Ex Parte Carroll et al

Patent Trial and Appeal Board

Jul 25, 2018

12163674 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/163,674 06/27/2008
20350 7590 07/27/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Kevin Carroll
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.
90945-733623 (010900US) 9030
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07/27/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN CARROLL, KARINA ELROD,
JULIE CANNA VA, KIRSTEN FRY-SANCHEZ, and
SHAWNA LANDERS
Appeal2017-004448
Application 12/163,674 1
Technology Center 3600
Before HUNG H. BUI, DAVID J. CUTITT A II, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3-5, 7, 12-15, 19, 20, and 33--41, which constitute all
of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants' Brief ("App. Br.") identifies The Western Union Company as
the real party in interest. App. Br. 2.
Appeal2017-004448
Application 12/163,674
CLAIMED SUBJECT MATTER
The claims are directed to monetary gift registries and methods for
operating them. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of operating a monetary gift registry,
compnsmg:
registering at a host computer system one or more
recipients with the monetary gift registry;
creating in a database stored on the host computer system
an account for at least one of the registered recipients;
assigning in the database a unique identifier to at least one
account or registered recipient;
receiving value from one or more senders via one or more
sender devices over a consumer-oriented money transfer
network, each receipt of value accompanied by the umque
identifier of one of the accounts or recipients;
accumulating the value based, at least m part, on the
unique identifiers;
recording, in the database, an amount of the accumulated
received value corresponding to each of the unique identifiers;
sending a transaction identifier to a recipient via one or
more recipient devices over the consumer-oriented money
transfer network;
receiving, by the host computer system over the consumer-
oriented money transfer network, an amount of a withdrawal
request from recipient; and
requiring presentation of the transaction identifier by the
recipient at a physical agent location of the consumer-oriented
money transfer network to authenticate the recipient prior to
distribution of the funds;
distributing funds from one of the accounts to the recipient
via a money transfer network.
App. Br. 11-12 (Claims Appendix).
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Application 12/163,674
REJECTION
Claims 1, 3-5, 7, 12-15, 19, 20, 23 and 41 are rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
OPINION
Legal Standard for Patent Eligibility
In issues involving subject matter eligibility under 35 U.S.C. § 101,
our inquiry focuses on whether the claims satisfy the two-step test set forth
by the Supreme Court in Alice Corp. v. CLS Bank Int'!., 134 S.Ct. 2347
(2014). The Supreme Court instructs us to "first determine whether the
claims at issue are directed to a patent-ineligible concept," Alice, 134 S. Ct.
at 2355, and, in this case, the inquiry centers on whether the claims are
directed to an abstract idea. If the initial threshold is met, we then move to
the second step, in which we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second
step as a search for "an 'inventive concept'-i.e., an element or combination
of elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(quoting Mayo, 566 U.S. at
72-73).
The Examiner's Eligibility Analysis Under§ 101
In rejecting the claims under 35 U.S.C. § 101, the Examiner applies
the Alice framework and determines at the first step that the claims are
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directed to an abstract idea. More specifically, the Examiner determines the
"claims are directed to the abstract idea of a fundamental commercial or
business practices of operating a monetary gift registry," and that operating
a monetary gift registry is "a method of organizing human activities with a
machine in a process." Final Act. 3. The Examiner also determines the
claims lack a sufficient inventive concept to pass muster under the second
step of the Alice framework. The Examiner finds the elements of the claims
amount "to no more than mere instructions to implement the idea on a
computer" and that the recited steps "each execute in a manner routinely and
conventionally expected of these elements." Final Act. 4. Considering the
claim elements as a whole, the Examiner finds "[ t ]he claim as a whole, does
not amount to significantly more than the abstract idea itself," identifying
three reasons underpinning this conclusion:
This is because [ 1] the claim does not affect an improvement to
another technology or technical field; [2] the claim does not
amount to an improvement to the functioning of a computer
itself; and [3] the claim does not move beyond a general link of
the use of an abstract idea to a particular technological
environment.
Final Act. 4.
Responding to Appellants' argument that the claims are eligible based
on the Federal Circuit's decision in DDR Networks, the Examiner explains
that unlike the claims in DDR Networks, which were "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer technology," Appellants' claims merely "provided
generically computer-implemented solution to a business-related or
economic problem and thus are incomparable to the claims at issue in DDR."
Final Act. 7.
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Appellants 'Arguments
Appellants present several arguments in favor of eligibility. With
respect to the determination that the claims are directed to an abstract idea,
Appellants argue the Examiner's characterization of the claims "is an
oversimplification and ignores most of the recitations of independent claim
1." Reply Br. 2. Appellants rely on DDR Holdings, arguing the claims are
necessarily rooted in computer technology because they relate to
"transmitting/receiving secure data and distributing funds over various
computer networks, etc .. " App. Br. 7. Appellants further argue "the instant
claims are similar to the subject-matter eligible claims of DDR Holdings as
they do not merely recite the performance of some business practice known
from the pre-Internet world along with some generic requirement to perform
it using the Internet" and that "there is no 'pre-Internet' business practice
directly analogous to the features" in the claims. App. Br. 7-8; see also
Reply Br. 3.
Appellants also rely on the pre-Alice case of SiRF Tech. v. ITC, 601
F.3d 1319, 1333 (Fed. Cir. 2010), arguing the Federal Circuit's conclusion
of eligibility in that case requires reversal here. In particular, Appellants
argue the decision in SiRF Tech. "held that a GPS receiver imposes
meaningful limitations on the scope of the claims, because the claims require
the use of a [] GPS receiver and could not be performed without the use of
such a receiver." App. Br. 8 (citing SiRF Tech., 601 F.3d at 1332-33).
Appellants contend the claims at issue here "recite particular specialized
hardware devices and systems" and they identify various features in both the
independent and dependent claims which Appellants assert are "particular
specialized hardware" similar to that found eligible in SiRF Tech. Id.
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Appellants also dispute the Examiner's determination under Alice step
2. Appellants cite BASCOM Global Internet Services v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016), arguing the claims provide a "non-
conventional and non-generic arrangement" which allows "the transmission
of secure data and distribution of funds over the various recited computer
networks." Reply Br. 4. Appellants also dispute the Examiner's finding that
the claims are not directed to any specific improvement in computer
functionality. To that end, Appellants again identify various features in the
claims that are "particular specialized hardware devices" and which
Appellants maintain "cannot be performed on generic computing devices
and/or in a well-known computing environment." Reply Br. 4.
Appellants also argue procedural error, contending "the blanket
rejection of independent claims 1, 3 3, and 40, and all dependent claims,
without analysis of each claim under the Alice test is improper" and contrary
to Patent Office policy. App. Br. 9; Reply Br. 5.
Analysis
We are not persuaded by Appellants' argument. Appellants' step 1
arguments are not persuasive because the claims are markedly different from
those found eligible in DDR Holdings. There, the claims involved "a
challenge particular to the Internet" that did not exist in the physical world.
DDR Holdings, 773 F.3d at 1257. The Federal Circuit explained the key
difference between a physical store and an online store:
[O]nce a customer enters a physical warehouse store, that
customer may encounter a kiosk selling third-party cruise
vacation packages. There is, however, no possibility that by
walking up to this kiosk, the customer will be suddenly and
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completely transported outside the warehouse store and relocated
to a separate physical venue associated with the third-party-the
analog of what ordinarily occurs in "cyberspace" after the simple
click of a hyperlink- ... without any need to "return" to the
aisles of the store after completing the purchase. It is this
challenge of retaining control over the attention of the customer
in the context of the Internet that the '399 patent's claims
address.
DDR Holdings, 773 F.3d at 1258. Appellants provide no comparable
explanation for how their claimed "monetary gift registry" addresses
challenges which are (1) unique to the Internet, and (2) not present in
traditional monetary gift registries. Instead, Appellants assert, without
further explanation, the claims "do not merely recite the performance of
some business practice known from the pre-Internet world along with some
generic requirement to perform it using the Internet." App. Br. 7-8.
Appellants also do not explain why traditional non-computerized gift
registries, including those where money is given in lieu of a gift, are not an
analogous "pre-Internet" business practice. Nor do Appellants sufficiently
explain how the claims are "necessarily rooted in computer technology."
The example provided by Appellants, "transmitting/receiving secure
data and distributing funds over various computer networks, etc." indicates
the claims involve computer technology, but does not demonstrate the claims
are rooted in computer technology. As made clear in DDR Holdings, claims
are rooted in computer technology when the invention arises out of a
problem introduced by the technological nature of subject matter
encompassing the invention. Here, Appellants' invention primarily
addresses a business problem simply by extending the business practice of
providing and maintaining gift registries to computers and the Internet.
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Appellants' reliance on SiRF Tech. is also misplaced. As an initial
matter, this case was decided prior to Alice, and applied the "machine or
transformation" test that was found insufficient for determining eligibility in
Alice. Even so, the claims in SiRF Tech. bear little resemblance to those at
issue here, as they relate to solving the technological problem of calculating
an absolute position of a GPS receiver and an absolute time of reception of
satellite signals. Id. at 1333.
We also find Appellants' step 2 arguments lacking merit. As noted
above, Appellants cite BASCOM, arguing the claims provide a "non-
conventional and non-generic arrangement" which allows "the transmission
of secure data and distribution of funds over the various recited computer
networks." Reply Br. 4. However, Appellants do not explain with any
specificity how the claimed arrangement makes possible transmission and
distribution that cannot otherwise be achieved using conventional and well-
known networking protocols and generic computing components.
Appellants also do not explain how their purported "non-conventional and
non-generic arrangement" improves the speed, function, or efficiency of the
network, nor do they identify any improvement to the operation of any of the
computer systems included in the claim.
As the Examiner points out, Appellants' Specification indicates the
"system for operating a monetary gift registry" is a generic computer system
connected to the Internet. Ans. 8-9 ( citing Spec. ,r,r 20-21 ). Further, the
various components Appellants identify as being "particular specialized
hardware devices and systems" are all described at a high level in the
Specification, with no structural, operational, or even conceptual details
provided. This high level of description demonstrates that the various
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components were routine, conventions, and well-understood in the art at the
time the application was filed.
Finally, we are not persuaded the Examiner has insufficiently
addressed all of the claims. Appellants argue the Examiner fails to address
the dependent claims as well as independent claim 40. App. Br. 9; Reply
Br. 5. Appellants' position, in essence, is that the Examiner has not set forth
a prima facie case of ineligibility. We disagree.
Our reviewing court guides "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). In
particular:
[ A ]11 that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [ 35 U.S.C.] § 132. As the statute itself instructs,
the Examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
This burden is met by "adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond."
Hyatt, 492 F.3d at 1370. It is only "when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection" that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132(a). Chester
v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
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Here, the Examiner set forth the statutory basis of rejection with
respect to the dependent claims-namely, 35 U.S.C § 101. Final Act. 2.
The Examiner also provided the reasons for the rejection-that "claims 1, 3-
5, 7, 12-15, 19, 20, 23 and 41 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to a judicial exception ( abstract idea) without
significantly more." Final Act. 5. The Examiner further explained that
"dependent claims 3-5, 7, 12-15, 19, 20, 34--39 and 41 do not resolve the
issues raised in the independent claims" because the various hardware
components recited in the dependent claims "do not add significantly more
because they are simply an attempt to limit the abstract idea to a particular
technological environment." Ans. 10. Although each and every limitation
in the dependent claims is not addressed with particularity, the Examiner
makes clear the rationale and basis for their rejection-namely that the
various additional limitations recited in the dependent claims do not amount
to significantly more than the abstract idea itself because they suffer from
the same shortcomings as the hardware components recited in the
independent claims (which were addressed with particularity). See Ans. 8-
9. Consequently, we do not find the Examiner's rejection to be procedurally
deficient as Appellants allege.
Because we do not find Appellants' arguments persuasive of
Examiner error, we sustain the rejection of the claims under 35 U.S.C.
§ 101.
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DECISION
We affirm the Examiner's rejection of claims 1, 3-5, 7, 12-15, 19, 20,
and 33--41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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