David DrakeDownload PDFPatent Trials and Appeals BoardJun 30, 20212021000966 (P.T.A.B. Jun. 30, 2021) Copy Citation 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). Appeal 2021-000966 Application 15/634,466 2 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. Appeal 2021-000966 Application 15/634,466 3 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). Appeal 2021-000966 Application 15/634,466 4 573 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 Appeal 2021-000966 Application 15/634,466 5 (“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- Appeal 2021-000966 Application 15/634,466 6 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, Appeal 2021-000966 Application 15/634,466 7 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. Appeal 2021-000966 Application 15/634,466 8 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 Appeal 2021-000966 Application 15/634,466 9 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 Appeal 2021-000966 Application 15/634,466 10 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 Appeal 2021-000966 Application 15/634,466 11 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 Copy with citationCopy as parenthetical citation