Ex Parte Cook

Patent Trial and Appeal Board

Nov 22, 2016

13908449 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/908,449 06/03/2013 Curtis C. Cook
32566 7590 11/25/2016
PA TENT LAW GROUP LLP
PO Box 61839
Sunnyvale, CA 94088
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.
CCK-P-101 7659
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
sandy@patentlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS C. COOK
Appeal2015-000552
Application 13/908,449 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BA YAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Curtis C. Cook (Appellant) seeks our review under 35 U.S.C. § 134 of
the non-final rejection of claims 1-23. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellant identifies Curtis Cook as the real party in interest. App.
Br. 1.
Appeal2015-000552
Application 13/908,449
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for allocating monetary amounts from deposits in a
primary account to one or more secondary accounts comprising:
a server;
the server being able to access allocation files that are
programmable via the internet by a user;
a primary account, associated with a first entity, into
which deposits are made from one or more sources; and
allocation files stored in a memory accessible by the
server, the allocation files containing rules programmed by the
user via the internet, the rules comprising at least the following:
one or more percentages associated with respective one
or more secondary accounts to be applied to future deposits
made to the primary account, the one or more secondary
accounts being under control of the user and being associated
with the user;
one or more priorities associated with the respective one
or more of the secondary accounts,
wherein the server is programmed to automatically apply
the one or more percentages and the one or more priorities to
amounts later deposited in the primary account and initiate
transfer of those percentages of the deposits to the respective
one or more secondary accounts in accordance with rules pre-
programmed by the user, and
wherein the server is programmed to deduct from the
primary account a predetermined first percentage, associated
with a certain priority secondary account, in accordance with
the rules, then, after the first percentage has been subtracted
from the primary account, deduct from the remaining primary
account a predetermined second percentage, associated with a
lower priority secondary account, in accordance with the rules.
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Application 13/908,449
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Thomas et al.
Ebersole et al.
Owen et al.
Biske
US 2004/0254835 Al
US 7,792,748 Bl
US 2012/0023008 Al
US 2013/0238487 Al
The following rejections are before us for review:
Dec. 16, 2004
Sept. 7, 2010
Jan. 26, 2012
Sept. 12, 2013
1. Claims 1-10, 13-19, 22, and 23 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Biske and Ebersole.
2. Claims 11 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Biske, Ebersole, and Owen.
3. Claims 12 and 21 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Biske, Ebersole, and Thomas.
ISSUES
Did the Examiner err in rejecting claims 1-10, 13-19, 22, and 23
under 35 U.S.C. § 103(a) as being unpatentable over Biske and Ebersole?
Did the Examiner err in rejecting claims 11 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Biske, Ebersole, and Owen?
Did the Examiner err in rejecting claims 12 and 21under35 U.S.C.
§ 103(a) as being unpatentable over Biske, Ebersole, and Thomas?
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Application 13/908,449
ANALYSIS
The rejection of claims 1-10, 13-19, 22, and 23 under 35 USC §103(a) as
being unpatentable over Biske and Ebersole.
The Examiner's position with respect to both independent claims
(claims 1 and 15) is that Biske discloses all that is claimed but for the
following limitations for which Ebersole is relied upon:
• one or more percentages (column 17, lines 7-18)
• wherein the server is programmed to deduct from the
primary account a predetermined first amount, associated
with a certain priority secondary account, in accordance
with the rules, then, after the first amount has been
subtracted from the primary account, deduct from the
remaining primary account a predetermined second amount,
associated with a lower priority secondary account, in
accordance with the rules (column 17, lines 7-18).
• one or more percentages associated with respective one or
more secondary accounts to be applied to future deposits
made to the primal}' accoitnt, the one or more secondary'
accounts being under control of the user and being
associated with the user (column 17, lines 7-18).
Non-Final Act. 4. According to the Examiner,
Id.
It would have been obvious to one of ordinary skill in the art at
the time of the invention to [combine/modify] the method of
Biske with the technique of Ebersole because it is an easy and
convenient way to accurately track both short term and long
term financial transactions and goals in a manageable and
accurate manner (Biske para. 0004).
The Appellant challenges the rejection, in part, on the ground that
"[i]n contrast to Ebersole, Applicant's Claims 1 and 15 expressly recite
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Application 13/908,449
that the programmed percentages are based on what is left after the
deduction for the higher priority accounts." App. Br. 7.
The limitation at issue is "deduct[ing] from [a] primary account a
predetermined first percentage, associated with a certain priority secondary
account, in accordance with [certain] rules [as claimed], then, after the first
percentage has been subtracted from the primary account, deduct from the
remaining primary account a predetermined second percentage, associated
with a lower priority secondary account, in accordance with the rules"
(Claim 1 ). The Examiner relied on col. 1 7, lines 7-18 of Ebersole as
evidence that this is shown in the prior art. Col. 17, lines 7-18 of Ebersole is
reproduced below:
In various exemplary embodiments, user interface 300
may allow the user to select a number of accounts in which to
deposit incoming money. For instance, the user may enter in a
pop-up window, text box, web page, or other mechanism
percentages for multiple accounts (e.g., 70% to "Spending
Money" 320, 20% to "Groceries" 321, and 10% to "All Purpose
Savings" 322) or a hierarchy of selected accounts (e.g., all
deposits to "Spending Money" 320 until account reaches a
balance of $1000.00, then all deposits to "All- Purpose
Savings" 322) or a selection based on types of deposits (e.g., all
paycheck deposits to "Spending Money" 320 and all other
deposits to "All-Purpose Savings" 322).
There is no mention in this passage of a remaining primary account,
deducting from it a predetermined second percentage, or an association with
a lower priority secondary account. Therefore, we do not see how said
passage would lead one to "deduct from [a] remaining primary account a
predetermined second percentage, associated with a lower priority secondary
account" as claimed.
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Application 13/908,449
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence. The
rejection is not sustained.
The rejection of claims 11and20 under 35 USC §103(a) as being
unpatentable over Biske, Ebersole, and Owen.
The rejection of claims 12 and 21under35 USC §103(a) as being
unpatentable over Biske, Ebersole, and Thomas.
These rejections of dependent claims are not sustained for the same
reasons discussed above.
NEW GROUND OF REJECTION
Claims 1-23 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International; 134 S. Ct 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to funds transfer. Funds transfer is a fundamental
economic practice. As such it is an abstract idea.
Step two is "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
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concept] itself."' Id. (alteration in original) (quoting Mayo Collaborative
Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of funds transfer into an inventive concept.
The method of claim 1 sets out steps "for allocating monetary
amounts from deposits in a primary account to one or more secondary
accounts" (claim 1) that depends on user-defined percentages associated
with one or more secondary accounts to be applied to future deposits made
to a primary account and priorities associated with one or more secondary
accounts. Allocating funds among accounts, whether by percentage and/or
priority, is a known operation and thus adds little to patentably transform the
information gathering abstract idea. The particular scheme as claimed
allocates the funds a particular way. But this does no more than express a
practical application of the funds transfer idea. Cf CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.").
Finally, claim 1 calls for the use of a server, memory accessible by the
server for storing files, and programming rules by a user via the internet. But
any general-purpose computer available at the time the application was filed
would have satisfied these limitations. The Specification supports that view.
See Spec., 4:9-11. "[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
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Stating an abstract idea "while adding the words 'apply it"' is not enough for
patent eligibility." Alice, 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 1 covers subject matter
that is judicially-excepted from patent eligibility under § 101. The other
independent claim - method claim 15 parallels claim 1 - similarly covers
claimed subject matter that is judicially-excepted from patent eligibility
under § 101. The dependent claims describe various funds transfer schemes
which do little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1-23 under
35 U.S.C. § 101.
For the foregoing reasons, the rejections are reversed but the claims
are newly rejected under § 101.
CONCLUSIONS
The rejections of claims under 35 U.S.C. § 103(a) as being
unpatentable over 1-23 are reversed.
Claims 1-23 are newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1-23 is reversed.
Claims 1-23 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 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 ....
REVERSED; 37 C.F.R. § 41.50(b)
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