Ex Parte Michelsen et al

Patent Trial and Appeal Board

Dec 14, 2017

10987201 (P.T.A.B. Dec. 14, 2017)

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.
10/987,201 11/12/2004 Michael J. Michelsen 90945-682922 (007800US) 6583
20350 7590 12/18/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. MICHELSEN,
MARK THOMPSON, and
MARGARET LAPKIN
Appeal 2016-005735
Application 10/987,2011
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael J. Michelsen, et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 1,38, and 39. We have
jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify The Western Union Company of Englewood,
Colorado as the real party in interest. Br. 2.
Appeal 2016-005735
Application 10/987,201
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of transferring funds from a sender to a
recipient, comprising:
receiving, at a first transfer location, a transfer request from the
sender, wherein the transfer request includes a notification request to
notify the sender when the recipient receives the funds;
sending the transfer request from the first transfer location to a
host computer system;
establishing, with the host computer system, a recipient profile
including a preference configurable by the recipient to indicate a first
means of receiving messages from the host computer system that the
recipient prefers;
sending a first message from the host computer system to the
recipient, via the first means, that the funds are available for pick up,
wherein the first message includes:
instructions for finding a transfer location at which the recipient
can receive the funds, wherein the transfer location is the closest
location to the recipient where receipt of funds can occur;
instructions for receiving funds in an alternative means to
picking up the funds from the transfer location; and
a personalized message composed by the sender;
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sending, from the host computer system to the recipient, via a
second means, based at least on a failure of the first means of
receiving messages being unsuccessful, a second message that funds
are available for pickup, wherein the second message includes:
instructions for finding the transfer location at which the
recipient can receive the funds, wherein the transfer location is
the closest location to the recipient where receipt of funds can
occur;
instructions for receiving funds in an alternative means to
picking up the funds from the transfer location; and
the personalized message composed by the sender;
sending, from the host computer system, upon a passing of a
specified period of time after sending of the first message with no pick
up of funds by the recipient, a first notification to the sender that the
funds have not been picked up by the recipient;
receiving, at a second transfer location, a request from the
recipient to receive the funds;
receiving, at the host computer system from the second transfer
location, a third message that the recipient received the funds;
sending, from the host computer system to the sender, a second
notification that the recipient received the funds, wherein the second
notification includes:
a first identification of a location where the recipient
picked up funds;
a second identification of what currency or other form the
recipient received the funds in;
a third indication of a value of the received funds if in a
form different than that remitted by the sender; and
a fourth indication of whether the recipient experienced
any customer service issues picking up the funds;
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Application 10/987,201
repeating sending of the second notification to the sender until
receipt by the sender of the second notification is verified, wherein
receipt by the sender of the second notification being verified
comprises verification of receipt of the second notification by a voice
message system associated with the sender; and
sending a third message from the host computer system to a
third party, who is not the sender or recipient, wherein the third
message confirms that the recipient received the funds, and therefore
eviction proceedings should be suspended.
THE REJECTION
The following rejection is before us for review:
1. Claims 1, 38, and 39 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1,38, and 39 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
ANALYSIS
The rejection of claims 1, 38, and 39 under 35 U.S.C. §101 as being directed
to non-statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 3—8.
We select claim 1 as the representative claim for this group, and the
remaining claims 38 and 39 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
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Application 10/987,201
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined “[t]he claims are directed to
the abstract idea of a fundamental economic practice.” Final Action 4. See
also Ans. 3:
Claim(s) 1 and 38-39 is/are directed to the abstract idea of
receiving information, creating a profile, and transmitting
information for the purpose of transferring funds. The method
and/or system is similar to concepts that have been identified as
abstract by the courts, such as using categories to organize,
store, and transmit information in Cyberfone and/or comparing
new and stored information and using rules to identify options
in SmartGene.
The Appellants do not appear to challenge either the Examiner’s
articulation of the concept to which the claims are said to be directed to or
that said concept is an abstract idea. Accordingly, we move on to the second
step.
Step two is “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.’” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72—
73).
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In that regard, the Examiner determined that
The additional elements or combination of elements in the
claims other than the abstract idea per se amount to no more
than mere instructions to implement the idea on a computer.
Viewed as a whole, these additional claim elements do not
provide meaningful limitations to transform the abstract idea
into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea
itself.
Final Action 4. See also Ans. 3—4:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
both individually and as a combination do not amount to
significantly more than the abstract idea. The method and/or
system is recited at a high level of generality and only performs
generic functions of manipulating information and transmitting
that information to a remote subscriber computer. Generic
computers performing generic computer functions, without an
inventive concept, do not amount to significantly more than the
abstract idea. The limitations describe a field of use that attempt
to limit the abstract idea to a particular technological
environment. Looking at the elements as a combination does
not add anything more than the elements analyzed individually.
Therefore, the claim does not amount to significantly more than
the abstract idea itself.
According to the Appellants, claim 1 includes "significantly more"
than to be on the abstract idea because the claimed subject matter
(1) Improves to another technology or technical field; (2) Applies the
abstract idea with, or by use of, a particular machine (e.g., not a generic
computer); and, (3) Adds a specific limitations other than what is well
understood, routing and conventional in the field, or adding unconventional
steps that confine the claim to a particular useful application. Br. 6—8.
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(1) The Appellants argue that “[a]s can be seen from the claims
themselves, significantly more than just a mere "transferring of funds" is
occurring in embodiments of the independent claims. This also means that
additional technologies beyond mere "transferring funds" are being
improved.” Br. 7. The Appellants argue that “personal finance control
technologies,” “customer service technologies,” and “financial
management technologies” are all being improved. Br. 7.
The argument is unpersuasive as to error in the Examiner’s
determination under step 2. The Appellants do not clearly explain the
technological improvement the claimed subject matter is supposed to be
describing. While “claim 1 includes ten total steps, and an additional
separate ten clauses describing the objects acted on or acting by the method
described therein” (Br. 6), the Appellants do not point to and we do not see
anything technological about them. They set forth a methodology to follow
“for notifying one or more parties having an interest in a financial
transaction that certain events have taken place” (Spec. para. 2). Half of the
recited steps are unconnected to any device, the remainder employ, broadly,
a “host computer system, and there is a single mention of a “voice message
system.” It is a scheme described in no technical detail. The “personal
finance control technologies,” “customer service technologies,” and
“financial management technologies” said to be improved are difficult to
discern from what claim 1 presently broadly describes. Cf. Credit
Acceptance Corp. v. Westlake Services, LLC, 859 F.3d 1044, 1057 (Fed. Cir.
2017):
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Significantly, the claims do not provide details as to any
non-conventional software for enhancing the financing process.
Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law
demands more” than claim language that “provides only a
result-oriented solution, with insufficient detail for how a
computer accomplishes it”); Elec. Power Grp., 830 F.3d at
1354 [Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016)]; (explaining that claims are directed to
an abstract idea where they do not recite “any particular
assertedly inventive technology for performing [conventional]
functions”).
(2) The Appellants argue that “non-generic, machines/computers are
necessary to implement the systems and methods of the claim.” Br. 7.
The argument is unpersuasive as to error in the Examiner’s
determination under step 2.
First, the relevance of the point about a “server [not being] capable of
implementing the systems and methods ... to communicate digital data with
a multitude of differing financial and communication networks and their
associated protocols” (Br. 7) is unclear. Setting aside that claim 1 makes no
mention of a server, let alone communication networks and their associated
protocols, the Appellants do not explain, and we do not see, what exactly
claim 1 recites that a generic computer cannot do and would not be expected
to do conventionally. As we said, half of the recited steps are unconnected to
any device, the remainder employ, broadly, a “host computer system,” and
there is a single mention of a “voice message system.” That does not reflect
claiming something “off-the-shelf generic computers are not capable of
performing” (Br. 7).
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Second, regarding the point that “[o]ff-the-shelf generic computers are
not capable of performing such functions, much less concurrently during an
period of intense heavy transaction load as may be necessary in such
industry” (Br. 7), claim 1 has a broader scope than that. Is not limited to
performing functions concurrently during an period of intense heavy
transaction load as may be necessary in an industry.
Third, the Specification belies the argument that the claimed process
cannot be performed using generic devices. See Spec., e.g., page 6, lines 21—
22 (“The host computer system 102 may include, for example, server
computers, personal computers, workstations, web servers, and/or other
suitable computing devices.”)
(3) The Appellants argue that claim 1 “includes specific limitations
other than what is well-understood, routine and conventional in the field, or
add unconventional steps that confine the claim to a particular useful
application. The Office Action admits this implicitly because these claims do
not stand rejected under §102 or §103.” Br. 8.
The argument is unpersuasive as to error in the Examiner’s
determination under step 2.
Notwithstanding that “the § 101 patent-eligibility inquiry and, say, the
§102 novelty inquiry might sometimes overlap,” [ ] a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (quotingMayo, 566 U.S. at 90). The question in
step two of the Alice framework is not whether an additional feature is novel
but whether the implementation of the abstract idea involves “more than the
performance of ‘well-understood, routine, [and] conventional activities
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previously known to the industry.’” Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347-48 (quoting
Alice, 134 S.Ct. at 2359). In that regard, the Appellants have neither
explained what the more than the performance of “well-understood, routine,
[and] conventional activities” are, or how they transform the abstract idea
into patent-eligible subject matter. The fact that the claims do not stand
rejected under §102 or §103 is alone inadequate to show claim 1 includes an
element or combination of elements that is sufficient to ensure that in
practice the claimed subject matter amounts to significantly more than to be
upon the abstract idea itself.
For the foregoing reasons, the Appellants’ arguments are unpersuasive
as to error in the Examiner’s step 2 determination.
No persuasive argument having been made showing error in the
determinations made in accordance with the Alice framework, we affirm the
legal conclusion that claim 1, and claims 38 and 39 that stand or fall with it,
cover subject matter that is judicially-excepted from patent eligibility.
DECISION
The decision of the Examiner to reject claims 1,38, and 39 is
affirmed.
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
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