Ex Parte Cervenka et al

Patent Trial and Appeal Board

Jul 16, 2018

14577261 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/577,261 12/19/2014
144885 7590 07/18/2018
The Webb Law Firm/ Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Karen Louise Cervenka
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.
8223-1706938 5925
EXAMINER
CHEUNG, CAL VINK
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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 KAREN LOUISE CERVENKA,
MARY THERESA TAYLOR, and GWEN DIANE MA 1
Appeal2017-009926
Application 14/577,261
Technology Center 3600
Before: CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
JEREMY M. PLENZLER, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party in interest is Visa USA, Inc. App. Br. 2.
Appeal2017-009926
Application 14/577,261
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to methods and systems for processing
coupons over a computer network. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method, comprising:
providing a computing device including a
transaction handler configured in an electronic
payment processing network that connects separate
computers in the network, including:
point of service terminals configured to
initiate transactions of payments in the electronic
payment network using account identification
information, the transaction handler configured to
process the transactions of payments communicated
in the electronic payment processing network,
computers controlling first accounts out of which the
payments are made in the electronic payment
processing network, computers controlling second
accounts hosting benefits of offers, and computers
controlling third accounts in which the payments are
received via the electronic payment processing
network;
receiving, by the transaction handler in the
electronic payment processing network from a point
of service terminal of a merchant, a first request
message identifying a consumer account of a
consumer and requesting authorization of a payment
transaction between the consumer and the merchant
for a purchase from the merchant;
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Application 14/577,261
sending, from the transaction handler via the
electronic payment processing network to a computer
of an issuer of the consumer account, a second
request message requesting authorization of the
payment transaction by the issuer of the consumer
account;
sending, from the transaction handler via the
electronic payment processing network to a computer
of an issuer of a sponsor account of a benefit of an
offer, a third request message requesting
authorization of the benefit of the offer to be used
with the purchase from the merchant;
receiving, in the transaction handler via the
electronic payment processing network from the
computer of the issuer of the sponsor account as a
response to the third request message to the issuer of
the sponsor account, a first response message
authorizing the benefit of the offer to be used with
the purchase from the merchant;
receiving, in the transaction handler via the
electronic payment processing network from the
computer of the issuer of the consumer account as a
response to the second request message to the issuer
of the consumer account, a second response message
authorizing the payment transaction in the consumer
account for the purchase with which the benefit of the
offer is to be used; and
communicating, from the transaction
handler via the electronic payment processing
network, authorization data to the point of service
terminal of the merchant for the purchase, in
accordance with the first response message
authorizing the benefit of the offer to be used with
the purchase from the merchant and the second
response message authorizing the payment
transaction in the consumer account for the purchase
with which the benefit of the offer is to be used.
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Application 14/577,261
REJECTION
Claims 1-31 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Based on Appellants' arguments (App. Br. 4--17), we will decide the
appeal on the basis of representative claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Having considered all of Appellants' arguments and any evidence
presented, we are not persuaded that the Examiner erred in rejecting claims
1-31 as directed to patent-ineligible subject matter. We address specific
arguments for emphasis in our analysis below.
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation
Proprietary LTD. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014).
For the first step, we determine whether the claims at issue are directed to a
patent-ineligible concept such as an abstract idea, law of nature, or natural
phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 78-79). If
so, we advance to the second step where "we 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" of the otherwise patent-ineligible concept. Id.
(quoting Mayo, 566 U.S. 78-79). The Court has described this second step
"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." Id.
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(citing Mayo, 566 U.S. at 72-73 (internal quotation marks and alterations
omitted)).
Alice-Step One
The Examiner finds that the steps of claim 1 "are concepts relating to
interpersonal and intrapersonal activities, such as managing relationships or
transactions between people, social activities, and human behavior;
satisfying or avoiding a legal obligation; advertising, marketing, and sales
activities or behaviors; and managing human activity which fall under the
abstract idea of organizing human activity." Final Act. 6. The Examiner
concludes that claim 1 "is directed to an abstract idea because it combines
the concepts of organizing human activity, fundamental economic practice
and an idea of itself which individually and in combination are held to be an
abstract idea." Id. at 7. The Examiner also finds that the method of claim 1
"has similarities to [buySAFE, Inc., v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014)] since there are transmitted request-messages and based on
transmitted response-messages directed to said transmitted request-
messages, wherein said response-messages authorizes 'a benefit of an offer'
with said sales transaction, said benefit of said offer is applied to said sales
transaction at the point of service terminal." Ans. 3--4.
Appellants dispute that claim is directed to an abstract idea.
Appellants assert that the Examiner considered an oversimplified version of
claim 1 from which "the sources, destinations, and/or communication paths
of the messages are removed." App. Br. 6-7. Appellants contend that
removing "the identifications of the sources, destinations and /or paths of the
respective messages ... significantly alters the nature of the subject matter."
Id. at 8.
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We agree with the Examiner that claim 1 is directed to an abstract
idea. First, we agree that claim 1 is similar to the claims at issue in
buySAFE, which the Federal Circuit held were directed to abstract ideas.
Here, claim 1 is directed to facilitating a commercial transaction by
processing "a benefit of an offer" (i.e., a coupon) and "a payment transaction
between [a] consumer and [a] merchant" over a computer network. App. Br.
18-19 (Claims App.); see Spec. ,r 2 (describing the invention as related to a
"discount" on "a transaction between a merchant and a consumer, and
particularly to a "coupon" presented by the consumer to the merchant to
obtain the discount). As Appellants characterize claim 1, "the coupons are
configured to be processed in the electronic payment processing network to
reimburse a merchant in a way similar ... to the processing of payments
made using payment cards." App. Br. 2 ( citing Spec. ,r 39, Fig. 3). This is
similar to claim 1 in buySAFE, which also recited sending and receiving
communications over a computer network to facilitate online commercial
transactions. buySAFE, 765 F.3d at 1351-52. The court determined that
"[t]he claims are squarely about creating a contractual relationship," and
because contractual relations are "intangible entities" and "a fundamental
economic practice," the claims were directed to an abstract idea. Id. at
1354-55. Claim 1 is also not unlike the claims at issue in Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372 (2017), which were directed
to "local processing of payments for remotely purchased goods," which were
also held to be directed to an abstract idea. Id. at 1374 (internal quotation
marks and citation omitted). Claim 1 thus recites "the type of fundamental
business practice that, when implemented using generic computer
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technology, is not patent-eligible under Alice." Id. at 1378 (citing Alice, 134
S. Ct. at 2355).
We are also not persuaded that the Examiner considered an
oversimplified version of claim 1. The limitations that Appellants allege the
Examiner "removed" from the claim identify the senders and recipients of
messages and responses sent over the computer network. App. Br. 8.
Appellants allege that "[ r ]emoving the identifications of the sources,
destinations and/or paths of messages involved in the operations receiving
sending and communicating significantly alters the nature of the subject
matter." Id. But Appellants do not explain how the precise senders and
recipients of online communications makes a process using online
communications any less abstract. More importantly, the Examiner did
recognize that the claims were "directed to 'a transaction between a
merchant and a consumer"' (Ans. 4 (quoting Spec. ,r 2)), and "represent[] a
contractual relationship" (id.), which, as discussed above, are recognized as
abstract ideas.
In sum, we are not persuaded that the Examiner erred in determining
that claim 1 is directed to an abstract idea.
Alice-Step Two
The Examiner finds that the "additional elements" of claim 1-a
"computing device," "transaction handler," "electronic payment processing
network," "point of service terminals," etc.-are insufficient to amount to
significantly more than the abstract idea "because the additional elements
are well-understood, routine and conventional activities previously known to
the industry." Final Act. 8. Appellants respond that the claimed "improved
coupon processing system" is "deeply rooted in computer-related
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technology" because it "authorizes the reimbursement of the coupon
discounts to the merchants using a process that is entirely different from the
traditional process for coupon processing." App. Br. 9.
"For the role of a computer in a computer-implemented invention to
be deemed meaningful in the context of this analysis, it must involve more
than performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction and Transmission
LLC v. Wells Argo Bank, N.A., 776 F.3d 1343, 1347--48 (Fed. Cir. 2014)
( quoting Alice, 134 S. Ct. at 2359). The Federal Circuit recently held that
"[ w ]hether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination."
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Similar to the
claims at issue in buySAFE, discussed above in connection with our analysis
of step 1, claim 1 involves nothing more than generic computer functionality
related to sending information between the parties involved and authorizing
a transaction. See buySAFE, 765 F.3d at 1355. Appellants' contention that
the claimed process is "entirely different" than the traditional process, even
if true, does not address the Examiner's finding that the claimed process uses
computer technology in a conventional and well-understood manner. Thus,
we are not persuaded that the Examiner erred in finding that the claim
elements, considered alone or in combination, do not add "significantly
more" to the abstract idea to which claim 1 is directed.
DECISION
For the above reasons, the Examiner's rejection of claims 1-31 is
affirmed.
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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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