Ex Parte HOWE

Patent Trials and Appeals Board

May 31, 2019

14038259 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/038,259 09/26/2013
126944 7590 06/04/2019
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Justin X. HOWE
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.
37537.0034Ul- 5561
EXAMINER
PRESTON, JOHN 0
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN X. HOWE
Appeal2018-002955
Application 14/038,259
Technology Center 3600
Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all the pending claims. Br. 5; Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies MasterCard International Incorporated as the real
party in interest. Br. 2.
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Application 14/038,259
Introduction
Appellant describes the invention as relating "in general to financial
services" and, with more particularity, describes that aspects include
"deploy[ing] chip-card payment cards to payment cardholders based on their
propensity to travel to locations where the use of chip payment cards is
dominant." Spec. ,r 1. 2
Claims 1, 8, and 15 are independent. Claim 1 is representative, shown
here with technological limitations emphasized with bold italics:
1. A method comprising:
receiving, via a network inter/ ace, payment card
transaction data from a merchant bank as part of a non-real time
clearing process, the transaction data including a cardholder
identifier associated with a customer, addenda for the
transaction data, and a vendor;
extracting travel information from the addenda with a
processor, the travel information including an anticipated
location;
matching the anticipated location, with the processor,
against a database of predetermined locations where CHIP-
enabled cards are used; and
transmitting to an issuer a message via the network
interface, the message informing the issuer of impending travel
by the customer when the anticipated location matches against
the database of locations where CHIP-enabled cards are used.
Br. 14 (Claims App'x).
Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as
ineligibly directed to a judicial exception. Final Act. 16-21.
2 See also Br. 2-3 (summarizing the technological environment related to the
claimed invention).
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions of reversible error. See Br. 5-12. We disagree with Appellant's
conclusions. Instead, as consistent with our discussion below, we adopt the
Examiner's findings and reasons as set forth in the Final Office Action from
which this appeal is taken and as set forth in the Answer. We highlight the
following for emphasis.
For the§ 101 rejection, Appellant argues all pending claims together,
see Br. 5-12, from which we select claim 1 as representative for all claims,
see 37 C.F.R. § 4I.37(c)(l)(iv).
§ 101 General Legal Framework and the USP TO Guidance
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
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against risk."). Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95
(1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69
(1972) ). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" in Diamond v.
Diehr, 450 U.S. 175, 191 (1981).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50-57 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look,
in step one of the Alice/Mayo analysis, 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) ("prong one"); and
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(2) additional elements that integrate the judicial exception into a
practical application ("prong two") (see MPEP § 2106.05(a}-(c), (e}-
(h)). 3
See Guidance, 84 Fed. Reg. at 52, 55-56. 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 adds "significantly more"
under step two of the Alice/Mayo analysis, i.e., whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(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 Guidance, 84 Fed. Reg. at 56.
Alice/Mayo Step One. Guidance Step 2A. Prong One
(Does Claim 1 Recite a Patent-Ineligible Concept?)
The Examiner determined claim 1 recites
the abstract idea of receiving payment card transaction data,
extracting travel information from an addenda, matching the
anticipated location against a database of predetermined
locations where CHIP-enabled cards are used, and transmitting
to an issuer a message via a network informing the issuer of
impending travel by the customer when the anticipated location
matches against the database of locations where CHIP-enabled
cards are used.
Final Act. 3. We agree with the Examiner that claim 1 recites this described
functionality and, as further discussed below, that claim 1 thereby recites an
abstract idea.
We find unpersuasive Appellant's arguments that the rejection "rests
on an overly broad extrapolation of the recited subject matter, excludes key
aspects of the claims, [ and] ignores the details of the data and hardware
3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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components recited in the claims." Br. 7. The Examiner's determined
abstract idea synthesizes particular functionality from each of the four steps
of claim I-the Examiner's determination is appropriate under the first step
of the Alice/Mayo analysis. It is routine ( and proper here) at step one to
view the claim functionality without recited hardware components such as
"via a network interface" and "with a processor" which, as discussed below,
are generic and merely used for their routine purposes, without any further
technology related limitations.
Certainly, we must "'be careful to avoid oversimplifying the claims'
by looking at them generally and failing to account for the specific
requirements of the claims." McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Here, the
Examiner's determination complies with that caveat. Each of the four steps
of claim 1 recites limitations that describe activities that are part of the
above-described abstract idea. In particular, the following recitations in
claim 1 describe actions that are part of that idea:
[1] receiving ... payment card transaction data from a
merchant bank as part of a non-real time clearing process, the
transaction data including a cardholder identifier associated
with a customer, addenda for the transaction data, and a vendor;
[2] extracting travel information from the addenda [that
includes] an anticipated location;
[3] matching the anticipated location against a database
of predetermined locations where CHIP-enabled cards are
used· 4 and
'
4 Regardless that there is a technological aspect to "CHIP-enabled cards," as
recited, this claim limitation recites the idea of matching an identified
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transmitting to an issuer a message ... informing the
issuer of impending travel by the customer when the anticipated
location matches against the database of locations where CHIP-
enabled cards are used.
The first step is a "non-real time" process limitation for receiving
information about a transaction that identifies vendor and the customer along
with "addenda" from which, in the second step, "an anticipated location" is
extracted. The third and fourth steps alert an issuer when the anticipated
location is somewhere that "CHIP-enabled cards are used." The Examiner's
determination that claim 1 recites the abstract idea as described by the
Examiner in the final rejection is tethered to the claim language, because
each of the four steps includes actions that are reflected in the articulated
abstract idea.
We agree with the Examiner's determination that claim 1 is
sufficiently similar to other precedent in which such claims have been held
ineligibly directed to abstract ideas that humans can perform ( e.g., using pen
and paper). See Final Act. 3--4 ( citing Cyberfone5 and SmartGene6); see
also Ans. 3 ( determining the "abstract idea is similar to concepts involving
human activity related to commercial practices (citing Ultramercial7)).
Thus, claim 1 recites a judicial exception in the category of a mental process.
See Guidance, 84 Fed. Reg. at 52; see also, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011) (concluding
location with locations where particular types of devices may be used,
without any reference to the technology of the devices (or other technology).
5 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x
988 (Fed. Cir. 2014).
6 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x
950 (Fed. Cir. 2014).
7 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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claims directed to "detecting credit card fraud based on information relating
to past transactions" can be performed in the human mind and were drawn to
a patent-ineligible mental process).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. Guidance, 84 Fed. Reg. at 54.
Alice/Mayo Step One, Guidance Step 2A, Prong Two
(Does Claim 1 Integrate the Abstract Idea into a Practical Application?)
To determine whether the judicial exception is integrated into a
practical application, we identify whether there are "any additional elements
recited in the claim beyond the judicial exception(s)" and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. 84 Fed. Reg. at 54--55 (emphasis added); see also
MPEP § 2106.05(a}-(c), (e}-(h).
Here, the computer-related recitations such as "via a network
interface," and "with a processor" (and a "database," although there is
nothing technical per se about the recitation of a database) add a certain level
of specificity to the claim, but none of these computer limitations serves to
improve a technology or technical field. Those recitations constitute routine
uses of those technologies to automate the underlying business method.
Thus, they do not constitute an improvement to "the functioning of the
computer itself' or "any other technology or technical field." See MPEP
§ 2106.05(a) (quoting Alice, 573 U.S. at 225). Neither do these computer
limitations qualify as applying the judicial exception with "a particular
machine," because these components provide their conventional functions
and require no more than general purpose computer equipment. See MPEP
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§ 2106.05(b); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,716-17
(Fed. Cir. 2014); TL! Communications LLC v. AV Automotive LLC, 823 F.3d
607, 613 (Fed. Cir. 2016) (explaining that mere recitation of concrete or
tangible components is not an inventive concept).
Similarly, the specific use of "a database of predetermined locations
where CHIP-enabled cards are used" does not serve to integrate the abstract
idea into a practical application. Such specificity does not confer patent
eligibility. The Supreme Court has "rejected the argument that
'implement[ing] a principle in some specific fashion' will 'automatically
fal[l] within the patentable subject matter of§ 101. "' Alice, 573 U.S. at 222
( quoting Flook, 437 U.S. at 593).
Appellant's arguments similarly do not persuade us that claim 1
effects a particular transformation of the recited articles, which are simply
used for their ordinary purposes, or that it adds any other meaningful
(technological) limitations, i.e., limitations beyond simply "linking the use"
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e}-(f);
see also id. at (g}-(h) (use of well-known limitations beyond the judicially
excepted matter constitutes "insignificant extra-solution activity" (g) and
claim limitations "merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more" (h)).
Appellant's arguments based on DDR Holdings 8 and related precedent
are unpersuasive. See Br. 9-12. The patent-eligible claim at issue in DDR
Holdings recited limitations for providing a composite web page based on a
web link activation occurring at a remote computer, thereby addressing "a
8 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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challenge particular to the Internet." DDR Holdings, 773 F.3d at 1257-58
( explaining that"[ w ]e caution, however, that not all claims purporting to
address Internet-centric challenges are eligible for patent."). Unlike the
patent eligible claim in DDR Holdings, in which the recited technological
limitations were specific and sufficed to confer eligibility, Appellant's
recited technological limitations are completely generic. See, e.g., Spec. ,r,r
25, 36, 49 (describing as generic the technological components used to
implement embodiments of the described (and claimed) method(s)).
Appellant's contention that claim 1 "addresses the network-centric
challenge of providing CHIP-enabled payment cards, by providing a
solution that is necessarily rooted in computer technology" (Br. 10) is, for
the foregoing reasons, unpersuasive. This contention is also unpersuasive as
not commensurate with the scope of claim 1, which includes no limitations
that correspond to "providing CHIP-enabled payment cards," as argued by
Appellant.
Accordingly, because the recited judicial exception is not integrated
into a practical application, the Examiner did not err in determining claim 1
is directed to an abstract idea.
Alice/Mayo Step Two: Guidance Step 2B
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 573
U.S. at 217-18 (citing Mayo, 566 U.S. at 72-73, 77-79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to "significantly more" under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
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been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if claim 1 adds a specific
limitation, or combination of limitations, that is not well-understood, routine,
conventional activity in the field; or whether it simply recites well-
understood, routine, conventional activities at a high level of generality. Id.
Here, Appellant's claims do not recite specific limitations ( or a
combination of limitations) that are beyond what was well-understood,
routine, and conventional. The Examiner finds, and we agree, that beyond
the limitations for the judicial exception, the technological limitations
recited in claim 1 constitute the use technology that was well known to those
of ordinary skill prior to the invention. Final Act. 4; see also Ans. 4--5. The
disclosure in Appellant's Specification of the claimed technological features
is at a generic level. See Spec. ,r,r 25, 36, 49; see also Figs. 1-2. There is no
discussion of any special functionality or considerations for a technological
aspect of any technological component recited in claim 1. For example,
claim 1 's method uses the processor for extracting travel information and
matching an anticipated location of the travel information against a database.
The Examiner finds that the processor is well-understood, routine, and
conventional. See Final Act. 4. We agree with the Examiner because using
a computer "only for its most basic function, the performance of repetitive
calculations," as in Appellant's claim 1, may not impose meaningful limits
on the claim's scope. Bancorp Servs. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Similarly, the MPEP instructs
examiners that courts recognize that using a computer for performing
repetitive calculations may be well-understood, routine, and conventional
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when claimed generically. MPEP § 2106.05(d)(II)(ii) (citing Flook, 437
U.S. at 594; Bancorp, 687 F.3d at 1278).
Appellant contends claim 1 's recited elements "provid[ e] a technical
solution that is neither conventional nor routine" and "is novel and non-
obvious." Br. 10 (also contending claim 1 "overcomes a problem that has
arisen in updating a computer model"); see also id. at 11-12. This argument
is unpersuasive. "The 'novelty' of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). "It has
been clear since Alice that a claimed invention's use of the ineligible concept
to which it is directed cannot supply the inventive concept that renders the
invention 'significantly more' than that ineligible concept." BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90.
Appellant's contention that claim 1 "overcome[s] a problem that has
arisen in updating a computer model" (Br. 10) is unpersuasive because
Appellant provides no explanation for either what the computer model
problem is or how claim 1 addresses any such problem. Attorney arguments
and conclusory statements that are unsupported by factual evidence are
entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); see also Ans. 4--5.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claims 1-20
under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's rejection under 35 U.S.C. § 101 of claims
1-20.
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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