Ayman Hammad

Patent Trials and Appeals Board

Sep 9, 2019

12617268 - (D) (P.T.A.B. Sep. 9, 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.
12/617,268 11/12/2009 Ayman Hammad 79900-054610US-801740 4251
66945 7590 09/09/2019
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AYMAN HAMMAD
____________

Appeal 2017-011755
Application 12/617,268
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–9 and 12–27. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

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THE INVENTION
Appellant claims a secure alert system and method. (Spec. ¶ 5, Title.)
Claim 1 is representative of the subject matter on appeal.
1. A notification server comprising:
a processor; and
a computer-readable storage medium coupled to the
processor, the computer-readable storage medium comprising
code executable by the processor for implementing a method
for helping a consumer distinguish an authentic alert message
from a non-authentic alert message, the method comprising
receiving first transaction data for a first transaction over
a first network, the first transaction data including an account
number associated with the customer,
analyzing the first transaction data to extract the account
number,
retrieving, from a database, a sequence number
associated with the account number, the sequence number set to
a starting sequence number value,
incrementing the sequence number in response to the
receiving of the first transaction data, the sequence number
incremented from the starting sequence number value to a first
sequence number value,
generating a first secure alert message using the first
transaction data, wherein the first secure alert message
comprises the first sequence number value,
sending the first secure alert message comprising the first
sequence number value to a notification device over a second
network,
receiving second transaction data for a second transaction
over the first network, the second transaction data including the
account number associated with the customer,
analyzing the second transaction data to extract the
account number,
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retrieving, from the database, the sequence number
associated with the account number, the sequence number set to
the first sequence number value,
incrementing the sequence number in response to the
receiving of the second transaction data, the sequence number
incremented from the first sequence number value to a second
sequence number value,
generating a second secure alert message using the
second transaction data, wherein the second secure alert
message comprises the second sequence number value, and
sending the second secure alert message comprising the
second sequence number value to the notification device over
the second network,
wherein the second sequence number value is
incremented over the first sequence number value to indicate
authenticity of the second secure alert message.

THE REJECTION
Claims 1–9 and 12–27 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1–3, 5–9, 12–14, 16, and 21–25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hazel et al. (US 2009/0048953 A1;
Feb. 19, 2009, “Hazel”), in view of Skowronek (US 2009/0112765 A1;
Apr. 30, 2009).
Claims 4, 15, and 17–20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hazel and Skowronek, in view of Kim et al.
(US 2008/0040219 A1; Feb. 14, 2008, “Kim”).
Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hazel and Skowronek, in view of Mukherjee et al.
(US 2009/0025060 A1; Jan. 22, 2009, “Mukherjee”).
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–9 and 12–27 under
35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat
else is there in the claims before us?” . . . To answer that
question, . . . consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The Court]
described step two of this analysis as a 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)). It asks whether the focus of the claims is on a specific
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improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See
Enfish, 822 F.3d at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to generating
alert messages post-transaction which include advertisements. (Final
Act. 6.) The Examiner interprets advertisements as fundamental economic
activity to drive sales and a way to coordinate human activity. Also, the
Examiner determines that the steps of the claim can be performed by a
human mentally and using pen and paper and to some extent the abstract
idea recited in the claims is a mathematical formula as well.
The Specification discloses that the method of the invention is
directed to a method for sending a secure alert message to a consumer after a
transaction is conducted with a portable consumer device. (Spec. ¶ 16.) As
the invention is disclosed as being directed to consumer financial
transactions, claim 1, for example, recites a commercial interaction which is
a fundamental economic practice. Guidance, 84 Fed. Reg. at 52.
The recitations in claim 1 also support this determination by reciting
(with emphasis in italics) “a method for helping a consumer distinguish an
authentic alert message from a non-authentic alert message,” “receiving . . .
transaction data,” “generating a first secure alert message using the first
transaction data,” “receiving second transaction data,” and “generating a
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second secure alert message using the second transaction data.” These
recitations clearly demonstrate that claim 1 recites a commercial interaction
i.e. a fundamental economic practice.
Also, claim 1, comprises steps of retrieving data, analyzing data, and
generating data constitute “analyzing information by steps people go through
in their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed
to certain arrangements involving contractual relations are directed to
abstract ideas).
This determination is supported by the recitation in claim 1 of
“receiving . . . transaction data,” “analyzing . . . transaction data,”
“retrieving . . . a sequence number [(data)],” “incrementing the sequence
number [(analyzing data)],” “generating a first secure alert [(data)],”
“sending the first secure alert message [(sending data)],” “receiving second
transaction data,” “analyzing the second transaction data,” “retrieving . . .
second transaction data,” “incrementing the sequence number [(analyzing
data)],” “generating a second secure alert message [(data)],” and “sending
the . . . secure alert message [(data)]” (emphasis added).
Thus, we find that the claims recite judicial exceptions.
Turning to the second prong of the “directed to” test, claim 1 requires
a “processor,” a “notification device” and “a computer-readable storage
medium.”
These recitations do not impose “a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
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monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 54. In this
regard, we find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in independent claim 1
invoke any inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
In fact, the Specification discloses that these devices may be generic devices.
(Spec. ¶¶ 20, 31, 44, 45, 87.)
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
As claim 1 recites a judicial exception that is not integrated into a
practical application, claim 1 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
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amounts to significantly more than the abstract idea itself. See Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. . . . Nor is limiting the use of
an abstract idea “‘to a particular technological environment.’” .
. . Stating an abstract idea while adding the words “apply it
with a computer” simply combines those two steps, with the
same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implemen[t]” an
abstract idea “on . . . a computer,” . . . that addition cannot
impart patent eligibility. This conclusion accords with the pre-
emption concern that undergirds our § 101 jurisprudence.
Given the ubiquity of computers, . . . wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 1 does] more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225.
Taking the claim elements separately, the functions performed by the
computer components at each step of the process are purely conventional.
Using a computer to retrieve, select, and apply decision criteria to data and
modify the data as a result amounts to electronic data query and retrieval—
some of the most basic functions of a computer. All of these computer
functions are well-understood, routine, conventional activities previously
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known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see
also In re Katz Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer components to
perform generic computer functions. As to the data operated upon, “even if
a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 890 F.3d
1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately.
Claim 1 does not, for example, purport to improve the functioning of
the processor, the computer-readable storage medium. As we stated above,
claim 1 also does not effect an improvement in any other technology or
technical field. The Specification spells out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
information access under different scenarios. (Spec. ¶¶ 20, 31, 44, 45, 87).
Thus, claim 1 amounts to nothing significantly more than instructions to
apply the abstract idea of information access using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
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We have reviewed all the arguments (Appeal Br. 8–16; Reply Br. 2–
5) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner did not clearly identify the abstract
idea. (Appeal Br. 8.) Appellant argues that the Examiner identified two
different abstract ideas and this causes confusion. However, the Examiner
stated that the claims are directed to generating alert messages post-
transaction which include advertisements and that this constitutes a
fundamental economic practice which is a judicial exception set out in the
Guidance, 84 Fed. Reg. at 52. (Final Act. 6.) The Examiner also stated that
the step by step process of associating identifiers and/or advertisements to
the transaction data to provide transaction alerts. (Final Act. 6.) Both of
these judicial exceptions are discussed above when we determined that the
claims are directed to a fundamental economic practice and analyzing
information by steps people go through in their minds. As such, claim 1
combines abstract concepts. See RecogniCorp., LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas). There is no confusion.
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We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner has failed to cite court cases. This
is not true. The Examiner cited cases on page 7 of the Final Action. In any
case, we have identified court cases with similar facts above. In addition,
we have relied on the Guidance (84 Fed. Reg. at 52), which includes several
court citations, in our determination that the claims are directed to judicial
exceptions.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the alleged abstract idea is untethered from the
language of the claims. As we discussed above, the claim limitations are
consistent with the determination that the claims are directed to judicial
exceptions.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are directed to a specific improvement
to computer functionality that enables a notification server to provide secure
and authenticatable messages to a notification device over a public access
network. (Appeal Br. 11.) This argument is not commensurate with the
recitations in claim 1 because claim 1 does not recite a public access
network but rather broadly recites a first network and a second network. In
addition, Appellant has not directed our attention to, nor have we found, a
disclosure in the Specification of a public access network.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the limitation of “incrementing the sequence
number” is not covered by either abstract idea. (Appeal Br. 11-12.) We
agree with the Examiner’s response to this argument found on pages 11–12
of the Answer. In this regard, we agree that “incrementing the sequence
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number” is a performance of a repetitive calculations that is considered a
routine and convention computer function.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument, directed to claims 23 and 26, that the additional
limitation of displaying the sequence numbers is “significantly more” than
the abstract idea. (Appeal Br. 13.) Dependent claims 23 and 26 may limit
the scope of the abstract idea but their character remains unchanged,
especially given that these claims provide no insight to improvements in
computer functionality beyond what one would expect from using a generic
computer as a tool in performing the scheme as claimed. None of these
claims adds anything significantly more to transform the abstract idea. In
this regard, displaying sequence numbers is part of the judicial exception of
a fundamental economic practice of generating alert messages post-
transaction which include advertisements and is part of the judicial
exception of a mental process of analyzing information.
In view of the foregoing, we will sustain the rejection as it is directed
to claims 1, 23, and 26. We will also sustain the rejection as it is directed to
the remaining claims because the Appellant has not argued the separate
eligibility of these claims.

35 U.S.C. § 103(a) REJECTION
We will not sustain this rejection because we agree with Appellant
that Hazel does not disclose “incrementing the sequence number in response
to the receiving of the first transaction data,” as required by claim 1. The
Examiner relies on step 24 of Figure 16, and paragraph 158 of Hazel for
teaching this subject matter. (Final Act. 9.) Figure 16 depicts the flow chart
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for the Hazel method in which step 24 is the step of “RECEIVE
TRANSACTION.” Step 24 of Figure 16 involves gateway 120 receiving
transaction data 137 for processing. Hazel ¶ 260. Paragraph 260 further
provides that the gateway 120 can decrypt or be used to decrypt a PIN to
facilitate transaction processing. There is no discussion about incrementing
sequence numbers. With reference to Figure 5, step 48, paragraph 158
discloses that transaction data is received at gateway 120 so that the
transaction can be processed by gateway 120. Gateway 120 decrypts the
bank identification number and then routes the transaction to the appropriate
institution but does not disclose incrementing sequence numbers.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1. We will not sustain this rejection as it is directed to
claims 2, 3, 5–9, 12–14, 16, and 21–25 for the same reason.
We will also not sustain the remaining rejections under 35 U.S.C.
§103(a) for the same reason.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–9 and 12–
27 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1–9 and 12–27
under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1–9 and 12–27 under
35 U.S.C. § 101 is affirmed.
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The decision of the Examiner to reject claims 1–9 and 12–27 under
35 U.S.C. § 103(a) is not 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED