Ex Parte Lyons et al

Patent Trial and Appeal Board

Jan 12, 2018

13911699 (P.T.A.B. Jan. 12, 2018)

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.
13/911,699 06/06/2013 Dianna Lyons 90945-877713 (010020US) 8589
20350 7590 01/17/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
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 DIANNA LYONS and KELLIE NORDEN
Appeal 2016-005141
Application 13/911,699
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
MATTHEW S. METERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the Final
Rejection of Claims 2—26 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-005141
Application 13/911,699
THE INVENTION
The Appellants’ claimed invention is directed to designating amounts
of government checks into various accounts and maintaining a record of
each transaction (Spec., para. 2). Claim 2, reproduced below, is
representative of the subject matter on appeal.
2. A method for designating accounts for funds from
a check to be deposited, the method comprising:
receiving, for deposit at a processing center having a
computer processor, a direct deposit government entitlement
check from a government entity, wherein the check has an
associated recipient, wherein the check includes an identifier,
and wherein the check is subject to government mandated
reporting of expenditures of funds from the check;
prior to depositing the funds from the check at the
processing center, comparing the identifier with a recipient
database to determine that funds from the check have been
designated to be divided into sub-amounts;
dividing, by computer processor, the funds from the check
into sub-amounts based on the determination that the funds from
the check have been designated to be divided;
depositing the divided funds into a plurality of designated
deposit accounts, each of the plurality of designated deposit
accounts having an associated account type and an associated
expenditure designation;
generating a report of a total amount deposited from the
check into each of the designated accounts, including the account
type and expenditure designation associated with such account;
automatically transmitting the report to the government
entity and the recipient of the check; and
conforming to the government mandated reporting of
expenditures of funds from the check.
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Appeal 2016-005141
Application 13/911,699
THE REJECTIONS
The following rejections are before us for review:
1. Claims 2—26 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 2—26 are rejected on the grounds on non-statutory
double patenting over claims 1—26 of Lyons et al. (US Patent 8,473,413 B2;
June 25, 2013) and claims 1—20 of Lyons et al. (US Patent 8,355,986 B2;
Jan. 15,2013).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of independent claim 2 is
improper because: 1) the claim improves technical fields beyond the alleged
abstract idea; 2) non-generic machines/computers are necessary to
implement the method; and 3) the claim includes specific limitations other
than what is well-understood, routine and conventional in the field, or add
unconventional steps that confine the claim to a particular useful application
(App. Br. 4—6).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2016-005141
Application 13/911,699
In contrast the Examiner has determined that the rejection is proper
(Ans. 3, 5). The Examiner has determined that the claim is directed to an
abstract idea in a fundamental economic practice and that the claim
limitations fail to transform the abstract nature of the claim into patent
eligible subject matter (Ans. 3, 5).
We agree with the Examiner. Under 35U.S.C. § 101, 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 an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 2 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., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
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. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
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Appeal 2016-005141
Application 13/911,699
Here, we determine that the claim is directed to the concept of
dividing a check into sub-amounts in deposit accounts and generating a
record of the transaction. This is a fundamental economic practice long
prevalent in our system of commerce and a method of organizing human
activities and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea over the using generic computer components. We conclude
that it does not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
Here, the claim is not rooted in technology, but rather in the
fundamental economic practice and method of organizing human activities
of dividing a check into sub-amounts in deposit accounts and generating a
record of the transaction and is an abstract idea. Further, the claimed
limitations fail to transform the abstract nature of the claim into patent-
eligible subject matter.
For these above reasons the rejection of claim 2 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is sustained.
Dependent claims 3—18 as well as claims 25 and 26 are drawn to similar
subject matter as claim 2 and the rejection of these claims is sustained as
well.
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Appeal 2016-005141
Application 13/911,699
We reach the same conclusion as to independent system claim 19 and
dependent claims 20—24. Here, as in Alice, “the system claims are no
different in substance from the method claims. The method claims recite the
abstract idea implemented on a generic computer; the system claims recite a
handful of generic computer components configured to implement the same
idea.” Alice 134 S. Ct. at 2351. “[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea ‘while adding the words ‘apply
if is not enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S.
Ct. at 1294).
Rejections under Non-statutory Double Patenting
The Appellants have provided no arguments in regard to these
rejections in the Appeal Brief and these rejections are therefore summarily
sustained.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner’s rejections of claims 2—26 are sustained.
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Appeal 2016-005141
Application 13/911,699
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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