Ex Parte Balasubramanian et al

Patent Trial and Appeal Board

Aug 28, 2018

14026232 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/026,232 09/13/2013
144885 7590 08/30/2018
The Webb Law Firm/ Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Chandra Balasubramanian
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8223-1710149(CC-0006US10) 3430
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRA BALASUBRAMANIAN, FRANCIS M. SHERWIN,
MICHAEL A. KERESMAN III, and ADAM RATICA
Appeal2017-005380
Application 14/026,232 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, ANTON W. PETTING, and MATTHEW
S. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify CardinalCommerce Corporation as the real party in
interest. Br. 1.
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Application 14/026,232
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants' claims cover "facilitating the authentication of an
individual to conduct a secure transaction with a credit or debit card or other
payment instrument or payment means over a communications network."
Spec. i-f2.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A system that supports authentication of an account holder
in connection with a transaction conducted between a first party and a
second party, wherein the first party
accepts payment via a plurality of different payment options
selectable by the second party, said plurality of different payment
options being associated with a plurality of different authentication
methods prescribed therefor, said system comprising:
a receiving part that receives payment information over the
Internet at a server operatively connected to the Internet, said payment
information identifying a particular payment option used by the
second party for the transaction, and said server being
equipped to format and route messages over the Internet in different
manners to accommodate the plurality of different authentication
methods;
a determining part that determines from the payment
information received at the server which of the different
authentication methods is prescribed for the type of
payment option identified in the payment information;
a selecting part that selects, in accordance with the
determination made by the determining part, a particular
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authentication method from the plurality of different authentication
methods supported by the server; and,
an obtaining part that obtains an authentication determination
for the transaction in accordance with the selected authentication
method, said obtaining part being arranged to format messages and
route the formatted messages over the Internet in accordance with one
or more mandates of the selected authentication method.
THE REJECTION
The following rejection is before us for review.
Claims 1-20 are rejected under 35 U.S.C. § 101.
ANALYSIS
We will sustain the rejection of claims 1-20 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, we then ask, "[ w ]hat
else is there in the claims before us?" [] To answer that
question,[] consider the elements 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."
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Application 14/026,232
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we determine that this case's claims themselves and
the Specification provide enough information to inform one as to what they
are directed to.
The representative claim 1 results in:
Obtain[ing] an authentication determination for the
transaction in accordance with the selected authentication
method, .. .formatting messages and rout[ing] the formatted
messages over the Internet in accordance with one or more
mandates of the selected authentication method.
The Examiner found that the claims are directed to "the abstract idea
of authentication of an account holder." Final Act. 2.
The Specification states:
While widely used for more traditional face-to-face
transactions, use of standard cards in connection with e-
commerce presents certain difficulties, including difficulties
concerning authentication or positive identification of the
cardholder. For example, maintaining consumer confidence in
security has become difficult with increased reports of fraud.
The resulting apprehension is also fueled by consumer
uncertainty of the reputation or integrity of a merchant with
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Application 14/026,232
whom the consumer is dealing. Questionable security of the
consumer's card information or other personal information
typically submitted along with a traditional e-commerce
transaction (e.g., address, card number, phone number, etc.)
serves to increase apprehension even more. Additionally,
cardholders, merchants and financial institutions are all
concerned about safeguarding against fraudulent or otherwise
unauthorized transactions. Similarly, other payments methods
are concerned with security.
Specification ,r 4.
The Specification states:
a plurality of individual authentication initiative plug-in
components 232 that listen to the message distribution layer
220 for a specific message type. The respective plug-in
component 232 is activated by the message distribution layer
220 that sends messages to the specified plug-in component 232
based upon the type of payment instrument or method being
used for the transaction being processed. For example, as
shown, the MAPS 200 optionally includes plug-in components
232 for Visa®, MasterCard® and other payment instruments or
methods.
Spec. ,r 37.
The Specification describes:
Suitably, via the thin-client approach ( or alternately the
direct or easy connection approaches) the MAPS 200 obtains
payment information for the transaction from the merchant's
server 100. Suitably, the payment information includes a
number or name identifying the particular payment instrument
or account being used (i.e., the card number or account number
or account name), an expiration date, transaction details (i.e.,
the transaction amount, etc.), and other pertinent payment data.
In the case of the thin-client approach, the payment information
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is obtained from the merchant's website or page via the request
layer 110 in the form of name/value pairs.
Spec.,r 42.
Thus, all this evidence shows that claim 1 is directed to a merchant
authentication payment process with different authentication methods
prescribed for each of different payment options. 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. A
merchant authentication payment process with different authentication
methods prescribed for each of different payment options is a fundamental
economic practice because it safeguards against fraud. See Specification ,r 4.
The patent-ineligible end of the spectrum includes fundamental economic
practices. See Alice, 134 S. Ct. at 2355-2357; see also Bilski, 561 U.S. at
611.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. Id. It is enough to recognize that
there is no meaningful distinction in the level of abstraction between the
concept of an intermediated settlement in Alice and the concept of a
merchant authentication payment process with different authentication
methods prescribed for each of different payment options, at issue here.
Both are squarely within the realm of "abstract ideas" as the Court has used
that term. Id. That the claims do not preempt all forms of the abstraction or
may be limited to credit card purchases or A TM transactions, does not make
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them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-61 (Fed. Cir. 2015).
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
linkage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (Finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation.").
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea " 'to a particular technological environment.' "
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 ( citations omitted).
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"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data, and thus,
modifying the data as a result, amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. See Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1354 (Fed. Cir. 2016); see also In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)
("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' []those functions can be achieved by any general
purpose computer without special programming."). In short, each step does
no more than require a generic computer to perform generic computer
functions. As to the data operated upon, "even if a process of collecting and
analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1022 (Fed.
Cir. 2018) ( citation omitted).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
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are considered separately. The sequence of data reception-analysis-
access/ display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (Sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction.); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (Sequence of data retrieval, analysis, modification, generation,
display, and transmission.); Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (Sequence of
processing, routing, controlling, and monitoring.). The ordering of the steps
is, therefore, ordinary and conventional.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of information access under different scenarios. See,
e.g., Spec. ,r,r 19--22. The Specification does not describe any particular
improvement in the manner a computer functions, at least with respect to the
claims in the instant application. Instead, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access using some unspecified, generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
Id.
The system claims
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
We have reviewed all the arguments (Appeal Br. 8-19) Appellants
have 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
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue, "[ t ]he Examiner provides no support in making the
allegation and thus fails to establish a prima facie case that the claims are for
an abstract idea." Appeal Br. 9.
We disagree with Appellants. In rejecting the pending claims under
§ 101, the Examiner analyzed the claims using the Mayol Alice two-step
framework, consistent with the guidance set forth in the USPTO' s 2014
INTERIM GUIDANCE ON p ATENT SUBJECT MATTER ELIGIBILITY. See Final
Act. 2-5. Specifically, the Examiner notified Appellants that the claims are
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broadly directed to "the abstract idea of authentication of an account
holder." Id. at 2. The Examiner further found,
The additional element(s) or combination of elements in
the claim(s) other than the abstract idea per se amount(s)
to no more than: server. Viewed as a whole, these
additional claim element( s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract
idea itself.
Id. at 2-3.
In this regard, there is no requirement that examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., para. IV, "JULY 2015 UPDATE:
SUBJECT MATTER ELIGIBILITY" to 2014 INTERIM GUIDANCE ON PA TENT
SUBJECT MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16,
2014):
The courts consider the determination of whether a claim
is eligible (which involves identifying whether an
exception such as an abstract idea is being claimed) to be
a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception,
and in most cases resolve the ultimate legal conclusion
on eligibility without making any factual findings.
(Emphasis added.) We agree that evidence may be helpful in certain
situations where, for instance, facts are in dispute. 2 But, it is not always
2 See, e.g., MPEP 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
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necessary. Based on the above analysis set forth by the Examiner, we are
unpersuaded it is necessary in this case.
All that is required of the Office to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132; see In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). Here, as we found above, the Examiner has
made these findings as required by the statute. See Final Act. 2----5.
Appellants argue,
the claims are directed to methods of
authentication and/ or identity verification carried
out in accordance with a plurality of different
authentication protocols, e.g., by determining and
selecting an appropriate authentication protocol
(from a plurality of different authentication
protocols) to be used in connection with a given
payment type or option and obtaining an
authentication determination in accordance with
the selected protocol.
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." (Citations omitted.))
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(Appeal Br. 8).
In light of the breadth of the claim, the Appellants' argument is not
persuasive as to error in the rejection because none of the claims require
"protocols" let alone "authentication protocols". Assuming arguendo that
the claims did so recite this limitation, such recitation still would not raise
the claims to a level of patent eligibility because a protocol is an abstraction
in of and itself because a protocol requires conventions3 which are abstract.
"[A] claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (citing Mayo, 566 U.S. at 90).
Appellants cite to various limitations in claim 1 which they believe
"result in improved technical functioning", because allegedly, they "result in
the ability to support multiple different authentication protocols employed in
connection with multiple different payment options." (Appeal Br. 9-10).
We disagree with Appellants. First and again, the claims do not recite
the term "protocol" so Appellants' arguments are not based on limitations
appearing in the claims and are not commensurate with the broader scope of
claim 1 which merely recites different authentication methods. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). Second, the claims merely recite the
"internet", "server" and "parts" thereof only in a generic sense. Appellants'
arguments that the system "guard[s] against unwanted fraud and/or
3 Protocol: a set of conventions governing the treatment and especially the
formatting of data in an electronic communications system.
(https://www.merriam-webster.com/dictionmy/protocol) (last visited
8/13/2018).
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chargebacks" is directed to an effect, and not an advancement in technology,
which does not advance the claims toward patent eligibility. We look to
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery.
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellants argue, "the Examiner has NOT found that the claims are
rejectable under §102 and §103 of the patent statute, which govern novelty
and unobviousness. In other words, it appears that the Office Action
acknowledges that the claims as a whole recite novel and unobvious ( and
therefore otherwise patentable) subject matter." (Appeal Br. 12).
We are not persuaded by Appellants' argument because the standard
for patentability under 35 U.S.C. § 103(a) is obviousness, the standard for
patentability under 35 U.S.C. § 102 is novelty, and the standard for patent
eligibility under 35 U.S.C. § 101 is abstract idea. Each of these standards is
separately required to be met before patentability can be conferred on
invention, which is not the case here based on the latter standard. The
question in step two of the Alice framework is not whether an additional
feature is novel, but whether the implementation of the abstract idea
involves "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347-1348 (quoting Alice, 134 S. Ct. at 2359). As found supra, we
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find nothing, which takes the claimed implementation outside of this
standard.
Appellants argue, "these tasks are NOT generic computer functions.
Rather, they are specific operations which in combination with the other
claimed features results in novel and non-obvious subject matter and an
improvement to technologies in the marketplace." (Appeal Br. 17-18).
We disagree with Appellants. As found supra, we find nothing in the
claims that is directed to an improvement in computer capabilities. The
capability of the computer as claimed before us here remains that of a
generic computer. That the claimed process allegedly results in "obtain[ing]
account holder authentication [(App. Br. 15)]," is not the function of a
technical improvement in the computer, e.g., higher speed processor due to
circuit construction. Rather, it is merely the normal work by computers
invoked as the tool for the process.
Appellants argue, "[t]he claims call for a physical change in the
processing steps depending upon outcome determinative logic." (Appeal Br.
16).
We disagree with Appellants that physical change occurs in the
context of changing authentication of processing steps. In Diamond v.
Diehr, 450 U.S. 175 (1981), the Court established eligibility under section
101 for claims containing mathematical formulas when the claim
"implements or applies that formula in a structure or process which, when
considered as a whole, is performing a function which the patent laws were
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designed to protect (e.g., transforming or reducing an article to a different
state or thing)." Diamond, 450 U.S. at 176. In contrast, we fail to see how
changing authentication of processing steps transforms an article into a
different state or thing.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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