Ex Parte Wilkes

Patent Trial and Appeal Board

Mar 9, 2018

13945872 (P.T.A.B. Mar. 9, 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.
13/945,872 07/18/2013 T. Clay WILKES G1064.10020US02 7598
97149 7590
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
EXAMINER
PATEL, JAGDISH
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
docket @ mabr. com
info@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T. CLAY WILKES
Appeal 2016-005481
Application 13/945,8721
Technology Center 3600
Before ANTON W. FETTING, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, Galileo Processing, Inc. is the Real Party in
Interest.
Appeal 2016-005481
Application 13/945,872
STATEMENT OF THE CASE2
T. Clay Wilkes (Appellant) seeks review under 35 U.S.C. § 134(a) of a
final rejection of claims 1-9 and 11-17, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of enabling consumers to make financial
transactions using an account accessible using at least one social networking
service. Spec. para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] assigning, using a processor-based computing device
programmed to perform the assigning,
an identifier for an account held on at least one social
networking service to a financial account;
[2] associating the financial account with the at least one social
networking service
based on the identifier for the account
so that the financial account is
accessible by a user using the identifier for the
account
2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed June 25, 2015) and Reply Brief (“Reply Br.,” filed April 22,
2016), and the Examiner’s Answer (“Ans.,” mailed February 22, 2016), and
Final Action (“Final Act.,” mailed February 25, 2015).
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and
not accessible using a financial account number for
the account;
[3] generating a code enabling access to the financial account;
and
[4] providing the code to a mobile device of the at least one
user for display on a screen of the mobile device.
REJECTIONS
Claims 1-9 and 11-17 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1-8 stand rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice as to what a computer is to do
without any implementation details as to how to do so.
The issues of written description matter turn primarily on whether the
Specification describes precluding financial account access using the
account number.
ANALYSIS
Claims 19 and 11—17 rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter
Method claim 1 recites assigning an account identifier, creating data
associating the account with a network service based on the identifier, and
generating and providing a code. Thus, claim 1 recites creating and
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providing data that represent some relationships. Although claim 1 also
recites making an association so that the financial account is accessible by a
user using the identifier for the account and not accessible using a financial
account number for the account and providing a code for display, the claim
does not recite performing either accessing or preventing access, or display.
Accordingly these limitations are aspirational rather than functional. None
of the limitations recite implementation details for any of these steps, but
instead recite functional results to be achieved by any and all possible
means. Data creation and provision are generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data creation-provision is equally
generic and conventional. The ordering of the steps is therefore ordinary
and conventional. The remaining claims merely describe information and
parameters fed into the steps, with no implementation details.
The Supreme Court
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. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two of this
analysis as a 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 concept] itself.”
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Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to associating a user financial account with his/her social
networking service account and that correlating user accounts of one type to
the other type is fundamental economic practice. Final Act. 3.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in providing a code to a mobile device.3 The
Specification at paragraph 2 recites that the invention relates to enabling
consumers to make financial transactions using an account accessible using
at least one social networking service. Thus, all this evidence shows that
claim 1 is directed to providing some code or data usable in accessing an
account, i.e. financial record management.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of financial
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record management is a fundamental business practice long prevalent in our
system of finance. The use of financial record management is also a
building block of banking. Thus, financial record management, like
hedging, is an “abstract idea” beyond the scope of §101. See Alice Corp.
Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of financial
record management at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. at
2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data generation, analysis, and
3 Although claim 1 recites that the code is one enabling access to an account
and is for display, the claim does not recite steps performing either enabling
access or display.
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transmission, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to the abstract idea of generating, analyzing, and
transmitting data.
Independent claim 9 is similar except that the first step receives
information with an identifier rather than generating the identifier, and is
otherwise broader than claim 1. The remaining claims merely describe
information and parameters fed into the steps. We conclude that the claims
at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
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Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2358. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to generate, analyze, and transmit data amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply to recite the concept of financial record management as performed by
a generic computer. To be sure, the claims recite doing so by advising one
to associate an account with some identifier tied to some service, use the
identifier instead of some account number to identify the account, and
generate some code that is sent to a phone. But this is no more than abstract
conceptual advice on the parameters for such financial record management
and the generic computer processes necessary to process those parameters,
and do not recite any particular implementation. Claim 1 does not even
advise one as to any nexus between the associating and generating steps, nor
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advise one on how the provided code is used subsequent to the claimed
process to somehow enable access.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 21+ pages of the Specification
do not bulge with disclosure, but spell out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of financial
record management under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of financial record management using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting
§ 101“in ways that make patent eligibility ‘depend simply on
the draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that
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The present claims are not directed toward an economic
practice that is foundational or basic. Instead, the claimed
subject matter is explicitly tied to a social network.
Considering that Facebook was founded in 2004, it is difficult
to imagine how an economic practice tied to a social network
could be foundational or basic. Certainly, the claimed subject
matter with its social network requirements is not tied to a
foundational or basic economic practice. In addition, it is this
type of internet-centric solution to modem problems including
social networks that the court in DDR Holdings found favor.
Reply Br. 3 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014)) (footnote reference omitted). Appellant conflates the
two Alice steps. The first step determines whether the claims are directed to
an abstract idea. We find the evidence in the record shows the claims are
directed to a form of financial record management. It is the second step that
then looks to see whether the claims accomplish this using some inventive
technical manner. In this instance, claim 1 recites doing so by somehow
associating a financial account with a social networking service. The claim
goes on to say that it is the identifier, not the social networking service that
is used to access the account. Thus, the only “tying” of the claim to a social
network service is some manner of unspecified association.
Associating an identifier with some network or data is a routine form of
data entry. The only distinction between a social network and any other
network is in the mind of the beholder, which is afforded no patentable
weight. See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Using an
identifier to access a financial account is as old as banking.
We are not persuaded by Appellant’s argument that correlating user
accounts of one type to the other type has not been found by the Federal
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Circuit or the Supreme Court to be an abstract idea. App. Br. 8-10. As we
find supra, such a correlation is no more than financial record management,
which is as fundamental a practice as might be imagined.
We also are not persuaded by Appellant’s argument that the asserted
claims are akin to the claims found patent-eligible in DDR Holdings. In
DDR Holdings, the Court evaluated the eligibility of claims “address[ing]
the problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
instantly transported away from a host’s website after ‘clicking’on an
advertisement and activating a hyperlink.” DDR Holdings, 773 F.3d at
1257. There, the Court found that the claims were patent eligible because
they transformed the manner in which a hyperlink typically functions to
resolve a problem that had no “pre-Internet analog.” Id. at 1258. The
Court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id.
In particular, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258-59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715-16 (Fed. Cir. 2014)). The Court noted that the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at
715-16). Nevertheless, those claims were patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement,’ along with ‘routine additional steps such as
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updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellant’s asserted claims are analogous to the claims found
ineligible in Ultramercial and distinct from the claims found eligible in
DDR Holdings. The ineligible claims in Ultramercial recited “providing
[a] media product for sale at an Internet website;” “restricting general
public access to said media product;” “receiving from the consumer a
request to view [a] sponsor message;” and “if the sponsor message is an
interactive message, presenting at least one query to the consumer and
allowing said consumer access to said media product after receiving a
response to said at least one query.” 772 F.3d at 712. Similarly,
Appellant’s asserted claims recite receiving, analyzing, and transmitting
data. This is precisely the type of Internet activity found ineligible in
Ultramercial.
We are not persuaded by Appellant’s argument that there is no evidence
on the record to establish that the claim is an abstract method of “associating
a user financial account with his/her social networking service account”
under part one of the Alice test. App. Br. 10-12. We find sufficient intrinsic
evidence supra that the claims are directed to abstract conceptual advice.
We are not persuaded by Appellant’s argument that the claims are not
directed toward a mere abstract idea due to the presence of particular
limitations that confine the scope of the claims to being much narrower than
merely “associating a user financial account with his/her social networking
service account” and provide enough extra to pass the Alice test. App.
Br. 12-15. We find the particular limitations are conventional data
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processing practices that add little more than abstract conceptual advice
supra.
We are not persuaded by Appellant’s argument that claim 1 provides an
inventive concept since the Examiner has not been able to establish
rejections under §§102 and 103. App. Br. 16. “A claim for a new abstract
idea is still an abstract idea. The search for a § 101 inventive concept is thus
distinct from demonstrating § 102 novelty” or § 103 nonobviousness.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
We are not persuaded by Appellant’s argument that the claims do not
wholly pre-empt the field of “associating a user financial account with
his/her social networking service account” due to numerous non-infringing
alternatives that are significant and substantial. That the claims do not
preempt all forms of the abstraction or may be limited to the abstract idea in
some setting do not make them any less abstract. See OIP Technologies,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (2015). Abstract
conceptual advice may be detailed, but it remains abstract conceptual advice
and encompasses all possible implementations.
Claims 1—8 rejected under 35 U.S.C. § 112(a) as lacking a supporting
written description within the original disclosure
We are not persuaded by Appellant’s argument that the limitation of
“associating the financial account ... so that the financial account is . . .
not accessible using a financial account number for the account” is
supported by the Specification as originally filed. Appellant cites several
Specification paragraphs describing the use of an identifier other than an
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account number, and argues that in those contexts, because the contexts
expect the identifier, an account number would not work. Reply Br. 1-3.
The Examiner finds that this limitation “constitutes a negative limitation
which was not described in the specification originally filed.” Ans. 3. We
agree. The problem for Appellant is that although negative limitations are
allowed, they are extremely broad. In this case, the limitation recites that a
financial account is not accessible using a financial account number for the
account. This is an unusual limitation as an account number, being the
primary identifier to the account repository, is almost by definition a number
that may be used to access an account. The claim does not narrow the
limitation by context. Thus, as with most negative limitations, this is
extremely broad in context.
Further, Appellant does not cite any portion of the Specification that
describes this limitation. Appellant’s argument cites examples of using an
identifier instead of an account number and the argument is essentially that it
is obvious to one of ordinary skill that in the context of using the alternate
identifier described, the system would not be looking for an account number.
Written description requirements cannot be met by obviousness. Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997), “[o]ne shows
that one is ‘in possession’ of the invention by describing the invention, with
all its claimed limitations, not that which makes it obvious (emphasis added;
original emphasis not reproduced).” Further, showing examples of A
instead of B is not evidence that B is precluded, only that B is not chosen.
Also, absence of evidence is not evidence of absence.
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CONCLUSIONS OF LAW
The rejection of claims 1-9 and 11-17 under 35 U.S.C. § 101 as directed
to non-statutory subject matter is proper.
The rejection of claims 1-8 under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure is proper.
DECISION
The rejection of claims 1-9 and 11-17 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.
§ 1.136(a)(l)(iv).
AFFIRMED
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