Ex Parte Hansen

Patent Trial and Appeal BoardDec 11, 2017

14253219 (P.T.A.B. Dec. 11, 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. 14/253,219 04/15/2014 Kurt Hansen 90945-906682 (004330US) 5468 20350 7590 12/18/2017 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER CHANG, EDWARD ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KURT HANSEN Appeal 2016-005672 Application 14/253,2191 Technology Center 3600 Before JOHN A. EVANS, LARRY J. HUME, and CARL L. SILVERMAN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1-20, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Western Union Company. Br. 2. Appeal 2016-005672 Application 14/253,219 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention "relate[] generally to financial transactions. More specifically, this application relates to methods and systems for coordinating pooled financial transactions." Spec. ^ 2. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method comprising: receiving, at a host computer system, information that defines a beneficiary and a first condition for execution of a financial transaction; receiving, at the host computer system, information regarding collection of a plurality of partial payments, wherein each of the plurality of partial payments is prohibited from originating from a particular source; recording, by the host computer system, an accumulation of collected funds for support of the financial transaction; determining by the host computer system, whether the first condition has been satisfied; and causing, by of the host computer system, the accumulation of collected funds to be transferred to the beneficiary upon or after satisfaction of the first condition. 2 Our decision relies upon Appellant's Appeal Brief ("Br.," filed Oct. 22, 2015); Examiner's Answer ("Ans.," mailed Mar. 2, 2016); Final Office Action ("Final Act.," mailed Apr. 22, 2015); and the original Specification ("Spec.," filed Apr. 15, 2014). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal 2016-005672 Application 14/253,219 Rejection on Appeal3 Claims 1-20 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 3. CLAIM GROUPING Based on Appellant's arguments (Br. 3-6), we decide the appeal of the non-statutory subject matter rejection of claims 1-20 on the basis of representative claim l.4 ISSUE Appellant argues (Br. 3-6) the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue: Did the Examiner err in concluding that representative claim 1 as well as independent claims 8 and 15 and claims depending therefrom are patent ineligible because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea, i.e., the claims are directed to a fundamental economic practice and a method of organizing human activities? 3 In the event of further prosecution, we invite the Examiner to consider an objection or rejection of claim 1 under 35 U.S.C. Â§ 112(b) for indefiniteness because of the apparent typographical error in the recitation of the step of "causing, by of the host computer system . . . ." 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. Â§ 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 3 Appeal 2016-005672 Application 14/253,219 ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellant's arguments with respect to claims 1-20 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellant contends the Examiner erred "at least because (1) the Office Action overreaches on what an abstract idea is, and therefore what it is in these claims, and (2) significantly more than the alleged abstract idea is present in these claims." Br. 3. Step 1 â€”Abstract Idea With respect to contention (1), Appellant relies upon the USPTO's 2014 Examiner Guidelines, which Appellant purports gives 13 examples of what constitutes an abstract idea, with each containing an average of 6.5 words. The most words any of the examples have is 12 words ("a mathematical procedure for converting one form of numerical representation to another"). The instant independent claims have 109, 83, and 89 words, respectively, after the preamble, which include concrete and tangible (i.e., non-abstract) steps of things like causing 4 Appeal 2016-005672 Application 14/253,219 funds transfers to occur. For at least this reason, the Office Action's analysis under Â§ 101 is deficient. Br. 4.5 In response, the Examiner finds, It is clearly seen in the claims that series of steps are performed in the claims for the purpose of "coordinating pooled funds for the financial transactions" involved particular behaviors that are "interpersonal activities" of "managing relationships or transactions between people, social activities, or behaviors," "satisfying or avoiding a legal obligation," and "sales activities or behaviors," which are subcategories of activities that the precedential courts have found to be abstract idea under "certain methods of organizing human activity." Furthermore, "coordinating pooled funds for the financial transactions" is a "fundamental economic practice"; as stated in the July 2015 Update, ". . . phrase "fundamental economic practices" is used to describe concepts relating to the economy and commerce such as agreements between people in the form of contracts, legal obligations, and business relations ..." Therefore, it is clear that applicant's claims are directed to an abstract idea. Ans. 3. Section 101 provides that anyone who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' may obtain a patent. 35 U.S.C. Â§ 101. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize "the basic tools of scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); 5 As a threshold matter, we find Appellant's argument (Br. 4), based upon a word count of the claim limitations on appeal compared to examples in Examination Guidelines, facially unavailing to persuade us the Examiner erred in concluding the claims on appeal are directed to an abstract idea. 5 Appeal 2016-005672 Application 14/253,219 Alice Corp. Pty Ltd. v. CLS Bank Infl, 134 S. Ct. 2347, 2354 (2014). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Id. The Supreme Court's two-part Mayo!Alice framework guides us in distinguishing between patent claims that impermissibly claim the "building blocks of human ingenuity" and those that "integrate the building blocks into something more." Alice, 134 S. Ct. at 2354. First, we "determine whether the claims at issue are directed to a patent-ineligible concept." Id. at 2355. If so, we "examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps6 of the Alice framework are related, the "Supreme Court's formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the Â§ 101 inquiry." Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court "has not established a definitive rule to determine what constitutes an 'abstract idea'" for the purposes of step one. Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2357). However, our reviewing court has held claims ineligible as being directed to an abstract idea when they merely collect electronic information, display information, or embody mental processes that could be performed by 6 Applying this two-step process to claims challenged under the abstract idea exception, the courts typically refer to step one as the "abstract idea" step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). 6 Appeal 2016-005672 Application 14/253,219 humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the same time, "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law."). Under the "abstract idea" step we must evaluate "the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at 1257 (citation omitted). Turning to the claimed invention, claim 1 recites: A method comprising: receiving, at a host computer system, information that defines a beneficiary and a first condition for execution of a financial transaction; receiving, at the host computer system, information regarding collection of a plurality of partial payments, wherein each of the plurality of partial payments is prohibited from originating from a particular source; recording, by the host computer system, an accumulation of collected funds for support of the financial transaction; determining by the host computer system, whether the first condition has been satisfied; and causing, by of the host computer system, the accumulation of collected funds to be transferred to the beneficiary upon or after satisfaction of the first condition. Br. 8 (Claims App'x). 7 Appeal 2016-005672 Application 14/253,219 Thus, as a whole, we find method claim 1 recites recording accumulation of collected funds by a host computer, and effecting conditional transfer of the accumulated funds based upon satisfaction of a condition determined by information (data) received by the host computer. See also Final Act. 4. The Examiner concludes: The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) is/are directed to a fundamental economic practice and a method of organizing human activities. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: mere instructions to implement the idea on a computer, and recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Final Act. 3; see also Ans. 3, quoted, supra. Under step one, we agree with the Examiner that the inventions claimed in each of independent claims 1, 8, and 15 are directed to an abstract idea, i.e., organizing human activities pertaining to financial transactions involving receiving, processing, evaluating/determining whether a condition has been met and, based upon the evaluation of the condition being met, transferring accumulated funds. 8 Appeal 2016-005672 Application 14/253,219 As the Specification itself observes, "this application relates to methods and systems for coordinating pooled financial transactions." Spec. ^ 2.7 8We find this type of activity, i.e., managing financial transactions, includes longstanding conduct that existed well before the advent of computers and the Internet, and could be carried out by a human with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("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.")} Our reviewing court has previously held other patent claims ineligible for reciting similar abstract concepts. For example, while the Supreme Court has altered the Â§ 101 analysis since CyberSource in cases like Mayo and Alice, they continue to "treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146â€”47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354). 7 See also. Spec. 19 ("Abstract"): Methods and systems are provided for processing a financial transaction. A set of conditions is received that define circumstances for execution of the financial transaction. Funds are collected for each of a plurality of partial payments prior to satisfaction of the set of conditions, with at least two of the partial payments being collected from different persons. The collected funds are accumulated for support of the financial transaction until satisfaction or failure of the set of conditions. 8 CyberSource further guides that "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under Â§ 101." CyberSource, 654 F.3d at 1373. 9 Appeal 2016-005672 Application 14/253,219 In this regard, the claims are similar to claims our reviewing court has found patent ineligible in Elec. Power Grp., 830 F.3d at 1353-54 (collecting information and "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category"). Therefore, in agreement with the Examiner, we conclude independent claims 1, 8, and 15 involve nothing more than receiving and evaluating data to determine whether a condition has been met before carrying out an operation, i.e., causing accumulated funds to be transferred, without any particular inventive technology â€” an abstract idea. See Elec. Power Grp., 830 F.3d at 1354. We further refer to Content Extraction, where the Federal Circuit has provided additional guidance on the issue of statutory subject matter by holding claims to collecting data, recognizing certain data within the collected data set, and storing that recognized data in memory were directed to an abstract idea and therefore unpatentable under Â§ 101. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014). Accordingly, on this record, and under step one of Alice, we agree with the Examinerâ€™s conclusion the claims are directed to an abstract idea. Step 2 â€”Inventive Concept Appellant relies upon USPTO Examination Guidelines to rebut the Examiner's legal conclusions regarding whether the claims provide something more than implementation of the abstract idea itself. Br. 4-6. We have considered these guidelines, which are based on controlling case law and USPTO policy at the time the guidelines were issued. However, the 10 Appeal 2016-005672 Application 14/253,219 PTAB applies relevant U.S. Supreme Court and the Federal Circuit case law to the facts of each patent application on appeal, and does not rely on guidelines intended to train Patent Examiners as controlling legal authority. As our reviewing court has held, if the concept is directed to a patent- ineligible concept, as we conclude under Step 1, above, we proceed to the "inventive concept" step. For that step we must "look with more specificity at what the claim elements add, in order to determine 'whether they identify an "inventive concept" in the application of the ineligible subject matter' to which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353). In applying step two of the Alice analysis, our reviewing court guides we must "determine whether the claims do significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any "additional features" in the claims that constitute an "inventive concept," thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be more than "well-understood, routine, conventional activity." Mayo, 566 U.S. at 79. Evaluating representative claim 1 under step 2 of the Alice analysis, we agree with the Examiner that it lacks an "inventive concept" that transforms the abstract idea of a fundamental economic practice and method of organizing human activities into a patent-eligible application of that abstract idea. See Final Act. 3; and see Ans. 3â€”4. We agree with the 11 Appeal 2016-005672 Application 14/253,219 Examiner because, as in Alice, we find the recitation of a method that receives and evaluates information (data) by a computer before taking a conditional action is simply not enough to transform the patent-ineligible abstract idea here into a patent-eligible invention. See Alice, 134 S. Ct. at 2357 ("[CJlaims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention."). Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's conclusion that the appealed claims are directed to patent-ineligible subject matter. Therefore, we sustain the Examiner's Â§ 101 rejection of independent claim 1, and grouped claims 2-20 which fall therewith.9 CONCLUSION The Examiner did not err with respect to the non-statutory subject matter rejection of claims 1-20 under 35 U.S.C. Â§ 101, and we sustain the rejection. 9 We note, with respect to the dependent claims on appeal, Appellant merely states "the Office Action makes no effort to analyze these claims and state any grounds for why the recitations of these claims do not amount to significantly more than the alleged abstract idea. This is contrary to the Interim Guidance which states that '[e]very claim must be examined individually, based on the particular elements recited therein, and should not be judged to automatically stand or fall with similar claims in an application.'" Br. 6. We find this is not a substantive argument as to how any of the dependent claims cures the deficiencies of the independent claims addressed herein. 12 Appeal 2016-005672 Application 14/253,219 DECISION We affirm the Examiner's decision rejecting claims 1-20. 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)(iv). See 37 C.F.R. Â§41.50(f). AFFIRMED 13