CITIBANK, N.A.

Patent Trials and Appeals Board

Jul 21, 2020

2020000077 (P.T.A.B. Jul. 21, 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.
14/650,729 06/09/2015 Andres WOLBERG-STOK CITI-0737US 2499
13708 7590 07/21/2020
Johnson, Marcou, Isaacs & Nix, LLC
PO Box 691
Hoschton, GA 30548
EXAMINER
JOHNSON, CHRISTINE
ART UNIT PAPER NUMBER
3697
MAIL DATE DELIVERY MODE
07/21/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRES WOLBERG-STOK,
SONIA OLIVO ALFIERI, DOMINIC VARACALLI,
SYED RAHAT, and WAYNE BROWNING
Appeal 2020-000077
Application 14/650,729
Technology Center 3600
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 25–45, which are all of the claims pending in the
application. Claims 1–24 were canceled. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Citibank, N.A. as the real party in
interest. Appeal Br. 3.
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Application 14/650,729

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TECHNOLOGY
The application relates to accessing customer account information
without re-entry of the customer’s credentials. Spec. Abstract.
ILLUSTRATIVE CLAIM
Claim 25 is illustrative and reproduced below with certain disputed
limitations emphasized:
25. A method, comprising:
binding, by one or more processors, a computing device
with a customer’s profile consisting at least in part of a customer
credential via at least one attribute of the computing device and
an encrypted token stored on the computing device;
receiving, by the one or more processors, on a first
occasion, an authentication request consisting at least in part of
entry of the customer credential;
receiving, by the one or more processors, on a succeeding
occasion, an authentication request consisting at least in part of
the at least one attribute of the computing device and the
encrypted token stored on the computing device without entry of
the customer credential;
determining, by the one or more processors, an interval of
time between the first occasion authentication request and the
succeeding occasion authentication request;
declining, by the one or more processors, the succeeding
occasion authentication request and requiring reentry of the
customer credential when the interval of time between the first
occasion authentication request and the succeeding occasion
authentication request is greater than a pre-determined time
interval; and
displaying, by the one or more processors, in response to
the succeeding occasion authentication request, predefined
customer account information limited to non-personally
identifiable customer account information consisting at least in
part of a pre-determined portion of an account number and at
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least in part of an account balance on the computing device when
the interval of time between the first occasion authentication
request and the succeeding occasion authentication request is less
than the pre-determined time interval.
REFERENCES
The Examiner relies on the following prior art references:
Name Pub. Number Pub. Date
Britt US 2012/0290609 A1 Nov. 15, 2012
El-Awady US 2012/0136780 A1 May 31, 2012
Fahrny US 2013/0046990 A1 Feb. 21, 2013
Kean US 2009/0200371 A1 Aug. 13, 2009
Lent US 2002/0007341 A1 Jan. 17, 2002
REJECTIONS
The Examiner makes the following rejections:
Claims Statute Basis/References Final Act.
25–45 § 101 Subject matter eligibility 2
25–31, 44, 45 § 103 Fahrny, Lent 8
32–34 § 103 Fahrny, Lent, Kean 15
35–42 § 103 Fahrny, Lent, El-Awady 17
43 § 103 Fahrny, Lent, El-Awady, Britt 21
ISSUES
1. Did the Examiner err in concluding that independent claim 25
was directed to an abstract idea without significantly more?
2. Did the Examiner err in finding Fahrny teaches or suggests
“determining . . . an interval of time between the first occasion
authentication request and the succeeding occasion authentication request,”
as recited in independent claim 25?
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ANALYSIS
§ 101
The Supreme Court has set forth a two part test to determine whether
the subject matter of a claim is patentable under § 101: (1) “whether the
claims at issue are directed to” “laws of nature, natural phenomena, and
abstract ideas” and (2) “whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
In 2019, the U.S. Patent & Trademark Office expanded on the
Supreme Court’s test with revised guidance. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility,
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the
following steps to determine whether a claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A, Prong 1
A judicial exception, such as a law of nature or
any of the following groupings of abstract
ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental
economic practice; or
3) Mental processes, such as an observation
or evaluation performed in the human
mind.
2106.04
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USPTO
Step Does the claim recite ___? MPEP §
2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were
not “well-understood, routine, conventional”
2106.05(d)
See Guidance 52, 55, 56. “Eligibility under 35 U.S.C. § 101 is a question of
law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1166 (Fed. Cir. 2018).
Appellant argues that the claimed invention provides “technological
improvements” to a technological problem. Appeal Br. 8. In particular,
according to Appellant, “the claimed invention enables securely accessing
data on a backend server from an access device bound to an access
credential on multiple succeeding occasions after authentication of access
credentials on an initial occasion without requiring repeated re-
authentication of those credentials on each succeeding occasion.” Id.
The Examiner determines that the “claims do not assert any invention
in software” or “any improvement to a computer.” Ans. 3–4. Instead, the
Examiner determines, “all of the activity in the claims is described in terms
of human mental steps.” Id. at 9.
Although we agree with the Examiner that some of the limitations
reasonably could be performed in the human mind (e.g., “determining . . . an
interval of time between the first occasion authentication request and the
succeeding occasion authentication request”) and therefore recite mental
processes, we agree with Appellant that the additional limitations discussed
below integrate the abstract idea into a practical application under Step 2A,
prong 2.
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“The inquiry often is whether the claims are directed to ‘a specific
means or method’ for improving technology or whether they are simply
directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326 (Fed. Cir. 2017). Here, the claims recite a specific
technical way of re-authenticating (e.g., using “at least one attribute of the
computing device and an encrypted token stored on the computing device”
“when the interval of time between the first occasion authentication request
and the succeeding occasion authentication request is less than the pre-
determined time interval”) for a specific purpose (i.e., displaying an account
balance and partial account number).
The Specification discloses some of the difficulties with “entry of a
user ID and password each time” that a customer wishes to access
information, such as “a customer shopping, for example, at a mall who may
want to make relatively frequent checks on his or her balances to assure
sufficient funds or credit to pay for purchases.” Spec. ¶¶ 2–3. For example,
“typing a password on a small keyboard or touchscreen of a mobile device
may be awkward and time consuming,” especially given that “most financial
institutions set standards for customer passwords that require unusual
characters that may further complicate the process of typing passwords on a
customer’s mobile device.” Id. ¶ 3. Merely leaving a session open or
allowing subsequent access without more may “carry a significant degree of
risk such as exposing the customer’s account information to unauthorized
persons.” Id. ¶ 4. Therefore, according to the Specification,
[t]here is a present need . . . for accessing account information
electronically that provide a high level of convenience for on-
the-go customers . . . who wish to learn quickly and easily how
much money or credit they have in their accounts without
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repeatedly going through complicated sign-on processes, while
at the same time providing a number of controls to ensure that
the security of customers’ information is safely maintained.
Id. ¶ 5; see also id. ¶ 27.
A technical invention need not be groundbreaking to be eligible
subject matter under § 101. Rather, the novelty and obviousness of a
technical invention are questions under §§ 102 and 103. See Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (“Eligibility
and novelty are separate inquiries.”). Here, we are persuaded that the claims
are for a technical improvement that integrates the abstract idea into a
practical application.
Accordingly, we do not sustain the Examiner’s § 101 rejection of
claims 25–45.
§ 103
Claim 25 recites receiving two authentication requests on a first
occasion and a succeeding occasion. Claim 25 then recites “determining . . .
an interval of time between the first occasion authentication request and the
succeeding occasion authentication request.”
Fahrny discloses that after an initial request, a client is provided with
“access authorization credentials” but that “[t]hese credentials may have an
expiration of a few hours, a day, a week or a month depending on the
content policy.” Fahrny ¶ 24; see also id. ¶ 45. “After expiration of these
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credentials, the weaker device [i.e., the client] may be required to re-register
or re-authenticate through the stronger security device [e.g., a gateway] to
obtain a new set of credentials.” Id. ¶ 24.
The Examiner determines that “the claimed invention does not
literally ‘determine’ a time interval between the first occasion and the
second occasion.” Ans. 21. “Rather, the claims would be understood as
calling for determining an interval of time after which, any succeeding
request made by the same device will be declined, and before which any
succeeding request made by the same device will succeed.” Id. at 21–22.
The Examiner therefore determines that Fahrny’s disclosure (i.e., that the
“relevant time interval . . . between A-the occasion on which the registration
proxy . . . receives the registration request . . . and B-a time before which
subsequent requests will succeed and after which subsequent requests will
fail, i.e., an expiration time”) “discloses” this limitation. Id. at 22.
We are persuaded that the Examiner’s claim construction is in error.
Claim 25 expressly requires “determining . . . an interval of time between
the first occasion authentication request and the succeeding occasion
authentication request.” Therefore, claim 25 requires determining the
specific interval claimed (i.e., the difference between the first time and the
second time), not the Examiner’s alternative interval (i.e., the difference
between the second time and the expiration time). Although it is true that
both methods may accomplish the same ultimate result, the paths by which
the goal is reached are different and the Examiner has not yet provided any
analysis whether the alternative path would have rendered obvious the
claimed path. See In re Cox, 342 F.2d 1017, 1019 (CCPA 1965).
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Accordingly, we do not sustain the Examiner’s § 103 rejection of
independent claims 25 and 45, and their dependent claims 26–44.
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected Statute Basis/References Affirmed Reversed
25–45 § 101 Eligibility 25–45
25–31, 44, 45 § 103 Fahrny, Lent 25–31, 44, 45
32–34 § 103 Fahrny, Lent, Kean 32–34
35–42 § 103 Fahrny, Lent,
El‑Awady
35–42
43 § 103 Fahrny, Lent,
El‑Awady, Britt
43
OVERALL 25–45
REVERSED