Ex Parte Manohar

Patent Trial and Appeal BoardSep 21, 2018

13135618 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/135,618 7590 Ashok Tamma FILING DATE FIRST NAMED INVENTOR 07/11/2011 Jagadish Chandra Manohar 09/21/2018 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. JM_OlCIP _US 4540 EXAMINER 36 Greenleigh Drive ZARE, SCOTT A Sewell, NJ 08080 ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 09/21/2018 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 JAGADISH CHANDRA MANOHAR Appeal2017-006962 1 Application 13/135,6182 Technology Center 3600 Before MURRIEL E. CRAWFORD, BRADLEY B. BAY AT, and MATTHEWS. MEYERS, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the decision rejecting claims 1-5, 7-17, and 19-26, which are all the pending claims in the application, under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our Decision references Appellant's Appeal Brief ("Br.," filed Oct. 3, 2016), the Examiner's Answer ("Ans.," mailed Jan. 27, 2017), and Final Office Action ("Final Act.," mailed April 5, 2016). 2 Appellant identifies "Manohar Enterprises, Inc." as the real party in interest. Br. 3. Appeal2017-006962 Application 13/135,618 STATEMENT OF THE CASE Claimed Subject Matter Appellant's invention relates to "[a] computer implemented method and system for providing automated controls for enterprise resource planning systems comprising a bank balance funds check control and a negative balance control." Spec., Abstract. Method claim 1, computer program product claim 19, and system claim 26 are the independent claims on appeal, and recite substantially similar subject matter. See Br. (Claims App. 1-14). Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer implemented method executed by one or more processors for handling exceptions occurring during processing of a financial transaction performed through an enterprise resource planning system, comprising: integrating a plurality of add-on controllers and additional accounting effect engines into said enterprise resource planning system, wherein a standard functionality module of said enterprise resource planning system performs said processing of said financial transaction comprising processing one of a journal, an invoice, a positive receipt, and a negative receipt, wherein said handling of said exceptions occurring during said processing of said financial transaction comprises controlling said processing of said financial transaction based on bank balance funds available and transaction type, wherein said bank balance funds available is determined by aggregating bank balance amounts available for said financial transaction in one or more related general purpose bank accounts, wherein said plurality of add-on controllers comprise an add-on bank balance funds check controller and an add-on negative balance controller, and wherein said plurality of 2 Appeal2017-006962 Application 13/135,618 additional accounting effect engines comprise add-on first and second additional accounting effect engines; monitoring said financial transaction and detecting said exceptions occurring during said processing of said financial transaction, wherein said standard functionality module is unable to handle said exceptions; handling said exceptions occurring during said processing of said financial transaction, by said plurality of add-on controllers, wherein said bank balance funds check controller handles said exceptions by first determining said bank balance funds available after said aggregation of said bank balance amounts available for said financial transaction in said one or more related general purpose bank accounts, and then controlling said processing of said financial transaction based on said bank balance funds available, wherein said bank balance funds check controller allows said processing of said financial transaction based on determining adequacy of said bank balance funds available for said processing of said financial transaction, thereby preventing negative bank balance funds resulting in or increasing in said one or more related general purpose bank accounts as a result of said processing of said financial transaction, and wherein said negative balance controller further controls said financial transaction by monitoring said transaction type and allowing said processing of said financial transaction, irrespective of said bank balance funds available being inadequate for processing one of said positive receipt and said negative receipt; said controlling of said processing of said financial transaction further comprising: creating a first additional account and a second additional account, wherein said first additional account and said second additional account are 3 Appeal2017-006962 Application 13/135,618 associated with said enterprise resource planning system; attaching each of said first and second additional accounts with a plurality of transaction codes; defining a first additional accounting effect for said controlling of said processing of said financial transaction, wherein said first additional accounting effect is associated with said bank balance funds check controller; defining a second additional accounting effect for said controlling of said processing of said positive and negative receipts, wherein said second additional accounting effect is associated with said negative balance controller; referencing one of said plurality of transaction codes for said controlling of said processing of said financial transaction by said bank balance funds check controller, based on determining adequacy of said bank balance funds available for processing said financial transaction; and allowing said processing of one of said positive receipt and said negative receipt, by said negative balance controller and said bank balance funds check controller, irrespective of said bank balance funds available being inadequate for said processing of one of said positive receipt and said negative receipt. Br., Claims App. 1-3. ANALYSIS We are not persuaded by Appellant's arguments that the Examiner erred in concluding that claims 1-5, 7-17, and 19-26 are directed to non- 4 Appeal2017-006962 Application 13/135,618 statutory subject matter. Upon consideration of Appellant's assertions in the Appeal Brief (Br. 11-21 ), we agree with the Examiner's rationale for the rejection and response to arguments, set forth on pages 2-7 of the Answer. Accordingly, we adopt them as our own. We add the following for emphasis. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenmnena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, ''[ w ]hat else is there in the claims before us?" To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements ''transfonn the nature of the claim" into a patent- eligible application. [The Court] described step two of this analysis as a search for an "'inventive concept'"-i.e., 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." Alice Corp. Pty. Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2355 (2014) ( citing and quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). In applying the framework set out in Alice, and as the first step of that analysis, the Examiner determined that the claims are directed to a "method of processing some types of financial transactions ( e.g., journal, invoice) when there is an adequate aggregated account balance, and processing other types of financial transactions (e.g., positive and negative receipts) irrespective of any account balance. This is considered to be an abstract idea 5 Appeal2017-006962 Application 13/135,618 because it is amounts to nothing more than an economic principle for processing transactions." Final Act. 4--5. Alleging error under Alice step one, Appellant argues that the "invention is not directed to processing of financial transactions; instead, it is a control system directed to handling exceptions occurring during the processing of [a] financial transaction ( controlling the processing of financial transaction[ s ]). " Br. 14. According to Appellant, "[h ]andling exceptions is defined as controlling the processing of financial transaction[ s] based on bank balance funds available and transaction type ... [which] is limited to the technological environment of ERP systems." Id. at 13. Drawing a parallel with the Federal Circuit's decision in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Appellant contends: Similarly, applicant's claims are not directed to an abstract idea. Rather, they are directed to a specific improvement in the way an ERP System operates, embodied in the applicant's control system. Furthermore, the focus of the claims is on an improvement on the functionality of the ERP System, and not on how a standard ERP System with only the standard functionality module performs the processing of a financial transaction. Br. 15. We are not persuaded. There is no meaningful difference between the Examiner's articulation of the abstract idea as processing of financial transactions, and Appellant's characterization as controlling the processing of financial transactions. Although the Examiner frames the abstract idea more broadly, controlling the processing of a financial transaction is encompassed within the concept of conducting a financial transaction, which is a fundamental economic practice. "An abstract idea can generally be described at different 6 Appeal2017-006962 Application 13/135,618 levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240- 41 (Fed. Cir. 2016). The Examiner properly looked to the background of the Specification to assess the problems recognized and solution advanced by Appellant, and determined that the claim's character as a whole is directed to excluded subject matter. See Ans. 2--4. For example, the Examiner states: The bank balance funds check control (BBFCC) is in essence a control for preventing the writing of bad checks. "The bank balance funds check control checks the bank balance funds available before each financial transaction and validates the financial transaction only if the bank balance funds available is adequate. If the bank balance funds is inadequate, the bank balance funds check control (BBFCC) prevents validation of the financial transaction," and thus, "prevents a check being written against a financial transaction, for example, an invoice when the bank balance funds available is inadequate for [paying] the invoice." Id. at ,r 0014. Hence, the bank balance funds check control "implement[ s] a restriction on the standard flexible functionality of an enterprise resource planning (ERP) system." Specification, ,r 0035. Ans. 3. Contrary to Appellant's assertion, the Examiner determines and we agree, that "[ t ]he claims are not directed to an improvement to the computer itself or another technological field. Rather, they are directed to a business solution that implements an algorithm to process transactions, and more specifically, determine whether a given transaction in a given scenario should be permitted." Id. at 5. Here, unlike the claims found non-abstract in prior cases, the claims use generic computer technology (i.e., processor, server) to control the processing of financial transactions based on bank balance funds available and transaction type, and fail to recite any improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. 7 Appeal2017-006962 Application 13/135,618 Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused on a specific asserted improvement in computer animation."). The alleged advantages that Appellant touts do not concern an improvement to computer capabilities, but instead relate to an "improved process that puts together the underlying financial and accounting concepts" (Spec. ,r 0091), for which a generic computer is used as a tool in its ordinary capacity. See Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to "the mere formation and manipulation of economic relations" and "the performance of certain financial transactions" have been held to involve abstract ideas). Further, relying on the decision in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellant argues that "monitoring and controlling the processing of financial transactions performed on the program server of the ERP System that the applicant's control system has achieved was unknown in the pre-internet era ... and do not recite a commonplace business method" directed to an abstract idea. Br. 16. Appellant's reliance on DDR Holdings is misplaced. In DDR Holdings, the Federal Circuit determined that, although the patent claims at issue involved conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host's website after "clicking" on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The court held that those claims were directed to statutory subject matter because they recite a solution "necessarily rooted in computer 8 Appeal2017-006962 Application 13/135,618 technology in order to overcome a problem specifically arising in the realm of computer networks." Id. Unlike DDR Holdings, Appellant does not identify any problem particular to computer networks and/or the Internet that claim 1 allegedly overcomes. In fact, the court in DDR Holdings cautioned "that not all claims purporting to address Internet-centric challenges are eligible for patent." DDR Holdings, 773 F.3d at 1258. For example, the court distinguished the patent-eligible claims at issue from claims found patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims were "'directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before."' DDR Holdings, 773 F.3d at 1258 (quoting Ultramercial, 772 F.3d at 714). Nevertheless, those claims were patent ineligible because they "merely recite[d] the abstract idea of 'offering media content in exchange for viewing an advertisement,' along with 'routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet."' DDR Holdings, 773 at 1258 ( citation omitted). Appellant "submits that applicant's disclosure is not a novel abstract idea as stated in the office action. Therefore, applicant submits that her invention qualifies as allowable subject matter under Step 2A of the Alice Corp. Guidelines." Br. 17. We cannot agree because a novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 132 S. Ct. at 1304 (rejecting the suggestion that Sections 102, 103, and 112 might perform the appropriate screening function and noting that in Mayo such an approach "would make the 'law of nature' 9 Appeal2017-006962 Application 13/135,618 exception ... a dead letter."); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) ("[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature ( or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility."). The fact that a claimed concept is "[g]roundbreaking, innovative, or even brilliant" does not by "itself satisfy theÂ§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Indeed, "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the Â§ 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-189 (1981). In contesting the Examiner's determination under Alice step two, Appellant argues "[t]here are several limitations in claims 1, 19, and 26 that satisfy the significantly more clause of Step 2B" and reproduces those limitations, including a "note" describing the function of each limitation. See Br. 18-21. This argument is flawed because the Examiner included those features as part of the abstract idea under Step 2A, and determined that the additional or combination of elements in the "claims recite a processor, a memory, an input device, an output device, a network interface, and a display" that are insufficient to ensure that the claims amount to significantly more than the abstract idea. Final Act. 5. It is well-established by now that the introduction of a generic computer or computing elements into the claims does not alter the analysis here because 10 Appeal2017-006962 Application 13/135,618 the 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 it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment."' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[ t ]" an abstract idea "on ... a computer," that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our Â§ 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional featur[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice, 134 S. Ct. at 2358 (citations omitted). The relevant question is whether the claim here does more than simply instruct the practitioner to implement the abstract idea on a generic computer. Id. at 2359. We conclude that it does not. We agree with the Examiner that the claimed invention merely requires generic computer implementation, and fails to transform the abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2358; see also, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (explaining that "generic computer components such as an 'interface,' 'network,' and 'database' .... do not satisfy the inventive concept requirement" ( citations omitted)). The functions performed by the claimed process embody basic functions of a computer that amount to nothing more than programming conventional software or hardware to perform a mathematical operation. See OIP Techs., 11 Appeal2017-006962 Application 13/135,618 Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015) ("relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible."). In view of the foregoing, we are not apprised of error by the Examiner and, therefore, we sustain the rejection of claims 1-5, 7-17, and 19-26 under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. DECISION The Examiner's decision to reject claims 1-5, 7-17, and 19-26 is affirmed. 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). AFFIRMED 12