Ex Parte Ghosh et al

Patent Trial and Appeal Board

Aug 28, 2017

12430706 (P.T.A.B. Aug. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/430,706 04/27/2009 Debashis Ghosh 3279US2.014033.578 3678
69603 7590
Bank of America
c/o Moore and Van Allen, PLLC
P.O. Box 13706
3015 Carrington Mill Boulevard, Suite 400
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
boauspto @ mvalaw. com
u sptomail @ m valaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASHIS GHOSH, KURT D. NEWMAN, DAVID JO A,
SUDESHNA BANERJEE, THAYER ALLISON,
YANGHONG SHAO, and MARK V. KREIN
Appeal 2016-005342
Application 12/430,7061
Technology Center 3600
Before JOHN A. EVANS, CARL L. SILVERMAN, and NORMAN H.
BEAMER, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s
Final Rejection of Claims 1, 3—15, 19, 21—33, 37, and 40—50. App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 The Appeal Brief identifies Bank of America Corp., as the real party in
interest. App. Br. 1.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Sept. 24, 2015, “App. Br.”), the Reply Brief
(filed Apr. 25, 2016, “Reply Br.”), the Examiner’s Answer (mailed Feb. 25,
2016, “Ans.”), the Final Action (mailed Apr. 8, 2015, “Final Act.”), and the
Specification (filed Apr. 27, 2009, “Spec.”) for their respective details.
Appeal 2016-005342
Application 12/430,706
STATEMENT OF THE CASE
The Invention
The claim relates to an automated financial account management
system. See Abstract.
Claims 1,19, and 37 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A method for managing financial institution accounts, the
method comprising:
receiving, at a computing device, one or more financial
institution account link requests, wherein each link request
provides for linking two or more financial institution accounts
associated with a customer;
providing, by a computing device processor, for one or
more financial institution account links based on the one or
more link requests;
receiving, at a computing device, customer authorization
for financial institution implemented automated account
management of two or more of the linked financial institution
accounts;
storing, in computing device memory, the customer
authorization for the financial institution-implemented
automated account management system in a customer profile
associated with the customer; and
managing, by a computing device processor,
automatically based solely on the customer authorization and
on rules defined solely by a financial institution, the customer
authorized two or more linked financial institution accounts,
wherein managing the accounts includes, transferring
funds to maximize the customer's rate of return in the two or
more linked financial institution accounts,
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Application 12/430,706
establishing a balance between the transferring of funds
so as to maximize a rate of return in the two or more linked
financial institution accounts and minimize a quantity of
transfers; and
dynamically determining a hold time period for an
outstanding payment account debit that requires funds to be
transferred to a payment account to satisfy the debit,
wherein determining the hold time period is based on (i)
type of a transferor account, (//) amount of transfer and (Hi)
physical location of transferor account,
transferring funds to the payment account from one or
more transferor accounts based on a transferor account priority,
and
providing payment for the debit from the payment
account after conclusion of the hold time period.
Rejection
Claims 1, 3—15, 19, 21—33, 37, 40—50 stand rejected under 35
U.S.C. § 101, as being directed to non-statutory subject matter.
ANALYSIS
We have reviewed the rejection of Claims 1, 3—15, 19, 21—33, 37, 40-
50 in light of Appellants’ arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments which Appellants could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). We are not persuaded that Appellants identity reversible
error. Upon consideration of the arguments presented in the Appeal Brief
and Reply Brief, we agree with the Examiner that all the pending claims are
unpatentable. We adopt as our own the findings and reasons set forth in the
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rejection from which this appeal is taken and in the Examiner’s Answer, to
the extent consistent with our analysis below. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis. We consider Appellants’ arguments seriatim, as
they are presented in the Appeal Brief, pages 3—15.
Alice/Mayo Step 1: Abstract idea
I.
The statutory rule governing patent eligibility is found in 35 U.S.C.
§101. The Supreme Court has set forth a two-step framework for
distinguishing patents that claim so-called laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts. See Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1293 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. 2347,
2355 (2014) (following Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)).
Step 1 of the Alice/Mayo framework determines whether “the claims
at issue are directed to one of those patent-ineligible concepts.” Alice, at
2355 (citing Mayo, at 1296—97). If so, we next consider 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.” Amdocs, 841 F.3d at 1294 (citing Alice, at
2355).
II.
The Examiner finds the claims are directed to managing financial
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accounts, which is fundamental economic practice, and abstract idea in of
itself. Final Act 4. The Examiner finds the additional claimed elements
amount to no more than mere instructions to implement the idea on a
computer and/or recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities. Id. The Examiner finds the concept of account
management, as recited in the claims, is similar to the concept of risk
hedging in Bilski and both are economic practices long prevalent in our
system of commerce. Id. at 2 (referring to Bilski v. Kappos, 561 U.S. 593
(2010)).
Appellants contend the Examiner’s characterization of their claims as
“managing financial accounts,” is taken from the Specification, but out of
context. App. Br. 5. Appellants characterize their claims as reciting the
concepts of:
(1) transferring funds to maximize the customer’s rate of return in the
two or more linked financial institution accounts, establishing a
balance between the transferring of funds so as to maximize a rate of
return in the two or more linked financial institution accounts and
minimize a quantity of transfers;
(2) dynamically determining a hold time period for an outstanding
payment account debit that requires funds to be transferred to a
payment account to satisfy the debit, wherein determining the hold
time period is based on (i) type of a transferor account, (//) amount of
transfer and (Hi) physical location of transferor account;
(3) transferring funds to the payment account from one or more
transferor accounts based on a transferor account priority; and
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(4) providing payment for the debit from the payment account after
conclusion of the hold time period.
Appellants argue none of these concepts is a fundamental economic practice,
i.e., it is neither core nor essential to an economic practice. App. Br. 6—7.
III.
In cases prior to Mayo and Alice, the Supreme Court has promulgated
guidelines to distinguish patent-eligible subject matter. A “patent may issue
‘for the means or method of producing a certain result, or effect, and not for
the result or effect produced.’” Amdocs, 841 F.3d at 1309 (Reyna, J.,
dissenting) (quoting Diamond v. Diehr, 450 U.S. 175, 182 n.7 (1981)). “‘A
patent is not good for an effect, or the result of a certain process’ because
such patents ‘would prohibit all other persons from making the same thing
by any means whatsoever.’” Id. (quoting Le Roy v. Tatham, 55 U.S. 156,
175 (1852)).
Hence, the abstract idea exception must be applied in a way that
reserves patent protection for means rather than for ends and thus
maintains the incentive of “some future inventor, in the onward
march of science” to discover new ways of achieving the same
result more cheaply and efficiently than has the patentee.
Id. (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1853)).
In the case before us, the claim recitations cited by Appellants (see
App. Br. 6—7), set forth the results or effects to which the claims aspire, but
these recitations fail to inform the means by which the intended results may
be achieved. Thus, under Step 1, the claims are directed to abstract ideas.
Alice/Mayo Step 2: Inventive concept
Where, as here, the claims are found to be directed to an abstract idea,
we perform Step-two of the analysis to ensure that the claim recites an
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“inventive concept,” which the Supreme Court has defined as “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.” Amdocs, 841 F.3d at 1311 (Reyna, J., dissenting) (alteration in
original) (quoting Alice, 134 S. Ct. at 2355).
Appellants “assert[] that the pending claims recite a complex and
particular technique for managing financial accounts.” Reply Br. 2. Indeed,
Appellants contend the pending claims
are directed to complex steps of transferring funds to maximize
a customer’s rate of return in two or more linked financial
institution accounts, establishing a balance between the
transferring of funds so as to maximize a rate of return in the two
or more linked financial institution accounts and minimize a
quantity of transfers.
Id. at 2—3.
We are not persuaded. To achieve a “complex and particular
technique,” requires more, such as specific hardware or a specific algorithm
is required. Appellants briefs fail to direct our attention to any such
algorithm or hardware. We are not persuaded that the claims recite an
“inventive concept” under Alice/Mayo Step 2.
DECISION
The rejection of Claims 1, 3—15, 19, 21—33, 37, and 40-50 is
AFFIRMED.
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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
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