14270644 - (R) (P.T.A.B. Apr. 3, 2020)

Sarada Mohapatra

Patent Trials and Appeals BoardApr 3, 2020

14270644 - (R) (P.T.A.B. Apr. 3, 2020)

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. 14/270,644 05/06/2014 Sarada Mohapatra 7754 111721 7590 04/03/2020 Sarada Mohapatra 3820 Highknob Cir Naperville, IL 60564 EXAMINER KENNEDY, JOSHUA T ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 04/03/2020 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): sarada.mohapatra@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SARADA MOHAPATRA ____________________ Appeal 2018-008151 Application 14/270,644 Technology Center 3600 ____________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a request for rehearing under 37 C.F.R. § 41.52, dated March 18, 2020, of our Decision mailed February 18, 2020. In the Decision, we affirmed the Examiner’s rejections under 35 U.S.C. §§ 101 and 112(b), and reversed the Examiner’s rejection under 35 U.S.C. § 103. Decision, 9. Appellant informs us that he did not intend to appeal the rejection of claim 18 under 35 U.S.C. § 112(b). Req. Reh’g 2. Appellant also seeks rehearing 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sarada Mohapatra. Appeal Br. 2. Appeal 2018-008151 Application 14/270,644 2 as to the portion of our Decision affirming the rejection of claims 18–22 under 35 U.S.C. § 101 as being directed to ineligible subject matter. Id. at 2–4. DISCUSSION A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03). It may not rehash arguments originally made in the Brief, neither is it an opportunity to merely express disagreement with a decision. It may not raise new arguments or present new evidence except as permitted by paragraphs (a)(2) through (a)(4). See 37 C.F.R. § 41.52. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. 35 U.S.C. § 112 – Indefinite Appellant informs us: “I had not appealed 112 rejection, with a plan to work with the examiner to make corrective amendments after [the] appeal decision. I plan to do so if 101 rejection is reversed in rehearing.” Id. at 2. Independent of the outcome of the appeal and this request for rehearing, Appellant may still “work with the examiner to make corrective amendments after [the] appeal decision.” Id. The prior decision addressed all rejections only as a matter of completeness. Whether we affirmed the rejection, or did not address the rejection, it would not have changed the status of the rejection. Appeal 2018-008151 Application 14/270,644 3 35 U.S.C. § 101 – Patent Eligibility – Claim 18 We previously determined that “Appellant’s claims are directed to patent-ineligible subject matter without significantly more.” Decision, 5.2 In particular, we determined that “the claimed ‘method for countering credit card fraud’ is directed to the abstract idea of a method of organizing human activity in the form of fundamental economic practices.” Id. Under Step 2A, Prong 2 of the 2019 Revised Guidance,3 we also determined that “the additional [claimed] elements do not integrate the recited abstract idea into a practical application.” Id. at 7. However, Appellant requests that we consider whether the limitations of claims 19 and 20 would change that determination. Req. Reh’g 2–3. We previously determined that: Here, the additional elements recited in claim 18, beyond the abstract idea, include: “providing an internet connected card account management facility.” Though the Specification does not describe “an internet connected card account management facility,” it could be understood to be a financial institution’s computer system. We are not persuaded this limitation, considered individually or as an ordered combination, integrates the abstract idea into a practical application. For example, we find no indication that providing an internet connected card account management facility, reflects an improvement to the functionality of a computer or an improvement to technology. At best, the limitation generally links the use of the abstract idea to a particular technological environment involving a financial institution. Decision 6. 2 For a summary of the law on patent eligibility, as well as for our analysis of the claims, we refer the reader to our prior Decision. Decision, 3–8. 3 See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 54–55 (January 7, 2019) (“Revised Guidance”). Appeal 2018-008151 Application 14/270,644 4 Claims 19 and 20 both further limit the “the internet connected card account management facility.” Claim 19 requires that “the internet connected card account management facility is a feature of an online card account management system comprising of: a web application; and the cardholder accessing the web application via secure a [sic] session using a browser.” Claim 20 is similar, being directed to an “app” rather than a “web application.” Both of these claims show that our prior findings and determinations are correct. For example, these claims show that we were correct in stating ‘“an internet connected card account management facility,’ [] could be understood to be a financial institution’s computer system.” An “app” or “web application” could both be part of or at least would both interact with a financial institution’s computer system. We also previously found “no indication that providing an internet connected card account management facility, reflects an improvement to the functionality of a computer or an improvement to technology.” Decision 6. The limitations of claims 19 and 20 do not change these findings. Under Step 2B of the Revised Guidance4, Appellant argues that the “inventive concept” described in the Reply Brief should be considered. Req. Reh’g 3. We previously addressed the benefits of the invention outlined by Appellant in the Appeal Brief, however we did not directly address the alleged “improvements” and “novel benefit” listed in the Reply Brief. Decision 7–8. The “improvements” and “novel benefit” asserted by Appellant is that the claims propose 1) “that card security code CVV2 be changeable after issue, making it a cardholder secret separate from the card;” 2) “an additional feature that allows CVV2 for a card to be updated by the 4 Revised Guidance, 84 Fed. Reg. at 50. Appeal 2018-008151 Application 14/270,644 5 cardholder;” and 3) “a solution for credit card fraud risk mitigation from compromised data.” Reply Br. 3 (emphasis omitted). Consistent with our previous finding, “Appellant’s argument simply describes the benefits of the abstract idea, rather than identifying that there is something claimed beyond the abstract idea.” Decision 7–8. We again “agree that Appellant has expressed noble intentions and there might be some public benefit from Appellant’s invention. However, we are constrained to determine whether the invention, as defined by the claim language is eligible or ineligible based on the Supreme Court’s exceptions to eligible subject matter.” Id. at 8. For the above reasons, we are not informed of reversible error in the Examiner’s rejection or our prior Decision. CONCLUSION For these reasons, we are not informed of reversible error in the Examiner’s rejection or our prior Decision. Thus, we deny Appellant’s Request. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 18 112(b) Indefiniteness 18 18–22 101 Eligibility 18–22 18–22 103 Adams 18–22 Overall Outcome5 18–22 5 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” Appeal 2018-008151 Application 14/270,644 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2017). DENIED