Ex Parte Kirsh

Patent Trial and Appeal Board

Mar 7, 2019

14024691 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/024,691 09/12/2013
20350 7590 03/11/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Robert B. Kirsh
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.
87188-887412 (lOOOlOUS) 5162
EXAMINER
AN,IGTAI
ART UNIT PAPER NUMBER
4112
NOTIFICATION DATE DELIVERY MODE
03/11/2019 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
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT B. KIRSH
Appeal 2018-001635
Application 14/024,691 1
Technology Center 4100
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 12-24. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies First Data Corporation as the real party in interest.
(App. Br. 3.)
Appeal 2018-001635
Application 14/024,691
THE INVENTION
Appellant's disclosed and claimed invention is directed to collecting,
from one source, ( 1) employment eligibility data for an employer and (2)
bank customer identification data for a financial institution. (Abstract.)
Independent claims 12 and 14, reproduced below, are illustrative of
the subject matter on appeal:
12. A method for collecting and maintaining employment
eligibility verification data and bank customer identification
data, comprising:
on behalf of an employer, collecting, at a payroll
payment enrollment system, personal identifying data
identifying a prospective employee;
accessing a database external to the payroll payment
enrollment system, in order to verify the accuracy of the
personal identifying data and satisfy a first legal requirement to
verify the eligibility of the prospective employee to work in a
jurisdiction;
verifying, at the payroll payment enrollment system, the
personal identifying data based on accessing the external
database;
after the personal identifying data is verified, evaluating,
at the payroll payment enrollment system and on behalf of a
financial institution, the personal identifying data in order to
collect bank customer identification data and satisfy a separate,
second legal requirement that the financial institution verify the
identity of a person opening an account;
storing, at the payroll payment enrollment system and on
behalf of the employer, the personal identifying data and
verification data reflecting that the personal identifying data has
been verified pursuant to the first legal requirement; and
storing, at the payroll payment enrollment system and on
behalf of the financial institution, the collected bank customer
identification data and the verification data, the collected bank
customer identification data and the verification data stored on
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Application 14/024,691
behalf of the financial institution stored as a data record
pursuant to the second legal requirement and separate from the
personal identifying data and verification data stored on behalf
of the employer.
14. A system for collecting and maintaining data for two
different entities, wherein the data comprises information
relating to the same subject but that is required to be collected
and maintained under plural, different requirements, the system
compnsmg:
a processor; and
a memory, the memory having stored therein a sequence
of instructions which, when executed by the processor, cause
the processor to:
receive, at a third party system that is operated by a third
party that is not one of the two different entities, a first set of
data entered at a user device for the subject and required for
collection by a first entity of the two entities under a first of the
plural, different requirements that the eligibility of a person to
work be verified;
determine at the third party system if the first set of data
is verified as valid;
after the first set of data is verified, capture, at the third
party system, a second set of data from the first set of data, the
second set of data relating to the same subject and required for
collection by a second entity of the two entities under a second
of the plural, different requirements that the identity of a person
opening an account be verified;
store, at the third party system and on behalf of the first
entity, the first set of data; and
store, at the third party system and on behalf of the
second entity, the second set of data, the second set of data
stored as a data record separate from the first set of data.
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Application 14/024,691
REJECTIONS
The Examiner rejected claims 12-24 under 35 U.S.C. § 101 because
the claimed invention is not directed to patent eligible subject matter. (Non-
Final Act. 4.)
The Examiner rejected claims 12-24 under 35 U.S.C. § 103 as being
unpatentable over Hermann (US 2008/0015883 Al, pub. Jan. 17, 2008) and
Rosenfeld et al. (US 7,941,351 Bl, iss. May 10, 2011) (hereinafter
"Rosenfeld"). (Non-Final Act. 11.)
ISSUES ON APPEAL
Appellant's arguments in the Appeal and Reply Briefs present the
following issues: 2
Issue One: Whether the Examiner erred in finding claims 12-24 as
directed to non-statutory subject matter. (App. Br. 7-13; Reply Br. 2---6.)
Issue Two: Whether the Examiner erred in finding the combination
of Hermann and Rosenfeld teaches or suggests the independent claim 14
limitation,
after the first set of data is verified, capture, at the third
party system, a second set of data from the first set of data, the
second set of data relating to the same subject and required for
collection by a second entity of the two entities under a second
of the plural, different requirements that the identity of a person
opening an account be verified,
2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 24, 2017); the Reply Brief
(filed Nov. 30, 2017); the Non-Final Office Action (mailed Sept. 28, 2016);
and the Examiner's Answer (mailed Oct. 3, 2017) for the respective details.
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Application 14/024,691
and the commensurate limitations recited in independent claims 12 and 13.
(App. Br. 13-16; Reply Br. 6-7.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
First Issue
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101, because the claims
are deemed to claim an abstract idea and are rejected under
§ 101. The [ c ]laims 12-24 are abstract idea of a method of
organizing human activities, which is used to describe concepts
relating to interpersonal and intrapersonal activities, such as
managing relationships or transactions between people, social
activities, and human behavior; satisfying or avoiding a legal
obligation; advertising, marketing, and sales activities or
behaviors; and managing human mental activity
(Non-Final Act. 6-7), and because
[ t ]he combination of elements in the claim( s) add nothing that
is not already presented when looking at the elements taken
individually. There is no indication that the combination of
elements improves functioning of computer or improves any
other technology. Their collective functions merely provide
conventional and generic computer implementation.
(Non-Final Act. 10; see also Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573
U.S. 208,217 (2014) (Describing the two-step framework "for
distinguishing patents that claim laws of nature, natural phenomena, and
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Appeal 2018-001635
Application 14/024,691
abstract ideas from those that claim patent-eligible applications of those
concepts.").)
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of§ 101.
(2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum").) Under the Memorandum, the
Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
(See Memorandum.)
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
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following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues that "the Examiner's characterized abstract idea is
not proper, but rather is merely a high level statement of the problem and
background to which Appellant's invention is directed" and that "the proper
test (in determining whether claims are directed to an abstract idea) is to
evaluate the focus of the claimed advance over the prior art to determine the
claim's character as a whole." (Reply Br. 2 (citing Smariflash LLC v. Apple
Inc., 680 F. App'x 977 (Fed. Cir. 2017), and Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016)).) Appellant further
contends that the Examiner's comparison of claims identified by the Federal
Circuit as directed to abstract ideas to Appellant's claimed method is in error
because "the abstract idea identified in each case is, on its face, clearly not
similar to the abstract idea characterized by the Examiner" for Appellant's
claimed method. (Reply Br. 4.)
We agree with the Examiner that claim 12 is directed to an abstract
idea. (See Ans. 2.) The claim is directed to a "method for collecting and
maintaining employment eligibility verification data and bank customer
identification data," and the recited steps
(a) comprise performance of a fundamental economic practice related to
the employment and payment of workers,
(b) describe both a commercial and legal interaction as identity
verification is a requirement for both employment and the
establishment of financial institution accounts, and
( c) are a mental process because the steps involved in identity
verification may be, and have traditionally been, manually performed.
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Thus, the claim is directed to the abstract ideas of "certain methods of
organizing human activity" and "mental processes." (Memorandum, Section
I (Groupings of Abstract Ideas); see also Spec. ,r 2 (describing the federal
legal framework for data collection related to individuals seeking
employment or the establishment of new financial accounts). )3 Our
determination that the claim's character as a whole is directed to excluded
subject matter is made upon review of the focus of the claimed advance over
the prior art, which here relates to the introduction of a "payroll payment
enrollment system" and a "database external to the payroll payment
enrollment system," which together act "on behalf of an employer" and "on
behalf of a financial institution." (See claim 12.)
We are unpersuaded by Appellant's argument that "the abstract idea
identified in each case [ cited by the Examiner] is, on its face, clearly not
similar to the abstract idea characterized by the Examiner," because we are
unaware of any legal test to discern similarity "on its face." (Reply Br. 4.)
3 (See also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of
hedging, described in claim 1 and reduced to a mathematical formula in
claim 4, is an unpatentable abstract idea .... "); Alice, 573 U.S. at 218
("These claims are drawn to the abstract idea of intermediated settlement.");
buySafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
that "are squarely about creating a contractual relationship----a 'transaction
performance guaranty"' held as "directed to an abstract idea"); Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed.
Cir. 2013) (claims reciting "generalized software components arranged to
implement an abstract concept [ of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible); Bancorp Servs., L.L. C. v. Sun Life Assur. Co.
of Can. (US.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (determining a
"'method for managing a life insurance policy comprising' seven steps" is
abstract).)
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Application 14/024,691
Nor has Appellant provided any factual basis in support of the contention
that the Examiner "grossly oversimplif[ied] the abstract ideas identified in
the cited court decisions." (Reply Br. 4.)
We also do not find the claimed method includes additional elements
that integrate the judicial exception into a practical application. While claim
12 recites a "payroll payment enrollment system" and a "database external to
the payroll payment enrollment system," these elements are recited as
generic computer elements. We agree with the Examiner that
Figure 4 of the Appellant['s] drawing[s] clearly indicate[] that
the claims run on a generic computer device with a software to
perform the functions of the claims. The specification
paragraph 11 also indicates that the invention could be
implemented in an exemplary computer system which is a
generic computer system.
( Ans. 7.) We find nothing in the claim or the disclosure that indicates ( 1) a
particular computer system architecture, (2) non-generic, non-routine, and
non-conventional elements are used to perform the method, or (3) any kind
of technological improvement. No particular machine is claimed, in that the
disclosure refers only to use of "data collection/verification system 21 O,"
"employment eligibility database 220," and "bank customer identification
database 230." (Spec ,r,r 28, 37--40; Figs. 2, 4.)
Nor does the claim recite an additional element or elements that
reflect an improvement in the functioning of a computer, or an improvement
to other technology or technical field. (See Non-Final Act. 8-10.) Rather,
the disputed limitations are part of the abstract idea itself. (See Alice, 573
U.S. at 222 ("In holding that the process was patent ineligible, we rejected
the argument that 'implement[ing] a principle in some specific fashion' will
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Application 14/024,691
'automatically fal[l] within the patentable subject matter of§ 101."'
(alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593
(1978))).)
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. (See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application).) Nor do
we find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. (See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept'
cannot be the abstract idea itself').) The remaining claim elements only
recite generic computer components that are well-understood, routine, and
conventional. (See Spec ,r,r 28, 37--40; Figs. 2, 4; Alice, 573 U.S. at 212
("merely requiring generic computer implementation fails to transform [the]
abstract idea into a patent-eligible invention").)
Accordingly, we agree with the Examiner that claim 12 is patent
ineligible, as well as independent claims 13 and 14 not separately argued,
and dependent claims 15-24 not separately argued. (See App. Br. 8-13.)
Second Issue
In finding that the combination of Hermann and Rosenfeld teaches or
suggests the claim 14 limitation at issue, the Examiner relies on the
disclosure of Hermann wherein employment eligibility is verified in a web-
based system via the electronic completion of Form I-9 by automatically
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processing work authorization documents and Social Security numbers, with
results reported back to the hiring organization. (Non-Final Act. 12-13;
Hermann Abstract, ,r,r 3, 32, Figure 1.) The Examiner further relies on the
disclosure of Rosenfeld whereby using a payroll account management
module, an employee in a payroll system is associated with a direct deposit
account, and the employee may divert funds from the deposit account into
other accounts and have debit card access. (Rosenfeld 10:66-11:19; see also
Fig. 1.)
Appellant argues that the
portion of Rosenfeld relied upon by the Examiner simply
discloses a payroll account management module providing an
employee with the option to divert funds from the deposit
account (into which funds are deposited as a direct deposit
paycheck) to other accounts of that employee.
(App. Br. 14.) Particularly, Appellant argues
Rosenfeld does not disclose receiving and capturing two
different sets of data that are needed for different requirements,
namely a legal requirement "that the eligibility of a person to
work be verified" and a separate legal requirement "that the
identity of a person opening an account be verified," as recited,
e.g., in claim 14, and that one set of data be stored on behalf of
the first entity (i.e., the employer) and the other set of data be
stored separately on behalf of the second entity (i.e., the
financial institution).
(App. Br. 15.)
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, that
[Rosenfeld] teaches elements regarding capture, at the third
party system, a second set of data from the first set of data, the
second set of data relating to the same subject and required for
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Application 14/024,691
collection by a second entity of the two entities under a second
of the plural, different requirements that the identity of a person
opening an account be verified
(Non-Final Act. 13 (citing Rosenfeld 10:66-11:19)) and that
the claimed invention is merely a combination of old elements
[from the teachings of Hermann and Rosenfeld], and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in
the art would have recognized that the results of the
combination were predictable.
(Non-Final Act. 14.)
Appellant does not point to any evidence of record that the
combination relied upon would be "uniquely challenging or difficult for one
of ordinary skill in the art" or "represented an unobvious step over the prior
art." (Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007)).) The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" because the skilled artisan is "a person of ordinary creativity, not
an automaton." (KSR, 550 U.S. at 420-21.) We are persuaded the claimed
subject matter exemplifies the principle that "[ t ]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." (KSR, 550 U.S. at 416.)
Accordingly, we sustain the Examiner's rejection of independent
claim 14, as well as independent claims 12 and 13 commensurate in scope,
and dependent claims 15-24 not separately argued. (See App. Br. 13-16.)
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CONCLUSION
For the reasons stated above, we affirm
1. the non-statutory subject matter rejection of claims 12-24; and
2. the obviousness rejection of claims 12-24.
DECISION
The Examiner's decision rejecting claims 12-24 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's decision rejecting claims 12-24 under 35 U.S.C.
§ 103 is affirmed.
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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