Ex Parte LEHMAN et al

Patent Trials and Appeals BoardMar 29, 2019

13804173 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/804, 173 03/14/2013 131244 7590 03/29/2019 Hunton Andrews Kurth LLP/JPMorgan Chase Intellectual Property Department 2200 Pennsylvania A venue, NW Suite 800 Washington, DC 20037 FIRST NAMED INVENTOR Dean K. LEHMAN 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. 72167.000798 9137 EXAMINER POE,KEVINT ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 03/29/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEAN K. LEHMAN, JOSEPH R. MCCULLOUGH, and NANCY A. ORTH Appeal2018-002586 Application 13/804, 173 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 56, 58, 63, 64, 66-76, and 79--81 under 35 U.S.C. Â§ 101.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 "The real party in interest is JPMorgan Chase Bank, N.A." (Appeal Br. 1.) 2 The Examiner's rejections under 35 U.S.C. Â§ 103 (see Final Action 10-18) have been withdrawn (see Answer 4). Appeal2018-002586 Application 13/804, 173 BACKGROUND The Appellants' invention "generally relates to a system and method for sending money via electronic mail." (Spec. 1, 11. 6-7.) More particularly, the Appellants provide a "money-mailing system 10" that includes "a main station 14," which "via the Internet 12," is accessed by senders 16 and receivers 18, "to send money e-mail." (Id. at 5, 11. 28-29; see also Fig. 1.) In short, a "sender 16" transfers an amount of money to a "receiver 18, with "a bank 20" performing the "financial transactions of the money-mailing system 10." (Id. at 5, 1. 29-6, 1. 1.) To transfer an amount of money from a sender 16 to a receiver 18, or more accurately from the sender's bank account to the receiver's bank account, the bank 20 is provided with the sender's and receiver's bank account numbers. "The main station 14 of the money-mailing system 1 O" has "at least one server 32." (Spec. 6, 11. 7-8.) The server 32 receives a first electronic message identifying the sender 16 (i.e., who he/she is) and the account identifier of the receiver 18 (i.e., the receiver's bank account number). (See id. at 3, 11. 6-13.) This first electronic message is sent via an electronic device associated with the sender 16; and this first electronic message does not include the sender's bank account number. (See id. at 29, 11. 19-21.) The server 32 then sends a second electronic message to the electronic device associated with the sender 16, and this second electronic message requests the sender's bank account number. (See Spec. 32, 11. 25-27.) The sender's electronic device is not in contact with the server 32 at the time the second electronic message is sent; and the second electronic message does not ask the sender to provide his/her bank account information in a reply to the second electronic message. (See id.) 2 Appeal2018-002586 Application 13/804, 173 Rather, the second electronic message includes a URL for the sender to contact the server 32. (See Spec. 3, 11. 6-13; 29, 11. 22-23.) The sender 16 "specifies the URL" in a request forwarded to the server 32, and the server 32 sends the URL-specified resource to the sender's electronic device. (See id.) The sender 16 can then input his/her bank account number in the URL-specified resource, so that the server 32 can receive, from the URL-specified resource, the sender's bank account number. (See id.) Thus, the Appellants' "payment processing involv[ es] the use of a URL to receive information from [the sender's] electronic device." (Appeal Br. 8.) According to the Appellants, such "interactions" between the server and the sender's electronic device are "choreographed to conduct the transaction," are "significantly more than simply transferring money from a sender to a receiver," and "result in an improvement in payment processing." (Id.) ILLUSTRATIVE CLAIM 56 (annotated version)3 56. A method of electronically transferring money from a sender to a receiver utilizing a computer network including a server, the method comprising the steps of: [a] the server receiving from a first electronic device associated with a sender, a first electronic message over a computer network comprising a sender identifier and a receiver account identifier, the sender identifier associated with a sender that is transferring an amount of money to a receiver, and the receiver account identifier associated with a receiver account that is receiving the amount of money; 3 Our annotated version of claim 56 has bracketed text, bolding, and italicizing added; and our quotes to claim 56 include these annotations. 3 Appeal2018-002586 Application 13/804, 173 [b] the server sending a second electronic message to the first electronic device to request identification of a sender account from which the amount of money will be transferred, the second electronic message comprising a URL for contacting the server, the first electronic device not being in contact with the server at the time of the server sending the second electronic message; [ c] the server receiving at the URL and from the first electronic device, the identification of the sender account from the sender; [ d] in real time, electronically withdrawing the amount of money from the sender account; and [ e] electronically depositing the amount of money to the receiver account. REJECTION The Examiner rejects claims 56, 58, 63, 64, 66-76, and 79--81 under 35 U.S.C. Â§ 101 as being "directed to a judicial exception" (i.e., an abstract idea) "without significantly more." (Final Action 6.) JUDICIAL EXCEPTIONS The Patent Act defines subject matter eligible for patent protection as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. Â§ 101. But the Supreme Court has "long held" that this provision contains an important implicit exception: "Laws of nature, natural phenomena, and abstract ideas are not patentable." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U. S. 576, 589 (2013). These three listed categories are 'judicially created exceptions to Â§ 101," or more concisely, 'judicial exceptions." AfcRO. Inc. v. Bandai Namco Garnes Am. Inc.; 837 F.3d 1299; 1311 (Fed. Cir. 2016). Thus, an "abstract idea" is considered a judicial exception to 35 U.S.C. Â§ 101. 4 Appeal2018-002586 Application 13/804, 173 THE ALICE TEST In Alice C01p. v. C2S Bank Int 'l, 573 U.S. 208 (2014\ the Supreme Court provided a two-step test to guard against an attempt to patent an unadulterated abstract idea. (Id. at 217-18.) In Alice step one, a determination is made as to whether the claim at issue is "directed to" an abstract idea. (Id. at 218.) If not, it can be concluded that no atternpt is being made to patent purely an abstract idea, and the Alice Test for patent eligibility is complete. If the claim at issue is "directed to" an abstract idea, Alice step two must be performed. (Id.) In this second step of the Alice Test, attention is given to whether additional elements in the claim are "well- understood," "routine," or "conventional." (Id. at 225.) 2019 GUIDANCE The recently published 2019 Revised Patent Subject l'viatter Eligibility Guidance ("2019 Guidance") provides guidance for lJSPTO personnel vvhen determining whether a clairn is "directed to" an abstract idea under Alice step one. (See Federal Register VoL 84, No. 4, 50-57.) The 2019 Guidance lists the following subject matter groupings of abstract ideas: ''[m]enta1 processes," "[m]athematical concepts," and "[c]ertain methods of organizing human activity." (Id. at 52.) If a claim does not contain limitations reciting an abstract idea that can be identified by one of these three groupings, this is redolent of the claim not being "directed to" an abstract idea. (Id. at 54). But even if a c1aim does contain limitations reciting an identified abstract idea, this, alone, is not sufficient to establish that the claim is "directed to" this abstract idea. Rather, in order for Alice step one to be satisfied, it must also be established that the claim does not contain additional elements (i.e., "claim features, limitations, and/or steps that are recited in the claim beyond 5 Appeal2018-002586 Application 13/804, 173 the identified judicial exception") that "integrate" the abstract idea "into a practical application." (Id. at 55, n. 24.) ANALYSIS The Examiner determines that independent claim 56 satisfies Alice step one because it is "directed to transferring money from a sender to a receiver, which is similar to the commercial practices that have been found by the courts to be abstract ideas." (Final Action 6.) We are persuaded by the Appellants' arguments that this Alice-step-one determination is not sufficiently supported by the record. (See Appeal Br. 5-8; Reply Br. 2--4.) Insofar as the Examiner is saying that a claim calling for the transfer of money from one person to another might be suspect of abstractness, we do not necessarily disagree. Indeed, the patents at issue in Alice were concerned with an "agreed-upon financial exchange" from one party to another. (See Alice 573 U.S. at213.) And, per the 2019 Guidance, an abstract idea can be identified as a"[ c ]ertain method[] of organizing human activity," involving "fundamental economic principles or practices." (Federal Register VoL 84) No. 4 at 52.) \Ne agree that, in the context ofthe Appellants' Specification, this identified abstract idea could manifest itself in the transfer of money from one person (i.e., a sender) to another (i.e., a receiver). [nsofar as the Examiner is saying that independent claim 56 contains limitations reciting the identified abstract idea, we agree. Independent claim 56 is drawn to '"[a] method'' of '\ransfoITing money from a sender to a receiver," that comprises five steps (a)---{e). (Appeal BL, Claims /\pp.) Step (a) requires receiving "a sender identifier" ("associated witll' the sender that is "trnnsforring'' 1nonev) and "a receiver account identifier'' ("associated ~- ' 6 Appeal2018-002586 Application 13/804, 173 with" the receiver that is '"receiving" this money.) (id.) Steps (b) and (c) require requesting and receiving "identification of'' the sender's account "fi:om which the money will be transfon-ed.'' (Id) Steps (d) and (e) require "withdrawing the amount of monev from the sender account'' and .._, ..) / "depositing the amount of money to the receiver account'' (Id.) In other words, the above-quoted limitations in steps (a}-(e) require the receipt of money-trnnsfeffing information from the sender (Le., who he/she is, the bank account from which money wm be withdrav...11, and the bank account into which the money will be deposited), the ,vithdrawal of the money from the sender's account, and the deposit of the money into the receiver's account This receiving, withdrawing, and depositing would occur when, for example, a person instructs a bank to transfer money from his/her bank account into the bank account of another person, and the bank transfers the money according to these instn1ctions. Thus, the record sufficiently establishes that independent claim 54 recites the identified abstract idea. 4 But this, alone, is not enough to establish that independent claim 54 is "directed to'' this identified abstract idea. Rather, the record must also establish that the additional elernents in independent clairn 54 do not integrate the identified abstract into a practical application. 5 We discern that, here, the record does not do so. The preamble of independent claim 54 calls for "electronically transferring money from a sender to a receiver utilizing a computer network 4 This is Revised Step 2A "Prong One" in the 2019 Guidance. (Federal Register Vol. 84 at 54.) 5 This is Revised Step 2A "Prong Two" in the 2019 Guidance. (Federal Register Vol. 84 at 54.) 7 Appeal2018-002586 Application 13/804, 173 including a server." (Appeal Br., Claims App.) Step (a) requires the server to receive the sender identifier and the receiver-account identifier, via "a first electronic message over a computer network from a first electronic device." (Id.) Step (b) requires that the server to send "a second electronic message to the first electronic device to request identification of the sender account." (Id.) And step (c) requires "the server" to receive the identification of the sender account "from the first electronic device." (Id.) The server, the computer network, the first electronic device, the first electronic message, and the second electronic message are additional elements beyond the identified abstract idea. But we agree with the Examiner's sentiment that each of these computer-centric elements is used merely as a tool when performing the above-quoted receiving and requesting functions required by steps (a}-(c). (See Final Action 4.) For example, a server, a computer network, a first electronic device, a first electronic message, and/or a second electronic message could each simply act as a communication channel when someone is instmcting a bank to transfer money from his/her account into the account of another person, \Vhen an additional elernent amounts to "merely us[ing] a computer as a tool to perform an abstract ideat this is indicative that this additional element, individually, does not integrate this abstract idea '"into a practical application." (Federal Register Vol. 84 at 55.) Thus, the record establishes adequately that these particular additional elements (i,e, the server, the computer network, the first electronic device, the first electronic message, and the second electronic message) do not~ individuallv\ integrate the identified abstract idea into a practical application. 8 Appeal2018-002586 Application 13/804, 173 HoweveL step ( c) also requires "the second electronic message to comprise a URL for contacting the server," and step (d) also requires the server to "receiv[e] at the URL," the sender's account identification "from the first electronic device." (Appeal Br., Claims App.) Put another way, independent claim 54 does not simply require the server to just send any second electronic message to the first electronic device; and independent claim 54 does not simply require the first electronic device to just send the sender's account identification (e.g., bank account number) to the server. In any event, the URL-limitations recited in steps ( c) and ( d) are additional elements beyond the identified abstract idea. Yet the Examiner's only comment about the URL-limitations is that URLs are "used in computer applications." (Answer 4.) The Examiner appears to imply that it is impossible for a feature used in a computer application to create an additional element beyond an identified abstract idea. But such an implication gainsays the 2019 Guidance6 and contradicts controlling case law. 7 As such, the additional elements created by the URL-limitations could possibly integrate the identified abstract idea into a practical application. 6 The 2019 Guidance "uses the term 'additional elements' to refer to claim features, limitations, and/ or steps that are recited in the claim beyond the identified judicial exception." (Federal Register Vol. 84, No. 4 at 55 n. 24.) The 2019 Guidance does not preclude features of computer applications from being "additional elements" during the Alice step one determination. 7 See lvicRo, 837 F.3d 1299 at 1315 ("\\'nile [a] result may not be tangible," there is no requirement that a claimed invention must "'be tied to a machine or transform an article' to be patentable"); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) ("Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis"). 9 Appeal2018-002586 Application 13/804, 173 The record does not reflect that this possibility was taken into consideration during the Alice-step-one determination. Moreover, independent claim 56 must be considered "as a whole when evaluating whether [a] judicial exception is meaningfully limited by integration into a practical application." (Federal Register Vol. 84, No. 4 at 55.)8 And, although "[s]ome elements may be enough on their own to meaningfully limit an exception," it is often "the combination of elements that provide the practical application." (Id.) As such, "careful consideration" must be given "to both the element and how it is used or arranged in the claim as a whole." (Id.) As discussed above, the server, the first electronic device, and the second electronic message, individua11)', might not be enough to integrate the identified abstract idea into a practical application. However) step (b) requires that) when the server is sending the second electronic message (i.e., the message con1prising the URL), the first electronic device is not in contact with the server. The record does not refiect that this combination of additional elements (i.e., the server, the first electronic device, the second electronic message, and the URL), and their interaction which each other~ was considered carefully during the Alice step one deterrnination. Consequently, we are persuaded by the Appellants' position that the Examiner does not establish sufficiently that independent claim 56 satisfies Alice step one. As such, we need not proceed to Alice step two 9 in order to 8 See also Enjish, 822 F.2d at 1336 (During "[t]he 'directed to' inquiry" (i.e., Alice step one), clairns are "considered in Hght of the specification, based on whether their character as a whole is directed to excluded subject matter"). 9 This is Step 2B in the 2019 Guidance. (Federal Register Vol. 84 at 56.) 10 Appeal2018-002586 Application 13/804, 173 conclude that, on the record before us, it has not been established that independent claim 56, and claims 58, 63, 64, and 66-75 depending therefrom, fail the Alice Test for patent eligibility. Independent claim 7 6 sets forth steps mirroring steps (a)-(e) of independent claim 56 (see Appeal Br., Claims App.), and so we reach the same conclusion with respect to independent claim 76, and claims 79-81 depending therefrom. DECISION We REVERSE the Examiner's rejection of claims 56, 58, 63, 64, 66-76, and 79-81. REVERSED 11