Comenity LLC

Patent Trials and Appeals Board

Aug 13, 2021

2021000652 (P.T.A.B. Aug. 13, 2021)

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.
15/788,538 10/19/2017 Timothy D. PONTIOUS ADS-140 6795
45588 7590 08/13/2021
ALLIANCE DATA C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
HUDSON, MARLA LAVETTE
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/13/2021 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY D. PONTIOUS and CELESTE RECHNER1
Appeal 2021-000652
Application 15/788,538
Technology Center 3600
Before DEBORAH KATZ, JOHN G. NEW, and
ROBERT A. POLLOCK, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL

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 Comenity LLC.
App. Br. 1.
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Application 15/788,538
2
STATEMENT OF THE CASE
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of claims 1–3 and 5–20 as unpatentable
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 1, 5, 8, 9, 15, and 16 also stand rejected under 35 U.S.C. § 103
as being unpatentable as obvious over the combination of West et al. (US
2015/0262291 A1, September 17, 2015) (“West”), Baher (US 2011/0137748
A1, June 9, 2011) (“Baher”), Mikuriya et al. (US 2017/0221046 A1, August
3, 2017) (“Mikuriya”), and Wang et al. (US 2016/0171498 A1, June 16,
2016) (“Wang”).
Claims 7 and 14 stand rejected as unpatentable under 35 U.S.C. § 103
as being obvious over the combination of West, Baher, Mikuriya, Wang, and
Bierbaum et al. (US 7,967,196 B1, June 28, 2011) (“Bierbaum”).
Claims 2, 3, 11, 12, 18, and 19 stand rejected as unpatentable under 35
U.S.C. § 103 as being obvious over the combination of West, Baher,
Mikuriya, Wang, and Nack et al. (US 9,147,152 B2, September 29, 2015)
(“Nack”).
Claims 6, 13, and 20 stand rejected as unpatentable under 35 U.S.C.
§ 103 as being obvious over the combination of West, Baher, Mikuriya,
Wang, and Sanchez et al. (US 2014/0070001 A1, March 13, 2014)
(“Sanchez”).
Claims 10 and 17 stand rejected as unpatentable under 35 U.S.C.
§ 103 as being obvious over the combination of West, Baher, Mikuriya,
Wang, Grigg et al. (US 2012/0197794 A1, August 2, 2012) (“Grigg”), and
Gaddam et al. (US 2016/0217461 A1, July 28, 2016) (“Gaddam”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to a limited-use temporary
credit account correlated with a newly-approved non-integrated credit
account. Abstr. The temporary credit account is subject to a time constraint
and a credit limit reduction as compared to the non-integrated credit account.
Id.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claimed subject matter and recites:
1. A method for providing a limited use temporary credit
account, the method comprising:
applying for a credit account, via a mobile device of a
customer, the applying being a non-integrated application
process that occurs at a location other than a point of sale;
displaying, on a display of the mobile device, a temporary
credit account, the temporary credit account correlated with a
newly approved non-integrated credit account, the temporary
credit account comprising:
a temporary account number;
a temporary expiration date; and
a temporary security code;
incorporating a time constraint into said temporary credit
account displayed on said mobile device, said time constraint,
limiting an amount of time the temporary credit
account is displayed on said mobile device, and
limiting an amount of time the temporary credit
account is available for making a purchase; and
integrating a credit limit reduction into said temporary
credit account displayed on said mobile device, said credit limit
reduction comprising:
reducing an available credit on the temporary credit
account to an amount less than a credit available on the
newly approved non-integrated credit account; and
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reducing the available credit on the temporary credit
account based on a type of product sold by a brand, and an
average ticket size for the brand.
App. Br. 26.
ISSUES AND ANALYSIS
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims are: (1) directed to nonstatutory subject matter and (2) prima facie
obvious over the combined cited prior art. We address below the arguments
raised by Appellant.
A. Rejection of the claims under 35 U.S.C. § 101
Issue
Appellant argues that the Examiner erred in finding the claims are
directed to an abstract idea, and therefore, patent-ineligible subject matter.
App. Br. 8–16.
Analysis
The Examiner finds that the steps recited in the claims describe the
concept of providing a temporary credit account to mitigate risks in sales
transactions. See Non-Final Act. 3–4. The Examiner finds that these steps
correspond to concepts identified as abstract ideas by the courts, specifically
fundamental economic practices that fall within the abstract idea category of
certain methods for organizing human activities. See id.; see also Alice
Corp. Pty. Ltd. v. CLS Bank Int’l., 573 U.S. 208, 218 (2014) (citing Bilski v.
Kappos, 561 U.S. 593, 611 (2014)).
The Examiner further finds that the additional elements of the claims,
for example, a display (claims 1, 8, and 15) on a mobile device (claims 1 and
15), a memory (claim 8), and one or more processors (claims 8 and 15),
generally link the use of the abstract idea to a particular technological
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environment or field of use. See Non-Final Act. 4–6. Because the
additional elements generally link the abstract idea to a field of use, these
elements fail to impose any meaningful limits on practicing the abstract idea,
and the Examiner finds that the abstract idea is not integrated into a practical
application. See id. at 6. The Examiner concludes that limiting the use of
the abstract idea to a particular environment cannot provide an inventive
concept, and thus the additional elements do not amount to significantly
more than the judicial exception (i.e., abstract idea). See id. at 6–8.
Appellant argues that the claims provide “a specific solution for the
application for a credit account via a non-integrated application process that
occurs [] on the [customer’s mobile] device at a location other than a point
of sale … and then providing a temporary credit account to the display on
the mobile device.” App. Br. 9. Appellant argues that the claimed subject
matter addresses problems associated with “conventional non-integrated
approaches” when the consumer must wait for a physical credit card to
arrive by mail before utilizing a credit account. Id. The claimed subject
matter solves this problem by providing a “stop-gap measure” that is “a
customer solution to the normally time-challenged aspects of non-integrated
credit account issuing process.” Id. at 9–10.
Appellant further argues that the claims effectively integrate the
alleged abstract idea into a practical application for two reasons. See App.
Br. 10–16. First, Appellant argues that the additional elements of the claims
transform a particular article to a different state or thing. See id. at 12–13.
Specifically, Appellant argues that the claims transform the “newly
approved non-integrated credit account” into a “displayed temporary
account” having significantly different features and characteristics, namely a
time constraint and reduced credit limit. See id.
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Second, Appellant argues that “the claimed features utilize a number
of elements to provide a specific, integrated, and practical application of the
exception.” App. Br. 13. Appellant argues that the claimed features that
constrain the time that the temporary account is displayed and available for
making purchases, and reduce the available credit based on the type of
product and average ticket size, provide a practical application of the
exception for a specific solution. See id. at 14. Appellant argues that “each
feature of the Claim is not operating in the abstract, but is instead operating
with a specific purpose to reach the stated goal of the practical application.”
Id. at 14–15.
Appellant further argues that the claims are eligible because they
require “at least certain steps that cannot practically be performed in the
human mind and because the claims integrate any exception into a practical
application (e.g., a time constrained, use constrained, lower credit limit,
temporary credit account).” App. Br. 15. Appellant argues that “the claims
are necessarily tethered to a technological environment,” and that the claim
elements “are sufficient to amount to significantly more than the judicial
exception.” Id.
We have considered, but are not persuaded by, Appellant’s arguments.
In performing an analysis of patentability under 35 U.S.C. § 101, we follow
the framework set forth by the Supreme Court in Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66 (2012). We are also mindful of, and
guided by, the United States Patent and Trademark Office’s 2019 Revised
Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50 (January 7,
2019) (the “Guidance”).
Appellant’s independent claim 1 recites: “A method for providing a
limited use temporary credit account … comprising: …” Following the first
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step of the Mayo analysis we find that the claim is directed to a process and
therefore falls into one of the broad statutory categories of patent-eligible
subject matter under 35 U.S.C. § 101.2
In the next step of the Mayo analysis, we determine whether the claim
at issue is directed to a nonstatutory, patent-ineligible concept, i.e., a law of
nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S. at 70–
71. If the claim is so directed, we next consider the elements of the claim
both individually and “as an ordered combination” to determine whether
additional elements “transform the nature of the claim” into a patent-eligible
application. Id. at 78–79; see also Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the Supreme Court
considered this second step as determining whether the claim recites 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.” Mayo, 566 U.S. at 72–73.
More specifically, in this second step of the Mayo analysis, we look to
whether the claim recites one of the judicially-created exceptions to 35
U.S.C. § 101, i.e., an abstract idea, a law of nature, or a natural phenomenon.
See 2019 Guidance 54 (Step 2A, Prong 1). If we determine that the claim
recites a judicial exception, we then determine whether the limitations of the
claim reciting the judicial exception are integrated into a practical
application. Id. (Step 2A, Prong 2). Finally, if we determine that the claim

2 Appellant does not argue the claims separately. See App. Br. 16
(“Appellant respectfully submits that the elements of Claims 8 and 15 are
also sufficient to overcome the rejection under 35 U.S.C. § 101 for at least
the reasons given above with respect to Claim 1.”) Accordingly, we
consider claim 1 as representative of the claims at issue.
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is directed to a judicially-created exception to Section 101, we evaluate the
claim under the next step of the Mayo analysis, considering the elements of
each claim both individually and “as an ordered combination” to determine
whether additional elements “transform the nature of the claim” into a
patent-eligible application. Mayo, 566 U.S. at 78–79; 2019 Guidance 56
(Step 2B).
“In cases involving software innovations, th[e] inquiry often turns on
whether the claims focus on ‘the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue
Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2018)).
Claim 1 recites the steps of: (1) applying for a non-integrated credit
account, (2) displaying a temporary credit account correlated to the non-
integrated credit account, (3) incorporating a time constraint into the
temporary credit account, (4) limiting an amount of time the temporary
credit account is displayed and available for making a purchase, (5)
integrating a credit limit reduction into the temporary credit account, and (6)
reducing an available credit on the temporary credit account to less than that
of the non-integrated credit account based on a type of product sold by a
brand and an average ticket size for the brand. App Br. 26. Each of these
steps deals with establishing related credit accounts having different time
and credit constraints using generic computing devices (e.g., a mobile
device).
Appellant’s Specification discloses that a primary purpose of the
claimed method is to “address a business challenge of how a customer can
pay with a credit account when a customer has applied for that same credit
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account in a non-integrated manner, while also reducing credit provider
risk.” Spec. ¶ 19. The Specification further discloses that the method
“provides a customer solution” “which is necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of non-
integrated credit account application utilization delay.” Id. ¶ 18. Appellant
contends that this “customer solution” provides a “stop-gap measure,” which
is not a fundamental economic practice. See App. Br. 9–10.
We disagree. Generally, the claims recite steps for applying for credit
accounts which are subject to time and credit limits. Our reviewing court
has considered similar claims to be abstract, as “processing an application
for financing a purchase is ‘a fundamental economic practice long prevalent
in our system of commerce.’” Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1054 (Fed. Cir. 2017) (quoting Alice, 134 S.Ct. at 2356)). In
Credit Acceptance, our reviewing court found that the claims recited various
steps for generating financing packages by applying for a credit account to
be used for an immediate purchase for a specific item within a dealer’s
inventory; the credit amount limited by an applicant’s credit score. See id. at
1407, 1054–1055. Similar to Credit Acceptance, the claims recite steps for
opening credit accounts (financing packages), used for a time-limited
purposes (immediate purchase), and for specific items available from a
specific brand (dealer inventory). See id. Accordingly, we agree with the
Examiner that the claims recite a fundamental economic practice, which is
an abstract idea.
Having determined that the claims recite an abstract idea, we next
determine whether the limitations of the claims reciting the judicial
exception are integrated into a practical application. The Guidance provides
additional context for this analysis, stating that: “A claim that integrates a
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judicial exception into a practical application will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance at 53. Appellant contends
that claims integrate the abstract idea into a practical application because the
claims recite additional elements that: (1) effect a transformation of a
particular article to a different state or thing and (2) apply the judicial
exception is some other meaningful way. App. Br. 12–15.
We disagree. Appellant’s first argument is that the claims transform
the “newly approved non-integrated credit account” into a different
“temporary credit account” that is limited by time and available credit. See
App. Br. 12–13. However, the method of creating a limited, temporary
credit account as a subset of a non-integrated credit account is itself the
claimed abstract idea, and not an additional element beyond the judicial
exception. See Guidance 55, nt. 24 (“USPTO guidance uses the term
‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.”)
Transforming one abstract idea into another abstract idea is readily
distinguishable from the type of transformation considered patent eligible by
the courts. Cf. Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“a physical and
chemical process for molding precision synthetic rubber products falls
within the § 101 categories of possibly patentable subject matter. That
respondents’ claims involve the transformation of an article, in this case raw,
uncured synthetic rubber, into a different state or thing cannot be
disputed.”). Accordingly, we do not agree that Appellant’s claims recite an
additional element that effects a patent-eligible transformation.
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Application 15/788,538
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Appellant’s second argument is that the additional element applies the
judicial exception in some other meaningful way. See App. Br. 13–15.
However, Appellant again refers to the various abstract ideas associated with
the credit accounts, e.g., “limit the risk factors” and “reduce the available
credit,” that are not additional elements beyond the judicial exception. See
id. at 14. Appellant further argues that the claimed “mobile device” allows
the customer to use a non-integrated application process that occurs at a
location other than a point of sale. Id. The mobile device is an additional
element beyond the judicial exception. However, “[a]ll that limitation does
is to confine the abstract idea to a particular technological environment—in
this case, cellular telephones.” See Affinity Labs of Texas, LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016). Our reviewing court has
“repeatedly made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not render the
claims any less abstract.” Id.
Appellant concludes by arguing that “the claims are necessarily
tethered to a technological environment.” App. Br. 15. However, Appellant
does not support or explain this argument. See id. Rather, Appellant’s
Specification more accurately describes the invention as a “customer” or
“business” solution. See Spec. ¶¶ 18–19. Accordingly, we find the claims
similar to those in Affinity Labs, in which our reviewing court found the
claims “directed not to an improvement in cellular telephones but simply to
the use of cellular telephones as tools in the aid of a process focused on an
abstract idea. That is not enough to constitute patentable subject matter.”
838 F.3d at 1262.
For the same reasons, we find that, considering the elements of each
claim both individually and “as an ordered combination,” the claims recite
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no additional elements that “transform the nature of the claim” into a patent
eligible application. Mayo, 566 U.S. at 78–79; Guidance at 56 (Step 2B).
Specifically, we agree with the Examiner that limiting the use of the abstract
idea to a particular environment or field of use cannot provide an inventive
concept. Non-Final Act. 7.
We therefore conclude the claims are directed to nonstatutory subject
matter, and we affirm the Examiner’s rejection of the claims.

B. Rejection of the claims under 35 U.S.C. § 103
Issue
Appellant argues that the Examiner erred because Wang does not
disclose or suggest reducing the available credit based on an average ticket
size for the brand. App. Br. 18.
Analysis
In each of the rejections over the prior art, the Examiner finds that
West teaches a method for applying for, and opening, a non-integrated credit
account via a mobile device using a non-integrated application process that
occurs at a location other than a point of sale. See Non-Final Act. 10 (citing
West ¶ 24, Figs. 2–3). The Examiner finds that West teaches displaying a
temporary credit account on a mobile device, wherein the temporary credit
account is correlated with the non-integrated credit account. See id. (citing
West ¶¶ 18, 21, 24–26, Fig. 2). The Examiner finds that West teaches the
temporary credit account includes an account number, expiration date, and
security code, and is further subject to a credit limit reduction compared to
the correlated non-integrated credit account. See id. at 11 (citing West
¶¶ 28–29, 35, 45, 75, Figs. 2–3).
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The Examiner finds that Baher teaches incorporating purchase and
display time–constraints into a temporary credit account. See Non-Final
Act. 11–12 (citing Baher ¶¶ 51–52, Figs. 1, 4). The Examiner finds that
Mikuriya teaches reducing the available credit on a virtual payment account
based on a type of product sold by a brand. See id. at 13 (citing Mikuriya
¶¶ 279–286, Fig. 26). Finally, the Examiner finds that Wang teaches
reducing available credit based on an average ticket size, because Wang
“teaches that available credit is restricted/impaired (i.e., available credit is
zero) based on an average ticket size of a store (or brand)).” Id. (citing
Wang ¶¶ 5–7, 20). The Examiner finds that it would have been obvious to a
person of ordinary skill in the art to combine the references to add limits to
West’s temporary credit account to prevent fraud and unauthorized access.
See id. at 12–14.
Appellant does not present separate arguments against any of the
rejections based on prior art. See App. Br. 22. Appellant disagrees with the
Examiner’s interpretation of Wang. App. Br. 18. Appellant argues that
“Wang is focused on approval or disapproval of the transaction, not on a
reduction of any credit limit.” Id. at 19. Specifically, Appellant argues that
Wang discloses that average ticket size “is used to ‘generate a
recommendation for approval or decline of the current financial
transaction.’” Id. at 20 (quoting Wang ¶¶ 5–7). Appellant argues that “[o]ne
of skill in the art (and likely any credit card user) would never equate a
denial of use to a reduction in available credit limit.” Id. at 23. Appellant
concludes that “the approval or denial as taught by Wang cannot be
analogized to ‘reducing available credit based on a brand’s average ticket
size’ as suggested by the Examiner.” Id. at 24.
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We are not persuaded by Appellant’s argument. Appellant argues
against the Wang individually, rather than the combination applied by the
Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”). For example, West teaches that “the customer
virtual co-branded card access module [] may limit purchases on the
customer virtual co-branded card [] to a limit well below the customer’s
approved credit amount for fraud protection purposes.” West ¶ 35.
Likewise, Mikuriya teaches usage restrictions based on a specific brand. See
Mikuriya ¶¶ 279–286. Wang teaches using average ticket size as another
fraud-protection mechanism for a credit account. See Wang ¶¶ 5–7.
Accordingly, the combination of West, Baher, Mikuriya, and Wang suggests
using the average ticket size of a brand to limit purchases on a temporary
credit account to a limit well below that of the non-integrated credit account
as a method of fraud protection. See In re GPAC Inc., 57 F.3d 1573, 1581
(Fed. Cir. 1995) (“In determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”) (internal citations omitted).
We further agree with the Examiner that the broadest reasonable
interpretation of “reducing an available credit” based on an average ticket
size for the brand encompasses Wang’s teaching of denying a purchase
based on average ticket size that exceeds a set limit. Despite Appellant’s
arguments to the contrary (see App. Br. 23–24), if the purchase price of a
desired item exceeds the reduced available credit, the desired transaction
will be denied, as taught by Wang. Appellant does not identify any express
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definition in the Specification that contradicts the Examiner’s broadest
reasonable interpretation. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997) (“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.”).
We consequently conclude that Appellant’s arguments are insufficient
to overcome the Examiner’s prima facie conclusion that the claims are
obvious over the combined cited prior art, and we affirm the Examiner’s
rejection of the claims.
CONCLUSION
The rejection of claims 1–3 and 5–20 as unpatentable under 35 U.S.C.
§ 101 is affirmed.
The rejections of claims 1–3 and 5–20 as unpatentable under 35
U.S.C. § 103 is 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)(1).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–20 101 Eligibility
1–3,
5–20

1, 5, 8, 9,
15, 16 103
West, Baher,
Mikuriya, Wang
1, 5, 8, 9,
15, 16

7, 14 103
West, Baher,
Mikuriya, Wang,
Bierbaum 7, 14

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2, 3, 11, 12,
18, 19 103
West, Baher,
Mikuriya, Wang,
Nack
2, 3, 11,
12, 18,
19

6, 13, 20 103
West, Baher,
Mikuriya, Wang,
Sanchez 6, 13, 20

10, 17 103
West, Baher,
Mikuriya, Wang,
Grigg, Gaddam 10, 17

Overall
Outcome
1–3,
5–20