Ex Parte Mulry et alDownload PDFPatent Trial and Appeal BoardJun 14, 201714190697 (P.T.A.B. Jun. 14, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation