Colin Tanner et al.

Patent Trials and Appeals Board

Dec 4, 2019

13372907 - (R) (P.T.A.B. Dec. 4, 2019)

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.
13/372,907 02/14/2012 Colin Tanner P00716-US-UTIL 2619
98665 7590 12/04/2019
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
12/04/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte COLIN TANNER, MICHAEL J. COWEN, and
JAMES D. SINTON
____________________

Appeal 2018-003708
Application 13/372,907
Technology Center 3600
____________________

BEFORE JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our
Decision, mailed September 12, 2019 (“Decision”), in which we affirmed
the Examiner’s decision rejecting claims 1–24 under 35 U.S.C. § 101 and
reversed the Examiner’s decision rejecting claims 1–24 under pre-AIA
35 U.S.C. § 102(e). Appellant timely filed a Request for Rehearing (“Req.
Reh’g.”) on November 12, 2019.
Appellant’s Request for Rehearing is GRANTED.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies
MasterCard International Incorporated as the real party in interest. Appeal
Br. 3.
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Application 13/372,907

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DISCUSSION
In the Request for Rehearing, Appellant does not challenge our
Decision affirming the Examiner’s rejection of claims 1–12 and 17–24 under
35 U.S.C. § 101. Req. Reh’g 2–6. Instead, Appellant asserts the Board
overlooked or misapprehended Appellant’s arguments regarding the patent
eligibility of dependent claim 13 (and claims 14–16, which depend directly
or indirectly therefrom). Req. Reh’g 3–4.
Claim 13 depends from claim 2 (which depends from independent
claim 1) and is reproduced below:
13. The method of Claim 2, wherein:
said dispatching comprises dispatching an authorization
request to an issuer to access a prepaid account;
in said obtaining step, said reduced-functionality payment
device comprises a low-cost chip card having a memory and
having an account number encoded therein, said account number
being incompatible with said payment infrastructure;
further comprising:
converting said account number to a PAN compatible with
said payment infrastructure;
generating a cryptogram at said terminal; and
generating said authorization request using said PAN and
said cryptogram generated at said terminal.
In our Decision, we did not find Appellant’s arguments (see Appeal
Br. 27–28) persuasive that just because claim 13 recites that the reduced-
functionality payment device comprises a card (i.e., a tangible physical
object), it is patent eligible. Decision 10. Moreover, we explained that the
conversion of data from a reduced-functionality payment device to a format
consistent with full-functionality payment devices (and the subsequent
dispatch of the converted data into a payment infrastructure) did not confer
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patent eligibility, as these additional limitations merely refined the
underlying abstract idea, confined the abstract idea to a particular
technological environment, and did not otherwise add an inventive concept.
Decision 10–11 (citing Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016)).
In the Appeal Brief, Appellant recited the limitations of claim 13 and
asserted
that these additional limitations recited in claim 13 confer patent
eligibility for reasons similar to those discussed with reference to
claims 2 and 3 of Example 35 (“Verifying A Bank Customer’s
Identity To Permit An ATM Transaction”) in the Subject Matter
Eligibility Examples: Business Methods, issued by the USPTO
on Dec. 15, 2016, at pages 5-11.
Appeal Br. 28.
In the Request for Rehearing, Appellant further develops this
argument and explains that “[i]n conventional arrangements, a full-
functionality payment device computes a cryptogram . . ., which is included
in the authorization request sent to the issuer.” Req. Reh’g 4. However,
“because a reduced-functionality payment device cannot generate the
cryptographic information normally used to protect a payment transaction, a
cryptogram is generated in the terminal rather than the payment device.”
Req. Reh’g 5. Appellant argues that moving the cryptogram generation
functionality to the terminal adds an inventive concept beyond what is
routine and conventional in the industry. Req. Reh’g 5.
Appellant commends to our attention the Federal Circuit’s recent
decisions in Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1344
(Fed. Cir. 2018) and SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019). There, the Federal Circuit concluded the pending claims
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4
set forth an improvement to computer technology. See Ancora, 908 F.3d at
1344 (concluding “the claimed advance is a concrete assignment of specified
functions among a computer’s components to improve computer security”);
SRI Int’l, 930 F.3d at 1304 (concluding “the representative claim improves
the technical functioning of the computer and computer networks by reciting
a specific technique for improving computer network security”).
Appellant does not claim to have invented using a cryptogram for
increased security. Rather, the use of cryptograms (i.e., cryptographic
checks) is known in the industry and is part of the EMV (Europay,
Mastercard, Visa) standard. See Spec. 19:14–18, 22:21–23. As such,
Appellant’s reliance on Ancora and SRI Int’l is not availing.
However, we find the court’s holding in BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348–51 (Fed. Cir.
2016), is instructive. In BASCOM, the court determined that although
filtering Internet content is a “longstanding, well-known method of
organizing human behavior, similar to concepts previously found to be
abstract,” the inventors had recognized “a filter implementation versatile
enough that it could be adapted to many different users’ preferences while
also installed remotely in a single location.” BASCOM, 827 F.3d at
1348–51. Thus, when considered as an ordered combination, the court
concluded the claims provided an inventive concept by the non-conventional
and non-generic arrangement of known, conventional pieces.” BASCOM,
827 F.3d at 1350.
The court’s reasoning in BASCOM is applicable here. As described in
the Specification, a full-functionality payment device is capable of
computing a cryptogram and including it as part of an authorization request.
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See Spec. 19:18–23, 22:7–8. However, according to the Specification, a
reduced-functionality payment device is limited to a fixed set of functions
and is not able to generate a cryptogram. See, e.g., Spec. 19:7–20:17. Thus,
in order to allow the reduced-functionality payment device to operate in a
similar manner (i.e., provide a similar level of security) as a full-
functionality payment device, claim 13 recites the generation of the
cryptogram is generated not by the payment device (as is done
conventionally by a full-functionality payment device), but at the payment
terminal. On the record before us, the Examiner has not provided sufficient
evidence or technical reasoning that it was conventional for the terminal to
generate a cryptogram. See Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed.
Cir. 2018). Accordingly, when considered as an ordered combination, we
conclude claim 13 provides an inventive concept by the unconventional
arrangement of generic components to yield a technological improvement.
For the reasons discussed supra, we are persuaded by Appellant’s
arguments and conclude claim 13 is patent eligible under 35 U.S.C. § 101.
For similar reasons, we conclude that claims 14–16, which depend directly
or indirectly therefrom, are also patent eligible under 35 U.S.C. § 101.

CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
13–16 101 Patent eligibility 13–16

Appeal 2018-003708
Application 13/372,907

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Final outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24 101 Patent eligibility 1–12, 17–
24
13–16
1–24 Pre-AIA
102(e)
Dixon 1–24
Overall
Outcome
1–12, 17–
24
13–16

GRANTED