14. For example, Appellant argues
claim 52 recites associating “two custom identifiers . . . with different
accounts . . . to facilitate a fund movement without the security concerns and
disadvantages present in existing systems.” Id. at 14. Appellant further
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argues that by reciting the use of SMS messaging and mobile devices,
claim 52 is patent eligible because it is “rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Id. at 16 (quoting DDR Holdings LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257–58 (Fed. Cir. 2014)). Appellant further argues claim 52 is
patent eligible because it recites “unconventional steps that confine it to a
particular useful application,” i.e., because “the ‘mobile phone number,’
‘first custom identifier,’ and ‘second custom identifier,’ and the messages
over an SMS network have not previously been used or arranged in the
manner recited in the claim.” Id. at 17.
We are unpersuaded by Appellant’s arguments, and agree with the
Examiner that the claim 52 limitations that recite judicial exceptions are
directed to those judicial exceptions. Contrary to Appellant’s contentions,
none of the limitations of claim 52, whether considered individually or as an
ordered combination, improves the functioning of a computer or some other
technology. Rather, they simply link the recited judicial exceptions to a
technological environment, i.e., “cellular networking” or “mobile banking.”
See 84 Fed. Reg. at 55.
As noted above, associating identifiers with account numbers and
using the identifiers to determine the account numbers with which they are
associated recite the judicial exceptions of “collecting and analyzing”
information, which can be purely “mental processes.” Sending these
identifiers over cellular networks using mobile phones and SMS messaging
to conduct mobile banking does not improve cell phones, cellular networks,
SMS messaging or mobile banking. It simply links these judicial exceptions
to the “mobile banking” or “cellular networking” environment. Thus, we
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agree with the Examiner that although Appellant argues “the invention is
trying to solve the security problems with SMS when used in the context of
mobile banking, the claims, as recited, are directed to confirming the validity
of a funds movement request.” Ans. 4.
For example, except for the fact that claim 52 requires the use of a
bank server or computer, the method of claim 52 can be performed entirely
by two humans, Alice and Bob. Bob knows Alice’s phone number, as well
as the numbers of her savings and checking accounts, over which he has
powers of attorney (the associating steps). Bob receives a text from Alice
asking him to transfer a sum from her savings to her checking account, and
the text does not include the account numbers, which Bob knows (the
receiving and determining steps). Bob texts her back, asking, “Are you sure
you want to transfer that much?” (The generating and sending steps). Alice
replies, “yes,” after which Bob goes to her bank and transfers the money as
requested (the authorizing step). Thus, claim 52 is “directed to” the judicial
exceptions identified by the Examiner because it simply links the judicial
exceptions to a particular technological environment, mobile banking via
text messaging.
Accordingly, having determined that claim 52 is “directed to” the
judicial exceptions identified by the Examiner, i.e., the “mental processes”
of collecting and analyzing information (associating or correlating phone
numbers and identifiers with account numbers) and “organizing human
activity” (engaging in a fundamental economic, commercial or legal
interaction such as authorizing a fund transfer between accounts), we next
consider whether claim 52 contains additional elements that, individually or
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as an ordered combination, are more than well-understood, routine, or
conventional. See 84 Fed. Reg. at 56.
2019 PEG Step 2B
Under step 2B, a claim that is “directed to” a judicial exception may
nonetheless be patent eligible if it recites additional elements that, when
considered both individually and as an ordered combination, provide an
inventive concept. Id. An inventive concept may be present if the claim
adds an additional limitation that is not a well-understood, routine, or
conventional element in the field of endeavor. Id. However, an inventive
concept is not present if the claim adds an additional limitation that is well-
understood, routine, or conventional in the field of endeavor, specified at a
high level of generality. Id.
The Examiner finds the additional limitations in claim 52 (e.g., “one
or more computer servers suitably programmed to execute the claimed
steps”) are used to “execute in a manner routinely and conventionally
expected of these elements’ and “do not add anything significantly more
than an abstract idea.” Final Act. 6–7. Appellant argues the Examiner’s
rejection must fail because the Examiner “did not provide evidence that the
elements of the independent claims are ‘well-understood, routine and
conventional.’” App. Br. 15 (citing Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018)). The Examiner then clarifies that the additional
elements are conventional because Appellant’s Specification describes them
as generic, commercially available, computers, servers, cell phones, and
networks. Ans. 5 (citing Spec. ¶¶ 2, 29, 43, 44, Figs. 3, 7, 12, 13).
We agree with the Examiner and are not persuaded by Appellant’s
arguments. Claim 52 requires one or more computers acting as a bank
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server to store customer information (phone numbers, account numbers and
identifiers), receive an SMS message over an SMS network, generate and
send a verification request message over the SMS network, and authorize a
funds transfer based on a received response to the verification request
message. The Specification describes the bank server generically, i.e., as “a
computer, a server, or a machine of distributed computers or server[s] that at
least include memory 212, program product 221, processor 214, [and]
input/output device . . . (“I/O”) 215, as shown in Figure 7.” Spec. ¶ 43. The
“I/O device can be any I/O device.” Id. “Processor 214 can be any
commercially available processor.” Id. ¶ 44. Memory 212 can be any kind
of memory, including “both non-volatile memory, e.g., hard disks, flash
memory, optical disks, and the like, and volatile memory, e.g., SRAM,
DRAM, SDRAM, etc.” Id. ¶ 45.
For these reasons, when the additional limitations recited in claim 52
are considered both individually and as an ordered combination, they fail to
“‘transform the nature of the claim’ into a patent-eligible application.’”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78). Accordingly, we
agree with the Examiner that claim 52 is patent ineligible under 35 U.S.C.
§ 101 and sustain the Examiner’s rejection of claim 52 and of claims 41–51
and 53–57, which are not separately argued.
CONCLUSION
The Examiner’s rejection of claims 41–57 as directed to unpatentable
subject matter is sustained.
DECISION SUMMARY
In summary:
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Claims
Rejected
35 U.S.C. § References / Basis Affirmed Reversed
41–57 101 Eligibility 41–57

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED