COMENITY LLCDownload PDFPatent Trials and Appeals BoardMay 27, 20212021000454 (P.T.A.B. May. 27, 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. 14/626,773 02/19/2015 Randy WEST ADS-022 7877 45588 7590 05/27/2021 ALLIANCE DATA C/O WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVILLE, CA 95076 EXAMINER SHAIKH, MOHAMMAD Z ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 05/27/2021 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 RANDY WEST, MARY J. FEYH, and JAMES WALZ ____________ Appeal 2021-000454 Application 14/626,773 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and TARA L. HUTCHINGS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 3–5, 7–12, 14, 15, 17–19, 21, 22, 24– 26, and 28, which constitute all the claims pending in this application. Claims 2, 6, 13, 16, and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. Appeal 2021-000454 Application 14/626,773 2 THE INVENTION Appellant claims a method for applying and buying a co-branded virtual card. (Title). Claim 1 is representative of the subject matter on appeal. 1. A method for applying and buying with a co-branded virtual card, the method comprising: receiving a customer application for a co-branded credit card at a time of purchase; performing a customer qualification for the co-branded credit card at the time of purchase; providing access to a virtual co-branded card for a qualified customer, said virtual co-branded card having a valid credit card number, a valid credit card expiration date and a valid credit card security code, said valid credit card number taken from a subset of credit card numbers available to a credit-based payment processor, the subset of credit card numbers reserved for the virtual co-branded card, said valid credit card number is not associated with a primary account number tied to said qualified customer; providing an initially predefined available credit line to the virtual co-branded card, the initially predefined available credit line less than a credit limit associated with the primary account number; authorizing a use of the virtual co-branded card to buy goods at a time of qualification; completing a transaction for a purchase of goods using the virtual co-branded card; Appeal 2021-000454 Application 14/626,773 3 issuing a physical credit card associated with the primary account number of said qualified customer; preventing, in response to the issuing of the physical credit card, said qualified customer from access to said virtual co- branded card; returning said valid credit card number of said virtual co- branded card to the subset of credit card numbers reserved for the virtual co-branded card; and reassigning said virtual co-branded card to another customer, said reassigning of said virtual co-branded card comprising: the same valid credit card number, a different valid credit card expiration date, and a different valid credit card security code. THE REJECTION Claims 1, 3–5, 7–12, 14–15, 17–19, 21, 22, 24–26, and 28 are rejected as non-statutory subject matter under 35 U.S.C. § 101. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1, 3–5, 7–12, 14, 15, 17–19, 21, 22, 24–26, and 28 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements Appeal 2021-000454 Application 14/626,773 4 of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., 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.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019) (“Guidance”). Appeal 2021-000454 Application 14/626,773 5 The Examiner determines that the claims recite actions related to marketing or sales activities or behaviors specifically applying for a virtual card for conducting purchase transactions which is a method of organizing human activity. (Final Act. 10). The Examiner finds that claim 1 recites additional elements of a processor, credit card generator and credit application receiver. These elements, according to the Examiner, are recited at a high level of generality such these recitations amount to no more than mere instructions to implement an abstract idea by adding the words “apply it” with the judicial exception. (Final Act. 11). The Examiner finds that the additional elements generally link the use of the judicial exception to a particular technological environment or field of use. The Examiner finds that the judicial exception is not integrated into a practical application nor do the additional elements amount to significantly more than the judicial exception recited. The Specification discloses that company specific, brand specific or store credit cards provide significant value for both consumer and provider. (Spec. ¶ 2). The advantages are that the provider is able to tailor rewards offers, provide loyalty discounts and maintain consumer brand loyalty. The company branded card may be used for purchases at the store on the label as well as at other stores that accept that credit card network’s credit cards (Spec. ¶ 18). A virtual card company branded card refers to a temporary card number that can be issued to a customer while the customer waits to receive an actual credit card with an associated credit card number from the credit provider. The virtual company branded card has a valid temporary account number, a valid temporary expiration date and a valid Appeal 2021-000454 Application 14/626,773 6 security code so that transactions can be completed on a merchant credit card machine. Consistent with this disclosure, claim 1, for example, recites “receiving a customer application for a co-branded credit card at the time of purchase,” “performing a customer qualification for the co-branded credit card,” “authorizing a use of the virtual co-branded card to buy goods at the time of qualification,” and “completing a transaction for a purchase.” In view of these disclosures and recitations, we agree with the Examiner that claim 1 recites a method related to sales and marketing activity and thus recites a certain method or organizing human activity. The claims are directed to controlling the behavior of persons concerning a credit transaction. It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are directed to an abstract idea of controlling the behavior of persons concerning a credit transaction which is a method of organizing human behavior, which is not eligible subject matter. See Alice, 134 S. Ct. at 2355–56. Turning to the second prong of the “directed to test”, the only recitation that is not part of the abstract idea and thus is an additional element is the step of “issuing a physical card.” An additional element may integrate an exception into a practical application if the additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field. Guidance, 84 Fed. Reg. at 55. However, “an additional element [that] adds insignificant extra- solution activity to the judicial exception” is an indication that “a judicial exception has not been integrated into a practical application.” Id. Examples of insignificant extra-solution activity include measuring metabolites of a Appeal 2021-000454 Application 14/626,773 7 drug administered patient or adjusting an alarm light based on the output of a mathematical formula. Id. at 55, n.31. We find that the judicial exception recited in claim 1 is not integrated into a practical application and thus claim 1 is directed to an abstract idea. Turning to the second step of the Alice analysis, because we find that the claims are directed to an abstract idea, claim 1 must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). We find that the additional element of issuing a physical card does not amount to significantly more than the abstract ides because as we find above, this recitation is insignificant extra solution activity which is well- understood, routine, conventional activity previously engaged in by scientists who work in the field. The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.”’ Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82–83, 77–78, 72–73). We agree with the Examiner that claim 1 recites an abstract idea and does not include additional elements that are significantly more than the abstract idea. We have reviewed all the arguments (Appeal Br. 11–16) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been Appeal 2021-000454 Application 14/626,773 8 made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the method of claim 1 provides a virtual card number that is not associated with the primary account number and therefore is a practical application that defines a specific solution that includes reusing valid credit card numbers as part of the specific solution. (Appeal Br. 14). The problem with this argument is that it is not directed to the consideration that are indicative of a practical application. According to the Guidance some factors that should be considered in determining whether the judicial exception is integrated into a practical application are: (1) whether the additional elements reflect an improvement in the functioning of a computer or other technology or technical field, (2) whether the additional elements that apply or use the judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition, (3) whether the additional elements implement a judicial exception with or use a judicial exception in conjunction with a particular machine, (4) whether the additional elements affect a transformation or reduction of a particular article to a different state or thing and (5) whether the additional elements use the judicial exception in some other meaningful way beyond generally linking the judicial exception to a particular technological environment. Guidance, 84 Fed. Reg. 55. As Appellant has not addressed the factors to be considered in determining whether the additional elements recited in claim 1 integrates the judicial exception into a practical application, this argument is not persuasive. In addition, as we find above, the recitation of “issuing a physical credit card,” which is the only recitation in claim 1 in addition to the abstract idea, is a Appeal 2021-000454 Application 14/626,773 9 recitation of insignificant post solution activity and therefore does not integrate the judicial exception into a practical application. In view of the foregoing, we will sustain this rejection as it is directed to claim 1. We will also sustain the rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of the remaining claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 3–5, 7– 12, 14, 15, 17–19, 21, 22, 24–26, and 28 under 35 U.S.C. § 101. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 7– 12, 14, 15, 17–19, 21, 22, 24–26, 28 101 Eligibility 1, 3–5, 7– 12, 14, 15, 17–19, 21, 22, 24–26, 28 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation