Ex Parte Wilkins et al

Patent Trials and Appeals Board

Jan 31, 2019

12582152 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/582, 152 10/20/2009
98665 7590 01/31/2019
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
FIRST NAMED INVENTOR
Alec S. Wilkins
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.
P00422-US-UTIL 4015
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
01/31/2019 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 ALEC S. WILKINS, JENNIFER W. VANDERWALL, and
SUSAN RISKOVOSKY
Appeal2017-008610
Application 12/582, 152 1
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and ADAM J. PYO NIN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-9, 11, 12, and 14--28, which are all
the claims pending in the application. Claims 10 and 13 are cancelled. App.
Br. 24--33 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, MasterCard International Incorporated is the real
party in interest. App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief filed December 7, 2016
("App. Br."); Reply Brief filed May 22, 2017 ("Reply Br."); Examiner's
Answer mailed March 22, 2017 ("Ans."); Final Office Action mailed April
25, 2016 ("Final Act."); and original Specification filed October 20, 2009
("Spec.").
Appeal2017-008610
Application 12/582,152
STATEMENT OF THE CASE
Appellants' invention relates to "electronic payment systems" in the
context of healthcare services "for facilitating provider payment." Spec.
1 :9--10; Abstract. According to Appellants, "techniques for facilitating
provider payment" include
facilitating authorization, clearing and settlement for a pre-
payment portion of a transaction conducted with a provider
using a payment device having an account number; facilitating
adjudication of a claim pertaining to the transaction, the
adjudication resulting in [ 1] a payer portion and [2] a remaining
patient portion; ... facilitating storage of transaction
information pertaining to the transaction, by an issuer of the
payment device [and] ... facilitating matching, by the issuer of
the payment device, of: (i) a payment advice associated with the
adjudication of the claim with (ii) the transaction information
... and, responsive to the matching, facilitating the issuer
controlling initiation of authorization, clearing, and settlement
of [2] the remaining patient portion.
Spec. 2:8-19.
Claims 1, 11, 14, 23, and 28 are independent. Claim 1 is illustrative
of the claimed subject matter, as reproduced below:
1. A method comprising the steps of:
facilitating, by at least one hardware processor,
authorization, clearing and settlement for a pre-payment portion
of a transaction conducted with a provider using a payment
device having an account number, said pre-payment portion of
said transaction performed by an issuer of said payment device,
and generating transaction information communicated by said
provider to said issuer via a payment network;
facilitating, by said at least one hardware processor,
adjudication, by a payer, of a claim pertaining to said transaction,
said adjudication resulting in [ 1] a payer portion and [2] a
remaining patient portion and creation of a payment advice
indicating [ 1] said payer portion and [2] said remaining patient
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portion, wherein said payment advice is communicated to said
issuer of said payment device via an on-line communications
connection;
facilitating, by said at least one hardware processor,
storage of said transaction information pertaining to said pre-
payment portion of said transaction, by said issuer of said
payment device;
facilitating, by said at least one hardware processor,
matching, by said issuer of said payment device, of: (i) said
payment advice, received via said on-line communications
connection, with (ii) said transaction information communicated
via said payment network and stored in said step of facilitating
storage; and
responsive to said matching, facilitating, by said at least
one hardware processor, said issuer controlling initiation of
authorization, clearing, and settlement of [2] said remaining
patient portion, including causing an amount including [2] said
remaining patient portion to be debited, via said payment
network, from an account of a holder of said payment device
corresponding to said account number, said account being
managed by said issuer of said payment device, and paying, via
said payment network, an acquirer of said provider said amount
including [2] said remaining patient portion.
App. Br. 24 (Claims App.) (bracketing added).
EXAMINER'S REJECTION
(1) Claims 1-9, 11, 12, and 14--28 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 2--4.
(2) Claims 1, 9, 11, 12, 14, 23, 26 and 27 stand rejected under pre-
AIA 35 U.S.C. § I03(a) as being obvious over Kennedy et al. (US
2007/0005403 Al; published Jan. 4, 2007; "Kennedy") and Harrison et al.
(US 7,922,083 B2; issued Apr. 12, 2011; "Harrison"). Final Act. 4--7.
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(3) Claims 2, 7, 8, 15, 20, 21, and 25 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being obvious over Kennedy, Harrison, and Freeman
Jr. et al. (US 6,012,035; issued Jan. 4, 2000; "Freeman"). Final Act. 7-9.
( 4) Claims 3-6, 16-19, and 24 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being obvious over Kennedy, Harrison, Freeman, and
Talker (US 2007/0185820 Al; published Aug. 9, 2007). Final Act. 9-13.
(5) Claim 28 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over Kennedy, Harrison, and Talker. Final Act. 13-15.
DISCUSSION
Patent-Eligible Subject Matter: Claims 1-9, 11, 12, and 14-28
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 573 U.S. 208 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the
second step 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. 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 concept] itself."' Id. at 21 7-18 ( alteration in original) ( quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
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The Federal Circuit has described the Alice step-I inquiry as looking
at the "focus" of the claims, their "character as a whole," and the Alice step-
two inquiry as looking more precisely at what the claim elements add-
whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
( 1) Mathematical
mathematical
calculations;
concepts-mathematical
formulas or equations,
relationships,
mathematical
(2) Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
(3) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 52 (Jan. 7, 2019) ("PTO§ 101 Memorandum"), which is effective on
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January 7, 2019. According to the PTO§ 101 Memorandum, "claims that
do not recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas," except in rare
circumstances. 84 Fed. Reg. at 53. Even if the claims recite any one of
these three groupings of abstract ideas, these claims are still not "directed to"
a judicial exception (abstract idea) and, thus, are "patent-eligible" if "the
claim as a whole integrates the recited judicial exception into a practical
application of that Uudicial] exception." 84 Fed. Reg. at 53. "Integration
into a practical application" requires an additional element or a combination
of additional elements in the claim to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine - see MPEP § 2106.05(b );
3) Effecting a transformation or reduction of a particular article
to a different state or thing - see MPEP § 2106.05( c ); and
4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception - see MPEP
§ 2106.05(e).
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In contrast, limitations that are not indicative of "integration into a
practical application" include:
1) Adding the words "apply it" (or an equivalent) with the
judicial exception, or mere instructions to implement an
abstract idea on a computer, or merely uses a computer as
a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2) Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP § 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
Examiner's Determination of Patent-Ineligibility
In rejecting claims 1-9, 11, 12, and 14--28 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to an abstract idea of
"facilitating authorization, clearing, and settlement of a transaction," which
is a method of organizing human activity-a fundamental economic
practice, and include limitations that are analogous or similar to ( 1) concepts
of comparing new and stored information and using rules to identify options
as discussed in SmartGene; (2) concepts of organizing information through
mathematical correlations as discussed in Digitech; and (3) concepts of
managing an insurance policy as discussed in Bancorp. Ans. 2--4; Final Act.
2-3; see SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F. Supp. 2d
42 (D.D.C. 2012), aff'd, 555 F. App'x 950 (Fed. Cir. 2014) (holding that
claims directed to "comparing new and stored information and using rules to
identify medical options" are not patent-eligible); Digitech Image Techs.
LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (holding
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claims directed to "a process of organizing information through
mathematical correlations" are not patent-eligible); Bancorp Servs., LLC v.
Sun Life Insur. Co. of Canada (US.), 687 F.3d 1266 (Fed. Cir. 2012)
(holding claims directed to "managing a stable value protected life insurance
policy by performing calculations and manipulating the results" are not
patent-eligible); see also CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1370 (Fed. Cir. 2011).
The Examiner also determines the claims fail to amount to
"significantly more than the judicial exception" or contain an "inventive
concept" because the additional elements recited (1) indicate "generic
computer structure that serves to perform generic computer functions" that
are "well-understood, routine, and conventional activities previously known
to the pertinent industry" and (2) do not improve the functioning of a
computer or improve any other technology. Final Act. 2-3; Ans. 4.
Appellants' Contentions of Patent-Eligibility & Analysis
At the outset, Appellants contend the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because the
Examiner has oversimplified and failed to provide evidence and rationale for
determining that the claim is "directed to" an abstract idea. App. Br. 13-14;
Reply Br. 13-15. This argument is not persuasive because (1) patent
eligibility under 35 U.S.C. § 101 is a question of law that is reviewable de
nova (see Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012));
and (2) we are aware of no controlling authority that requires the Office to
provide factual evidence to support a determination that a claim is directed
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to an abstract idea. 3 Instead, the Federal Circuit has repeatedly noted that
"the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The court has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original).
Thus, all that is required of the Office is that it set forth the statutory basis of
the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of 35 U.S.C. § 132. Id.; see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) ("Section 132 is violated when [the]
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection."). Appellants do not
contend that the Examiner's rejection under 35 U.S.C. § 101 cannot be
understood or that the Examiner's rejection, otherwise, fails to satisfy the
notice requirements of 35 U.S.C. § 132. Indeed, Appellants' understanding
3 Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018), holds that
the question of whether certain claim limitations represent well-understood,
routine, conventional activity under Alice step 2 may raise a disputed factual
issue. That question, however, is not at issue in this case. As in Berkheimer,
in determining that the claims are directed to an abstract idea, the Examiner
compared the claims to claims held to be abstract in prior judicial
decisions. Compare Ans. 4--5, with Berkheimer, 881 F.3d at 1366-67.
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of the rejection is clearly manifested by their response as set forth in the
briefs.
Moreover, the Examiner is required to review all claims at some level
of generalization and determine whether those claims are directed to an
abstract idea under Alice step 1. However, there is no single definition of
"abstract idea." As the Federal Circuit succinctly put it:
The problem with articulating a single, universal definition of
"abstract idea" is that it is difficult to fashion a workable
definition to be applied to as-yet-unknown cases with as-yet-
unknown inventions.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). Because there is no single definition of an "abstract idea," the
Federal Circuit instructs us "to examine earlier cases in which a similar or
parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs, 841 F.3d at 1294 (citing Elec.
Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, July 2015
Update: Subject Matter Eligibility, 3 (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing examiners that "a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea"). In this case, the Examiner did just what
he was required to do under the July 2015 USPTO Memorandum, i.e.,
analyzed the claims under Alice step 1 consistent with the guidance set forth
in the USPTO's "2014 Interim Guidance on Patent Subject Matter
Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at the time the
rejection was made, i.e., on Apr. 25, 2016, and provided analogous claims as
discussed in SmartGene, Digitech, and Bancorp.
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With respect to Appellants' argument regarding the "directed to"
inquiry under Alice step 1, we address that argument separately in the
context of Alice step- I inquiry and the newly published PTO § 101
Memorandum, 84 Fed. Reg. at 53, herein below.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue
independent claims 1, 11, 14, 23, and 2 8 are not directed to an abstract idea
because ( 1) "[ t ]he claims do not recite a basic concept that is similar to any
abstract idea previously identified by the courts"; (2) "the claimed methods
are necessarily rooted in computer technology to overcome a problem
specifically arising in payment networks" similarly to the claims in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); and (3)
"the claims are directed to a specific implementation of a solution ( e.g., an
issuer uniquely disposed and configured to perform the claimed matching) to
a problem in the software arts ( e.g., how to cause a remaining patient portion
to be settled)" similar to the claims in Enfzsh, 822 F.3d at 1335-36. App. Br.
14--17; Reply Br. 17.
Appellants' arguments are not persuasive. At the outset, we note the
newly published PTO § 101 Memorandum governs all patent-eligibility
analysis under Alice and§ 101 effective as of January 7, 2019. In particular,
the PTO has acknowledged that the Federal Circuit's common law, analogy-
driven approach ( a.k.a. "analogous claim" test) was effective soon after
Alice was decided by the Supreme Court, but that approach has since
become impractical as the growing body of Federal Circuit precedent has
become increasing more difficult for the Office and examiners to apply in a
predicable manner. As a result, the PTO has synthesized, for purposes of
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clarity, predictability, and consistency, the "abstract idea" exception to
include three categories of abstract ideas: (1) mathematical concepts-
mathematical relationships, mathematical formulas or equations,
mathematical calculations; (2) mental processes----concepts performed in the
human mind (including an observation, evaluation, judgment, opinion); and
(3) certain methods of organizing human activity-fundamental economic
principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See PTO§ 101 Memorandum, 84 Fed. Reg.
at 54--55.
Contrary to Appellants' arguments, Appellants' claims and
Specification describe "electronic payment systems" in the context of
healthcare services "for facilitating provider payment." Spec. 1:9--10;
Abstract. According to Appellants, "techniques for facilitating provider
payment" include
facilitating authorization, clearing and settlement for a pre-
payment portion of a transaction conducted with a provider
using a payment device having an account number; facilitating
adjudication of a claim pertaining to the transaction, the
adjudication resulting in [ 1] a payer portion and [2] a remaining
patient portion; ... facilitating storage of transaction
information pertaining to the transaction, by an issuer of the
payment device [and] ... facilitating matching, by the issuer of
the payment device, of: (i) a payment advice associated with the
adjudication of the claim with (ii) the transaction information
... and, responsive to the matching, facilitating the issuer
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controlling initiation of authorization, clearing, and settlement
of [2] the remaining patient portion.
Spec. 2:8-19.
For example, Appellants' independent claim 1 defines a method
compnsmg
facilitating ... authorization, clearing and settlement for a pre-
payment portion of a transaction conducted with a provider
using a payment device;
facilitating ... adjudication, by a payer, of a claim pertaining to
said transaction, said adjudication resulting in [1] a payer
portion and [2] a remaining patient portion ...
facilitating ... matching, by said issuer of said payment device,
of: (i) said payment advice ... with (ii) said transaction
information ...
responsive to said matching, facilitating ... said issuer
controlling initiation of authorization, clearing, and settlement
of said remaining patient portion, including causing an amount
including said remaining patient portion to be debited.
App. Br. 24 (Claims App.) (bracketing added). Method claim 11 and system
claims 14, 23, and 28 recite similar limitations.
As correctly recognized by the Examiner (Ans. 3--4), "facilitating
authorization, clearing, and settlement of a transaction" between a health
care provider and a patient as recited in Appellants' claims 1, 11, 14, 23, and
28 is also plainly directed to a "fundamental economic practice"-a "certain
method of organizing human activity"-and is thus a subject matter that falls
within the three types of abstract ideas identified by the PTO § 101
Memorandum. Such activities are squarely within the realm of abstract
ideas, like (1) the risk hedging in Bilski v. Kappas, 561 U.S. 593 (2010);
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(2) the intermediated settlement in Alice, 573 U.S. at 220; (3) verifying
credit card transactions in CyberSource, 654 F.3d at 1370; (4) guaranteeing
transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014 ); ( 5) distributing products over the Internet in Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); (6) determining a price of a
product offered to a purchasing organization in Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for
sale in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
2015). "Facilitating authorization, clearing, and settlement of a transaction"
is also a building block of a market economy and, like risk hedging and
intermediated settlement, is an "abstract idea" beyond the scope of § 101.
See Alice, 573 U.S. at 220.
Alternatively, "facilitating authorization, clearing, and settlement of a
transaction" between a healthcare provider and a patient as recited in
Appellants' claims 1, 11, 14, 23, and 2 8 is nothing more than "mental
processes" that could be performed in the human mind or by a human using
a pen and paper-a subject matter that falls within the three types of abstract
ideas identified by the PTO § 101 Memorandum. See CyberSource, 654
F.3d at 1372-73 ("[A] method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under§ 101."); see
also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental
processes----or processes of human thinking-standing alone are not
patentable even if they have practical application."); Gottschalk v. Benson,
409 U.S. 63, 67 (1972) ("Phenomena of nature, ... mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." (Emphasis added)). Additionally, mental
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processes remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
CyberSource, 654 F.3d at 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
For example, steps of "facilitating ... authorization, clearing and
settlement for a pre-payment portion of a transaction conducted with a
provider" and "facilitating ... adjudication, by a payer, of a claim pertaining
to said transaction, said adjudication resulting in [1] a payer portion and [2]
a remaining patient portion" recited in Appellants' method claim 1 can be
performed by a human patient who simply asks for an invoice for healthcare
service rendered. Similarly, steps of "facilitating ... matching" and
"responsive to said matching, facilitating ... said issuer controlling initiation
of authorization, clearing, and settlement of said remaining patient portion,
including causing an amount including said remaining patient portion to be
debited" can be performed by a human patient who reviews the invoice and
makes payment for the portion of the invoice that s/he is responsible under
the insurance policy.
We discern no additional element ( or combination of elements)
recited in Appellants' claims 1, 11, 14, 23, and 28 that integrate the judicial
exception into a practical application. See PTO § 101 Memorandum, 84
Fed. Reg. at 54--55 ("Prong Two"). For example, Appellants' claims 1, 11,
14, 23, and 28 do not (1) improve the functioning of a computer or other
technology, (2) are not applied with any particular machine (except for a
generic computer), (3) do not effect a transformation of a particular article to
a different state, and (4) are not applied in any meaningful way beyond
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generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a}-( c), ( e}-(h). As previously discussed, "facilitating
authorization, clearing, and settlement of a transaction" between a healthcare
provider and a patient does not improve the computer functionality as
discussed in Enfzsh. Instead, generic computers are merely used as a tool to
facilitate these transactions. Enfzsh, 822 F.3d at 1335-36, 1338.
For these reasons, we agree with the Examiner's determination that
Appellants' claims 1, 11, 14, 23, and 28 are directed to an abstract idea that
is not integrated into a practical application.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue "the claimed
limitations are tied to a specific structure of various components ...
arranges [sic] the components in a distributed architecture ( e.g., with an
issuer disposed to receive both transaction information and pre-payment
portion to perform a matching) to achieve a technological solution to a
technological problem specific to payment networks" similar to the claims in
Amdocs. App. Br. 14--15.
Appellants' argument is not persuasive. Under current Federal Circuit
precedent, an "inventive concept" under Alice step 2 can be established by
showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(DDR Holdings, 773 F.3d at 1257));
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(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir.
2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (Amdocs, 841 F.3d at
1300, 1302).
Similarly, as recognized by the PTO § 101 Memorandum, an
"inventive concept" under Alice step 2 can also be evaluated based on
whether an additional element or combination of elements:
( 1) add a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in
the field, which is indicative that an inventive concept may
be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
See PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 11, 14, 23, and 28 that contains any
"inventive concept" or adds anything "significantly more" to transform the
abstract concept into a patent-eligible application. Alice, 573 U.S. at
221-22. For example, Appellants' abstract idea of "facilitating
authorization, clearing, and settlement of a transaction" between a health
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care provider and a patient is not rooted in computer technology; nor does it
(1) provide any technical solution to a technical problem as required by
DDR Holdings; (2) provide any particular practical application as required
by Bascom; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs. Instead, Appellants'
invention simply uses generic computer components to perform the abstract
idea of "facilitating authorization, clearing, and settlement of a transaction"
between a health care provider and a patient. In fact, the only "additional
elements" recited in Appellants' claims merely implement the abstract idea
on generic computing elements (i.e., hardware processor, memory, interface,
server, payment device, payment network). See Fig. 1; Spec. 5-10, 18-20,
23-25. However, the use of a generic computer device does not alone
transform an otherwise abstract idea into patent-eligible subject matter. As
our reviewing court has observed, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, 773 F.3d at 1256 (citing
Alice, 573 U.S. at 223). Moreover, Appellants have not shown any specific
limitation in claims 1, 11, 14, 23, and 2 8 beyond the judicial exception that
is not "well-understood, routine, and conventional" in the field (see MPEP §
2106.05(d)).
Because Appellants' claims 1, 11, 14, 23, and 28 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 claims 1-9, 11, 12, and 14--28 under 35 U.S.C.
§ 101.
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35 USC§ 103: Claims 1-9, 11, 12, and 14-28
Claim 1 recites, inter alia:
responsive to said matching ... controlling initiation of
authorization, clearing, and settlement of [2] said remaining
patient portion, including causing an amount including [2] said
remaining patient portion to be debited, via said payment
network, from an account of a holder of said payment device
corresponding to said account number, said account being
managed by said issuer of said payment device, and paying, via
said payment network, an acquirer of said provider said amount
including [2] said remaining patient portion.
App. Br. 24 (Claims App.) (bracketing added). Method claim 11 and system
claims 14, 23, and 28 recite similar limitations.
Appellants argue neither Kennedy nor Harrison teaches or suggests a
method by which an issuer of a payment is "responsive to said matching ...
[for] controlling initiation of authorization, clearing, and settlement of said
remaining patient portion, including causing an amount including said
remaining patient portion to be debited, via said payment network, from an
account of a holder of said payment device corresponding to said account
number, said account being managed by said issuer of said payment device,
and paying, via said payment network, an acquirer of said provider said
amount including said remaining patient portion," as recited in claim 1 and,
similarly recited in claims 11, 14, 23, and 28. App. Br. 18-19. According to
Appellants, Kennedy only teaches (1) "methods for permitting a healthcare
provider to obtain real-time or right-time claim adjudication of a healthcare
claim, and to obtain real-time payment processing of the patient's portion of
a healthcare charge at the time services"; and (2) does not teach "how the
patient accomplishes that payment." Id. at 18-19 (citing Kennedy ,r,r 27,
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29). Similarly, Harrison only teaches splitting the payment between two
payment accounts, i.e., between (1) a taxable account and (2) a non-taxable
account. Id. at 19 (citing Harrison 2:10-13, 11:27-34, 19:27--43, Fig. 1).
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by a preponderance of the evidence. Ans. 7-8. As such, we adopt
the Examiner's findings and explanations provided therein. Id. For
example, as correctly recognized by the Examiner, Kennedy's estimated
explanation of benefits (EOB) information includes (1) a payer portion (to
be paid by a healthcare provider such as HMO) and (2) a remaining patient
portion (to be paid by a patient). Ans. 7 (citing Kennedy ,r 7); see also
Kennedy ,r,r 27, 29, 50, 85, 88. Contrary to Appellants' arguments, Harrison
is only cited for the settlement of the remaining patient portion. Final Act. 5
(citing Harrison 11:22---62, 21:48-51, 21:61-22:10, 26:4--22).
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner's obviousness rejection of claims 1,
11, 14, and 23, and dependent claims 9, 12, 26, and 27, which Appellants do
not argue separately. For the same reasons discussed, we also sustain the
Examiner's obviousness rejection of (I) claims 2, 7, 8, 15, 20, 21, and 25
under 35 U.S.C. § 103(a) as being obvious over Kennedy, Harrison, and
Freeman; (2) claims 3---6, 16-19, and 24 under 35 U.S.C. § 103(a) as being
obvious over Kennedy, Harrison, Freeman, and Talker; and (3) claim 28
under 35 U.S.C. § 103(a) as being obvious over Kennedy, Harrison, and
Talker.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-9, 11, 12, and 14--28
under 35 U.S.C. §§ 101 and 103.
DECISION
As such, we AFFIRM the Examiner's rejection of claims 1-9, 11, 12,
and 14--28 under 35 U.S.C. §§ 101 and 103.
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
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