Ex Parte Jurgens et al

Patent Trial and Appeal Board

Sep 21, 2018

12012659 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/012,659 02/05/2008
123521 7590 09/25/2018
Wells Fargo Bank, N.A.
c/o Nelson Mullins Riley & Scarborough, LLP
One Wells Fargo Center
301 South College Street, 23rd Floor
Charlotte, NC 28202
FIRST NAMED INVENTOR
Kelly Jurgens
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.
2827491.00040 3888
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY JURGENS, DEAN NOLAN, and
STEVEN BOEHM
Appeal2017-005102
Application 12/012,659 1
Technology Center 3600
Before JEREMY J. CURCURI, HUNG H. BUI, and IRVINE. BRANCH,
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 9, 11, and 16-22, which are all the
claims pending in the application. Claims App 'x. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Wells Fargo Bank,
N.A. Appeal Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("Appeal Br.") filed April
8, 2016; Examiner's Answer ("Ans.") mailed November 1, 2016; Final
Office Action ("Final Act.") mailed May 12, 2015; and original
Specification ("Spec.") filed February 5, 2008.
Appeal2017-005102
Application 12/012,659
STATEMENT OF THE CASE
Appellants' invention relates to "[a] system and method of integrating
financial information and rewards data in a computer system of a financial
institution such as an online banking computer system [ shown in Figure 4]."
Abstract. Appellants' Figure 4 is reproduced below:
CUSTOMER/
USER
flREWALl
ONUNE BANKING
WEBSERVER
SIGN-ON/
AUTHENTICATION
I
I
FlG.4
APPLICATION
SERVER
ONLINE RANKING
COMPUTER
SOflWARE
APPLICATION
I ~
I I
DATABASE
SERVER
DATABASE
APPLICATION -
...
. DATABASE
'-
·~
_..
Appellants' Figure 4 shows user access to online banking webserver, via
web interface, for rewards data.
Claims 9, 16, and 17 are independent. Representative claim 9 is
reproduced below with disputed limitations in italics:
9. A computer system for integrating financial information
and rewards data, the computer system comprising:
a web interface for providing a customer of a financial
institution access to a webserver of a financial institution,
the webserver communicatively connected to an
application server, wherein the application server comprises an
online banking computer software application that integrates
online banking and rewards data in a single presentation layer
viewable by the customer,
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Application 12/012,659
a database server communicatively connected to the
application server, wherein the database server comprises a data
extraction computer software application, and
a database comprising rewards data and online banking
data communicatively connected to the database server.
App. Br. 9 (Claims App'x).
EXAMINER'S REJECTION
Claims 9, 11, and 16-22 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter, i.e., an
abstract idea. Final Act. 2-3.
DISCUSSION
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether the are additional
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Application 12/012,659
elements [that] "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). 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. ( citing Mayo, 566 U.S. at 72-73).
In rejecting claims 9, 11, and 16-22 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to the abstract idea of
"integrating financial information and rewards data [ for online banking]"
which is considered as a "fundamental electronic practice" identified in
Alice and Bilski (Final Act. 2) and includes limitations that are analogous to
those discussed in Cyberfone and SmartGene. Ans. 2 (quoting Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir.
2014) (holding that "using categories to organize, store, and transmit
information is well-established ... the idea of collecting information in
classified form, then separating and transmitting that information according
to its classification, is an abstract idea that is not patent-eligible") and
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 955
(Fed. Cir. 2014) (holding that "comparing new and stored information and
using rules to identify medical options" is an abstract idea that is not patent-
eligible ). The Examiner also determines "[t]he additional element(s) or
combination of elements in the claims," i.e., "generic computer structure and
an online banking software application" "serve[] to perform generic
computer and online banking software functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry." Final Act. 2-3. According to the Examiner, "[ t ]he additional
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Application 12/012,659
limitations when considered both individually and in combination do not
amount to significantly more because the claims do not affect an
improvement to another technology or technical field; the claims do not
amount to an improvement to the functioning of a computer itself; and the
claims do not move beyond a general link of the use of an abstract idea to a
particular technological environment." Ans. 3.
At the outset, Appellants argue the Examiner fails to provide any
evidentiary support for the allegation that the claims are directed to an
abstract idea of "integrating financial information and rewards data."
Appeal Br. 5. This argument is not persuasive because: (1) patent eligibility
is a question of law that is reviewable de novo (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 to an abstract idea. 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,
13 62 (Fed. Cir. 2011 ). 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.
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Id., see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when [t]he 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 of the rejection is clearly manifested by
their response as set forth in the briefs.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea, citing two district court decisions
in: (1) SimpleAir, Inc. v. Google Inc., 2-14-cv-0011 (TXED 2015, Order);
and (2) Prism Technologies v. T-Mobile USA, Inc., 8-12-cv-00124 (NED
2015, Order). Appeal Br. 6-7. Appellants also argue the Examiner's
reliance on Cyberfone and SmartGene is misplaced because ( 1) "these cases
are non-precedential" and the Examiner's reliance is in conflict with USPTO
Guidance3 instructing examiners to "avoid relying upon or citing non-
precedential decisions (e.g., SmartGene, Cyberfone) unless the facts of the
application under examination uniquely match the facts at issue in the non-
precedential decision" and (2) the facts of the case on appeal do not even
remotely match those of Cyberfone and SmartGene. Reply Br. 2.
3 Robert W. Bahr, Recent Subject Matter Eligibility Decisions, USPTO
Memorandum (Nov. 2, 2016), available at
https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-
Memo.pdf.
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Appellants further argue the claims contain specific limitations that (1)
provide additional benefit similar to McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) and BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), or (2)
perform generic computer functions similar to Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), or (3) operate in an unconventional
manner to achieve an improvement in computer functionality similar to
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
However, these arguments are not persuasive. First, Appellants'
reliance on SimpleAir and Prism Technologies is misplaced because district
court decisions are not binding legal authority on the Board. Second,
Appellants fail to explain why the claims in SimpleAir and Prism
Technologies are helpful in determining whether Appellants' claims directed
to "integrating financial information and rewards data" - which is a
fundamental economic practice - should be patent-eligible under 35 U.S.C.
§ 101. Third, the Federal Circuit's decisions in SmartGene and Cybeifone,
while non-precedential, remain instructive and provide a basis for the
common law, claim analogy-driven approach to determine whether a patent
claim is directed to an "abstract idea" under the first step of the Alice
inquiry. Fourth, Appellants' reliance on McRO, BASCOM, Enfzsh, and
Amdocs is also misplaced because Appellants have not explained why the
claims in these Federal Circuit's decisions are helpful in determining
whether Appellants' claims directed to "integrating financial information
and rewards data" should be patent-eligible.
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Contrary to Appellants' arguments, Appellants' Specification is
directed to "a computer system and method for rewards integration with
online banking" and, in particular, "provide[] a customer of a financial
institution with a single point of access to computer system of the financial
institution that integrates, not only financial information from multiple
sources, but also integrates rewards data of the customer within online
banking functionality." Spec. ,r,r 20-21; see also Abstract, and Figures 4--5.
Based on Appellants' Specification, we agree with the Examiner that
independent claims 9, 16, and 17 are directed to an abstract idea of
"integrating financial information and rewards data [ for online banking]"
Ans. 2. Such activities are squarely within the realm of abstract ideas.
Integrating financial information and rewards data for online banking is a
fundamental business practice, like: (1) risk hedging in Bilski; (2)
intermediated settlement in Alice, 134 S.Ct. at 2356-57; (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) 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 ( 6) pricing a product for sale in OIP Techs, Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Integrating financial
information and rewards data for online banking is also a building block of a
market economy. Thus, Integrating financial information and rewards data
for online banking, like risk hedging, intermediated settlement, and verifying
credit card transactions, is an "abstract idea" beyond the scope of 35 U.S.C.
§ 101. See Alice, 134 S.Ct. at 2356.
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Moreover, we note Appellants' claims 9, 16, and 17 does not improve
the performance of a computer or solve a problem specific to computers or
computer networks. Appellants' Specification and arguments do not
demonstrate the claims "improve the way a computer stores and retrieves
data in memory," as the claims in Enfzsh did via a "self-referential table for a
computer database." See Enfzsh, 822 F.3d at 1336.
In fact, none of the functions recited in Appellants' claims 9, 16, and
1 7 provide, and nowhere in Appellants' Specification is there any
description or explanation as to how these data processing steps are intended
to provide: (1) a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks," as explained by the Federal Circuit in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific
improvement to the way computers operate," as explained in Enfzsh, 822
F.3d at 1336; or (3) an "unconventional technological solution ... to a
technological problem" that "improve[ s] the performance of the system
itself," as explained in Amdocs (Israel) Limited v. Openet Telecom, Inc., 841
F.3d 1288, 1299--1300 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 9, 11, and 16-22
are directed to an abstract idea of "integrating financial information and
rewards data for online banking" which is a fundamental economic practice
long prevalent in our system of commerce.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants do not argue
whether the claims contain an "inventive concept." Instead, Appellants
argue the claims (1) were "examined and found to be novel and non-
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obvious," (2) contain additional imitations, either individually or as an
ordered combination, that transform the claims into a patent eligible
application, and (3) are directed to "a machine which is one of the statutory
categories of invention." Appeal Br. 5-7.
We do not find Appellants' arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants'
arguments. Ans. 2-5. As such, we adopt the Examiner's findings and
explanations provided therein. Id. At the outset, we note that (1) "the
concept of inventiveness is distinct from that of novelty" and (2) "[ t ]he
inventiveness inquiry of§ 101 should therefore not be confused with the
separate novelty inquiry of§ 102 or the obviousness inquiry of§ 103."
Amdocs, 841 F.3d at 1311.
Moreover, as recognized by the Federal Circuit in Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski's "machine-or-
transformation" (MoT) test can provide a "'useful clue"' in the second step
of the Alice framework. See In re Bilski, 4 545 F.3d 943, 954 (Fed. Cir.
2008) ( en bane). Under Bilski 's MoT test, a claimed process can be
considered patent-eligible under § 101 if: ( 1) "it is tied to a particular
machine or apparatus"; or (2) "it transforms a particular article into a
different state or thing." Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S.
4 In In re Bilski, the Federal Circuit adopted a "machine-or-transformation"
(MoT) test to determine whether a process claim is eligible under 35 U.S.C.
§ 101. However, the Supreme Court held, in Bilski v. Kappas, 130 S. Ct.
3218, 3227 (2010), that the "MoT" test, while a "useful and important clue,"
is no longer the sole test for determining the patent-eligibility of process
claims under§ 101. Since Bilski v. Kappas, the Supreme Court has created a
two-step framework in Alice, 134 S. Ct. at 2354 to address whether a claim
falls outside of§ 101, which we discuss infra.
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at 70, 93 S. Ct. 253). However, limiting such an abstract concept of
"integrating financial information and rewards data for online banking" to
generic components such as a "web interface," "webserver," "database
server" and "database" recited in Appellants' system claims 9, 16, and 17
does not make the abstract concept patent-eligible under 35 U.S.C. § 101.
Ans. 3. As recognized by the Supreme Court, "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." See Alice, 134 S. Ct. at 2358, 2351 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" not patent eligible).
According to the Supreme Court in Alice, 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."' Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 72-73). 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" (see DDR, 773 F.3d
at 1257);
(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"
(see Bascom, 827 F.3d at 1350); or
(3) "entail[] an unconventional solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
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massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 9, 16, and 17 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept (i.e., "integrating financial information and rewards data for online
banking") into a patent-eligible application. Alice, 134 S. Ct. at 2357. We
agree with the Examiner that added computer elements such as a "web
interface," "webserver," "database server" and "data" cannot transform the
abstract idea into a patent eligible invention. 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, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2358)).
Because Appellants' claims 9, 16, and 17 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 9, 11, and 16-22 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 9, 11, and 16-22 under
35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 9, 11,
and 16-22 under 35 U.S.C. § 101.
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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)(l )(iv).
AFFIRMED
13