Finding "Something More:" The Search for an Inventive Concept

By: Ashley Sloat, Ph.D., President of Aurora Consulting LLC

In Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, the U.S. District Court for the Eastern District of Texas recently held that the claims are not directed to patent-eligible subject matter because the claims recited nothing more than conventional computer activities or routine data-gathering steps. However, an invention’s ability to run on a general-purpose computer should not and does not necessarily doom the claims.

​Exemplary claim 1 of U.S. Patent No. 7,912,786, one of the four patents at issue, recites:​

1.  An automated business process computer machine system for transferring money funds comprising:
      a computer system which receives, processes and transmits account information data in order to effect simultaneous money transfers from sending debit card accounts to receiving debit card accounts; and
       the computer system being adapted to being accessed by a human sender's communication medium device, wherein the computer system receives the account information data and transfer authorization data from the communication medium device, and processes and transmits the data in automated modes with data transmission language through transmission and electronic mediums, so that the computer system processes and effects a money transfer from a sending debit card account to a receiving debit card account without the necessity of a pre-established relationship between the sending debit card account and the receiving debit card account, and
        in which the computer system simultaneously repeats the computer system processes and, by the computer system, effects additional transfers between different sending debit card accounts and different receiving debit card accounts causing simultaneous money transfers from the different sending debit card accounts to the different receiving debit card accounts.

In particular, note the following limitation: “so that the computer system processes and effects a money transfer from a sending debit card account to a receiving debit card account without the necessity of a pre-established relationship between the sending debit card account and the receiving debit card account.” (emphasis added). Integrated Technological Systems highlighted this limitation stating that it was novel over the art of record cited by the USPTO and was the reason the Examiner allowed the application. As such, this limitation seems (at least to me) to fulfill the “something more” prong of Step Two of the Alice/Mayo Framework, despite the claim being directed to an abstract idea.

According to the MPEP 2106 “Patent Subject Matter Eligibility,” “Thus, if a claim is directed to a judicial exception, it must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself - this has been termed a search for an inventive concept. Alice Corp., 134 S. Ct. at 2357, 110 USPQ2d at 1981.” (emphasis added).

The inventive concept is this notion of being able to transfer money between accounts without a previously established link between them. If this is the inventive concept, why did the U.S. District Court for the Eastern District of Texas fail to find the claims directed to patent eligible subject matter?
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The answer is that there is substantial ambiguity in the Alice/Mayo Framework that has resulted in each court interpreting the framework differently. Some courts hang their hats on the search for a new piece of hardware in the claims (like in this case), while others hang their hats on the search for an inventive concept. Patentees and practitioners alike would immensely benefit from increased clarity in the framework. But, alas, we wait for such clarity.