Ex Parte Olliphant

Patent Trial and Appeal Board

Dec 13, 2017

12752976 (P.T.A.B. Dec. 13, 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.
12/752,976 04/01/2010 Hugo Olliphant P2395.10190US04 3628
132897 7590 12/15/2017
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
docket @ mabr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGO OLLIPHANT
Appeal 2016-006008
Application 12/752,9761
Technology Center 3600
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3—12, and 14—22. Claims App’x. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies PayPal, Inc. as the real party in interest. App. Br. 2.
Appeal 2016-006008
Application 12/752,976
STATEMENT OF THE CASE
The Invention
Appellant describes their invention as:
providing] a system and method for managing allocation of
funds between a plurality of entities. In example embodiments,
details of a remuneration to the plurality of entities are received.
The remuneration relates to at least one transaction and the
received details identify a list of individuals to be remunerated
and an amount of the remuneration to be allocated to each of the
individuals on the list. Funds associated with the remuneration
are allocated among the plurality of entities to be remunerated
based on at least a portion the details of the remuneration.
Abstract.
Exemplary independent claim 1 is reproduced below.
1. A method comprising:
receiving login details from a member of a group;
in response to receiving the login details, providing
secure access to group account information including causing
display of a user interface that displays at least a portion of the
group account information;
receiving a secure communication, via the user interface,
that includes details of a remuneration that is a payment relating
to a single previously conducted transaction, the details
including a list of a plurality of individuals in the group to be
remunerated and an amount of the remuneration to be allocated
to each of the plurality of individuals on the list to be
remunerated with respect to the single previously conducted
transaction; and
in response to the receiving of the details of the
remuneration to the plurality of individuals with respect to the
single previously conducted transaction, allocating, using one
or more processors, the remuneration relating to the single
previously conducted transaction to the plurality of individuals
based on the received details indicating the amount of the
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Application 12/752,976
remuneration to be allocated to each of the plurality of
individuals on the list, the amount being a portion of the
remuneration with respect to the single previously conducted
transaction.
Rejections
Rl. Claims 1, 3—12, and 14—222 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 4.
R2. Claims 12 and 14—20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.3 Final Act. 4—5.
ANALYSIS
Rejection of Claims 1,3-12, and 14—22 Under 35 U.S.C. § 101
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception for certain patent ineligible
concepts: laws of nature, natural phenomena, and abstract ideas. Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014); see also
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012). To determine patentable subject matter, the Supreme Court has set
2 The Final Action lists claims 1, 3—11, and 13—22 as being rejected under
35 U.S.C. § 101. However, claim 13 has been cancelled and claims 14—22
depend from claim 12 which is not listed under this rejection. It appears the
Examiner mistakenly omitted claim 12 from the listing rather than claim 13.
Thus, we treat the Examiner’s listing of claims as harmless error and treat
the rejection as against claims 1, 3—12, and 14—22.
3 Because we affirm the Examiner’s rejection Rl of the claims under
35 U.S.C. § 101, a rejection which covers claims 12 and 14—20, we do not
address Appellant’s arguments against the Examiner’s rejection R2 of these
claims under 35 U.S.C. § 101.
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forth a two part test: (1) whether the claims are directed to a patent-
ineligible concept and, if so, (2) whether, when the claim elements are
considered “individually and ‘as an ordered combination,’” there is an
inventive concept present, 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, 134 S. Ct. at 2355
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
Analyzing the claims under the two-step framework laid out in
Alice/Mayo the Examiner finds the claims are directed to the abstract idea of
“managing the allocation of funds between individuals''’ (Final Act. 4),
which the Examiner finds, is considered a fundamental economic practice, a
method of organizing human activities, and simply a series of mathematical
formulations. Final Act. 4; Ans. 2. The Examiner also finds the claimed
process could be done by a human analog (by hand or merely thinking).
Ans. 2. Under the second step of the Alice/Mayo framework the Examiner
finds:
The claims do not recite limitations that are “significantly
more” than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. The
limitations are merely instructions to implement the abstract
idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Final Act. 4.
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Appellant makes three basic arguments: (1) that the Examiner has not
established a prima facie case that the claims are not directed to patent-
eligible subject matter; (2) that the claims at issue are not directed to an
abstract idea and (3) that assuming the claims at issue are directed to an
abstract idea, the claims at issue are directed to patentable subject matter.
App. Br. 8. We analyze these arguments in turn below.
Prima Facie Case
Appellant argues “the Examiner has not established a prima facie case
that the claims are not directed to patent-eligible subject matter.” App. Br.
8. For example, Appellant argues
the Examiner has chosen not to base the § 101 rejection on
substantial evidence, but rather chosen to rely on conclusory
statements. . . . Furthermore, there is no evidence on the record
that the invention, as defined by the particular claim
limitations, is simply some abstract idea of managing the
allocation of funds between individuals.
App. Br. 11. “The alleged abstract idea of ‘managing the allocation of funds
between individuals’ is an [Ejxaminer-written phrase that does not actually
appear in any of the rejected claims.” App. Br. 11. “The Office Action
provided no comparison of the alleged abstract idea to any other concept,
much less to any concept that the courts have already found to be abstract.”
App. Br. 13.
Appellant submits that the Examiner has merely relied on the
conclusory statements made in the rejection of the independent
claims as a basis for rejecting these dependent claims without
considering even one limitation and there is no evidence on the
record to the contrary. The Examiner has thus failed to
establish a prima facie case that these dependent claims are not
eligible for patent protection under 35 U.S.C. § 101.
App. Br. 14.
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We are unpersuaded by Appellant’s arguments. To the extent
Appellant suggests that the July 2015 Update, May 2016 Memorandum, or
MPEP requires particular steps performed in specific ways to establish that a
claim is directed to an abstract idea, i.e., a “prima facie” case, Appellant is
mistaken. Instead, 35 U.S.C. § 132 sets forth a more general notice
requirement whereby the applicant is notified of the reasons for a rejection
together with such information as may be useful in judging the propriety of
continuing with prosecution of the application. See, e.g., In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011); see also July 2015 Update: Subject
Matter Eligibility (2015), https://www.uspto.gov/sites/default/
files/documents/ieg-july-2015-update.pdf (“July 2015 Update”) 6 (setting
forth a general notice requirement whereby the Examiner should “clearly
articulat[e] the reason(s) why the claimed invention is not eligible” when
rejecting on under 35 U.S.C. § 101); Robert W. Bahr, Formulating a Subject
Matter Eligibility Rejection and Evaluating the Applicant’s Response to a
Subject Matter Eligibility Rejection, USPTO (2016), https://www.uspto.gov/
sites/default/files/documents/ieg-may-2016-memo.pdf (“May 2016
Memorandum”) 2 (“the rejection . . . must provide an explanation . . . which
[is] sufficiently clear and specific to provide applicant sufficient notice of
the reasons for ineligibility.”). In this case, we find the Examiner has
provided an adequate explanation to meet said notice requirement.
The Examiner has set forth the statutory basis for the rejection (a
judicial exception to 35 U.S.C. § 101) and explained the rejection in
sufficient detail to permit Appellant to respond meaningfully. The Examiner
analyzes the claims under the two-step framework laid out in Alice/Mayo.
Under step one, the Examiner expressly finds that the claims are directed to
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the abstract idea of managing the allocation of funds between
individuals''’ (Final Act 4), which the Examiner finds, is considered a
fundamental economic practice, a method of organizing human activities,
and simply a series of mathematical formulations. Final Act. 4; Ans. 2.
The Examiner then further analyzes the claimed limitations, under
step two of the Alice/Mayo framework to find “[t]he limitations are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions that are
well-understood, routine and conventional activities previously known to the
industry.” Ans. 2. The Examiner additionally finds “[njothing in the claims
seems to improve the functioning of the computer itself or effect an
improvement in another technology or technical field. Nor do the claims
solve a problem unique to the Internet.” Ans. 2 (emphasis omitted). The
Examiner finds limitations such as the claimed “user interface” and one or
more processors to be generic computer components used in their well-
understood and routine manner. Ans. 3. The Examiner also finds that the
“use of the user interface to provide a ‘secure access’ ... is insignificant pre­
solution activity” which is insufficient to transform an “‘abstract idea into
patent-eligible subject matter.’” Ans. 3.
We, therefore, find the Examiner has presented a prima facie case of
patent ineligibility by identifying a judicially recognized exception to which
the claims are directed, and analyzing the claim limitations under the
Alice/Mayo two part framework.
Step One of Alice/Mayo Framework
Appellant argues the claims are not directed to one of the categories of
abstract ideas, such as methods of organizing human activities, or
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fundamental economic practices. Instead, according to Appellant, “the
claims at issue are directed to a specific set of operations for providing
secured networked access to account information and receiving a secure
communication, via the secured networked access, for establishing
remuneration from a single transaction to a plurality of individuals.” App.
Br. 14.
We are unpersuaded by Appellant’s arguments and find the Examiner
did not err in concluding the claims are directed to an abstract idea, namely
managing the allocation of funds between individuals. According to the
claims the invention provides secure access to group account information
displayed on a user interface. See e.g. App. Br. 27 (Claims Appx.). This
group account information, which is received through secure
communication, includes details of a remuneration relating to a single
transaction, including a list of individuals in the group who are to be
remunerated and an amount of the remuneration to be allocated to the
individuals. Id. Using one or more processors, the remuneration is then
allocated to the individuals based on the received allocation details. Id.
Although the words “managing the allocation of funds between individuals”
does not explicitly occur in the claims, a careful review of the claims shows
the invention does indeed provide a way to keep track of and manage a
payment for a single transaction that involves the allocation of the payment
to members of a group of individuals. Note, too, that Appellant’s Abstract
summarizes the invention as “providing] a system and method for
managing allocation of funds between a plurality of entities” which is
consistent with the Examiner’s characterization of the claimed invention.
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Although the claims require that the group account information be
accessed over secure communication, the claims themselves are not directed
to such secure communication, nor to improving the technology used to
provide secure communication. The Specification indicates that the claimed
invention merely uses already existing technology for providing secure
communication in its well-known and routine way to secure the transmission
of the account information. See Spec. 132 (“All communication after login
is secure, preferably use SSL (Secure Sockets Layer) technology.”).
Appellant argues “[t]he claims at issue are not directed to a
mathematical relationship or formula.” App. Br. 16 (emphasis omitted).
Although the Examiner finds the claims are directed to “a series of
mathematical formulations,” (Final Act. 4), the Examiner alternatively
also finds the claimed invention is directed to a method of organizing human
activity or a fundamental economic practice (Final Act. 4; Ans. 2). Because
we agree with the Examiner that the claims are directed to a method of
organizing human activity or a fundamental economic practice, we need not
address Appellant’s argument that the claims are not directed to a
mathematical relationship or formula.
We, therefore, find no error in the Examiner’s characterization of the
claims as “managing the allocation of funds between individuals.” Further,
we agree that managing the allocation of funds between individuals is a
method of organizing human activity or a fundamental economic practice
and, therefore, an abstract idea.
Step Two of the Alice/Mayo Framework
Appellant argues that even it is assumed, arguendo, that the claims are
directed to an abstract idea, they are nevertheless directed to patentable
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subject matter. App. Br. 17—24. Appellant argues the claims are written at a
low level of generality and, therefore, are more than an abstract idea. App.
Br. 18. Appellant stresses the claims “solve a technological problem in
conventional industry practice of providing secured networked access to
account information and receiving a secure communication via the secured
networked access, for establishing remuneration from a single transaction to
a plurality of individuals.” App. Br. 22; see also App. Br. 20 (“Appellant
notes that the claims are not directed to allocating funds between
individuals, but involve secured, networked management of funds allocated
to a group of individuals from a single transaction.”). Appellant further
argues that when considered as an ordered combination, the claims include
something more and that no attempt is being made to claim an invention
directed only to managing the allocation of funds between individuals or to
tie up any judicial exception so that others cannot practice it. App. Br. 23—
24. Finally, Appellant also argues that the absence of a prior art rejection
implies that the claims are “defined over the prior art” and non-obvious, and
the “differences that serve to make the claims non-obvious should also
serve to make the claims ‘somethingmore.'"'’ App. Br. 25.
Appellant’s arguments are unpersuasive. We do not agree that the
claims are rooted in computer technology or solve a technological problem
of providing secure access to account information. As explained above, the
claims are not directed to secure communication or to improving the
technology behind secure communication. Instead, secure communication is
used in the claimed invention in its routine and conventional manner to
provide account information to users.
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Appellant’s assertion that the claims do not tie up any judicial
exception is also unpersuasive because “[wjhile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1371, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015).
Finally, addressing Appellant’s argument regarding the absence of a
prior art rejection, we stress that such absence does not necessarily imply
that the claims are defined over prior art or non-obvious. Moreover, while
“novelty in implementation of the idea is a factor to be considered ... in the
second step of the Alice analysis” (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (emphasis added)), “the addition of merely novel
or non-routine components to the claimed idea [does not] necessarily tum[]
an abstraction into something concrete” (Ultramercial, Inc., 772 F.3d at
715). “Groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry” (Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013)). “[PJatent-eligibility does not
turn on ease of execution or obviousness of application. Those are questions
that are examined under separate provisions of the Patent Act.” Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing
Mayo, 132 S. Ct. at 1304). Thus, the fact that the Examiner has not
presented a prior art rejection under §§102 and 103 does not mean that
§101 has been satisfied.
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DECISION
The Examiner’s rejection of claims 1, 3—12, and 14—22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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