Colin Tanner et al.

Patent Trials and Appeals BoardDec 4, 2019

13372907 - (R) (P.T.A.B. Dec. 4, 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. 13/372,907 02/14/2012 Colin Tanner P00716-US-UTIL 2619 98665 7590 12/04/2019 Otterstedt, Wallace & Kammer, LLP P.O. Box 381 Cos Cob, CT 06807 EXAMINER ANDERSON, JOHN A ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 12/04/2019 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 COLIN TANNER, MICHAEL J. COWEN, and JAMES D. SINTON ____________________ Appeal 2018-003708 Application 13/372,907 Technology Center 3600 ____________________ BEFORE JOSEPH L. DIXON, JAMES W. DEJMEK, and STEPHEN E. BELISLE, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our Decision, mailed September 12, 2019 (“Decision”), in which we affirmed the Examiner’s decision rejecting claims 1–24 under 35 U.S.C. § 101 and reversed the Examiner’s decision rejecting claims 1–24 under pre-AIA 35 U.S.C. § 102(e). Appellant timely filed a Request for Rehearing (“Req. Reh’g.”) on November 12, 2019. Appellant’s Request for Rehearing is GRANTED. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies MasterCard International Incorporated as the real party in interest. Appeal Br. 3. Appeal 2018-003708 Application 13/372,907 2 DISCUSSION In the Request for Rehearing, Appellant does not challenge our Decision affirming the Examiner’s rejection of claims 1–12 and 17–24 under 35 U.S.C. § 101. Req. Reh’g 2–6. Instead, Appellant asserts the Board overlooked or misapprehended Appellant’s arguments regarding the patent eligibility of dependent claim 13 (and claims 14–16, which depend directly or indirectly therefrom). Req. Reh’g 3–4. Claim 13 depends from claim 2 (which depends from independent claim 1) and is reproduced below: 13. The method of Claim 2, wherein: said dispatching comprises dispatching an authorization request to an issuer to access a prepaid account; in said obtaining step, said reduced-functionality payment device comprises a low-cost chip card having a memory and having an account number encoded therein, said account number being incompatible with said payment infrastructure; further comprising: converting said account number to a PAN compatible with said payment infrastructure; generating a cryptogram at said terminal; and generating said authorization request using said PAN and said cryptogram generated at said terminal. In our Decision, we did not find Appellant’s arguments (see Appeal Br. 27–28) persuasive that just because claim 13 recites that the reduced- functionality payment device comprises a card (i.e., a tangible physical object), it is patent eligible. Decision 10. Moreover, we explained that the conversion of data from a reduced-functionality payment device to a format consistent with full-functionality payment devices (and the subsequent dispatch of the converted data into a payment infrastructure) did not confer Appeal 2018-003708 Application 13/372,907 3 patent eligibility, as these additional limitations merely refined the underlying abstract idea, confined the abstract idea to a particular technological environment, and did not otherwise add an inventive concept. Decision 10–11 (citing Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)). In the Appeal Brief, Appellant recited the limitations of claim 13 and asserted that these additional limitations recited in claim 13 confer patent eligibility for reasons similar to those discussed with reference to claims 2 and 3 of Example 35 (“Verifying A Bank Customer’s Identity To Permit An ATM Transaction”) in the Subject Matter Eligibility Examples: Business Methods, issued by the USPTO on Dec. 15, 2016, at pages 5-11. Appeal Br. 28. In the Request for Rehearing, Appellant further develops this argument and explains that “[i]n conventional arrangements, a full- functionality payment device computes a cryptogram . . ., which is included in the authorization request sent to the issuer.” Req. Reh’g 4. However, “because a reduced-functionality payment device cannot generate the cryptographic information normally used to protect a payment transaction, a cryptogram is generated in the terminal rather than the payment device.” Req. Reh’g 5. Appellant argues that moving the cryptogram generation functionality to the terminal adds an inventive concept beyond what is routine and conventional in the industry. Req. Reh’g 5. Appellant commends to our attention the Federal Circuit’s recent decisions in Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1344 (Fed. Cir. 2018) and SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019). There, the Federal Circuit concluded the pending claims Appeal 2018-003708 Application 13/372,907 4 set forth an improvement to computer technology. See Ancora, 908 F.3d at 1344 (concluding “the claimed advance is a concrete assignment of specified functions among a computer’s components to improve computer security”); SRI Int’l, 930 F.3d at 1304 (concluding “the representative claim improves the technical functioning of the computer and computer networks by reciting a specific technique for improving computer network security”). Appellant does not claim to have invented using a cryptogram for increased security. Rather, the use of cryptograms (i.e., cryptographic checks) is known in the industry and is part of the EMV (Europay, Mastercard, Visa) standard. See Spec. 19:14–18, 22:21–23. As such, Appellant’s reliance on Ancora and SRI Int’l is not availing. However, we find the court’s holding in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348–51 (Fed. Cir. 2016), is instructive. In BASCOM, the court determined that although filtering Internet content is a “longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract,” the inventors had recognized “a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location.” BASCOM, 827 F.3d at 1348–51. Thus, when considered as an ordered combination, the court concluded the claims provided an inventive concept by the non-conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. The court’s reasoning in BASCOM is applicable here. As described in the Specification, a full-functionality payment device is capable of computing a cryptogram and including it as part of an authorization request. Appeal 2018-003708 Application 13/372,907 5 See Spec. 19:18–23, 22:7–8. However, according to the Specification, a reduced-functionality payment device is limited to a fixed set of functions and is not able to generate a cryptogram. See, e.g., Spec. 19:7–20:17. Thus, in order to allow the reduced-functionality payment device to operate in a similar manner (i.e., provide a similar level of security) as a full- functionality payment device, claim 13 recites the generation of the cryptogram is generated not by the payment device (as is done conventionally by a full-functionality payment device), but at the payment terminal. On the record before us, the Examiner has not provided sufficient evidence or technical reasoning that it was conventional for the terminal to generate a cryptogram. See Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018). Accordingly, when considered as an ordered combination, we conclude claim 13 provides an inventive concept by the unconventional arrangement of generic components to yield a technological improvement. For the reasons discussed supra, we are persuaded by Appellant’s arguments and conclude claim 13 is patent eligible under 35 U.S.C. § 101. For similar reasons, we conclude that claims 14–16, which depend directly or indirectly therefrom, are also patent eligible under 35 U.S.C. § 101. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 13–16 101 Patent eligibility 13–16 Appeal 2018-003708 Application 13/372,907 6 Final outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–24 101 Patent eligibility 1–12, 17– 24 13–16 1–24 Pre-AIA 102(e) Dixon 1–24 Overall Outcome 1–12, 17– 24 13–16 GRANTED