Ryan Joseph. Bussone et al.Download PDFPatent Trials and Appeals BoardDec 13, 201911694230 - (D) (P.T.A.B. Dec. 13, 2019) Copy Citation 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. 11/694,230 03/30/2007 Ryan Joseph BUSSONE 406778-000007 1630 106303 7590 12/13/2019 Nixon Peabody LLP 300 South Grand Avenue, Suite 4100 Los Angeles, CA 90071 EXAMINER SHARVIN, DAVID P ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 12/13/2019 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): ipairlink@nixonpeabody.com lapatentmb@nixonpeabody.com slevy@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RYAN JOSEPH BUSSONE, FRED JOHN SEIDELMAN, and LISA SCAPPATICCI KRUEGER ____________________ Appeal 2019-001792 Application 11/694,230 Technology Center 3600 ____________________ BEFORE JOHN A. EVANS, JAMES W. DEJMEK, and STEPHEN E. BELISLE, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 4–12, 16–37, 42, 43, and 45. Appellant has canceled claims 2, 3, 13–15, 38–41, and 44. See Appeal Br. 21–28. We have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies ROUTEONE LLC as the real party in interest. Appeal Br. 1. Appeal 2019-001792 Application 11/694,230 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to “providing [a] customer with an opportunity, upon pre-approval, to instantly receive and utilize such a line of credit based on another loan transaction.” Spec. ¶ 2. In a disclosed example scenario, a customer wishing to acquire (i.e., buy or lease) an asset, such as a vehicle, applies for a line of credit at the vehicle dealership to finance the vehicle acquisition. Spec. ¶¶ 4–5. Information provided on the credit application (to acquire the vehicle) is extracted and used on a second credit application, which is submitted to a credit card institution. Spec. ¶ 5. According to the Specification, “it may be advantageous to instantly provide customers with an opportunity to receive additional electronically provided credit services (e.g., credit cards) based on another loan transaction, thereby increasing both potential retail sales and customer buying potential.” Spec. ¶ 3. Claim 1 is representative of the subject matter on appeal and is reproduced below: 1. A method implemented by a credit aggregation management computer system, the method comprising: acquiring information for inclusion in a first credit application for financing an asset for acquisition by a customer, wherein the acquired information includes information acquired from the customer; determining at least one finance source for financing the asset for acquisition by the customer; generating based on the acquired information, the first credit application for submission to the at least one finance source, wherein generating the first credit application comprises including the acquired information in the first credit application; Appeal 2019-001792 Application 11/694,230 3 determining a credit card institution associated with the at least one finance source; generating, based on a portion of the information acquired from the customer, via a credit acquisition application program in the credit aggregation management computer system, a second credit application for submission to the credit card institution, wherein generating the second credit application comprises including the portion of the information acquired from the customer in the second credit application, wherein the second credit application is a different type of credit application than the first credit application, and wherein generating said second credit application further comprises extracting the portion of the acquired information from the first credit application; electronically sending the first credit application to the at least one finance source; electronically sending the second credit application to the credit card institution by credit acquisition application program; receiving an approval decision from the at least one finance source; receiving an approval decision from the credit card institution by the credit acquisition application program; and displaying a status indication associated with the approval decision of the second credit application. The Examiner’s Rejection Claims 1, 4–12, 16–37, 42, 43, and 45 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.2 Final Act. 4–6. 2 Although the Examiner correctly identifies all of the pending claims as being rejected on the cover sheet of the Final Rejection (see Disposition of Claims), we note the Examiner incorrectly identifies the claims in the statement of rejection. See Final Act. 4. Appellant has not indicated prejudice as a result of the incorrect claim listing in the statement of rejection and has, instead, set forth arguments in support of patent eligibility Appeal 2019-001792 Application 11/694,230 4 ANALYSIS3 Appellant disputes the Examiner’s conclusion that the pending claims are directed to patent-ineligible subject matter. Appeal Br. 9–20; Reply Br. 2–5. In particular, Appellant argues the pending claims are not directed to an abstract idea, but are instead directed to “very specific-computer implemented methodologies that assist with offering credit based on credit application information, that are unique to the Internet, and that solve computer-related problems relating to manipulating multiple sets of data using a computer or computer system that would not otherwise be done without a computer.” Appeal Br. 13; see also Appeal Br. 16 (asserting the pending claims are similar to the patent-eligible claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)); Appeal Br. 20 (asserting the pending claims are similar to the patent-eligible claims at issue in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). Moreover, Appellant asserts the claims recite “significantly more” than the alleged abstract idea. Appeal Br. 10, 16–17. Specifically, Appellant asserts the claims recite a non-conventional and non-generic arrangement of elements, which provides an inventive concept to transform the claims into of all pending claims. See Appeal Br. 9–20. Accordingly, we treat the Examiner’s misidentification of pending claims in the statement of rejection to be a harmless, typographical error. We correct herein the rejection to apply to the currently pending claims. 3 Throughout this Decision, we have considered the Appeal Brief, filed June 14, 2018 (“Appeal Br.”); the Supplemental Appeal Brief, filed July 30, 2018 (“Supp. Appeal Br.”); the Reply Brief, filed December 26, 2018 (“Reply Br.”); the Examiner’s Answer, mailed October 30, 2018 (“Ans.”); and the Final Office Action, mailed March 8, 2018 (“Final Act.”), from which this Appeal is taken. Appeal 2019-001792 Application 11/694,230 5 patent-eligible subject matter. Appeal Br. 16–17 (reviewing the court’s analysis in BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). In addition, Appellant argues the claims recite more than generic computer components and functions that are well- understood, routine, and conventional. Appeal Br. 11–12, 14–15, 17–19; see also Reply Br. 3–5. The Supreme Court’s two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice, 573 U.S. at 217. In addition, the Office recently published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two prongs of analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial exception integrated into a practical application. See 84 Fed. Reg. at 54. Under the Office Guidance, if the judicial exception is integrated into a practical application, see infra, the claim is patent eligible under § 101. See 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception Appeal 2019-001792 Application 11/694,230 6 (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. Here, we conclude Appellant’s claims recite an abstract idea. More specifically, Appellant’s claims are generally directed to generating and sending two different credit applications (based on common information about the applicant) to two different (but associated) financing sources, and receiving approval decisions for each credit application. This is consistent with how Appellant describes the claimed invention. See Spec. ¶¶ 4 (describing the invention as “providing a credit card offer to a customer during a transaction for the customer to acquire an asset offered by a dealer”) 15 (“providing a credit card offer to a customer applying for automobile financing”); see also Appeal Br. 11 (“the present application is directed towards a computer-implemented method for providing a credit card offer to a customer during an automobile dealership transaction”); Appeal Br. 13 (describing the claims as directed to methods and devices that “involve extracting electronic information to automatically generate first and second credit applications that are different from one another as well as automatically determining the finance sources that should receive the credit application[s]”); Reply Br. 3. Consistent with our Office Guidance and case law, we conclude that generating and sending two different credit applications (based on common information about the applicant) to two different (but associated) financing sources, and receiving approval decisions for each credit application is a certain method of organizing human activity (e.g., a fundamental economic Appeal 2019-001792 Application 11/694,230 7 practice or commercial interaction, such as sales activities)—i.e., an abstract idea. See 84 Fed. Reg. at 52; see also Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (holding that “processing an application for financing a purchase” falls within certain methods of organizing human activities and is, therefore, an abstract idea); Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate settlement risk is a “fundamental economic practice” and thus, an abstract idea); Bilski v. Kappos, 561 U.S. 593, 611–12 (2010) (concluding hedging to be a fundamental economic practice and, therefore, an abstract idea).4 Claim 1 is reproduced below and includes the following claim limitations that recite generating and sending two different credit applications (based on common information about the applicant) to two different (but associated) financing sources, and receiving approval decisions for each credit application, emphasized in italics: 4 In addition, in Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331–34 (Fed. Cir. 2012), the court concluded that claims 1, 3, and 4 of U.S. Patent 7,181,427 were patent-ineligible ideas under 35 U.S.C. § 101. In particular, the court concluded the claims were directed to “processing information through a clearinghouse,” an abstract idea (similar to that in Bilski). Dealertrack, 674 F.3d at 1333. Similar to the instant pending claims, claim 1 of the ’427 patent recited, inter alia, receiving credit application data, selectively forwarding the credit application data to funding source devices, and receiving funding decision data (i.e., forwarding funding decision data from the funding source devices). Dealertrack, 674 F.3d at 1331. Moreover, claim 1 of the ’427 patent further recited that selectively forwarding credit application data comprised sending at least a portion of the credit application data to more than one funding source. Dealertrack, 674 F.3d at 1331. We further note that Appellant was also an appellee in the Dealertrack matter. See Dealertrack, 674 F.3d at 1315. Appeal 2019-001792 Application 11/694,230 8 1. A method implemented by a credit aggregation management computer system, the method comprising: acquiring information for inclusion in a first credit application for financing an asset for acquisition by a customer, wherein the acquired information includes information acquired from the customer; determining at least one finance source for financing the asset for acquisition by the customer; generating based on the acquired information, the first credit application for submission to the at least one finance source, wherein generating the first credit application comprises including the acquired information in the first credit application; determining a credit card institution associated with the at least one finance source; generating, based on a portion of the information acquired from the customer, via a credit acquisition application program in the credit aggregation management computer system, a second credit application for submission to the credit card institution, wherein generating the second credit application comprises including the portion of the information acquired from the customer in the second credit application, wherein the second credit application is a different type of credit application than the first credit application, and wherein generating said second credit application further comprises extracting the portion of the acquired information from the first credit application; electronically sending the first credit application to the at least one finance source; electronically sending the second credit application to the credit card institution by credit acquisition application program; receiving an approval decision from the at least one finance source; receiving an approval decision from the credit card institution by the credit acquisition application program; and displaying a status indication associated with the approval decision of the second credit application. Appeal 2019-001792 Application 11/694,230 9 More particularly, the concept of generating and sending two different credit applications (based on common information about the applicant) to two different (but associated) financing sources, and receiving approval decisions for each credit application comprises (i) generating the first and second credit applications (i.e., the claimed steps of generating the first credit application and generating the second credit application); (ii) determining the financial institutions to send the credit applications (i.e., the claimed steps of determining at least one finance source and determining a credit card institution associated with the at least one finance source); (iii) sending the credit applications to the financial institutions (i.e., the claimed steps of sending the first credit application to the at least one finance source and sending the second credit application to the credit card institution); and (iv) receiving a decision from the financial institutions (i.e., the claimed steps of receiving an approval decision from the at least one finance source and from the credit card institution). Because the claim recites a judicial exception, we next determine whether the claim integrates the judicial exception into a practical application. 84 Fed. Reg. at 54. To determine whether the judicial exception is integrated into a practical application, we identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether they integrate the judicial exception into a recognized practical application. 84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018). Appeal 2019-001792 Application 11/694,230 10 Here, we find the additional limitation(s) do not integrate the judicial exception into a practical application. More particularly, the claims do not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55; see also Final Act. 4–6. Rather, the additional limitations merely provide additional detail regarding the acquisition and use of information included in the credit applications, the performance of activities by a credit aggregation management system or a credit acquisition application program, and the display of approval decisions for each credit application. These are the types of extra-solution activities (i.e., in addition to the judicial exception) the courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); see also Bilski, 561 U.S. at 612 (holding the use of well-known techniques to establish inputs to the abstract idea as extra-solution activity that fails to make the underlying concept patent eligible); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (explaining that “selecting information, by content or source, for collection analysis, and display does nothing significant to differentiate a process from ordinary mental processes”); Elec. Power, 830 F.3d at 1354 (recognizing “that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and Appeal 2019-001792 Application 11/694,230 11 analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving, and providing data . . . are inconsequential data gathering and insignificant post solution activity”). In DDR Holdings, the Federal Circuit determined “the claimed solution amount[ed] to an inventive concept for resolving [a] particular Internet-centric problem,” i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). Further, The Federal Circuit explained that the patent-eligible claims specified “how interactions with the Internet are manipulated to yield a desired result . . . that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258. Additionally, the court reasoned that those claims recited a technological solution “necessarily rooted in computer technology” that addressed a “problem specifically arising in the realm of computer networks.” DDR Holdings, 773 F.3d at 1257. Contrary to Appellant’s assertions (see, e.g., Appeal Br. 16–17, 19– 20), the claims do not recite an advancement over conventional computer technology or address a problem necessarily rooted in computer technology to overcome a problem arising in the realm of computer networks. Rather, as the Examiner notes (see Ans. 6), the processing of credit applications would exist without computers. Thus, the pending claims do not improve an existing technological process, but rather merely use computers and computer devices that operate in their normal, expected manner. See DDR Holdings, 773 F.3d at 1258–59; see also Enfish, 822 F.3d at 1335–36 (distinguishing between claims wherein the focus of the claims is on an Appeal 2019-001792 Application 11/694,230 12 improvement in computer capabilities and those that invoke a computer as a tool). Additionally, unlike the arrangement of elements (i.e., installation of a filtering tool at a specific location) in BASCOM, 827 F.3d at 1349–50, and contrary to Appellant’s arguments (see Appeal Br. 17), Appellant’s claims do not recite a non-conventional and non-routine arrangement of known elements. For at least the foregoing reasons, the claims do not integrate the judicial exception into a practical application. Because we determine the claims are directed to an abstract idea or combination of abstract ideas, we analyze the claims under step two of Alice to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77– 79). As stated in the Office Guidance, many of the considerations to determine whether the claims amount to “significantly more” under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. See 84 Fed. Reg. at 56. Thus, at this point of our analysis, we determine if the claims add a specific limitation, or combination of limitations, that is not well-understood, routine, conventional activity in the field, or simply appends well-understood, routine, conventional activities at a high level of generality. See 84 Fed. Reg. at 56. Here, Appellant’s claims do not recite specific limitations (or a combination of limitations) that are not well-understood, routine, and conventional. Contrary to Appellant’ arguments (see, e.g., Appeal Br. 14– 15; Reply Br. 4–5), we agree with the Examiner (see, e.g., Final Act. 5, Appeal 2019-001792 Application 11/694,230 13 Ans. 6–8) that the claims merely recite generic computer components (e.g., a computer system) performing generic computing functions that are well-understood, routine, and conventional (e.g., receiving and transmitting data, processing data, and presenting the results). See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“merely presenting the results of abstract processes of collecting and analyzing information . . . is abstract as an ancillary part of such collection and analysis”) (quotations omitted). Moreover, the Examiner finds, and we agree, Appellant describes the computer devices at a high level of generality in the Specification. Ans. 8 (citing Spec. ¶¶ 20, 45). Additionally, to the extent Appellant contends the claims do not seek to tie-up an abstract idea (Appeal Br. 14), we are unpersuaded of Examiner error. “[W]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” FairWarning IP LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e- commerce setting do not make them any less abstract.”). Further, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. Appeal 2019-001792 Application 11/694,230 14 For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of claims 1, 4–12, 16–37, 42, 43, and 45 under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision rejecting claims 1, 4–12, 16–37, 42, 43, and 45 under 35 U.S.C. § 101. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–12, 16–37, 42, 43, 45 101 Eligibility 1, 4–12, 16–37, 42, 43, 45 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation