Ex Parte Kapur et al

Patent Trial and Appeal Board

Feb 27, 2017

12547783 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/547,783 08/26/2009 Shashi Kapur A258 1030.1 5906
118311 7590 03/01/2017
Toering Patents PLLC
1602 Village Market Boulevard
Suite 220
Leesburg, VA 20175
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
rick @ toeringpatents .com
admin@toeringpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHASHI KAPUR and GARY PALMER
Appeal 2014-0082751
Application 12/547,7832
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Feb. 26, 2014), Reply Brief (“Reply Br., filed July 28,
2014), and Specification (“Spec.,” filed Aug. 26, 2009), and to the
Examiner’s Answer (“Ans.,” mailed May 27, 2014) and Final Action (“Final
Act.,” mailed Feb. 26, 2013).
2 According to the Appellants, the real party in interest is Adaptive
Payments, Inc. Appeal Br. 3.
Appeal 2014-008275
Application 12/547,783
STATEMENT OF THE CASE
The Appellants’ invention “relates to processing recurring payment
transactions using an Interactive Voice Response system combined with a
Hardware Security Module to prompt for, retrieve, and encrypt a Personal
Identification Number for secure payment transactions.” Spec. 12.
Claims 1 and 11 are the independent claims on appeal. Claim 1
(Appeal Br., Claims App) is illustrative of the subject matter on appeal and
is reproduced below (bracketing and paragraphing added for reference):
1. A method of authenticating a recurring payment
transaction, comprising:
[(a)] retrieving account information, by one or more
processors of an adaptive payment server, the account
information comprising a payment date and an identification of
a communication device of a payor;
[(b)] initiating, by the adaptive payment server, a
communication to the identified communication device on or
before the payment date;
[(c)] communicating, by the adaptive payment server to
the communication device, at least a portion of the account
information, an indication that the recurring payment transaction
is to be made on or before the payment date, and a request to
provide approval information that is used to authenticate the
recurring payment transaction;
[(d)] receiving, by the adaptive payment server from the
communication device, the approval information;
[(e)] determining, by the adaptive payment server, whether
to initiate payment of the recurring payment transaction using the
approval information; and
[(f)] initiating, by the adaptive payment server, payment
of the recurring payment transaction based on the determination.
2
Appeal 2014-008275
Application 12/547,783
REJECTIONS
I. Claims 1—3, 9-13, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rolling (US 5,920,847, iss. July 6,
1999). Final Act. 2.
II. Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Selvarajan (US 2002/0032649 Al, pub. Mar. 14,
2002). Id. at 5.3
III. Claims 4—8 and 14—18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rolling and Hamilton (US 5,357,563, iss. Oct.
18, 1994). Id. at 6.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.4
ANALYSIS
Rejection I— Claims 1—3, 9—12, 19, and 20
Each of the independent claims 1 and 11 requires, in part, that an
adaptive payment server retrieves account information comprising a
payment date and an identification of a communication device of a payor,
3 We note the heading for the rejection includes claims 1 and 11, but the
body refers only to claim 1. Final Act. 5—6. Claims 1 and 11 recite parallel
limitations. Appeal Br. 13, 14. Thus, we consider the rejection to be
applicable to both claims 1 and 11.
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal 2014-008275
Application 12/547,783
initiating a communication to the identified device, and communicating a
portion of the account information, as indication that a recurring payment is
to made before a certain date, and a request to provide approval information,
as recited in limitations (a), (b), and (c) of claim 1. Appeal Br. 13, 14. We
agree with the Appellants that Kolling does not teach or suggest these
limitations. See Appeal Br. 8—9, Reply Br. 4—5.
The Examiner finds that service bureau S is the communication device
of the payor and biller B/Bank B is the adaptive payment server. See Final
Act. 3; Ans. 3. The Examiner further finds that
[receiving electronic invoices by the consumer from a biller
implies that in Kolling, the biller (i.e. adaptive payment server of
claim 1) retrieves account information comprising a payment
date and an identification of a communication device of a payor
and initiating a communication to the identified communication
device of a payor on or before the payment date.
Ans. 3.
Kolling discloses, as part of the background of its invention, that a
consumer C enrolls in a bill pay system whereby consumer C sends to
service bureau S a voided check and a list of billers to be paid by service
bureau S on behalf of consumer C. Kolling, col. 6,11. 63—66. Consumer C
also provides to service bureau S biller B’s information. Id. at col. 7,
11. 13—22. Service bureau S confirms with biller B the status of consumer C,
that biller B is a valid biller, and/or accurate payment routing information.
Id. at col. 6,1. 66-col. 7,1. 3. Consumer C can initiate a bill payment order
via a variety of ways, including a personal computer, an automatic teller
machine, or phone. Id. at col. 7,11. 35—48. Service bureau S receives the
instructions from consumer C to pay an amount for a bill or a set amount at
periodic intervals, i.e., a recurring payment. Id. at col. 7,11. 48—52. Service
4
Appeal 2014-008275
Application 12/547,783
bureau S then passes the funds to biller B as payment for consumer C. Id. at
col. 7,11. 53—57. Service bureau S may send a single check with a list of the
aggregated consumers’ remittances, which requires that biller B checks the
list and ensures the funds match; alternatively, biller B can refuse an
aggregated single check. Id. at col. 7,1. 58 to col. 8,1. 3. In the case of
refusal, service bureau S sends a check drawn on consumer C’s account to
biller B, who then treats it as “an exception item, since check payment is
done without including the payment coupon” that would have the account
number and amount due on it. Id. at col. 1,11. 49—53, col 8,11. 4—12.
However, we do not see how or where Kolling teaches or implies that
the biller B/Bank B retrieves identification of a device of the payor.
Although one can perhaps infer that to ensure the funds match or to process
the payment, biller B would have to somehow obtain or retrieve account
information of consumer C, it is not clear that biller B/Bank B retrieves the
information of a payment date and identification of a communication device
of the payor, identified by the Examiner as service bureau S (Final Act. 3).
It also follows that because it is not clear that Kolling discloses retrieving
identification of a device, Kolling also does not disclose initiating a
communication to the identified device. Further, although Kolling discloses
that biller B confirms the status of consumer C and payment routing
information, we do not see how or where Kolling discloses that biller
B/Bank B communicates to the communication device of service bureau S
an indication that payment is to be made before the payment date and a
request to provide approval information. Rather, as discussed above,
Kolling discloses that service bureau S communicates a request to provide
approval information to the adaptive server, biller B. Thus, we find
5
Appeal 2014-008275
Application 12/547,783
persuasive the Appellants’ argument that Kolling does not teach or suggest
that the adaptive server, biller B/Bank B, performs at the elements as recited
in limitations (a), (b), and (c) of claim 1. See Appeal Br. 8.
Based on the foregoing, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) over Kolling of independent claims 1 and 11, and
also dependent claims 2, 3, 9, 10, 12, 13, 19, and 20.
Rejection II— Claims 1 and 11
Each of the independent claims 1 and 11 requires, in part, that an
adaptive payment server retrieves account information comprising an
identification of a communication device of a payor and initiating a
communication to the identified device on or before the payment date, as
recited in limitations (a) and (b) of claim 1. Appeal Br. 13, 14. We agree
with the Appellants that Selvarajan does not teach or disclose these
limitations. See Appeal Br. 10.
The Examiner finds that Selvarajan discloses these limitations at
paragraphs 22 and 57 through 65. Final Act. 5, Ans. 5—6. The Examiner
also finds that Selvarajan’s service provider meets the claimed adaptive
payment server. See Final Act. 5, Ans. 5—6.
Selvarajan discloses that a request from an e-commerce site triggers a
recurring payment that is completed by a service provider based on stored
information “including the merchant account, payment frequency, time
period for recurrence etc.” Selvarajan 122. A user communicates with the
service provider and registers by providing bank account or credit card
information that is sufficient to authorize a transaction. Id. 157. The user
may configure the service provider’s downloaded service client for
notifications, confirmations, and recurring payments. Id. 1 58. For
6
Appeal 2014-008275
Application 12/547,783
notifications, the service provider notifies the user of a request by an e-
commerce site. Id. 159. For confirmations, the service provider notifies the
user of the request by an e-commerce site and requests confirmation from
the user of the user’s participation in the transaction. Id. | 60. For recurring
payments, the user specifies information, “for example, a merchant
identifier, a merchant account, a payment frequency, a payment amount and
a validity period,” to complete a recurring payment. Id. 1 63.
We find persuasive the Appellants’ argument that Selvarajan does not
teach or suggest the adaptive payment server retrieving identification of a
communication device of a payor and initiating a communication to that
identified device. Appeal Br. 10. We do not see, and the Examiner does not
adequately explain, how or where Selvarajan teaches or implies that the
service provider retrieves identification of a device of the payor, i.e., the
user. Although Selvarajan discloses notifying the user by a variety of ways
and via a communication device, Selvarajan does not disclose retrieving
information regarding an identification of a device of the user, and initiating
notifications to that identified device.
Based on the foregoing, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) over Selvarajan of independent claims 1 and 11.
Rejection III— Claims 4—8 and 12—18
The Examiner’s rejection of claims 4—8 and 12—18 under 35 U.S.C.
§ 103(a) as unpatentable over Kolling and Hamilton depends on the same
inadequate findings regarding Kolling. See Final Act. 6. Hamilton does not
cure these deficiencies. Thus, for the same reasons we do not sustain the
Examiner’s rejection of claims 1 and 11 as unpatentable over Kolling, we
7
Appeal 2014-008275
Application 12/547,783
also do not sustain the rejection of claims 4—8 and 12—18 under 35 U.S.C.
§ 103(a) as unpatentable over Kolling and Hamilton.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We find the claims are ineligible for patent protection because they
are directed to a non-statutory abstract idea.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347 (2014) identified a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101. We analyze the claims using the two part analysis: 1) determine
whether the claims are directed to an abstract idea; and 2) if an abstract idea
is present in the claims, determine whether any element, or combination of
elements, in the claims is sufficient to ensure the claims amount to
significantly more than the abstract idea itself to transform the claims into a
patent-eligible invention. See id. at 2355.
Independent claims 1 and 11 are directed to the concept of
“authenticating a recurring payment transaction.” Appeal Br. 13, 14.
Further, according to the Specification, the invention relates to processing
recurring payment transactions in a secure manner. See Spec. 12. In that
context, the claimed authenticating and processing recurring payment
transactions is a fundamental economic and conventional business practice.
Our reviewing courts have held certain fundamental economic and
conventional business practices, like verifying the validity of credit card
transactions (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
8
Appeal 2014-008275
Application 12/547,783
1366, 1370 (Fed. Cir. 2011), detecting fraud and/or misuse in a computer
environment (see FairWarningIP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1093—94 (Fed. Cir. 2016), guaranteeing transactions (see buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014), and
intermediated settlement (see Alice, 134 S. Ct. at 2356—57), as being abstract
ideas. The authenticating and processing of recurring payments of claims 1
and 11 is similar to these abstract ideas, and thus, we determine that claims 1
and 11 are directed to an abstract idea.
Under the second step of the analysis, we find neither independent
claims 1 and 11, nor dependent claims 2—10 and 12—20, have any additional
elements that, taken alone or as an ordered combination, amount to
significantly more to transform the abstract idea of authenticating and
processing recurring payments. Independent claim 1 and dependent claims
2—10 recite a method of retrieving information, initiating a communication,
communicating information, receiving approval information, determining
whether to initiate payment, and initiating payment. Although the steps are
performed by a server and comprise communicating with another device,
any general purpose computer available at the time the application was filed
would have been able to perform these functions. The Specification
supports that view. See Spec. ]Hf 23, 29 and Fig. 1. Independent apparatus
claims 11—20 recite a system comprising a server, i.e., a general computer, to
perform the functions of the method of claim 1. The introduction of a
computer to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357—58. The computer implementation
here is purely conventional and performs basic functions. See id. at 2359-
60. The claims do not purport to improve the functioning of the computer
9
Appeal 2014-008275
Application 12/547,783
itself, nor do they effect an improvement in any other technology or
technical field. See id. at 2359.
Thus, under the two-part analysis, we find that claims 1 and 11 are
directed to subject matter that is judicially-excepted from patent eligibility
under §101. The dependent claims describe various versions of
communications, information, and the conventional function of encrypting
(see Spec. 151) that do little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1—20 under
35U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—3, 9-13, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Kolling is REVERSED.
The Examiner’s rejection of claims 1 and 11 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Selvarajan is REVERSED.
The Examiner’s rejection of claims 4—8 and 14—18 under 35 U.S.C.
§ 103(a) as being unpatentable over Kolling and Hamilton is REVERSED.
A NEW GROUND OF REJECTION has been entered for claims
1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
10
Appeal 2014-008275
Application 12/547,783
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED: 37 C.F.R, $ 41.50(b)
11