Ex Parte Mulry et al

Patent Trial and Appeal Board

Jun 14, 2017

14190697 (P.T.A.B. Jun. 14, 2017)

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.
14/190,697 02/26/2014 Tatiana MULRY 0076412-000239 8153
21839 7590 06/16/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
AN, IG TAI
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATIANA MULRY, ANANT NAMBIAR, and
SIMON BLYTHE
Appeal 2016-0025821
Application 14/190,697
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants2 appeal under 35U.S.C. § 134 from the Examiner’
rejection of claims 1—5. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 The record includes a transcript of the oral hearing held June 6, 2017.
2 “MasterCard International Incorporated is the real party in interest.”
(Appeal Br. 2.)
Appeal 2016-002582
Application 14/190,697
STATEMENT OF THE CASE
According to the Appellants, the claimed subject matter “relate[s] to
methods, apparatus, systems, means and computer program products for
establishing, monitoring and maintaining spending controls in a payment
system.” (Spec. 1,11. 5—7.)
Illustrative Claim
1. An apparatus, comprising:
a transaction management processor;
a communications device in communication with said
transaction management processor to automatically receive
transaction data originating from a point of sale; and
a memory device in communication with said transaction
management processor and storing a program and at least one
account holder profile,
wherein the transaction management processor is
operative with said program stored in said memory device to:
enable an account holder to establish and store, in
said memory device, an account holder profile for said account
holder, the account holder profile identifying at least a first and
a second actual payment account issued by at least one financial
institution to and held by the account holder and at least one
spending profile for said account holder, said spending profile
including (i) at least a first spending target associated with said
at least first and second actual payment accounts and (ii) a
threshold value for nearing said at least first spending target;
receive, when electronic transaction data
originating from a point of sale of a completed transaction
associated with at least one of said at least first and second
actual payment accounts is received at said transaction
management processor, actual transaction data identifying
individual payment transactions having occurred and associated
with said at least first and second payment accounts;
update said spending profile of said account holder
profile stored in said memory device based on said actual
2
Appeal 2016-002582
Application 14/190,697
transaction data associated with said at least first and second
actual payment accounts;
compare said actual transaction data to said at least
first spending target included in said spending profile of said
account holder profile, stored in said memory device, for said
account holder;
determine, based on said comparison, if the
threshold value, as defined by the account holder, has been
reached for nearing said at least first spending target associated
with said at least first and second actual payment accounts; and
if said threshold value for nearing said at least first
spending target has been reached, generate a spending alert
message to notify said account holder.
Rejection
The Examiner rejects claims 1—5 under 35U.S.C. § 101 as failing to
recite patent-eligible subject matter. (Final Action 16.)
ANALYSIS
Claim 1 is the sole independent claim on appeal, with the rest of the
claims on appeal (i.e., claims 2—5) depending therefrom. (See Appeal Br.,
Claims App.) Independent claim 1, in our view, recites little more than a
computerized budgeting program that incorporates a hallmark of successful
budgeting, namely alerting a user when spending is approaching a budgeted
limit so that expenditures can be curtailed to remain within budget.
More specifically, independent claim 1 recites an “apparatus”
comprising a “processor,” a “communication device” in communication with
the processor to automatically receive data, and a “memory device” in
communication with the processor. (Appeal Br., Claims App.) Independent
claim 1 also recites budget-related verbiage (e.g., “transaction data,” “point
of sale,” “account holder profile,” “ payment accounts],” “spending
3
Appeal 2016-002582
Application 14/190,697
profile,” “spending target,” “threshold value”) in conjunction with these
computer-hardware components. (Id. )
Independent claim 1 additionally recites that the processor “is
operative with [a] program stored in said memory device” to perform certain
budget-intrinsic tasks. (Appeal Br., Claims App.) These tasks basically
amount to establishing a budget (spending profile) for a user (account
holder); receiving transaction data when transactions are completed at points
of sale; updating a budget ledger to reflect these transactions; and comparing
the ledger balance to a budgeted limit (spending target) so as to see how
“near” the ledger balance is to the budgeted limit. According to the
Specification, “a typical individual has at least one bank account and one or
more credit and debit cards” and, as such, a successful budgeting program
would need to take into consideration “the spending associated with each of
these payment accounts.” (Spec. 1.) In this regard, independent claim 1
specifies that “an account holder profile” for the user identifies “at least a
first and a second actual payment account issued by at least one financial
institution.” (Appeal Br., Claims App.)
Independent claim 1 further recites that, if a threshold value “for
nearing” the spending target has been reached, the processor “is operative
with [the] program stored in said memory device” to “generate a spending
alert message to notify said account holder.” (Appeal Br., Claims App.)3 In
other words, when spending reaches a parameter corresponding to a desired
3 We disagree with the Appellants’ implication that the claimed apparatus
“provide[s] an improved electronic alerting mechanism” (Reply Br. 6);
independent claim 1 only recites a program-generated alert, it does not recite
any mechanism associated with this alert.
4
Appeal 2016-002582
Application 14/190,697
spending limit, the processor generates an alert for communication to the
user. As discussed above, a hallmark of successful budgeting is alerting a
user when spending is approaching a budgeted limit so that expenditures can
be curtailed to remain within budget.
The Examiner concludes that the apparatus recited in independent
claim 1 does not pass muster under the two-step Alice test. (See Final
Action 16.)4 As to step one of the Alice test, the Examiner considers
independent claim 1 to be directed to the abstract idea of “monitoring the
spending” based on a spending profile and, “if spending in [this] profile
reaches [a] threshold value, then alarm the user by sending a spending alert
message.” (Id. at 16—17.) In other words, the Examiner considers
independent claim 1 to be directed to “budgeting.” As to step two of the
Alice test, the Examiner determines that the additional elements in
independent claim 1 amount to “mere instructions to implement the idea on
a computer, and/or recitation of generic computer structure that serves to
perform generic computer functions.” (Id. at 17.)
The Appellants argue that the claimed apparatus is not directed to an
abstract idea and/or amounts to significantly more than an abstract idea.
(See Appeal Br. 8—10; see also Reply Br. 4—7.) We are not persuaded by
4 The Supreme Court, in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct.
2347 (2014) provides us with a two-step test for distinguishing an “abstract
idea” from a patent-eligible application of an abstract idea. See Alice Corp.,
134 S. Ct. at 2355. The first step is to “determine whether the claim at issue
are directed to [an abstract idea].” Id. If a claim is directed to an abstract
idea, the inquiry proceeds to the second step where the elements of the claim
are considered “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.
5
Appeal 2016-002582
Application 14/190,697
these arguments because independent claim 1 recites subject matter that is
strikingly similar to that considered by the Federal Circuit in Intellectual
Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2016).
And when we apply the Federal Circuit’s precedent to the claim at issue, we
reach the same conclusion as the Examiner, namely that the apparatus
recited in independent claim 1 does not constitute patent-eligible subject
matter under 35 U.S.C. § 101.
In the Intellectual Ventures case, the patent “relate[d] to budgeting,”
and specifically “utilizing] user-selected pre-set limits on spending that are
stored in a database that, when reached, communicates a notification to the
user via a device.” Id. at 1367. The Intellectual Ventures claim at issue
recited a “receiving device” (e.g., processor), a “communication medium”
(e.g., communication device), and a “database” (e Q memory
The Intellectual Ventures claim also recited budget-related verbiage (e.g., “a
[user] profile,” “user-selected categories to track transactions,” “a user pre­
set limit,” and “transaction summary data”) in conjunction with these
computer-related components. And the Intellectual Ventures claim further
recited budget-intrinsic tasks such as “causing communication, over [the]
communication medium and to [the] recei ving device, of transaction
summary data in the database.” Id.
As for the first step of the Alice analysis, the Federal Circuit held that
the Intellectual Ventures claim was “directed to an abstract idea: tracking
financial transactions to determine whether they exceed a pre-set spending
limit (i.e., budgeting).” (Id. ) And, although the claims recited “budgeting
using a ‘communication medium,’” such a limitation “did not render the
claims any less abstract.” (Id.) Here, independent claim 1 is likewise
6
Appeal 2016-002582
Application 14/190,697
directed to the abstract idea of budgeting, and the recitation of computer-
hardware components communicating with each other does not render it any
less abstract. As noted by the Federal Circuit, “budgeting calculations” can
be “made using a pencil and paper” with a simple notification device, “even
in real time as expenditures [are] being made.” Id. at 1368.
As for the second step of the Alice analysis, the Federal Circuit held
that “it [was] clear” that the Intellectual Ventures claim “contained] no
inventive concept” as the recited elements were “all generic computer
elements.” (Id.) Here, the recited computer-hardware components (i.e., a
processor, a communication device, and a memory device) are likewise
generic computer elements.5 As for the claimed arrangement of these
computer elements, independent claim 1 requires the communication device
to be “in communication with” the processer; requires the memory device to
be “in communication with” the processer; and requires the program to be
“stor[ed]” in the memory device. This arrangement, or so-called
“architecture” (see e.g., Appeal Br. 2), constitutes a conventional
arrangement (e.g., ordered combination) of generic computer elements.
As for pre-emption (see Appeal Br. 10-12; see also Reply Br. 7—8),
we nole that although preemption may signal patent ineligible subject
5 The Appellants contend that the recited computer elements possess non­
generic features, such as the specific programming required to perform the
budget-intrinsic tasks, the computer interactions necessary to receive
transaction data, the sending of sensitive financial data, and real time
updates/insights. (See Appeal Br. 12—18; see also Reply Br. 9—17.) Suffice
it to say that the computer elements recited in the Intellectual Ventures
claims would have also possessed these supposedly non-generic features;
and this did not sway the Federal Circuit’s outcome of the second step of the
Alice test.
7
Appeal 2016-002582
Application 14/190,697
matter, the absence of complete preemption does not demonstrate patent
eligibility. See Arioso, Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed, Cir, 2015), Here, we determine that the claimed subject matter
covers patent-ineligible subject matter under the two-step Alice test; and,
therefore, any preemption issues are necessarily and adequately addressed.
For these reasons, we sustain the Examiner's rejection of independent
claim 1, and claims 2 5 depending therefrom, under 35 U.S.C. § 101 as
failing to recite patent-eligible subject matter.6
DECISION
We AFFIRM the Examiner’s rejection of claims 1—5.
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
6 The Appellants do not argue dependent claims 2—5 separately (see Appeal
Br. 19). Although the Appellants contend that the dependent claims “add
technical features which further evidence patent eligibility of the invention”
{id.), the Appellants do not elaborate on the nature of these alleged technical
features and/or do not specify which claim limitations in the dependent
claims correspond to these alleged technical features.
8