Ex Parte Baldrick et al

Patent Trial and Appeal Board

Aug 8, 2017

13599739 (P.T.A.B. Aug. 8, 2017)

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.
13/599,739 08/30/2012 MarkBaldrick 79900-847211CY019000USNP 9941
66945 7590 08/10/2017
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
ipefiling@kilpatricktownsend.com
EDurrell @ kilpatrickto wnsend .com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BALDRICK and SANJEEVA KUMAR
Appeal 2016-0013911
Application 13/599,7392
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 1—3, 6—10, 12, 13, and 21—30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our Decision considers Appellants’ Appeal Brief (“Appeal Br.,” filed
May 29, 2015) and Reply Brief (“Reply Br.,” filed Nov. 17, 2015), as well
as the Examiner’s Final Office Action (“Final Act.,” mailed Nov. 4, 2014)
and Answer (“Ans.,” mailed Sept. 21, 2015).
2 Appellants identify Visa International Service Association as the real party
in interest. Appeal Br. 3.
Appeal 2016-001391
Application 13/599,739
CLAIMED SUBJECT MATTER
The invention “relates to methods, systems, and devices for financial
data processing,” and more specifically to “automatic refreshing of back-end
authorizations of credit card and other payment transactions by payment
service providers.” Spec. 13. Claims 1, 12, and 13 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of refreshing authorizations for expired
payment transactions, the method comprising:
receiving, at a payment service provider computer
operatively coupled with a memory, an authorization approval
message from a payment processor across a network confirming
that a customer account has money or credit for a payment
transaction and that the money or credit has been reserved across
said network for the payment transaction;
estimating, by the payment service provider computer
operatively coupled with the memory, whether the reservation
across the network of money or credit has expired by comparing
a time that has elapsed since the authorization approval message
was received across the network to a threshold time;
automatically generating, at the payment service provider
computer operatively coupled with the memory, a request
message for re-authorizing the reservation of money or credit in
the customer account for the payment transaction based on an
estimation that the reservation of money or credit across the
network has expired; and
automatically sending from the payment service provider
computer across the network to the payment processor the
request message.
REJECTION
Claims 1—3, 6—10, 12, 13, and 21—30 are rejected under 35 U.S.C.
§101 as non-statutory subject matter.
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ANALYSIS
As an initial matter, we disagree with Appellants’ assertion that the
Examiner’s rejection lacks evidence and fails to set forth a prima facie case
of non-statutory subject matter. Appeal Br. 10—11; Reply Br. 2. The
Federal Circuit has held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.” In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citation omitted). All that is
required of the Office is to set forth the statutory basis of the rejection, as
well as any reference on which the rejection relies, in a sufficiently articulate
and informative manner as to meet the notice requirement of § 132. Id. at
1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(“Section 132 is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.”).
Here, in rejecting the claims under 35 U.S.C. § 101 for being directed
to non-statutory subject matter, the Examiner analyzes the claims using the
two-step framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012) and reiterated in A lice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014),
which considers, in the first step, whether the claims are directed to a patent-
ineligible concept, e.g., an abstract idea, and then, in a second step, whether
the claims, individually and as an ordered combination, recite an inventive
concept—an element or combination of elements sufficient to ensure that the
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Application 13/599,739
claims amount to significantly more than the abstract idea and transform the
nature of the claims into a patent-eligible concept. Specifically, pursuant to
the first step, the Examiner finds the claims are directed to “refreshing
authorizations for payment transactions” which is a fundamental economic
practice and a method of organizing human activity and, therefore, an
abstract idea. Final Act. 4; Ans. 2, 4. Under the second step, the Examiner
finds the claims do not include additional elements amounting to
significantly more than the abstract idea because the claims are mere
instructions to implement the abstract idea on a generic computer.
Final Act. 4, Ans. 2, 5.
Given the Examiner notifies Appellants that the claims are ineligible
pursuant to the two-step framework for determining patent-eligibility, the
Examiner’s rejection satisfies the notice requirement of § 132. Furthermore,
there is no indication that Appellants do not recognize or understand the
Examiner’s rejection, as Appellants’ understanding is manifested in their
arguments traversing it. Accordingly, the Examiner has established a prima
facie case of non-statutory subject matter, and we turn to Appellants’
remaining arguments.
Appellants assert the Examiner’s characterization of the claims as
being directed to “refreshing authorizations for payment transactions” is
unsupported. Reply Br. 2. In particular, Appellants contend the Examiner
overlooked the claimed “estimating” and “automatically generating”
operations. Id. We disagree.
Both the language of the claims and the Specification support the
Examiner’s characterization of the claims. For example, the claims include
limitations reciting: receiving an authorization approval message from a
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Application 13/599,739
payment processor confirming a customer account has money or credit that
has been reserved for a payment transaction; estimating whether the
reservation has expired by comparing the elapsed time since the
authorization approval message was received to a threshold time;
automatically generating a request message for re-authorizing the
reservation based on an estimation that the reservation has expired; and
sending the request message. These limitations, including the “estimating”
and “automatically generating” limitations, describe a way to refresh
authorizations for payment transactions. Similarly, as set forth above, the
Specification describes the invention as refreshing authorizations of payment
transactions. Spec. 3, 18—23. Accordingly, we are not apprised of error
in the Examiner’s finding that the claims are directed to “refreshing
authorizations for payment transactions.”
Appellants also contend the claims are not directed to a fundamental
economic practice. Appeal Br. 10; Reply Br. 2. This argument does not
apprise us of error.
To determine whether what a claim is directed to is an abstract idea,
our reviewing court has explained:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353—54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134
S. Ct. at 2355—57. We shall follow that approach here.
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Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (footnote omitted). Here, the Examiner compares the
concept of “refreshing authorizations for payment transactions” to several
concepts held to be fundamental economic practices and/or methods of
organizing human behavior, and, thereby, abstract ideas, including:
“hedging,” “mitigating settlement risk,” “creating a contractual
relationship,” “processing loan information,” “managing an insurance
policy,” and “generating rule-based tasks for processing an insurance claim.”
Ans. 5 (citations omitted). Like the concepts determined to be abstract
ideas, the concept of “refreshing authorizations for payment transactions” is
a business practice, and, as Appellants point out, “reserving money or credit
goes way back” (Appeal Br. 11). We, therefore, see no meaningful
distinction between these concepts held to be abstract ideas and the concept
of “refreshing authorizations for payment transactions.”
Appellants further argue the claims include additional elements
amounting to significantly more than the abstract idea because the claims
recite elements in a specific computer networked domain.
Appeal Br. 11—13; Reply Br. 2—3. According to Appellants, the claimed
invention addresses the payment network-centric challenge of
simultaneously preventing authorization denials when a settlement request is
sent too late after an original authorization message, as well as minimizing
increased processing load if duplicate authorization messages are sent too
early. Reply Br. 2—3.
At the outset, we acknowledge the claims recite various computer
components for performing the recited functions. However, as the Examiner
finds, and Appellants do not refute, there is no indication that the recited
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computer hardware components are something other than generic,
conventional computing components. Ans. 5—8; Spec. Tflf 43 46, 77—79,
Fig. 9. Furthermore, the claims do not recite any technical details as to how
the computer components perform the recited functions. For example, the
claims do not describe how the payment service provider computer receives
an authorization message or how the computer automatically generates and
automatically sends a request for re-authorization.
Turning to the claims as an ordered combination, even if we agree
with Appellants that the claimed invention addresses a payment network-
challenge associated with the timing of sending a request for
re-authorization of a reservation of money or credit, the timing of a request
for re-authorization is not an issue unique to computers or computer
networks. Although the concern of timing a request for re-authorization is
perhaps exacerbated when the parties involved in processing a payment are
communicating over a computer network, the timeliness of a request for
re-authorization is an issue whether the parties communicate over a
computer network or not.
Accordingly, the claimed invention is not deeply rooted in computer
networks or an improvement to computer networks. Rather, as the Examiner
finds, the claims represent the generic computer implementation of an
abstract business practice, which is insufficient to confer patent-eligibility.
Ans. 5, 7; see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[TJhese claims in substance were directed to nothing
more than the performance of an abstract business practice on the Internet or
using a conventional computer. Such claims are not patent-eligible.”).
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Appellants additionally argue the claimed novel use of estimation
combined with authorization and re-authorization messages is significantly
more than the abstract idea. Appeal Br. 14. This argument does not apprise
us of error inasmuch as it relies on the alleged novelty of the claimed
invention. In considering whether the claims amount to significantly more,
the Federal Circuit has held: “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).
Appellants further contend the claims do not wholly preempt the field
of re-authorizing reservations for expired payment transactions.
Appeal Br. 14—16. This argument does not apprise us of error in the
Examiner’s rejection. Although preemption may be the concern driving the
exclusion of abstract ideas from patent-eligible subject matter, preemption is
not the test for eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
In view of the foregoing, we are not apprised of error in the
Examiner’s determination that the claims are directed to non-statutory
subject matter. We, therefore, sustain the rejection of claims 1—3, 6—10, 12,
13, and 21-30 under 35 U.S.C. § 101.
DECISION
The Examiner’s decision to reject claims 1—3, 6—10, 12, 13, and
21—30 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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