Ex Parte Mathew

Patent Trials and Appeals Board

May 28, 2019

14166115 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/166,115 01/28/2014
125619 7590 05/30/2019
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust A venue
New Canaan, CT 06840
FIRST NAMED INVENTOR
Bejoy Mathew
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.
P01394-US-UTIL
(MOl.267)
4770
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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 BEJOY MATHEW
Appeal 2018-003454
Application 14/166, 115 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 9-14, 16-21, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 8 and 15
have been cancelled.
We AFFIRM.
1 According to Appellant, the real party in interest is MASTERCARD
INTERNATIONAL IN CORPORA TED (App. Br. 2).
Appeal2018-003454
Application 14/166, 115
CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to systems and
methods "to facilitate consideration of assets other than a customer's current
cash and available credit amounts" for a purchase (Spec. 3 :2-15). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method, comprising:
providing an asset confirmation platform including a
business rules and logic database;
determining a purchase cannot be completed based on the
cash and credit funds provided by a customer to a remote
merchant device, where the cash and credit is only enough to
partially pay for the purchase;
receiving, at the asset confirmation platform, transaction
information about the purchase being made by the customer
directly from the remote merchant device;
triggering the asset confirmation platform to automatically
determine a monetary value of at least one asset owned by the
customer in response to the received transaction information;
determining at least one business rule or logic, by the asset
confirmation platform, to apply to the determined monetary
value of the at least one asset;
applying, via a computer processor of the asset
confirmation platform, the determined at least one business rule
or logic to the determined monetary value of the at least one asset
owned by the customer;
determining whether the monetary value of the at least one
asset satisfies the determined at least one of the one or more
business rules and logic; and
transmitting, by the asset confirmation platform at least to
the merchant, an indication associated with the monetary value
of the at least one asset to provide information on whether the
purchase can be completed additionally using said at least one
asset.
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REJECTION
Claims 1-7, 9-14, and 16-21 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter (Final Act. 3-6).
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter" (35 U.S.C. § 101).
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable (Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice (id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012))). In accordance with that
framework, we first determine what concept the claim is "directed to" (see
id. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.")).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
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determined to be patent-eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim
at issue recited a mathematical formula, but the Supreme Court held that "[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula" (Diehr, 450
U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing
more than a process for molding rubber products and not as an attempt to
patent a mathematical formula.")). Having said that, the Supreme Court also
indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, ... and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment" (id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.")).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application" (Alice, 573 U.S. at 221 ( quotation marks omitted)). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea]"' (id. (quoting Mayo, 566 U.S. at 77)).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention" (id.).
USPTOJanuary 7, 2019 Revised Section 101 Memorandum
The USPTO recently published revised guidance on the application of
§ 101 (see 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019 ("Memorandum")). Under the Memorandum
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
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ISSUE
35 US.C. § 101: Claims 1-7, 9-14, and 16-21
The Examiner concluded claims 1-7, 9-14, and 16-21 are directed to
patent-ineligible subject matter (Final Act. 3---6). Appellant argues the
invention as recited in claims 1-7, 9-14, and 16-21 is directed to patent-
eligible subject matter (App. Br. 5-11 ). Therefore, the issue presented by
the arguments is whether the Examiner erred in concluding the invention as
recited is patent-ineligible.
ANALYSIS
Appellant argues all pending claims as a group (see App. Br. 5-11).
Accordingly, we address all pending claims as a group and we select
independent claim 1 as representative of the claimed subject matter (see 37
C.F.R. § 4I.37(c)(1)(iv)(2017)).
STEP 1
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title" (35 U.S.C. § 101). We
determine that independent claim 1 recites a method, independent claim 11
recites a non-transitory computer-readable medium, and independent claim
17 recites a system. As such, the claims are directed to statutory classes of
invention within 35 U.S.C. § 101, i.e., methods, manufactures, and
machines.
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STEP 2A, Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether the claims, being directed to statutory classes of invention,
nonetheless fall within a judicial exception.
We agree with the Examiner's determination that the claims recite an
abstract idea, namely "certain methods of organizing human activity," which
include "fundamental economic practice[s]" (Final Act. 3--4).
Referring to part of the Examiner's discussion at page 3 of the Final
Office Action, Appellant argues the Examiner's determination
"overgeneraliz[ es] the claim and simplif[ ies] it into its 'gist' or core
principles" (App. Br. 8 ( emphasis omitted)).
Contrary to Appellant's argument, however, the Examiner inspected
the claims and determined the claims recite "a series of behavioral activities
including receiving data, determining monetary value, and transmitting the
monetary value, which, when viewed individually and in combination,
constitute an abstract idea of certain methods of organizing human activity"
(Final Act. 4; see Ans. 3). An inspection of the claims supports the
Examiner's determination.
For example -putting aside the computing components recited in the
claim, which we consider at a later step, e.g., "an asset confirmation
platform including a business rules and logic database," "a computer
processor of the asset confirmation platform," and a "a remote merchant
device" - claim 1 recites a process of: (1) "determining a purchase cannot
be completed based on the cash and credit funds provided by a customer to a
remote merchant device, where the cash and credit is only enough to
partially pay for the purchase," (2) "receiving ... transaction information
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about the purchase being made by the customer directly from the remote
merchant device," (3) "determin[ing] a monetary value of at least one asset
owned by the customer in response to the received transaction information,"
( 4) "determining at least one business rule or logic ... to apply to the
determined monetary value of the at least one asset," (5) "applying ... the
determined at least one business rule or logic to the determined monetary
value of the at least one asset owned by the customer," ( 6) "determining
whether the monetary value of the at least one asset satisfies the determined
at least one of the one or more business rules and logic," and (7)
"transmitting ... to the merchant, an indication associated with the monetary
value of the at least one asset to provide information on whether the
purchase can be completed additionally using said at least one asset." Those
claim limitations, under their broadest reasonable interpretations, recite a
typical process of aggregating various financial resources, i.e., things of
value, a buyer has in order to make a purchase from a seller.
For example, claim limitation (1) determines that a buyer does not
have sufficient cash and credit financial resources to make a purchase from a
seller, a typical calculation when making a purchase. Claim limitations
(2)- (4) recite a process to value additional financial resources, e.g.,
"assets" such as stocks, bonds, real estate, etc. (Spec. 6:20-27), which can
be pooled to complete the purchase; it is typical to consider all possible
funds that can be used to pay for an item. Claim limitations ( 5) - ( 6) broadly
recite a process to determine that the value of the additional resources is
adequate to fund a purchase; ensuring that a buyer has enough resources to
make a purchase after considering all potential sources of value is a typical
consideration when making a purchase. Claim limitation (7) recites a
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process which notifies the seller that the buyer has enough combined
resources to make a purchase, which is information a seller would typically
want to know before completing a sale. As such, the claims recite a
procedure to aggregate resources in order to complete a purchase and and to
gather resources to fund the purchase, which is a fundamental economic
activity (see Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1054 (Fed. Cir. 201 7) ("the abstract idea of processing an application for
financing a purchase") (citations omitted)). Accordingly, we conclude the
claims recite a fundamental economic practice, which is one method of
organizing human activity identified in the Memorandum, and thus, an
abstract idea.
STEP 2A Prong 2
Next, we determine whether the claims are directed to the abstract
concept itself or whether the claims are instead directed to some
technological implementation or application of, or improvement to, the
recited concept, i.e., integrated into a practical application (see, e.g., Alice,
573 U.S. at 223, discussing Diehr, 450 U.S. at 175).
The Examiner determines the claims do not recite an "[i]mprovement
to another technology or technical field," "[i]mprovements to the
functioning of the computer itself," the use of "a particular machine," "a
transformation or reduction of a particular article to a different state or
thing," or any"[ o ]ther meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment" (Final
Act. 4--5).
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Appellant argues "the claims are clearly focused on a specific asserted
technological improvement" and "solve[] the technical problem of limiting a
user's transaction power based on available cash and credit amounts" (App.
Br. 8-9). Appellant further argues the claims "recite specific steps to
accomplish the desired result (i.e., determine, via the asset confirmation
platform, whether a monetary value of assets other than cash and credit
satisfy a rule and increase a user's transactional power)" (Reply Br. 2-3).
We are not persuaded by Appellant's argument that the claims provide
a technological improvement or solve a technological problem (App. Br. 8-
9). As an initial matter, Appellant has not articulated any particular
technological improvement provided by the claims (see id.). Moreover,
Appellant's Specification describes that the invention solves the problem
where a
customer thinking about making a purchase from a merchant will
typically consider his or her current cash ... and an amount of
credit that is readily available . . . . If the cost of the transaction
is greater than, or even constitutes a substantially large portion
of, his or her overall cash and available credit amounts, the
customer may be unlikely to complete the transaction
(Spec. 3: 1-8). The Specification then describes that the solution to that
problem is "to facilitate consideration of assets other than a customer's
current cash and available credit amounts" (id. at 3:14--15). That is, the
Specification has described a problem in funding a purchase, and the
solution proposed by the Specification is to use additional funding sources
for the purchase. Neither the problem nor the solution is directed to
technology, rather, the problem and the solution are financial problems and
solutions----e.g., if a buyer does not have enough money to make a purchase,
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the buyer can sell some possession to then have enough money to make the
purchase.
Further, Appellant's argument that the claims recite technology-
improving subject matter similar to the subject matter found patent-eligible
in Trading Techs. Int'!, Inc. v. CQG, INC (675 F. App'x 1001, 1004 (Fed.
Cir. 2017)) is unpersuasive (Reply Br. 2). In Trading Techs., the Federal
Circuit found that "the claimed graphical user interface method imparts a
specific functionality to a trading system" and therefore was "directed to a
specific improvement to the way computers operate" (Trading Techs. 675 F.
App'x at 1006). Here, the claims are not directed to the functioning of a
graphical user interface in a trading system, or any other particular computer
function or system. Rather, as discussed above, the claims recite a process
for aggregating resources to complete a purchase.
Furthermore, contrary to Appellant's argument that the claims recite
"specific steps to accomplish the desired result" (Reply Br. 2-3 ( citing
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1303 (Fed. Cir. 2018)), the
claims are so broadly "drafted in such a result-oriented way that they
amounted to encompassing the 'principle in the abstract' no matter how
implemented" (Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343
(Fed. Cir. 2018) ). For example, claim limitation (3) merely recites
"determin[ing] a monetary value of at least one asset," but does not explain
how that monetary value is actually calculated or what particular steps are
taken to calculate the monetary value. Similarly, claim limitation ( 6) merely
recites "determining whether the monetary value of the at least one asset
satisfies the determined at least one of the one or more business rules and
logic," but does not explain how the business rules and logic are satisfied
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and what particular steps are taken to determine their satisfaction. As such,
the claims fail to "embody a concrete solution to a problem having 'the
specificity required to transform a claim from one claiming only a result to
one claiming a way of achieving it"' (id. ( citing SAP Am., Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1021-22 (Fed. Cir. 2018)).
Accordingly, the claims are not directed to a specific asserted
improvement in computer technological implementation or otherwise
integrated into a practical application and thus are directed to a judicial
exception.
STEP 2B
Next, we determine whether the claims include additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept (Alice, 573 U.S. at 218-219 (quoting Mayo,
566 U.S. at 72-73)).
The Examiner determines the claims do not recite significantly more
than the abstract idea itself because "the elements involved in the recited
process undertake their roles in performance of their activities according to
their generic functionalities which are well-understood, routine and
conventional" (Final Act. 5---6).
Appellant argues "the specific ordered combination of the claimed
features is not well-known, as there are no pending other rejections except
for § 101" (App. Br. 10). Appellant further argues the Examiner "falls far
short of the required explanation of why the elements taken individually and
in combination do not amount to a claim as a whole that is significantly
more than the abstract idea" (id. ( emphasis omitted)).
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As to Appellant's argument that the ordered combination of elements
is not well-known because "there are no pending other rejections except for
§ 101" (App. Br. 10), our reviewing court has determined that it is not
enough "for subject-matter eligibility that claimed techniques be novel and
nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and
103" (SAP Am. 898 F.3d at 1163).
Furthermore, we agree with the Examiner's finding that the recited
steps are well-understood, routine, and conventional computing functions,
all performed by a generic computing device (Final Act. 5---6). For example,
the remaining claim limitations of claim 1, not reciting the fundamental
economic practice discussed above, recite a number of generic computing
components, i.e., "an asset confirmation platform including a business rules
and logic database," "a computer processor of the asset confirmation
platform," and a "a remote merchant device." The Specification confirms
that those computing elements are generic computing components. For
example, the Specification states that "the embodiments described herein
may be implemented using any number of different hardware
configurations," e.g., the "asset confirmation platform 800 comprises a
processor 810, such as one or more commercially available Central
Processing Units" (Spec. 10:3-7; see Spec. 10:9-11:16). Furthermore, the
claims recite that those generic computing components perform generic
computer functions, e.g., analyzing information to make determinations and
transmitting and receiving data. But, "[a]ppending rote conventional activity
in this way to an abstract idea does not amount to an inventive concept"
(Interval Licensing, 896 F .3d at 1348).
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Still further, when considered as an ordered combination and even
assuming some computing device performs the recited processes, the claims
only recite a conventionally ordered series of generic and conventional
computing steps. For example, claim 1 recites a series of broadly recited
information analysis processes resulting in the transmission of the result of
the analysis, as discussed above. In this particular case, the broadly claimed
sequence of information analysis and output, which focuses on the result
rather than the technical details of its implementation is generic and
conventional and is similar to language otherwise held to be abstract (see
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction)). The claimed
ordering of the steps therefore is ordinary and conventional. We thus
conclude the claims do not provide an inventive concept because the
additional elements recited in the claims do not provide significantly more
than the recited judicial exception.
Additionally, Appellant's argument that the claims "cannot reasonably
be seen to risk pre-empting the alleged abstract idea" does not persuade us
that the claims are directed to patent-eligible subject matter (App. Br. 10).
Although preemption is characterized as a driving concern for patent
eligibility, preemption itself is not the test for patent eligibility. Rather,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility" (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Where claims are deemed to recite only patent-ineligible subject matter
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under the Alice analysis, as they are here, "preemption concerns are fully
addressed and made moot" (id.).
Accordingly, the claims do not recite patent-eligible subject matter.
Appellant argues the claims as a group and so we sustain the rejection of
claims 1-7, 9-14, and 16-21 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
DECISION
The Examiner's rejection of claims 1-7, 9-14, and 16-21 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter 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.
§ 4I.50(f).
AFFIRMED
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