Ex Parte Weber et al

Patent Trial and Appeal Board

May 23, 2018

12999705 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/999,705 06/15/2011 Katia Weber
66945 7590 05/25/2018
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.
79900-083410US-796370 7684
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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 KATIA WEBER, CRISTINA GOELLNER,
and NEWTON H. SAKO
Appeal2017-002335
Application 12/999,705
Technology Center 3600
Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-17, 19, 20, and 23-25, constituting all claims
pending in the current application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, "[ t ]he real party in interest in this patent
application is Visa International Service Association" (App. Br. 3).
Appeal2017-002335
Application 12/999,705
STATEMENT OF THE CASE
Appellants' invention is directed to a system and method for
providing enhanced transaction data, for example, line item details,
associated with financial transactions. Spec. i-fi-1 2, 7. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A system for processing a financial transaction conducted
by an employee using an employer provided financial
presentation device which is presentable to merchants, the
system comprising:
a memory;
a processor coupled to the memory; and
a processing module executed by the processor, the
processing module:
before the financial transaction is authorized by an
issuer of the financial presentation device:
processes an authorization request from a merchant
computer for approval of the financial transaction,
wherein the authorization request is received
during a transaction authorization process, and
wherein the authorization request includes
financial transaction data for the financial transaction and
related enhanced data containing line item details of the
financial transaction;
stores the financial transaction data and the related
enhanced data in the memory; and
transmits the stored financial transaction data and
the related enhanced data to a reporting computer so as to
2
Appeal2017-002335
Application 12/999,705
make both the financial transaction data and the related
enhanced data available for access by the employer,
wherein the reporting computer receives the stored
financial transaction data together with the related
enhanced data such that the reporting computer is not
required to match the stored financial transaction data to
the related enhanced data; and
transmits the authorization request to a financial
transaction facilitator, wherein the financial transaction
facilitator receives the authorization request including the
financial transaction data and the related enhanced data,
removes the related enhanced data from the authorization
request, and transmits an authorization request message
including the financial transaction data but without the
related enhanced data to the issuer of the financial
presentation device.
REJECTIONS
Claims 1-17, 19, 20, and 23-25 stand rejected under 35 U.S.C. § 101
as directed to a nonstatutory subject matter. Ans. 4.
ANALYSIS
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014 ), identifies a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under 35 U.S.C.
§ 101. In the first step, "[ w ]e must first determine whether the claims at
issue are directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claims are directed to the abstract idea of
processing a transaction, which is a fundamental economic concept. Final
Act. 3 see also Ans. 4 (similarly determining the claims are directed to the
3
Appeal2017-002335
Application 12/999,705
abstract idea of "a financial transaction conducted by an employee").
Appellants argue the Examiner oversimplifies the analysis because
the focus of the claims and the invention is not just on merely
processing a transaction, but is instead on how to provide
different types of information (e.g., basic transaction data and
enhanced data) in a coordinated and timely manner such that
the requirements of reconciliation and matching of the different
types of data can be avoided.
App. Br. 8-9 (citing Spec. i-f 6). According to Appellants, "the claims are
not merely directed to processing a transaction, but are instead directed to
coordinated and timely reporting of different types of information." App.
Br. 9 (citing Spec. i-f 9); see also Reply Br. 2 ("the focus of the claims and
the invention is on ... providing different types of information (e.g., basic
transaction data and enhanced data) in a coordinated and timely manner
... ").
We are not persuaded the claims are directed to patent eligible subject
matter. The claims describe receiving an authorization request, including
financial transaction data and enhanced data, storing the financial transaction
data and related enhanced data, transmitting the financial transaction data
and related enhanced data to a reporting computer, transmitting the
authorization request to a financial transaction facilitator, and transmitting
an authorization request message including the financial transaction data.
We agree with the Examiner the claims are directed to the abstract idea of
processing a transaction, which is a fundamental economic concept. E.g.,
claim 1 ("[a] system for processing a financial transaction ... "); claim 11
("[a] method of processing a financial transaction ... ").
Further, Appellants' description of the claims as "directed to
coordinated and timely reporting of different types of information" (App.
4
Appeal2017-002335
Application 12/999,705
Br. 9) further supports that the claims are directed to an abstract idea as the
claims recite the financial transaction data and related enhanced data are
received, stored, and transmitted to a reporting computer, activities that fall
squarely within the realm of abstract ideas. See, e.g., In re Salwan, 681
F. App'x 938, 941 (Fed. Cir. 2017) (affirming the rejection under§ 101 of
claims directed to "storing, communicating, transferring, and reporting
patient health information," noting that "while these concepts may be
directed to practical concepts, they are fundamental economic and
conventional business practices"); Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("we have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas");
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) ("[t]he concept of data collection,
recognition, and storage is undisputedly well-known"); Cybeifone Systems,
LLC v. CNN Interactive Grp, Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014)
(nonprecedential) ("using categories to organize, store, and transmit
information is well-established"). "Adding one abstract idea ... to another
abstract idea ... does not render the claim non-abstract." RecogniCorp,
LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
In the second step of the Alice analysis, we "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, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)).
In other words, the second step is to "search for an 'inventive concept' - i.e.,
5
Appeal2017-002335
Application 12/999,705
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."' Id. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
The Examiner determines the claims amount to no more than mere
instructions to implement the idea on a computer, and recitation of generic
computer structure (e.g., processor, memory, user specific computers) that
perform generic computer functions that are well-understood, routine, and
conventional activities. Final Act. 4; see also Ans. 9-10.
Appellants argue the claims provide improvements to the functioning
of the computer, namely, that "the claims recite techniques to provide
financial transaction data and enhanced data to a reporting computer in a
coordinated and timely manner such that the reporting computer is not
required to match the different types of data" by "transmitting the financial
transaction data and the enhanced data together to the reporting computer as
part of the authorization process." App. Br. 10. According to Appellants,
because the reporting computer is not required to perform matching of the
different types of data, this "reduces the processing load at the reporting
computer, and thus improves the functioning of the reporting computer."
App. Br. 10. Appellants argue conventional systems do not perform such
features and "a claim can still be patent eligible, even if all the claimed steps
or functions can be performed by a generic computer." App. Br. 11-12.
We are not persuaded. The claims do not focus on an improvement in
the functioning of a computer, but instead, focus on the abstract idea (e.g.,
receiving, storing, and transmitting data) that uses generic computing
elements. See Electric Power, 830 F.3d at 1354 (explaining that claims
6
Appeal2017-002335
Application 12/999,705
directed to computerized collecting, analyzing, and displaying infonnation
were different from the claims in Enjzsh, LLC v. Aiicrosojt Corp., 822 F.3d
1327 (Fed. Cir. 2016): "the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools"). The claims recite a memory, processor,
processing module, and reporting computer, i.e., generic components.
Indeed, Appellants have not directed our attention to anything in the
Specification that shows, nor can we find, any specialized computer
hardware is required. See Spec. ir~ 25----27. Nor have Appellants
persuasively argued why the functions performed in the claims - receiving,
storing, and transmitting data - are not routine, conventional, and well-
known functions of a generic computer. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) ("[t]hat a computer receives and sends
the information over a network-with no further specification-is not even
arguably inventive"); In re TL! Communications LLC Patent Litigation, 823
F.3d 607, 614 (Fed. Cir. 2016) (server that receives data, extracts
classification information from the received data, and stores the digital
images is insufficient to add an inventive concept). The computers in Alice
were receiving, storing, and sending information over networks connecting
the intermediary to the other institutions involved, and the Comi found the
claimed role of the computers insufficient. 134 S. Ct. at 2359-60; see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (use of Internet to verify credit card transaction does not add enough
to the abstract idea of verifying the transaction).
We disagree with Appellants that the claims are similar to those in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
7
Appeal2017-002335
Application 12/999,705
1341, 1349--52 (Fed. Cir. 2016), and Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841F.3d1288, 1294 (Fed. Cir. 2016). See App. Br. 10-12;
Reply Br. 3-5. Appellants' premise is that transmitting the financial data
and related enhanced data together reduces the processing load at the
reporting computer because the reporting computer is not required to match
the different types of data. App. Br. 10; Reply Br. 3--4.
In BASCOM, the claims were generally directed to filtering content.
827 F.3d at 1348. Although the Court determined the claims recited generic
computer, network, and Internet components that were not inventive by
themselves, it found the ordered combination of the limitations provided the
requisite inventive concept. Id. at 1349-50 ("[A]n inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces."). The patent in BASCOM extensively claimed and
explained how a particular arrangement of elements was "a technical
improvement over prior art ways of filtering such content." Id. at 1350
(E.g., "According to BASCOM, the inventive concept harnesses this
technical feature of network technology in a filtering system by associating
individual accounts with their own filtering scheme and elements while
locating the filtering system on an ISP server.").
In Amdocs, the pertinent claim included language describing
"computer code for using the accounting information with which the first
network accounting record is correlated to enhance the first network
accounting record." 841 F.3d at 1299 (emphasis added). The Court
construed the term "enhance" as being dependent on the invention's
distributed architecture, which was described in the Specification as a
critical advancement over the prior art. Id. at 1300-1301. The Court,
8
Appeal2017-002335
Application 12/999,705
accordingly, found "this claim entails an unconventional technological
solution (enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)." Id. at
1301. Therefore, although generic computers were involved, "the claim's
enhancing limitation necessarily requires that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality." Id. at 1300-1301.
In both Amdocs and BASCOM, there existed substantial argument and
support from the Specification concerning the argued "inventive concept."
Here, Appellants offer no persuasive evidence that the recited devices
operate in any other than a conventional matter. See, e.g., See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) ("[M]erely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea."); Bancorp Servs., L.L.C v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter."); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent-eligible).
Appellants also argue "the Office Action acknowledges that the
claims 'are found to be non-obvious over the prior art of record' ... [so] it
seems at a minimum, the claims would be considered 'new' when taking
into account the claim as a whole and as an ordered combination." App.
Br. 10-11. This argument is not persuasive. The second step in the Alice
9
Appeal2017-002335
Application 12/999,705
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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 89--90; Parker v. Flook, 437 U.S. 584,
588-95 (1978).
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1-17, 19, 20, and 23-25 under 35 U.S.C. § 101 and, therefore, sustain
the Examiner's rejection.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-17, 19, 20, and
23-25 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)(l )(iv).
AFFIRMED
10