Ex Parte Duke et al

Patent Trial and Appeal Board

Aug 30, 2018

12291435 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/291,435 11/10/2008
123521 7590 09/04/2018
Wells Fargo Bank, N.A.
c/o Nelson Mullins Riley & Scarborough, LLP
One Wells Fargo Center
301 South College Street, 23rd Floor
Charlotte, NC 28202
FIRST NAMED INVENTOR
Michael T. Duke
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.
2827491.00055 2913
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL T. DUKE and LEIGH FERRANTE
Appeal2017-005992 1
Application 12/291,435
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-28. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to communicating predictions and
advice on spending associated with a payment account. Spec. ,r 2.
1 The Appellants identify Wells Fargo Bank, N.A. as the real party in
interest. Appeal Br. 1.
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Application 12/291,435
Claim 11 is illustrative:
11. A method for monitoring a payment account of a user and
advising on spending activity related to the payment account, the
method comprising:
enrolling a user in a computer-based predictive advisor
system comprising a predictive advisor engine;
obtaining account information about a payment account of
the user to communicatively connect the payment account to the
predictive advisor engine of the predictive advisor system so as
to provide the predictive advisor system access to the payment
account in a computer-based network;
conducting, by the predictive advisor engine, a transaction
history search associated with the payment account;
associating, by the predictive advisor engine, any payment
transactions from the transaction history search with a pre-
determined spending category or with an individualized
spending category created by the user, the spending category
having a user-permitted allowable spending variance;
setting a rule, a goal, or a combination thereof for the user
in the predictive advisor engine of the predictive advisor system;
monitoring by the predictive advisor engine of the
predictive advisor system spending activity associated with the
payment account of the user;
providing financial and savings advice to the user by the
predictive advisor engine of the predictive advisor system via the
web interface based upon the spending activity and a transaction
history associated with the payment account.
(Appeal Br.,2 Claims Appendix, 13-14.)
2 Throughout this Decision, we hereby refer to the Specification, filed
Nov. 10, 2008 ("Spec."); Final Office Action, mailed May 14, 2005 ("Final
Act."); Appeal Brief, filed Apr. 18, 2016 ("Appeal Br."); and the Examiner's
Answer, mailed Dec. 27, 2016 ("Ans."). The Reply Brief, filed Feb. 27,
2017, was not cited herein.
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Application 12/291,435
The Examiner rejected claims 1-28 under 35 U.S.C. § 101 as directed
to ineligible subject matter in the form of abstract ideas.
We AFFIRM.
ANALYSIS
Principles Of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim 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., 566 U.S. 66, 76-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
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("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores," and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. 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 under§ 101.").
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Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
(detennining claims not abstract because they "focused on a specific
asserted improvernent in computer animation").
Analysis
The Appellants argue all claims together as a group. Appeal Br. 7-10.
We select claim 11 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
We are not persuaded by the Appellants' argument that the claims do
not recite abstract ideas because they claim computer systems and a
computer network. Appeal Br. 8.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. 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 under§ 101."). Additionally, mental processes, e.g.,
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computing a score, as recited in claim 1, remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. Id. 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, [ 409 U.S. 63
(1972)].").
Claim 11 recites enrolling a user, obtaining account information,
conducting a transaction history search, associating transactions with a
category, setting a rule or goal or both, monitoring spending, and providing
advice, which all can be done mentally by a person using pen and paper.
The claim recites access via a "computer-based network," and
communicating output via a "web interface." The claim, therefore, is
directed to an abstract idea, because the computer does not alter the basic
method that could be performed without the computer.
We are not persuaded by the Appellants' argument the Examiner has
failed to meet the Office's burden of showing the claims have a lack of
utility under 35 U.S.C. § 101. Appeal Br. 8-9. The rejection was not for
lack of utility, but as directed to abstract ideas. See Final Act. 6-7, 9-10.
In the rejection the Examiner finds:
Although a computer acts as the intermediary in the
claimed method, the claims do no more than implement the
abstract idea of monitoring spending activity related to the
payment account and for providing financial and savings advice
to the user via the web interface on a generic computer. Using a
computer to enrolling, obtaining information, conducting a
transaction history search, associating payment transaction with
a pre-determined spending category, setting a goal for a user,
monitoring spending activity, notifying the user and providing a
readjusted savings strategy which is one of the most basic
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functions of a computer. All of these computer functions are
"well understood, routine, conventional activit[ies ]" previously
known to the industry. Each step does no more than require a
generic computer to perform generic computer functions.
Final Act. 9--10.
The Appellants argue "the Examiner has provided no factual basis for
the statements ... that [a]ll of these computer functions are 'well-
understood, routine conventional activit[ies]' previously known to the
industry." Appeal Br. 9. In support of the "providing financial and savings
advice ... via the web interface" limitation, the Appellants direct us to
paragraphs 6, 21, 23, 25, 26, and 32 of their Specification, and Figures 2B,
3, and 4. Appeal Br. 3.
The Specification describes that the "predictive advisor system 230
provides advice and information to the user 210 by communicating in the
computer-based environment via a web interface 220." Spec. ,r 21.
Figure 2B shows a web interface between a user and a computer. These are
basic functions to communicate information by displaying it.
Figure 4 indicates that the "PA system tracks payments made from
primary payment account." Fig. 4. The Specification further describes that
the "advisor system generates a list of the categories and payments and
provides them to the user for review and verification." Id. ,r 25. This is also
a basic function of communicating by displaying information.
Paragraph 32 refers to the flow chart of Figure 4, and describes that
"once the user is registered for predictive advisor system, the engine tracks
or monitors payments made from the primary payment account." Id. ,r 32.
Paragraph 32 also provides examples of functions that are not recited
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explicitly in claim 11, such as monitoring payment "on a category by
category level." Id.
We discern in claim 11, when construing the claim in light of the
Specification and Drawings, only steps that involve simple data receiving,
organizing, and communication, each step of which can be performed by
general purpose computers. Looking at the claim as a whole, even if it is not
"well-understood, routine, and conventional" to perform the steps of the
method using computers and computer networks utilizing web publishing
technology, because the method could have been performed by a human
with pen and paper, except for the nominal recitation of computer
components, we discern nothing beyond steps a general purpose computer
can perform without special programming.
The Appellants also argue that by asserting the focus of the claims is
on "monitoring spending activity and providing advice," the "Examiner has
disregarded the other elements of [the] claim." Reply Br. 2. However, the
Appellants have not directed us to any step of the claim that falls outside the
scope of the abstract idea of "monitoring spending activity related to the
payment account and for providing financial and savings advice to the user."
See Final Act. 6-7.
We are additionally unpersuaded by the Appellants' arguments that
because the claims are not under a pending prior art rejection, this is
evidence of subject matter eligibility. Reply Br. 2-3. A finding of novelty
or non-obviousness does not automatically lead to the conclusion that the
claimed subject matter is patent-eligible. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
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search for "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."' Alice Corp., 134 S. Ct. at 2355.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'n.for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188-89
( 1981) ("The '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 § 101 categories of possibly patentable subject
matter.").
We are finally unpersuaded by the Appellants' assertion that "the
claims are narrowly drawn to not preempt any and all generic enhancement
of data in a similar system." Reply Br. 3. "While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility. " Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); 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 ecommerce setting do not make them any less abstract.").
And, "[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d
at 1379.
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The Appellants have, therefore, not shown error in the Examiner's
rejection. For this reason, we sustain the rejection of claims 1-28 as directed
to abstract ideas under 35 U.S.C. § 101.
DECISION
We affirm the rejection of claims 1-28 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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