Ex Parte Purves et al

Patent Trial and Appeal Board

Jul 30, 2018

13624779 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/624,779 09/21/2012
113349 7590
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
08/01/2018
FIRST NAMED INVENTOR
Thomas Purves
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.
108US03/090426-30510 6480
EXAMINER
DONLON, RY AND
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS PURVES, SHILPAK MAHADKAR,
and A YMAN HAMMAD
Appeal2017-001753
Application 13/624, 779 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, ANTON W. PETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 26-49. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Visa Inc. as the real party in interest. Appeal Br. 1.
Appeal2017-001753
Application 13/624,779
THE INVENTION
Appellants state, "[t]he present innovations are directed generally to
digital wallets .... " Spec. ,r 3.
Claim 26 reproduced below, is representative of the subject matter on
appeal.
26. A processor implemented issuer facilitated wallet service
account enrollment method, comprising:
receiving, from a user logged into an issuer's page, the
issuer's website, or the issuer's application, a request to (i)
create a new virtual wallet account, or (ii) enroll a user's
payment account in the new virtual wallet account, whereby the
request includes a payment account identifier, a virtual wallet
account identifier, and virtual wallet access credentials;
retrieving, via a processor, from a card issuer database,
virtual wallet account enrollment information for an account
created by the issuer that is associated with the payment
account identifier;
transmitting, via the processor, the virtual wallet account
enrollment information, the virtual wallet account identifier,
and the virtual wallet access credentials to a virtual wallet
server; and
receiving an indication that the account created by the
issuer has been successfully enrolled in the new virtual wallet
account corresponding to the virtual wallet account identifier;
wherein the virtual wallet access credentials enable the
user to access the new virtual wallet account after the creation
of the new virtual wallet account, wherein images of cards are
cached for providing individually customized versions of the
images of the cards for association with the new virtual wallet
account.
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Application 13/624,779
THE REJECTION2
Claims 26-49 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. Final Act. 2-5.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 26-49 under 35 U.S.C. § 101.
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. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
2 The Examiner withdrew the rejection made under 35 U.S.C. § 103(a)
of claims 26-49. (Answer 2).
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Application 13/624,779
Although the Court in Alice made a direct finding as to what the
claims were directed to, we determine that this case's claims themselves and
the Specification provide enough information to inform one as to what they
are directed to.
The steps in claim 26 result in:
wherein the virtual wallet access credentials enable the
user to access the new virtual wallet account after the creation
of the new virtual wallet account, wherein images of cards are
cached for providing individually customized versions of the
images of the cards for association with the new virtual wallet
account.
The Examiner found that the claims are directed to a fundamental
economic practice of, "enrollment and payment ( credit card and banking
transaction process) in e-commerce using credit card (see specification page
2)." Final Act. 3. The Specification states:
Various embodiments of the WSEP [(WALLET
SERVICE ENROLLMENT PLATFORM)] may be configured
to facilitate the creation of a virtual wallet account. For
example, a financial institution may already have information in
their records such as payment accounts, billing address, credit
history reports and/ or the like. By providing this information
to the wallet service provider, a wallet account may be
established on behalf of the user. In some embodiments, the
information provided by the financial institution will be
sufficient itself to enable the creation of a virtual wallet
account. This would be the case where the information
requirements of the virtual wallet provider are such that the
financial institution is able to provide sufficient information
about the user to enable creation of a wallet account. In other
embodiments, the information provided by the financial
institution will only partly fulfill the information requirements
of the virtual wallet provider, in which case the user may be
prompted for additional information before the virtual wallet is
created.
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Application 13/624,779
Spec. ,r 35. The Specification also describes:
Some embodiments of the WSEP may provide
consumers facilities for easily and conveniently personalizing
new prepaid accounts with their issuer using previously verified
personal information stored in an online wallet, and expediting
provisioning a prepaid account to a digital wallet. Once a
prepaid card is connected with the wallet, the WSEP provides
the consumer an easy to remember authentication tool to sign
on to view and manage their prepaid account either at the wallet
destination website/application or through limited federation to
the prepaid issuers online ( or mobile) prepaid service
application.
Id. ,r 51. The Specification at paragraph 112 describes that "the card image
server may create an image 'on the fly' in real-time using a dynamic image
creation tool and/or a template tool such as ImageMagik, Gimp, Photoshop
droplets, and/ or the like." Thus, all this evidence shows that claim 26 is
directed to adding an account to a virtual wallet account wherein virtual
wallet access credentials enable individually customized versions of the
images of the accounts for the new virtual wallet account. It follows from
prior Supreme Court cases, and Gottschalkv. Benson, 409 U.S. 63 (1972), in
particular, that the claims at issue here are directed to an abstract idea.
Enabling individually customized versions of the images of accounts for a
new virtual wallet account is a fundamental financial principle because it
identifies in the mind of the account holder the source of the financial
services provided, thus, avoiding confusion in the marketplace. The patent-
ineligible end of the 35 U.S.C. § 101 spectrum includes methods that
describe fundamental financial principles. See Alice, 134 S. Ct. at 2355-57.
As in Alice, 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
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an intermediated settlement in Alice and the concept of enabling individually
customized versions of images of accounts for a new virtual wallet account,
at issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. That the claims do not preempt all forms of the
abstraction or may be limited to virtual wallets, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61
(Fed. Cir. 2015).
Claim 26, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
linkage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he 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 "implemen[ t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
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process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (internal 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." Id. 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 retrieve, select, and apply decision criteria to data and modify
the data as a result 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. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1354; see also In re
Katz Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "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." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018) (internal citation omitted).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/ display is equally generic and conventional or otherwise held to be
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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); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC,
874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is, therefore,
ordinary and conventional.
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 Specification spells 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 information access under different scenarios. See,
e.g., Spec. ,r,r 36-40. The Specification does not describe any particular
improvement in the manner a computer functions, at least with respect to the
claims in the instant application. Instead, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
As to the system claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
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This Court has long "warn[ ed] . . . against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art.' "
Id. (alterations in original).
We have reviewed all the arguments (Appeal Br. 8-15, Reply Br. 2-3)
Appellants have submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
the claimed subject matter as discussed above relates to virtual
wallet technology, and specifically to techniques for
"frictionless" virtual wallets enrollment. (Original Specification
at ,r 36). The technology is not related to "agreements between
people in the form of contracts, legal obligations, and business
relations," as was the case in Alice, Bilski, and buySafe. Thus,
Applicant respectfully submits that the claimed subject matter
is not a "fundamental economic practice" as alleged by the
Office.
Appeal Br. 11.
We disagree with Appellants. We find that the claimed association of
a card issuer with a virtual wallet account is based on contractual agreements
between the parties which is an abstract idea. Creating a contractual
relationship in guaranteeing performance of an online transaction (see
buySAFE, 765 F.3d at 1352, 1355), "verifying the validity of a credit card
transaction over the Internet" ( CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011)), and using advertising as a currency
on the Internet (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014)). Also, "[a]n abstract idea can generally be described at different
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levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
41 (Fed. Cir. 2016).
Appellants also argue,
Applicant[s] strongly disagree[] with the Office's
characterization of the additional elements as being
"insignificant extra-solution activity" (Office Action at p. 4),
and submits that the additional elements noted above are
meaningful limitations that are not routine, not conventional,
and not insignificant. As discussed above, an advantageous
aspect of the invention relates to a system configured to allow a
user who is logged in with an issuer to request enrollment of a
payment account with a virtual wallet.
Appeal Br. 14.
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, consistent with the
guidance set forth in the USPTO's 2014 INTERIM GUIDANCE ON PATENT
SUBJECT MATTER ELIGIBILITY. See Final Act. 4--5. Second, the Examiner's
determination here of "well-understood, routine, and conventional" (Final
Act. 4--5) is based on a rational basis for his conclusion stating:
processor(s) configured to (see In re Alice, and Ultramerical; In
re EON, CET v. Wells Fargo) communicate with server and to
execute computer program modules, the computer program
modules comprising: a feature module configured to receive,
transmit, determine, etc. applies the abstract idea with or by use
of a generic computer system using generic computer functions
(not a particular machine where solution was necessarily rooted
in computer technology ....
As such, the claim, when considered as a whole, is
nothing more than the instruction to implement the abstract idea
(i.e. registering a credit card, etc.) in a particular, albeit well-
understood, routine and conventional technological
environment.
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Id. at 4. Such an analysis is a factual determination, and which
determination we find without error. See Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination."). See Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1057 (Fed. Cir. 2017) ("Significantly, the claims do not
provide details as to any non-conventional software for enhancing the
financing process."); see also Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law
demands more" than claim language that "provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it.").
Concerning the bullet items listed by Appellants on page 14 of their
Appeal Brief, alleged to be "elements in addition to" the Examiner's
description of the abstract idea and that "go far beyond mere instructions to
apply an alleged abstract idea on a computer," these are steps that coincide
essentially with the identified abstract idea herein of enabling individually
customized versions of images of accounts for a new virtual wallet account,
such that they cannot constitute additional elements that could possibly
amount to significantly more than the abstract idea. See Alice, 134 S. Ct. at
2355. Insofar as any aspects of the items identified by Appellants (Appeal
Br. 14) are arguably distinct from the identified abstract idea, these
constitute no more than generic computer functionality, as explained above.
We therefore affirm the rejections of claims 26-49.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 26-49 under
35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 26-49 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).
AFFIRMED
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