Ayman HammadDownload PDFPatent Trials and Appeals BoardSep 9, 201912617268 - (D) (P.T.A.B. Sep. 9, 2019) Copy Citation 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. Appeal 2017-011755 Application 12/617,268 2 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, Appeal 2017-011755 Application 12/617,268 3 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”). Appeal 2017-011755 Application 12/617,268 4 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 Appeal 2017-011755 Application 12/617,268 5 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 Appeal 2017-011755 Application 12/617,268 6 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 Appeal 2017-011755 Application 12/617,268 7 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 Appeal 2017-011755 Application 12/617,268 8 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 Appeal 2017-011755 Application 12/617,268 9 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. Appeal 2017-011755 Application 12/617,268 10 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. Appeal 2017-011755 Application 12/617,268 11 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 Appeal 2017-011755 Application 12/617,268 12 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 Appeal 2017-011755 Application 12/617,268 13 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. Appeal 2017-011755 Application 12/617,268 14 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 Copy with citationCopy as parenthetical citation