Michael Henry. Fiore et al.

Patent Trials and Appeals Board

Nov 12, 2019

13444263 - (D) (P.T.A.B. Nov. 12, 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.
13/444,263 04/11/2012 Michael Henry FIORE 0076412-000048 4509
21839 7590 11/12/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/12/2019 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL HENRY FIORE and MAX CHION

Appeal 2018-000670
Application 13/444,263
Technology Center 3600
____________

Before MAHSHID D. SAADAT, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–19, 21, and 23–35. Claims 4, 20, and 22
are cancelled. We have jurisdiction over the pending rejected claims under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
MasterCard International Incorporated. (Appeal Br. 2.)
Appeal 2018-000670
Application 13/444,263

2
THE INVENTION
Appellant’s disclosed and claimed invention is directed to
authentication of payment transactions using geographical location
information provided by a mobile device to determine that the mobile device
has entered a premises of a merchant. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method for two-stage authentication of a user of a
mobile device for a payment account number transaction, the
method comprising:
storing, in a storage device of a managing computer
system, at least one payment account number of a user in
association with a mobile device of the user;
identifying, by a processing device of the managing
computer system, a location of the mobile device at a particular
merchant's physical location;
providing, by the processing device, first authentication
data of the user of the at least one payment account number for
payment transactions with the merchant upon the mobile device
entering a premises of the merchant, wherein the user is
authenticated for future transactions at the merchant based upon
the provided first authentication data;
storing, in the storage device, an indication that the user
is authenticated based upon the provided first authentication
data; and
receiving, by the processing device, second
authentication data, said second authentication data received
from the user as part of a payment transaction against the at
least one payment account number associated with said mobile
device, wherein the payment transactions is initiated at said
merchant,
Appeal 2018-000670
Application 13/444,263

3
wherein the user is authenticated based upon the
provided first authentication data prior to the initiation of the
payment transaction at said merchant.

REJECTIONS
The Examiner rejected claims 1–3, 5–19, 21, and 23–35 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. (Final
Act. 4–7.)
The Examiner rejected claims 1–3, 5–19, 21, and 23–35 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. (Final Act. 7–9.)
The Examiner rejected claims 1–3, 5–19, 21, and 23–35 under
35 U.S.C. § 112, second paragraph, as indefinite. (Final Act. 9–10.)
The Examiner rejected claims 1–3, 5–8, 11–19, 21, and 23–35 under
35 U.S.C. § 103, as being unpatentable over Zambelli (US 2013/0198076
A1, published August 1, 2013) and Fourez (US 2011/0047075 A1, published
February 24, 2011). (Final Act. 11–20.)
The Examiner rejected claims 9–10 under 35 U.S.C. § 103, as being
unpatentable over Zambelli, Fourez, and Patel (US 2010/0332339 A1,
published December 30, 2010). (Final Act. 20–22.)
ISSUES ON APPEAL
Appellant’s arguments present the following issues:2
Issue One: Whether the Examiner erred in concluding claims 1–3, 5–
19, 21, and 23–35 are directed to non-statutory subject matter. (Appeal Br.
6–15.)

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Mar. 27, 2017; suppl. May 24,
Appeal 2018-000670
Application 13/444,263

4
Issue Two: Whether the Examiner erred in finding claims 1–3, 5–19,
21, and 23–35 fail to comply with the written description requirement.
(Appeal Br. 15–18.)
Issue Three: Whether the Examiner erred in concluding claims 1–3,
5–19, 21, and 23–35 are indefinite. (Appeal Br. 18–19.)
Issue Four: Whether the combination of Zambelli and Fourez teach or
suggest the independent claim 1 limitation, “providing, by the processing
device, first authentication data of the user of the at least one payment
account number for payment transactions with the merchant upon the mobile
device entering a premises of the merchant,” and the commensurate
limitations of independent claims 19 and 34. (Appeal Br. 19–22.)
Issue Five: Whether the combination of Zambelli and Fourez teach or
suggest the additional limitations of claims 3, 5–8, 11–18, 21, and 23–33,
and 35, and whether the combination of Zambelli, Fourez, and Patel teach or
suggest the additional limitations of claims 9 and 10. (Appeal Br. 22–23.)
ANALYSIS
Issue One
The Examiner concludes claims 1–3, 5–19, 21, and 23–35 are patent-
ineligible under 35 U.S.C. § 101 because the claims are “directed to
authenticating the user in order to initiate the payment transaction which is
considered to be an abstract idea as such activity is considered both a
fundamental economic practice and a method of organizing human activity.”
(Final Act. 5.) The Examiner further concludes that there is nothing in the

2017); the Reply Brief (filed Oct. 23, 2017); the Final Office Action (mailed
July 14, 2016); and the Examiner’s Answer (mailed Aug. 22, 2017) for the
respective details.
Appeal 2018-000670
Application 13/444,263

5
claims that is significantly more than this abstract idea, but are “merely the
combined and coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities previously
known to the industry.” (Final Act. 6.)
Appellant argues the Examiner unfairly overgeneralizes the claims,
citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), and arguing “the present claims should be accurately
characterized as being directed to a technical process setting forth the steps
of how to improve a particular type of authentication.” (Appeal Br. 6–10.)
Appellant further relies on DDR Holdings and Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and
argue that the claims encompass “significantly more” than an abstract idea:
In a similar manner to the claims at issue in DDR
Holdings, it is respectfully submitted that the appealed claims
do not have a “real world” equivalent. That is, there is no
“abstract business practice” to which Appellant's claims can be
fairly analogized. Instead, Appellant's claims address a
problem arising out of the existence of complex electronic
payment networks and the susceptibility of such networks to
fraudulent transactions.
* * *
Similar to the claims of Bascom, Appellant's claims
harness technical features of certain technology (e.g., the ability
of mobile devices to transmit authentication data, etc.) to
improve authentication processes in electronic payment
transaction networks. The claims offer concrete technical
solutions to technical problems existing in the fields of
electronic transaction processing, identity protection in
electronic processing, and information technology management
and security.
Appeal 2018-000670
Application 13/444,263

6
(Final Act. 11–15.) For the reasons set forth below, we are not persuaded
the Examiner erred.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S. C. § 101. Here,
independent claim 1 and its dependent claims relate to a method,
independent claim 19 and its dependent claims relate to a system, and
independent claim 34 relates to a non-transitory computer-readable
recording medium — each a process, machine or manufacture. However,
the Supreme Court has long held that “[l]aws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 598–99 (2013)). The “abstract ideas”
category embodies the longstanding rule that an idea, by itself, is not
patentable. Alice, 573 U.S. at 216–217.
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217. The first step in the analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. 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 v.
Kappos, 561 U.S. 593, 611 (2010); mathematical concepts (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
Appeal 2018-000670
Application 13/444,263

7
(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 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination”’ to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” 573 U.S. at 217 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “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.’” 573 U.S. at 217–218 (quoting Mayo, 566 U.S.
at 72–73.) 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. 573 U.S. at 221. A transformation into a
patent-eligible application requires more than simply stating the abstract idea
while adding the words “apply it.” Id.
Further to the Alice/Mayo analytical framework, after the mailing of
the Answer and the filing of the Briefs in this case, the USPTO published
revised guidance on the application of Section 101. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “Revised Guidance”). Under the Revised Guidance, we first
look to whether the claim recites:
Appeal 2018-000670
Application 13/444,263

8
(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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that
are 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 Revised Guidance.
In evaluating the claims at issue, we consider claim 1 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2016). As stated in the preamble,
claim 1 is focused on “two-stage authentication of a user of a mobile device
for a payment account number transaction.” Omitting the portions of the
claim invoking use of generic computer technology (which are discussed
separately below), the remaining limitations of claim 1 elaborate on two-
stage authentication of a transaction: (i) “storing . . . at least one payment
account number of a user in association with a mobile device of the user”;
(ii) “identifying . . . a location of the mobile device at a particular merchant's
physical location”; (iii) “providing . . . first authentication data of the user of
the at least one payment account number for payment transactions with the
Appeal 2018-000670
Application 13/444,263

9
merchant upon the mobile device entering a premises of the merchant,
wherein the user is authenticated for future transactions at the merchant
based upon the provided first authentication data”; (iv) “storing . . . an
indication that the user is authenticated based upon the provided first
authentication data”; (v) “receiving second authentication data, said second
authentication data received from the user as part of a payment transaction
against the at least one payment account number associated with said mobile
device, wherein the payment transactions is initiated at said merchant”; and
(vi) “wherein the user is authenticated based upon the provided first
authentication data prior to the initiation of the payment transaction at said
merchant.” (Suppl. Appeal Br. 3.)3
Apart from the use of generic technology (discussed further below),
each of these limitations describes activities that could readily be performed
by a payment account user (e.g., using a credit card), a merchant, and a
typical intermediary authentication service. In facilitating authentication of
a payment transaction: the first limitation (i) provides for a user to associate
a payment account with a mobile device; limitations (ii)–(iv) provide for the
first stage of authentication based on the mobile device being located at the
merchant location, and limitations (v)–(vi) provide for the second stage of
the authorization of the payment transaction.
As stated in the Revised Guidance, commercial interactions are an
example of organizing human activity, and in particular a fundamental

3 The Examiner appropriately paraphrased these elements: “storing in a
storage device . . . ; identifying a location of the mobile device . . . ;
providing first authentication data . . . ; storing . . . ; and receiving a second
authentication data . . . .” (Final Act. 5.)
Appeal 2018-000670
Application 13/444,263

10
economic practice. (Revised Guidance, 84 Fed. Reg. at 52). The interaction
between those involved in authenticating a payment transaction falls under
this description. Analogous authority includes, e.g., Credit Acceptance v.
Westlake Services, 859 F.3d 1044, 1054 (Fed. Cir. 2015) (processing an
application for financing a purchase); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (local processing of
payments for remotely purchased goods); buySAFE, Inc. v. Google, Inc., 765
F.3d. 1350, 1355 (Fed. Cir. 2014) (creating a contractual relationship — a
“transaction performance guaranty”); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (verifying the validity of a
credit card transaction); Dealertrack v. Huber, 674 F.3d 1315, 1331 (Fed.
Cir. 2012) (processing credit applications through a clearinghouse); Smart
Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364 (Fed. Cir.
2017) (regulating entry in a transit system using information from a
bankcard, such as a credit card or debit card).
In sum, the subject matter of claim 1 is properly characterized as a
fundamental economic practice, which is one of the certain methods of
organizing human activity identified in the Revised Guidance. Therefore,
we agree with the Examiner that the subject matter of claim 1 recites an
abstract idea, as do the remaining claims.
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claim 1 that integrate the judicial
exception into a practical application. Revised Guidance, 84 Fed. Reg. at
54–55. As indicated above, the abstract idea of claim 1 is carried out using
generic computer technology to authenticate the payment transaction: a
“managing computer system” including a “storage device” and a “processing
Appeal 2018-000670
Application 13/444,263

11
device.” (Suppl. Appeal Br. 3.) This is confirmed by statements in the
Specification. (Ans. 6 (citing Spec. ¶¶ 33, 52); see also Spec. ¶ 38.)
None of these additional elements integrate the judicial exception into
a practical application. The use of this computer technology may improve
the fundamental economic practice of authenticating payment transactions,
but nothing in the claims relate to an improvement in the functioning of a
computer, or an improvement to other technology or technical field.
Revised Guidance, 84 Fed. Reg. at 55.
Thus, the subject matter here is distinguished from that considered in
such authorities as BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). There, the court held eligible
claims directed to a technology-based solution to filter Internet content that
overcame existing problems with other Internet filtering systems by making
a known filtering solution—namely a “one-size-fits-all” filter at an Internet
Service Provider (ISP)—more dynamic and efficient via individualized
filtering at the ISP. BASCOM, 827 F.3d at 1351. Notably, this customizable
filtering solution improved the computer system’s performance and,
therefore, was patent-eligible. See id. But unlike the filtering system
improvements in BASCOM that added significantly more to the abstract idea
in that case, the claimed invention here uses generic computing components
to implement an abstract idea, as noted previously.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Appeal 2018-000670
Application 13/444,263

12
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to store and
process data. This generic computer implementation does not improve a
display mechanism as was the case in McRO. See SAP Am. v. InvestPic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Likewise, we disagree with Appellant that this a case involving
eligible subject matter as in DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). There, instead of a computer network operating
in its normal, expected manner by sending a website visitor to a third-party
website apparently connected with a clicked advertisement, the claimed
invention in DDR generated and directed the visitor to a hybrid page that
presented: (1) product information from the third party, and (2) the visual
“look and feel” elements from the host website. DDR, 773 F.3d at 1258–59.
Given this particular Internet-based solution, the court held that the claimed
invention did not merely use the Internet to perform a business practice
known from the pre-Internet world, but rather was necessarily rooted in
computer technology to overcome a problem specifically arising in computer
networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, relates to authentication of payment transactions.
Appellant uses genetic computer-based components to achieve that end. We
Appeal 2018-000670
Application 13/444,263

13
find the claimed invention on appeal is not necessarily rooted in computer
technology in the sense contemplated by DDR, in which the claimed
invention solved a challenge particular to the Internet. Although Appellant’s
invention uses various computer-based components as noted above, the
claimed invention does not solve a challenge particular to the computing
components used to implement this functionality.
Although the use of these computer-oriented techniques facilitate the
authentication of payment transactions, “merely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see
also Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1057
(Fed. Cir. 1057). Otherwise, Appellant provides only conclusory,
unpersuasive assertions that the subject matter provides any improvements
to technology. (Appeal Br. 11–15.)
Nor does the subject matter of claim 1 contain additional elements
that implement the judicial exception with a “particular machine,” because
the claims do not specify any particular technology. See MPEP § 2106.05
(b). Further, the method does not transform matter; at best it transforms
information. See MPEP § 2106. 05(c). Nor does claim 1 have any other
meaningful limitations (MPEP § 2106. 05 (e)), or any of the other
considerations set forth in the Revised Guidance regarding a determination
of whether additional elements integrate the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 55. Rather, the
claim “merely includes instructions to implement an abstract idea on a
computer, or merely uses a computer as a tool to perform an abstract idea.”
Appeal 2018-000670
Application 13/444,263

14
Id. Accordingly, we conclude that the subject matter of claim 1 (and the
remaining pending claims) is directed to a fundamental economic practice,
which is one of the certain methods of organizing human activity, and thus
an abstract idea, and the additional elements recited therein do not integrate
the abstract idea into a practical application.
Turning to the second step of the Alice inquiry, we do not agree with
Appellant that additional elements of claim 1 add “significantly more” to the
basic abstract idea encompassed by the claim sufficient to transform the
claimed abstract idea into a patent-eligible application. Alice, 573 U.S. at
223 (“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). As discussed
above, Appellant cites the improvements that “address a problem arising out
of the existence of complex electronic payment networks and the
susceptibility of such networks to fraudulent transactions.” (Appeal Br. 13.)
However, other than using generic technology, these improvements are
elaborations on the basic abstract idea itself. “It is clear from Mayo that the
‘inventive concept’ cannot be the abstract idea itself.” Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018).
Moreover, “[p]atent law does not protect claims to an ‘asserted advance in
the realm of abstract ideas ... no matter how groundbreaking the advance.’”
890 F.3d at 1359 (Fed. Cir. 2018).
The record supports the Examiner’s finding that the additional
elements — a processor and a storage device — are well-understood,
routine, and conventional, specified at a high level of generality. (Ans. 6
(citing Spec. ¶¶ 33, 52); see also Spec. ¶ 38.) Revised Guidance, 84 Fed.
Reg. at 56.
Appeal 2018-000670
Application 13/444,263

15
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1. Appellant provides no arguments that would differentiate the
remaining claims. Thus, the foregoing analysis of claim 1 is exemplary of
that for claims 2, 3, 5–19, 21, 23–35. See 37 C.F.R. § 41.37(c)(1)(iv)(2016).
Therefore, we also sustain the Examiner’s 35 U.S.C. § 101 rejection of those
claims.
Issue Two
The Examiner finds that the following limitations of independent
claim 1 does not comply with the written description requirement:
providing, by the processing device, first authentication
data of the user of the at least one payment account number for
payment transactions with the merchant upon the mobile device
entering a premises of the merchant; and
storing, in the storage device, an indication that the user
is authenticated based upon the provided first authentication
data.
(Final Act. 7–9.) The Examiner also finds that the limitation of claim 12,
“revoking, by the processing device, the authentication based upon the first
authentication data,” lacks written description support. (Id. at 9.)
Appellant argues these limitations are supported by Figures 4A and
4B, and accompanying description, which explain that when a mobile device
is in proximity to a particular merchant, an indication of that fact is entered
into an “authentication table,” which entry serves to pre-authenticate the
transaction, and which entry is revoked when the mobile device is no longer
at that location. (Appeal Br. 16–18; Spec. Figs. 4A, 4B, ¶¶ 39, 46–50, 54–
55.) The “authentication data” manifests that a particular mobile device is at
a particular location, which in turn is the basis for the claimed “indication”
Appeal 2018-000670
Application 13/444,263

16
stored in the storage device. We agree with Appellant, and accordingly do
not sustain these written description rejections.
Issue Three
The Examiner concludes that the claim 1 limitation, “providing, by
the processing device, first authentication data of the user of the at least one
payment account number for payment transactions . . . .,” is indefinite,
because “it is unclear whether the first authentication data is provided to the
user or merchant.” (Final Act. 10.) As discussed above, in the context of
the claim, the authentication data is “provid[ed]” by the processing device,
and forms the basis for an “indication” stored in the storage device. Aside
from serving as the basis for the claimed “indication,” the claim is agnostic
as to any further disposition of the authentication data, and neither requires
nor forbids the authentication data to be provided to the user or the
merchant. (Appeal Br. 18.) Therefore, we do not sustain this indefiniteness
rejection.
The Examiner further concludes that the claim 1 limitation, “wherein
the user is authenticated based upon the provided first authentication data,”
is indefinite “as being incomplete for omitting [the] essential step[]” of
“authenticating the user.” (Final Act. 10.) However, as Appellant argues,
“this clause cannot lack the step of ‘authenticating the user’ as alleged
because this is the very clause that is authenticating the user.” (Appeal Br.
19.)
In addition, the Examiner concludes that the claim 1 limitation,
“wherein the user is authenticated based upon the provided first
authentication data prior to the initiation of the payment transaction at said
merchant,” is indefinite because “it is unclear whether the user is
Appeal 2018-000670
Application 13/444,263

17
authenticated prior to the initiation of the payment transaction at said
merchant OR the first authentication data provided prior to the initiation of
the payment transaction at said merchant.” (Final Act. 10.) We agree with
Appellant that it is clear that “prior to” in this context refers back to
“authenticated,” not “provided.” (Appeal Br. 19.)
Accordingly, we do not sustain the Examiner’s indefiniteness
rejections.
Issue Four
Appellant argues the Examiner erred in rejecting the claims as
obvious because the combination of Zambelli and Fourez would not have
taught or suggested the claim limitation, “providing, by the processing
device, first authentication data of the user of the at least one payment
account number for payment transactions with the merchant upon the mobile
device entering a premises of the merchant.” (Appeal Br. 19–21.) First,
Appellant argues the Examiner erred in treating the phrase “upon entering a
premises of the merchant” as a conditional limitation that has no patentable
effect pursuant to MPEP § 2103(l)(c). (Id. at 20.) We agree with Appellant
that, in the context of the claims, this phrase is not conditional, but rather is
descriptive of how the method and system of Appellant's independent claims
are implemented. (Id.)
In addition, Appellant argues the Examiner erred in relying on the
disclosure in Zambelli of a user obtaining pre-authorization for a payment
transaction by following a “check-in” procedure using a mobile device when
entering a merchant location. (Appeal Br. 21; see Final Act. 11–12;
Zambelli Fig. 6, ¶¶ 16, 20, 42–44.) In particular, Appellant argues that the
claims require the first authentication data to be provided “automatically”
Appeal 2018-000670
Application 13/444,263

18
upon the mobile device entering the premises of the merchant, whereas the
system of Zambelli requires a non-automatic check-in procedure. (Id.)
However, this argument is not commensurate with the scope of the claims —
the claims do not require such automatic operation. (Ans. 14.)
Appellant does not otherwise argue error with respect to the
independent claims, and therefore we sustain the Examiner’s rejection of
claims 1, 19, and 34 over Zambelli and Fourez. (Appeal Br. 22.) We also
sustain the Examiner’s rejection of claims 2, 3, 6, 10, 11, 13, 15–18, 21, 23,
26–28, and 30–33, which are not argued separately with particularity.
Issue Five
Appellant argues the Examiner erred with respect to claims 5, 8, and
25 because the combination of Zambelli and Fourez would not have taught
or suggested the claim requirement, “wherein identifying said location of the
mobile device includes receiving, from the mobile device, information
identifying a wireless local area network of the merchant upon the mobile
device entering the premises of the merchant.” (Appeal Br. 22.) The
Examiner relies on the disclosure in Zambelli of identifying location
information using IEEE 802.11 service set identifiers. (Ans. 14–15;
Zambelli ¶¶ 29, 44.) We are not persuaded the Examiner erred in relying on
this disclosure.
Appellant argues the Examiner erred with respect to claims 7, 8, 25,
and 35 because the combination of Zambelli and Fourez would not have
taught or suggested the claim requirement, “storing, in the storage device of
the managing computer system, a plurality of merchants in association with
information identifying their respective wireless local area networks.”
(Appeal Br. 22.) The Examiner relies on the disclosure in Zambelli of a
Appeal 2018-000670
Application 13/444,263

19
centralized location determination application and merchant database in a
server that identifies merchants using IEEE 802.11 service set identifiers.
(Final Act. 14; Zambelli Fig. 2, ¶¶ 25, 29.) We are not persuaded the
Examiner erred in relying on this disclosure.
Appellant argues the Examiner erred with respect to claims 12, 14, 24,
and 29 because the combination of Zambelli and Fourez would not have
taught or suggested the claim requirement, “revoking, by the processing
device, the authentication based upon the first authentication data of the user
of the at least one payment account number for payment transactions at said
merchant upon detection of said mobile device leaving said merchant's
premises,” or the requirement, “revoking, by said processing device, the
authentication based upon the first authentication data of the user of the at
least one payment account number at said merchant after a predetermined
time of inactivity at said merchant.” (Appeal Br. 23.) The Examiner relies
on the disclosure in Zambelli of pre-approval expiration “within a pre-
define[d] timeframe,” or “if the check-in service receives notification that
the mobile device is no longer within the check-in location.” (Final Act. 15–
16; Zambelli ¶ 42.) We are not persuaded the Examiner erred in relying on
this disclosure.
Appellant argues the Examiner erred with respect to claim 9 because
the combination of Zambelli, Fourez, and Patel would not have taught or
suggested the claim requirement, “a menu displayed on the mobile device
upon the mobile device entering a premises of the merchant.” (Appeal
Br. 23.) Appellant argues that, even if Patel disclose use of a menu, it does
not disclose displaying the menu “upon the mobile device entering a
premises of the merchant.” (Id.) However, Appellant’s argument is
Appeal 2018-000670
Application 13/444,263

20
unpersuasive as directed to Patel alone, whereas the Examiner relies on the
combination of Zambelli, Fourez, and Patel. In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Therefore, we sustain the rejection of claim 9 as obvious over the
combination of Zambelli, Fourez, and Patel. We also sustain the rejection of
claim 10 as obvious over the combination of Zambelli, Fourez, and Patel, as
that rejection is not argued separately with particularity.

CONCLUSION
For the reasons stated above, we sustain the rejections of claims 1–3,
5–19, 21, and 23–35 pursuant to 35 U.S.C. §§ 101 and 103, and do not
sustain the Examiner’s rejections based on 35 U.S.C. § 112, first and second
paragraphs.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
1–3, 5–19,
21, 23–35
101  Eligibility 1–3, 5–19, 21,
23–35

1–3, 5–19,
21, 23–35
112   Written Description 1–3, 5–19, 21,
23–35
1–3, 5–19,
21, 23–35
112 Indefiniteness 1–3, 5–19, 21,
23–35
1–3, 5–8,
11–19, 21,
23–35
103 Zambelli, Fourez 1–3, 5–8, 11–
19, 21, 23–35

9–10 103 Zambelli, Fourez, Patel 9–10
Overall
Outcome
1–3, 5–19, 21,
23–35

Appeal 2018-000670
Application 13/444,263

21
TIME PERIOD FOR RESPONSE
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)(iv).

AFFIRMED