John Clerkin

Patent Trials and Appeals Board

Sep 27, 2019

14753440 - (D) (P.T.A.B. Sep. 27, 2019)

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.
14/753,440 06/29/2015 John CLERKIN 0076412-000451 2342
125578 7590 09/27/2019
MASTERCARD
C/O Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22314
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
ADIPDOC1@BIPC.com
charles.wieland@bipc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOHN CLERKIN
________________

Appeal 2018-008457
Application 14/753,440
Technology Center 3600
________________

Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1–20 are rejected under 35 U.S.C. § 101 as a judicial
exception without significantly more. Final Act. 2–6.
Claims 1–20 are rejected under 35 U.S.C. § 103 as obvious over
Hammad (US 2010/0274688 A1; Oct. 28, 2010) and Tannenbaum (US
2009/0234766 A1; Sep. 17, 2009). Final Act. 6–12.
We affirm.
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STATEMENT OF THE CASE
Appellant’s invention relates to “the use of multiple computing
devices where a payment transaction that exceeds a threshold initiated using
a first computing device is supervised and controlled via a second computing
device.” Spec. ¶ 1. Claim 1 is illustrative and reproduced below:
1. A computer implemented method facilitating supervisory
control of payment transactions initiated using a computing device,
comprising:
storing, in an account database of a processing server, a plurality of
account profiles, wherein each account profile includes data related to a
consumer account including at least a first identifier directing electronic
communications to a first computing device associated with the related
consumer account, a second identifier directing electronic communications
to a second computing device associated with the related consumer account,
and one or more consumer designated transaction controls;
receiving, by a receiving device of the processing server, transaction
details from a second computing device for a payment transaction via a
communication network using one or more associated communication
protocols, wherein the transaction details include at least a specific second
identifier and one or more transaction data values;
identifying, by a processing device of the processing server, a specific
account profile stored in the account database where the included second
identifier corresponds to the specific second identifier included in the
received transaction details;
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determining, by the processing device of the processing server, that
the payment transaction does not satisfy the one or more consumer
designated transaction controls included in the identified specific account
profile based on a correspondence between the one or more consumer
designated transaction controls and the one or more transaction data values
included in the received transaction details;
transmitting, by a transmitting device of the processing server, a
confirmation request to the first computing device associated with the first
identifier included in the identified specific account profile via a
communication network using one or more associated communication
protocols, wherein the confirmation request includes at least the one or more
transaction data values;
receiving, by the receiving device of the processing server, a
confirmation message from the first computing device associated with the
first identifier included in the identified specific account profile via a
communication network using one or more associated communication
protocols, wherein the confirmation message includes an indication of
approval or denial of the payment transaction; and
transmitting, by the transmitting device of the processing server, a
message to at least one of: the second computing device associated with the
specific second identifier, a payment network, and a merchant involved in
the payment transaction based on the indication of approval or denial of the
payment transaction, wherein
when the processing device determines that the payment transaction
satisfies the one or more consumer designated transaction controls, the
transmitting device is configured to transmit the message without
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transmission of the confirmation request and receipt of the confirmation
message.

PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
THE JUDICIAL EXCEPTION REJECTION OF CLAIMS 1–20
With respect to claim 1, the Examiner determines “the independent
claims are directed to determining whether a payment transaction does or
does not satisfy certain conditions. Examiner notes this constitutes [a]
fundamental economic practice and a method of organizing human activities
and [is] hence abstract.” Final Act. 4; see also Final Act. 4–6 (discussing
“significantly more”), Ans. 3–11.
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the 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
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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. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; 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
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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 turn 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 (citation 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.
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Claim 11 is a system, which falls within the “machine”
category of 35 U.S.C. § 101.
Although these claims fall within the statutory categories, we still
must determine whether the claim is directed to a judicial exception, namely
an abstract idea. See Alice, 573 U.S. at 217–18. Thus, we must determine
whether the claim recites a judicial exception, and fails to integrate the
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54–55. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.
Step 2A, Prong One
Independent claim 1 is a method claim, and recites the following
limitations:
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[i] storing, in an account database of a processing server,
a plurality of account profiles, wherein each account profile
includes data related to a consumer account including at least a
first identifier directing electronic communications to a first
computing device associated with the related consumer account,
a second identifier directing electronic communications to a
second computing device associated with the related consumer
account, and one or more consumer designated transaction
controls;
[ii] receiving, by a receiving device of the processing
server, transaction details from a second computing device for a
payment transaction via a communication network using one or
more associated communication protocols, wherein the
transaction details include at least a specific second identifier and
one or more transaction data values;
[iii] transmitting, by a transmitting device of the
processing server, a confirmation request to the first computing
device associated with the first identifier included in the
identified specific account profile via a communication network
using one or more associated communication protocols, wherein
the confirmation request includes at least the one or more
transaction data values;
[iv] receiving, by the receiving device of the processing
server, a confirmation message from the first computing device
associated with the first identifier included in the identified
specific account profile via a communication network using one
or more associated communication protocols, wherein the
confirmation message includes an indication of approval or
denial of the payment transaction; and
[v] transmitting, by the transmitting device of the
processing server, a message to at least one of: the second
computing device associated with the specific second identifier,
a payment network, and a merchant involved in the payment
transaction based on the indication of approval or denial of the
payment transaction, wherein
These overall steps [i]–[v] describe an authorization to extend credit. In
particular, credit is extended to the user of the second computing device
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upon authorization by the user of the first computing device. An
authorization to extend credit is a way of “mitigating risk,” and is thus a
“fundamental economic principle[] or practice[].” Memorandum, 84 Fed.
Reg. at 52. Thus, these steps recite the abstract concept of “[c]ertain methods
of organizing human activity.” Id.
Claim 1 further recites the following limitation: “identifying, by a
processing device of the processing server, a specific account profile stored
in the account database where the included second identifier corresponds to
the specific second identifier included in the received transaction details.”
This step describes determining the account for the transaction by making a
comparison. Such a comparison is one or more of “observation, evaluation,
judgment, opinion.” Memorandum, 84 Fed. Reg. at 52. Thus, this step
recites the abstract concept of “[m]ental processes.” Id.
Claim 1 further recites the following limitation:
determining, by the processing device of the processing
server, that the payment transaction does not satisfy the one or
more consumer designated transaction controls included in the
identified specific account profile based on a correspondence
between the one or more consumer designated transaction
controls and the one or more transaction data values included in
the received transaction details;
This step describes determining whether or not a transaction control is
appropriate by making a comparison. Such a comparison is one or more of
“observation, evaluation, judgment, opinion.” Memorandum, 84 Fed. Reg. at
52. Thus, this step recites the abstract concept of “[m]ental processes.” Id.
Claim 1 further recites the following limitation: “when the processing
device determines that the payment transaction satisfies the one or more
consumer designated transaction controls, the transmitting device is
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configured to transmit the message without transmission of the confirmation
request and receipt of the confirmation message.” This step describes
transmitting a message based on the previous determination with respect to
the transaction control. Such a transmission is the providing of information.
Providing information is an “observation.” Memorandum, 84 Fed. Reg. at
52. Thus, this step recites the abstract concept of “[m]ental processes.” Id.
Independent claim 11 recites limitations similar to those discussed
with respect to claim 1. Thus, claim 11 also recites an abstract idea.
Step 2A, Prong Two
Because claims 1 and 11 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
In addition to the limitations of claim 1 discussed above that recite
abstract concepts, claim 1 further recites “an account database,” “a
processing server,” “a first computing device,” “a second computing
device,” “a receiving device,” and “a communication network.” The
Specification does not provide additional details that would distinguish the
additional limitations from generic implementation. See Spec. ¶¶ 21–34.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Specifically,
the “account database,” “processing server,” “first computing device,”
“second computing device,” “receiving device,” and “communication
network” are not improved in their functioning, but, instead, merely perform
the abstract idea. In this case, we do not see any particular machine or
manufacture that is integral to the claim; nor do we see any transformation.
We do not see any recited elements applying or using the judicial exception
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in any meaningful way beyond generally linking the judicial exception to the
recited elements. See Memorandum, Section III(A)(2).
Accordingly, we determine that claim 1 is directed to a judicial
exception because it does not recite additional elements that integrate the
recited judicial exception into a practical application. Claim 11 recites
similar limitations to those discussed with respect to claim 1, and therefore
also is directed to a judicial exception.
Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1 and 11 are directed to a judicial exception, we next
determine, according to Alice, whether these claims recite an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than a judicial exception.
The Specification does not provide additional details about the
“account database,” “processing server,” “first computing device,” “second
computing device,” “receiving device,” and “communication network”
recited in the claims, that would distinguish the recited hardware
components from generic implementation. See Spec. ¶¶ 21–34.
The conventional or generalized functional terms by which the
computer components are described reasonably indicate that Appellant’s
Specification discloses conventional components. See Spec. ¶¶ 21–34.
In view of Appellant’s Specification, the claimed hardware
components, including the “account database,” “processing server,” “first
computing device,” “second computing device,” “receiving device,” and
“communication network” reasonably may be determined to be generic,
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purely conventional computer elements. Thus, the claims do no more than
require generic computer elements to perform generic computer functions,
rather than improve computer capabilities.
Accordingly, we determine that claims 1 and 11 are not directed to
significantly more than a patent ineligible concept.
Appellant’s principal arguments
Appellant argues the rejection fails to provide sufficient analysis, and
fails to respond to Appellant’s previously presented arguments. See App. Br.
8–10; see also Reply Br. 2.
These arguments do not show any error because, as we explain above,
the elements of claims 1 and 11 are the abstract concepts of “[c]ertain
methods of organizing human activity” and “[m]ental processes.”
Memorandum, 84 Fed. Reg. at 52. We also explain that the claims do not
recite additional elements that integrate the recited judicial exception into a
practical application, and are not directed to significantly more than a patent
ineligible concept.
Appellant further argues the claimed invention “solves the technical
problems existing in the industry and the cited prior art, as only the
transactions that the subordinate feels the need to explicitly authorize
(because they go beyond the desired controls) are brought to their attention.”
App. Br. 12. Appellant further argues the claimed invention requires
specially configured computing devices. See App. Br. 12–13; see also Reply
Br. 3.
We disagree. Although we do not dispute that the various hardware
components include specific logic for performing the recited steps,
Appellant does not persuasively explain why the claimed steps improve
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technology as a whole. See MPEP § 2106.05(a). Rather, the claims merely
adapt the method of facilitating supervisory control of payment transactions
to an execution of steps performed by generic computing devices linked
together in a network. See Credit Acceptance Corp. v. Westlake Services,
859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that
mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.”); see also
Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (A computer “employed only for its most
basic function . . . does not impose meaningful limits on the scope of those
claims.”).
Further, Appellant’s identified improvements are improvements to the
abstract idea, not improvements to a technology or computer functionality.
Thus, on the record before us, the claim limitations do not improve the
functionality of the various hardware components, nor do they achieve an
improved technological result in conventional industry practice. McRO, Inc.
v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
More particularly, we do not agree that facilitating supervisory control of
payment transactions improves the technology as a whole.

THE OBVIOUSNESS REJECTION OF CLAIMS 1–20 OVER HAMMAD AND
TANNENBAUM
The Examiner finds Hammad and Tannenbaum teach all limitations of
claim 1. Final Act. 6–9 (citing Hammad ¶¶ 6, 20–21, 38, 50, 54–60, 66;
Tannenbaum ¶¶ 23–26, 30–33, 46).
In particular, the Examiner finds Tannenbaum teaches
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determining, by the processing device of the processing
server, that the payment transaction does not satisfy the one or
more consumer designated transaction controls included in the
identified specific account profile based on a correspondence
between the one or more consumer designated transaction
controls and the one or more transaction data values included in
the received transaction details,
as recited in claim 1. Final Act. 8 (citing Tannenbaum ¶¶ 23–26, 30–33).
In particular, the Examiner finds Tannenbaum teaches “when the
processing device determines that the payment transaction satisfies the one
or more consumer designated transaction controls, the transmitting device is
configured to transmit the message without transmission of the confirmation
request and receipt of the confirmation message,” as recited in claim 1. Final
Act. 8 (citing Tannenbaum ¶ 46).
The Examiner reasons
it would have been obvious to a person having ordinary skills in
the art at the time of the invention to modify the above noted
disclosure of Hammad as it relates to transaction approval system
to include the above noted disclosure of Tannenbaum as it relates
to administration of financial accounts. The motivation for
combining the references would have been to enrol[l] account
holders to transaction alert program.
Final Act. 9.
Appellant contends Tannenbaum does not teach
determining, by the processing device of the processing
server, that the payment transaction does not satisfy the one or
more consumer designated transaction controls included in the
identified specific account profile based on a correspondence
between the one or more consumer designated transaction
controls and the one or more transaction data values included in
the received transaction details,
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and “when the processing device determines that the payment transaction
satisfies the one or more consumer designated transaction controls, the
transmitting device is configured to transmit the message without
transmission of the confirmation request and receipt of the confirmation
message,” as recited in claim 1. See App. Br. 15; see also Reply Br. 4–5. In
support of this contention, Appellant presents the following principal
arguments:
i.
First, Tannenbaum discloses determining whether or not to
gather additional data at a point of sale, whereas the appealed
claims determine whether or not approval has to be received for
a payment transaction. Second, Tannenbaum performs this
determination without any regard for transaction controls, as
recited in the appealed claims, instead making its determination
based on profile data irrespective of the transaction taking place.
App. Br. 16.
ii.
Hammad discloses that all transactions conducted by a specific,
portable device enrolled in a transaction alert program require
approval. Tannenbaum, as described in paragraph [0046],
performs any special actions, such as the gathering of
authentication data, at a point of sale prior to any attempt to
process the transaction. A combination of Hammad and
Tannenbaum would result in all transactions still requiring
approval, with modification only being that the point of sale
would first gather additional information, if applicable. The
resulting combination fails to disclose or suggest the claimed
invention, where requiring approval is conditional based on
transaction controls.
App. Br. 16.
In response, the Examiner finds “Hammad teaches transaction
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controls whereby an approving entity (e.g., employer, parent, or
administrator) sets up alerts for transactions that exceed a specified amount
to determine whether to approve or not approve such transactions.” Ans. 12
(citing Hammad ¶¶ 20, 51, 63); see also Ans. 14–15 (citing Hammand ¶ 63).
Furthermore, the Examiner finds “Tannenbaum teaches a third party
transmitting a message where it determines that the payment transaction
satisfies consumer designated controls (e.g., they do not exceed a certain
amount). If a transaction were to exceed a certain threshold amount, it would
require specific approval for authorization.” Ans. 13 (citing Tannenbaum ¶¶
25, 26); see also Ans. 14–15 (citing Tannenbaum ¶ 25).
We do not see any error in the contested findings of the Examiner.
Nor do we see any error in the Examiner’s conclusion of obviousness.
Tannenbaum discloses
[t]he system can be designed, if desired, such that if the amounts
in a category (or if the total outstanding balance at that time) were
to exceed a certain amount, user 100, or a third party as identified
in the user’s profile, would be required to give specific approval
for a particular purchase.
Tannenbaum ¶ 25.
Thus, we find Tannenbaum teaches or suggests “determining, by the
processing device of the processing server, that the payment transaction does
not satisfy the one or more consumer designated transaction controls”
(Tannenbaum’s “certain amount”) “included in the identified specific
account profile based on a correspondence between the one or more
consumer designated transaction controls and the one or more transaction
data values included in the received transaction details,” as recited in claim
1. See Tannenbaum ¶ 25.
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We further find Tannenbaum teaches or suggests “when the
processing device determines that the payment transaction satisfies the one
or more consumer designated transaction controls” (Tannnenbaum’s “certain
amount”), “the transmitting device is configured to transmit the message
without transmission of the confirmation request and receipt of the
confirmation message,” as recited in claim 1. See Tannenbaum ¶ 25.
Regarding Appellant’s argument (i), this argument is solely directed
to the disclosure in Tannenbaum ¶ 46, and does not address the disclosure in
Tannenbaum ¶ 25, which teaches the argued limitations for reasons
explained above.
Regarding Appellant’s argument (ii), this argument is also directed to
the disclosure in Tannenbaum ¶ 46, and for reasons explained above, we do
not agree that all transactions in Tannenbaum still require approval. See
Tannenbaum ¶ 25.
We, therefore, sustain the Examiner’s rejection of claim 1. We also
sustain the Examiner’s rejection of claims 2–20, which are not separately
argued with particularity.

ORDER
The Examiner’s decision rejecting claims 1–20 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)(1).

AFFIRMED