Ex Parte Johnson

Patent Trial and Appeal Board

Jul 30, 2018

12289675 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/289,675 10/31/2008 William Johnson
13708 7590 07/31/2018
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
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.
CITI-0333 2022
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
07/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM JOHNSON
Appeal2017-004862
Application 12/289,675 1
Technology Center 3600
Before JEAN R. HOMERE, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-8, 10, 11, 15, and 17, which are all of the claims pending in the
application. Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
According to Appellant, "consumers often carry several different
plastic credit cards" and the invention relates to replacing these with "a
single ... relationship presentment card ... that is linked to a plurality of the
customer's financial institution transaction accounts." Spec.,, 3, 5.
1 According to Appellant, the real party in interest is Citicorp Credit
Services, Inc. App. Br. 3.
Appeal2017-004862
Application 12/289,675
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method for managing a financial institution's customer
transaction accounts, comprising:
providing a non-programmable relationship presentment
card to a customer having a plurality of financial institution
transaction accounts, the relationship presentment card having a
relationship identifier unique to the customer, and the
relationship presentment card storing only the unique
relationship identifier and storing no data for any of said
customer's plurality of financial institution transaction accounts;
linking, by a financial institution platform computer
having a processor coupled to memory, the unique relationship
identifier of the non-programmable relationship presentment
card to said plurality of the customer's transaction accounts with
the financial institution via a determination by the customer in
advance at the time the relationship presentment card is linked
and without a determination at any time of customer-preferred
benefits or customer-ranked preferred benefits, for all
transactions with the relationship presentment card, to which
one of the plurality of customer's linked accounts to post each
transaction with the relationship presentment card, wherein the
financial institution and the customer are two different entities,
and wherein linking the relationship presentment card to the
plurality of the customer's financial institution transaction
accounts via the determination by the customer further comprises
linking the relationship presentment card to the plurality of the
customer's financial institution transaction accounts via the
determination by the customer based on at least one of a
merchant category or an industry category, a geographic location
of the transaction, or a type of account of each of the plurality of
the customer's financial institution transaction accounts;
receiving, by the financial institution platform computer,
data for a transaction entered at a merchant's transaction terminal
having a card reader through which the relationship presentment
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card is swiped in connection with a transaction, the transaction
data consisting at least in part of the unique relationship identifier
and being received via a merchant acquirer and a card association
processing network;
identifying, by the financial institution platform computer,
a particular account of the customer with the financial institution
to which the unique relationship identifier is linked and to which
the transaction should be posted based exclusively on said
determination in advance by the customer and the transaction
data without requiring a selection by the customer at the time of
the transaction of the particular financial institution account to
which the transaction should be posted; and
posting, by the financial institution platform computer, the
transaction exclusively to the identified financial institution
account of the customer and a reward in connection with the
transaction exclusively to the same financial institution account
of the customer to which the transaction with the customer's
relationship presentment card is posted.
Rejections
Claims 1, 3-8, 10, 11, 15, and 17 stand rejected under 35 U.S.C. § 101
as being directed to ineligible subject matter. Final Act. 9.
Claims 1, 3-8, 10, 11, 15, and 17 stand rejected under 35 U.S.C.
§ I03(a) as obvious over the combination of Mendelovich et al. (US
2006/0208065 Al; Sept. 21, 2006), Akella et al. (US 2009/0119204 Al;
May 7, 2009), Kulcsar et al. (US 2005/0097039 Al; May 5, 2005), and
Franklin et al. (US 5,883,810; Mar. 16, 1999). Final Act. 11.
ISSUES
1. Did the Examiner err in determining that claim 1 is directed to
an abstract idea without significantly more under § 101?
2. Did the Examiner err in finding Akella teaches or suggests "a
determination by the customer in advance at the time the relationship
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presentment card is linked and without a determination at any time of
customer-preferred benefits or customer-ranked preferred benefits, for all
transactions with the relationship presentment card, to which one of the
plurality of customer's linked accounts to post each transaction with the
relationship presentment card," as recited in claim 1?
ANALYSIS
§ 101
Section 101 defines patentable subject matter, but the Supreme Court
has "long held that this provision contains an important implicit exception"
that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012) (quotation omitted). "Eligibility under 35 U.S.C. § 101 is a
question of law, based on underlying facts." SAP Am., Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1020 (Fed. Cir. 2018). To determine patentable subject
matter, the Supreme Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant 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), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
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Application 12/289,675
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, 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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "described step two of this analysis 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 upon the ineligible concept itself." Id. (quotation omitted).
Here, the Examiner determines that "[t]he claims are directed to the
abstract idea of routing and posting customer transactions performed with a
single token and relationship number for the customer to any number of pre-
designated financial institution customer accounts according to pre-defined
transaction parameters." Final Act. 9; see also Spec. ,r 4. Elsewhere, the
Examiner states that "the invention is directed towards an abstract idea of
managing transaction accounts, a fundamental economic practice in which
there is a linking of multiple accounts to a single card account or other
identifier." Ans. 2. The Examiner analogizes this to several "concepts
identified as abstract ideas by courts, such as creating a contractual
relationship (buySAFE), automating mental tasks (Benson), [and] obtaining
and comparing intangible data ( Cybersource)." Id. at 3.
We agree with Appellant that the Examiner failed to adequately
explain how the cited cases relate to the specific claim language in this case.
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See App. Br. 11. "The Supreme Court has recognized that all inventions
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas. But not all claims are directed to an abstract idea." Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (quotation
omitted). Here, claim 1 may indirectly relate to contractual relationships,
but we cannot say that claim 1 as a whole is directed to contractual
relationships. In the same way, claim 1 may obtain and compare intangible
data, but we cannot say that claim 1 as a whole is directed to obtaining and
comparing intangible data. Nor is claim 1 as a whole directed to a
combination of, for example, contractual relationships and obtaining and
comparing intangible data. Cf RecogniCorp, 855 F.3d at 1327 ("Adding
one abstract idea (math) to another abstract idea (encoding and decoding)
does not render the claim non-abstract."); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("the combination of those
abstract-idea processes .... are therefore directed to an abstract idea").
At a high level, "managing transaction accounts" may be an abstract
idea and a fundamental economic practice (see Ans. 2), but "managing
transaction accounts" is too high of a level of abstraction that is untethered
from the specific language of the claims. See Enfzsh, 822 F.3d at 1337; see
also Ans. 4 ("Although there is a processor and memory, the claims do no
more than implement the abstract idea of transaction account
management."). Yet at a lower level, there is insufficient evidence or
explanation on the record before us to determine that the narrower concept
of "routing and posting customer transactions performed with a single token
... to any number of pre-designated financial ... accounts according to pre-
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defined transaction parameters" constitutes a fundamental economic
practice. See Final Act. 9.
The claims here do not apply to any unified account but only to "a
non-programmable relationship presentment card" that stores "only the
unique relationship identifier" ( e.g., "storing no data for any of said
customer's plurality of financial institution transaction accounts"). See
claim 1 ( emphasis added). That card must be "swiped" in a transaction, and
the determination of which linked account to use for that transaction must be
made (A) "by the customer"; (B) "in advance," specifically "at the time the
relationship presentment card is linked"; (C) "without a determination at any
time of customer-preferred benefits or customer-ranked preferred benefits";
(D) "for all transactions with the relationship presentment card"; and
(E) "without requiring a selection by the customer at the time of the
transaction" of which linked account to use. Id. (emphasis added).
These specific limitations are tied directly to the problem and solution
in the Specification. For example, the problem is described as having too
many physical cards and checks:
[C]onsumers often carry several different plastic credit cards, at
least one plastic debit card for electronic withdrawals from a
checking account, and special checks or a plastic credit card to
draw on an equity line of credit. Carrying a large number of such
presentment vehicles is cumbersome and inconvenient for the
consumer.
Spec. ,r 3. The Specification describes the solution as "a single ...
relationship vehicle (e.g., a relationship presentment card) having a
relationship number unique to a customer that is linked to a plurality of the
customer's financial institution transaction accounts via pre-defined
parameters for determining to which of the customer's accounts to post
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particular transactions with the relationship presentment card." Id. ,r 5; see
also id. ,r,r 4 (reciting what the Examiner identified as the abstract idea), 19--
20 (providing specific examples). Here, we agree with the Examiner that the
problem and solution are not specific to computers. See Ans. 2-3; App. Br.
13. The same underlying problem and solution would exist if all credit card
processing was done manually without any computers. Nevertheless, given
the record before us, we determine that the claims are not "simply directed
to an abstract end-result" of fewer cards in one's wallet, but rather are
directed to "a specific means or method" of doing so, namely a single non-
programmable relationship presentment card with pre-defined parameters
specifying in advance which linked account should be charged for each
transaction. See RecogniCorp, 855 F.3d at 1326. This is more than merely a
field of use and instead provides a specific method of minimizing the
number of cards in consumers' wallets. Given the record before us, we are
not persuaded that is an ineligible abstract idea.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
3-8, 10, 11, 15, and 17 under§ 101.
§ 103
Turning to the obviousness rejection under§ 103, Appellant argues:
[NJ one of the references cited by the Examiner describe, teach or
suggest, for example, linking the unique identifier of the
customer's presentment card to the customer's accounts for all
transactions with a determination in advance of which one of the
of customer's linked accounts to post each transaction
identifying the particular linked account to which to post a
transaction based exclusively on the determination in advance
and posting the transaction and reward exclusively to that
particular linked account.
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App. Br. 17. According to Appellant, "Akella describes ... a remote server
selects a card for the purchase based on the stored purchase factors, which
the user may override." Id. at 16.
We are not persuaded by Appellant's argument. Claim 1 recites that
the determination of which linked account to use is made by the customer
"in advance at the time the relationship presentment card is linked and
without a determination at any time of customer-preferred benefits or
customer-ranked preferred benefits." The Examiner relies on Akella for
teaching or suggesting this portion of the claim. Final Act. 13 ( citing Akella
Abstract, ,r,r 3 7-3 8, 41 ). Specifically, the Examiner relies on Akella' s
disclosure that when registering a card, the consumer can "rank the most
important factors in credit, debit, phone, and discount card usage." Ans. 13
(citing Akella ,r 37) (emphasis added). Appellant acknowledges that Akella
discloses "select[ing] a card for purchase based on the stored purchase
factors." App. Br. 16; see also id. at 17. Akella also provides numerous
examples of those factors. E.g., Akella ,r,r 38-39. Although some of
Akella's factors may be determined at the time of purchase, such as interest
rates or available credit, Akella also discloses "[ o ]ther factors" may instead
be tied to "the type of financial transaction." For example, "a first
debit/credit card is selected at a particular retailer ( e.g., AMEX card at
COSTCO), and a second debit/credit card is selected at a cash disbursement
machine." Id. ,r 39.
Similarly, in the present application, the Specification gives an
example of "pre-defined parameters, such as where the transaction
occurred." Spec. ,r 14 (emphasis added). For example, "transactions at a
particular retail department store" should "post to the customer's account
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with the particular store." Id. ,r 20. This is substantially similar to Akella's
disclosure of using a particular card ("AMEX") at a particular store
("COSTCO"). Thus, Akella teaches or suggests this limitation.
Accordingly, we sustain the Examiner's rejection under§ 103 of
claim 1, and claims 3-8, 10, 11, 15, and 17, which Appellant argues are
patentable for similar reasons. See App. Br. 18; 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 3-8, 10, 11, 15, and 17 under§ 103, but reverse the Examiner's
decision rejecting claims 1, 3-8, 10, 11, 15, and 17 under § 101.
Because we affirm at least one rejection for every appealed claim, we
designate this Decision as an affirmance.
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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