Ex Parte Breeden

Patent Trial and Appeal Board

Apr 29, 2016

11983034 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111983,034 11/06/2007
20786 7590 05/03/2016
KING & SPALDING
1180 PEACHTREE STREET, NE
ATLANTA, GA 30309-3521
FIRST NAMED INVENTOR
Benjamin T. Breeden JR.
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.
08898.105031 3645
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
ATLIPDOCKETING@kslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN T. BREEDEN, JR.
Appeal2013-001018
Application 11/983034 1
Technology Center 3600
Before, ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 3---6, 9, 11, 12, 15, 17, 20, 22, and27-33. We
have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellant identifies Federal Reserve Bank of Richmond as the real party in
interest. Appeal Br. 3.
Appeal2013-001018
Application 11/983,034
THE INVENTION
Appellant's claims "relate[] generally to re-clearing checks for check
processing and more particularly to automatically, electronically re-clearing
returned checks for payment and presentment." Spec 1.
Claim 22 reproduced below, is representative of the subject matter on
appeal.
22. (Amended) A computer-implemented system for
automatically re-clearing an item, comprising:
a check processing module that processes checks for
payment and presentment for payment to a receiving institution,
the receiving institution being a payor bank; and
a re-clear module that automatically determines whether
a check returned by the receiving institution is eligible for
reprocessing, the check having been previously received by the
check processing module from a depositing institution, which is
a payee bank, and having been electronically transmitted to the
receiving institution by the check processing module for at least
one of payment and presentment for payment, the automatic
determination being based on a query of a predetermined
database of institutions that have paid a fee to subscribe to the
clearing service and at least one of (a) whether a value of the
check is less than a threshold value and (b) a reason why the
receiving institution returned the check,
wherein the check processing module further reprocesses
the check for at least one of payment and presentment for
payment, in lieu of returning the check to the depositing entity,
in response to the re-clear module determining that the check is
eligible for reprocessing, the reprocessing comprising re-
transmitting the check to the receiving institution for at least
one of payment and presentment for payment, and
the check processing module further returns the check to
the depositing entity in response to the re-clear module
determining that the check is not eligible for reprocessing.
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Appeal2013-001018
Application 11/983,034
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Josephson
Keene
Buchanan
Randle
5,412,190
2001/0039534 Al
2004/0068464 Al
2006/0106717 Al
May 2, 1995
Nov. 8, 2001
Apr. 8, 2004
May 18, 2006
The following rejections are before us for review.
Claims 22 and 28 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1, 9, 11, 15, 17, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Randle in view of Buchanan.
Claims 3, 6, 12, 27-29, 32, and 33 are rejected under 35 U.S.C. 103(a)
as being unpatentable over Randle, Buchanan, as applied to claims 1, 9, 11,
15, 17, and 20 above, and Josephson.
Claims 4 and 5 are rejected under 35 U.S.C § 103(a) as being
unpatentable over Randle, Buchanan, and Keene.
Claims 30 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Randle and Buchanan, Josephson, as applied to claim 3, 6,
12, 22, 27-29, 32, and 33 as described above, and Keene.
FINDINGS OF FACT
1. The Specification describes:
The software can be stored on computer readable media. For
example, computer readable media can include a floppy disk,
RAM, ROM, hard disk, removable media, flash memory,
memory stick, optical media, magneto-optical media, CD-
RO M, etc. Digital circuitry can include integrated circuits, gate
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Application 11/983,034
arrays, building block logic, field programmable gate arrays
(FPGA), etc. Spec., 1 :24--28.
2. The Specification describes:
In step 305, the re-clear module 107 determines whether
the depositing institution 102 has subscribed to a re-clear
service. For example, in certain exemplary embodiments, the
re-clear module 107 can limit re-clearing to items associated
with depositing institutions 102 that have agreed to pay a
special fee for return item re-clears. In certain exemplary
embodiments, the re-clear module 107 can access a list
identifying all depositing institutions 102 subscribed to a re-
clear service to make the determination of step 305. For
example, such a list can be stored in the database 109.
Spec., 12:5-11.
ANALYSIS
35 U.S.C. § 101 REJECTION
§ 101.
We will affirm the rejection of claims 22 and 28 under 35 U.S.C.
The Examiner rejected claims 22 and 28 finding:
Claim 22 recites a "check processing module ... " and, a
"re-clear module... ". As such, the claim is directed toward a
computer program. Computer code, per se, is not eligible for
patent protection. However, a computer program can be eligible
for patent protection if it is tangibly embodied on a computer
readable medium and, when executed by a computer, performs
the steps of the invention.
Regarding claim 28:
Claim 28 recites in the preamble "a computer-readable
medium having computer-executable program code embodied
therein... " As such, the claim is non-statutory because it is
directed towards storage on a medium or signal per se. It is not
clear that the claimed "computer-readable medium" is in the
form of transitory or non-transitory. In order to overcome the
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Application 11/983,034
rejection, Applicant should add the limitation "non-transitory"
and "storage" to read "a non-transitory computer-readable
storage medium."
Final Act. 7.
We sustain the Examiner's rejection of claims 22 and 28 under 35
U.S.C. § lOl(a) because our review of the Specification reveals that
Appellant describes software in the context of, "for example" and modules
as "exemplary embodiments" (FF. 1, 2), and thus do not restrict such items
to strictly non-transitory mediums which fix the software to the device
mediums.
To the extent that the analysis above addresses only the issue of
transitory signal eligibility under 35 U.S.C. § 101, and not the issue of
abstract idea claim eligibility, we add the following new rejection to this
Decision.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
grounds of rejection under 35 U.S.C. § 101 rejecting claims 1; 3--6; 9; 11;
12, 15, 17, 20, 22, and 27-33 as being directed to an abstract idea.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. []If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each 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. [The Court] 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
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Application 11/983,034
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. We find that they are.
Each of independent claims independent claims 1, 11, 17, 22, 28, and
33 requires in one form or another,
determining whether the depositing institution has
subscribed to a re-clearing service provided by the check
processing entity based on a query of a predetermined
database of institutions that have paid a fee to subscribe to the
re-clearing service, and
when the query of the predetermined database indicates
that the depositing institution has subscribed to the re-
clearing service, determining whether the check is eligible to
be reprocessed based on a list of a plurality of acceptable
reasons for reclearing returned checks.
We find that the claims themselves provide enough information to
inform one as to what they are directed to, which, in this case, is a
"fundamental economic practice", and, as such, are directed to an abstract
idea. In re Smith, 815 F.3d 816, 818, (Fed. Cir. 2016). The proper use of
commercial paper to effect business transactions is a basic fundamental
economic practice, and thus is an abstract idea. Id.
We find that the introduction of "modules" in connection with the
claims does not alter the analysis at Mayo step two. First, as found supra,
the Specification does not restrict the modules to devices. Second, even if it
did, the mere addition of having a computer module perform these steps, if
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Application 11/983,034
required, does not add any meaningful limitation beyond generally linking
the abstract method to a general purpose computer. See Alice Corp. Pty.
Ltd., 134 S. Ct. at 2350, quoting Mayo Collaborative Services, 132 S. Ct. at
2353. Adding a nominal recitation of a computer to a claim covering an
abstract concept is insufficient to make a claim patent eligible. See Bancorp
Servs. v. Sun Life Assurance Co.~ 687 F.3d 1266, 1278 (Fed. Circ. 2012).
See also Mayo Collaborative Servs., 132 S. Ct. at 1293 (a claim cannot
simply state the abstract idea and add the words "'apply it."') Under our
precedents, this is not enough to transform an abstract idea into a patent-
eligible subject matter. Here, an improvement to computer system
technology is not manifest. Thus, we find that the system claims do not
cover more than a generic computer. "[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea [] on a generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at
2359. In this case they do not.
35 U.S.C. § 103(a) REJECTION
Each of independent claim 1, 11, 17, 22, 28, and 33 requires in one
form or another,
determining whether the depositing institution has
subscribed to a re-clearing service provided by the check
processing entity based on a query of a predetermined
database of institutions that have paid a fee to subscribe to the
re-clearing service, and
when the query of the predetermined database indicates
that the depositing institution has subscribed to the re-
clearing service, determining whether the check is eligible to
be reprocessed based on a list of a plurality of acceptable
reasons for reclearing returned checks.
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Application 11/983,034
Appeal Br. (Claims App.)(emphasis added).
Initially, the Examiner found, concerning this limitation, that it was
disclosed by Randle at "(Par. 0008,0017 ,0041,0065, 0068-0070)." Final
Act. 9. While Randle does disclose, at these sections, a member-based
services network (SMFSN), Randle only discloses re-presentment in the
context of an ACH return transaction (para. 40), and not based on a query of
a predetermined database of institutions on the SMFSN that have paid a fee
to subscribe to the re-clearing service. In paragraph 40, which discusses re-
presentment, Randle only picks up the disclosure with the re-presentment
process after the decision to re-present is made. Thus, it is unclear how the
decision to re-present was made.
In the Answer, the Examiner then finds the limitation to be obvious on
its face stating:
Although payment of a fee to subscribe to a particular service is
not expressly stated [in Randle], it is well-known in the art and
industry for part1c1pating financial institutions in a financial
network to be assessed membership fees, dues or any other
form of remuneration in exchange for services rendered. It is
also well-known for a listing (or record) of participating
financial institutions in a network or shared service activity to
be maintained in some form of recording device or means.
(Answer 5). 2
We disagree with the Examiner. The Specification describes the use of a
re-clear module having a specific function of initiating the claimed re-clear
process only if the depositing institution has subscribed to such the fee-based
subscription service:
2 The Examiner Answer is not paginated correctly. The cited page 5 is the
fifth page of the pages immediately following the cover page of the Answer.
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Application 11/983,034
FF.2
the re-clear module 107 determines whether the depositing
institution 102 has subscribed to a re-clear service .... [T]he re-
clear module 107 can limit re-clearing to items associated with
depositing institutions 102 that have agreed to pay a special fee
for return item re-clears. In certain exemplary embodiments, the
re-clear module 107 can access a list identifying all depositing
institutions 102 subscribed to a re-clear service to make the
determination of step 305.
Thus, we find this to be a core issue and the Examiner must point to some
concrete evidence in the record in support for such core factual findings.
With respect to core factual findings in a determination of
patentability, however, the Board cannot simply reach
conclusions based on its own understanding or experience -- or
on its assessment of what would be basic knowledge or
common sense. Rather, the Board must point to some concrete
evidence in the record in support of these findings.
In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
We further agree with the Appellant (Appeal Br. 27) that Buchanan
fails to remedy this shortcoming in that Buchanan "determines whether to
represent an item regardless of any query of a database of institutions that
have paid a fee to subscribe to a re-clearing service" as set forth in paragraph
71. While Buchanan at paragraph 71 discloses further actions by the payor
bank may be controlled by an automatic re-presentment policy of the payor
bank, this falls short of a query of a predetermined database of institutions
that have paid a fee to subscribe to the re-clearing service.
Therefore, we will not sustain the rejection of independent claims 1,
11, 17, 22, 28, and 33 under 35 U.S.C. § 103.
Since claims 3---6, 9, 12, 15, 20, 27, and 29--32 depend from one of
claims 1, 11, 17, 22, 28, and 33, and since we cannot sustain the rejection of
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claims 1, 11, 17, 22, 28, and 33, the rejection of claims 3---6, 9, 12, 15, 20,
27, and 29-32 likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 22 and 28
under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1, 3-6, 9, 11,
12, 15, 17, 20, 22, and 27-33 under 35 U.S.C. § 103.
DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
3 7 C.F .R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 CPR§ 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• ( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
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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)(l )(iv).
AFFIRMED-IN-PART (37 C.F.R. § 41.50(b))
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