Ex parte Breuer

• Decision Date: 25 January 2021
• Docket Number: 042,Application 14/494,Appeal 2019-004217
• Parties: Ex parte MARK BREUER, MICHELLE HAROLD, and JOHNF. TANGREDI Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte MARK BREUER, MICHELLE HAROLD, and JOHNF. TANGREDI Technology Center 3600

Appeal 2019-004217

Application 14/494, 042

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 25, 2021

FILING DATE: 09/23/2014

Before JENNIFER S. BISK, LARRY J. HUME, and .JULIET MITCHELL DIRBA, Administrative Patent Judges.

DECISION ON APPEAL

HUME, ADMINISTRATIVE PATENT JUDGE.

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision rejecting claims 1, 3-5, 7, 9-11, 13-17, and 19-23, which are all claims pending in the application. Appellant has canceled claims 2, 6, 8, 12, and 18. See Appeal Br. 15 et seq. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

STATEMENT OF THE CASE^[2]

The claims are directed to a method, apparatus and system for automated notification of funding request and/or approval. See Spec. (Title). In particular, Appellant's disclosed embodiments and claimed invention "relate to automated funding, and, more particularly, to provide automated notifications of funding requests, approval, and or changes to approval or funding status." Spec. ¶ 2.

Exemplary Claim

Claim 1, reproduced below, is representative of the subject matter on Appeal (emphasis added to contested prior-art limitation):

1. A method for performing a transaction, comprising

a requestee receiving a request for funding from a requestor

determining a recipient of said request

providing an automated notification to said recipient of said request

the requestee automatically identifying the request for funding as being capable of real time funding if the request is modified; and

the requestee providing, based upon said request being capable of real time funding if modified, an automated reply to said requestor requesting modification of said request.

Appeal Br. 15 (Claims Appendix).

Related Application

This application is related to copending Application Serial No. 14/493, 701, Appeal No. 2019-005396, in which we overall affirmed the Examiner's rejections in a Decision mailed contemporaneously with this Decision.

REFERENCE

The prior art relied upon by the Examiner as evidence is:

Name	Reference	Date
Grant, IV (“Grant”)	US 2009/0099965 A1	Apr. 16, 2009

REJECTIONS

R1. Claims 1, 3-5, 7, 9-11, 13-17 and 19-23 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or abstract idea) without significantly more. Final Act. 11.

R2. Claims 1, 3-5, 7, 9-11, 13-17 and 19-23 stand rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Grant. Final Act. 31, 33, 36, 39.^[3]

CLAIM GROUPING

Based on Appellant's arguments (Appeal Br. 3-14) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 1, 3-5, 7, 9-11, 13-17 and 19-23 on the basis of representative claim 1; and we also decide the appeal of anticipation Rejection R2 of claims 1, 3-5, 7, 9-11, 13-17 and 19-23 on the basis of representative claim l.^[4] See n.3, supra.

ISSUES AND ANALYSIS

In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

We disagree with Appellant's arguments with respect to claims 1, 3-5, 7, 9-11, 13-17 and 19-23 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows.

1. §101 Rejection R1 of Claims 1, 3-5, 7, 9-11, 13-17, 19-23

Issue 1

Appellant argues (Appeal Br. 8-14; Reply Br. 5-9) the Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue:

Under the USPTO's Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, is the Appellant's argument persuasive that the Examiner erred in rejecting claim 1 as patent-ineligible under § 101?

Principles of Law

A. 35 U.S.C. §101

An invention is patent-eligible if it is a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101.^[5]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. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185(1981)).

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. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). 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" (Diehr, 450 U.S. at 191); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.").

Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: (a) a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Technology, Inc. v. International Trade Commission, 601 F.3d 1319, 1331-33 (Fed. Cir. 2010); (b) a claim to detecting suspicious activity by using network monitors and analyzing network packets, SRI Int'l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019); (c) a claim to a specific data encryption method for computer communication involving a several-step manipulation of data, Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL 651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method "could not conceivably be performed in the human mind or with pencil and paper"). Whereas a claim limitation to a process that "can be performed in the human mind, or by a human using a pen and paper" qualifies as a mental process, a claim limitation that "could not, as a practical matter, be performed entirely in a human's mind" (even if aided with pen and paper) would not qualify as a mental process.^[6]

In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber 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. (citation omitted) (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]...