Ex Parte Michelsen et al

Patent Trial and Appeal Board

Mar 15, 2018

10424558 (P.T.A.B. Mar. 15, 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.
10/424,558 04/25/2003 Michael J. Michelsen 90945-007400US-662565 9312
20350 7590 03/19/2018
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
Mailstop: IP Docketing - 22
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WINTER, JOHN M
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Atlanta, UA 5U5UV 3685
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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 MICHAEL J. MICHELSEN, PAUL BLAIR, DEAN SEIFERT,
and JOSEPH CACHEY
Appeal 2017-000301
Application 10/424,558
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 32, and 33. Claims 2—31 were cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is The Western Union
Company. (App. Br. 3).
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Application 10/424,558
STATEMENT OF THE CASE
Appellants’ invention relates to verifying the identity of persons
involved in money transfers (Spec. Tflf 2, 18). Representative claim 1 under
appeal reads as follows:
1. A computerized method of verifying the identity of an
attendant operating a money transfer transaction device,
authorizing their access to the money transfer transaction device
by the attendant, and allowing fund transfers to be initiated by
the attendant using the money transfer transaction device, the
method comprising:
receiving, by a host computer system, registration
information for the attendant, wherein the registration
information includes information from a magnetic stripe of a
credit card of the attendant, and wherein the receiving of the
registration information includes displaying a stored attendant
name together with a question asking the attendant if the stored
attendant name is the name of the attendant, and receiving a
response to the question from the attendant through an
identification tool;
storing, by the host computer system information
identifying a plurality of fund transfers facilitated by the
attendant over a period of time;
receiving, at the money transfer transaction device, a user
identification, a password, and a biometric identifier from the
attendant, and storing the user identification, the password, and
the biometric identifier in an identity verification database in
communication with the money transfer transition device;
receiving, at the money transfer transaction device,
information retrieved via a magnetic stripe reader;
receiving, at the money transfer transaction device, an
indication of an amount of money a sender has requested to send
to a recipient in a fund transfer;
retrieving, by the money transfer transaction device, the
user identification, the password, and the biometric identifier
from the identity verification database and transmitting, from the
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money transfer transaction device to the host computer system,
the user identification, the password, the biometric identifier, the
information retrieved via the magnetic stripe reader, and the
indication of the amount of money;
determining, by the host computer system, whether the
user identification, the password, and the biometric identifier
correspond with an authorized user;
determining, by the host computer system, whether the
information retrieved via the magnetic stripe reader corresponds
with the information from the magnetic stripe of the credit card
received in the registration information;
determining, by the host computer system, in response to
(1) a determination that the user identification, the password, and
the biometric identifier correspond with the authorized user, and
(2) a determination that the information retrieved via the
magnetic stripe reader corresponds with the information from the
magnetic stripe of the credit card received in the registration
information, whether the amount of money summed with a total
amount of the plurality of fund transfers facilitated by the
attendant over the period of time, is less than a predetermined
that the attendant is not allowed to exceed over the period of
time; and
processing, by the host computer system, the fund transfer
in response to a determination that the total amount is less than
the predetermined threshold.
REFERENCES and REJECTIONS
Claims 1, 32, and 33 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (see Final Act. 3).
Claims 1, 32, and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Joseph (US 6,883,709 B2; issued Apr. 26, 2005)
(“Joseph”), Ashe et al. (US 2003/0197782 Al; published Oct. 23, 2003)
(“Ashe”), Brody et al. (US 5,350,906; issued Sept. 27, 1994) (“Brody”),
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Korosec (US 7,433,826 B2; issued Oct. 7, 2008) (“Korosec”), and Paulsen et
al. (US 2003/0054868 Al; published Mar. 20, 2003) (“Paulsen”) (see Final
Act. 4—8).
PRINCIPLES OF LAW
Patent-Eligible Subject Matter
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts” (Alice
Corp. Pty. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012))). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas) (see id.). If so, a further
determination must be made to consider the elements of each 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 (id.).
Obviousness
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
show obviousness (see KSR Int’l Co., v. Teleflex Co., 550 U.S. 398, 415—16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
(“KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.”)). In
determining whether a claimed invention is obvious in light of a cited prior
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art reference, a prior art reference is analogous to an application if: (1) it is
from the same field of endeavor as the application, regardless of the problem
addressed, or (2) if the reference is not within the field of the inventor’s
endeavor, it is nonetheless reasonably pertinent to the particular problem
with which the inventor is involved (In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004)). As indicated, these tests are in the alternative, i.e., a finding of
either is sufficient (see In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references (see
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d413, 425 (CCPA 1981)).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
are unpersuaded by Appellants’ contentions and concur with the findings
and conclusions reached by the Examiner as explained below.
Rejection Under 35 U.S.C. §101
Independent claims 1, 32, and 33 recite computerized methods of
verifying an identity of an attendant operating a money transfer transaction
device, authorizing the attendant’s access to the money transfer transaction
device, and allowing fund transfers to be initiated by the attendant using the
money transfer transaction device, and are, therefore, directed to one of the
four statutory categories of patentability enumerated by 35 U.S.C. § 101
(process, machine, manufacture, or composition of matter). Applying the
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first part of the Alice analysis, the Examiner finds the claims are directed to
the abstract idea of authorizing an attendant to make a financial transaction
and transferring a monetary value via the authorized attendant (see Final
Act. 3; see also Ans. 2). Applying the second part of the Alice analysis, the
Examiner finds the additional elements or combination of elements in the
claim other than the abstract idea itself amount to no more than conventional
computer functions (e.g., storing and retrieving information) (see Final
Act. 3; see also Ans. 2).
Beginning with the first step of the Alice analysis, we must determine
“whether the claims at issue are directed to one of those patent-ineligible
concepts,” including abstract ideas (Alice, 134 S. Ct. at 2355). In
performing this determination, we ask whether the focus of the claims is on
a specific asserted improvement in computer capabilities or, instead, on a
process that qualifies as an “abstract idea” for which computers are invoked
merely as a tool (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358—59)).
Here, Appellants argue it is not enough that a claim merely involve,
relate to, or recite an abstract idea; instead, the claim must be directed to the
abstract idea (see App. Br. 10). According to Appellants, the claims are not
directed to an abstract idea, because the claims recite far more than the
alleged abstract idea of transferring a monetary value via an authorized
attendant (see App. Br. 11—12; see also Reply Br. 2—3).
We are not persuaded by Appellants’ arguments. Considering the
recited elements of the claims in light of Appellants’ Specification, we agree
with the Examiner’s finding that the claims are directed to an abstract idea of
verifying an identity of an attendant and authorizing the attendant to execute
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a fund transfer using a money transfer transaction device (see Final Act. 3;
see also Ans. 3). In particular, we find the claim elements recite steps for
receiving and storing information, making various determinations based on
the received information, and ultimately processing a funds transfer based on
the received information. Based on the recited elements, the claims are
directed to data comparison, which is an idea of itself and which is similar to
abstract ideas previously identified by the courts. See e.g., Elec. Power Grp
LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (holding that
claims involving collecting and analyzing information and displaying results
of the collection and analysis are drawn to an unpatentable abstract idea).
Appellants’ argument that the Examiner misapplied the Alice analysis
because the Examiner determined that the claim merely recites an idea, as
opposed to being “directed to” an idea is not persuasive. As discussed
above, the claims are similar to claims that the courts have previously
identified as being directed to abstract ideas (see Elec. Power Grp, 830 F.3d
at 1353—54). Thus, the Examiner did not err in finding that the claims are
directed to an abstract idea.
In the Reply Brief, Appellants argue, for the first time, that claims 32
and 33 include different and additional features from those recited in claim
1, and that none of the features are mentioned within the Final Office Action
or the Examiner’s Answer in relation to analyzing whether the claims recite
an abstract idea (see Reply Br. 3). This argument is entitled to no
consideration because it was not presented for the first time in the opening
brief, and Appellants have not shown good cause why it should be
considered, as required by our procedural rule (see 37 C.F.R. § 41.41(b)(2)
(2012); Optivus Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d
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978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply
brief that could have been raised in the opening brief is waived); accord Ex
parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010) (informative
opinion) (absent a showing of good cause, the Board is not required to
address an argument newly presented in the reply brief that could have been
presented in the principal brief on appeal)).
We note that even if the argument was entitled to consideration, we
would not find the argument persuasive. This is because, even though
claims 32 and 33 recite features that are slightly different from the features
recited in claim 1, claims 32 and 33 are also directed to an abstract idea of
verifying an identity of an attendant and authorizing the attendant to execute
a fund transfer using a money transfer transaction device. Appellants’
argument does not identify the “different and additional features” of claims
32 and 33 that transform the claims into patent-eligible subject matter, and
thus, would not be persuasive of Examiner error.
Because we conclude that the claims are directed to an abstract idea,
we turn to the next step of the Alice analysis. In step two, as previously
discussed, we consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether the additional elements
“‘transform the nature of the claim’ into a patent-eligible application” {Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78)).
Here, Appellants argue, even assuming arguendo that the claims are
directed to an abstract idea, the claims recite additional details that render
them patent-eligible (see App. Br. 12—13). According to Appellants, the
claimed methods are not performed on generic computers as alleged, and, to
the contrary, require particular and specialized hardware devices to
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implement the recited methods (see App. Br. 13). More specifically,
according to Appellants, claim 1 requires the use of specialized hardware,
such as a “magnetic stripe reader,” an “identity verification database,” and a
“money transfer transaction device,” and thus, the claims are similar to the
claims at issue in SiRF Technology, Inc. v. International Trade Commission,
601 F.3d 1319, 1333 (Fed. Cir. 2010), which were held to be patent-eligible
(see Reply Br. 4). Appellants additionally argue that the claimed methods
cannot be performed mentally or with pencil or paper, and, instead, the
claims recite specific techniques for device access and device security and
are necessarily rooted in computer technology to overcome a problem
specifically arising in the fields of device access and security, similar to the
claims at issue in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1257
(Fed. Cir. 2014), which were also held to be patent-eligible (see App. Br. 14—
15; see also Reply Br. 4).
We are not persuaded that the Examiner erred. Considering the
recited elements of the claims in light of Appellants’ Specification, we agree
with the Examiner’s findings that the claims merely recite generic computer
components (e.g., “host computer system” and “money transfer transaction
device”) and generic computer functions performed by the generic computer
components (e.g., receiving and storing information, making various
determinations based on the received information, and ultimately processing
a funds transfer based on the received information) which are well-
understood, routine and conventional activities which amount to no more
than implementing the abstract idea on a computer (see Final Act. 3; see also
Ans. 4). Therefore, considering the elements of the claims both individually
and in combination, we conclude there are no additional elements that
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transform the nature of the claims into a patent-eligible application (see
Alice, 134 S. Ct. at 2355).
We have considered Appellants’ arguments, but we conclude
Appellants have not provided persuasive evidence or arguments that the
combination of claim elements improves the functionality of a computer or
any other technology, or otherwise transforms the nature of the claims into
something significantly more than the aforementioned abstract idea. In
particular, we disagree with Appellants’ argument that the claims require
particular and specialized hardware devices to implement the recited
methods, and thus, we disagree that the claims are similar to claims at issue
in SiRF. Instead, as previously discussed, we find that the claims merely
recite generic computer components. For example, with respect to “host
computer system,” “identity verification database,” or “money transfer
transaction device,” Appellants do not provide, or cite to Appellants’
specification for, any specific definition that distinguishes the
aforementioned elements from generic computer components. Further, with
respect to “magnetic stripe reader,” none of the recited steps of the claims
are actually performed by the recited “magnetic stripe reader.” Instead, the
recited “money transfer transaction device” and “host computer system”
merely receive information retrieved via the recited “magnetic stripe
reader.” Thus, we find the recitation of “magnetic stripe reader” is not
sufficient to transform the claims into something significantly more than an
abstract idea.
We also disagree with Appellants’ argument that the claims are
similar to the claims in DDR because the claims are necessarily rooted in
computer technology to overcome a problem specifically arising in the fields
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of device access and security. Instead, we find the claims recite a process
implemented on a generic computer, where the process attempts to
overcome a problem (i.e., verifying that a transaction is authorized and is not
being used for an illegal or unethical purpose) that arises in business
contexts and do not necessarily involve computer technology (see e.g., Spec.
112-3).
Appellants additionally argue the claims do not preempt any
fundamental business practice or abstract idea, and are therefore patent-
eligible (see App. Br. 12). This argument is not persuasive either, as the
Federal Circuit has made clear that “the absence of complete preemption
does not demonstrate patent eligibility” of a claim (Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Therefore, we are not persuaded the Examiner erred in finding claims
1, 32, and 33 reciting patent-ineligible subject matter. Accordingly, we
sustain the rejection of claims 1, 32, and 33 under 35 U.S.C. § 101.
Rejection Under 35 U.S.C. § 103(a)
The Examiner finds that the combination of Joseph, Ashe, Brody,
Korosec, and Paulsen teaches or suggests all of the recited elements of
independent claims 1, 32, and 33 (see Final Act. 4—8). Relevant to the
present appeal, the Examiner specifically finds: Joseph teaches receiving, at
a money transfer transaction device, a user identification, a password, and a
biometric identifier from an attendant (see Final Act. 4 (citing Joseph 6:63—
65; 7:58—67; 8:1—23; Abstract; Fig. 3)); Korosec teaches receiving, by a host
computer system, registration information for an attendant, the registration
information including information from a magnetic stripe of a credit card of
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the attendant (see Final Act. 7 (citing Korosec 3:53—60; 4:30-39)); and
Paulsen teaches displaying a stored attendant name together with a question
asking the attendant if the stored attendant name is the name of the
attendant, and receiving a response to the question from the attendant
through an identification tool (see Final Act. 7 (citing Paulsen | 50)).
Appellants contend Paulsen fails to teach or suggest “wherein the
receiving of the registration information includes displaying a stored
attendant name together with a question asking the attendant if the stored
attendant name is the name of the attendant, and receiving a response to the
question from the attendant through an identification tool,” as recited in
claims 1 and 33, and allegedly recited in claim 32 (see App. Br. 16—17; see
also Reply Br. 5). More specifically, Appellants argue Paulsen merely
discloses a touch screen display that displays a game player’s name and
further displays a message requesting the game player to validate his or her
identity by entering an identification code using an alpha-numeric key pad
displayed on the touch screen display (see App. Br. 16). According to
Appellants, Paulsen fails to even mention: (1) receiving registration
information; (2) displaying a stored attendant name together with a question
asking the attendant if the stored attendant name is the name of the
attendant; or (3) receiving a response to the question from the attendant
through an identification tool (see App. Br. 16—17).
We are not persuaded by Appellants’ contention. As a threshold
matter, claim 32 fails to recite “wherein the receiving of the registration
information includes displaying a stored attendant name together with a
question asking the attendant if the stored attendant name is the name of the
attendant, and receiving a response to the question from the attendant
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through an identification tool.” Thus, Appellants’ argument does not apply
to claim 32.
With respect to claims 1 and 33, we agree with the Examiner that:
Joseph teaches receiving registration information from an attendant (see
Joseph 8:1—23); Korosec teaches registration information including
information from a magnetic stripe of a credit card (see Korosec 3:53—60;
4:30-39); and, Paulsen teaches displaying a game player’s name on a touch
screen display along with a message requesting the game player to validate
his or her identity by entering an identification code (see Paulsen | 50).
Appellants’ argument criticizing Paulsen for failing to teach or suggest the
aforementioned element of claims 1 and 33 fails to address the Examiner’s
finding that the combination of Joseph, Korosec, and Paulsen teaches the
aforementioned element, and thus, is not persuasive.
Appellants also argue one of ordinary skill in the art would not
combine Joseph, Ashe, Brody, Korosec, and Paulsen to obtain the claimed
invention because Paulsen is so far afield of the claimed invention (see App.
Br. 16). This argument is also not persuasive. As described in Appellants’
specification, identity verification is an important aspect to a money transfer
process (see e.g., Spec. 116). As previously described, Paulsen describes
verifying an identity of a game player (see Paulsen | 50). Thus, we find
Paulsen is reasonable pertinent to the particular problem (i.e., identity
verification) with which the claimed invention is involved, and, accordingly,
Paulsen is analogous art.
Therefore, we are not persuaded that the Examiner erred in finding
claims 1, 32, and 33 unpatentable in light of the cited prior art references.
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Accordingly, we sustain the rejection of claims 1, 32, and 33 under
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1, 32, and 33 under
35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1, 32, and 33 under
35 U.S.C. § 103(a).
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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