Ex Parte Yoo

Patent Trials and Appeals Board

Feb 7, 2019

13465402 - (D) (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/465,402
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
05/07/2012
02/11/2019
FIRST NAMED INVENTOR
David Yoo
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.
BOKU-P064 3203
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/11/2019 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID YOO
Appeal2018-000833 1
Application 13/465,402
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-7, 9-27, and 29-
37. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to managing electronic transactions.
Spec. ,r 2.
Independent claim 1 is illustrative:
1. A transactions network comprising:
a plurality of point-of-sale devices, each point-of-sale
device having a terminal number and having an input adapted for
receiving a first consumer account identifier, wherein the first
consumer account identifier is not a PAN and the first consumer
1 The Appellant identifies Boku, Inc. as the real party in interest. Br. 3.
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Application 13/465,402
account identifier is not an MSISDN, and adapted for receiving
a first PIN, and transmitting a charge request to a merchant
acquirer computer system, the charge request including the first
consumer account identifier, the first PIN and an amount,
wherein the merchant acquirer computer system determines a
first merchant account identifier corresponding to the terminal
number and transmits a charge request that includes the amount,
the first merchant account identifier, the first consumer account
identifier, and the first PIN; and
a computer system for processing charge requests using
different types of account identifiers, comprising:
a server computer system including:
a processor;
a computer-readable medium connected to the processor;
a network interface device connected to the processor; and
a set of instructions on the computer-readable medium, the
set of instructions being executable by the processor and
including:
a data store;
a plurality of consumer accounts stored in the data
store, each consumer account having a respective a second PIN
and a respective second consumer account identifier, wherein the
second consumer account identifier is not a PAN and the second
consumer account identifier is not an MS ISDN;
a plurality of merchant accounts stored in the data
store, each merchant account having a second merchant account
identifier and a plurality of terminal numbers;
a communication and routing module that receives
the charge request from the merchant acquirer computer system
over the network interface device, the charge request including
the amount, the first merchant identifier, the terminal number,
the first consumer account identifier, wherein the first consumer
account identifier is of the same type as the second consumer
account identifier, and a first PIN, and identifies a selected one
of the consumer accounts by associating one of the second
consumer account identifiers with the first consumer account
identifier, and identifies a selected one of the merchant accounts
by associating one of the second merchant account identifiers
with the first merchant account identifier; and
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Application 13/465,402
a transaction processing system that processes the
charge request based on an account detail of the selected
consumer account, selected merchant account and terminal
number in the charge request, the processing of the charge
request only being permitted upon a favorable comparison of the
second PIN and the first PIN, and transmitting a confirmation in
response to the charge request, the confirmation including the
first merchant account identifier.
The Examiner rejects claims 1-7, 9-27, and 29-37 under 35 U.S.C.
§ 101 as directed to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1, 7, 9-13, 16-19, 21, 27, 29-32,
and 34--36 under 35 U.S.C. § I03(a) as unpatentable over Hirson et al.
(US 2011/0217994 Al, pub. Sept. 8, 2011) ("Hirsonl"), Dwight et al.,
(US 2012/0166311 Al, pub. June 28, 2012) ("Dwight"), Singhal
(US 2011/0119184 Al, pub. May 19, 2011), Kimberg et al.
(US 2012/0166334 Al, pub. June 28, 2012) ("Kimberg"), and Carlson et al.
(US 2013/0073859 Al, pub. Mar. 21, 2013) ("Carlson").
The Examiner rejected claims 2---6, 20, 22-26, and 37 under 35 U.S.C.
§ I03(a) as unpatentable over Hirsonl, Dwight, Singhal, Kimberg, Carlson,
and Hirson et al. (US 2011/0237232 Al, pub. Sept. 29, 2011) ("Hirson2").
The Examiner rejected claims 14, 15, and 33 under 35 U.S.C. § I03(a)
as unpatentable over Hirsonl, Dwight, Singhal, Kimberg, Carlson, and
Giordano (US 2009/0313131 Al, pub. Dec. 17, 2009).
We AFFIRM.
ANALYSIS
Reiection under 35 U.S. C. § 1 OJ
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
Based on the steps in claims 1 and 21 of storing account information,
receiving a request with an account identifier, identifying a consumer
account associated with the account identifier, processing the charge request
based on the consumer account, and transmitting a confirmation, the
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Examiner finds the claims are directed to abstract ideas that merely involve
organizing, storing, and transmitting information, similar to claims found to
be abstract in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011). Final Act. 10. The Examiner further finds that the claims
represent fundamental economic practices. Id.
We agree with the Examiner. The claims involve processing point-of-
sale and online payment transactions using a customer payment account,
which the Specification discusses with respect to related art. See Spec. ,r,r 3-
4. The claimed invention relies on non-traditional identifying information
instead of the more commonly-used payment account number or mobile
telephone number. See id. ,r 169 ( cited at Br. 3). The claims are thus
directed to performing financial transactions, which is a fundamental
economic practice, and accepted as an abstract idea. See MPEP
§ 2106.04(a)(2)(A). Merely altering the meaning or form of some of the
data used does not change the abstract nature of the claims.
We also agree the claims merely store, identify, process, and transmit
data, which is similar to several cases found to be abstract. See id.
§ 2106.04(a)(2)(D).
The Appellant argues the claims are directed to a specific
improvement in computer functionality (Br. 14--15), through software logic
changes to permit non-PAN and non-MSISDN data to be used to identify an
account to use, for processing payment requests (id. at 20). We are
unpersuaded by this line of argument, because general purpose computers
are already capable of storing, identifying, processing, and transmitting
various types of data. Changing from one data format, PAN or MSISDN, to
another is just changing the human interpretation of what that data
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represents, which is not technological. See, for example, Kimberg ,r 44,
which includes "may include converting an actual account number to a
virtual card number (VCN)." Kimberg's VCN is not a PAN, but the
computer detection is no more than a routine matching function, as claimed
("the first consumer account identifier is of the same type as the second
consumer account identifier"). We are unpersuaded the computer is
improved in function by altering the meaning imposed on the data as to
whether it is an account number, or just looks like an account number. See
MPEP § 2106.05(a). The general purpose computers used by the claimed
invention (Spec. ,r,r 185-208) are thus not a particular machine, and do not
transform matter (MPEP § 2106.05(b}-(c)), but instead merely implement an
abstract idea of using different data, on a computer (id. at (f)).
The Appellant has not shown error in the Examiner's rejection of
claims as being abstract. Therefore, we sustain the rejection of claims 1-7,
9-27, and 29-37 under 35 U.S.C. § 101.
Reiections under 35 U.S.C. § 103(a)
We are not persuaded by the Appellant's argument that the cited
references fail to disclose a user data-input interface adapted to receive a
consumer account identifier, which is not a primary account number
("PAN") or mobile phone number ("MSISDN"), 2 together with a personal
2 Appellant associates the claim term MSISDN with "'Mobile Subscriber
Integrated Services Digital Network Number."' Spec. ,r 79. This is
generally considered to be the same global telephone number as the "Mobile
Station International Subscriber Directory Number," which includes a
country code prefix. See, for example,
https://en.wikipedia.org/wiki/MSISDN, last retrieved on Feb. 1, 2019. An
MSISDN in the United States, therefore, would be a number "1" followed
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identification number ("PIN"), 3 or to disclose the transmission of a non-
P AN, non-MSISDN consumer account identifier, together with a PIN,
through a merchant acquirer computer system 280 as part of a payment
transaction. Br. 25. As evidence in support of this assertion, the Appellant
asserts that Hirson 1 does not disclose identifying customers using an
MSISDN, Dwight and Singhal each disclose no merchant acquirer system,
and Kimberg does not disclose the use of a PIN along with other identifying
information. Br. 25-28.
The Appellant is essentially arguing shortcomings in individual
references, when the rejection is based on a combination of references.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Specifically, the Examiner finds Hirsonl discloses a payment transaction
that sends a customer identifier and PIN to a merchant acquirer system, but
fails to disclose that the customer identifier is either a PAN or a MSISDN.
Final Act. 12-14. The Examiner finds Dwight discloses a customer
identifier that is not a PAN or MSISDN, but fails to disclose an interface for
a user to enter such information. Id. at 14--16. The Examiner finally finds
that Kimberg discloses a user interface configured to accept a non-PAN,
non-MSISDN account identifier input as part of a purchase transaction. Id.
by the ten-digit US phone number, which is eleven digits total. However,
element 702 of Figure 13B omits the international country code, and
functions with only a ten-digit number, so we construe the claimed MSISDN
to be a mobile telephone number within a country, without the country code.
See Fig. 13B, Spec. ,r 167.
3 See Spec. ,r 79.
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at 17-19, citing Kimberg ,r 53. Accordingly, when considered collectively,
we are unpersuaded the Examiner erred in asserting that the proffered
combination of references meets the following claim language:
point-of-sale device having a terminal number and having an
input adapted for receiving a first consumer account identifier,
wherein the first consumer account identifier is not a PAN and
the first consumer account identifier is not an MSISDN, and
adapted for receiving a first PIN, and transmitting a charge
request to a merchant acquirer computer system,
of independent claims 1 and 21. For this reason, we are unpersuaded of
error in the Examiner's obviousness rejections. Thus, we sustain the
rejections under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the rejection of clams 1-7, 9-27, and 29-37 under
35 U.S.C. § 101.
We AFFIRM the rejections of claims 1-7, 9-27, and 29-37 under
35 U.S.C. § 103(a).
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
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