Ex Parte Collins et al

Patent Trial and Appeal Board

Dec 14, 2018

14276071 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/276,071 05/13/2014
125619 7590 12/18/2018
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust A venue
New Canaan, CT 06840
FIRST NAMED INVENTOR
Simon Collins
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.
P01637-US-UTIL
(MOl.293)
1074
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
martin@bmtpatent.com
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON COLLINS and IAN MADDOCKS
Appeal2017-010520
Application 14/276,071 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and
JON M. JURGOV AN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-7, 9-11, 21, and 22, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. 2
1 Appellants identify Mastercard International Incorporated, as the real party
in interest. (App. Br. 2.)
2 Our Decision refers to the Specification ("Spec.") filed May 13, 2014, the
Final Office Action ("Final Act.") mailed September 30, 2016, the Appeal
Brief ("App. Br.") filed February 23, 2017, the Examiner's Answer ("Ans.")
mailed June 19, 2017, and the Reply Brief ("Reply Br.") filed August 8,
2017.
Appeal2017-010520
Application 14/276,071
CLAIMED INVENTION
The claims are directed to methods for "passive cardholder
verification ... in [a] mobile device" by which "a customer verification
method (CVM) may be performed without prompting the user to provide
any input" on the payment-enabled mobile device. (Title ( capitalization
altered); Abstract.) An outcome of the passive CVM is input to a risk based
decision process performed by the mobile device, to determine whether a
payment transaction is approved or declined. (Abstract.)
Claims 1, 21, and 22 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method comprising:
providing a mobile device, the mobile device including at
least one CVM ( cardholder verification method) data source, the
at least one CVM data source including at least one of a
microphone, a camera, a gyroscope, an accelerometer and a
touchscreen;
receiving CVM data from the at least one CVM data
source, said CVM data indicative of at least one characteristic
and/or attribute of a user of the mobile device;
initiating a CVM data evaluation process using the
received CVM data as an input, the CVM data evaluation process
being initiated, performed and completed without the user being
or having been prompted to submit input to the at least one CVM
data source in connection with performance of said CVM data
evaluation process, said CVM data evaluation process being
performed by a processing device in communication with the at
least one CVM data source; and
providing a result of the CVM data evaluation process,
wherein the user's at least one characteristic and/or attribute is
indicated by at least one of (a) facial recognition; (b) gait
analysis; ( c) gesture analysis; ( d) voice recognition; and ( e)
heartbeat analysis.
(App. Br. 14--16 (Claims App.).)
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Application 14/276,071
REJECTIONS & REFERENCES
(1) Claims 1-7, 9-11, 21, and 22 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter. (Final Act. 2-
5.)
(2) Claims 1-7, 9-11, 21, and 22 stand rejected under
35 U.S.C. § 103 based on Phillips et al. (US 2010/0248779 Al, published
Sept. 30, 2010) ("Phillips") and Mestre et al. (US 2011/0112918 Al,
published May 12, 2011) ("Mestre"). (Final Act. 6-11.)
ANALYSIS
35 U.S.C. § 101 Rejection
The Examiner finds claims 1, 21, and 22 are "directed towards the
abstract idea of performing a passive cardholder verification .... [which] is a
fundamental economic practice" and also "corresponds to concepts
identified as abstract ideas by the courts, such as data processing in
Content[]Extraction." (Final Act. 3 ( citing Content Extraction &
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347-1348 (Fed.
Cir. 2014)); Ans. 3, 5.) The Examiner also finds the claimed processes are
"well-understood, routine, and conventional [and] previously known to the
industry," as Appellants' "specification does not describe how this [claimed]
method improves upon the conventional passive cardholder verification
process." (Final Act. 6.) For these reasons, the Examiner concludes the
claims are directed to unpatentable subject matter under § 101. Id.
To determine whether subject matter is patentable under§ 101, the
Supreme Court has set forth a two part test "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. Pty. Ltd.
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Application 14/276,071
v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. (citation
omitted). For computer-related technologies, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities" (which would be eligible subject
matter) or instead "on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool" (which would be ineligible subject
matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-1336, 1338
(Fed. Cir. 2016) (emphasis added). "If the claims are not directed to an
abstract idea [or other patent-ineligible concept], the inquiry ends. If the
claims are 'directed to' an abstract idea, then the inquiry proceeds to the
second step of the Alice framework." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
The second step in the Alice framework is to consider the elements of
the claims "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." Id. ( citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78, 79 (2012)). In
other words, the second step is to "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. ( citing Mayo, 566 U.S. at 72-73).
Here, the Examiner analogized the claims to Content Extraction.
(Ans. 3, 5.) However, the Examiner's reliance is misplaced because the
claims in Content Extraction "merely recite the use of this existing scanning
and processing technology to recognize and store data from specific data
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fields such as amounts, addresses, and dates," which was held to be
ineligible subject matter because "humans have always performed these
functions" and "'the mere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention."' Content
Extraction, 776 F.3d at 1347-1348 (quoting Alice, 134 S. Ct. at 2358).
The claims before us are different. We agree with Appellants, "the
Examiner's characterization of the subject matter of the claims ... failed to
reflect the technological nature of the claims, and unjustifiably ascribed to
them a level of abstraction that is belied by the actual content of the claim
limitations." (App. Br. 8.) Here, the Examiner's finding the claims directed
to a fundamental economic practice or "data processing" as in Content
Extraction fails to consider the actual claim limitations, and does not show a
connection between the claims' recitations and the abstract ideas identified.
(App. Br. 8-9; Reply Br. 2.) For example, the Examiner fails to consider the
improvement to a mobile device providing secure payment capabilities for a
cardholder verification "initiated, performed and completed without the user
being or having been prompted to submit input to the at least one CVM data
source" as recited in claim 1. (Reply Br. 2-3.) The Examiner's analysis
(Final Act. 3 and Ans. 5) merely lists known categories of abstract ideas
without "look[ing] at the 'focus of the claimed advance over the prior art' to
determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Here, the character of claims 1, 21, and 22 as a whole is directed to an
improved payment-enabled mobile device and an improved "technique for
providing secure access to payment capabilities of a payment-enabled
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mobile device." (Reply Br. 2). See Enfzsh, 822 F.3d at 1335-1336 (patent
eligible claims directed to an improvement in computer capabilities via a
self-referential table for a computer database); McRO, 837 F.3d at 1314
(patent eligible method claims directed to an improvement in computer
animation, not an abstract idea that merely invokes generic processes and
machinery).
Our conclusion is supported by the Specification's description of
Appellants' invention as directed to "a payment-enabled mobile device [that]
applies one or more 'passive' CVM processes [by which user is not
prompted to submit input to the CVM process] on an ongoing basis to
provide a primary or supplemental assurance that the payment-enabled
mobile device remains in the possession of the authorized user." (Spec.
2:20-22.) Appellants' CVM-enabled mobile device performs "an automated
facial recognition of the user via a forward-facing camera," "a voice
recognition algorithm applied to the user's utterances during telephone calls
using the device," and/or "an analysis of the user's gait while walking, as
detected via one or more motion sensing components of the device." (Spec.
3: 1-5.) Appellants' passive CVM "may achieve a superior balance of user
convenience with achievement of the risk management goals of payment
card account issuers." (Spec. 3:10-11, 11:4---6, 17:20-27.)
We are also not persuaded by the Examiner's finding that "performing
a passive cardholder verification" qualifies as an abstract idea. (Final Act. 3
("the claim is directed towards the abstract idea of performing a passive
cardholder verification").) The Examiner fails to explain why "performing a
passive cardholder verification" qualifies as an abstract idea, and does not
identify any case law precedent of an abstract idea similar to performing
passive CVM. (App. Br. 8; Reply Br. 3.)
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Because we find claims 1, 21, and 22 are not directed to an abstract
idea under the first step of the Alice analysis, we do not reach step two of the
test set forth in Alice. See Enfzsh, at 1336, 1339.
For these reasons, we do not sustain the Examiner's rejection of
claims 1, 21, and 22, and their dependent claims 2-7 and 9-11 as directed to
non-statutory subject matter under 35 U.S.C. § 101.
35 US.C. § 103 Rejection
The Examiner finds the combination of Phillips and Mestre teaches
the passive CVM method recited in claim 1. (Final Act. 6-7.) Specifically,
the Examiner finds Phillips discloses a cardholder verification method that
receives CVM data (such as a user's signature or fingerprint) from a mobile
phone's CVM data source, and initiates a CVM evaluation using the
received data. (Final Act. 6 (citing Phillips ,r,r 33, 62).) The Examiner also
finds Mestre' s facial recognition CVM technique teaches the claimed "CVM
data evaluation process ... initiated, performed and completed without the
user being or having been prompted to submit input to the at least one CVM
data source." (Final Act. 7 (citing Mestre ,r 57).) We do not agree.
We agree with Appellants that Phillips and Mestre, alone or in
combination, fail to teach or suggest a CVM data evaluation process
"initiated, performed and completed without the user being or having been
prompted to submit input to the at least one CVM data source in connection
with performance of said CVM data evaluation process" as recited in claim
1. (App. Br. 9-10; Reply Br. 3.) Mestre merely discloses:
cardholder verification methods [that] may entail (as described
below) prompting the user to enter a PIN, receiving the PIN
digits as entered by the user, and verifying that the entered PIN
digits match the PIN as previously stored in the payment-enabled
mobile telephone 102. In addition or alternatively, other CVM
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techniques may be employed in the payment-enabled mobile
telephone 102, such as biometric techniques that may include
fingerprint reading or facial recognition.
(Mestre i157 .)
Thus, Mestre' s CVM prompts the user to enter a PIN for verification,
or alternatively uses "biometric techniques that may include fingerprint
reading or facial recognition." (See Mestre ,r 57.) Mestre, however, "does
not state or suggest that the biometric techniques would not require
prompting the user to submit to such techniques." (App. Br. 10.) Rather, a
skilled artisan would understand that the biometric techniques in Mestre's
paragraph 57, like the PIN verification mentioned in the same paragraph,
would entail prompting the user to submit input to the mobile phone. (Reply
Br. 3; App. Br. 10.) Other portions of Mestre similarly disclose prompting
the user to submit input to the mobile phone to perform a cardholder
verification. (See Mestre ,r,r 96-97, 105, 129, and Fig. 11.) As Appellants
explain, Mestre does not enable or configure a mobile phone to initiate and
perform a CVM process without the user being or having been prompted to
submit input to the phone in connection with performance of the CVM, as
required by claim 1. (Reply Br. 3; App. Br. 10.)
Phillips does not make up for the above-noted deficiencies of Mestre.
For example, Phillips discloses the user is actively involved in providing
input for CVM processing. (App. Br. 9; see Phillips ,r,r 58, 62 (the user is
prompted to submit a PIN, present the fingertip/thumb to a fingerprint
reader, or operate a stylus to enter a signature into a stylus pad).)
Thus, for the reasons set forth above, we do not sustain the
Examiner's obviousness rejection of independent claim 1 and claims 2-7,
and 9-11 dependent therefrom. We also do not sustain the Examiner's
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rejection of independent claims 21 and 22 (similarly reciting a CVM
evaluation "initiated, performed and completed without the user being or
having been prompted to submit input to the at least one CVM data source").
Because the above-discussed issue is dispositive as to the obviousness
rejections of all claims on appeal, we do not reach additional issues raised by
Appellants' arguments as to the rejections of claims 21 and 22.
DECISION
The Examiner's rejection of claims 1-7, 9-11, 21, and 22 under
35 U.S.C. § 101 is reversed.
The Examiner's rejection of claims 1-7, 9-11, 21, and 22 under
35 U.S.C. § 103 is reversed.
REVERSED
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