Ex Parte Baig et al

Patent Trial and Appeal BoardMar 26, 2018

12241500 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/241,500 09/30/2008 20350 7590 03/28/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Aamer Ali Baig 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. 90945-771600 (012908US) 7192 EXAMINER ZURITA, JAMES H ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 03/28/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AAMER ALI BAIG, JAMES E. COWELL, PETER M. KARAS, CHERYLL. NEOFYTIDES, MATTHEW F. GOLUB, JAMES R. YODER, SUSAN M. MILBERGER, JEFF D. SHERRARD, AMY M. DUNKER, JACKIE M. MACFARLANE, ERIC L. PLATTE, and SUSAN F. ABRAHAMS Appeal 2016-005154 Application 12/241,500 1 Technology Center 3600 Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and TARA L. HUTCHINGS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 65-69, 72, 73, and 75 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 Appellants identify the W estem Union Company as the real party in interest. (App.Br. 2.) Appeal2016-005154 Application 12/241,500 SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellants' claimed invention is directed to processing person-to- person payments and money requests using a computer network (Spec., para. 1 ). Claim 75, reproduced below, is representative of the subject matter on appeal. 7 5. A system for transferring money from a sender to a receiver using a wide-area computer network and a stored value account, the system comprising: a processor; and a machine readable medium compnsmg instructions thereon executable by the processor for: creating the stored value account for the sender on a server computer system; receiving money in the stored value account; receiving input from the sender indicating a transfer method and trigger condition; receiving an email address of the receiver; searching a database of email addresses for the email address of the receiver; if the email address of the receiver is not found in the database, sending the receiver an email to notify the receiver that the receiver can receive the money in the stored value account by registering for an account; determining if the trigger condition is satisfied; and transferring credit from the stored value account of the sender using the transfer method if the trigger condition is satisfied and the email address of the receiver is found in the database. 2 Appeal2016-005154 Application 12/241,500 THE REJECTION The following rejection is before us for review: Claims 65---69, 72, 73, and 75 are rejected under 35 U.S.C. Â§ 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 The Appellants argue that the rejection of claim 75 is improper because the claimed elements provide "significantly more" than the alleged abstract idea (Br. 3---6). The Appellants argue the claim: 1) "improves other technical fields" beyond the alleged abstract idea; 2) uses particular, non- generic computers to implement the method; and 3) adds limitations beyond what is well-understood or routine, or adds unconventional steps to the claim (Br. 3-6). In contrast, the Examiner has determined that the rejection is proper (Final Act. 2-5; Ans. 2-14). We agree with the Examiner. Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 101 to include an implicit exception: "laws of nature, 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). 3 Appeal2016-005154 Application 12/241,500 natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014). In judging whether claim 7 5 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. If so, we then consider the elements of the 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 of the abstract idea. Id. This is a search for an "inventive concept," i.e., an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. The Court in Alice made clear that "the mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention." Id. at 2358. The Examiner asserts that the claims are directed to "allowing a consumer to send money to a recipient via an intermediary, notifying the recipient that he can receive the money subject to certain conditions." (Ans. 8; Final Act. 3, 5). We generally agree, although we determine that the Examiner's assertion is actually too narrow, and that the claim is directed to the concept of transferring money between parties. This concept is recited in the preamble of independent claim 75, and the rest of the claim limitations are steps that facilitate that process. See also Spec. para. 1 ("The invention relates generally to computer-implemented financial transactions, and more particularly relates to processing person-to-person payments and money 4 Appeal2016-005154 Application 12/241,500 requests using a computer network."). The Examiner also finds that the above concept is a fundamental economic practice long prevalent in our system of commerce, and, as such, is an abstract idea beyond the scope of Â§ 101. Ans. 8-9. Indeed, the Examiner further finds that "Appellant relies on fundamental economic practices long prevalent in our system of commerce, such as transfer of funds via wire transfer, ACH, ATM, [and] money orders" (Ans. 6), an assessment with which we agree. We next determine whether any additional elements of the claim, considered both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea using generic computer components. The Examiner concludes that it does not, and Appellants do not persuade us otherwise. Considering each of the claim elements in tum, we are unpersuaded that the functions performed by the computer system at each step of the process is anything more than purely conventional. Specifically, the Examiner finds that each step of the claimed system does no more than require a generic computer to perform a generic computer function (Ans. 3- 4, 6, 11-14), and we are unpersuaded the Examiner's assessment is in error. In particular, the Specification supports our determination. For example, the Specification at paragraphs 20, 39, and 40 describes that the invention can be practiced with a computer network including servers, the Internet, and other generic and well-known systems. The Specification at paragraphs 46 and 54 also describes that details of the money processing systems and database implementation are known to those skilled in the art. Here, we are 5 Appeal2016-005154 Application 12/241,500 not persuaded that Appellants have shown that the claim limitations use generic computer systems in anything more than a conventional manner to implement the system. Further, here, as in Alice, "the 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 2358 (quoting Mayo, 132 S. Ct. at 1294). Appellants argue that the claims improve other technical fields, and require non-generic machines to communicate digital data with a multitude of different financial networks and their associated protocols. Br. 3-5. Yet, we agree with the Examiner that the claims recite only results-based functional limitations (e.g., receiving, searching, determining, transmitting), not a particular way of performing any of the functions. Ans. 4, 11. Without any technical details directed to how to implement the claimed functions, we are not persuaded that the claimed invention is drawn to more than the abstract idea itself. See Move, Inc. v. Real Estate Alliance Ltd., 2017-1463, 2018 WL 656377, at *4 (Fed. Cir. Feb. 1, 2018) Appellants also argue that claim 7 5 satisfies step two because the claims do not stand rejected underÂ§Â§ 102 or 103. Id. at 5---6. However, a novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. For these reasons, the rejection of claim 1 is sustained. The Appellants have provided the same arguments for the remaining claims which are drawn to similar subject matter. Accordingly, the rejection of these claims is sustained for the same reasons given above. 6 Appeal2016-005154 Application 12/241,500 CONCLUSION OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 65-69, 72, 73, and 75 under 35 U.S.C. Â§ 101. DECISION The Examiner's rejection of claims 65---69, 72, 73, and 75 is sustained. 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§ 41.50(Â±). AFFIRMED 7