Ex Parte Ghosh et al

Patent Trial and Appeal Board

May 24, 2018

14085776 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/085,776 11120/2013
25297 7590 05/29/2018
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
FIRST NAMED INVENTOR
Debashis Ghosh
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.
1615175 6753
EXAMINER
JACOB, WILLIAM J
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
05/29/2018 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):
usptomail@jwth.com
wehmig@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASHIS GHOSH and RANDY SHUKEN
Appeal2017-002547
Application 14/085,776 1
Technology Center 3600
Before: JOHN A. EVANS, CATHERINE SHIANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-23. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify MasterCard International Incorporated as the real party
in interest. App. Br. 2.
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Application 14/085,776
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention relates to "apportioning a
payment card authorization request among a plurality of issuer entities."
Spec. 2:7-8. Thus, when conducting a purchase transaction, it may be
desirable for a user (i.e., customer) to use more than one payment card. See
Spec. 1 :24--28. In a disclosed embodiment, a user may subscribe to a
payment transaction service and register various payment cards associated
with a master access card. Spec. 3:30-4: 16. In addition to registering the
payment cards with the transaction service, the user may also provide
allocation designations for each payment card. Spec. 4:20-24. According to
the Specification, after the payment cards have been registered and the
allocation data has been designated, the user may further designate a master
access card account. Spec. 5: 11-18. When a purchase transaction is
conducted using a master access card, the disclosed system determines how
to apportion the monetary amount among the registered payment cards.
Spec. 7: 1---6.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method for apportioning a payment card authorization
request among a plurality of issuer entities, the method
compnsmg:
rece1vmg, by an acquirer entity computer system
comprising one or more computers, a payment card authorization
request from a point of sale (POS) device, wherein the payment
card authorization request specifies a card account number and a
specified monetary amount;
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generating, by the acquirer entity computer system using
an application programming interface (API) module, a message
including the card account number;
sending, by the acquirer entity computer system, the
message to a processing server;
receiving, by the acquirer entity computer system,
predefined allocation data and an indication from the processing
server that the card account number corresponds to a master
access card account;
apportioning, by the acquirer entity computer system, the
specified monetary amount into a plurality of monetary amounts
in accordance with the predefined allocation data associated with
the master access card account; and
sending, by the acquirer entity computer system using the
API module, a plurality of authorization requests containing the
plurality of monetary amounts to a respective plurality of issuer
entities.
The Examiner's Rejections
1. Claims 1-23 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4--5.
2. Claims 1-6, 8-17, and 19-23 stand rejected under 35 U.S.C.
§ 102(a)(l) as being anticipated by Rogers et al. (US 2005/0192895 Al;
Sept. 1, 2005) ("Rogers"). Final Act. 5-8.
3. Claims 7 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Rogers and Glatt et al. (US 2010/0205062 Al; Aug. 12,
2010) ("Glatt"). Final Act. 8.
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ANALYSIS 2
Re} ection under 3 5 US. C. § 101
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 9-13; Reply Br. 2-3. In particular, Appellants assert the claims are not
directed to an abstract idea because the claims are rooted in computer
technology and overcomes "the problem of appropriately distributing
computing tasks among computing platforms operated by different entities."
App. Br. 9-12. Further, Appellants argue the claims recite significantly
more than a judicially recognized exception (i.e., abstract idea) because the
recited operations improve the operation of an acquirer entity computer
system. App. Br. 10-12. For the reasons discussed infra, Appellants have
not persuaded us of error.
The Supreme Court's two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Ifa claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
2 Throughout this Decision, we have considered the Appeal Brief, filed
March 14, 2016 ("App. Br."); the Reply Brief, filed December 2, 2016
("Reply Br."); the Examiner's Answer, mailed October 3, 2016 ("Ans.");
and the Final Office Action, mailed August 14, 2015 ("Final Act."), from
which this Appeal is taken.
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Although each independent claim broadly falls within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 4. In
particular, the Examiner concludes the claims are directed to the abstract
idea of "apportioning a transaction amongst a plurality of payment (e.g.,
credit card) accounts," which is a fundamental economic practice. Final
Act. 4. Additionally, the Examiner concludes "the claims do not amount to
an improvement to the functioning of a computer itself," but rather use a
computer performing well-understood, routine, and conventional functions
to execute the abstract idea. Final Act. 4. Thus, the Examiner concludes the
claims do not recite significantly more than the abstract idea itself. Final
Act. 4.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "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
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subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, "manipulating data" is an abstract idea.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Here, Appellants' claims are directed to apportioning a monetary
amount associated with a payment card authorization request among a
plurality of accounts (i.e., registered payment cards) in accordance with
predefined allocation data. In particular, a payment card authorization
request is received by an acquirer entity system, which then generates and
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sends a message to a processing server. The processing server responds to
the acquirer entity system with, inter alia, predefined allocation data (i.e.,
how the monetary amount is to be allocated across a plurality of identified
payment cards). The acquirer entity system apportions the monetary
amount, in accordance with the received allocation data, and sends a
plurality of authorization requests to the issuer entities of the plurality of
payment cards. We agree with the Examiner that the claims are drawn to a
fundamental economic practice. See Final Act. 4; Ans. 9; see also Alice, 134
S. Ct. at 2356 (concluding an intermediated settlement is a fundamental
economic practice-an abstract idea); Bilski v. Kappas, 561 U.S. 593, 609
(2010) (concluding hedging, a fundamental economic concept, to be an
abstract idea).
In particular, the steps of receiving information (i.e., a payment card
authorization request), generating and sending a message to a processing
system, receiving a message by the acquirer entity computer system, and
sending a plurality of authorization requests are similar to ideas previously
concluded by our reviewing court to be abstract. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive."); see also Dealertrack, Inc.
v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (concluding the claimed
steps of "receiving data from one source (step A), selectively forwarding the
data (step B, performed according to step D), and forwarding reply data to
the first source (step C)" to be abstract). Additionally, the step of
apportioning the specified monetary amount in accordance with the
predefined allocation data is similar to using mathematical algorithms to
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manipulate existing information to generate additional information, which
the courts have concluded to be a patent-ineligible concept. See Digitech
Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014).
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 134
S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1294, 1297-98 (2012)).
Appellants contend the claims recite significantly more than the
abstract idea because "the recited operations improve the operation of the
acquirer entity computer system itself' by using an API to offload to a
processing server the determination of whether a card account number
corresponds to master access card account. App. Br. 10. Appellants assert
the claimed approach "can decrease the processing load at the acquirer entity
computer system" and "can reduce the likelihood of developer errors." App.
Br. 10 (emphases added). Additionally, Appellants assert the claimed
features "significantly restrict the claims to a very specific technical field."
App. Br. 10.
We disagree that the claims recite significantly more than the abstract
idea. Contrary to Appellants' assertions, the claims do not recite an
improvement to the operation of the acquirer entity computer system.
"[T]he focus of the claims is not on such an improvement in computers as
tools, but on certain independently abstract ideas that use computers as
tools." Elec. Power, 830 F.3d at 1354; see also Alice, 134 S. Ct. at 2359
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(relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible). Further,
Appellants do not provide sufficient persuasive evidence in support of the
alleged improvement. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (holding that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney
argument is not evidence). Further, "[a]n abstract idea does not become
nonabstract by limiting the invention to a particular field of use or
technological environment." Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101. For similar reasons, we also sustain the
Examiner's rejection of independent claims 12 and 23, which recite similar
limitations and for which Appellants advance similar arguments. See App.
Br. 9--13. Additionally, we also sustain the Examiner's rejection of claims
2-11 and 13-22, which depend directly or indirectly therefrom and were not
argued separately. See App. Br. 9--13; see also 37 C.F.R.
§ 41.37(c)(l)(iv)(2015).
Rejection under 35 USC§ 102
Appellants dispute the Examiner's finding that Rogers discloses the
claimed acquirer entity computer system and the processing server. App.
Br. 13-17; Reply Br. 3---6. In particular, Appellants contend Rogers
discloses a single host system performs both the determining of the
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allocation data and the apportionment of the monetary amount. App. Br. 13,
15 (citing Rogers i-fi-19--10, 34); Reply Br. 4--5. Appellants assert that
although the merchant systems in Rogers could apportion a payment, there is
no disclosure supporting the Examiner's speculation that the merchant
systems in Rogers is performing the apportionment. Reply Br. 4--5 (citing
Rogers ,-r 28).
The Examiner finds Rogers teaches a merchant system and a host
system for processing a transaction. Final Act. 5---6 (citing Rogers i-fi-1 9--10,
17, 29, 31, 34, 39--40, Figs. 1-3); Ans. 11. The Examiner explains "the
acquirer entity may involve the merchant system as described throughout
Rogers." Ans. 11 (emphasis added). Further, the Examiner finds "Rogers
teaches that 'Interactions with the host system and second parties may take
place with merchant systems 104 that are configured to perform merchant-
end processing functions['] (which would include apportionment when
preferred)." Ans. 11 (citing Rogers i128).
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Additionally, to anticipate, a prior art reference must
disclose more than "multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also In re Arkley,
455 F.2d 586, 587 (CCPA 1972) ("[T]he [prior art] reference must clearly
and unequivocally disclose the claimed [invention] or direct those skilled in
the art to the [invention] without any need for picking, choosing, and
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combining various disclosures not directly related to each other by the
teachings of the cited reference.").
Rogers describes a payment system comprising a plurality of
merchant systems and a host system. Rogers i-fi-128-29, Fig. 1. Rogers
further describes the host system "may include a variety of different logical
modules that are used to implement methods of the invention." Rogers i136,
Fig. 2. Among these modules is a preference module that may further
comprise a consumer payment profile. Rogers i-fi-137-39, Fig. 2 (216, 224).
Rogers discloses the consumer payment profile may indicate how payments
are to be made for different transactions (e.g., splitting a payment among
different transaction types). Rogers i1 39.
We disagree with the Examiner that Rogers discloses---either
explicitly or inherently-that the apportionment of the monetary amount is
performed by the merchant system of Rogers. The Examiner's finding that
the apportionment could be considered part of the merchant-end processing
functions is speculative. For us to sustain the Examiner's rejection, we
would need to resort to impermissible speculation or unfounded assumptions
or rationales to cure the deficiencies in the factual bases of the rejection
before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to
do so.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner's rejection under 35 U.S.C. § 102(a)(l)
of independent claim 1. For similar reasons, we also do not sustain the
Examiner's rejection under 35 U.S.C. § 102(a)(l) of independent claims 12
and 23, which recite similar limitations. Additionally, we do not sustain the
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Examiner's rejection under 35 U.S.C. § 102(a)(l) of claims 2---6, 8-11, 13-
17, and 19-22, which depend therefrom.
Rejection under 35 USC§ 103
Claim 7 depends indirectly from claim 1 and recites "wherein the
predefined allocation data includes predefined percentage values associated
with the payment card accounts." Dependent claim 18 recites a similar
limitation. The Examiner rejected claims 7 and 18 under 35 U.S.C. § 103
over the combined teachings of Rogers and Glatt. Final Act. 8. In
particular, the Examiner relies on the same findings and disclosure of Rogers
regarding the underlying limitations of the independent (and intervening
claims), but relies on Glatt to teach "apportioning a bill amongst several
credit cards by percentage." Final Act. 8 (citing Glatt i-f 26).
As discussed above, Rogers does not disclose-nor does the Examiner
persuasively assert that Rogers suggests-the limitations recited in the
independent claims. Further, the Examiner does not rely on Glatt to cure the
deficiencies of Rogers. Accordingly, we do not sustain the Examiner's
rejection of claims 7 and 18 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision rejecting claims 1-23 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-6, 8-17, and
19-23 under 35 U.S.C. § 102(a)(l).
We reverse the Examiner's decision rejecting claims 7 and 18 under
35 U.S.C. § 103.
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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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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