Ex Parte Milam

Patent Trial and Appeal BoardOct 31, 2018

14472647 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/472,647 08/29/2014 98665 7590 10/31/2018 Otterstedt, Ellenbogen & Kammer, LLP P.O. Box 381 Cos Cob, CT 06807 FIRST NAMED INVENTOR AmyC.Milam 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. P0074 l-US-CONT 9706 EXAMINER WONG,ERICTAKWAI ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 10/31/2018 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 AMY C. MILAM Appeal2017-008166 Application 14/472,647 Technology Center 3600 Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and CATHERINE SHIANG, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Office Action rejecting claims 1-7, which are all the pending claims on appeal. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The real party in interest is MasterCard International Incorporated. App. Br. 3. Appeal2017-008166 Application 14/472,647 STATEMENT OF THE CASE Appellant's Specification describes methods and systems for electronic payment. Spec. 1: 18-19. Claim 1 is illustrative of Appellant's invention, as reproduced below: 1. A method for facilitating an electronic funds transfer in an electronic funds payment system, said method comprising the steps of: obtaining, at a computing device of an operator of said electronic funds transfer bill payment system, from an originator, a dropped payment file, said dropped payment file including data associated with at least one unsuccessful attempt to match payment data to said biller; cleaning, by said computing device, said data in said dropped payment file to create an updated dropped payment file; applying, by said computing device, matching logic to said updated dropped payment file to identify corrective billing data of said biller; provisioning said corrective billing data to at least one of said biller and a consolidator of said biller, causing said at least one of said biller and said consolidator of said biller to validate to said computer device said corrective billing data; and transmitting a client output file over a transmission medium to said originator, advising said originator of said corrective billing data of said biller, wherein said corrective billing data has been validated by said biller. Examiner's Rejection Claims 1-7 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to patent-ineligible subject matter. Final Act. 2---6; Ans. 2. 2 Appeal2017-008166 Application 14/472,647 PRINCIPLES OF LAW Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court has long held that "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). "The 'abstract ideas' category embodies 'the longstanding rule that '[a]n idea, of itself, is not patentable."" Id. at 2355 ( quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court set forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent- ineligible concepts," such as an abstract idea. Id. (citing Mayo, 566 U.S. at 77-78). If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to "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 3 Appeal2017-008166 Application 14/472,647 concept] itself."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72- 73). The prohibition against patenting an abstract idea "'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant post solution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). ANALYSIS The Examiner determines claims 1-7 are directed to ideas that have been identified as abstract by our reviewing court. Final Act. 2-6. In particular, the Examiner finds that the abstract idea underlying these claims is "facilitating a funds transfer, which is a fundamental economic practice and therefore an abstract idea," which is similar to the economic practices that have been found to be abstract ideas. Final Act. 2-3 ( citing Alice; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015)). The Examiner also finds additional elements recited in the claims do not amount to significantly more than the abstract idea itself. Final Act. 3--4. According to the Examiner, the claims require no more than performing generic computer functions. Final Act. 5. Appellant presents several arguments against the 35 U.S.C. Â§ 101 rejection. App. Br. 6-10. First, Appellant contends the claims are not directed to an abstract idea because the claims are drawn to "analyzing dropped payment files," instead of the alleged "'performing a funds transfer,"' and the Examiner has not provided a prima facie case. App. Br. 4 Appeal2017-008166 Application 14/472,647 6. Appellant also contends the claims recite significantly more than an abstract idea because the claims describe a specific way "to identify corrective billing data using an updated dropped payment file, provision this corrective billing data to a biller, causing the biller to validate to the corrective billing data, and transmit a client output file advising an originator of the corrective billing data, so validated" to solve a problem (e.g., dropped payments, arising from an electronic funds transfer). App. Br. 7. Appellant also asserts, similar to the claims in Bascom Global Internet Services., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the instant claims recite features that amount to significantly more than a judicial exception. App. Br. 8; Reply Br. 9--10. Appellant also argues claims 1-7 do not attempt to preempt every application of "an electronic funds transfer in an electronic funds payment system" and "a computing device of an operator of said electronic funds transfer bill payment system." App. Br. 9; Reply Br. 11-12. We are not persuaded by Appellant's arguments. Instead, we observe the Examiner has provided a comprehensive response to Appellant's arguments supported by a preponderance of evidence. Ans. 2---6. As such, we adopt the Examiner's findings and explanations provided therein. Id.; Final Act. 2---6. Alice Step One Turning to the first step of the Alice inquiry, we agree with the Examiner that Appellant's claims are directed to an abstract idea of funds transfer in a payment system. Final Act. 3; Ans. 3. All the steps recited in Appellant's claim 1, including, for example: (i) "obtaining, ... , a dropped payment file," (ii) "cleaning, ... , said data in said dropped payment file to 5 Appeal2017-008166 Application 14/472,647 create an updated dropped payment," (iii) "applying, ... , matching logic to said updated dropped payment," (iv) "provisioning said corrective billing data to at least one of said biller and a consolidator of said biller," (v) and "transmitting a client output file over a transmission medium to said originator," are abstract processes of receiving, analyzing, and transmitting data. As stated by the Examiner, these steps provide mechanisms "to improve and/or automate existing logic for locating correct biller (many biller profiles may be present in the system for an existing biller)" (Spec. 3: 13-15, emphasis added), whereas "the computer is merely being used as a tool to increase efficiency by automating the manual data processing activity." Ans. 3. Our reviewing court finds an abstract idea in receiving, analyzing, and transmitting data. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting information, analyzing it, and displaying certain results of the collection and analysis" is abstract). See also Bascom, 827 F.3d at 1349-52; cf Spec. 42:8-20 (describing the claimed operation "can be implemented, for example, by one or more appropriately programmed general purpose computers, such as, for example, servers or personal computers"); Cybeifone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) (nonprecedential) ("using categories to organize, store, and transmit information is well-established"). Similarly, all the additional steps executed by claims 2-7 are abstract processes of receiving, analyzing, and transmitting data. Contrary to Appellant's argument that the Examiner's analysis is based on an oversimplified interpretation of the claims (App. Br. 7 (citing McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)), the claims in the 6 Appeal2017-008166 Application 14/472,647 present application fail to recite the technical details that describe the alleged technical improvement of computerized building estimation. Instead, the claims merely recite the abstract idea of obtaining a dropped payment file, processing the information in the box, and transmitting the result. Alice Step Two Turning to the second step of the Alice inquiry, we find nothing in Appellant's claims that adds anything "significantly more" to transform them into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2357. The claimed steps are ordinary steps in data analysis and are recited in an ordinary order. We are not persuaded by Appellant's unsupported attorney argument that the claims represent a technical improvement because the claims specify a specific way of funds transfer ( e.g., "'facilitating an electronic funds transfer in an electronic funds payment system"' to solve a problem ( e.g., dropped payments). App. Br. 8. Appellant does not persuasively explain how the claims or Specification provide specific, technical improvements. Rather, as the Examiner points out, the addition of a processor, memory, interfaces (i.e., dashboard) do not add meaningful limitations to the abstract idea. Ans. 5. Indeed, the Specification supports the finding that the claimed system is implemented on a general purpose computer. See Spec. 42:8-20. Thus, the Specification does not describe the system as made up of special- purpose or specially configured computer components, but rather, as a general-purpose computer that includes generic components. As a result, nothing recited by the claims "offers a meaningful limitation beyond generally linking 'the use of the [ method] to a particular technological 7 Appeal2017-008166 Application 14/472,647 environment,' that is, implementation via computers." Alice, 134 S. Ct. at 2360 (quoting Bilski, 561 U.S. at 610-11). We are also unpersuaded by Appellant's argument that the claimed steps of obtaining a dropped payment file including data, cleaning of data, applying matching logic and causing the validation of the data are performed by "a computing device of an operator of said electronic funds transfer bill payment system," which is believed to be amount to significantly more than a judicial exception, are like those in Bascom. See App. Br. 8; Reply Br. 9--10. As discussed above, the Specification describes the claimed systems as implemented on a general purpose computer with a generic database program and processing environment. See Spec. 10:19--29, 42:8-20. The claims' invocation of computers does not transform the claimed subject matter into patent-eligible applications. Elec. Power Group, 830 F.3d at 1355. As in Electric Power Group, the claims at issue do not require any nonconventional computer, network, or display components, or even a "non-conventional and non- generic anangernent of known, conventional pieces," but merely call for performance of the claimed exception processing functions "on a set of generic computer components." Bascom, 827 F.3d at 1349-52. As recognized by the Supreme Court, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding claims "simply instruct[ing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer" are not patent-eligible); see also Ultramercial, 772 F.3d at 715-16 (claims merely reciting abstract idea of using advertising as currency as applied to particular technological 8 Appeal2017-008166 Application 14/472,647 environment of the Internet are not patent-eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (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" are not patent-eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible"); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (generic computer elements did not represent improvement in computer technology but rather were invoked merely as tools, and did not transfon11 the clairns into significantly more than claims to abstract idea itself); Elec. Power Group, 830 F.3d 1351 (rejection affirmed for a method of performing real-time performance monitoring of an electric power grid because "the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field ... over conventional computer and network technology"). Appellant overlooks that "the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools." Id. at 1354. In this case, as in Electric Power Group, the claims do not even require a new source or type of information. Id. at 1355. Given that the claims do not recite an improvement to the technological implementation of the abstract idea, Appellant's reliance on Bascom does not persuade us of error in the Examiner's finding that the claims do not recite additional limitations 9 Appeal2017-008166 Application 14/472,647 amounting, individually or as an ordered combination, to significantly more than the abstract idea. Lastly, although Appellant cites to the Board decisions in PNC Bank v. Secure Axcess, LLC, Case CBM2014-00100, 2014 WL 4537440 (PTAB Sept. 9, 2014) (Paper 10) (Reply Br. 7), Appellant does not direct attention to, nor do we find, any statement that requires the Examiner to identify specific references or documentation to support a finding that a claim is directed to an abstract idea. Furthermore, in PNC Bank, the panel determined that"[ c ]laim 1, as a whole, relates to a computer-implemented method to transform data in a particular manner--by inserting an authenticity key to create formatted data, enabling a particular type of computer file to be located and from which an authenticity stamp is retrieved." Id. at 20. Appellant has not persuasively advanced any arguments that demonstrate such a transformation from the language of claim 1. Preemption Appellant's argument that the claims are not directed to an abstract idea because the claims do not preempt every application of some abstract idea and are, therefore, patentable, is also unpersuasive. See App. Br. 9. Lack of preemption does not make the claims any less abstract. See buySAFE, 765 F.3d at 1355 (collecting cases); Accenture, 728 F.3d at 1345; Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility"). Accordingly, we agree with the Examiner that the claims do not recite an 10 Appeal2017-008166 Application 14/472,647 "inventive concept" sufficient to transform the abstract idea into patent- eligible subject matter. Novelty With regard to Appellant's argument that the pending claims are patent-eligible because there are no obviousness or novelty rejections of the claims, (see App. Br. 9-10; Reply Br. 3-5), Appellant improperly conflates the requirements for eligible subject matter ( Â§ 101) with the independent requirements of novelty(Â§ 102) and non-obviousness(Â§ 103). "The '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 theÂ§ 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under 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"). CONCLUSION Because Appellant's claims 1-7 are directed to a patent-ineligible abstract concept and do not recite something "significantly more" under the second prong of the Alice analysis, we sustain the Examiner's rejection of these claims under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter in light of Alice and its progeny. DECISION We affirm the Examiner's rejection of claims 1-7. 11 Appeal2017-008166 Application 14/472,647 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 12