Ex Parte Van Deloo et al

Patent Trial and Appeal Board

Jul 23, 2018

13691191 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/691,191 11/30/2012 Lori Van Deloo
66945 7590 07/25/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-854332(021600UNP) 1022
EXAMINER
ALLEN, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORI VAN DELOO and ZACK FUERSTENBERG
Appeal2017-000627
Application 13/691,191 1
Technology Center 3600
Before PHILIP J. HOFFMANN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SILVERMAN.
Opinion Dissenting-in-part filed by Administrative Patent Judge SHAH.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5-11, and 13-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify Visa International Service Association as the real
party in interest. Appeal Br. 3.
Appeal2017-000627
Application 13/691,191
ILLUSTRATIVE CLAIM
1. A method comprising:
receiving, at an event terminal comprising a processor at
a venue hosting an event, portable consumer device information
comprising a primary account number (PAN) from a portable
consumer device used by a user;
validating, by the processor in the event terminal, the
portable consumer device based on the received information by
determining whether the portable consumer device was used to
purchase one or more tickets to the event and allowing entrance
to the event if the portable consumer device is validated,
wherein validating comprises generating a first cryptogram
using the received primary account number and event specific
information associated with the event and then comparing the
generated first cryptogram with a second cryptogram that was
stored in a validation database after the purchase and before the
event terminal received the PAN;
allowing, by the processor in the event terminal, the user
to enter the event;
determining that the first cryptogram is associated with
pre-purchase order information for a pre-purchase order for
event merchandise or event services; and
generating a notification regarding the event merchandise
or event services after determining that the first cryptogram is
associated with the pre-purchase order.
CITED REFERENCES
The Examiner relies upon the following references:
Rosenblatt et al. US 2010/0082491 Al Apr. 1, 2010
(hereinafter "Rosenblatt")
Gibson et al. US 2010/0133339 Al June 3, 2010
(hereinafter "Gibson")
de Oliveira et al. US 2011/0246369 Al Oct. 6, 2011
(hereinafter "de Oliveira")
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REJECTIONS
I. Claims 1-3, 5-11, and 13-20 rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1-3, 5-11, 13-18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rosenblatt and de Oliveira. 2
III. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosenblatt, de Oliveira, and Gibson. 3
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the Final
Office Action states that the claims are directed to "allowing users to
receive, store and validate information associated with event merchandise or
event services," which is regarded as an abstract idea, constituting a method
2 We regard as inadvertent the omission of claims 2 and 10 from the
identification of claims rejected over Rosenblatt and de Oliveira. Final
Action 2. The Final Office Action addresses these claims on page 9.
3 We regard the rejection of dependent claim 19 as relying upon de Oliveira,
as well as Rosenblatt and Gibson. Although only the latter two references
are identified in the respective introductory sentence (see Final Action 13),
de Oliveira is addressed thereafter (see id. at 14). Further, claim 19 depends
from claims 9 and 17, each of which stands rejected over the combination of
Rosenblatt and de Oliveira.
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of organizing human activity by providing an opportunity for parties to enter
into a specified agreement. Final Action 3. The Examiner also regards the
identified abstract idea as within "the 'idea of itself category since the
claims are directed to obtaining and collecting intangible data through
showing the comparison of the first cryptogram against the second
cryptogram for validation of the portable consumer device." Answer 4.
Turning to the second step of the Alice analysis, the Final Office
Action states:
The elements of the instant apparatus and system, when taken
in combination, together do not offer substantially more than
the sum of the functions of the elements when each is taken
alone. That is, 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. The elements together
execute in routinely and conventionally accepted coordinated
manners and interact with their partner elements to achieve an
overall outcome which, similarly, is merely the combined and
coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities
previously known to the industry.
Final Action 4. The Final Office Action further states that "incorporating
the use of a cryptogram does not offer substantially more and undertakes its
role in performance of its activities according to its generic functionalities
which are well-understood, routine and conventional." Final Action 15.
The Examiner's Answer also addresses the claimed comparison of
cryptograms- a feature of all the claims involved in this Appeal- stating
that "these 'cryptograms' are not clearly defined, as Appellant[s] use[]
generic terms to define the 'cryptograms' in the [S]pecification"; in addition,
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the "Examiner interprets that the 'cryptograms' could be merely a simple
code." Answer 6.
Asserting error in the rejection, the Appellants argue that the claims
are not directed to an abstract idea (see Appeal Br. 7-1 O; see also Reply
Br. 2-10) and that, in any event, the claims contain additional elements that
amount to significantly more than the identified abstract idea (see Appeal
Br. 12-16; see also Reply Br. 10-15).
The Appellants' argument, regarding the second Alice step, persuades
us of error in the rejection, notwithstanding any determination of the
adequacy of the Examiner's description of an abstract idea to which the
claims might be directed. Accordingly, the following discussion focuses on
the Appellants' argument regarding the second Alice step, in view of the
Examiner's determination that the claims are directed to the abstract idea of
"allowing users to receive, store and validate information associated with
event merchandise or event services." Final Action 3.
In particular, the Appellants argue that the claims do not recite a
comparison of cryptograms, as an isolated element; rather, the claims recite
the use of cryptograms in the context of several coordinated claim elements:
Appellants submit that the claims in question do not merely
incorporate the use of a cryptogram but instead recite specific
steps for "receiving ... portable consumer device information
comprising a PAN from a portable consumer device,"
"validating ... the portable consumer device based on the
received information ... [by] generating a first cryptogram
using the received PAN and event specific information ... and
then comparing the generated first cryptogram with a second
cryptogram that was stored in a validation database after the
purchase and before the event terminal received the PAN," and
"determining that the first cryptogram is associated with pre-
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Application 13/691,191
purchase order information for a pre-purchase order for event
merchandise or event services."
Appeal Br. 15-16. The Appellants allege that this recited combination of
elements provides particular benefits; for example, "[b ]y using the
cryptogram, instead of the PAN [primary account number] or other personal
information, to identify additional purchases made by the consumer at the
event, it is not necessary to persistently store sensitive consumer data such as
PANs." Id. at 15. See Spec. ,r,r 75, 89-91, 124. According to the
Appellants, the rejection "fails to provide any reasoning other than the
conclusory statement," quoted above (from page 4 of the Final Office
Action), which "does not take into account the specific features and
limitations recited in Appellants' claims." Appeal Br. 16.
Indeed, the Examiner states that the claimed use of a cryptogram
"undertakes its role in performance of its activities according to its generic
functionalities which are well-understood, routine and conventional" (Final
Action 15) and that the Specification employs generic terminology to
describe the cryptograms, such that the "Examiner interprets that the
'cryptograms' could be merely a simple code" (Answer 6). Yet, the
Examiner misses the Appellants' point that even a collection of entirely
conventional individual elements may form an unconventional combination
that amounts to significantly more than an identified abstract idea. See
Appeal Br. 13-16; see also Reply Br. 12-15.
The Supreme Court explains that the second step of the Alice
framework must "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." Alice,
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134 S. Ct at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78-79 (2012)). Accordingly, this undertaking "requires
more than recognizing that each claim element, by itself, was known in the
art," because an "inventive concept" that satisfies the second Alice step "can
be found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Although the rejection addresses the use of cryptograms as an
individual element, the Examiner does not analyze their claimed coordinated
interaction with the other recited elements, as the Appellants set forth (see
Appeal Br. 13-16; see also Reply Br. 11-15), let alone provide factual
support for any position that the combination of claim elements identified by
the Appellants might be well-understood, routine, and conventional.
"Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination."
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
Therefore, we agree with the Appellants' position that the record does
not indicate that the claimed elements have been considered sufficiently as
an "ordered combination" under the second part of the Alice framework.
Because the foregoing discussion addresses the Examiner's rejection of all
claims in this Appeal, we do not sustain the rejection of claims 1-3, 5-11,
and 13-20 under 35 U.S.C. § 101.
Obviousness
The Appellants contend that the obviousness rejection relies upon
improper hindsight (Appeal Br. 18-20) and fails to set forth an adequate
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reason to combine the references' teachings (id. at 20-22). Although
presented as separate arguments, these theories are intertwined. As the
Federal Circuit has explained, "[ w ]ithout any explanation as to how or why
the references would be combined to arrive at the claimed invention, we are
left with only hindsight bias that KSR warns against"; consequently, "while
we understand that '[t]he obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation,'
we also recognize that we cannot allow hindsight bias to be the thread that
stitches together prior art patches into something that is the claimed
invention." Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358,
1367 (Fed. Cir. 2017) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
419,421 (2007)).
In addressing claims 1, 9, and 17, the Final Office Action states that
"[i]t would have been obvious to one of ordinary skill in the art at the time
of the invention to include" the primary account number and the
cryptographic comparison, of de Oliveira, in Rosenblatt's system, "since the
claimed invention is merely a combination of old elements, and in the
combination each element merely would have performed the same function
as it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable." Final
Action 8, 9.
The Appellants argue that the rejection provides "no rational
underpinning to support the legal conclusion of obviousness" and that
precedent dictates that it is "not sufficient to establish obviousness by
making unsupported allegations that the prior art is merely a 'predictable
combination."' Appeal Br. 21. Further, the Appellants contend that
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"nothing in Rosenblatt points towards associating any prepay information
with a cryptogram and De Oliveira is silent as to associating a validating
cryptogram with pre-purchase information for an event," such that "the
Office Action's statement that the results of the combination were
predictable is incorrect." Id. at 22. In addition, the Appellants submit that
"each element does not merely perform the same function as it did
separately because Rosenblatt does not describe and is silent as to
associating a cryptogram with prepay information[,] and De Oliveira is silent
as to associating the validation cryptogram with pre-purchase information."
Id.
"[R]ejections on obviousness cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." KSR,
550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Furthermore, a determination of "obviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention." Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir.
2015). The Federal Circuit has explained that, "[i]n determining whether
there would have been a motivation to combine prior art references to arrive
at the claimed invention, it is insufficient to simply conclude the
combination would have been obvious without identifying any reason why a
person of skill in the art would have made the combination." Metalcraft,
848 F.3d at 1366 (citing In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir.
2017)). Whether a person of skill in the art would have had a reason to
combine distinct prior art teachings is a question of fact. Id.
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Yet, the reason provided by the Examiner (Final Act. 9) does not
sufficiently articulate why a person of ordinary skill in the art, at the relevant
time, would have combined the references, in the manner set forth by the
Examiner.
Accordingly, we do not sustain the rejection of claims 1-3, 5-11,
and 13-20 under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision rejecting claims 1-3, 5-11,
and 13-20 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1-3, 5-11,
and 13-20 under 35 U.S.C. § 103(a).
REVERSED
10
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORI VAN DELOO and ZACK FUERSTENBERG
Appeal2017-000627
Application 13/691,191
Technology Center 3600
Before PHILIP J. HOFFMANN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge, dissenting-in-part.
I join the Majority in reversing the rejection of claims 1-3, 5-11, and
13-20 under 35 U.S.C. § 103(a). I respectfully dissent as to the rejection of
those claims under 35 U.S.C § 101.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S.Ct. 2347, 2354 (2014). The Supreme Court has "long held that this
provision contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. 134 S.Ct.
at 2354 (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 588-89 (2013)).
Appeal2017-000627
Application 13/691,191
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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, 134 S.Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (emphasis
added) (citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
As Alice makes clear, we must first determine whether the claim is
directed to a patent-ineligible concept; if so, then we consider whether the
elements transform the nature of the claim into a patent-eligible application.
Alice, 134 S.Ct. at 2355. However, the Majority skips the first step without
making a determination as to the "adequacy" of the Examiner's
determination, and goes directly to the second step. Because the Majority
fails to make the initial determination, I dissent from the analysis.
Further, even assuming arguendo, as the Majority does, that, as the
Examiner determines, the claims are directed to "allowing users to receive,
store and validate information associated with event merchandise or event
services," an abstract idea (Final Act. 3), I disagree with the Majority's
analysis under the second step.
The Majority finds that the Examiner does not address "the
Appellants' point that even a collection of entirely conventional individual
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elements may form an unconventional combination that amounts to
significantly more than an identified abstract idea." Opinion 6 ( citing
Appeal Br. 13-16; Reply Br. 12-15). But, the Appellants do not make this
point, or provide reasoning or argument how or that the Examiner does not
consider the limitations in combination. The Appellants recite the Alice test
and list the "bullet points" in the Update on Subject Matter Eligibility, 80
Fed. Reg. 45429 (July 30, 2015) ("Interim Guidance") "that are indicated as
qualifying as 'significantly more' [and] are clearly met by the instant
claims." Appeal Br. 13; see also Reply Br. 13 ("[T]he current claim
limitations, when viewed as an ordered combination, include an inventive
concept."). The points include improvements to another technology or the
functioning of the computer itself, effecting a transformation to a different
state or thing, "[a]dding a specific limitation other than what is well-
understood, routine and conventional in the field, or adding unconventional
steps that confine the claim to a particular useful application," and other
meaningful limitations beyond generally linking the use of the abstract idea
to a particular technological environment. Appeal Br. 13; see also Reply
Br. 13-14.
The Appellants argue, "[a]s a first example, the recited claim elements
clearly '[add] a specific limitation other than what is well-understood,
routine and conventional in the field"' (Appeal Br. 13), and "submit that it is
not 'well-understood, routine and conventional in the field' to perform the
steps of validating" that comprises generating a first cryptogram and
comparing the first cryptogram with a stored second cryptogram,
determining that the first cryptogram is associated with specific information,
and generating a notification based on that determination (id. at 13-14 ). The
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Appellants provide no further reasoning as to why the elements are not well-
understood, routine, and conventional.
In the Final Action, the Examiner recites the claim elements and
determines that those elements, "when taken in combination, together do not
offer substantially more than the sum of the functions of the elements when
each is taken alone." Final Act. 3--4. The Examiner responds to the
Appellants' arguments made in the Appeal Brief regarding the second step
of the Alice/Mayo framework and determines that the limitations to which
the Appellants refer are part of the abstract idea of allowing users to receive,
store, and validate information. See Ans. 6. The Examiner finds that, to the
extent the step of generating a cryptogram is not part of the abstract idea, it
is "no more than insignificant post-solution activity." Id. at 4, 6. Further,
the Examiner finds that the Specification does not clearly define the
cryptograms, that as such, they can be merely code, and that the validating
step compares these codes. Id. at 6. The Examiner also finds that the
claimed processor and computer-readable storage medium are "generic
computer components whose implementation would be routine in any
computerized embodiment," and cites to the Federal Circuit's reasoning in
In re TL! Comm 's LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016).
Thus, the Examiner analyzes the claimed coordinated interaction of the use
of cryptograms with the other recited elements in determining that the
comparison of code, as part of the validating step, is part of the abstract idea,
and that this is a generic functionality that is well-understood, routine, and
conventional.
The Majority finds that Berkheimer v. HP Inc., 881 F.3d 1360 (Fed.,
Cir. 2018) applies here ( Opinion 7), and the Examiner fails to provide
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support for the finding that validating by generating and comparing
cryptograms is well-understood, routine, and conventional. I disagree.
Here, the Examiner provides reasoning that the Specification does not
provide details for generating a cryptogram. Based on the portions of the
Specification cited by the Appellants as support for the validating step (see
Appeal Br. 5 (citing Spec. ,r,r 44, 47, 58---60, 66-71, Figs. 1, 4--6)), I agree.
Paragraph 44 simply provides that a cryptogram is generated, paragraph 4 7
simply refers to associating the items with a cryptogram, and paragraphs 58
through 60 provide that the validation includes generating a cryptogram and
comparing the generated cryptogram to a list of stored cryptograms.
Paragraphs 65-71 purportedly describe the process of generating a
cryptogram. These paragraphs describe that a cryptogram is a code and a
validation cryptogram is a "cryptographic token value." Spec. ,r 67. The
validation cryptogram "may be an encrypted value, generated using an
encryption algorithm and a key," "a hash value," and/or "generated in the
purchase cycle by the merchant validation server." Id. ,r,r 67, 70- 71, and
Fig. 4 ("S420"). And, paragraph 72 provides that "[a]ny suitable encryption
algorithms may be used, such as DES, triple DES (3DES), AES, etc." As
such, the Specification is clear that generating a cryptogram is a well-
understood, routine, and conventional activity. And, the Specification
provides for a generic, conventional processor for performing the claimed
functions. See Spec. ,r,r 27, 37 (Describing a purchase/validation terminal as
a generic computing device.).
The Appellants do not offer evidence or support that the individual
steps and/ or the order of the steps are unconventional. The Appellants
merely recite the claim language, rely on the arguments presented against
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the rejection under 35 U.S.C. § 103(a), and state that is not well-understood,
routine and conventional in the field to perform the steps of validating,
determining, and generating. Appeal Br. 13-14. The Appellants do not
provide any evidence, such as citations to the Specification as provided in
Berkheimer, disputing the Examiner's findings to the contrary. See
Automated Tracking Sols., LLC v. Coca-Cola Co., 723 F. App'x 989,995
(Fed. Cir. 2018); Intellectual Ventures I LLC v. Symantec Corp., No. 2017-
1814, 2018 WL 1324863, at *1 (Fed. Cir. Mar. 15, 2018).
Further, contrary to the Majority's statement, the Appellants do not
argue that the "recited combination of elements provides particular benefits"
(Opinion 6), but rather, the Appellants argue that, similar to DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), "the problem to be
solved is necessarily rooted in computer technology and the solution is a
computer implemented solution." Appeal Br. 15. The Appellants contend
that by using the cryptogram, "it is not necessary to persistently store
sensitive consumer data such as PANs." Id. However, the Appellants
provide no support for this statement, nor does the Specification describe or
discuss this "benefit." And, the Appellants do not show that the claim is
directed to statutory subject matter because they claim a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR Holdings,
773 F.3d at 1257.
Accordingly, for the above reasons, I dissent from the decision of the
Majority to reverse the rejection of the claims under 35 U.S.C. § 101.
6