Ex Parte MURGAI et al

Patent Trials and Appeals Board

Apr 15, 2019

14132900 - (D) (P.T.A.B. Apr. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/132,900 12/18/2013
121629 7590
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
04/17/2019
FIRST NAMED INVENTOR
Nikhil MURGA!
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.
05793.3296-00000 1197
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/17/2019 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):
CapOne_USPTO@finnegan.com
regional-desk@finnegan.com
terri.mcmillan-solomon @finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKHIL MURGA! and LEONARD D. ROSEMAN
Appeal2017-006626 1
Application 14/132,9002
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18, 20, and 21. An oral hearing in this appeal was held
on April 4, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
April 29, 2016) and Reply Brief ("Reply Br.," filed March 17, 2017), and
the Examiner's Answer ("Ans.," mailed January 17, 2017) and Final Office
Action ("Final Act.," mailed December 3, 2015).
2 Appellants identify the real party in interest as Capital One Financial
Corporation. App. Br. 2.
Appeal2017-006626
Application 14/132,900
CLAIMED INVENTION
Appellants' claimed invention "relates to systems and methods for
performing fraud detection using a stored voice recording" (Spec. ,r 2).
Claims 1, 9, and 15 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A mobile device configured to verify potentially
fraudulent transactions, comprising:
at least one processor; and
a memory storing instructions that, when executed by the
at least one processor of the mobile device, cause the at least one
processor to perform operations comprising:
[(a)] receiving, from a server, an indication that a
payment transaction is potentially fraudulent, the payment
transaction being associated with a payment account of a
user,
[ (b)] requesting a candidate voice print from the
user based on the received indication,
[ ( c)] receiving the candidate voice print,
[(d)] comparing the candidate voice print to a
stored user voice print associated with the payment
account of the user,
[ ( e)] determining whether to verify the candidate
voice print based on the comparison, and
[(f)J providing, from the mobile device to the
server, an indication whether to approve or deny the
payment transaction based at least on the determination.
REJECTIONS
Claims 1-18, 20, and 21 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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Claims 1-18, 20, and 21 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Herz et al. (US 2009/0254971 Al, pub. Oct. 8, 2009)
("Herz") and Felger (US 2009/0048975 Al, pub. Feb. 19, 2009).
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination"'
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
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instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
US PTO SECTION 101 GUIDANCE
The U.S. Patent and Trademark Office (the "USPTO") published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101; that guidance
"extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes" the following three
groupings: (1) mathematical concepts; (2) certain methods of organizing
human activity, e.g., fundamental economic principles or practices,
commercial or legal interactions; and (3) mental processes. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52
(Jan. 7, 2019) (the "2019 Revised Guidance"). 3
Under the 2019 Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial
exception, including one of the enumerated groupings of abstract ideas
("Step 2A, Prong One"). Id. at 54. If so, we next consider whether the
claim includes additional elements, beyond the judicial exception, "that
integrate the Uudicial] exception into a practical application," i.e., that apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
3 The Revised Guidance, by its terms, applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7, 2019.
84 Fed. Reg. 50.
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limit on the judicial exception, such that the clam is more than a drafting
effort designed to monopolize the judicial exception. ("Step 2A, Prong
Two"). Id. at 54--55.
Only if the 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 "[a]dds a specific limitation or combination of
limitations" that is not "well-understood, routine, conventional activity in the
field" or simply "appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception" ("Step 2B"). Id. at 56.
With the legal principles outlined above, and the 2019 Revised
Guidance in mind, we tum to the rejections at issue.
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue the pending claims as a group (App. Br. 5-14). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "a method and system of enrolling
a voiceprint into a fraudster database" by ( 1) receiving, an indication that a
payment transaction associated with a payment account of a user is
potentially fraudulent; (2) requesting a candidate voice print from the user
based on the received indication; (3) receiving the candidate voice print;
( 4) comparing the candidate voice print to a stored user voice print
associated with the payment account of the user; ( 5) determining whether to
verify the candidate voice print based on the comparison; and ( 6) providing,
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an indication whether to approve or deny the payment transaction based at
least on the determination" - a concept that the Examiner concluded is
similar to other concepts that the courts have held abstract (Final Act. 7-8).
The Examiner also determined that the claims do not include additional
elements or a combination of elements that is sufficient to ensure that the
claims amount to significantly more than the judicial exception (id. at 8).
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
Focusing on step one of the Mayo/Alice framework, we are not
persuaded by Appellants' arguments that the Examiner erred in determining
that the claims are directed to an abstract idea (App. Br. 5-13). The Federal
Circuit has explained that "the 'directed to' inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether 'their
character as a whole is directed to excluded subject matter."' Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d at 1346). It asks whether the focus of the claims is
on a specific improvement in relevant technology or on a process that itself
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. See id. at 1335-36. Here, it is clear from the Specification, including
the claim language, that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled "SYSTEMS AND METHODS FOR
AUTHENTICATING POTENTIALLY FRAUDULENT TRANSACTIONS
USING VOICE PRINT RECOGNITION," and discloses that the disclosure
relates to "systems and methods for performing fraud detection using a
stored voice recording" (Spec. ,r 2). The Background section of the
Specification describes that account holders sometimes pay for purchases
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with payment instruments ( e.g., credit cards, debit cards, payment cards,
online payment systems, or the like) in ways that may be detected as
possibly fraudulent (id. ,r 3). For example, a second purchase in South
Korea made less than two hours after a purchase in the United States may be
tagged as fraudulent (i.e., on the theory that the purchaser could not have
traveled from the United States to South Korea in the time between the two
purchases), and denied, or alternatively held until the account holder is able
to verify that the transaction is legitimate (id.).
The Specification describes that some systems may be too zealous in
tagging transactions as fraudulent, which results in an unacceptably high rate
of false positives and frustration for legitimate users whose transactions are
prevented or delayed (id. ,r 4). "Additionally, some known solutions- such
as a call center agent manually calling the purchaser to verify the transaction
- can be cumbersome and involve high labor costs (id.). The Specification,
thus, describes that "more efficient methods and systems are needed to
enable purchasers to securely verify that a purchase is not being made
fraudulently" (id. ,r 5).
The claimed invention is intended to address this need by providing a
system and method for authenticating potentially fraudulent transactions
using voice print recognition. Claim 1, thus, recites a mobile device for
verifying potentially fraudulent transactions by (1) "receiving, from a server,
an indication that a payment transaction [ associated with a payment account
of the user] is potentially fraudulent" (step (a)); (2) "requesting a candidate
voice print from the user based on the received indication" (step (b ));
(3) "receiving the candidate voice print" (step (c)); (4) "comparing the
candidate voice print to a stored user voice print associated with the payment
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account of the user" (step (d)); (5) "determining whether to verify the
candidate voice print based on the comparison" ( step ( e) ); and
( 6) "providing, from the mobile device to the server, an indication whether
to approve or deny the payment transaction based at least on the
determination" (step (f)). These limitations, given their broadest reasonable
interpretation, recite analyzing voice print data to verify potentially
fraudulent transactions. In other words, the limitations recite a method for
preventing/detecting fraudulent activity, i.e., a fundamental economic
practice, which is a method of organizing human activity and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Fraud detection is a long-standing economic practice,
see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) ("These are the same questions (though perhaps phrased with different
words) that humans in analogous situations detecting fraud have asked for
decades, if not centuries."), and using voice print recognition to verify
potentially fraudulent transactions, as recited in claim 1, is substantially
similar to other practices that the courts have held abstract. See, e.g., id.,
839 F .3d at 1093-94 ( collecting and analyzing information, according to one
of several rules, to detect misuse and notifying a user when misuse is
detected); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011) ( detecting credit card fraud based on information relating
past transactions to a particular Internet address). Authenticating a payment
transaction based on the comparison of a candidate voice print and a stored
user voice print, i.e., "comparing the candidate voice print to a stored user
voice print associated with the payment account of the user," also is similar
to other concepts that the courts have held abstract. See, e.g., Berkheimer v.
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HP, Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (concluding that parsing,
comparing, storing, and editing data are abstract ideas); SmartGene, Inc. v.
Advanced Biological Labs., 555 F. App'x 950 (Fed. Cir. 2014) (comparing
new and stored information and using rules to identify options is an abstract
idea). That the data being compared are voice print data as opposed to
another type of data does not make the claim any less abstract. See SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
("As many cases make clear, even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353, 1355
( citing cases)).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites "additional
elements that integrate the judicial exception into a practical application."
Claim 1 recites additional elements, i.e., computer-related limitations,
including "at least one processor," "a server," and "a memory." But, as the
Examiner observes (Final Act. 8), these elements are described in the
Specification at a high level of generality, i.e., as generic computer
components (see, e.g., Spec. ,r,r 16-18, 21-23, 26, 27, 29).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any assertedly inventive programming,
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
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implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a "practical application," as that
phrase is used in the 2019 Revised Guidance. 4
Appellants variously argue that the Examiner erred in determining
that the claims are directed to an abstract idea. But, none of Appellants'
arguments is persuasive of Examiner error.
Appellants first argue that the § 101 rejection cannot be sustained
because the Examiner has provided no evidence to support the Examiner's
determination that the claims are directed to an abstract idea (App. Br. 6-8).
Appellants note that the Supreme Court in Alice cited evidence to support its
assertion that intermediated settlement is "long prevalent" and
4 The Revised Guidance references the MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") §§ 2106.05(a}-(c) and (e}-(h) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. Id. at 55. If the recited judicial exception is integrated
into a practical application, as determined under one or more of these MPEP
sections, the claim is not "directed to" the judicial exception.
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"fundamental" (id. at 7). And Appellants ostensibly maintain that the
Examiner is likewise required to do so here. We disagree.
As an initial matter, we find nothing in Alice that requires the Office
to identify specific references to support a finding that a claim is directed to
an abstract idea. Nor are we aware of other controlling precedent that
imposes such a requirement. Evidence may be helpful, e.g., where facts are
in dispute, but it is not always needed. See Mortgage Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is
also possible, as numerous cases have recognized, that a § 101 analysis may
sometimes be undertaken without resolving fact issues."). Appellants' bare
assertion that evidence is needed here, without any supporting reasoning as
to why, is insufficient to require the Examiner to provide evidentiary
support. 5
Appellants next argue that the claims are not directed to an abstract
idea because "they provide [a] technology-based solution to solve a problem
unique to technology" (App. Br. 9-10). Appellants assert that although
automated fraud detection systems exist for ensuring that each purchase on a
card is authorized, these systems can be too zealous in declining legitimate
transactions (id. at 9). Appellants maintain that the independent claims,
thus, solve technical problems (e.g., legitimate transactions being declined
by automated fraud detection systems) using technical solutions - problems
and solutions that Appellants assert "simply do not exist in the vague, non-
computerized environment of the alleged abstract idea" (id. at 10).
5 We note that Appellants have put forward no rebuttal evidence showing
the claims are not directed to an abstract idea.
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Appellants' argument is not persuasive at least because fraud
detection is not a problem "unique to technology." The problem of detecting
fraudulent transactions existed before, and still exists outside of the realm of
computer technology. Appellants, in fact, admit as much (see Spec. ,r 4
( describing "known solutions - such as a call center agent manually calling
the purchaser to verify the transaction")).
We also are not persuaded that preventing legitimate transactions
from being declined is a technical problem, as opposed to a business
problem, or that verifying potentially fraudulent payment transactions using
voice recognition, as recited in claim 1, is a technical, as opposed to a
business solution. As described above, we find no indication in the
Specification that the operations recited in claim 1 ( or, for that matter, in any
other claim) require any specialized or inventive computer components,
invoke any assertedly inventive programming, or that the claimed invention
is implemented using other than generic computer components to perform
generic computer functions, e.g., receiving, storing, processing, and
transmitting information. This is not enough to make an otherwise abstract
concept patent-eligible under 35 U.S.C. § 101. See Alice Corp., 573 U.S.
at 225 ( concluding that claims "simply instruct[ing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer" are not patent eligible) ..
We also do not agree with Appellants that the pending claims are
similar to the hypothetical claims of Example 1 in the USPTO's "Examples:
Abstract Ideas" ("Examples") 6 (App. Br. 10-11 ). In Example 1, as
6 Available at https ://www. uspto. gov/ sites/ default/files/ documents/
abstract_idea_examples. pdf.
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Appellants acknowledge, the claimed invention relates to isolating and
removing malicious code from electronic messages to prevent a computer
from being compromised (id.). The USPTO determined that the claims in
Example 1 are not directed to an abstract idea, and are patent-eligible,
because the claimed invention "is directed towards performing isolation and
eradication of computer viruses, worms, and other malicious code, a concept
inextricably tied to computer technology." Examples, p. 3.
Appellants argue that, similar to the claims in Example 1, the pending
claims are "inextricably tied to computer technology and distinct from the
types of concepts found to be abstract" (id. at 11 ). Appellants, thus, note
that independent claims 1 and 9, for example, recite "receiving, from a
server, an indication that a payment transaction is potentially fraudulent";
"requesting a candidate voice print from the user based on the received
indication"; "comparing the candidate voice print to a stored user voice print
associated with the payment account of the user"; "determining whether to
verify the candidate voice print based on the comparison"; and "providing,
from the mobile device to the server, an indication whether to approve or
deny the payment transaction based at least on the determination," and that
independent claim 15 includes similar recitations (id.). Appellants assert
that "[ t ]here is no evidence or rational basis on which to conclude that these
elements could be practiced mentally, by hand, or using anything other than
computer and network technology" (id.). Therefore, according to
Appellants, "the claims are eligible for patenting" (id.).
Appellants appear to be arguing that any invention that cannot be
performed mentally or by hand, because the claim recites a computer is,
therefore, "inextricably tied to computer technology" and not abstract. Yet,
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a substantially similar argument was expressly rejected by the Court in
Alice. See Alice Corp., 573 U.S. at 223 ("the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention"). Whether it would be "feasible" to perform the method
using "paper and pencil" is, moreover, beside the point. "[R ]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible." OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d at 1363 (Fed. Cir. 2015)
Appellants' further argument that the claims are patent-eligible
because there is no risk that any "basic tools" would be monopolized (App.
Br. 11-13; see also Reply Br. 10-12, 17-18) similarly fails. There is no
dispute that the Supreme Court has described "the concern that drives [the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption," Alice Corp., 573 U.S. at 216. But, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption 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 Corp.,
134 S. Ct. at 2354). "[P]reemption may signal patent ineligible subject
matter, [but] the absence of complete preemption does not demonstrate
patent eligibility."7 Id.
7 With respect to Appellants' preemption argument (Reply Br. 6-7), we
note the McRO court also explicitly "recognized that 'the absence of
complete preemption does not demonstrate patent eligibility."' See McRO,
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Responding to the Examiner's Answer, Appellants variously argue in
the Reply Brief that the Examiner's § 101 analysis is legally and factually
flawed (Reply Br. 4--15, 23-29). We disagree.
The Examiner, in our view, analyzed the claims consistent with the
two-step Mayo/Alice framework and the USPTO guidance in effect at the
time the Final Office Action was mailed. The Examiner, thus, provided a
reasoned analysis of the claims and an explanation of the bases for the
rejection (Final Act. 2--4, 7-8). And we find that, in doing so, the Examiner
set forth a proper rejection under§ 101. See In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (holding 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); see also JULY 2015 UPDATE: SUBJECT
MATTER ELIGIBILITY, 8 p. 6 (setting forth a general notice requirement to
establish a prima facie rejection under 35 U.S.C. § 101); May 4, 2016
Memorandum, 9 2 ("[T]he rejection ... must provide an explanation ...
which [is] ... sufficiently clear and specific to provide applicant sufficient
notice of the reasons for ineligibility and enable the applicant to effectively
respond.") ( emphasis added).
Further responding to the Answer, Appellants assert that a proper
analysis under Step 2A demonstrates that the claims are not directed to an
abstract idea (Reply Br. 15-23). Citing McRO, Appellants argue that the
837 F.3d at 1315 (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015)).
8 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update. pdf.
9 Available at https://www.uspto.gov/sites/default/files/documents/ieg-may-
2 0 16-memo. pdf.
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claimed invention is not abstract because "[l]ike McRO, Appellant's [sic]
claims focus on 'specific means or method[ s ], ' not merely on a 'result or
effect"' (id. at 16). Appellants, thus, maintain that rather than "merely
recit[ing] the alleged abstract idea," the pending claims "recite specific
steps" (id. at 16-17).
Appellants' argument is not persuasive at least because the Federal
Circuit premised its determination that the claim in McRO was patent-
eligible, not merely on the specificity of the claimed animation scheme, but
rather on the fact that the claim, when considered as a whole, was directed to
a "technological improvement over the existing, manual 3-D animation
techniques" through the "use of limited rules specifically designed to
achieve an improved technological result in conventional industry practice."
McRO, 837 F.3d at 1316. In this sense, McRO is akin to DDR Holdings,
Enfzsh, and similar decisions which have held claims patent-eligible where
the claimed invention provided a technological improvement in industry
practice. See DDR Holdings, 773 F.3d at 1257 (holding that claims reciting
computer processor for serving "composite web page" were patent eligible
because "the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks"); Enfzsh, 822 F.3d at 1338 (holding that claims directed to self-
referential table for computer database were patent eligible because claims
were directed to an improvement in the functioning of a computer); Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017)
(holding that claims directed to "an improved computer memory system"
having many benefits were patent eligible).
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In contrast here, claim 1 collects data (i.e., "an indication that a
payment transaction is potentially fraudulent' and "a candidate voice print
from the user based on the received indication); manipulates the data (i.e.,
"compar[ es] the candidate voice print to a stored user voice print associated
with the payment account of the user" and "determin[ es] whether to verify
the candidate voice print based on the comparison"); and renders an output
(i.e., "an indication whether to approve or deny the payment transaction
based at least on the determination"). Although these steps may limit the
scope of the abstract idea, the limitations are not sufficient to transform
Appellants' otherwise patent-ineligible abstract idea into patent-eligible
subject matter. See Alice Corp., 573 U.S. at 222 ("[W]e rejected the
argument [in Parker v. Flook, 437 U.S. 584, 594-95 (1978)] that
'implement[ing] a principle in some specific fashion' will 'automatically
fal[l] within the patentable subject matter of§ 101."); see also Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014) (rejecting the
argument that claims "directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before" were patent-eligible).
It could not be clearer from the Specification that the present
invention is intended to provide a mechanism for securely
verifying/authenticating payment transactions tagged as potentially
fraudulent using a stored voice recording (see, e.g., Spec. ,r,r 2---6).
Considered in light of the Specification, the claimed invention, thus, clearly
appears focused on achieving a business objective (i.e., efficiently
authenticating potentially fraudulent payment transactions and preventing
legitimate transactions from being declined), and not on any claimed means
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for accomplishing this goal that improves technology. Requesting a
candidate print, in response to receipt of an indication that a payment
transaction is potentially fraudulent, and comparing the candidate voice print
to a stored voice print to determine whether to approve or deny the payment
transaction, may well improve a business process, i.e., fraud detection, by
preventing legitimate transactions from being denied. But, we are not
persuaded that this provides an improved technological result.
We conclude, for the reasons outlined above, that claim 1 recites a
fundamental economic practice, i.e., an abstract idea, and that the additional
elements recited in the claim are no more than generic computer components
used as tools to perform the abstract idea of using voice print recognition to
verify potentially fraudulent transactions. As such, they do not integrate the
recited abstract idea into a practical application. See Alice Corp., 573 U.S.
at 223-24 ("[W]holly 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."' (alteration in original) (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (USPTO Guidance, Step 2B)
Having determined under Step 2A that claim 1 is directed to an
abstract idea, we next consider under Step 2B, the second step of the
Mayo/Alice framework, whether claim 1 includes additional elements or a
combination of elements that provides an "inventive concept," i.e., whether
the additional elements amount to "significantly more" than the judicial
exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56.
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Turning first to Appellants' Reply Brief, Appellants argue that the
Examiner's analysis under Step 2B is legally and factually flawed and that a
proper analysis demonstrates that the claims recite "significantly more"
(Reply Br. 29--32). Pointing specifically to the Federal Circuit's decisions in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016), Appellants, thus, argue that "Appellant's
[sic] claimed system, like the 'content filtering system' of BASCOM and the
system allowing 'network service providers to account for and bill for
internet protocol ('IP') network communications' of Amdocs," improves the
performance of the system itself by "enabling users to approve a payment
transaction using a voice print" (Reply Br. 30). Appellants assert that "[t]he
claimed solutions solve technical - not merely business or logistical -
problems associated with fraud detection systems ... in a technical manner"
(id. at 31 ). 10 But, again we are not persuaded that authorizing electronic
transactions using voice prints is a technological improvement, as opposed
to an improvement in a business practice, where, as here, there is no
indication of record that the operations recited in the claims require any
specialized or inventive computer components, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
10 Appellants also note that the Federal Circuit, in BASCOM, held that an
inventive concept can be found in the non-conventional and non-generic
arrangement of known conventional pieces (Reply Br. 27). But Appellants
do not identify any "non-conventional and non-generic arrangement of
known conventional pieces" that is allegedly present in the pending claims.
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other than generic computer components to perform generic computer
functions, e.g., receiving, storing, processing, and transmitting data. 11
Appellants also argue that "the claims exceed 'well-understood,
routine, conventional activities' already known in the industry, and therefore
involve 'significantly more"' because the "none of the references" teaches or
suggests certain features, as recited in the claim (App. Br. 13-14; see also
Reply Br. 31-32). But, Appellants misapprehend the controlling precedent.
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "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., 573 U.S. at 217-18 ( citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
11 To the extent Appellants maintain that use of the recited "mobile device"
amounts to significantly more than an abstract idea, we note that the
Specification describes that the "mobile device" may be "a smartphone, a
mobile phone, a portable electronic device, tablet, a personal digital
assistant, or any other electronic device with communication," i.e., a generic
component (Spec. ,r 26). And we find no indication in the Specification, nor
do Appellants direct us to any indication, that the mobile device is being
used in an unconventional manner.
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( 1981) ("The '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.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1, and claims 2-18, 20, and 21,
which fall with claim 1.
Obviousness
Independent Claims 1 and 9 and Dependent Claims 2-8, 10-14, and 21
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1 and 9 under 35 U.S.C. § 103(a) at least
because neither Herz nor Felger, individually or in combination, discloses or
suggests "comparing the candidate voice print to a stored user voice print
associated with the payment account of the user," "determining whether to
verify the candidate voice print based on the comparison," and "providing,
from the mobile device to the server, an indication whether to approve or
deny the payment transaction based at least on the determination," as recited
in claim 1 and similarly recited in claim 9 (App. Br. 15-19).
In rejecting claims 1 and 9 under§ 103(a), the Examiner finds that
paragraph 297 of Herz discloses "comparing the candidate voice print to a
stored user voice print associated with the payment account of the user," and
that paragraph 1108 of Herz teaches "providing, from the mobile device to
the server, an indication whether to approve or deny the payment transaction
based at least on the determination" (Final Act. 9; see also id. at 13). The
Examiner acknowledges that Herz does not disclose "determining whether to
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verify the candidate voice print based on the comparison," and the Examiner
cites paragraph 52 of Felger to cure this deficiency (Final Act. 9).
We have reviewed the cited portions of Herz and Felger, on which the
Examiner relies. And we agree with Appellants that nothing there discloses
or suggests the argued limitations (App. Br. 15-18; Reply Br. 33-35).
Therefore, we do not sustain the Examiner's rejection of independent
claims 1 and 9 under 35 U.S.C. § 103(a). For the same reasons, we also do
not sustain the rejection of dependent claims 2-8, 10-14, and 21. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious").
Independent Claim 15 and Dependent Claims 16-18 and 20
Independent claim 15 is directed to a mobile device configured to
enroll a user in a fraud detection program comprising at least one processor
and a memory storing instructions that, when executed by the processor,
cause the processor to perform operations comprising, inter alia, "receiving
the user voice print while the mobile device is at a physical location
associated with the financial service provider." In rejecting claim 15 under
35 U.S.C. § 103(a), the Examiner cites paragraphs 44 and 297 of Herz as
disclosing this feature (Final Act. 14).
We, however, agree with Appellants that there is nothing in the cited
paragraphs that discloses or suggests receiving a user voice print while the
user's mobile device is at a physical location associated with a financial
service provider, as called for in claim 15 (App. Br. 19-21). Therefore, we
do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
independent claim 15, and claims 16-18 and 20, which depend therefrom.
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DECISION
The Examiner's rejection of claims 1-18, 20, and 21 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 1-18, 20, and 21 under 35 U.S.C.
§ 103(a) is reversed.
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
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