Ex Parte Howe et al

Patent Trial and Appeal Board

Jul 23, 2018

13956161 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/956, 161 07/31/2013
126944 7590 07/25/2018
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.
37537.0010U2- 9661
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
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 and CHRISTINE ANN BRUNDAGE
Appeal2017-003177 1
Application 13/956,161 2
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, 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 1-15 and 19-23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed June 1,
2016), and the Examiner's Answer ("Ans.," mailed July 21, 2016), Advisory
Action ("Adv. Act.," mailed December 21, 2015), and Final Office Action
("Final Act.," mailed August 24, 2015).
2 Appellants identify MasterCard International Inc. as the real party in
interest. Br. 2.
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Application 13/956,161
CLAIMED INVENTION
Appellants' claimed invention relates "in general to financial
services" and more particularly to "a decision making platform to process
cross-border transactions involving payment cards" (Spec. ,r 2).
Claims 1, 10, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A real-time method of generating a white list for
anticipated future travel, the method comprising:
receiving, via a network interface, transaction data from a
merchant bank, the transaction data including (A) a cardholder
identifier associated with a customer and (B) addenda for the
transaction data;
extracting, with a processor, travel information from the
addenda, the travel information including an anticipated date of
travel and an anticipated location;
creating, with the processor, a white list entry associated
with the cardholder identifier, the white list entry containing the
anticipated date of travel and the anticipated travel location; and
transmitting, via the network interface, the white list entry.
REJECTIONS
Claims 1-15 and 19-23 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1, 3---6, 8-10, 12-15, and 17-23 are rejected under 35 U.S.C.
§§ I02(a)(l) and (a)(2) as anticipated by DePetro (US 2013/0006823 Al,
pub. Jan. 3, 2013). 3
3 We treat the Examiner's reference to canceled claims 1 7 and 18 and
omission of claims 21-23 in the heading of the rejection (Final Act. 7; see
also, Ans. 2), as typographical errors (claims 21-23 are included in the body
of the rejection; see Final Act. 11-12).
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Claims 2 and 11 are rejected under 35 U.S.C. § I03(a) as unpatentable
over DePetro and Hefetz (US 2012/0244885 Al, pub. Sept. 27, 2012).
Claim 7 is rejected under 35 U.S.C. § I03(a) as unpatentable over
DePetro and Nightengale et al. (US 2010/0241535 Al, pub. Sept. 23, 2010)
("Nightengale").
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue claims 1-15 and 19-23 as a group (Br. 8-15). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Under 35 U.S.C. § 101, 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§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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 Corp., 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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
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the elements of the claims are considered "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.
(quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "preventing transaction
fraud by generating a white list for anticipated future travel" (Final Act. 6
(citing the USPTO's 2014 Interim Guidance on Subject Matter Eligibility,
79 Fed. Reg. 74618 (Dec. 16, 2014))); and that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception itself because "[ t ]he only additional limitations in the
claims that relate to computerization [are] a processor and a network
interface" (id.), which the Examiner concluded "amount to nothing more
than requiring a generic processor and generic network interface to merely
carry out the abstract idea itself' (id. at 4).
Appellants argue that the Examiner's "analysis rests on an
extrapolation of the recited subject matter to a concept that is not even
claimed" because "the words 'prevent transaction fraud' appear nowhere in
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claim 1, 10, or 15"; and Appellants charge that the Examiner has, thus, failed
to comply with US PTO guidelines (Br. 6 ( citing para. III "July 2015 Update:
Subject Matter Eligibility")). 4
Appellants' argument is not persuasive at least because there is no
requirement that the Examiner's formulation of an abstract idea must copy
the claim language. Instead, the Federal Circuit has explained that "the
'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."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d.
1327, 1335 (Fed. Cir. 2016) (citing Internet Patents Corp., 790 F.3d
at 1346).
Here, it is clear from the Specification, including the claim language,
that the character of the claims, considered as a whole, is directed to an
improvement to methods and systems for detecting and preventing
transaction fraud (see, e.g., Spec. Title ("CARD PRESENT FRAUD
PREVENTION METHOD USING AIRLINE PASSENGER DETAIL");
,r 12 ("One aspect of the disclosure includes the realization that anticipated
cardholder travel data may be incorporated as a factor to vendor fraud
scoring products in the authorization of cross-border transactions."); ,r 14
("Yet another aspect of the disclosure is automated issuer travel notification
- automating disclosure of cardholder travel to at least one or multiple
issuers, thus facilitating improved anti-fraud determinations by the
issuers."); ,r 52 ("The automated issuer travel notification includes
automating disclosure of cardholder travel to at least one or multiple issuers,
4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf
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which may result in improved anti-fraud determinations by the issuers.");
,r 56 ("a real-time method 4000 that factors anticipated travel in fraud
detection and scoring"); claim 1 ( claim 1 recites receiving transaction data
and performing operations on that data, i.e., extracting travel information
and creating a white list entry using a processor)). As such, we see no legal
difficulty with the Examiner's determination that the claims are directed to
"preventing transaction fraud by generating a white list for anticipated future
travel" (Final Act. 6).
Appellants next argue that the claims are not directed to an abstract
idea because "each of the steps includes a recitation of particular hardware
used to perform the step" and thus, "the steps cannot be performed through
organizing human activity" (Br. 7). That argument is similarly
unpersuasive.
Appellants appear to be arguing that any invention that cannot be
performed mentally or by hand, because the claim recites a computer is,
therefore, not abstract. But, a substantially similar argument was expressly
rejected by the Court in Alice. See Alice Corp., 134 S. Ct. at 2358 ("[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention."); see also FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (The inability
of a human to perform each claim step "does not alone confer
patentability. "). Although "a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101," CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011 ), it does not logically follow that methods requiring physical
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components - i.e., methods that arguably cannot be performed entirely in
the human mind - are, therefore, not directed to abstract ideas.
Appellants further argue that "[ t ]he idea of generating a white list for
anticipated future travel based on addenda information of a payment card
transaction is decidedly not a 'fundamental ... practice,"' and, therefore, not
an abstract idea (id. at 9). Yet, generating a white list for anticipated future
travel, as recited in claim 1, amounts to no more than collecting information
(i.e., transaction data); analyzing the information (i.e., extracting travel
information from the transaction data and creating a white list entry), and
transmitting the results of the collection and analysis - concepts that the
Federal Circuit has held are within the realm of abstract ideas. See, e.g.,
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(finding claims directed to an abstract idea where "[t]he advance they
purport to make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions."); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) ("the claims of the asserted patents are drawn to
the abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory.");
FairWarning IP., 839 F.3d at 1094 ("the claims here are directed to
collecting and analyzing information to detect misuse and notifying a user
when misuse is detected.").
We also are not persuaded of Examiner error by Appellants' argument
that the claims "describe an approach to accomplishing a specific, practical,
and useful improvement to the existing computer aided processes, such as
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clearing processes used for payment card transactions" (Br. 9). Claim 1
does not recite "clearing processes used for payment card transactions" and
Appellants' arguments in this regard are not persuasive at least because they
are not commensurate with the scope of the claims.
Turning to the second step of the Mayo/Alice framework, Appellants
maintain that even if the claims are directed to an abstract idea, the claims
are nonetheless patent-eligible because "the claims represent substantially
more than an application of the abstract idea" (Br. 10). In this regard,
Appellants first argue that "[t]he present claims ... plainly satisfy the
'significantly more' standard" because the claims "do not (nor do they
attempt to) preempt every application of the idea of 'prevent[ing] transaction
fraud by generating a white list for anticipated future travel' as recited in the
Final Office Action" (id. at 10-11 ). Instead, according to Appellants, "there
are other methods available for generating a white list entry" (id.; see also
id. at 9 ("There is no 'building block' at issue that, if monopolized, would
'improperly [tie] up ... human ingenuity."')).
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
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patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Appellants next argue that the claims are patent-eligible because they
"recite a practical innovation and contain a significant degree of detail
regarding how this innovation is accomplished in practice - for example, the
type of data used (e.g., addenda for transaction data), a source of the data
used ( e.g., transaction data from a merchant bank), etc." (Br. 12). But, that
argument is also unpersuasive of Examiner error.
Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp., 830 F.3d at 1353 ("we have treated collecting information,
including when limited to particular content ( which does not change its
character as information), as within the realm of abstract ideas."); SAP
America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) ("As
many cases make clear, even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
(quoting Elec. Power Grp., 830 F.3d at 1355 (citing cases)). The law also is
clear that the mere recitation of a practical application for an abstract idea is
insufficient to transform the abstract idea into a patent-eligible invention.
Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.").
We also are not persuaded by Appellants' further argument that "the
claims are necessarily rooted in technology, making use of a network
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interface and a processor to perform actions" and "have an obvious
technological effect: they aid in the technological goal of automatically
capturing anticipated travel information based on payment card purchase
information. (Br. 12). Appellants do not adequately show how the claims
are technically performed such that they are not routine, conventional
functions of a generic computer; nor do Appellants provide any technical
reasoning to explain why the claims are not routine and conventional
functions of a generic computer. There is no indication in the record that the
particular operations recited in the claims, e.g., receiving data, extracting
information, creating a white list entry, and transmitting the white list entry,
require any inventive computer components, invoke any allegedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components. We conclude, as did the Examiner, that the
only additional elements in claim 1, beyond the abstract idea itself, are the
recited processor and network interface (Ans. 3). The Examiner determined
that these elements "amount to nothing more than requiring a generic
processor and a generic network interface to merely carry out the abstract
idea itself' (id.) - a determination that is fully consistent with the
Specification. 5
5 See Spec. , 2 7 ("Processor 2100 may be any central processing unit,
microprocessor, micro-controller, computational device or circuit known in
the art."); id. , 38 ("Network interface 2300 may be any data port as is
known in the art for interfacing, communicating or transferring data across a
computer network, examples of such networks include Transmission Control
Protocol/Internet Protocol (TCP /IP), Ethernet, Fiber Distributed Data
Interface (FDDI), token bus, or token ring networks.").
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Citing In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994), Appellants
argue that Appellants' claims "result in the requirement of a computer
system with improved functionality over a 'generic' computer" and that
"[b ]ecause the recitations of the present claims would require specific
programming, the resulting computer would be a specific purpose computer,
which is in contrast to the claims of Alice" (Br. 13). Appellants, thus,
maintain that the claimed "activities require the use of communication
protocols, data formatting standards, and data flows that are unavailable
and/or unused with generic computers" and that "a generic computer is not
capable of performing the functional features recited in the claims" (id.).
The difficulty with Appellants' argument, as the Examiner points out
(Ans. 7), is that the Federal Circuit, in Eon Corp. IP Holdings LLC v. AT&T
Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015), explicitly noted that "Alappat
has been superseded by Bilski and Alice Corp." Id. at 623 (citations
omitted). And, as described above, it is clear from the Supreme Court
decision in Alice that merely implementing an abstract idea on a general
purpose computer is not patent-eligible. Moreover, Appellants do not point
to anything in the record to support their assertion that the claimed invention
requires "communication protocols, data formatting standards, and data
flows that are unavailable and/or unused with generic computers" (Br. 13).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 1, and claims 2-15 and 19-23, which fall with
claim 1.
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Anticipation
Independent Claim 1 and Dependent Claims 3-6, 8, 9, and 21-23
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. §§ 102(a)(l) and 102(a)(2) at least
because DePetro, on which the Examiner relies, does not disclose "receiving
... transaction data from a merchant bank," as recited in claim 1 (Br. 15-
17).
Responding to Appellants' arguments in the Answer, the Examiner
cites paragraph 16 ofDePetro, which discloses that a card issuer may be a
bank (Ans. 8). According to the Examiner, "the bank or card issuer that
does the processing in [DePetro] is a merchant bank and reads on the
limitation" (id.). The Examiner, thus, takes the position that the claimed
"merchant bank" reads on the card issuer in DePetro. However, the
Examiner has not pointed to any disclosure in DePetro that transaction data
is received/ram the card issuer, i.e., the "merchant bank," as required by
claim 1. On the contrary, DePetro discloses that notification service
provider 106 receives travel information from a travel provider 104, creates
a notification file, and sends the notification file to a card issuer 108 (see,
e.g., DePetro ,r 49).
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1 under 35 U.S.C. §§ 102(a)(l) and 102(a)(2). For the same
reasons, we also do not sustain the Examiner's rejection of dependent
claims 3---6, 8, 9, and 21-23.
Independent claims 10 and 15 and Dependent claims 12-14, 19, and 20
Independent claims 10 and 15 include language substantially similar
to the language of claim 1. Therefore, we do not sustain the Examiner's
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rejection under 35 U.S.C. §§ 102(a)(l) and 102(a)(2) of claims 10 and 15,
and claims 12-14, 19, and 20, which depend therefrom, for the same reasons
set forth above with respect to claim 1.
Obviousness
Dependent Claims 2, 7, and 11
Claims 2 and 7 ultimately depend from independent claim 1, and
claim 11 depends from independent claim 10. The Examiner's rejections of
dependent claims 2, 7, and, 11 are based on the same rationale with respect
to DePetro applied in rejecting claims 1 and 10 under 35 U.S.C. §§ 102(a)(l)
and 102(a)(2). Therefore, we do not sustain the Examiner's rejections of
dependent claims 2, 7, and 11 under 35 U.S.C. § 103(a) for substantially the
same reasons set forth above with respect to the independent claims.
DECISION
The Examiner's rejection of claims 1-15 and 19-23 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 1, 3---6, 8-10, 12-15, and 19-23
under 35 U.S.C. §§ 102(a)(l) and 102(a)(2) is reversed.
The Examiner's rejections of claims 2, 7, and 11 under 35 U.S.C.
§ 103(a) are reversed.
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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