Mondo Jacobs et al.

Patent Trials and Appeals Board

Mar 2, 2020

13826121 - (D) (P.T.A.B. Mar. 2, 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.
13/826,121 03/14/2013 Mondo Jacobs 079900-0868495-279US02 8577
66945 7590 03/02/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONDO JACOBS, RICHARD EASTLEY, DAVID MEANEY,
VAISHALI RAO, and DAVID TSESLSKY
Appeal 2018-004354
Application 13/826,121
Technology Center 3600
Before ERIC B. CHEN, IRVIN E. BRANCH, and MICHAEL M. BARRY,
Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/826,121
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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “automated accounts payable systems that
incorporate automated controls on payment account (e.g., payment card
account) processing.” Spec. ¶ 8. Claim 1, reproduced below with
annotations to identify specific limitations, is illustrative of the claimed
subject matter:
1. A method comprising:
[a] receiving, by a payables processor system, a payment
instruction file from a buyer, wherein the payment instruction file
contains one or more payment instructions to pay one or more
suppliers, and conditional control data associated with the one or
more payment instructions such that the conditional control data
is received from the buyer concurrently with the one or more
payment instructions, the conditional control data controlling
execution of the payment instructions;
[b] sending, by the payables processor system, the
conditional control data associated with the one or more payment
instructions to a conditional control system;

1 We refer to the Specification, filed May 22, 2013 (“Spec.”); Final Office
Action, mailed May 17, 2017 (“Final Act.”); Appeal Brief, filed November
22, 2017 (“Appeal Br.”); Examiner’s Answer, mailed January 18, 2018
(“Ans.”); and Reply Brief, filed March 19, 2018 (“Reply Br.”).

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Visa International
Service Association. Appeal Br. 2.
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[c] storing, by the conditional control system, the
conditional control data associated with the one or more payment
instructions;
[d] sending, by the payables processor system, one or more
remittance notifications corresponding to the one or more
payment instructions to the one or more suppliers;
[e] receiving, by a payment processing server computer,
one or more transaction messages from the one or more
suppliers, the one or more transaction messages corresponding to
the one or more remittance notifications, respectively, wherein
each transaction message in the one or more transaction
messages is associated with a transaction conducted using one or
more payment accounts, the one or more payment accounts held
by one or more issuers;
[f] interfacing, by the payment processing server
computer, with the conditional control system upon receiving the
one or more transaction messages, the interfacing including:
[f1] retrieving, by the payment processing server
computer from the conditional control system, the
conditional control data associated with the one or more
payment instructions corresponding to the one or more
transaction messages from the conditional control system;
[g] determining, by the payment processing server
computer, whether transaction data in a transaction message
among the one or more transaction messages satisfies the
conditional control data associated with the payment instruction
corresponding to the transaction message;
[h] if the transaction data in the transaction message
among the one or more transaction messages does not satisfy the
conditional control data associated with the payment instruction
corresponding to the transaction message, then:
[h1] declining, by the payment processing server
computer, the transaction associated with the transaction
message, and
[h2] transmitting, by the payment processing server
computer, a transaction response message declining the
transaction to at least one of the one or more suppliers;
[i] if the transaction data in the transaction message among
the one or more transaction messages satisfies the conditional
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control data associated with the payment instruction
corresponding to the transaction message, then:
[i1] processing, by the payment processing server
computer, the transaction message by authorizing the
transaction associated with the transaction message,
[i2] transmitting, by the payment processing server
computer, the transaction message to the issuer, and
[i3] removing, by the payment processing server
computer, from the conditional control system, the
conditional control data associated with the payment
instruction corresponding to the transaction message
based on the authorized transaction;
[j] determining, by the payment processing server
computer, that at least one of the one or more payment
instructions in the payment instruction file is expired; and
[k] removing from the conditional control system, by the
payment processing server computer, the conditional control
data associated with expired payment instruction.
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 3–6.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We have only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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ANALYSIS3
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments. To the extent consistent with our analysis herein, we adopt as
our own the findings and reasons set forth by the Examiner in (1) the action
from which this appeal is taken (Final Act. 3–6) and (2) the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 3–9) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
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).
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

3 Because Appellant argues all claims collectively, we analyze claim 1 and,
except for our ultimate decision, we do not further address the remaining
claims,
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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) (citation omitted). 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).
In 2019, the Office published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance” or “Guidance”); see
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also USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019)
(“Update”). Under the Revised 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, 84 Fed. Reg. at 52, 55, 56. Under the Revised 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.
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USPTO Step 2A, Prong 1
We agree with the Examiner’s determination that claim 1 is directed
to an abstract idea, a judicial exception under the Guidance. Ans. 4–6.
Claim 1 recites various steps. See supra (limitations [a]–[k]
(“receiving,” “sending,” “storing,” “retrieving,” “processing,” etc.)). Other
than the use of the claimed “payables processor system,” “conditional
control system,” and “payment processing server computer,” these
limitations set forth a process of accounts payable processing. See Spec. ¶ 8.
These limitations recite collecting, analyzing, and outputting data, and they
reasonably can be characterized as “[m]ental processes” that entail steps of
“observation, evaluation, judgment, opinion.” Memorandum 84 Fed Reg. at
52; see also Update at 7; Ans. 7; Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (“The focus of the asserted claims . . . is on
collecting information, analyzing it, and displaying certain results of the
collection and analysis”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1094 (Fed. Cir. 2016) (Determining as abstract the claims which “are
directed to collecting and analyzing information”); see also Update at 8
(“The courts have found claims requiring a generic computer or nominally
reciting a generic computer may still recite a mental process even though the
claim limitations are not performed entirely in the human mind.”).
Moreover, limitations [a]–[k] describe a method to address the
problem that, “during [an] accounts payable process, [a] supplier . . . may
inadvertently . . . charge an amount . . . different than the amount authorized
by [a] buyer,” which “can cause reconciliation problems.” Spec. ¶ 6. Thus,
these limitations reasonably can be characterized as reciting “mitigating
risk,” “agreements in the form of contracts; legal obligations; . . . business
relations,” and “following rules or instructions.” Memorandum, 84 Fed Reg.
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at 52. The claim thus recites “fundamental economic principles or
practices,” “managing personal behavior or relationships or interactions
between people,” and “commercial or legal interactions,” which are
“[c]ertain methods of organizing human activity.” Memorandum, 84 Fed
Reg. at 52; Update at 5; see also Accenture Glob. Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (“The
abstract idea at the heart of system claim 1 . . . is “generating tasks [based
on] rules . . . to be completed upon the occurrence of an event”) (internal
quotations and citation omitted).
Appellant argues that “[t]he sheer length of the claim language quoted
by the Examiner and the concepts encompassed [] therein suggest that the
claims are ‘concrete,’ and are not ‘abstract.’” Appeal Br. 8. Appellant also
argues that “the Examiner’s improper abstraction of what the present claims
actually recite is much more egregious than the improper abstraction that
occurred in Enfish. Id. at 11. Appellant, however, does not point to any
specific limitation in claim 1 that amounts to an “improper abstraction.” See
id. at 12 (quoting the entirety of claim 1).
Accordingly, we conclude the claims recite a judicial exception under
Prong One of the Guidance. See Memorandum, 84 Fed Reg. at 54.
USPTO Step 2A, Prong 2
Appellant argues error “because the claims address a problem arising
in the realm of computer networks and provide a solution entirely rooted in
computer technology.” Appeal Br. 13 (citing Bascom Global Internet v.
AT&T Mobility LLC (2015-1763) (Fed. Cir. 2016)). Appellants contend that
“embodiments of the invention provide for technical improvements over
conventional accounts payable computer systems by reducing the likelihood
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that erroneous payments will be made, thereby reducing or eliminating
reconciliation problems,” and that “[t]he technical solution provided by
embodiments of the invention is also implemented using a distributed
computer system.” Id. at 14.
We are not persuaded the Examiner’s rejection is in error under Prong
Two of Step 2A of the Guidance. Guidance 13. The embodiments and
features upon which Appellant relies are solutions to a business problem and
do not comprise additional elements, individually or in combination, that
integrate the exception into a practical application. See Memorandum, 84
Fed. Reg. at 54, 55. That is, even considering the use of the claimed
“payables processor system,” “conditional control system,” and “payment
processing server computer,” these additional elements do not remove the
claims from the realm of ineligible subject matter because they amount to
“merely include[ing] instructions to implement an abstract idea on a
computer, or merely using a computer as a tool to perform an abstract idea.”
Memorandum, 84 Fed. Reg. at 55; see also Spec. Fig. 2; ¶¶ 47–48, 52–54,
84–88.
Accordingly, the claims do not include additional elements that
integrate the judicial exception into a practical application because the
additional elements: (1) do not 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 MPEP
§ 2106.05(a)–(c), (e)–(h). Instead, any improvement is to the underlying
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idea of accounts payable processing by collecting information, analyzing it,
and displaying certain results of the collection and analysis. Thus, claim 1
does not integrate the judicial exception into a practical application.
USPTO Step 2B
Because claim 1 recites a judicial exception and does not integrate
that exception into a practical application, we reach the issue of whether the
claim adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field. Guidance, 84 Fed.
Reg. at 56.
Appellant contends that “there is no conventional system or method
that is similar to what is claimed and no prior art rejection remains.” Appeal
Br. 14. Appellant quotes various limitations of claim 1, contending that the
claim is “unconventional and solves a problem not contemplated by
conventional systems.” Id. at 15. Appellant further contends that “[t]he
present claims actually include more data manipulation and data processing
than the claims at issue in the McRO case.” Id. at 16–17 (quoting McRO,
Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).
We are not persuaded that the claims include any additional
limitations beyond the judicial exception that, alone or in combination, were
not “well-understood, routine, and conventional” in the field. Id. at 16.
Appellant’s invention amounts to improving the efficiency of solving a
business problem, namely complications arising from processing accounts
payable transactions. See Spec. ¶¶ 2–7. Appellant does not persuasively
argue that the problem was previously unsolved outside the realm of
technology. That is, Appellant does not argue that, prior to Appellant’s
invention, business failed to reconcile erroneous accounts payable
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transactions.
Further, Appellant has not identified any specific limitation or
combination of limitations that were not “well-understood, routine, and
conventional” in the field as per MPEP § 2106.05(d). Instead, Appellant
describes the invention in a manner consistent with its being “well-
understood, routine, [and] conventional,” such that the claimed server,
processors, and memory of claim 1 requires no more than a general-purpose
computer processor and generic memory executing computer program
instructions on information in a generic memory. See Spec. ¶¶ 47–48, 52–
54, 84–88. Consistent with the Specification, the “payables processor
system,” “conditional control system,” and “payment processing server
computer,” fails to go beyond that which is well-understood, routine, and
conventional. This is indicative of the absence of an inventive concept
where the claims simply append well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56.
Furthermore, the functionalities recited by claim 1 are recited at a high level
of generality that do not set forth limited rules for implementing the
functionalities sufficient to confer patent eligibility.
Therefore, we conclude claim 1, viewed “both individually and as an
ordered combination,” does not recite significantly more than the judicial
exception to transform the claim into patent-eligible subject matter. See
Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S.
at 79).
Accordingly, for the reasons discussed, claim 1 is directed to an
abstract ideas. Furthermore, the claims do not recite limitations that amount
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to significantly more than the abstract idea itself. We, therefore, sustain the
rejection of independent claim 1.
DECISION SUMMARY
We affirm the Examiner’s rejection of claims 1–20 as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–20 101 Eligibility 1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED