Ex Parte Winterer et al

Patent Trial and Appeal Board

Jan 9, 2017

10757317 (P.T.A.B. Jan. 9, 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.
10/757,317 01/14/2004 Mary Jo Winterer AP35651 - 070457.1675 3521
21003 7590 01/11/2017
RAKFR ROTTST T P
EXAMINER
30 ROCKEFELLER PLAZA LIU, CHIA-YI
44TH FLOOR
NEW YORK, NY 10112-4498 ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/11/2017 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY JO WINTERER and
PETER S. WEINBERGER
Appeal 2015-0027531
Application 10/757,317
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 CASE
This is an appeal from the final rejection of claims 21—32. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to conducting financial transactions
using payment cards. Spec, para 2.
1 The Appellants identify MasterCard Inf 1 Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2015-002753
Application 10/757,317
Independent claim 21 is illustrative:
21. A computer system maintained by an issuing
financial institution, the issuing financial institution issuing at
least one credit card account to a consumer, the computer
system comprising:
at least one memory storing data representative of
an original line of credit amount available for purchases using
said credit card account, and an identification of a linked
deposit account, said deposit account maintained at a second
financial institution other than said issuing financial institution;
an interface to receive at least one credit card
transaction message via a payment network, said transaction
message containing a transaction amount;
at least one processor, communicably connected to
said interface and said at least one memory, said at least one
processor programmed with logic for:
reducing an available credit limit of said at
least one credit card account based at least in part on said
transaction amount associated with said at least one credit card
transaction message,
determining an automatic deduction amount
based at least in part on a result of adding the transaction
amounts of each of said at least one credit card transaction
messages received during a predetermined deduction cycle,
automatically initiating a direct debit at the
conclusion of said predetermined deduction cycle to said
deposit account maintained at said second financial institution
in the amount of said automatic deduction amount, and
refreshing, in response to completion of said
direct debit, said available credit limit to a full amount of said
original line of credit amount.
Claims 21—32 are rejected under 35 U.S.C. § 101 as reciting ineligible
subject matter in the form of an abstract idea.
2
Appeal 2015-002753
Application 10/757,317
Claims 21 and 27 are rejected2 under 35 U.S.C. § 103(a) as
unpatentable over Bucci (US 6,786,400 Bl, iss. Sept. 7, 2004), Jaros
(US 6,877,656 Bl, iss. Apr. 12, 2005), DeSane (US 2003/0041018 Al, pub.
Feb. 27, 2003), and Ieshima (US 2003/0066880 Al, pub. Apr. 10, 2003).
We AFFIRM-IN-PART.
ANALYSIS
Rejection of Claims 21—32 under 35 U.S.C. £ 101
Independent claim 27 recites a method, and independent claim 21
recites a system with logic to perform steps that are substantially equivalent
to those in claim 27.
We are persuaded by the Appellants’ argument that the claims are not,
by themselves, an abstract idea in the form of a fundamental economic
practice, as asserted by the Examiner, at least in part because the claims
recite a step for “automatically initiating a direct debit.” Reply Br. 2—\.
The Examiner advances that three limitations of independent claims
21 and 27 are abstract ideas: “reducing available credit limit of credit card
account, determining automatic deduction amount and initiation direct debit
at conclusion of a deduction cycle.” Answer 6. The Examiner further
reasons that additional elements in the claims are no more than instructions
to implement the above abstract idea on a generic computer, “in particular
obtaining exchanging communications, transmitting and receiving
information over a network and applying decision rules by a computer.” Id.
2 The Examiner has withdrawn the rejection of dependent claims 22—26 and
28—32 under 35 U.S.C. § 103(a). Answer 5.
3
Appeal 2015-002753
Application 10/757,317
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 Bank Inti., 134 S. Ct. 2347, 2355 (2014) (