Ex Parte Balasubramanian et al

Patent Trial and Appeal Board

Sep 24, 2018

14026197 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/026,197 09/13/2013
144885 7590 09/26/2018
The Webb Law Firm/ Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Chandra Balasubramanian
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8223-1710140(CC-0006US08) 7011
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRA BALASUBRAMANIAN, FRANCIS M. SHERWIN,
MICHAEL A. KERESMAN III, and ADAM RA TICA
Appeal2017-005378
Application 14/026, 197 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-20 under 35 U.S.C. § 101. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellants identify CardinalCommerce Corporation as the real party in
interest. Br. 1.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants' claimed concept relates to "the art of authentication. It
finds particular application in conjunction with facilitating the authentication
of an individual to conduct a secure transaction with a credit or debit card or
other payment instrument or payment means over a communications
network, e.g., the Internet, and it will be described with particular reference
thereto." Spec. ,r 2.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method of supporting account holder authentication in
connection with a transaction conducted between a first party
and a second party, wherein the first party accepts payment via
a plurality of different payment options selectable by the second
party, said plurality of different payment options being
associated with a plurality of different authentication initiatives
prescribed therefor, said method comprising:
receiving payment information over the Internet at a
server operatively connected to the Internet, wherein a
particular payment option used by the second party for the
transaction is determinable from said payment information, and
said server is equipped to at least one of format and route
messages over the Internet in different manners to
accommodate the plurality of different authentication
initiatives;
determining from the payment information received at
the server which of the different authentication initiatives is
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prescribed for the type of payment option identified in the
payment information;
selecting, in accordance with the determination made, a
particular authentication initiative from the plurality of different
authentication initiatives supported by the server;
and,
obtaining an authentication determination for the
transaction, said authentication determination being produced in
accordance with the selected authentication initiative.
Br. 20 (Claims Appendix).
THE REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 3-9 of the
Answer and pages 2-5 of the Final Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-20 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, we then ask, "[ w ]hat
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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. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
( citations omitted) ( citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-73 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. Although the Court in Alice
made a direct finding as to what the claims were directed to, we determine
that this case's claims themselves and the Specification provide enough
information to inform one as to what they are directed to.
The representative claim 1 results in: "obtaining an authentication
determination for the transaction, said authentication determination being
produced in accordance with the selected authentication initiative."
The Examiner found that the claims are directed to "the abstract idea
of [a] payment method." Final Act. 2.
The Specification states:
While widely used for more traditional face-to-face
transactions, use of standard cards in connection with e-
commerce presents certain difficulties, including difficulties
concerning authentication or positive identification of the
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cardholder. For example, maintaining consumer confidence in
security has become difficult with increased reports of fraud.
The resulting apprehension is also fueled by consumer
uncertainty of the reputation or integrity of a merchant with
whom the consumer is dealing. Questionable security of the
consumer's card information or other personal information
typically submitted along with a traditional e-commerce
transaction (e.g., address, card number, phone number, etc.)
serves to increase apprehension even more. Additionally,
cardholders, merchants and financial institutions are all
concerned about safeguarding against fraudulent or otherwise
unauthorized transactions. Similarly, other payments methods
are concerned with security.
Spec. ,r 4.
The Specification states:
[A] plurality of individual authentication initiative plug-in
components 232 that listen to the message distribution layer
220 for a specific message type. The respective plug-in
component 232 is activated by the message distribution layer
220 that sends messages to the specified plug-in component 232
based upon the type of payment instrument or method being
used for the transaction being processed. For example, as
shown, the MAPS 200 optionally includes plug-in components
232 for Visa®, MasterCard® and other payment instruments or
methods.
Spec. ,r 37.
The Specification describes:
Suitably, via the thin-client approach ( or alternately the
direct or easy connection approaches) the MAPS 200 obtains
payment information for the transaction from the merchant's
server 100. Suitably, the payment information includes a
number or name identifying the particular payment instrument
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or account being used (i.e., the card number or account number
or account name), an expiration date, transaction details (i.e.,
the transaction amount, etc.), and other pertinent payment data.
Spec.,r 42.
Thus, all this evidence shows that claim 1 is directed to a merchant
authentication payment process which routes transactions messages in
different manners based on a corresponding authentication initiative for the
payment option selected. It follows from prior Supreme Court cases, and
Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the claims at
issue here are directed to an abstract idea. A merchant authentication
payment process which routes transactions messages in different manners
based on a corresponding authentication initiative for the payment option
selected is a fundamental economic practice because it safeguards against
fraud. See Spec. ,r 4. The patent-ineligible end of the spectrum includes
fundamental economic practices. See Alice, 134 S. Ct. at 2355-2357; see
also Bilski v. Kappas, 561 U.S. 593, 611 (2010).
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. Alice, 134 S. Ct. at 2357. It is enough
to recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of routing transactions messages in different manners based on a
corresponding authentication initiative for the payment option selected, at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. Id. That the claims do not preempt all forms of
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the abstraction or may be limited to credit card purchases or ATM
transactions, does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
linkage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
The introduction of a computer into the claims does not alter the
analysis at Mayo 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, 134 S. Ct. at 23 5 8 ( citations omitted). "[T]he relevant question is
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whether the claims here do more than simply instruct the practitioner to
implement the abstract idea ... on a generic computer." Alice, 134 S. Ct. at
2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data, and thus,
modifying the data as a result, amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz Interactive
Call Processing Patent 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 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 America, Inc. v. Investpic, LLC, 898 F.3d 1161 at
1168 (Fed. Cir. 2018) (citation omitted).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
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are considered separately. The sequence of data reception-analysis-
access/ display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC,
874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is, therefore,
ordinary and conventional.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they 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. See,
e.g., Spec. ,r,r 19--22. The Specification does not describe any particular
improvement in the manner a computer functions, at least with respect to the
claims in the instant application. Instead, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access using some unspecified, generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
We have reviewed all the arguments (Br. 6-18) Appellants have
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 that have been made.
But, for purposes of completeness, we will address various arguments in
order to make individual rebuttals of same.
Appellants argue, "[ t ]he Examiner provides no support in making the
allegation and thus fails to establish a prima facie case that the claims are for
an abstract idea." Br. 7.
We disagree with Appellants. In rejecting the pending claims under
§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the USPTO's 2014
INTERIM GUIDANCE ON p ATENT SUBJECT MATTER ELIGIBILITY. See Final
Act. 2-5. Specifically, the Examiner notified Appellants that the claims are
broadly directed to "the abstract idea of [a] payment method." Id. at 2. The
Examiner further found:
The additional element(s) or combination of elements in the
claim( s) other than the abstract idea per se amount( s) to no
more than: server. Viewed as a whole, these additional claim
element( s) do not provide meaningful limitation( s) to transform
the abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amounts to significantly more than
the abstract idea itself.
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Id. at 2.
In this regard, there is no requirement that examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., section IV, "JULY 2015
UPDATE: SUBJECT MATTER ELIGIBILITY" to 2014 INTERIM GUIDANCE ON
PATENT SUBJECT MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) ("The courts consider the determination of whether a claim
is eligible ( which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings." (Emphasis added) (footnote omitted)). We
agree that evidence may be helpful in certain situations where, for instance,
facts are in dispute. 2 But it is not always necessary. Based on the above
analysis set forth by the Examiner, we are unpersuaded it is necessary in this
case.
All that is required of the Office to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
2 See, e.g., MPEP § 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." ( citations omitted)).
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informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging of the propriety of continuing
prosecution of his application." 35 U.S.C. § 132; see In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). Here, as we found above, the Examiner has
made these findings as required by the statute. s~ee Final Act. 2-5.
Br. 6.
Appellants argue,
the claims are directed to methods of authentication and/or
identity verification carried out in accordance with a plurality of
different authentication protocols, e.g., by determining and
selecting an appropriate authentication protocol (from a
plurality of different authentication protocols) to be used in
connection with a given payment type or option and obtaining
an authentication determination in accordance with the selected
initiative ( emphasis omitted).
In light of the breadth of the claim, the Appellants' argument is not
persuasive as to error in the rejection because the recited "initiative", is an
abstraction in of and itself because an initiative requires mental thought- it is
abstract. "[A] claim for a new abstract idea is still an abstract idea."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (citing Mayo, 566 U.S. at 90).
Appellants cite to various limitations in claim 1 which they believe
"result in improved technical functioning," because allegedly, they "result in
the ability to support multiple different authentication protocols and/or
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initiatives employed in connection with multiple different payment types or
options." Br. 7-9.
We disagree with Appellants. As found supra, the claims merely
recite the "Internet" and a "server" in a generic sense. Appellants'
arguments that the system "guard[s] against unwanted fraud and/or
chargebacks" (id. at 9) is directed to an effect and not an advancement in
technology, which does not advance the claims toward patent eligibility. At
step one, we look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
Appellants argue, "the Examiner has NOT found that the claims are
rejectable under §102 and §103 of the patent statute, which govern novelty
and unobviousness. In other words, it appears that the Office Action
acknowledges that the claims as a whole recite novel and unobvious ( and
therefore otherwise patentable) subject matter." Br. 10 (boldface omitted).
We are not persuaded by Appellants' argument because the standard
for patentability under 35 U.S.C. § 103(a) is obviousness, the standard for
patentability under 35 U.S.C. § 102 is novelty, and the standard for patent
eligibility under 35 U.S.C. § 101 is subject matter eligibility, i.e., whether
the claimed invention is directed to subject matter that is a judicial
exception, such as an abstract idea, without additional limitations amounting
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to significantly more than the exception. Each of these standards is
separately required to be met before patentability can be conferred on
invention, which is not the case here based on the latter standard. The
question in step two of the Alice framework is not whether an additional
feature is novel, but whether the implementation of the abstract idea
involves "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347-1348 (quoting Alice, 134 S. Ct. at 2359). As found supra, we
find nothing, which takes the claimed implementation outside of this
standard.
Appellants argue, "these tasks are NOT generic computer functions.
Rather, they are specific operations which in combination with the other
claimed features results in novel and non-obvious subject matter and an
improvement to technologies in the marketplace." Br. 16 (boldface
omitted).
We disagree with Appellants. As found supra, we find nothing in the
claims that is directed to an improvement in computer capabilities. The
capability of the computer as claimed before us here remains that of a
generic computer. That "the claims in this case recite the specific analysis
of particular data and application of outcome determinative logic such that
different outcomes are achieved based upon a result of the specific analysis"
(Br. 16), is not the function of a technical improvement in the computer, e.g.,
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higher speed processor due to circuit construction. Rather, it is merely the
normal work by computers invoked as the tool for the process.
Appellants argue, "[ t ]he claims call for a physical change in the
processing steps depending upon outcome determinative logic." Br. 15.
We disagree with Appellants that physical change occurs in the
context of changing authentication of processing steps. In Diamond v.
Diehr, 450 U.S. 175 (1981), the Court established eligibility under section
101 for claims containing mathematical formulas when the claim
"implements or applies that formula in a structure or process which, when
considered as a whole, is performing a function which the patent laws were
designed to protect (e.g., transforming or reducing an article to a different
state or thing)." Diamond, 450 U.S. at 192. In contrast, we fail to see how
changing authentication of processing steps transforms an article into a
different state or thing.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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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)(l )(iv).
AFFIRMED.
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