Comenity LLCDownload PDFPatent Trials and Appeals BoardAug 13, 20212021000652 (P.T.A.B. Aug. 13, 2021) Copy Citation 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. 15/788,538 10/19/2017 Timothy D. PONTIOUS ADS-140 6795 45588 7590 08/13/2021 ALLIANCE DATA C/O WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVILLE, CA 95076 EXAMINER HUDSON, MARLA LAVETTE ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 08/13/2021 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): patents@wagnerblecher.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY D. PONTIOUS and CELESTE RECHNER1 Appeal 2021-000652 Application 15/788,538 Technology Center 3600 Before DEBORAH KATZ, JOHN G. NEW, and ROBERT A. POLLOCK, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party-in-interest as Comenity LLC. App. Br. 1. Appeal 2021-000652 Application 15/788,538 2 STATEMENT OF THE CASE Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1–3 and 5–20 as unpatentable under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 5, 8, 9, 15, and 16 also stand rejected under 35 U.S.C. § 103 as being unpatentable as obvious over the combination of West et al. (US 2015/0262291 A1, September 17, 2015) (“West”), Baher (US 2011/0137748 A1, June 9, 2011) (“Baher”), Mikuriya et al. (US 2017/0221046 A1, August 3, 2017) (“Mikuriya”), and Wang et al. (US 2016/0171498 A1, June 16, 2016) (“Wang”). Claims 7 and 14 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of West, Baher, Mikuriya, Wang, and Bierbaum et al. (US 7,967,196 B1, June 28, 2011) (“Bierbaum”). Claims 2, 3, 11, 12, 18, and 19 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of West, Baher, Mikuriya, Wang, and Nack et al. (US 9,147,152 B2, September 29, 2015) (“Nack”). Claims 6, 13, and 20 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of West, Baher, Mikuriya, Wang, and Sanchez et al. (US 2014/0070001 A1, March 13, 2014) (“Sanchez”). Claims 10 and 17 stand rejected as unpatentable under 35 U.S.C. § 103 as being obvious over the combination of West, Baher, Mikuriya, Wang, Grigg et al. (US 2012/0197794 A1, August 2, 2012) (“Grigg”), and Gaddam et al. (US 2016/0217461 A1, July 28, 2016) (“Gaddam”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2021-000652 Application 15/788,538 3 NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to a limited-use temporary credit account correlated with a newly-approved non-integrated credit account. Abstr. The temporary credit account is subject to a time constraint and a credit limit reduction as compared to the non-integrated credit account. Id. REPRESENTATIVE CLAIM Claim 1 is representative of the claimed subject matter and recites: 1. A method for providing a limited use temporary credit account, the method comprising: applying for a credit account, via a mobile device of a customer, the applying being a non-integrated application process that occurs at a location other than a point of sale; displaying, on a display of the mobile device, a temporary credit account, the temporary credit account correlated with a newly approved non-integrated credit account, the temporary credit account comprising: a temporary account number; a temporary expiration date; and a temporary security code; incorporating a time constraint into said temporary credit account displayed on said mobile device, said time constraint, limiting an amount of time the temporary credit account is displayed on said mobile device, and limiting an amount of time the temporary credit account is available for making a purchase; and integrating a credit limit reduction into said temporary credit account displayed on said mobile device, said credit limit reduction comprising: reducing an available credit on the temporary credit account to an amount less than a credit available on the newly approved non-integrated credit account; and Appeal 2021-000652 Application 15/788,538 4 reducing the available credit on the temporary credit account based on a type of product sold by a brand, and an average ticket size for the brand. App. Br. 26. ISSUES AND ANALYSIS We adopt the Examiner’s findings, reasoning, and conclusion that the claims are: (1) directed to nonstatutory subject matter and (2) prima facie obvious over the combined cited prior art. We address below the arguments raised by Appellant. A. Rejection of the claims under 35 U.S.C. § 101 Issue Appellant argues that the Examiner erred in finding the claims are directed to an abstract idea, and therefore, patent-ineligible subject matter. App. Br. 8–16. Analysis The Examiner finds that the steps recited in the claims describe the concept of providing a temporary credit account to mitigate risks in sales transactions. See Non-Final Act. 3–4. The Examiner finds that these steps correspond to concepts identified as abstract ideas by the courts, specifically fundamental economic practices that fall within the abstract idea category of certain methods for organizing human activities. See id.; see also Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 573 U.S. 208, 218 (2014) (citing Bilski v. Kappos, 561 U.S. 593, 611 (2014)). The Examiner further finds that the additional elements of the claims, for example, a display (claims 1, 8, and 15) on a mobile device (claims 1 and 15), a memory (claim 8), and one or more processors (claims 8 and 15), generally link the use of the abstract idea to a particular technological Appeal 2021-000652 Application 15/788,538 5 environment or field of use. See Non-Final Act. 4–6. Because the additional elements generally link the abstract idea to a field of use, these elements fail to impose any meaningful limits on practicing the abstract idea, and the Examiner finds that the abstract idea is not integrated into a practical application. See id. at 6. The Examiner concludes that limiting the use of the abstract idea to a particular environment cannot provide an inventive concept, and thus the additional elements do not amount to significantly more than the judicial exception (i.e., abstract idea). See id. at 6–8. Appellant argues that the claims provide “a specific solution for the application for a credit account via a non-integrated application process that occurs [] on the [customer’s mobile] device at a location other than a point of sale … and then providing a temporary credit account to the display on the mobile device.” App. Br. 9. Appellant argues that the claimed subject matter addresses problems associated with “conventional non-integrated approaches” when the consumer must wait for a physical credit card to arrive by mail before utilizing a credit account. Id. The claimed subject matter solves this problem by providing a “stop-gap measure” that is “a customer solution to the normally time-challenged aspects of non-integrated credit account issuing process.” Id. at 9–10. Appellant further argues that the claims effectively integrate the alleged abstract idea into a practical application for two reasons. See App. Br. 10–16. First, Appellant argues that the additional elements of the claims transform a particular article to a different state or thing. See id. at 12–13. Specifically, Appellant argues that the claims transform the “newly approved non-integrated credit account” into a “displayed temporary account” having significantly different features and characteristics, namely a time constraint and reduced credit limit. See id. Appeal 2021-000652 Application 15/788,538 6 Second, Appellant argues that “the claimed features utilize a number of elements to provide a specific, integrated, and practical application of the exception.” App. Br. 13. Appellant argues that the claimed features that constrain the time that the temporary account is displayed and available for making purchases, and reduce the available credit based on the type of product and average ticket size, provide a practical application of the exception for a specific solution. See id. at 14. Appellant argues that “each feature of the Claim is not operating in the abstract, but is instead operating with a specific purpose to reach the stated goal of the practical application.” Id. at 14–15. Appellant further argues that the claims are eligible because they require “at least certain steps that cannot practically be performed in the human mind and because the claims integrate any exception into a practical application (e.g., a time constrained, use constrained, lower credit limit, temporary credit account).” App. Br. 15. Appellant argues that “the claims are necessarily tethered to a technological environment,” and that the claim elements “are sufficient to amount to significantly more than the judicial exception.” Id. We have considered, but are not persuaded by, Appellant’s arguments. In performing an analysis of patentability under 35 U.S.C. § 101, we follow the framework set forth by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). We are also mindful of, and guided by, the United States Patent and Trademark Office’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50 (January 7, 2019) (the “Guidance”). Appellant’s independent claim 1 recites: “A method for providing a limited use temporary credit account … comprising: …” Following the first Appeal 2021-000652 Application 15/788,538 7 step of the Mayo analysis we find that the claim is directed to a process and therefore falls into one of the broad statutory categories of patent-eligible subject matter under 35 U.S.C. § 101.2 In the next step of the Mayo analysis, we determine whether the claim at issue is directed to a nonstatutory, patent-ineligible concept, i.e., a law of nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S. at 70– 71. If the claim is so directed, we next consider the elements of the claim both individually and “as an ordered combination” to determine whether additional elements “transform the nature of the claim” into a patent-eligible application. Id. at 78–79; see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the Supreme Court considered this second step as determining whether the claim recites 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.” Mayo, 566 U.S. at 72–73. More specifically, in this second step of the Mayo analysis, we look to whether the claim recites one of the judicially-created exceptions to 35 U.S.C. § 101, i.e., an abstract idea, a law of nature, or a natural phenomenon. See 2019 Guidance 54 (Step 2A, Prong 1). If we determine that the claim recites a judicial exception, we then determine whether the limitations of the claim reciting the judicial exception are integrated into a practical application. Id. (Step 2A, Prong 2). Finally, if we determine that the claim 2 Appellant does not argue the claims separately. See App. Br. 16 (“Appellant respectfully submits that the elements of Claims 8 and 15 are also sufficient to overcome the rejection under 35 U.S.C. § 101 for at least the reasons given above with respect to Claim 1.”) Accordingly, we consider claim 1 as representative of the claims at issue. Appeal 2021-000652 Application 15/788,538 8 is directed to a judicially-created exception to Section 101, we evaluate the claim under the next step of the Mayo analysis, considering the elements of each claim both individually and “as an ordered combination” to determine whether additional elements “transform the nature of the claim” into a patent-eligible application. Mayo, 566 U.S. at 78–79; 2019 Guidance 56 (Step 2B). “In cases involving software innovations, th[e] inquiry often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2018)). Claim 1 recites the steps of: (1) applying for a non-integrated credit account, (2) displaying a temporary credit account correlated to the non- integrated credit account, (3) incorporating a time constraint into the temporary credit account, (4) limiting an amount of time the temporary credit account is displayed and available for making a purchase, (5) integrating a credit limit reduction into the temporary credit account, and (6) reducing an available credit on the temporary credit account to less than that of the non-integrated credit account based on a type of product sold by a brand and an average ticket size for the brand. App Br. 26. Each of these steps deals with establishing related credit accounts having different time and credit constraints using generic computing devices (e.g., a mobile device). Appellant’s Specification discloses that a primary purpose of the claimed method is to “address a business challenge of how a customer can pay with a credit account when a customer has applied for that same credit Appeal 2021-000652 Application 15/788,538 9 account in a non-integrated manner, while also reducing credit provider risk.” Spec. ¶ 19. The Specification further discloses that the method “provides a customer solution” “which is necessarily rooted in computer technology to overcome a problem specifically arising in the realm of non- integrated credit account application utilization delay.” Id. ¶ 18. Appellant contends that this “customer solution” provides a “stop-gap measure,” which is not a fundamental economic practice. See App. Br. 9–10. We disagree. Generally, the claims recite steps for applying for credit accounts which are subject to time and credit limits. Our reviewing court has considered similar claims to be abstract, as “processing an application for financing a purchase is ‘a fundamental economic practice long prevalent in our system of commerce.’” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (quoting Alice, 134 S.Ct. at 2356)). In Credit Acceptance, our reviewing court found that the claims recited various steps for generating financing packages by applying for a credit account to be used for an immediate purchase for a specific item within a dealer’s inventory; the credit amount limited by an applicant’s credit score. See id. at 1407, 1054–1055. Similar to Credit Acceptance, the claims recite steps for opening credit accounts (financing packages), used for a time-limited purposes (immediate purchase), and for specific items available from a specific brand (dealer inventory). See id. Accordingly, we agree with the Examiner that the claims recite a fundamental economic practice, which is an abstract idea. Having determined that the claims recite an abstract idea, we next determine whether the limitations of the claims reciting the judicial exception are integrated into a practical application. The Guidance provides additional context for this analysis, stating that: “A claim that integrates a Appeal 2021-000652 Application 15/788,538 10 judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance at 53. Appellant contends that claims integrate the abstract idea into a practical application because the claims recite additional elements that: (1) effect a transformation of a particular article to a different state or thing and (2) apply the judicial exception is some other meaningful way. App. Br. 12–15. We disagree. Appellant’s first argument is that the claims transform the “newly approved non-integrated credit account” into a different “temporary credit account” that is limited by time and available credit. See App. Br. 12–13. However, the method of creating a limited, temporary credit account as a subset of a non-integrated credit account is itself the claimed abstract idea, and not an additional element beyond the judicial exception. See Guidance 55, nt. 24 (“USPTO guidance uses the term ‘additional elements’ to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.”) Transforming one abstract idea into another abstract idea is readily distinguishable from the type of transformation considered patent eligible by the courts. Cf. Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter. That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed.”). Accordingly, we do not agree that Appellant’s claims recite an additional element that effects a patent-eligible transformation. Appeal 2021-000652 Application 15/788,538 11 Appellant’s second argument is that the additional element applies the judicial exception in some other meaningful way. See App. Br. 13–15. However, Appellant again refers to the various abstract ideas associated with the credit accounts, e.g., “limit the risk factors” and “reduce the available credit,” that are not additional elements beyond the judicial exception. See id. at 14. Appellant further argues that the claimed “mobile device” allows the customer to use a non-integrated application process that occurs at a location other than a point of sale. Id. The mobile device is an additional element beyond the judicial exception. However, “[a]ll that limitation does is to confine the abstract idea to a particular technological environment—in this case, cellular telephones.” See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016). Our reviewing court has “repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.” Id. Appellant concludes by arguing that “the claims are necessarily tethered to a technological environment.” App. Br. 15. However, Appellant does not support or explain this argument. See id. Rather, Appellant’s Specification more accurately describes the invention as a “customer” or “business” solution. See Spec. ¶¶ 18–19. Accordingly, we find the claims similar to those in Affinity Labs, in which our reviewing court found the claims “directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea. That is not enough to constitute patentable subject matter.” 838 F.3d at 1262. For the same reasons, we find that, considering the elements of each claim both individually and “as an ordered combination,” the claims recite Appeal 2021-000652 Application 15/788,538 12 no additional elements that “transform the nature of the claim” into a patent eligible application. Mayo, 566 U.S. at 78–79; Guidance at 56 (Step 2B). Specifically, we agree with the Examiner that limiting the use of the abstract idea to a particular environment or field of use cannot provide an inventive concept. Non-Final Act. 7. We therefore conclude the claims are directed to nonstatutory subject matter, and we affirm the Examiner’s rejection of the claims. B. Rejection of the claims under 35 U.S.C. § 103 Issue Appellant argues that the Examiner erred because Wang does not disclose or suggest reducing the available credit based on an average ticket size for the brand. App. Br. 18. Analysis In each of the rejections over the prior art, the Examiner finds that West teaches a method for applying for, and opening, a non-integrated credit account via a mobile device using a non-integrated application process that occurs at a location other than a point of sale. See Non-Final Act. 10 (citing West ¶ 24, Figs. 2–3). The Examiner finds that West teaches displaying a temporary credit account on a mobile device, wherein the temporary credit account is correlated with the non-integrated credit account. See id. (citing West ¶¶ 18, 21, 24–26, Fig. 2). The Examiner finds that West teaches the temporary credit account includes an account number, expiration date, and security code, and is further subject to a credit limit reduction compared to the correlated non-integrated credit account. See id. at 11 (citing West ¶¶ 28–29, 35, 45, 75, Figs. 2–3). Appeal 2021-000652 Application 15/788,538 13 The Examiner finds that Baher teaches incorporating purchase and display time–constraints into a temporary credit account. See Non-Final Act. 11–12 (citing Baher ¶¶ 51–52, Figs. 1, 4). The Examiner finds that Mikuriya teaches reducing the available credit on a virtual payment account based on a type of product sold by a brand. See id. at 13 (citing Mikuriya ¶¶ 279–286, Fig. 26). Finally, the Examiner finds that Wang teaches reducing available credit based on an average ticket size, because Wang “teaches that available credit is restricted/impaired (i.e., available credit is zero) based on an average ticket size of a store (or brand)).” Id. (citing Wang ¶¶ 5–7, 20). The Examiner finds that it would have been obvious to a person of ordinary skill in the art to combine the references to add limits to West’s temporary credit account to prevent fraud and unauthorized access. See id. at 12–14. Appellant does not present separate arguments against any of the rejections based on prior art. See App. Br. 22. Appellant disagrees with the Examiner’s interpretation of Wang. App. Br. 18. Appellant argues that “Wang is focused on approval or disapproval of the transaction, not on a reduction of any credit limit.” Id. at 19. Specifically, Appellant argues that Wang discloses that average ticket size “is used to ‘generate a recommendation for approval or decline of the current financial transaction.’” Id. at 20 (quoting Wang ¶¶ 5–7). Appellant argues that “[o]ne of skill in the art (and likely any credit card user) would never equate a denial of use to a reduction in available credit limit.” Id. at 23. Appellant concludes that “the approval or denial as taught by Wang cannot be analogized to ‘reducing available credit based on a brand’s average ticket size’ as suggested by the Examiner.” Id. at 24. Appeal 2021-000652 Application 15/788,538 14 We are not persuaded by Appellant’s argument. Appellant argues against the Wang individually, rather than the combination applied by the Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). For example, West teaches that “the customer virtual co-branded card access module [] may limit purchases on the customer virtual co-branded card [] to a limit well below the customer’s approved credit amount for fraud protection purposes.” West ¶ 35. Likewise, Mikuriya teaches usage restrictions based on a specific brand. See Mikuriya ¶¶ 279–286. Wang teaches using average ticket size as another fraud-protection mechanism for a credit account. See Wang ¶¶ 5–7. Accordingly, the combination of West, Baher, Mikuriya, and Wang suggests using the average ticket size of a brand to limit purchases on a temporary credit account to a limit well below that of the non-integrated credit account as a method of fraud protection. See In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (“In determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (internal citations omitted). We further agree with the Examiner that the broadest reasonable interpretation of “reducing an available credit” based on an average ticket size for the brand encompasses Wang’s teaching of denying a purchase based on average ticket size that exceeds a set limit. Despite Appellant’s arguments to the contrary (see App. Br. 23–24), if the purchase price of a desired item exceeds the reduced available credit, the desired transaction will be denied, as taught by Wang. Appellant does not identify any express Appeal 2021-000652 Application 15/788,538 15 definition in the Specification that contradicts the Examiner’s broadest reasonable interpretation. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO’s definition unreasonable when the PTO can point to other sources that support its interpretation.”). We consequently conclude that Appellant’s arguments are insufficient to overcome the Examiner’s prima facie conclusion that the claims are obvious over the combined cited prior art, and we affirm the Examiner’s rejection of the claims. CONCLUSION The rejection of claims 1–3 and 5–20 as unpatentable under 35 U.S.C. § 101 is affirmed. The rejections of claims 1–3 and 5–20 as unpatentable under 35 U.S.C. § 103 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)(1). AFFIRMED Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–20 101 Eligibility 1–3, 5–20 1, 5, 8, 9, 15, 16 103 West, Baher, Mikuriya, Wang 1, 5, 8, 9, 15, 16 7, 14 103 West, Baher, Mikuriya, Wang, Bierbaum 7, 14 Appeal 2021-000652 Application 15/788,538 16 2, 3, 11, 12, 18, 19 103 West, Baher, Mikuriya, Wang, Nack 2, 3, 11, 12, 18, 19 6, 13, 20 103 West, Baher, Mikuriya, Wang, Sanchez 6, 13, 20 10, 17 103 West, Baher, Mikuriya, Wang, Grigg, Gaddam 10, 17 Overall Outcome 1–3, 5–20 Copy with citationCopy as parenthetical citation