Ex Parte Abernethy

Patent Trial and Appeal BoardSep 24, 2018

14705265 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/705,265 05/06/2015 142333 7590 09/26/2018 Xero c/o Schwegman Lundberg & Woessner, P.A. P.O. Box 2938 Minneapolis, MN 55402 FIRST NAMED INVENTOR Brock Stephen Abernethy 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3923.003US1 8609 EXAMINER REFAI, RAMSEY ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): ip@xero.com uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BROCK STEPHEN ABERNETHY Appeal2017-007689 Application 14/705,265 Technology Center 3600 Before CARL W. WHITEHEAD JR., JON M. JURGOV AN and JOSEPH P. LENTIVECH, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 is appealing the final rejection of claims 1-20 under 35 U.S.C. Â§ 134(a). Appeal Brief 10. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Introduction The invention is directed to "[a] mobile banking reconciliation application [that] allows a user to reconcile a business's records with banking records associated with one or more accounts of the business." Abstract. 1 Appellant identifies Xero Limited as the real party in interest. Appeal Brief 2. Appeal2017-007689 Application 14/705,265 Illustrative Claim 1. A method comprising: presenting, on a display device, a first object including information from a banking record having a characteristic, the first object being presented in a first position; determining, by a processor, that a business record has a characteristic that is the same as the characteristic of the banking record; presenting, on the display device and based on the determination, a second object including information from the business record, the second object being presented in a second position, the second position being vertically offset from the first position; and presenting, on the display device, a user interface element operable to associate the business record presented in the first object with the banking record presented in the second object. Rejections on Appeal Claims 1-20 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Final Action 4. Claims 1-20 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Gee (US Patent Application Publication 2011/0295725 Al; December 1, 2011). Final Action 5-8. 2 Appeal2017-007689 Application 14/705,265 ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Briefs (filed August 22, 2016, October 11, 2016, and November 28, 2016), the Reply Brief (filed April 24, 2017), the Answer (mailed March 15, 2017) and the Final Action (mailed February 22, 2016) for the respective details. 35 U.S.C. Â§ 101 Rejection 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. Â§ 101. The 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). To determine patentable subject matter, the Supreme Court has set forth 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. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (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 3 Appeal2017-007689 Application 14/705,265 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 Â§ 101 swallow the rule" (Enfzsh, 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)). The Supreme Court has identified as abstract ideas claims employing mathematical relationships or formulas, which are similar to the instant claimed invention. Specifically, the Supreme Court stated that the concept of applying a mathematical formula to hedging risk and the application of that concept to energy markets was not patentable because of similarities to Gottschalkv. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584 (1978), and Diamond v. Diehr, 450 U.S. 175 (1981). Bilski v. Kappas, 561 U.S. 593, 611-12 (2010). Further, the Supreme Court noted that the claims, like those in Flook, were unpatentable because "Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable." Bilski, 561 U.S. at 612. Additionally, the Federal Circuit has identified abstract ideas that do not describe an inventive concept that is more than an abstract idea, even when embodied in specific system or structure. Specifically, the Federal Circuit stated "not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry," including a finding that "claims reciting an 'interface,' 'network,' and a 'database' are nevertheless directed to an abstract idea." In re TL! Commc'ns LLC Patent Litig., 823 4 Appeal2017-007689 Application 14/705,265 F.3d 607, 611 (Fed. Cir. 2016) (citing Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)). The Federal Circuit found the "eleven steps for displaying an advertisement in exchange for access to copyrighted media" was directed to an abstract idea, despite the claim at issue reciting "certain additional limitations ... [that] add a degree of particularity." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir. 2014). Further, the Federal Circuit noted "the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content," and the addition of novel or non-routine components did not "necessarily tum[] an abstraction into something concrete." Id. at 715. In contrast, the Federal Circuit has found claims that "are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database" are "directed to an improvement of an existing technology ... achiev[ing] other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements." Enfzsh, 822 F.3d at 1337. However, the heart of the claimed invention must be focused on the underlying technology itself and how the underlying technology is altered "in a way that leads to an improvement in the technology." Intellectual Ventures Iv. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017) (citing Enfish, 822 F.3d 1327); see also TL! Commc 'ns, 823 F.3d at 612. If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step, where we "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the 5 Appeal2017-007689 Application 14/705,265 nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court has "described step two of this analysis 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. (brackets and quotation omitted). For computer-related technology, the Federal Circuit has held that a claim may pass the second step if "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer [technology]," e.g., "a challenge particular to the Internet." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). In Bilski, the Supreme Court rejected the machine-or-transformation test as the exclusive test for determining patentability, but nonetheless held the claims were ineligible because the claims were preemptory of risk hedging in all fields. 561 U.S. at 612-13 (citing Flook, 437 U.S. 584; Benson, 409 U.S. 63). The Federal Circuit has also identified when abstract ideas do not amount to significantly more than the judicial exception. The Federal Circuit held the abstract idea of classifying and storing digital images in an organized manner was not significantly more than an abstract idea because "the recited physical components behave exactly as expected according to their ordinary use" and the claimed invention "fails to provide the requisite details necessary to carry out th[e] idea." TL! Commc'ns, 823 F.3d at 615. Moreover, the Federal Circuit held the idea of "receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to 6 Appeal2017-007689 Application 14/705,265 the media, and receiving payment from the sponsor of the ad" was not significantly more than the abstract idea because "the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity." Ultramercial, Inc., 772 F.3d at 715. Additionally, the Federal Circuit noted "[ n Jone of these eleven individual steps, viewed 'both individually and "as an ordered combination,"' transform the nature of the claim into patent-eligible subject matter." Id. ( citations omitted). In contrast, the Federal Circuit held claims directed to methods of organizing human activity may be significantly more "when the claim limitations were considered individually and as an ordered combination, they recited an invention that is not merely the 'routine or conventional use' of technology." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1301---02 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1259; BASCOM Global Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Additionally, the Federal Circuit held the ordered combination of the claim limitations recited an inventive concept because "the distributed, remote enhancement that produced an unconventional result," which represented "a technical improvement over prior art technologies and served to improve the performance of the system itself." Amdocs, 841 F.3d at 1302 (emphasis added); see also BASCOM, 827 F.3d at 1352 ("an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application"). 7 Appeal2017-007689 Application 14/705,265 Step One: Whether the Claims Are Directed to a Patent-Ineligible Concept (Abstract Idea) Appellant argues "the claims are not 'uninstantiated' or simply some unembodied idea but are a tangible instantiation that are not performed in the human mind or using a pen and paper." Appeal Brief 21. Appellant further argues: They are not performed by a human mind or using a pen and paper. For example, there is no fundamental truth that dictates operations for presenting, based on a determination, a second object vertically offset from a first position, let alone for presenting a user interface element operable to associate a business record with a banking record, and much less doing so using the particular operations recited in independent claim 1. Appeal Brief 22. Appellant cites portions of claim 1 wherein the business record information is displayed on a display device; however, this does not circumvent the reality that Appellant's claims could entirely be performed by a human being, either mentally or using a pen and paper. Appeal Brief 21. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (finding an abstract idea where "with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper"); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101."); In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes----or processes of human thinking-standing alone are not patentable even if they have practical application."); Benson, 8 Appeal2017-007689 Application 14/705,265 409 U.S. at 67 ("Phenomena of nature ... , mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work" (emphasis added)). Additionally, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson."). Appellant argues: [T]he claims are not directed to a "fundamental economic practice long prevalent in our system of commerce," but are directed to a specific set of operations for presenting a user interface for associating business records with banking records. This is an improvement to a man-machine interface, not a fundamental economic practice like risk management or intermediated settlement. Appeal Brief 22 (footnote omitted). Appellant does not explain how the claims before us represent an improvement to computer functionality, nor does Appellant assert that the recited technical components ( electronic platform and computing devices) operate in an unconventional manner. We find Appellant's claims are distinguished from those claims that our reviewing court has found to be patent eligible by virtue of reciting technological improvements to a computer system. See, e.g., DDR Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer processor for serving "composite web page" were patent eligible because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"); Enfzsh, 822 F.3d at 1338 (holding that claims directed to a self- 9 Appeal2017-007689 Application 14/705,265 referential table for a computer database were patent eligible because the claims were directed to an improvement in the functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to "an improved computer memory system" having many benefits were patent eligible). Further, we do not find Appellant's argument persuasive of Examiner error because "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the Â§ 101 categories of possibly patentable subject matter." Diehr, 450 U.S. at 188-189. However, a novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 566 U.S. at 90-91. Accordingly, we do not find Appellant's argument persuasive of Examiner error. Appellant contends that there is no justification for the Examiner's allegations that the claims are directed to a method of organizing human activity and therefore directed to an abstract ideal. Appeal Brief 23. Appellant further argues that "[i]ndependent claim 1 recites 'a display device' and 'a processor,' along with 'presenting, on the display device' various objects and user interface elements. It is not clear what the alleged activity supposedly being organized is." Appeal Brief 23. Appellant discloses that the invention is directed to "[a] mobile banking reconciliation application [that] allows a user to reconcile a business's records with banking records associated with one or more accounts of the business." Abstract. Allowing a user to reconcile or organize her business records would be considered organizing human activity. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of 10 Appeal2017-007689 Application 14/705,265 organizing human activities, an idea of itself, and mathematical formulas or relationships. Alice, 134 S. Ct. at 2355-57. We are not persuaded that the claims are not directed to an abstract idea. Accordingly, we tum to the second step of the Alice analysis, in which we determine whether the additional elements of the claims transform them into patent-eligible subject matter. Step Two: Whether Additional Elements Transform the Idea into Patent-Eligible Subject Matter Appellant argues that, because the claims recite "a specific way of identifying business records to associate with banking records and a specific way of displaying the records," the claims do not merely recite associating business and banking records using a computer and, therefore, "[s]ince the claims are directed to 'significantly more' than mere instructions to implement the alleged abstract idea on a computer, they are patent-eligible." Appeal Brief 25. We do not find Appellant's arguments persuasive because as we indicated above, a novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90-91. Appellant further argues: [T]he essence of the question of whether or not a particular claim contains "significantly more" than the alleged abstract idea is whether or not the claims as written are "designed to monopolize the abstract idea itself." Since the claims at issue do not preempt all uses of "associat[ing] the business record ... with the banking record," or even all uses the alleged abstract idea in a broad technological environment such as the Internet, the claims should have been found to include elements that are "significantly more" than the alleged abstract idea. Appeal Brief 25 (footnote omitted). 11 Appeal2017-007689 Application 14/705,265 We agree the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." Alice, 134 S. Ct. at 2354. But characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As our reviewing court has explained, "[t]he Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[f]or this reason, questions on preemption are inherent in and resolved by theÂ§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). And although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Moreover, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework ... , preemption concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."), cert. denied, 136 S. Ct. 701 (2015). Accordingly, we are not persuaded the Examiner erred and sustain the Examiner's 35 U.S.C. Â§ 101 rejection of claims 1-20. 35 U.S.C. Â§ 103 Rejection Appellant contends: Independent claims 1, 16, and 20 each recite "presenting ... a first object ... in a first position" and "presenting ... a second object ... in a second position, the second position being 12 Appeal2017-007689 Application 14/705,265 vertically offset from the first position." Gee does not teach or suggest presenting first and second objects in the manner claimed. Appeal Brief 10-11. The Examiner finds "Gee et al fail to explicitly teach the second position being vertically offset from the first position" and determines that positioning the second position vertically offset from the first position is "merely a design choice" and that "[i]t would have been an obvious matter of design choice to include this feature since the Appellant has not disclosed that doing so would solve any stated problem or is for any particular purpose and it appears that the invention would perform equally well if the objects where horizontally offset." Answer 3 ( emphasis omitted); Final Action 5-6. Appellant further contends that vertically offsetting the second position from the first position solves a problem and is for a particular purpose. Appeal Brief 11-12 ("As can be seen from FIG. 7, below, vertical offset of the two objects improves the usability of the user interface when presented on a mobile phone."). Appellant's Figure 7 is reproduced below: 13 Appeal2017-007689 Application 14/705,265 ( ................. ) 710 Â·--t---j BUSINESS BANK ACCOUNT I 720 -- { __ +- .... ..1 I RECO~ClUNG_1 _0F 21 I I 730 _ --~ 750 I, + RECEIVED 30 JUN 20i~1 35.00 74() ---.. LÂ·--+--.- WILS01'J ONLINE PERIOD!CALS - -Â· 760 [DETAILS] INVOICE 35.00 Â· Â· --r-.. WILSON PERIODICALS 700--+~=~ FIG. 7 is an interface diagram depicting an example user interface 700 displaying features of a mobile banking reconciliation application. The example user interface 700 includes title 710, back button 720, status 730, objects 740 and 770, and additional object indicators 750. The objects 740 and 770 are both in the form of a card. The object 740 includes a button 760, labeled "Details." The object 770 includes a button 780, labeled "OK." Specification, paragraph 68. Appellant does not describe how the vertical offsetting of the two objects improves the usability of the user interface on a mobile phone. See Appeal Brief 11-12. Appellant merely reproduces Figure 7 and concludes that the improvement is shown in the figure. Appeal Brief 11-12. It is not readily apparent from reviewing the figure the improvement Appellant is 14 Appeal2017-007689 Application 14/705,265 alluding to in the Appeal. "As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we agree with the Examiner's findings and sustain the Examiner's obviousness rejection of independent claims 1, 16, and 20 argued together, as well as, dependent claims 2, 3, 17, and 18 not argued separately. See Appeal Brief 10. Appellant argues that dependent claims 6, 12, and 15 all recite color depiction of interface elements and the Examiner's reliance upon design choice to address the color depictions is not properly supported by substantial evidence. Appeal Brief 13. We agree with the Examiner's findings for the same reasons we indicated above because there is no indication from either the Specification or the claims that the selection of color employed for the interface elements is dependent upon a concept that would not be under the purview of one of ordinary skill in the art. See KSR, 550 U.S. at 418. Accordingly, we sustain the Examiner's obviousness rejection of dependent claim 6 only because claims 12 and 15 are dependent upon claims 7 and 13 which we address below. Appellant argues that the obviousness rejection of dependent claims 4, 5, 7-11, 13, and 19 is improper because the Examiner merely rejects the claims based upon non-functional descriptive language and/or design choice without any further findings. Appeal Brief 13-1 7. We find Appellant's arguments persuasive. While we found that indicating the color of interface elements to be a matter of design choice, the dependent claims in question 15 Appeal2017-007689 Application 14/705,265 recite subject matter addressing the actual functioning of the device and should not have been dismissed as a matter of design choice by the Examiner. See Final Action 6-7. Further, both claims 4 and 19 recite, "wherein the first position is above the second position." However, the Examiner's findings for claim 4 does not address this basic concept and the findings for claim 19 has been simply delegated to being non-functional descriptive language. See Final Action 6-7. It is clear from Gee's disclosure that Gee's user interface displays various bank transactions in the same vein as the invention of the instant application, however, the Examiner failed to rely upon Gee's disclosure of such elements. See Gee, Figure 4--8, paragraph 6. We reverse the Examiner's obviousness rejection of dependent claims 4, 5, 7-15, and 19. DECISION The Examiner's 35 U.S.C. Â§ 101 rejection of claims 1-20 is affirmed. The Examiner's 35 U.S.C. Â§ 103 rejection of claims 1-3, 6, 16-18, and 20 is affirmed. The Examiner's 35 U.S.C. Â§ 103 rejection of claims 4, 5, 7-15, and 19 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l)(v). AFFIRMED 16