Ex Parte Buchhop

Patent Trial and Appeal Board

Dec 8, 2017

13283221 (P.T.A.B. Dec. 8, 2017)

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.
13/283,221 10/27/2011 Peter Buchhop 007131.01115 2589
71733 7590 12/12/2017
BANNER & WITCOFF, LTD
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
12/12/2017 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):
PTO-71733 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER BUCHHOP
Appeal 2016-0060801
Application 13/283,221
Technology Center 3600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
AMBER L. HAGY, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of all pending claims: claims 1—3, 5—12, 14—21, and 23—27. See
Br. 8; Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
The Application is directed to a “location-based authentication of an
electronic transaction” for a financial service, “based on a calculated
1 Bank of America Corporation is identified as the real party in interest.
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Application 13/283,221
velocity that would be necessary to travel between the geographic locations
of two successive attempts to access the financial service.” Spec. 14.
Claims 1, 10, and 19 are independent. Claim 1 is reproduced below for
reference (emphasis added):
1. A method, comprising:
receiving from a first electronic device first credentials
regarding a first financial transaction;
determining a first geographic location associated with the
first electronic device and a first time at which the first
credentials were received;
receiving from a second electronic device the first
credentials regarding a second financial transaction;
determining a second geographic location associated with
the second electronic device and a second time at which the first
credentials were again received;
calculating, at an implied velocity calculator, an implied
velocity of travel between the first geographic location and the
second geographic location based on a distance between the first
and second geographic locations and divided by a time difference
between the first time at which the first credentials were received
and the second time at which the first credentials were again
received;
determining a type of device of the first electronic device
and the second electronic device, the first electronic device being
a different type of device from the second electronic device;
determining, based on the determined type of the device of
the first electronic device and the second electronic device, a
velocity threshold;
determining whether the implied velocity exceeds the
determined velocity threshold;
responsive to determining that the implied velocity
exceeds the determined velocity threshold, requesting a first
authentication mechanism for approval of the second financial
transaction; and
responsive to determining that the implied velocity does
not exceed the determined velocity threshold, requesting a
second authentication mechanism for approval of the second
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financial transaction, the second authentication mechanism being
different from the first authentication mechanism.
References and Rejections
Claims 1—3, 5—12, 14—21, and 23—27 are rejected under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter. Final Act. 3—24.
Claims 1, 5, 7, 9, 10, 14, 16, 18, 19, 23, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Jackson (US 8,793,776 Bl;
July 29, 2014), Powers (US 2010/0051684 Al; Mar. 4, 2010), and Greene
(US 7,673,793 B2; Mar. 9, 2010). Final Act 25-35.
Claims 2, 3, 6, 8, 11, 12, 15, 17, 20, 21, 24, 26, and 27 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over various combinations
of Jackson, Powers, Greene, and other prior art references. Final Act.
35-39.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Brief. Any other arguments Appellant could
have made but chose not to make are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
A. 101 Rejection
Appellant argues the Examiner erred in concluding independent claim
1 is patent-ineligible, because “claim 1 is not directed to an abstract idea,
and even assuming, without conceding, that claim 1 is considered to include
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an abstract idea, claim 1 amounts to ‘significantly more’ than any such
abstract idea and is thus directed to patent-eligible subject matter.” Br. 10.
We are not persuaded the Examiner erred; we adopt the Examiner’s
findings and conclusions as our own (see Final Act. 4—24; Ans. 2—15). An
invention is patent-eligible if it claims a “new and useful process, machine,
manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme
Court, however, has long interpreted § 101 to include an implicit exception:
laws of nature, natural phenomena, and abstract ideas are not patentable.
See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014). The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. at
2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” e.g., to an
abstract idea. Alice Corp., 134 S. Ct. at 2355. If the claims are directed to a
patent-ineligible concept, the inquiry proceeds to the second step, where the
elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
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technology, or instead are directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Regarding the first step of the Alice test, Appellant contends claim 1 is
“directed to identifying fraud or potential fraud,” and is “not directed toward
any of the judicial exceptions, e.g., an abstract idea,” that are “similar to
those found by the courts to be abstract.” Br. 11—12. Particularly, Appellant
“respectfully submits that ‘using user credentials to authorize a financial
transaction based on the time and geographic location of the transaction’
cannot properly be considered a ‘fundamental economic practice,’ let alone a
patent-ineligible abstract idea.” Br. 14.
Claim 1 recites a method of requesting authorization mechanisms2 for
transaction approvals, responsive to calculations based on the locations and
times of various financial transactions. We are not persuaded the Examiner
erred in determining the claim is directed to an abstract idea pursuant to
Alice, and that the claimed “authorizing of [] purchasing transactions using a
user’s credential is in fundamental or foundational principle in the realm of
conducting an electronic commerce between two parties.” Ans. 10; see also
Final Act. 10. The Examiner’s position is supported by caselaw, as our
reviewing court has held claims similarly directed to certain methods of
transaction authorization and fraud detection to be directed to abstract ideas.
See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (“These are the same questions (though perhaps phrased with different
2 We note the Specification does not recite the claim term “authorization
mechanism.” In the event of further prosecution, the Examiner may wish to
determine whether claim 1 conforms with the requirements of both first and
second paragraphs of 35 U.S.C. § 112.
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words) that humans in analogous situations detecting fraud have asked for
decades, if not centuries.”); see also CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (the abstract idea of verifying
credit card transactions); Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1054 (Fed. Cir. 2017) (“the abstract idea of‘processing an
application for financing a purchase’”).
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. See Ans. 4.
Regarding the second step of the Alice test, Appellant further argues
“the claims recite additional elements that amount to significantly more than
any purported abstract idea because the claims recite several additional
limitations besides the asserted abstract idea.” Br. 15. Appellant contends
“claim 1 recites a specific computer system performing a specific sequence
of steps that involves interactions between multiple different computing
systems as well as combinations of functions that affect these multiple
different computer systems,” such that, “[tjaken together, the features of
claim 1 involve performing significant computer implemented functions.”
Br. 16.
Appellant does not persuade us claim 1 recites elements that transform
the nature of the claim into a patent-eligible application. As correctly noted
by the Examiner, claim 1 recites “generic computer architecture that is being
used to apply the abstract idea of using user credentials to authorize a
financial transaction based on the time and geographic location of the
transaction, [which] does not add amount to significantly more than the
abstract idea.” Ans. 7; see also Spec. 114 (“[A]ny functions attributed to a
computing device as described herein may be implemented using such
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computer-readable instructions read and executed by that computing device,
and/or by any hardware (e.g., a processor) from which the computing device
is composed.”). Rather than addressing a technical problem, the method of
claim 1 is used to solve the business problem (and fundamental economic
practice) of authenticating a financial transaction. See Spec. 111-5 ; see also
Ans. 13. That such processes may be performed more efficiently by a
computer does not ‘“transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297); see also Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”).
Accordingly, we are not persuaded the Examiner erred in determining
claim 1 is patent ineligible pursuant to the two-part Alice test. See Final Act.
4. Appellant presents similar arguments for independent claims 10 and 19,
which we find similarly unpersuasive. See Br. 17—28; Ans. 14—15. We
sustain the Examiner’s 35U.S.C. § 101 rejection of the independent claims
as well as the claims that depend therefrom not separately argued. See Br.
17, 23,28.
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B. 103 Rejections
The Examiner finds Jackson teaches the following limitations recited
by independent claim 1:
determining a type of device of the first electronic device and the
second electronic device the first electronic device being a
different type of device from the second electronic device (At
least: column 12: lines 1-20; column 10: lines 29-32; Fig 1: 115a,
lib; column 4: lines 41-51); determining, based on the
determined type of the device of the first electronic device and
the second electronic device, a velocity threshold, (column 12:
lines 1-20,21-36).
Final Act. 26.
Appellant argues the Examiner’s findings are in error, because
“[w]hile Jackson describes determining whether a computed distance
exceeds a threshold, there is no teaching or suggestion in Jackson of the
threshold being based on the type of device of the first electronic device and
the second electronic device, as recited in claim 1,” as Jackson provides “no
teaching or suggestion of determining a type of device.” Br. 30.
We are persuaded by Appellant’s arguments. The Examiner finds
“the different type of electronic devices are being recited [in Jackson].”
Ans. 16. Claim 1, however, recites more than just having different types of
devices—the types of the devices must also be determined. Jackson teaches
using various types of devices in a system, but does not disclose or suggest
any determination is made as to the device types. See, e.g., Jackson 5:21—30
(describing a server configured to work with one or more user devices).
Thus, we agree with Appellant that Jackson does not describe
“determining a type of device” or “the determined type of device,” as
claimed. See Br. 30. The Examiner does not rely on the other cited
references for determining a type of device. See Ans. 15—18. As such, we
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are persuaded the Examiner erred in finding the cited references teach or
suggest the limitations of claim 1, and the limitations similarly recited by
independent claims 10 and 19. We do not sustain the Examiner’s
obviousness rejection of these claims, or the claims dependent thereon.
DECISION
The Examiner’s decision rejecting claims 1—3, 5—12, 14—21, and
23—27 is affirmed.3
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
3 The Examiner’s decision is affirmed because we have affirmed at least one
ground of rejection with respect to each claim on appeal. See 37 C.F.R.
§ 41.50(a)(1).
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