Ex Parte Mason

Patent Trial and Appeal Board

Nov 27, 2017

12956717 (P.T.A.B. Nov. 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.
12/956,717 11/30/2010 Timothy Edward Mason 10-353 (1592.147US1) 9856
107681 7590 11/29/2017
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
EXAMINER
AN, IG TAI
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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):
PTOMail.Law @ ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY EDWARD MASON
Appeal 2016-002580
Application 12/956,717
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Timothy Edward Mason (Appellant) seeks review under
35 U.S.C. § 134 of a final rejection of claims 1-10, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 13, 2015) and Reply Brief (“Reply Br.,” filed January 4,
2016), and the Examiner’s Answer (“Ans.,” mailed November 4, 2015), and
Final Action (“Final Act.,” mailed January 8, 2015).
Appeal 2016-002580
Application 12/956,717
The Appellant invented a method for registration and processing of
secure credit card transactions. Specification para. 6.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A processor-implemented method programmed in a non-
transitory processor-readable medium and to execute on one or
more processors configured to execute the method, comprising:
[1] detecting, by the one or more processors and during a
purchasing transaction,
a credit card being used by a consumer
first as a loyalty card to identify the consumer
and
second for the purchasing transaction at a Point-
of-Sale (POS) device;
[2] asking, via the one or more processors, the consumer to
register the credit card for security protection
by entering a consumer-defined personal identification
number (PIN) at the POS device
after identifying the consumer
and
before the purchasing transaction;
[3] registering, via the one or more processors, the PIN with the
credit card of the consumer at the POS device;
and
[4] in response to the consumer using the credit card as a
loyalty card at a subsequent transaction,
requesting, via the one or more processors, the consumer
enter the PIN to complete the subsequent transaction,
2
Appeal 2016-002580
Application 12/956,717
wherein the subsequent transaction would not otherwise
require a PIN for use of the credit card.
The Examiner relies upon the following prior art:
Wetmore US 2004/0103037 A1 May 27, 2004
Courtion US 2005/0080672 A1 Apr. 14, 2005
Mages WO 2009/111795 A1 Sept. 11, 2009
Claims 1-10 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Mages, Wetmore, and Courtion.
ISSUES
The issues of eligible subject matter turn primarily on whether the
Examiner made a prima facie case.
The issues of obviousness turn primarily on whether the art applied
describes the final limitation of claim 1.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
3
Appeal 2016-002580
Application 12/956,717
Facts Related to the Prior Art
Mages
01. Mages is directed to authenticated secure credit card electronic
transactions. Mages para. 1.
02. Mages describes credit transactions that sometimes use and
sometimes do not use a physical token such as a card. Mages
para. 4.
03. Mages describes registering a credit card in order to conduct
secured transactions. The system includes a verified transaction
card (such as a bank ATM card) having a Personal Identification
Number (PIN), thereby linking it to a user’s identity, as well as
one or more credit cards that will be registered based on the
verified transaction card. A secure transaction terminal is used for
retrieving information stored on the transaction card and the credit
cards. In order to register the credit cards, information is retrieved
from the verified transaction card using the secure transaction
terminal. The PIN associated with the verified transaction card is
then input by the user. Information from each of the credit cards
is associated with the entity which issues the verified transaction
card, and associated with the PIN. All of this information is
subsequently stored on the authentication server, so that the PIN
must be input in order to authenticate transactions with the credit
card. Mages para. 13.
04. Mages describes a consumer being required to authenticate the
transaction by entering a PIN associated with the credit card on
4
Appeal 2016-002580
Application 12/956,717
the secure transaction terminal. The PIN entered is used to
authenticate the user’s identity and the credit card based on a pre-
established relationship with the user’s bank account.
Accordingly, it is necessary for the consumer to take appropriate
steps to register and establish a link to the credit card. The
consumer can establish this link at the checkout location or point
of sale (POS). While the illustrated embodiment of the invention
discusses registration of a credit card, it should be noted that any
type of financial transaction card can be used. For example, a
store issued charge card, generic currency charge card, chain store
charge card, currency transaction card, etc. Mages para. 33.
Wetmore
05. Wetmore is directed to organizing product information online
based on retail store purchases of the associated products.
Wetmore para. 1.
06. Wetmore describes a point-of-sale terminal printing out a
personal identification number (PIN) to access an automatically
generated account. The PIN may be generated by the server or the
point-of-sale terminal. Wetmore para. 29.
Courtion
07. Courtion is directed to promotional programs. Courtion para. 2.
08. Courtion describes a system for rewarding the loyalty of a
payment cardholder. The system comprises a dual card for
facilitating credit transactions associated with a credit account and
5
Appeal 2016-002580
Application 12/956,717
further facilitating stored value transactions associated with a
stored value account. The system further comprises a computer-
implemented loyalty program for calculating a loyalty value based
on the credit transactions of the dual card, the loyalty value being
used to load the stored value account of the dual card. Courtion
para. 12.
ANALYSIS
Claims 1—10 rejected under 35 U.S.C. §101 as directed to non—statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] 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.”
Alice Corp., Pty. Ltd. v CLSBanklnt’l., 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
6
Appeal 2016-002580
Application 12/956,717
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds that
the claims are directed to detecting a transaction, asking a customer to
register, registering a credit card with a PIN, and requesting the customer to
enter the PIN to complete the transaction. Final Act. 3.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
Although the preamble to claim 1 does not recite what it is directed to,
the steps in claim 1 mirror the Examiner’s findings. The Specification at
paragraph 6 recites that the invention relates to registration and processing of
secure credit card transactions. This evidence shows that claim 1 is directed
to registration and processing of secure credit card transactions, i.e., securing
financial transactions.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
securing financial transactions is a fundamental business practice long
prevalent in our system of commerce. The use of securing financial
transactions is also a building block of debt based financing. Thus, securing
financial transactions, like hedging, is an “abstract idea” beyond the scope of
§101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
7
Appeal 2016-002580
Application 12/956,717
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of securing
financial transactions at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2357.
Further, the claims are directed to the formation of financial
transactions in a particular field (i.e., retail shopping) and data collection
related to such transactions and are not directed to a new type of card, point
of sale device, or database, and so are directed to an abstract idea.
The Asserted Claims are directed to the formation of financial
transactions in a particular field (i.e., mass transit) and data
collection related to such transactions. The Asserted Claims are
not directed to a new type of bankcard, turnstile, or database,
nor do the claims provide a method for processing data that
improves existing technological processes. Rather, the claims
are directed to the collection, storage, and recognition of data.
We have determined that claims directed to the collection,
storage, and recognition of data are directed to an abstract idea.
Smart Systems Innovations, LLCv. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017).
The remaining claims merely describe parameters and generic
equipment applied to claim 1. We conclude that the claims at issue are
directed to a patent-ineligible concept.
8
Appeal 2016-002580
Application 12/956,717
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to detect, request, and register data amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
9
Appeal 2016-002580
Application 12/956,717
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of securing financial transactions as performed by
a generic computer. To be sure, the claims recite doing so by advising one
to register a PIN with a card and use that PIN when using the card in a
loyalty program. But this is no more than abstract conceptual advice on the
parameters for such securing financial transactions and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 12 pages of Specification do
not bulge with disclosure but only spell out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of securing
financial transactions under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of securing financial transactions using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that the Examiner
failed to specifically identify an abstract idea that the claims are allegedly
10
Appeal 2016-002580
Application 12/956,717
directed to. App. Br. 5-6. Appellant contends the Examiner failed to
present a prima facie case rather than provide reasons the claims are directed
to something non-abstract. The Examiner made findings as to what the
claims are directed to and analogized them to financial claims found to be
non-eligible by our reviewing court. Final Act. 3. As this is a question of
law, the Examiner presented sufficient findings for a prima facie case. In the
absence of substantive rather than procedural arguments rebutting the
characterization of the claims as directed to an abstract idea, we are given
nothing to consider once the determination that a prima facie case is present
is made.
We are not persuaded by Appellant’s argument that
Under the proffered standard, every claim is abstract if that is
the Examiner's opinion. Such conclusory reasoning, however,
denies any Applicant a full and fair opportunity to respond
because there is no basis for the statement other than the
Examiner’s opinion. Thus, the proffered reasoning is the
definition of arbitrary and capricious, requiring reversal.
Reply Br. 2-3. First, Appellant had a full and fair opportunity to respond in
the Appeal Brief, and chose to do so only on a procedural basis. Second, the
basis is not only that of opinion, but also that of the financial industry, which
is known to secure transactions, even with PINs. Appellant does not dispute
this. Third, Appellant did not present any substantive reason why the
Examiner’s findings are erroneous, in particular, why what the Examiner
finds the claims directed to is non-abstract. Absent any substantive reason
to find the Examiner’s findings erroneous, we will not inquire further as
Appellant has waived this argument aside from the lack of prima facie case
argument. Finally, we add that we cannot find any support for such an
11
Appeal 2016-002580
Application 12/956,717
argument, had one been made, in either the Specification or the Summary of
Claimed Subject Matter in the Appeal Brief. Appellant follows a recent
pattern of omitting a benefits of the invention section in the Specification, so
there is no discussion of concrete results and benefits from the invention.
We are not persuaded by Appellant’s argument that the Examiner
failed to recognize limitations in the claims that add “significantly more” to
the abstract idea that is being alleged. App. Br. 5-6. Appellant makes this
contention without any further argument. In the absence of substantive
rather than conclusory arguments rebutting the characterization of the claims
as including more than an abstract idea, we are given nothing to consider
once the determination that a prima facie case is present is made.
We are not persuaded by Appellant’s argument that
the Examiner's allegations that there is simply a generic
computer to implement the abstract idea completely fails to
grasp that such a loyalty card and PIN system present in the
instant claims are tied to technology. That is, in contrast to the
issues of Bilski and Alice, people do not practice the recited
techniques in the absence of computerized point-of-sale
machines and the like.
Reply Br. 3. Using a POS terminal to process a transaction is done only for
its generic intended purpose. See In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 612-613 (Fed. Cir. 2016). (Using a generic
telephone for its intended purpose was a well-established “basic concept”
sufficient to fall under Alice step 1.)
We are not persuaded by Appellant’s argument that “had the
Examiner considered the claims as a whole, as mandated by the courts and
12
Appeal 2016-002580
Application 12/956,717
the Office's guidance, the Examiner should have concluded, as the Federal
Circuit did in DDR Holdings, that the present claims are patent eligible.”
Reply Br. 4. The Examiner’s analysis shows that the Examiner did consider
the claims as a whole. Appellant offers no substantive rebuttal, but only a
conclusory argument, and so offers us nothing to respond to.
Claims 1—10 rejected under 35 U.S.C. § 103(a) as unpatentable over Mages,
Wetmore, and Courtion
We are persuaded by Appellant’s argument that “the instant claims
require the use of a PIN when the credit card is used as a loyalty card, even
if using the credit card would not require a PIN.” App. Br. 5. The limitation
at issue is
in response to the consumer using the credit card as a loyalty
card at a subsequent transaction, requesting, via the one or more
processors, the consumer enter the PIN to complete the
subsequent transaction, wherein the subsequent transaction
would not otherwise require a PIN for use of the credit card.
Claim 1. This requires that the process request a PIN when the card is used
as a loyalty card, but not otherwise be required. As Appellant contends,
Mages always requires the PIN.
The Examiner responds that “this limitation is interpreted as a
negative limitation, and the claim is satisfied as long as the customer is
requested to enter PIN to complete subsequent transactions no matter even if
the PIN for use of credit card is not required.” Ans. 17. This construction is
clearly erroneous in light of the explicit limitation “the subsequent
transaction would not otherwise require a PIN for use of the credit card.”
Id.
13
Appeal 2016-002580
Application 12/956,717
Presumably, the Examiner is focusing on the fact that the first part of
the limitation at issue uses the verb “requesting” and the second part uses the
verb “require.” Although it might be that a reference that requests but does
not require a PIN would read on such phrasing, the Examiner does not make
a finding that the art applied does so, or a reason for doing so.
CONCLUSIONS OF LAW
The rejection of claims 1-10 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1-10 under 35 U.S.C. § 103(a) as unpatentable
over Mages, Wetmore, and Courtion is improper.
DECISION
The rejection of claims 1-10 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
14