Theresa Altman et al.

Patent Trials and Appeals Board

Sep 2, 2020

2018009083 (P.T.A.B. Sep. 2, 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.
12/558,869 09/14/2009 Theresa Altman P00477-US-UTIL 7346
98665 7590 09/02/2020
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
CTOFFICE@OEKLAW.COM
admin1@oeklaw.com
docket@oeklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THERESA ALTMAN, GIDGET HALL, and
EDWARD MCLAUGHLIN
Appeal 2018-009083
Application 12/558,869
Technology Center 3600
BEFORE RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–14, and 22–24, which constitute all
the claims pending in this application. Claims 2, 3, 15–21, and 25 have been
cancelled. Claim 26–29 have been withdrawn. We have jurisdiction under
35 U.S.C. § 6(b).

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 MasterCard
International, Inc. Appeal Br. 3.
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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to an Apparatus and Method for Bill Payment
Card Enrollment. Claim 1 reproduced below, is illustrative of the claimed
subject matter:
1. A method comprising the steps of:
preparing, using a processor of a bill payment provider,
an electronic funds transfer format message for dispatch from
said bill payment provider to an electronic bill payment system
that normally facilitates payments via electronic funds transfer
from demand deposit accounts;
flagging, using said processor of said bill payment
provider, said electronic funds transfer format message with a
flag indicating that said electronic funds transfer format
message is a non-financial, card payment, message, said
electronic funds transfer format message comprising an
identification of a biller;
creating, using said processor of said bill payment
provider, an addenda message including a card number of said
payment card account and an expiration date of said payment
card account; and
dispatching, by said processor of said bill payment
provider, said electronic funds transfer format message, flagged
with said flag and augmented with said addenda message
including said card number of said payment card account and
said expiration date of said payment card account, to said
electronic bill payment system via a payment network, said
electronic funds transfer format message flagged with said flag
causing said electronic bill payment system to forward, via said
payment network, said addenda message including said card
number of said payment card account and said expiration date
of said payment card account to at least one of said biller, an
acquirer of said biller, and a concentrator of said biller, wherein
said electronic bill payment system is disposed in said payment
network connecting said bill payment provider to said least one
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of said biller, said acquirer of said biller, and said concentrator
of said biller.

The Examiner has rejected the claims under 35 U.S.C. §101 as
directed to patent ineligible subject matter.2 Final Act. 6.
OPINION
Principles of Law
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
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. Alice, 573 U.S. 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
id. 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.”).

2 Claims 1 and 4–14 were also rejected under 35 U.S.C. § 112, second
paragraph as indefinite. Final Act. 5. That rejection was withdrawn by the
Examiner. Ans. 6.
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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 (1853))); 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
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.”).
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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.
The USPTO published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (the “2019 Eligibility Guidance” or “Guidance”). Under
the 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)).
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
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(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 2019 Eligibility Guidance.
Analysis
The Examiner finds that the claims are directed to a process for
facilitating the payment of a bill using a payment card by a processor and an
electronic payment system. Final Act. 6. The Examiner finds that the
process falls within a statutory category of invention. Id.
The Examiner next finds that the claims are directed to an abstract
idea, specifically a financial or fundamental economic practice – offering an
option to pay a bill in a specific manner. Id. at 6–7. The Examiner finds that
the claims are directed to a method of organizing human activity. Id. at 7.
Finally the Examiner finds that the claims do not recite something
significantly more than the abstract idea. Id. at 8. The Examiner finds that
the claims merely recite the use of computer elements at a high level of
generality. Id.
Appellant argues that the Examiner has misapplied the test for patent
eligible subject matter. Appeal Br. 13. Appellant contends that the
Examiner’s analysis as to what the claims are directed to, is at too high a
level of abstraction and fails to take account of the specific steps recited in
the claims. Id. 13–15. Appellant contends that the claims are directed to “an
improvement in computer-related technology enabling the electronic bill
payment system to handle non-financial messages and enable a new class of
card based transactions within a conventional system configured to make
payments using demand deposit accounts.” Id. at 15.
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Appellant also contends that the claims recite elements which amount
to something more that the abstract idea. Id. at 16.–17. Appellant contends
that that specific steps recited in the claims “are meaningful limitations that
add more than generally linking the use of the abstract idea (the general
concept of ‘a method and system which facilitates payment of a bill’) to a
generic computer because they are directed to a technical solution to a
problem unique to the context of an electronic payment network - how to
making card based payments in a system facilitating payments by demand
deposit accounts.” Id. at 18.
Applying the guidance set forth in the Guidance, we conclude the
Examiner erred in rejecting the claims as being directed to patent-ineligible
subject matter. The Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The guidance
identifies three judicially-excepted groupings: (1) mathematical concepts,
(2) certain methods of organizing human behavior such as fundamental
economic practices, and (3) mental processes. We focus here on the second
grouping — certain methods of organizing human behavior such as
fundamental economic practices.
The specification discloses a method to facilitate paying a bill from a
biller using a payment card account by relaying the payment card
information to a biller using a system designed to facilitate payments made
via electronic funds transfer. Spec. 1–2. We agree with the Examiner that
the transaction recited in the claims relates to a financial or fundamental
economic practice and therefore recites judicially excepted subject matter.
Final Act. 6–7. Facilitating payment of bills by providing payment
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information to a biller is a fundamental economic practice “long prevalent in
our system of commerce.” Alice, 573 U.S. 216.
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h). Claim 1 recites various
computer-related limitations, including an “electronic bill payment system.”
Although these computer-related limitations are not wholly generic in nature
and are specific to electronic bill paying, they are described at a high level in
the Specification without any meaningful detail about their structure or
configuration. As such, we do not find the computer-related limitations are
sufficient to integrate the judicial exception into a practical application.
However, claim 1 also recites additional limitations which focus on
addressing problems arising from using a card type payment in a system
designed for making payments using demand deposit accounts. These
limitations include “dispatching said electronic funds transfer format
message, flagged with said flag and augmented with said addenda message
including said card number of said payment card account and said expiration
date of said payment card account, to the electronic bill payment system via
said interface”, “causing the electronic bill payment system to forward said
addenda message . . . to at least one of said first biller” and causing said first
biller “to refrain from paying said first bill using said demand deposit
account of said customer.” We agree with Appellant that the combination of
these steps “add more than generally linking the use of the abstract idea (the
general concept of "a method and system which facilitates payment of a
bill") to a generic computer because they are directed to a technical solution
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to a problem unique to the context of an electronic payment network - how
to make card based payments in a system that facilitates payments by
demand deposit accounts.” Appeal Br. 18.
As the Specification teaches, the present invention facilitates using a
payment card to pay a bill using a mechanism “which normally facilitates
payments via electronic funds transfer from a demand deposit account of the
customer.” Spec. 1–2. Claim 1 includes this limitation. Appeal Br. 23
(Claims App’x). The resulting system improves an existing technical process
and is therefore patent eligible. Bascom Global Internet Services, Inc, v.
AT&T Mobility LLC, 827 F.3d 1341, 1351–52 (Fed. Cir. 2016).
The Examiner contends that the claimed method is not an
improvement on an existing technology as the steps recited rely on computer
functions of collecting, analyzing and displaying information. Ans. 7–8.
The Examiner finds that it is unclear what function the addenda message
recited in the claim performs. Id.
We are not persuaded by the Examiner’s argument. As discussed
above, the recited method does more than merely collect, analyze and
display data. As Appellant points out the claimed system includes limitations
which
confine the alleged abstract idea to a particular, practical
application and, as explained in the specification, this
combination of limitations is not well-understood, routine or
conventional activity. The flagging and augmentation of the
electronic funds transfer format message, in the context of
causing an electronic bill payment system to forward, via a
payment network, the addenda message including the card
number of the payment card account and the expiration date of
the payment card account to at least one of a biller, an acquirer
of the biller, and a concentrator of the biller enables card
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payments via the electronic bill payment system that normally
facilitates payments via electronic funds transfer from demand
deposit accounts is analogous to a “technology-based solution”
that overcomes the disadvantages of transactions normally made
using demand deposit accounts.

Reply Br. 23. We agree with Appellant that this supports the conclusion that
the claims are directed to patent eligible subject matter. Id.
CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 101 is reversed
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–14, and
22–24
101 Patentable Subject
Matter
1, 4–14, and
22–24

REVERSED