David Drake

Patent Trials and Appeals Board

Jun 30, 2021

2021000966 (P.T.A.B. Jun. 30, 2021)

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.
15/634,466 06/27/2017 David G. Drake 05391-P0009C 1088
24126 7590 06/30/2021
ST. ONGE STEWARD JOHNSTON & REENS LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID G. DRAKE
____________

Appeal 2021-000966
Application 15/634,466
Technology Center 3600
____________

Before BIBHU R. MOHANTY, JAMES P. CALVE, and
BRUCE T. WIEDER, 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 1–18. We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were presented on June 24, 2021.

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 David G. Drake.
(Appeal Br. 2).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to providing a system for
processing and filtering donation information (Spec., para. 6). Claim 13,
reproduced below with the italics added, is representative of the subject
matter on appeal.

13. A method for managing donation information associated
with charitable contributions with a website such that only part
of the donation information is accessible by a charitable entity
organized in a first state in order to reduce reporting
requirements to a state other than the first state comprising the
steps of:
providing a web server having software executing
thereon;
receiving via said web server data transmitted to said web
server from a donor computer, said data indicative of a
donation request to an entity wherein the entity is a charitable
entity having an address, said donation request indicative of a
request to transmit funds to a bank account of the charitable
entity;
comparing the address of said entity with an address
field of said data via said software;
generating a plurality of records via said software to
create a first data set, each said record excluding address field
when said address of said entity and said address field include
different states;
associating said first data set with said entity via said
software; and
allowing access to said first data set by said entity via the
web server.

THE REJECTION
The following rejection is before us for review:
Claims 1–18 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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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 evidence2.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 13 is improper
because the Examiner has not properly considered the Declaration of record
(Appeal Br. 6–18; Reply Br. 2–8). The Appellant argues that the Examiner
has not properly considered the requirements of Berkheimer v. HP Inc., 881,
F.3d 1360 (Fed. Cir. 2018) in considering the Declaration (Appeal Br. 6–18;
Reply Br. 2–18).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–8, 10–19; 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
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,

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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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 waterproof 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
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
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(“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:
(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-
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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 at paragraph 1 states that the invention generally
relates to charitable fundraising online across multiple states. Here, the
Examiner has determined that the claim sets forth “a method for processing
and filtering donation information associated with charitable contributions
received from a donor” and is a method of organizing human activities such
as commercial interactions including resolution of agreements (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]
“receiving . . . data indicative of a donation request to an entity wherein the
entity is a charitable entity having an address”; [2] “comparing the address
of said entity with an address field of said data via said software”; [3]
“generating a plurality of records via said software to create a first data set,
each said record excluding address field when said address of said entity and
said address field include different states”; [4] “associating said first data set
with said entity”; and [5] “allowing access to said first data set by said
entity” which sets forth a method of processing charitable donations, and is a
certain method of organizing human activities in being a fundamental
economic practice, i.e. a judicial exception. See Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information,
analyzing it, and displaying certain results of the collection and analysis was
held to be an abstract idea. Courts have found claims directed to collecting,
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recognizing, and storing data in a computer memory to be directed to an
abstract idea. Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’l Ass., 776 F.3d 1343 (Fed. Cir. 2014). In Inventor Holdings,
LLC v. Bed Bath & Beyond Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
claims directed to the local processing of payments for remotely purchased
goods was held to be directed to an abstract idea.
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 Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 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 additional elements beyond the abstract
idea are the recited “web server” and “computer”. The claimed limitations
of “receiving,” “comparing,” “generating,” “associating,” and “allowing” 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, they 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.
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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
integrate the judicial exception into a practical application as set forth in the
Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) §§ 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 claim
specifically includes recitations for a computer to implement the method but
these computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claimed generic computer
components which are used to implement the claimed method are well
understood, routine, or conventional in the field. Here, the claim has not
been shown to be “significantly more” than the abstract idea.
We now consider the Declaration of Charles M. Watkins that the
claim represents an ordered combination of elements that are unconventional
and “significantly more” (Declaration, para. 40).
Here, as stated above, we determine that claim 13 sets forth a method
of processing charitable donations, and is a certain method of organizing
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human activities in being a fundamental economic practice, i.e. a judicial
exception. The only technical elements in the claim are a conventional “web
server” and “computer”. The computer functions performed in the claim are
purely conventional computer steps of “receiving” data, “comparing” data
(addresses), “generating” records using the data, “associating” the data with
an entity, and “allowing” access to the data by an entity, which are all
conventional computer functions performed by a generic computer with
conventional processing functions. Turning to the Appellant’s Specification
at paragraphs 24–26 the “computers” appear to be conventional computers
performing generic computer functions in a well understood, routine, and
conventional manner. The claimed of computer steps of “receiving”,
“comparing,” “generating,” “associating,” and “allowing” all appear to be
conventional computer functions performed by a generic computer.
The Declaration of Charles M. Watkins has been fully considered, but
is not persuasive to show that the claim represents an ordered combination
of elements that are unconventional and “significantly more” or that the
computers as recited do not perform in a conventional manner. For
example, the Declaration at paragraph 15 states that “webserver and
computer are improved by using the System” but fails to show how the
webserver and computer are not used in a conventional manner in the
processing functions. The Declaration also states at paragraph 19 states that
the “generic computer cannot achieve the same result” of the claim but this
is a mere statement and not deemed persuasive.
Here, the rejection of record has been reviewed in light of the
Declaration, but again deemed proper. Accordingly, the rejection of claim
13 is sustained. The Appellant has provided the same arguments for claims
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14–18 drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.
We reach the same conclusion as to independent system claims 1 and
9 and their dependent claims for which the same arguments have been
presented. Here, as in Alice, “the system claims are no different in substance
from the method claims. The method claims recite the abstract idea
implemented on a generic computer; the system claims recite a handful of
generic computer components configured to implement the same idea.”
Alice 573 U.S. at 226. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea ‘while adding the words ‘apply it’ is not enough for
patent eligibility.” Id. at 223 (quoting Mayo, 566 U.S. at 72). For these
reasons the rejection of claims 1–12 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–18 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Bas
is
Affirmed Reversed
1–18 101 Eligibility 1–18

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Application 15/634,466
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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