Ex Parte Rosano et al

Patent Trial and Appeal Board

Feb 23, 2017

12617071 (P.T.A.B. Feb. 23, 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.
12/617,071 11/12/2009 Sharon A. Rosano P00220-US-CIP 3881
98665 7590 02/23/2017
Otterstedt, Ellenbogen & Kammer, LLP
P.0 Box 381
Cox Cob, CT 06807
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
02/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHARON A. ROSANO, BRYAN-EARL KEROLA,
PAULINE OW, and DARLENE M. LOHMAN
Appeal 2015-0049691
Application 12/617,071
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—8 and 10—25.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to electronic payments. Spec. 1,11.
21-22.
1 The Appellants identify MasterCard International Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2015-004969
Application 12/617,071
Independent claim 1 is illustrative:
1. A method comprising the steps of:
receiving, at an electronic funds transfer bill payment
operation of a financial institution, first information representing
an account restructuring of a biller converting identification
information of an account, wherein said biller uses said
electronic funds transfer bill payment operation;
combining, by said financial institution, said first
information with second information into a uniformly formatted
file, said second information being formatted differently than
said first information, said second information comprising card
update information for recurring payment card payments,
wherein said recurring payment card payments are made with
payment cards issued by said financial institution;
transferring, by said financial institution, said uniformly
formatted file to a configured/electronic operator of a payment
network of a kind configured to facilitate transactions between
multiple issuers, including said financial institution, and multiple
acquirers; and
providing a system, wherein the system comprises distinct
software modules, each of the distinct software modules being
embodied on at least one tangible computer readable recordable
storage medium, and wherein the distinct software modules
comprise an electronic funds transfer bill payment module and
an integration module;
wherein:
said receiving of said first information is carried out by
said electronic funds transfer bill payment module executing on
at least a first hardware processor;
said combining of said first information with said second
information is carried out by said integration module executing
on said at least first hardware processor; and
said transferring of said uniformly formatted file is carried
out by said integration module executing on said at least first
hardware processor.
Claims 1—8 and 10—25 are rejected under 35U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
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Appeal 2015-004969
Application 12/617,071
Claims 1—4, 6—8, 10, 12—15, 17—21, and 23—25 are rejected under 35
U.S.C. § 103(a) as unpatentable over Remington (US 6,070,150, iss. May
30, 2000) and Mitsunari (JP H08-55217 A, pub. Feb. 27, 1996).
Claims 5, 11, 16, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Remington, Mitsunari, and Benkert
(US 2004/0143527 Al, pub. July 22, 2004).
We REVERSE.
ANALYSIS
Rejection under 35 U.S.C. §101
We are persuaded by the Appellants’ argument that the Examiner’s
“rejection fails to provide a reasoned linked between the alleged abstract
idea and the claimed limitations.” Reply Br. 13—14.
The Examiner first asserts “the claims are directed to ... a method of
electronic funds transfer bill payment operation on a system encompassing
various software modules executed by a processor.” Answer 3. We agree in
part, in that each independent claim recites language about receiving data at
an electronic funds transfer bill payment operation. We determine that it is
appropriate to go further, however, and decide that the claims are directed to
an electronic funds transfer bill payment operation of a financial institution,
as the financial institution is recited expressly in the claims as being
associated with the electronic funds transfer bill payment operation. This is
important because the claims also refer to information exchanged with an
operator of a “payment network.” In particular, the Specification describes
“[ejxamples of the payment network include those of the kind configured to
facilitate transactions between multiple issuers and multiple acquirers; for
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Appeal 2015-004969
Application 12/617,071
example, virtual private networks (VPNs) such as the BANKNET®
telecommunications network of MasterCard International Incorporated, or
10 the VISANET® network of Visa International Service Association.”
Spec. 13,11. 6—10. Each of those networks is described as “operating
according to a payment standard and/or specification.” Id. at 13,11. 4—6.
The claims are, thus, directed to interactions between at least two different
types of electronic payment systems, one between financial institutions, such
as banks, and billers, for recurrent billing, and the other between users of
payment cards, such as consumers using credit and debit cards, the banks
that issue those payment cards, and the billers with whom those cards are
being used. Furthermore, at least one of the claimed systems require, inter
alia, distinct software modules, each of the distinct software modules being
embodied on at least one tangible computer readable recordable storage
medium, and wherein the distinct software modules comprise an electronic
funds transfer bill payment module and an integration module.
The Examiner then asserts that the “abstract idea of uniformly
formatting a file in a fund transfer event is a basic economic and technical
practice.” Answer 3. Presumably, all of the above analysis concerning the
electronic payment systems is subsumed within “fund transfer event,” and
the Examiner is asserting, implicitly, that a “fund transfer event” is “a basic
economic and technical practice.” As an initial matter, we are unaware of
any guidance indicating that a “technical practice” is an “abstract idea,” and
in any case, the Examiner has not explained sufficiently any linkage between
the claims and an abstract idea and a “technical practice.”
As for whether the “fund transfer event” set forth above is a “basic
economic . . . practice,” the Examiner’s assertion is misplaced, as while we
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Appeal 2015-004969
Application 12/617,071
agree that a “fund transfer event” itself may be a “basic economic . . .
practice,” the Examiner has not shown sufficiently that the “fund transfer
event” set forth above, which includes interaction between at least two
different types of electronic payment systems, is a “basic economic . . .
practice.”
Moving on to formatting a file, we cannot say that formatting or
transferring a data file is a “basic economic . . . practice,” as asserted by the
Examiner, because the Examiner has not shown sufficiently that formatting
or transferring a data file is “economic.” To be sure, we agree generally that
formatting and transferring data itself appears to be a basic mental practice
easily performed by general purpose computers, however, this is incongruent
with any assertion that it is “economic.”
The Examiner next asserts that “[t]he use of generic computer
components executing software modules to format a file and implement a
fund transfer does not limit the claims sufficiently or add concrete ties to
make the claims less abstract.” Answer 3^4. In concept, we agree. The
problem, however, is that we are unpersuaded that computer components
involved in the “fund transfer event” set forth above, which includes
interaction between at least two different types of electronic payment
systems, are generic.
For these reasons, we do not sustain the rejection of claims 1—8 and
10-25.
Rejection of Claims 1—4, 6—8, 10, 12—15, 17—21, and 23—25 under 35
U.S.C. $103fa)
Each of independent claims 1, 8, 12, 19, and 24 recite language
substantially equivalent to “combining, by said financial institution, said first
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Appeal 2015-004969
Application 12/617,071
information with second information into a uniformly formatted file, said
second information being formatted differently than said first information.”
We are persuaded by the Appellants’ argument that “the references
fail to make obvious an implementation by which the first information and
the second information are contained in a uniformly formatted file.” Reply
Br. 24; see also Appeal Br. 16—17.
We begin by construing the meaning of the claims, focusing
specifically on “combining, by said financial institution, said first
information with second information into a uniformly formatted file, said
second information being formatted differently than said first information.”
During prosecution the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Limitations appearing in the specification but not
recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
The Specification describes “a data file indicative of an account
restructuring of a given one of the receivers 102. The data file specifies at
least one old account number associated with the receiver and at least one
new account number associated with the receiver.” Spec. 5,11. 18—21 (cited
by the Appellants at Appeal Br. 4 as corresponding to the claimed “first
information.”). The Specification also describes the “second information is
formatted differently than the first information. The second information
includes card update information (e.g., a new card account number or a new
card expiration date) for recurring payment card payments made with
payment cards issued by the financial institution, as per card operation 820.”
Id. at 15,11. 1—5 (cited by the Appellants at Appeal Br. 4). The Specification
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Appeal 2015-004969
Application 12/617,071
further indicates that “FIGS. 3 and 4 are non-limiting examples of the
second information. FIG. 5 is a non-limiting example of the first
information.” Spec. 15,11. 9-10.
Figure 5, a portion of which is shown below, is a definition of data
elements included in the claimed “first information,” where the non-header
portion of the information is described as follows:
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A portion of the Appellants’ Figure 5 showing an exemplary
format of data in the claimed “first information.”
Figure 4A, a portion of which is shown below, is a definition of data
elements included in the claimed “second information,” where the non­
header portion of the information is described as follows:
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Appeal 2015-004969
Application 12/617,071
DETAIL RECORD FOR ISSUES ACCOUNT CHANGE RLE
no] field name LENGTH TYPE POSITION DESCRIPTION
1 | DETAIL fDENTIRER AN 1 VALUE 0
5 ISSUER IDENTSIER n N 2-12 ISSUER’S MasterCard MEMBER
SD/iCA NUMBER MUST:
- BE NUMERIC
- ALREADY EXIST ON THE
CURRENT MasterCard MEMBER
ID ACTIVE ISSUER LIST,
MAINTAINED BY MasisrCard
| 3 OLD ACCOUNT
NUMBER
19 AN 13-31 ORIGINAL ACCOUNT NUMBER:
- MUST BE FORMATTED AS
LEFT-JUSTIFIED, SPACE-FILLEO
TO THE RIGHT
- MUST BE 13—19 POSITIONS
- MUST BE NUMERIC WITH NO
EMBEDDED SPACES
- IS REOUSTED FOR ALL UPDATES,
INCLUDING CLOSED (C) AND
OVERRIDE FOR DELETION (0)
ACCOUNTS
4 old txmim
DATE
4 N 32-35 ORIGINAL EXPIRATION DATE MUST BE
NUMERIC, AND IN MMYY FORMAT
5 NEW ACCOUNT
NUMBER
19 AN 35-54 NEW ACCOUNT NUMBER MUST:
- 9E LEFT-JUSTIFIED, SPACE
FILLED TO THE RIGHT
- BE 13-13 POSITIONS
- BE NUMERIC WITH NO
EMBEDDED SPACES
- NOT BE USED TOR OVERRIDE
FOR DELETION (0) AND
CLOSED (C) ACCOUNTS
- PASS IC/BIN VALIDATION RULES
6 NEW EXPIRATION
DATE
4 N 55-58
_
NEW EXPIRATION DATE MUST:
- BE NUMERIC AND IN MMYY
FORMAT
- NOT BE USED FOR OVERRIDE
FOR DELETION (0) AND
CLOSED (C) ACCOUNTS
{CONSTANT ZEROS)
A portion of the Appellants’ Figure 4 A showing an exemplary
format of data in the claimed “second information.”
In addition, the Specification provides a further example of the
combining of first and second information:
embodiments of the invention provide an integrated issuer bulk
file for programs such as the MasterCard® Automatic Billing
Updater (ABU) & MasterCard® Remote Presentment and
Payment (RPPS) programs. Currently both the MasterCard
Automatic Billing Updater and the MasterCard RPPS Account
Conversion service require issuers and/or billers to submit
separate bulk files to report account change information. Aspects
of the invention integrate the required data elements of both
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Appeal 2015-004969
Application 12/617,071
programs into a new bulk file. Embodiments of the invention
may, for example, provide issuers with a streamlined approach
to participate in both programs.
Spec. 10,11. 22-30.
From the exemplary disclosures above, we construe the “format” of a
file containing first, or second, information to represent what data elements
are included in each file. We similarly construe “being formatted
differently” as “first and second information files each comprise some field
of information that is different from fields of information in the other file.”
The claimed “combining” is construed, consistent with this meaning of
“formatted,” as combining files of information where there may be common
elements of information (such as account number), but where there are
additional fields of data not common to both first and second information
files, into a single file containing all data elements from the combination of
both first and second files.2
The claimed “combining” is allegedly found by the Examiner in
Remington at “at least” Figures 5, 7, and 10, Abstract, column 1, lines 15—
23, column 2, lines 45—65, column 5, column 6, lines 10-24, column 7, lines
35—67, column 8, lines 1—6, column 9, lines 5—67, column 12, lines 1—8,
column 10, lines 1—15, column 13, lines 20-32, and column 14, line 56 to
column 15, line 13.3 See Final Act. 4, 14, 22, 34, and 41.
2 An example of what our construction of “combining” files that are
“formatted differently” means is “a database merge function” where, for
example, “a certain class may be designated as a key field in both the first
data table and the second data table, and the two data tables may then be
merged on the basis of the class data in the key field.” Benkert 179.
3 Only the rejection of claim 8 cites column 14, line 56 to column 15, line
13. Final Act. 14.
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Application 12/617,071
We disagree. None of the cited sections discloses the combination of
data from any two files. The Examiner has, therefore, failed to show
sufficiently the claimed combining of two files with overlapping, but
different data elements, and, therefore, has failed to demonstrate
persuasively the obviousness of any of the independent claims. For this
reason, we do not sustain the rejection under 35 U.S.C. § 103(a) of
independent claims 1, 8, 12, 19, and 24, nor of dependent claims 2-4, 6, 7,
10, 13—15, 17, 18, 20, 21, 23, and 25 rejected along with the independent
claims.
Rejection of claims 5, 11, 16, and 22 under 35 U.S.C. § 103(a)
The Examiner has not established on the record that Benkert remedies
the shortcomings in the combination of Remington and Mitsunari, above.
For this reason, we do not sustain the rejection of claims 5, 11, 16, and 22
under 35 U.S.C. § 103(a).
DECISION
We REVERSE the 35 U.S.C. § 101 rejection of claims 1—8 and 10-
25.
We REVERSE the 35 U.S.C. § 103(a) rejections of claims 1—8 and
10-25.
REVERSED
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