Ex Parte Carlson et al

Patent Trial and Appeal Board

Mar 14, 2018

13274231 (P.T.A.B. Mar. 14, 2018)

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.
13/274,231 10/14/2011 Mark Carlson 79900-803255 8556
66945 7590 03/16/2018
KTT PATRTrK TOWNSFND fr STOrKTON T T P/VTS A
EXAMINER
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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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK CARLSON and SURENDRA KESHAN
Appeal 2016-008178
Application 13/274,2311
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—34. We have
jurisdiction to review the case under 35 U.S.C. §§ 134(a) and 6(b).
The invention relates generally to “describing the location of a
consumer and transaction data from a transaction using a portable consumer
1 The Appellants identify the “real party in interest in this patent application
is Visa International Service Association.” Appeal Br. 3.
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Application 13/274,231
device, such as a credit card,” where the “mobile device is used to determine
the approximate location of the account holder at the time of the
transaction.” Spec. Tflf 2—3.
Claim 1 is illustrative:
1. A method of generating electronic heat maps using
location data and transaction data, the method comprising:
receiving, by a server computer, an authorization request
after a payment card of an account holder is used for payment in
a transaction, wherein the payment card is associated with a
mobile device;
obtaining, by the server computer, transaction data for the
transaction based at least in part on the authorization request;
processing, at the server computer, the authorization
request by transmitting the authorization request to an issuer of
the payment card;
receiving, by the server computer, an approval or a denial
of the authorization request, wherein the issuer of the payment
card approves or denies the transaction;
responsive to receiving the approval or denial of the
authorization, transmitting, by the server computer, a location
request message to a location aggregator, wherein the location
request includes an identifier for the mobile device;
receiving, at the server computer, a location request
response from the location aggregator, wherein the location
request response includes location data describing a geographic
location of the mobile device;
generating, by the server computer, a dataset that
correlates the location data of the mobile device with the
transaction data of the transaction; and
generating, by the server computer based at least in part on
the dataset, an electronic heat map that graphically depicts a
correlation between the geographic location of the mobile device
and the transaction data of the transaction.
Claims 1—34 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter in the form of an abstract idea with “significantly
more.”
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Claims 1,4, 11, 13—19, 21, 24, 26, and 28—34 are rejected under 35
U.S.C. § 103(a) as unpatentable over Fourez (US 2011/0047075 Al, pub.
Feb. 24, 2011), Cho et al. (US 2010/0198626 Al, pub. Aug. 5, 2010), and
Dehner et al. (US 6,429,868 Bl, iss. Aug. 6, 2002).
Claims 2, 3, 6, 7, 9, 10, 12, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fourez, Cho, Dehner, and Ramalingam et al.
(US 2011/0238514 Al, pub. Sept. 29, 2011).
Claims 5, 8, and 25, are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fourez, Cho, Dehner, and Fiedler et al. (US 6,883,708 Bl,
iss. Apr. 26, 2005).
Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fourez, Cho, Dehner, and Hammad (US 2011/0022483
Al, pub. Jan. 27, 2011).
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fourez, Cho, Dehner, Ged Carroll, “I like: eBay’s Black Friday heat map”,
Nov. 28, 2009 (last retrieved on Oct. 23, 2012 from
http://renaissancechambara.jp/2009/ll/28/i-like-ebays-black-friday-heat-
map/), and Richard Brewer-Hay, “What does Black Friday look like on
eBay?”, Nov. 28, 2009 (last retrieved on Oct. 23, 2012 from
http://ebayinkblog.com/2009/ll/28/what-does-black-friday-look-like-on-
ebay/).
We AFFIRM.
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ANALYSIS
Patentable subject matter
Appellants argue all independent claims together as a group. Appeal
Br. 12. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by the Appellants’ arguments that the Examiner
oversimplified and mischaracterizes the claims, and “ignores most of the
recitations of at least the independent claims.” Appeal Br. 10—11.
The Examiner finds the claims are directed to “mapping customer
transaction data.” Final Act. 6; see also Answer 3^4. Claim 1 recites, in the
first four limitations, steps that correspond to sending and receiving
information as part of processing a credit or debit card transaction. Claim 1
also recites steps for transmitting and receiving messages to obtain a
location, for creating a “data set” with the received transaction and location
information, and for mapping the data. The claim is, thus, directed to
receiving transaction and location information, and creating a map with this
information. This is essentially the same as “mapping customer transaction
data,” because the only difference is receiving the data that is mapped,
which steps are considered mere data gathering steps. See Bilski v. Kappos,
545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v.
Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity).
The steps of claim 1 are similar to claims held to be directed to
abstract ideas by our reviewing court.
For example, the East Coast court held, about claims that map a
ventilation system layout to standard fittings and displayed visually to avoid
the need to redraw architectural drawings, “it would be difficult to conceive
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of a more abstract concept than ‘mapping.’” E. Coast Sheet Metal
Fabricating Corp. v. Autodesk, Inc., 2015 WL 226084, at *6 (D.N.H.
Jan. 15, 2015), amended in part, 2015 WL 925614 (D.N.H. Mar. 3, 2015),
and aff’d, 645 F.Appx. 992 (Fed. Cir. 2016).
In MacroPoint, the Court found “that the patent is directed at a
method for tracking freight, which is an abstract concept.” MacroPoint,
LLC v. FourKites, Inc., 2015 WL 6870118, at *4 (N.D. Ohio Nov. 6, 2015),
aff’d, 671 F.Appx. 780 (Fed. Cir. 2016). MacroPoint also includes a
dependent claim, found abstract, that is directed to generating a map of the
data about vehicle location:
8. The method of claim 1, wherein the location signal is
configured to cause display of a visual representation of the
location of the vehicle or the freight carried by the vehicle on the
remote device's user interface by displaying a map that includes
a mark indicating the location of the vehicle on the map.
Because Appellants’ claim 1 is similar to other claims the court has
held to be directed to abstract mapping of received data, it is also directed to
the abstract idea of “receiving data and mapping the received data.”
Answer 12.
In addition, the request for and receipt of data, which is then mapped,
is a process that can be performed entirely through mental thought with the
use of pen and paper, which additionally means the claim is directed to an
abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1373 (Fed. Cir. 2011) (noting, in the context of the claims in that
case, that “a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”).
If the claim is “directed to” a patent-ineligible abstract idea, as we
find claim 1 is, we then consider the elements of the claim—both
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individually and as an ordered combination—to assess whether the
additional elements transform the nature of the claim into a patent-eligible
application of the abstract idea. Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134
S. Ct. 2347, 2355 (2014). This is a search for an “inventive concept”—an
element or combination of elements sufficient to ensure that the claim
amounts to “significantly more” than the abstract idea itself. Id.
The Appellants argue the “additional features” of the claims “amount
to significantly more than the alleged abstract idea.” Appeal Br. 14—18; see
also Reply Br. 8—10. However, the only reason given to support this
argument is that the claims “provide improvements over the technical field
of electronic transaction processing and data analytics.” Id. 15—16. We find
this unpersuasive. First, the claims do not alter “electronic transaction
processing,” at least because they merely rely on standard credit/debit
transaction processing in the claim to receive the conventional transaction
data. See, e.g., Spec. 120. The transaction process, from which information
is gathered, is no different from standard transaction processing, and,
therefore, the claim scope does not represent an improvement in transaction
processing.
In addition, the “field of the invention is related to location data
describing the location of a consumer and transaction data from a transaction
using a portable consumer device, such as a credit card.” Id. 12. The
claims are, thus, basically directed to correlating and displaying data. The
resulting map could be used in a process for analyzing data, but any data
analysis is outside the scope of the claims. Therefore, the claims do not
improve data analytics.
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We are unpersuaded by the Appellants’ argument that the claims do
not “‘monopolize’ the general ability of others to perform any alleged
abstract idea.” Appeal Br. 15. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
The Appellants next argue:
[T]he present claims are necessarily rooted in computer
technology to overcome a technical problem specifically arising
in the realm of computer technology. For example, the recited
elements of the claims require a unique series communication
among and specialized logic implemented by various computing
devices or components thereof for implementing the generation
of heat maps.
Appeal Br. 19. The Appellants also argue, as to independent claims 11
and 21, that the system components claimed are each configured with
“specialized logic.” Id.
These arguments are unpersuasive, because the claims merely
transmit requests for, and receive, data, which is then stored in a “data set,”
and maps the data. We discern no “unique series communication” or
“specialized logic” required to send and receive messages, because we are
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unpersuaded that sending and receiving data is anything other than a
standard function of a general purpose computer, which does not require
special programming. Further, the creation of a “heat map” can be
performed mentally with pen and paper, and does not require a computer
with specialized programming.
The Appellants also argue the claimed invention
overcomes a technical problem specifically arising in the realm
of computer technology. In particular, the advancement in
network mobile computing technologies made it possible for a
consumer to initiate electronic transactions with their mobile
devices wherever they choose instead of from known static
locations.
Id.
The argument, however, is not commensurate in scope with the
claims, because it implies a new function using a mobile device, such as a
smartphone, to initiate electronic financial transactions. Claim 1 recites that
“a payment card of an account holder is used for payment in a transaction.”
Independent claim 11 recites “a transaction has been initiated using a
payment card.” Independent claims 16 and 21 each recites “a transaction
has been initiated using a payment card.” All claims, thus, use a payment
card, not a mobile device, to initiate the transactions. The systems the claim
uses to ask for, receive, store, and map the data, are all general purpose
computer systems. See Spec. 192.
Inasmuch as the Appellants’ arguments do not establish that the
claims recite an “inventive concept” that transforms the abstract idea into
patent-eligible subject matter, the Appellants have not shown error in the
Examiner’s rejection. For this reason, we sustain the rejection of claims 1—
34 under 35U.S.C. § 101 as directed to abstract ideas.
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Rejection of Claims 1, 4, 11, IS—21, 24, 26, and 28—34 under
35 U.S.C. $103fa)
The Appellants argue independent claims 1, 11, 16, and 21 together as
a group (Appeal Br. 25), so we select claim 1 as representative. See 37
C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by the Appellants’ arguments that Fourez does
not disclose generating a data set with the specific data that correlates
mobile device location data with transaction data, as claimed. Appeal
Br. 21.
In support of the “generating ... a data set” limitation, the Appellants
direct us to paragraph 51 of the Specification, which states the system takes
location and transaction data, “and associates this data together in a
transaction record,” that is stored. Spec. 151. Fourez discloses receiving
location data for a mobile device, and transaction data that identifies the
location of the payment card use, and using the data “to determine, in the
managing computer system, whether the geographic origin of the
authorization request matches the geographic location determined by the
mobile device.” Fourez 17. By storing the location and transaction data
together in memory so the system can make the determination, Fourez meets
the language to generate a data set with location and transaction data, as
claimed.
We also are unpersuaded by the Appellants’ argument that Fourez
fails to disclose heat maps (Appeal Br. 21), because the Examiner relies on
Cho and Dehner as disclosing heat maps. Final Act. 9—10.
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The Appellants next argue Cho does not disclose a heat map that maps
mobile device location correlated to transaction data, because Cho instead
maps “generating a heat map to indicate popular products or stores in a
shopping mall.” Appeal Br. 21—22. However, Fourez correlates the location
of a mobile device with transaction data, but not conveying this correlated
information as a heat map, which Cho and Dehner disclose. The argument,
thus, is directed to alleged shortcomings in Cho, when the rejection is based
on a combination of Fourez, Cho, and Dehner.
We are not persuaded also by the Appellants’ argument that Dehner
“fails to teach a correlation between a geographic location of a mobile
device and the transaction data” in creating its heat map. Appeal Br. 22.
The Examiner found that Fourez fails to disclose a heat map, but
found both Cho and Dehner disclose a heat map. Final Act. 9—10 (“Fourez
does not specifically teach heat mapping.”) Therefore, neither Cho nor
Dehner is necessary to disclose the precise correlated information Fourez
already discloses.
The Appellants finally argues “[njothing in the Cho or Dehner
discloses or even suggests ‘storing data related to analyzing the locations of
a customer’s transactions.’ As such, the Office Action has failed to establish
sufficient rationale to combine Fourez, Cho, and Dehner.'” Appeal Br. 24.
We are not persuaded by the Appellants’ argument, because, to the extent
Appellants seek an explicit suggestion or motivation in the reference itself,
this is no longer the law in view of the Supreme Court’s holding in KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Examiner, at pages 9-11
of the Final Action, provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
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441 F.3d 977, 988 (Fed. Cir. 2006). The Appellants do not dispute the
Examiner’s reasoning.
For these reasons, we sustain the rejection of claims 1,4, 11, 13—21,
21,24, 26, and 28-34 under 35 U.S.C. § 103(a).
Rejections of Claims 2, 3, 5—10, 12, 22, 23, 25, and 27 under
35 U.S.C. $103fa)
The Appellants argue each of these dependent claims only by
asserting that the additional references used in the rejections fail to remedy
alleged shortcomings in the rejection of the independent claims. Appeal
Br. 24—26. We sustain the rejections, because we are unpersuaded of
shortcomings in the rejection of claim 1 as to the last two limitations—
generating a data set and generating a heat map—as asserted. For this
reason, we sustain the rejections of claims 2, 3, 5—10, 12, 22, 23, 25, and 27
under 35 U.S.C. § 103(a).
DECISION
We affirm the rejection of claims 1—34 under 35 U.S.C. § 101.
We affirm the rejections of claims 1—34 under 35 U.S.C. § 103(a).
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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
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