Ex Parte Dominguez et alDownload PDFPatent Trials and Appeals BoardJun 28, 201913467731 - (D) (P.T.A.B. Jun. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/467,731 05/09/2012 Benedicto H. Dominguez 66945 7590 07/02/2019 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. CONFIRMATION NO. 79900-840199 7838 EXAMINER RANKINS, WILLIAM E ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 07/02/2019 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 KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENEDICTO H. DOMINGUEZ, THOMAS J. MANESSIS, and JAMES DONALD RENO Appeal2018-005236 Application 13/467,731 1 Technology Center 3600 Before JOSEPH P. LENTIVECH, PHILLIP A. BENNETT, and SCOTT RAEVSKY, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 22, 23, 29-31, 39, 41, 43-53. Claims 1-21, 24--28, 32-38, 40, and 42 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 Appellants' Brief ("App. Br.") identifies Visa International Service Association as the real party in interest. App. Br. 2. Appeal2018-005236 Application 13/467,731 CLAIMED SUBJECT MATTER The claims are directed to an online account authentication service. Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. A method comprising: receiving, by a merchant computer comprising a plug-in module, an account number from a client device operated by a user in an online transaction; sending, by the merchant computer, during an authentication process for the online transaction, a verify enrollment request message comprising the account number to an access control server operated by an issuer of the account number, wherein the verify enrollment request message requests an enrollment status for the account number, where the account number is used by a user conducting the online transaction; receiving, by the merchant computer, during the authentication process for the online transaction, from the access control server, a verify enrollment response message, wherein the verify enrollment response message indicates that the user is enrolled with the access control server; sending, by the merchant computer, during the authentication process for the online transaction, a payer authentication request message to the access control server, wherein the payer authentication request message is sent via the client device operated by the user; receiving, by the merchant computer, during the authentication process for the online transaction, a payer authentication response message comprising a digitally signed receipt and an indication from the access control server, the indication indicating that the access control server authenticated the user, wherein the payer authentication response message is received via the client device; verifying, by the plug-in module in the merchant computer, the digitally signed receipt; transmitting, by the merchant computer, an authorization request message comprising the account number and the indication to the issuer; and 2 Appeal2018-005236 Application 13/467,731 rece1vmg an authorization response message from the issuer. App. Br. 25 (Claims Appendix). REJECTION Claims 22, 23, 29-31, 39, 41, and 43-53 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2-7. REJECTION UNDER 35 U.S.C. § 101 Standard for Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208 (2014). The Supreme Court instructs us to "first determine whether the claims at issue are directed to a patent-ineligible concept" (id. at 216-18), and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which 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." Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the 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 3 Appeal2018-005236 Application 13/467,731 upon the [ineligible concept] itself."' Id. ( quoting Mayo, 566 U.S. at 72- 73). The USPTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look to whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev. 08.2017, Jan. 2018)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum, 84 Fed. Reg. at 52. 4 Appeal2018-005236 Application 13/467,731 Examiner's Findings and Conclusion In the first step of the Alice inquiry, the Examiner determines the independent claims are directed to an abstract idea of "authenticating a user in a payment transaction." Final Act. 6. The Examiner further determines the claims are directed to an abstract idea because the claims are "an idea of itself similar to those identified by the courts such as obtaining and comparing intangible [information]." Final Act. 6 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). The Examiner further determined the remaining limitations amount to only insignificant post-solution activity. Final Act. 6. In Alice step 2, the Examiner finds the claims do not amount to significantly more than the abstract idea because: The claims are amended to describe the environment in which the process takes place and includes the account number in the enrollment request message however, the environment does not make the idea less abstract and neither does the inclusion of the account number as it is well-understood, routine and conventional to reference an account number in a database lookup. The claims also recite an access control server but this is merely a generic device which cannot serve as significantly more. Final Act. 7. Our Review Applying the guidance set forth in the Memorandum, we are not persuaded the Examiner has erred in rejecting the claims as being directed to patent-ineligible subject matter. The Memorandum instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The guidance identifies three judicially-excepted groupings: (1) 5 Appeal2018-005236 Application 13/467,731 mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices or managing personal behavior or relationships or interactions between people, and (3) mental processes. We focus here on the second grouping----certain methods of organizing human activity such as fundamental economic practices. Claim 22 recites the following limitations: (1) "receiving ... an account number," (2) "sending ... a verify enrollment request message comprising the account number," (3) "receiving ... a verify enrollment response message," ( 4) "sending ... a payer authentication request message," and (5) "receiving ... a payer authentication request message ... indicating ... the ... authenticat[ion of] the user." App. Br. 25 (Claims Appendix). These limitations, under their broadest reasonable interpretation, recite the fundamental economic practice of authenticating a user in a payment transaction because the limitations all recite the operations that would ordinarily take place in performing any such authentication. For example, receiving an account number, as recited in limitation (1 ), reflects the well-established practice of receiving a credit card number from a customer seeking to purchase a good or service. Similarly, the recitation of sending and receiving verify enrollment request and response messages that include the account number, as set forth in limitations (2) and (3), is analogous to the historical practice of calling a bank to confirm the existence of an account number on a check, or calling a credit card company to confirm an account for a card number actually exists. Further, the practice of sending and receiving payer authentication messages, as recited in limitations ( 4) and ( 5) are characteristic of the customary practice of authenticating the identity of a person seeking to conduct business using a 6 Appeal2018-005236 Application 13/467,731 specific account. Like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of authenticating a user in a payment transaction recited in Appellants' claims "is a fundamental economic practice long prevalent in our system of commerce." Alice, 573 U.S. at 219 (citations and internal quotation marks omitted). Accordingly, we conclude the claims recite a judicial exception of a fundamental economic practice. Having determined that the claims recite a judicial exception, our analysis under the Memorandum turns now to determining whether there are "additional elements that integrate the judicial exception into a practical application." See MPEP § 2106.0S(a}-(c), (e}-(h). Appellants' claim 22 recites various computer-related limitations, including a "merchant computer," an "access control server," and a "client device." Although these computer-related limitations are not wholly generic in nature and are specific to conducting transactions, they are described at a high level in the Specification without significant detail about their structure or configuration. As such, we do not find the computer-related limitations are sufficient to integrate the judicial exception into a practical application. Claim 1 recites the following limitations: (1) the account number is received at a merchant computer "comprising a plug-in module" and from a client device "operated by a user in an online transaction," (2) the verify enrollment request message is sent "during an authentication process for the online transaction" and to an access control server "operated by an issuer of the account number, wherein the verify enrollment request message requests an enrollment status for the account number, where the account number is used by a user conducting the online transaction," (3) the verify enrollment 7 Appeal2018-005236 Application 13/467,731 response message is received "during the authentication process for the online transaction" and it "indicates that the user is enrolled with the access control server," (4) the payer authentication request message is sent "during the authentication process for the online transaction" and it is sent "to the access control server ... via the client device operated by the user," (5) the payer authentication response message is sent "during the authentication process for the online transaction ... comprising a digitally signed receipt and an indication from the access control server ... that the access control server authenticated the user, wherein the payer authentication response message is received via the client device," (6) "verifying, by the plug-in module, ... the digitally signed receipt," (7) "transmitting ... an authorization request message comprising the account number and the indication to the issuer," and (8) "receiving an authorization response message from the issuer." In evaluating whether a claim integrates an abstract idea into a practical application, the Memorandum instructs to consider limitations that are indicative of "integration into a practical application" include (1) improvements to the functioning of a computer, or to any other technology or technical field-see MPEP § 2106.0S(a); (2) applying the judicial exception with, or by use of, a particular machine-see MPEP § 2106.05(b ); (3) effecting a transformation or reduction of a particular article to a different state or thing-see MPEP § 2106.0S(c); and (4) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception-see MPEP 8 Appeal2018-005236 Application 13/467,731 § 2106.05(e). See Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two"). We are not persuaded these limitations integrate the abstract idea into a practical application. Appellants assert that the "invention relates to problems associated [with] authenticating a user in an online transaction, where multiple parties ... are involved," and that the "claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." App. Br. 14--15. However, the problem of authenticating the identity of a person presenting a non-cash payment is a problem that existed long before the computer networks. For example, persons seeking to pay with checks have long been required by merchants to present identification to authenticate their identity and authorization to trade on the checking account. Moreover, Appellants do not adequately explain how the functioning of a computer is improved by the use of the claimed verification and authentication messages. In our view, these purported improvements are better characterized as improvements to the abstract idea itself-they improve the process of authenticating a user in a payment transaction. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. May 15, 2018) ("[ w ]hat is needed is an inventive concept in the non-abstract realm"). Appellants do not persuasively explain how the features provide improvements in the non-abstract realm-aside from an unsupported assertion that they provide "better data security" and that prior systems were difficult to use. App. Br. 20 ( citing Spec. 2, 11. 4--15). However, the benefits described in the cited passage are business-oriented benefits and not improvements to the functioning of a computer. Spec. 2, 11. 6-9 ("Authenticating the payer during online purchase transaction will reduce 9 Appeal2018-005236 Application 13/467,731 the levels of fraud, disputes, retrievals and charge backs, which subsequently will reduce the costs associated with each of these events."). Although the passage mentions "security," it does so in the context of addressing "consumer security concerns," which, is primarily a business issue. Appellants also do not provide persuasive arguments that the claims apply the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b ). Appellants assert only that the claims "clearly" meet apply the judicial exception in this way because "these claims recite computer components in a distributed system." However, Appellants do not explain why any specific component in this distributed system qualifies as a particular machine under the Memorandum or binding precedent. In short, Appellants' arguments do not persuade us that the claims integrate the recited judicial exception into a practical application, and we therefore conclude the claim is directed to the recited judicial exception. Having determined the claim is directed to a judicial exception, we proceed to Step 2B (also referred to as Alice step 2) in evaluating whether the claim adds any specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(d)) or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. Here, we find the Examiner's analysis insufficient. Appellants argue the "claims involve more than performance of 'well understood, routine, [and] conventional activities previously known to the industry."' Reply Br. 6; see also App. Br. 20. Appellants argue "[t]he Examiner has provided no evidence showing that the combination of steps is conventional" and that 10 Appeal2018-005236 Application 13/467,731 "[t]he Examiner cannot simply allege without any evidence whatsoever, that the claim limitations are 'conventional'." Reply Br. 7 ( citing MPEP 2106.07). Under the examination procedure published online by the USPTO on April 19, 2018, entitled "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" ("Berkheimer Memorandum"), there is a fact finding requirement for Examiners, as applicable to rejections under § 101. Specifically, Examiners must now provide specific types of evidence to support a finding that claim elements ( or combinations of elements) are well-understood, routine, and conventional. Here, the Examiner's determination that the claims are directed to an abstract idea and do not amount to significantly more than the abstract idea is predicated, at least in part, on a finding that Appellants' claims are directed to routine, conventional, computer operations. In light of this challenge, the burden falls on the Examiner to provide evidence in support of the finding-but no evidence has been provided. Specifically, the Examiner does not point to any portion of the Specification, case law, or evidence in the prior art indicating the various components of the claim (such as, for example, the use of "digitally-signed receipts" or "a merchant computer comprising a plug-in module") were well-understood, routine, and conventional at the time this application was filed in 2001. Consequently, we do not sustain the rejection of claim 22 under 35 U.S.C. § 101 for lack of supporting evidence based on the Berkheimer Memorandum, which mandates that evidence be provided to support such a finding. The remaining claims depend from claim 22 and stand for the same reason. 11 Appeal2018-005236 Application 13/467,731 DECISION We reverse the Examiner's rejection of claims 22, 23, 29-31, 39, 41, 43-53. REVERSED 12 Copy with citationCopy as parenthetical citation