Gil Don et al.

Patent Trials and Appeals Board

Sep 5, 2019

14687013 - (D) (P.T.A.B. Sep. 5, 2019)

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.
14/687,013 04/15/2015 Gil Don PIS-PU-004-US1 5520
60956 7590 09/05/2019
Professional Patent Solutions
P.O. BOX 654
HERZELIYA PITUACH, 46105
ISRAEL
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/05/2019 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):
office@propats.com
utalmi@propats.com
vsherman@propats.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIL DON, ALON FEIT and VICTORIA NIEL KRAINE
___________

Appeal 2018-007351
Application 14/687,013
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
GREGG I. ANDERSON, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 are appealing the Non-final rejection of claims 11–17 and
19–26 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Pay It Simple LTD. as the real party in interest.
Appeal Brief 2.
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Introduction
According to Appellants:
The present invention includes methods, systems, devices
and associated computer executable code for facilitating credit
transactions or securitizations. According to some embodiments
of the present invention, as part of a transaction between a
merchant, or first party, and a Consumer/Customer of goods
and/or services and/or monetary means (e.g.[,] cash), which may
be initiated at or through any point of access (e.g.[,] online, point
of sale, mobile point of sale, automatic teller machine; and/or any
communication device, such as a mobile phone, or attachment
thereof, and or any other point of access known today or to be
devised in the future), the Consumer may request to split the
transaction cost into a set of payments/installments, by which
costs may be spread over a period of time. Said set of payments
and said period of time may be pre-defined or predetermined.

Specification ¶ 24.

Representative Claim
11. A system for providing automatically secured installment services to
users of an online marketplace, said system comprising:

an interface adapted to interface with the users of the online
marketplace, via a user interface of the online marketplace, and
receive from the users: (a) identifying details of a first purchasing
party of a first online transaction facilitated by the online
marketplace, (b) details of a credit line the first purchasing party has
with a first primary credit provider, and (c) details of a first amount
associated with the first online transaction;
a credit server comprising:

i. communication circuitry to communicate with automated
authorization systems of primary credit providers over a
distributed data network (DDN); and
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ii. processing circuitry adapted to: (i) automatically generate,
using the received details (a) and (b), one or more credit
requests for the first amount, and (ii) transmit the requests to
the one or more credit providers over the DDN;

a transaction server adapted to, upon receiving the authorizations of
the requests, issue payment of the first amount to a selling party of
the first online transaction;

one or more data storages adapted to store a record for each of
multiple online transactions, which records include, for each given
online transaction: details of credit lines a purchasing party of the
given online transaction has with one or more primary credit
providers, a given amount associated with the given online
transaction, details of received credit authorizations relating to the
given online transaction , terms of payment of the given amount, a
history of payments relating to the given amount and a current
outstanding balance of the given amount;

a monitoring unit comprising processing circuitry adapted to monitor
dates of expiration of authorizations within the records stored in said
data storages and trigger said credit server to re-securitize each
individual current outstanding balance stored in each of the records
stored in said data storages, prior to expiration of a latest
authorization relating to the individual current outstanding balance;

wherein said credit server is further adapted to: (i) automatically
generate, upon being triggered by said monitoring unit, a second set
of one or more credit requests for a current outstanding balance of
the first amount, based on the data stored in said records, and (ii)
transmit the second set of credit requests to the one or more credit
providers over the DDN.
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Rejection2 on Appeal
Claims 11–17 and 19–26 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent ineligible subject matter.
Non-final Action 4–7.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed December 12, 2017), the Reply Brief
(filed July 10, 2018), the Non-final Action (mailed January 12, 2017) and
the Answer (mailed May 10, 2018), for the respective details.
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are directed to an abstract idea
comprising organizing human activity, and do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea. Non-final Action 5–6 (“Providing secured installment services to users
of an online market place is a fundamental economic practice.”); see Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-part
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50

2 The Examiner withdrew the 35 U.S.C. § 112 (a) and § 102 (a)(1)
rejections. Answer 3.
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(Jan. 7, 2019) (hereinafter “Memorandum”). Under the Memorandum, we
first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP3 § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, do we then look to whether the
claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See generally Memorandum.
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise specified, we adopt the Examiner’s findings and conclusions as
our own and we add the following primarily for emphasis and clarification
with respect to the Memorandum.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Appellants argue the pending claims are not directed to an abstract
idea because:

3 Manual of Patent Examining Procedure.
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It has been repeated by the courts, and by the USPTO
Guidelines on this subject, a “fundamental economic practice”
type abstract idea, as defined for the purpose of patentability
analysis, is characterized by well-understood, routine,
conventional activit[ies] previously known to the industry
performed by a generic computer. In contrast, unconventional
and novel practices cannot be considered “fundamental human
practices”.
Appeal Brief 15.
We agree with the Examiner’s determination that the claims are
directed to an abstract idea. See Non-final Action 5 (“Claim 11 is rejected
under 35 U.S.C. [§] 101 because the claim(s) as a whole, considering all
claim elements both individually and in combination, do not amount to
significantly more than an abstract idea.”). The Abstract discloses that the
invention is directed to, “[M]ethods and systems for facilitating credit based
transactions associated with purchase of goods, services or real estate having
a cost, any other transaction and/or for providing a security.” See
Specification ¶¶ 21–35.
Claim 11 recites a “system for providing automatically secured
installment services to users of an online marketplace” comprising:
“identifying details of a first purchasing party of a first online transaction
facilitated by the online marketplace;” “details of a credit line the first
purchasing party has with a first primary credit provider;” “details of a first
amount associated with the first online transaction;” “issue payment of the
first amount to a selling party of the first online transaction;” “details of
credit lines a purchasing party of the given online transaction has with one or
more primary credit providers;” “a given amount associated with the given
online transaction;” “details of received credit authorizations relating to the
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given online transaction;” “terms of payment of the given amount;” “ a
history of payments relating to the given amount and a current outstanding
balance of the given amount;” “automatically generate, upon being triggered
by said monitoring unit, a second set of one or more credit requests for a
current outstanding balance of the first amount, based on the data stored in
said records” and “transmit the second set of credit requests to the one or
more credit providers over the DDN [distributed data network].”
These steps recite fundamental economic principles or practices
and/or commercial or legal interactions; thus, the claim recites “certain
methods of organizing human activity,” an abstract idea. See Memorandum,
Section I (Groupings of Abstract Ideas); see also Specification ¶¶ 21–31.
Our reviewing courts have found claims to be directed to abstract ideas
when they recited similar subject matter. See Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk . . . .”(citation omitted));
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims
directed to abstract idea of processing loan information through a
clearinghouse); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract). Therefore, we conclude
the claims recite an abstract idea pursuant to Step 2A, Prong One of the
Guidance. See Memorandum, Section III(A)(1) (Prong One: Evaluate
Whether the Claim Recites a Judicial Exception).
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Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception” it is noted that a “claim that
integrates a judicial exception into a practical application will 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 judicial exception.” Memorandum, Section
III(A)(2).
Appellants contend, “The unconventionality of the components
recited in the pending claims, and specifically the re-securitizing device and
associated data storage, as well as the novel structures and functionalities of
the recited systems, clearly distinguish the recited subject matter from a
fundamental economic practice.” Appeal Brief 15. Further, “The
Appellants do not claim to have invented a server or a processor, rather the
specific novel structure and elements recited in the pending claims designed
to achieve automated credit results far improved over existing automated
credit systems.” Appeal Brief 21.
We do not find Appellants’ arguments persuasive. The recited
limitations do not reflect an improvement in the functioning of a computer
or other technology or technical field. See Memorandum, 84 Fed. Reg. at
55; cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir.
2019) (“This invention makes the trader faster and more efficient, not the
computer. This is not a technical solution to a technical problem.”).
Further, as the Federal Circuit has explained, a “claim for a new abstract idea
is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d
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1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was
“[g]roundbreaking, innovative, or even brilliant,” that would not be enough
for the claimed abstract idea to be patent eligible. See Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
In addition, we find Appellants’ claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system. See, e.g., DDR
Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer
processor for serving “composite web page” were patent eligible because
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259
(Fed. Cir. 2017) (holding that claims directed to “an improved computer
memory system” having many benefits were patent eligible).
Also, in McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3–D animation techniques” through the “use[] [of]
limited rules . . . specifically designed to achieve an improved technological
result in conventional industry practice.” McRO, Inc. v. Bandai Namca
Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the
Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub-sequences. McRO, 837 F.3d at 1313 (internal citations
omitted).
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We find no evidence of record here that the present situation is like the
one in McRO where computers were unable to make certain subjective
determinations, i.e., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators.
Accordingly, we determine the claims do not integrate the judicial exception
into a practical application. See Memorandum, Section III(A)(2) (Prong
Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application).

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Step 2B
Next, we determine whether the claims include additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73). Appellants contend, “even if the pending claims are
nevertheless seen to be directed to an abstract idea, they clearly recite
significantly more than the alleged abstract idea, thereby rendering them
proper under 35 U.S.C. § 101.” Appeal Brief 14.
Appellants further contend:
Upon examination of the claims the “inventive concept” being
searched for can clearly be seen in the structure and components
that comprise the cyclic re-securitization mechanism that
automatically monitors, generates and executes the cyclic credit
authorization process unique to the claimed systems. This
clearly amounts to elements and combinations of elements
ensuring that the patent amounts to significantly more than a
patent upon the alleged ineligible concept of providing secured
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installment services to users of online marketplaces itself, as
required according to the Alice decision.

Appeal Brief 17.
We are not persuaded and, as we addressed above, we find the claims
do not include a specific limitation or a combination of elements that
amounts to significantly more than the judicial exception itself. Non-final
Action 6 (The “generic computer components recited as performing generic
computer functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract idea with a
computerized system” and therefore “taken alone, the additional elements do
not amount to significantly more than the above-identified judicial exception
(the abstract idea).”); see Appeal Brief 21; see also Memorandum, Section
III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate
Whether the Claim Provides an Inventive Concept); see also Aatrix
Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed.
Cir. 2018) (Moore, J., concurring) (“the ‘inventive concept’ cannot be the
abstract idea itself”).
Accordingly, we conclude claims 11–17 and 19–26 are directed to a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Memorandum and thus an
abstract idea, and the claims do not recite limitations that amount to
significantly more than the abstract idea itself. We sustain the Examiner’s
§ 101 rejection of claims 11–17 and 19–26.
DECISION
The Examiner’s patent ineligible subject matter rejection of claims
11–17 and 19–26 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED