Bottomline Technologies Sarl

Patent Trials and Appeals Board

Feb 16, 2022

2022001601 (P.T.A.B. Feb. 16, 2022)

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. 16/680,652 11/12/2019 Edouard Joliveau BT-131 6456 158771 7590 02/16/2022 Bottomline Technologies, Inc. 325 Corporate Drive Portsmouth, NH 03801 EXAMINER SCHWARZENBERG, PAUL ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): Legal_IP@bottomline.com USPTO@dockettrak.com rich.baker@bottomline.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDOUARD JOLIVEAU ____________ Appeal 2022-001601 Application 16/680,652 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION 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 Bottomline Technologies, Incorporated (Appeal Br. 4). Appeal 2022-001601 Application 16/680,652 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to using machine learning to improve international cash management (Spec. para. 2). Claim 11, reproduced below with the italics added, is representative of the subject matter on appeal. 11. A method for managing cash in an organization, the method comprising: retrieving a set of payment and receipt transactions from a plurality of data storage facilities for a given past date range for a plurality of currency accounts with a multi-core machine learning server with floating point processing capabilities that is connected to the plurality of data storage facilities; performing an ARIMA analysis in each currency account on the set of payment and receipt transactions creating a forecast of receipts and a forecast of payments for a future date range; subtracting, with the multi-core machine learning server, the forecast of the payments from the forecast of the receipts and adding in a previous day cash balance to create a forecast cash balance time series for each currency account; retrieving historical banking rate information to the multi- core machine learning server; performing the ARIMA analysis on the historical banking rate information to create a forecast banking rate information time series; executing, using the multi-core machine learning server, an algorithm on the forecast cash balance time series for each currency account and the forecast banking rate information time series to determine a set of optimal cash transfers between each currency account and one or more sweep accounts; and executing, by the multi-core machine learning server, instructions to make payments and cash transfers. Appeal Br. 36-37 (Claims App.). Appeal 2022-001601 Application 16/680,652 3 THE REJECTION The following rejection is before us for review: Claims 1-29 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 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 11 is improper under the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (Jan. 7, 2019) because the claim is integrated into a practical application under Step 2A Prong 2 (Appeal Br. 10-27; Reply Br. 4-9). The Appellant argues further that the claim recites a combination of elements that are eligible under Step 2B (Appeal Br. 10, 28-32; Reply Br. 9-13). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2-20; Ans. 3-10). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural 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). Appeal 2022-001601 Application 16/680,652 4 phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an 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)). In accordance with that framework, we first determine what concept the claim is “directed to.” 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a Appeal 2022-001601 Application 16/680,652 5 mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) 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); and (2) additional elements that integrate the judicial exception into a practical application, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: Appeal 2022-001601 Application 16/680,652 6 (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. If the 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 (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. (alterations in original) (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 Specification states that the invention generally relates to using machine learning to improve international cash management (Spec. para. 2). Here, the Examiner has determined that the claim sets forth a certain method of organizing human activities as a fundamental economic practice including hedging and mitigating risk (Final Act. 2, Ans. 3). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of: (1) “retrieving a set of payment and receipt transactions from a plurality of data storage facilities for a given past date range for a plurality of currency accounts”; (2) “performing an ARIMA analysis in each currency account on the set of payment and receipt transactions creating a forecast of receipts and a Appeal 2022-001601 Application 16/680,652 7 forecast of payments for a future date range”; (3) “subtracting, . . . the forecast of the payments from the forecast of the receipts and adding in a previous day cash balance to create a forecast cash balance time series for each currency account”; (4) “retrieving historical banking rate information”; (5) “performing the ARIMA analysis on the historical banking rate information to create a forecast banking rate information time series”; (6) “executing. . . an algorithm on the forecast cash balance time series for each currency account and the forecast banking rate information time series to determine a set of optimal cash transfers between each currency account and one or more sweep accounts”; and (7) “executing. . . instructions to make payments and cash transfers”; which sets forth using payment and receipt transactions and historical banking rate information in a mathematical analysis to determine a set of optimal cash transfers between each currency account and one or more sweep accounts, which is a mathematical concept, and certain method of organizing human activities in being a fundamental economic practice, i.e., a judicial exception. A method, like the claimed method, “that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. In OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) it was held that offer-based price optimization was directed to an abstract idea. Appeal 2022-001601 Application 16/680,652 8 We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54-55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.04(d) and 2106.05(a)-(c) and (e)-(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. For example, in the claim, the only additional element beyond the abstract idea is the recited “server,” which is a computing device. The claimed limitations of “retrieving,” “performing,” “subtracting,” and “executing,” as recited “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a “particular machine.” Rather, these functions are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to Appeal 2022-001601 Application 16/680,652 9 integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.04(d) and 2106.05(a)-(c) and (e)-(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well- understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paragraph 38 for example describes using conventional computer components such as a personal computer and network in a conventional manner. The claim specifically includes recitations for a computer server to implement the method but the claimed computer components are all used in a manner that is well-understood, routine, and conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. The Appellant at pages 11, 19, and 21 of the Appeal Brief has also cited to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) but the claims in that case are distinguished from this case in being directed to rules for lip sync and facial expression animation, thereby achieving technological improvements. The Appellant at page 20 of the Appeal Brief has also cited to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the claim is not abstract, but the claims in that case were not similar in scope to Appeal 2022-001601 Application 16/680,652 10 those here and were in contrast directed to a self-referential data table that achieved particular technological improvements. For these above reasons the rejection of claim 11 is sustained. The Appellant has provided the same arguments for the remaining claims which are drawn to similar subject matter and the rejection of these claims is sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1-29 under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-29 101 Eligibility 1-29 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