Matt Steven. Canetto

Patent Trials and Appeals Board

Aug 7, 2019

13170142 - (D) (P.T.A.B. Aug. 7, 2019)

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.
13/170,142 06/27/2011 Matt Steven Canetto P-41587US01/090426-30148 3181
113349 7590 08/07/2019
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/07/2019 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATT STEVEN CANETTO1
____________________

Appeal 2018-005954
Application 13/170,142
Technology Center 3600
____________________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
NABEEL U. KHAN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellant, the real party in interest is VISA International
Service Association. See Br. 2.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–3, 7, and 10–32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
THE INVENTION
The claims are directed to a platform that, on a scheduled basis,
transfers user funds from a fund transferor’s account to a fund transferee’s
account. Abstract. Claim 1, reproduced below with bracketed labels added
corresponding to the Examiner’s numbering of limitations, is representative
of the claimed subject matter:
1. A processor-implemented fund transfer scheduling method,
comprising:
[(Step 1)] receiving from a user via a processor a fund
transfer scheduling request initiated from a fund transferor’s
prepaid account, being any of a prepaid credit card or a prepaid
debit card, loaded with funds via a first network and fund transfer
configuration parameters, said fund transferor’s prepaid account
comprising an account maintained and processed by an issuer
comprising at least one deposit thereto, said issuer being different
from the fund transferor, said fund transfer configuration
parameters including a fund transfer trigger condition, the fund
transferor’s account and a fund transferee’s account;
wherein the fund transfer trigger condition comprises
conditions associated with a fund availability in the fund
transferor's account;
[(Step 2)] verifying via the processor eligibility of the fund
transferee’s account in the fund transfer scheduling request based
on the fund transfer configuration parameters;

2 We refer to the Specification, filed June 27, 2011 and amended May 27,
2014 and November 16, 2015 (“Spec.”); Final Office Action, mailed
October 27, 2016 (“Final Act.”); Appeal Brief, filed April 12, 2017 (“Br.”);
and Examiner’s Answer, mailed January 29, 2018 (“Ans.”).
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determining via the processor when the fund transfer
trigger condition has occurred;
in response to the determining being positive,
[(Step 3)] generating via the processor a file in compliance
with a National Automated Clearing House Association
(NACHA) format for transfers from the fund transferor’s prepaid
account on a second network, said second network being
different from the first network;
[(Step 4)] initiating, in response to the generated file, via
the processor a fund transfer transaction from the fund
transferor’s account to the fund transferee’s account on the
second network in response to a satisfaction of the fund transfer
trigger condition of the fund transfer configuration parameters at
a one-time basis or a recurring time basis; and
[(Step 5)] generating via the processor a fund transfer
transaction record based on the initiated fund transfer
transaction.

REJECTIONS
Claims 1–3, 7, and 10–32 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 5–12.
Claims 1–3, 7, 10–24, and 30–32 stand rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite. Final Act. 13.

ANALYSIS
Except as noted, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 2–13) and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 3–8) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
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35 U.S.C. § 112
Appellant does not contest the rejection of claims 1–3, 7, and 10–24
and 30–32 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Accordingly, we summarily sustain the rejection. See MPEP § 1205.02 (“If
a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it . . . .”); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).

35 U.S.C. § 101
Appellant’s contentions are unpersuasive with regard to the rejection
of claims 1–3, 7, and 10–32 under 35 U.S.C. § 101. Section 101 defines
patentable subject matter: “Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C. § 101. The U.S.
Supreme Court, however, has “long held that this provision contains an
important implicit exception” that “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (quotation omitted). “Eligibility under
35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018).
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To determine patentable subject matter, we undertake a two part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the
claims at . . . a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each 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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step as 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.’” Id. (quoting Mayo, 566
U.S. at 72–73).
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The Office 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 that guidance, we look to
whether the claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101, and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
In connection with Step 2A the Examiner determines Steps 1–5 recite
receiving information, comparing data, generating a mathematical formula
or relationship, and comparing, organizing, storing, and transmitting
information that are abstract ideas. Final Act. 8. The Examiner further
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determines “collectively the claim as a whole also is determined to be
directed to an abstract idea which describes a [] concept of fund transfer
scheduling using a prepaid account. Transferring funds from one account
(transferor’s account) to another account (transferee’s account) is [an]
established business or economic concept.” Id. The Examiner cites several
U.S. Supreme Court and Federal Circuit cases3 in addition to a decision of
this Board4 in support of the determination. Id. at 9. According to the
Examiner, “the presence of specific narrow limitations in the claims (e.g.
verifying eligibility of the funds transfer scheduling request) does not make
the claim any less abstract.” Id.
In connection with Step 2B, the Examiner finds the claims recite the
process performed on a generic computer system performing “generic
computer functions which are well-understood, conventional and routine
functions and accordingly do not provide an inventive concept or amount to
significant more than the abstract idea itself.” Id. at 11–12.
Appellant contends “[the] independent claims . . . are not directed to
abstract ideas because they are directed embodiments of [the] claimed
invention that are focused on solving a specific technical problem associated
with prepaid accounts: lack of ability to transfer funds to checking or
savings accounts.” Br. 15. In particular, Appellant argues “the claims

3 Alice, 573 U.S. at 221 (intermediated settlement); Bilski v Kappos,
561 U.S. 593, 611 (2010) (risk hedging), Ultramercial, Inc. v Hutu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an exchange or
currency), Content Extraction & Transmission v. Wells Fargo Bank, Nat
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data collection), Accenture
Global Servs. v. Guidance Software Inc., 728 F.3d 1336, 1346 (Fed. Cir.
2013) (generating task in an insurance organization).
4 Metavante Corp. & Fidelity Nat’l Info. Servs. v. Cashedge Inc., Appeal No.
CBM2013-00028, 2014 WL 7330473, at *5 (PTAB Dec. 22, 2014).
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address a challenge (ability to perform fund transfer and/or schedule fund
transfer for prepaid accounts from a transferor account holder to a transferee
who does not yet have an account) particularly present in the prepaid
account and prepaid account funds transfer.” Id. at 15–16 (emphasis
omitted). Appellant contends the claims solve a technical problem of “how
to transfer funds for an account payable over a network using prepaid cards
in a secure manner according to a schedule.” Id. at 18.
Under Step 2B Appellant contends “the features in the claims are [sic]
amount to ‘significantly more’ than the abstract idea of funds transferring.
The claimed invention solve[s] a problem using a specific ordered
combination of rules.” Id. at 19 (emphasis omitted). Appellant argues the
claims include significantly more by requiring specific types of accounts, a
specific payment processing network, and a “specific combination of
ordered sequence to be performed before funds transfers are initiated and
processed.” Id. at 20–21. Appellant further argues the claimed “features
solve problems typically associated with prepaid account funds transfer.
Applicant respectfully submits that the claims satisfy this step’s analysis
because they have overcome the novelty and nonobviousness requirements
set forth in 35 U.S.C. §§ 102 and 103.” Id. at 21.
The Examiner responds:
the concept of scheduling transferring of funds from one account
(transferor’s account) to another account (transferee’s account)
relates to agreement between people or performance of a
financial[] transaction. This concept is deemed as an abstract
idea because similar concepts relating to agreements between
people or performance of financial transactions abstract, such as
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creating a contractual relationship (buySAFE[5]), and hedging
(Bilski[6]) have been found to be abstract ideas.
Ans. 5. The Examiner also finds Appellant’s comparison of the rejected
claims to those found patent-eligible in DDR7 to be inapposite. Id. The
Examiner disagrees the claims are necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of
computer networks. Id. Instead, the Examiner finds “the [claimed]
functions of ‘receiving’, ‘verifying’, ‘determining’, ‘generating’ and
‘initiating’ as being performed ‘via’ some unspecified processor and the first
and the second network do not meaningfully limit the abstract idea that
improve the processor functionality or improve any other technology, since
these additional elements merely amount to adding the words ‘apply it’ to
the abstract idea.” Id. at 6. The Examiner further finds unpersuasive
Appellant’s argument the claims are technical in nature because they are not
rejected over the prior art under 35 U.S.C. §§ 102 or 103. Id. at 7 (citing
Ultramercial, 772 F.3d at 716 (the fact that a method was “not previously
employed in this art is not enough—standing alone—to confer patent
eligibility upon the claims”)).
Appellant’s contentions of error are unpersuasive for the following
reasons.
USPTO Step 2A, Prong 1
Claim 1 recites steps of receiving, verifying, determining, generating,
and initiating. We agree with the Examiner the receiving step is the receipt

5 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
6 In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), affd on other
grounds sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010).
7 DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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of information (Final Act. 4) and, therefore, includes making an observation
which is a mental process. The verifying step includes an evaluation which
is also a mental process and a business relationship that is a commercial or
legal interaction (i.e., eligibility of the fund transferee’s account). We
further agree with the Examiner the step of generating a file in compliance
with a NACHA format to transfer funds amounts to performing a
mathematical relationship or using a formula. Initiating a fund transfer and
generating a fund transfer transaction record are performances of an
agreement in the form of contracts and, therefore, commercial or legal
interactions and are also fundamental economic practices, both of which are
certain methods of organizing human behavior.
Appellant’s Specification explains:
[T]his disclosure discusses the application of the [Scheduled
Funds Transfer Platform or] SFT PLATFORM to provide
cardholders with the ability to configure scheduled recurring
funds transfers from their reloadable prepaid cards to a checking
or savings account. Using the SFT PLATFORM, a cardholder
may specify a given amount of a transfer to occur after a load or
deposit is received on a prepaid card and/or may specify that an
entire load/deposit amount be transferred after it has been
received.
Spec. ¶ 17. Thus, consistent with the Specification, the claims recite
the concept of scheduling a transfer of funds from one account
(transferor’s account) to another account (transferee’s account) which,
as determined by the Examiner, is an agreement between people or
performance of a financials transaction, these concepts involving
mental processes and certain methods of organizing human activity,
both of which are abstract ideas.
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USPTO Step 2A, Prong 2
We are unpersuaded the claims integrate the judicial exception into a
practical application. The claims, although reciting specific actions for
scheduling a transfer of funds from one account to another account, only
generally link the use of the recited concept to a particular technological
environment, e.g., computerized testing of electronic devices. See Smart
Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1373 (Fed.
Cir. 2017) (“merely limiting the field of use of the abstract idea to a
particular . . . environment does not render the claims any less abstract”);
Bilski, 130 S. Ct. at 3231 (“limiting an abstract idea to one field of use . . .
did not make the concept patentable”); MPEP § 2106.05(h) (claims only
generally linking the use of a judicial exception to a particular technological
environment or field of use are insufficient to constitute significantly more
than a judicial exception).
Appellant’s contention that the claims are rooted in computer
technology is unsupported by sufficient evidence or explanation to be
persuasive. Appellant fails to direct attention to and we do not ascertain any
technological aspect recited by the claims other than the generic automation
of a manual process of performing a scheduled transfer of funds from one
account to another. Thus, rather than being directed to a technological
improvement or addressing a technological problem, the claims are directed
to an established business concept and fundamental economic practice and,
accordingly, a certain method or organizing human activity that is an
abstract idea.
We are also unpersuaded by Appellant’s contention the claimed
invention solves a technical problem involved in transferring funds from a
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prepaid account to a checking or savings account. Br. 15. Mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Nor can such argument take the place of evidence lacking in
the record. Furthermore, Appellant’s contention that the claims address a
challenge in transferring funds to a transferee who does not yet have an
account (Br. 15–16) is not commensurate in scope with the claims which do
not include any such requirement. Similarly, Appellant’s contention the
claims solve a technical problem of how to transfer funds in a secure manner
is likewise not commensurate in scope with the claims.
For the reasons discussed, the claims do not include additional
elements that integrate the judicial exception into a practical application
because the additional elements do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.05(a)–(c), (e)–(h). Instead, any improvement is to the
underlying idea of scheduling the transfer of funds between accounts. Thus,
claim 1 does not integrate the judicial exception into a practical application.
USPTO Step 2B
Finally, we agree with the Examiner the recited process of a scheduled
transfer of funds between accounts “is implemented on a generic computer
[a processor] using generic programing methods.” Final Act. 11 (citing
Spec. ¶ 234; bracketing in original). Furthermore, in the absence of
sufficient evidence or argument to the contrary, we agree with the Examiner
the functions performed “are generic computer functions which are well-
understood, conventional and routine functions and accordingly do not
provide an inventive concept or amount to significant more than the abstract
idea itself.” Id. at 12. As the Federal Circuit has held, “the use of
conventional computer components, such as a database and processors,
operating in a conventional manner” “do[es] not confer patent eligibility.”
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015). This is because “mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
We, therefore, determine that the limitations of claim 1 do not add
significantly more to the patent-ineligible abstract idea.
Accordingly, for the reasons discussed, the claims are directed to
(i) mental processes and/or (ii) certain methods organizing human activity,
i.e., fundamental economic principles or practices. Both mental processes
and certain methods of organizing human behavior are identified in the
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Memorandum as abstract ideas. Furthermore, the claims do not recite
limitations that amount to significantly more than the abstract idea itself.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 101 and, for the same reasons, the rejection of independent
claims 25–27 and 30, together with dependent claims 2, 3, 7, and 10–24, 28,
29, 31, and 32, which are not argued separately with particularity.

DECISION
We affirm the Examiner’s decision to reject claims 1–3, 7, and 10–32
under 35 U.S.C. § 101.
We affirm the Examiner’s decision to reject claims 1–3, 7, 10–24, and
30–32 under 35 U.S.C. § 112, second paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED