Ex Parte Killian et alDownload PDFPatent Trial and Appeal BoardNov 3, 201713864557 (P.T.A.B. Nov. 3, 2017) Copy Citation 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. 13/864,557 04/17/2013 Patrick Killian P00641-US-CONT 1007 (M01.187C) 125619 7590 11/07/2017 MasterCard International Incorporated c/o Buckley, Maschoff & Talwalkar LLC 50 Locust Avenue New Canaan, CT 06840 EXAMINER HAMILTON, SARA CHANDLER ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 11/07/2017 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): martin @ bmtpatent. com szpara@bmtpatent.com colabella@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK KILLIAN and SANDEEP MALHOTRA Appeal 2016-001483 Application 13/864,557 Technology Center 3600 Before HUBERT C. LORIN, AMEE A. SHAH, and MATTHEW S. MEYERS, Administrative Patent Judges SHAH, Administrative Patent Judge. DECISION ON APPEAL1 The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—12 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this Opinion, we refer to the Appellants’ Appeal Brief (“Appeal Br.,” filed July 7, 2015), Reply Brief (“Reply Br.,” filed Nov. 17, 2015), and Specification (“Spec.,” filed Apr. 17, 2013), and to the Examiner’s Answer (“Ans.,” mailed Sept. 22, 2015) and Final Office Action (“Final Act.,” mailed Mar. 10, 2015). 2 According to the Appellants, the real party in interest is “MASTERCARD INTERNATIONAL INCORPORATED.” Appeal Br. 2. 3 The Examiner’s double patenting rejection has been withdrawn. Ans. 2. Appeal 2016-001483 Application 13/864,557 STATEMENT OF THE CASE The Appellants’ invention “generally relate[s] to payment systems,” and more specifically to “methods, apparatus, systems, means and computer program products for an automatic-loading transaction payment system for consumers based on a virtual wallet account that includes automatic-loading features.” Spec. 1,11. 10-13. Claims 1 and 8 are the independent claims on appeal. Claim 1 (Appeal Br. 15 (Claims App.)) is illustrative of the subject matter on appeal, and is reproduced below: 1. A method comprising: receiving, by a virtual wallet server from an originating payment service provider (PSP) computer, a peer to peer purchase authorization request that comprises a virtual wallet account number of a consumer and purchase transaction details; mapping, by the virtual wallet server, the virtual wallet account number to at least one funding account associated with the consumer; validating, by the virtual wallet server, the consumer; applying issuer-defined business rules to the purchase transaction details; determining that the issuer-defined rules are satisfied; generating, by the virtual wallet server, a standard purchase authorization request message containing the purchase transaction details and routing the standard purchase authorization request message to a first payment network authorization system for routing to at least one issuer computer of the at least one funding account; receiving, at the virtual wallet server acting as an original acquirer proxy, an authorization response from the first payment network authorization system approving the payment transaction; 2 Appeal 2016-001483 Application 13/864,557 loading, by the virtual wallet server, the consumer's virtual wallet account in real time to match the payment amount; and transmitting, by the virtual wallet server to a second payment authorization network, the payment authorization response for routing to a receiving financial institution computer. ANALYSIS Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78—79 (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, 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. (citing Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether the additional elements “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to “search for an ‘inventive concept’—i.e., an element or combination of elements that is 3 Appeal 2016-001483 Application 13/864,557 ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting Mayo, 566 U.S. at 72—73). 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. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea, and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Initially, we find unpersuasive the Appellants’ argument that the Examiner’s rejection is in error because “the Examiner has failed to establish a prima facie case that the claims are directed to an abstract idea.” Appeal Br. 8 (emphasis omitted); see also id. at 9, Reply Br. 2-4. In rejecting the pending claims under § 101, the Examiner analyzes the claims using the Mayo/Alice two-step framework. Specifically, the Examiner looks to the language of the claims and notifies the Appellants that claims 1—12 are directed to the abstract idea of “automatically loading a virtual wallet account[,] ... a fundamental economic practice and method for organizing human activity.” Final Act. 7; see also Ans. 3. The Examiner further finds that the additional elements of the claims, taken alone and as an ordered combination, do not transform the abstract idea into a patent eligible invention, because they amount to no more than “mere instructions to implement the idea on a computer” (Final Act. 7), and are “generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry” performed by generic computer 4 Appeal 2016-001483 Application 13/864,557 structure (id.). The Examiner, thus, set forth sufficient reasons in properly setting forth a rejection of the claims under § 101 such that the burden shifted to Appellants to explain why the claims are patent-eligible. Further, we are aware of no controlling authority that requires the Office to provide factual evidence to support a finding that a claim is directed to an abstract idea. See para. IV of the July 2015 Update: Subject Matter Eligibility (“Update”) to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014). The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of lawf Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings. Update 6 (emphases added). Nor, contrary to Appellants’ suggestion (see Appeal Br. 8—9), did this Board hold, in Ex parte Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), that there is any such requirement.4 There is also no specific requirement that “requires that each claim be examined individually” by the Examiner (Reply Br. 4) in determining that the claims are directed to an abstract idea. See Alice, 134 S. Ct. at 2355—57. We note that the guidelines are not legal requirements. Cf In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this court’”) (internal citations omitted); MPEP, Foreword (“The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations”); and 2014 IEG at 74619 (“This Interim 4 We would not be bound, in any event, by a non-precedential decision of a different panel of the Board. 5 Appeal 2016-001483 Application 13/864,557 Eligibility Guidance does not constitute substantive rulemaking and does not have the force and effect of law . . . and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office”). Instead, the Federal Circuit has repeatedly noted that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. Id.\ see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when [the] rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection”). As discussed above, the Examiner has done so. We note that the Examiner relies on the same findings and reasoning for the rejection of independent claims 1 and 8 to reject dependent claims 2—7 and 9-12. Ans. 7, 8. Turning to the first step of the Alice framework, we find supported and adopt the Examiner’s finding that the claims are directed to automatically loading a virtual wallet account, without any inventive 6 Appeal 2016-001483 Application 13/864,557 technology. See Final Act. 7; see also Ans. 3^4. In this manner, the claims are similar to those found to be abstract ideas in Smart Sys. Innovations, LLC v. Chicago Transit Auth., No. 2016-1233, 2017 WL 4654964, at *5—6 (Fed. Cir. Oct. 18, 2017) (claims covering “paying for a subway or bus ride with a credit card” were directed to “formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions”) (internal quotations and citation omitted), CyberSource Corp. v Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“verifying the validity of credit card transactions over the Internet”), Smartflash LLC v. Apple Inc., 680 Fed.Appx. 977, 982—83 (Fed. Cir. 2017) (“conditioning and controlling access to data based on payment”), Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (“tracking financial transactions to determine whether they exceed a pre-set spending limit”). We disagree with the Appellants’ contention that the claims are directed to “a peer to peer transaction process wherein a single virtual wallet account can be used to fund payments to a receiver from multiple payment networks and/or from multiple payment service provider (PSP) accounts.” Appeal Br. 10. The Specification provides that the invention is directed to payment systems, particularly to automatically loading a virtual wallet. Spec. 1,11. 10-13. Independent claims 1 and 8 recite limitations for receiving data of an authorization request comprising account and transaction data, mapping the account data, validating the consumer, applying rules to the transaction data, determining if the rules are satisfied, generating data of an authorization message, receiving, via proxy, a response approving the transaction, loading the virtual wallet, and transmitting the 7 Appeal 2016-001483 Application 13/864,557 response. Appeal Br. 15, 17 (Claims App.). The claims do not recite multiple payment networks and/or multiple PSP accounts, the use of such networks or accounts, or a technical aspect of peer-to-peer interactions. Further, assuming arguendo that the claims are directed to a peer-to-peer process for using a virtual wallet, a process for using a virtual wallet is still an abstract idea of a fundamental economic practice and method of organizing human activity, similar to verifying on-line credit transactions (see CyberSource) and tracking financial transactions (see Intellectual Ventures I). We also disagree with the Appellants’ contention that the claims are not directed to an abstract idea because they are “necessarily rooted in payment card system technology, and solve[] the technological problem of how to avoid requiring a consumer to register funding account credentials with multiple decoupled debit payment service providers (PSPs) in order to utilize his or her virtual wallet accounts.” Appeal Br. 11. The Specification provides that the invention provides business and consumer benefits of decreasing risk of identity theft and fraud by (Spec. 3,11. 22—24, 4,11. 14—18, 5,11. 13—14), increasing the consumer’s utility of funds (id. at 3,1. 31— 4,1. 1), increasing “consumer convenience value” (id. at 4,11. 1—3), increasing “utility and convenience value to the consumer” (id. at 4,11. 6—8), reducing payment risk (id. at 4,11. 19—27, 5,11. 7—8), and decreasing “consumer dissatisfaction concerning charge reversals and credits” (id. at 4, 11. 28—5,1. 8). Requiring a user to register credential with multiple parties in order to utilize a wallet and decrease the potential risk of identity theft (id.) is not a technical solution to technological problems, but a business solution relating to business problems regarding customer convenience. The claims 8 Appeal 2016-001483 Application 13/864,557 do not address problems specifically arising from computer network technology, but rather generally and broadly recite limitations using a network and a server operating in their normal capacities. See DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014) (citing Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014)); see also FairWarningIP, LLVv. Iatric Systems, Inc., 839 F.3d 1089, 1094— 95 (Fed. Cir. 2016) (claims directed to collecting and analyzing information to detect misuse merely implement an old practice in a new environment). Turning to the second step of the Alice framework, we disagree with the Appellants’ contention that the claims are directed to patent-eligible subject matter because the claims include elements that, “taken as a whole, not only improve the functioning of the virtual wallet server, but also provide an improved peer to peer transaction process that beneficially permits consumers to utilize decoupled debit payment service provider (PSP) accounts with low or zero balances to make peer to peer transactions.” Appeal Br. 11. We find supported the Examiner’s findings that the steps and functions of the claims, considered individually and as an ordered combination, are routine, conventional, well-understood functions of a generic computer, do not improve another technology or technical field, and do not improve the computer itself. See Ans. 5—6, Final Act. 8. The Specification supports this view. See Spec. 6,1 26—7,1. 2 (discussing a generic consumer device), 6,11. 20—23 (discussing a generic wallet server and website), 9,11. 16—25 (discussing generic servers, computers, device, and network for the system). The Appellants do not provide adequate evidence that the functions are not routine, well-understood, and 9 Appeal 2016-001483 Application 13/864,557 conventional to a generic computer, that the wallet server itself is technologically improved (as opposed to being programmed to perform other functions), or that peer-to-peer technology is improved. There is no further specification of particular technology for performing the steps. See Affinity Labs of Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on whether the claim is “an improvement to [the] computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”). The computer implementation here is purely conventional and performs basic functions. See Alice, 134 S. Ct. at 2359-60. As the Examiner noted (Ans. 6—7), a general purpose computer programmed to perform conventional functions does not amount to an inventive concept such that the claims are significantly more than the abstract idea. See EON Corp. IP Holdings LLC v. AT & TMobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer- implemented functions require disclosure of an algorithm”), and Alice, 134 S. Ct. at 2357—60 (applying an abstract idea, such as an algorithm, on a general purpose computer is not enough to transform a patent-ineligible abstract idea into a patent-eligible invention). We find unpersuasive the Appellants’ argument that the claims are significantly more than an abstract idea because there are no prior art rejections and are, thus, novel and unobvious over the prior art. Appeal Br. 12. Although the Examiner did not reject the claims under 35 U.S.C. §§ 102 or 103, the Examiner specifically did not indicate allowable subject matter. Ans. 8, Final Act. 9. Moreover, an abstract idea does not transform 10 Appeal 2016-001483 Application 13/864,557 into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 91. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Myriad, 133 S. Ct. at 2117. Indeed, “[t]he ‘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); see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). We are also not persuaded by the Appellants’ argument that the pending claims are not an abstract idea because the claims do not “tie up all applications for ‘automatically loading a virtual wallet account’ such that others cannot practice them.” Appeal Br. 13; see also id. at 12. Although the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter,] as one of pre-emption” {see Alice, 134 S. Ct. at 2354), characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption 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 “[f]or 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, 134 S. Ct. at 2354). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. 11 Appeal 2016-001483 Application 13/864,557 Thus, we are not persuaded of Examiner error in rejecting claims 1—12 under 35 U.S.C. § 101, and we sustain the Examiner’s rejection. DECISION The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 101 is AFFIRMED. 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 12 Copy with citationCopy as parenthetical citation