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Patent Trials and Appeals Board

Dec 2, 2019

14109269 - (D) (P.T.A.B. Dec. 2, 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.
14/109,269 12/17/2013 Daniel A. Carretta 007131.01432 8685
71733 7590 12/02/2019
BANNER & WITCOFF, LTD
71 SOUTH WACKER DR.
SUITE 3600
CHICAGO, IL 60606
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
PTO-71733@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL A. CARRETTA, THOMAS M. HANCOCK,
KAREN K. LEWY, CHARLES R. LIU, JACK MEYERS,
SHERYL W. STROTT, FAITH A. TUCKER, AND CARRIE A. HANSON
____________

Appeal 2019-000837
Application 14/109,269
Technology Center 3600
____________

Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and
BETH Z. SHAW, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3, 4, 7, 8, 10, 11, and 21–24. Claims 2, 5, 6, 9,
12–20, and 25–28 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 Bank of America Corporation (“Appellant”) is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention relates to “computer
processing of a consumer savings program that provides for automatic
savings during any transaction.” Spec. ¶ 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method comprising:
receiving, by a computer server from a point-of-sale
device, information identifying a first financial transaction
initiated at the point-of-sale device;
posting, by the computer server, the first financial
transaction to a source account;
calculating, by the computer server, a first savings amount
by rounding a transaction amount of the first financial transaction
to a nearest whole monetary amount wherein the first savings
amount is a difference between the transaction amount and the
nearest whole monetary amount;
calculating, by the computer server, an aggregate savings
amount by aggregating the first savings amount and a second
savings amount calculated for a second financial transaction,
which is initiated at the point-of-sale device, posted to the source
account;
performing, by the computer server, the calculating the
aggregate savings amount for each subsequent financial
transaction posted to the source account until an end of day;
determining, by the computer server only once at the end
of the day, that the aggregate savings amount is available in the
source account before debiting the aggregate savings amount
from the source account; and
debiting, by the computer server, at least a portion of the
aggregate savings amount from the source account to an
investment account;
wherein computing load on the point-of-sale device is
reduced because the calculation of the first savings amount is
deferred to the computer server, and wherein computing load on
the computer server is reduced because the computer server
postpones to a single time at the end of the day the step of
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determining that the aggregate savings amount is available in the
source account.

REJECTION2
The Examiner rejected claims 1, 3, 4, 7, 8, 10, 11, and 21–24 under 35
U.S.C. § 101 as directed to patent ineligible subject matter. Non-Final Act.
5–10.
ANALYSIS
THE 35 U.S.C. § 101 REJECTION
Claims 1, 3, 4, 7, 8, 10, 11, and 21–24
Based on the record before us, we are persuaded that the Examiner
erred in concluding that claims 1, 3, 4, 7, 8, 10, 11, and 21–24 are directed to
patent ineligible subject matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citation omitted).

2 We note that the Examiner objects to the Specification for new matter.
Non-Final Act. 3–4. Namely, the Examiner maintains that there is lack of
support for recited computing load limitation. Id. While we agree the
Specification does not disclose the recited computing load limitation,
objections are petitionable matters. See MPEP §§ 1002 and 1201; In re
Mindick, 371 F.2d 892, 894 (CCPA 1967). Upon further prosecution, the
Examiner should consider rejecting the claims. See MPEP § 608.04(c)
(noting that when the alleged new matter is introduced into or affects the
claims, the claims should be rejected).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also 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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of section
101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
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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 MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55–56. 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 Memorandum 56.
Analysis – Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claimed invention includes
“calculating. . . a first savings amount by rounding a transaction amount of
the first financial transaction to a nearest whole monetary amount wherein
the first savings amount is a difference between the transaction amount and
the nearest whole monetary amount;” “calculating. . . an aggregate savings
amount by aggregating the first savings amount and a second savings
amount calculated for a second financial transaction, which is initiated at the
point-of-sale device, posted to the source account;” “performing. . . the
calculating the aggregate savings amount for each subsequent financial
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transaction posted to the source account until an end of day;” “determining,.
. . only once at the end of the day, that the aggregate savings amount is
available in the source account before debiting the aggregate savings amount
from the source account;” “debiting. . . at least a portion of the aggregate
savings amount from the source account to an investment account;”
“wherein computing load on the point-of-sale device is reduced because the
calculation of the first savings amount is deferred to the computer server,”
and “wherein computing load on the computer server is reduced because the
computer server postpones to a single time at the end of the day the step of
determining that the aggregate savings amount is available in the source
account.”
In other words, the claimed method calculates a savings amount
(where the savings amount is a difference between transaction amounts and
the nearest whole monetary amount) and subsequent savings amounts,
calculates the aggregate savings amount, determines that the aggregate
savings amount is available in a source account, and debits at least a portion
of the aggregate savings amount from the source account to an investment
account. As the Examiner points out, the claimed invention is a method of
“processing financial transactions” and “has been in widespread use[] in the
banking industry and is considered to be a fundamental economic practice
(financial transaction process).” Non-Final Act. 7; see also Non-Final Act. 9
(“The claimed invention is a concept of calculating the savings amount
based financial transactions using the predetermined round up rules and
aggregating the savings amount for debiting.”). Further, the claimed
invention at least involves commercial interactions, i.e. sales transactions or
activities. As such, the claimed invention recites methods or organizing
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human activity, which is an abstract idea. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (finding ineligible claims
directed to pricing a product based on collected and analyzed information);
Intellectual Ventures LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir.
2015) (finding ineligible claims directed to tracking user transactions and
user pre-set limits).
Additionally, as the Examiner identifies, the claimed method of
“calculating savings (rewards) based on input is a mathematical relationship
(a mathematical formula for calculating rewards)” (Non-Final Act. 7) and,
thus, recites mathematical concepts, which is also an abstract idea. See
Flook, 437 U.S. at 595 (noting that “if a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is
for a specific purpose, the claimed method is nonstatutory.”) (citations and
quotation marks omitted). Therefore, we determine that the claimed
invention recites an abstract idea.
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by: (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
The claimed invention additionally recites “a computer server;” “a
point-of-sale device;” “receiving, by a computer server from a point-of-sale
device, information identifying a first financial transaction initiated at the
point-of-sale device;” and “posting, by the computer server, the first
financial transaction to a source account.” We are not persuaded that the
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additional limitations alone or in combination integrate the claimed abstract
idea into a practical application.
Appellant argues that the claimed invention “recites specific details
about novel and inventive inputs that are collectively used to provide a
technological solution to an existing problem with connected computer
networks” (Appeal Br. 6) and “results in an efficient system overall system
that allows for reduced computing load and an efficient network of
distributed computing devices.” Appeal Br. 8. Appellant further asserts that
the claimed invention “expressly recites improvement by way of reduction
of the computing load of the point-of-sale device ‘because the calculation of
the first savings amount is deferred to the computer server.’” Reply Br. 3.
The Examiner, on the other hand, determines that the claimed
invention is “not directed to a new computer server, network, or system
memory, nor do the claims provide a method for processing data that
improves existing technical processes.” Ans. 7; see also Ans. 8 (noting that
the claimed invention here does not improve the functioning of the computer
itself or another technology). As the Examiner points out, the Specification
fails to support Appellant’s alleged technical improvement. See Ans. 4
(noting that there is no support in the Specification for the alleged technical
advantages of the claimed invention). Moreover, the Examiner identifies
that the claimed reducing load limitation is similar to the limitation in Alice,
which recited performing permitted transactions “at the end of the day.”
Ans. 4–5. The Examiner, in particular, determines that Appellant’s
arguments are not persuasive as the claimed invention performs in a manner
similar to Alice and lacks “support in the specification for how the
computing load is reduced.” Ans. 5.
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We agree with the Examiner. The Specification describes the
claimed invention as directed to a system that automatically facilitates
savings. Spec. 6; see also, e.g., Spec. ¶ 13 (noting that the customer can
accumulate savings conveniently and painlessly); Spec. ¶ 44 (“As disclosed,
an automatic savings program in accordance to embodiments of the
invention provides an easy and automatic method for a customer to save, and
can encourage increased savings.”). Namely, the Specification repeatedly
identifies the advantages of the claimed invention as allowing a user (using a
generic computer) to increase savings, not providing a technical
improvement or solving a technical problem. The Specification additionally
identifies that the advantage of aggregating for once a day daily posting is to
avoid overdrafts (Spec. 32), not reduced load or efficiency as asserted by the
Appellant. See also Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.”). As such, we are not
persuaded that the claimed invention includes a technical improvement, but
instead is merely an improved abstract idea, i.e. method for increased
savings.
Moreover, the steps of receiving data, such as receiving information
identifying a first financial transaction, and applying processed data, such as
posting the first financial transaction to a source account, is insignificant
extra-solution activity. See MPEP § 2106.05(g); OIP Techs., Inc., 788 F.3d
at 1363; Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016). As such, based on the record before us, we determine that the
claimed invention is not integrated into a practical application.
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Analysis – Revised Step 2B
Nevertheless, we agree with Appellant that the Examiner fails to
provide sufficient evidentiary support under Berkheimer v. HP.com, 881
F.3d 1360 (Fed. Cir. 2018). Specifically, the Examiner determines that the
claimed invention “merely amounts to the application or instructions to
apply the abstract idea. . . on a system” and considers the claimed invention
“to amount to nothing more than requiring a generic system (e.g. a system
comprising a generic database; a generic element for receiving; a generic
element for calculating, and generic element for debiting) to merely carry
out the abstract idea itself.” Non-final Act. 10; see also Ans. (noting that the
claimed computer network can be any type of network and that the claimed
server is “a computer system operated by a bank.”).
These conclusory findings fail to provide the required factual support.
See Berkheimer, 881 F.3d 1360. While the Examiner identifies that the
claimed server is “a computer operated by a bank,” this disclosure alone
does not demonstrate the claimed server is well-known, routine, and
conventional. See Reply Br. 4 (noting that Berkheimer clarifies that mere
disclosure of a limitation does not show that it is well-known, routine, and
conventional). As such, based on the record before us, we are persuaded of
error in the Examiner’s rejection.
Accordingly, we reverse the rejection of claims 1, 3, 4, 7, 8, 10, 11,
and 21–24 as directed to patent ineligible subject matter.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 7,
8, 10, 11,
21–24
101 1, 3, 4, 7, 8,
10, 11, 21–
24

REVERSED