Ex parte Metral, Appeal 2020-003713[1]

• Decision Date: 09 November 2020
• Docket Number: 844,Appeal 2020-003713[1],Application 14/256
• Parties: Ex parte MAX EDWARD METRAL Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte MAX EDWARD METRAL Appeal 2020-003713^[1] Technology Center 3600

Application 14/256, 844

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

November 9, 2020

FILING DATE: 04/18/2014

Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and MATTHEW S. MEYERS Administrative Patent Judges.

DECISION ON APPEAL

MEYERS, Administrative Patent Judge.

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM, designating the affirmance as a NEW GROUND OF REJECTION, pursuant to 37 C.F.R. § 41.50(b).

CLAIMED INVENTION

Appellant's claims relate generally "to online and/or mobile payments and more particularly to a reputation system for distributed crypto currencies that may be used in online and/or mobile payments." Spec. ¶ 1.

Claims 1, 7, and 14 are the independent claims on appeal. Claim 7 reproduced below with bracketed notations added, is illustrative of the claimed subject matter:

7. A method for providing a distributed crypto currency reputation, comprising:

[a] monitoring, by one or more system provider devices over a network, a distributed crypto currency blockchain;

[b]detecting, by the one or more system provider devices over the network, a confirmation of a current crypto currency transaction in the distributed crypto currency blockchain;

[c]creating, by the one or more system provider devices based on the detecting of the confirmation of the current crypto currency transaction, a first amount of reputation markers in a distributed reputation marker blockchain that is a separate blockchain from the distributed crypto currency blockchain;

[d]allocating, by the one or more system provider devices on the distributed reputation marker blockchain to a first payer reputation marker public address controlled by a payer that is involved in the current crypto currency transaction with a payee, the first amount of reputation markers;

[e] monitoring, by the one or more system provider devices, the distributed reputation market blockchain and detecting a transfer of at least one of the first amount of reputation markers from the first payer reputation marker public address to a first payee reputation marker public address controlled by the payee;

[f]receiving, by the one or more system provider devices over the network, a first request for reputation information for the payee; and

[g]providing, by the one or more system provider devices over the network based on receiving the first request, payee reputation information over the network for the payee that includes first reputation marker transfer information associated with the transfer of the at least one of the first amount of reputation markers on the distributed reputation marker blockchain from the first payer reputation marker public address to the first payee reputation marker public address.

REJECTIONS^[2]

1. Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.

2. Claims 1-20 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement.

3. Claims 1-20 are rejected under 35 U.S.C. § 112(b), as indefinite.

ANALYSIS

Patent-Ineligible Subject Matter

Appellant argues claims 1-20 as a group. Appeal Br. 9-13; Reply Br 5-6. We select independent claim 7 as representative. The remaining claims stand or fall with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv).

A. Section 101

An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the U.S. 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. E.g., Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014).

In determining whether a claim falls within an excluded category, we are guided by the Court's two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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" (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); "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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

In Diehr, the claim at issue recited a mathematical formula, but the Court held that "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 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 (internal quotation marks 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] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id.

B. USPTO Section 101 Guidance

In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance").^[3] "All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance." Id. at 51; see also October 2019 Update at 1.

Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites:

(1)any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) ("Step 2A, Prong One"); and

(2)additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) ("Step 2A, Prong Two").^[4]

2019 Revised Guidance, 84 Fed. Reg. at 52-55.

Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim:

(3)adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or

(4)simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.

2019 Revised Guidance, 84 Fed. Reg. at 52-56.

Step One of the Mayo/Alice Framework

With regard to the first step of the Mayo/Alice framework and Step 2A, Prong One of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner determines that exemplary independent claim 7 broadly "recite[s]: 'monitoring ... [a] blockchain [...] detecting a ... transaction [...] creating reputation markers [and] allocating ... reputation marker[s] '" as well as "'monitoring ... a transfer [...] receiving ... information [...] providing ... reputation information.'" Final Act. 7. Under the 2019 Revised Guidelines, the Examiner appears to characterize claim 7 as falling under the category of "[c]ertain methods of organizing human activity" and more specifically "fundamental economic principles or practices . . . commercial or legal interactions (including agreements in the form of contracts; legal obligations; . . . sales activities or behaviors; business relations)." 2019 Revised Guidance, 84 Fed. Reg. at 52. The Examiner also determines that the claims do not include additional elements, considered individually and as an ordered combination, sufficient to amount to...