Ex Parte Cueli et al

Patent Trial and Appeal Board

May 9, 2018

14012752 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/012,752 08/28/2013 Allen Cueli
66945 7590 05/11/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-873643
(038500USNP)
CONFIRMATION NO.
6810
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
ipefiling@kilpatricktownsend.com
EDurrell@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLEN CUELI, ORI ARINZE, and LORI VAN DELOO
Appeal2017-002197
Application 14/012,752 1
Technology Center 3600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 5-9, 12-14, and 21-27. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Visa International Service Association as the real party
in interest. App. Br. 2.
Appeal2017-002197
Application 14/012,752
STATEMENT OF THE CASE
THE INVENTION
According to Appellants, the invention relates to "systems and
methods that allow for spending control." Spec. ,r 2. "More specifically,
embodiments of the invention pertain to providing methods for creating a
hold on an amount of a user's available credit balance based on a savings
goal, comparing spending benchmarks against other users having similar
demographic characteristics, and converting a previously completed
transaction to an installment plan." Spec. ,r 4.
Exemplary independent claim 1 is reproduced below.
1. A method, comprising:
rece1vmg, by an issuer computer and from a
communication device, a hold request message requesting to
hold at least a portion of a user's available credit card balance,
wherein the hold is based at least in part on a savings goal amount
created by the user via a user interface on the communication
device;
placing, by the issuer computer, the hold on the user's
available credit card balance based at least in part on the savings
goal amount, wherein the hold renders the portion of the user's
available credit card balance unusable for payment transactions;
sending, to the communication device and by the issuer
computer, a hold response message indicating that the hold on
the user's available credit card balance was placed; and
releasing, by the issuer computer, the hold on the user's
available credit card balance upon the occurrence of an event,
wherein the release renders the portion of the user's available
credit card balance usable for payment transactions and the event
comprises an initiation of a purchase transaction by an authorized
merchant or an initiation of a purchase transaction for a
predefined amount.
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REJECTION
Claims 1, 2, 5-9, 12-14, and 21-27 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception to statutory subject matter. Final
Act. 4--6.
DISCUSSION
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "'long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (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, 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," such as an abstract idea. 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, 566 U.S. at 71. We, therefore, 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, 1335-36 (Fed. Cir. 2016). If the claims are
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Application 14/012,752
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination,' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79).
STEP ONE OF ALICE/MAYO FRAMEWORK
Under the first step of the Alice/Mayo framework, the Examiner finds
"the claims are essentially directed to the concept of placing a hold on a
credit card account based on a savings goal - an abstract idea which would
fall within the universe of ineligible subject matter envisioned by courts as
being an exception to patentability, e.g., a fundamental economic activity
(abstract idea) .... " Final Act. 5.
Appellants argue "[a] primafacie case of patent ineligibility has not
been established, since the Examiner has failed to establish that the abstract
idea is 'similar to at least one concept that the courts have identified as an
abstract idea.'" App. Br. 9. Appellants further argue "the Examiner has
oversimplified the claims and has failed to consider the claims as a whole in
light of the specification when conducting the 'directed to' inquiry." Id. at
7. The claims, according to Appellants, "are not simply 'placing a hold on a
credit card account based on a savings goal."' Id. at 9. Appellants argue the
Specification discloses a method that "improves the way a communication
device may transmit and receive messages to issuer computers and is a way
to make sure that issuer computers respond to events in real-time." Id. at 8.
Appellants also stress that the claimed invention's "novelty and
inventiveness should be appreciated. Conventional methods, networks, and
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systems used in prior art do not possess the account management capability
and responsiveness of the present claims." Id. at 8.
We are unpersuaded by Appellants' arguments. Initially, we disagree
the Examiner has failed to present a prima facie case of patent ineligibility.
To the extent Appellants suggest that USPTO Guidance (e.g., 2014 Interim
Eligibility Guidance, July 2015 Update, or May 2016 Memorandum)
requires particular steps be performed in specific ways to establish that a
claim is directed to an abstract idea, i.e., a "prima facie" case, Appellants are
mistaken. Instead, 35 U.S.C. § 132 sets forth a more general notice
requirement whereby the applicant is notified of the reasons for a rejection
together with such information as may be useful in judging the propriety of
continuing with prosecution of the application. Our reviewing court has
explained:
[A]ll that is required of the [USPTO] to meet its prima facie
burden of production is to 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 § 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.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We have reviewed the
decision to reject the claims for patent-ineligibility articulated by the
Examiner (see Final Act. 4---6; Ans. 2-7) and find it meets the notice
requirements of 35 U.S.C. § 132. The Examiner has set forth the statutory
basis for the rejection (a judicial exception to 35 U.S.C. § 101) and
explained the rejection in sufficient detail to permit Appellants to respond
meaningfully.
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We tum to the Examiner's determination that the claims are directed
to an abstract idea. "The 'abstract idea' step of the inquiry calls upon us to
look 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)); see also Enfzsh, 822 F.3d at 1335 ("[T]he 'directed
to' inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' ( citation omitted)).
Claim 1 recites receiving a request from a user's communication
device to hold a portion of the user's available credit card balance based on
the user's savings goal, placing the hold on the user's credit card rendering a
portion of the user's available credit card balance unusable, sending to the
user's device a response message indicating the hold was placed, and
releasing the hold on the user's credit card balance with the initiation of a
purchase transaction by an authorized merchant or an initiation of a purchase
transaction for a predefined amount.
It is evident the claims are directed to placing a hold on user's credit
card based on the user's savings goal and releasing the hold under certain
circumstances. We, therefore, agree with the Examiner's characterization of
the claims as being "directed to the concept of placing a hold on a credit card
account based on a savings goal" (Final Act. 5) and that, as such, they are
directed to a fundamental economic practice. Accordingly, we disagree the
Examiner has incorrectly identified the abstract idea by oversimplifying the
claims or failing to consider the claims as a whole.
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We also disagree with Appellants that the claimed invention
"improves the way a communication device may transmit and receive
messages to issuer computers." Regarding the claimed messages, claim 1
recites only receiving a hold request message and sending a hold response
message by an issuer computer. Nothing in the claim indicates an
improvement to the issuer computer itself or the user's communication
device. Rather, these computers and devices are used in their routine and
conventional manner in performing the steps of the claimed method.
Finally, we are not persuaded by Appellants' argument relying on the
claim's alleged novelty or non-obviousness. Although the second step in the
Alice/Aiayo framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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."' Alice, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo, 566 U.S. at 72-73). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90-91.
STEP Two OF ALICE/MAYO FRAMEWORK
Under step two of the Alice/Mayo framework, the Examiner finds "the
instant claims simply accomplish the process that implements the abstract
idea via use of a general purpose computer and/ or computer system and do
not add significantly more to the claims than the abstract idea concept
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simply being carried out by the computer and/or the computer system."
Final Act. 6. The Examiner adds:
The elements of the instant process steps when taken in
combination do not offer substantially more than the sum of the
functions of the elements when each is taken alone. The claims
as a whole, do not amount to significantly more than the abstract
idea itself because the claims do not effect an improvement to
another technology or technical field ( e.g., the field of computer
coding technology is not being improved); the claims do not
amount to an improvement to the functioning of an electronic
device itself which implements the abstract idea ( e.g., the client
device, general purpose computer, and/or computer system
which implements the process are not made more efficient or
technologically improved); the claims do not perform a
transformation or reduction of a particular article to a different
state or thing (i.e., the claims do not use the abstract idea in the
claimed process to bring about a physical change. See, e.g.,
Diamond v. Diehr, 450 U.S. 175 (1981), where a physical
change, and thus patentability, was imparted by the claimed
process; Contrast, Parker v. Flook, 437 U.S. 584 (1978), where
a physical change, and thus patentability, was not imparted by
the claimed process); the claims do not add limitations beyond
that which are well understood, routine and conventional in the
field of practice ( e.g., as evidenced by the cited prior art
rejections below); and the claims do not move beyond a general
link of the use of the abstract idea to a particular technological
environment ( e.g., simply claiming the use of a computer and/or
computer system to implement the abstract idea).
Id. at 7-8.
In response, Appellants recite the claim limitations and argue these
limitations "include[] many additional features that amount to significantly
more than an abstract idea." App. Br. 11. For the same reason, Appellants
argue the claims do not preempt the abstract idea because they contain much
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more than just the abstract idea as demonstrated by the identified limitations.
Id. at 12.
We are unpersuaded. As explained above, we agree with the
Examiner's finding that the claims as whole, including the limitations
identified by Appellants, are directed to an abstract idea. By merely reciting
the limitations of the claim, Appellants do not persuasively explain why the
limitations amount to significantly more than an abstract idea. Further,
"[ w ]hile 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). Moreover, "[w]here 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."
Id.; 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).
Appellants further argue,
the recited claim elements clearly provide "improvements to
another technology or technical field." In particular, these
recited elements improve the efficiency and reduce the
complexity in account management by providing a user interface
from which a user can define and edit savings goals, request a
hold of a portion of the user's credit balance based on the savings
goals, and request release of the hold. Additionally, the hold can
be released automatically in response to a variety of events such
as the expiration of a predefined time period, an initiation of a
transaction from a predetermined merchant, or an initiation of a
transaction of a predetermined amount. Thus, the recited
elements improve the flexibility and efficiency of account
management.
App. Br. 13.
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We disagree. Rather than improve another technology or technical
field, the claims solve the financial problem of meeting a savings goal by
limiting available credit. The hardware and software elements recited in the
claims, such as an "issuer computer," "communication device," and "user
interface" are generic computer elements that do not add significantly more
to the claims. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) ("[T]he claims 'add' only
generic computer components such as an 'interface,' 'network,' and
'database.' These generic computer components do not satisfy the inventive
concept requirement."). Further, the fact that "the hold can be released
automatically in response to a variety of events" (App. Br. 13), does not
necessarily improve computer technology itself or another technical field.
Instead, it is simply a further description of the abstract idea of placing a
credit card on hold and releasing upon certain circumstances.
Finally, Appellants argue the recited claim limitations
are not 'well-understood, routine and conventional in the field.' None
of the previously cited prior art references, alone or in combination,
teach or even suggests the recited claim elements. Therefore, the claim
elements cannot be well-understood or routine in the field. In fact,
these limitations help define the claims over the prior art, and are not
encompassed by any alleged abstract idea that might have been
identified by the Examiner.
App. Br. 14.
Appellants' argument is unpersuasive for the reasons explained above,
namely that novelty or non-obviousness over the prior art does not
necessarily indicate the claims are directed to patentable subject matter,
because even a novel abstract idea is still patent ineligible. See Mayo, 566
U.S. at 90-91.
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CONCLUSION
Accordingly, we sustain the Examiner's rejection of the claims under
35 U.S.C. § 101 as directed to a judicial exception to statutory subject
matter.
DECISION
The Examiner's rejection of claims 1, 2, 5-9, 12-14, and 21-27 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.
§ 41.50(±).
AFFIRMED
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