Ex Parte BennettDownload PDFPatent Trial and Appeal BoardNov 7, 201814282181 (P.T.A.B. Nov. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/282,181 05/20/2014 James D. Bennett 34399 7590 11/09/2018 GARLICK & MARKISON 106 E. 6th Street, Suite 900 AUSTIN, TX 78701 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. PC01C2 1262 EXAMINER RANKINS, WILLIAM E ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 11/09/2018 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): MMurdock@TEXASPATENTS.COM bpierotti@texaspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES D. BENNETT Appeal2017-008817 1 Application 14/2 82, 181 2 Technology Center 3600 Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and MATTHEWS. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 4--23. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. CLAIMED INVENTION Appellant's claims "relate[] generally to credit cards; and, more particularly, to sales transactions conducted by point-of-sale devices" (Spec. 1, 11. 13-14). 1 Our Decision references Appellant's Appeal Brief ("Br.," filed October 3, 2016) and the Examiner's Answer ("Ans.," mailed November 21, 2016), and Final Office Action ("Final Act.," mailed September 1, 2015). 2 Appellant identifies Enpulz, LLC as the real party in interest (Br. 2). Appeal2017-008817 Application 14/282, 181 Claims 4 and 13 are the independent claims on appeal. Claim 4, reproduced below with minor formatting changes and added bracketed notations, is illustrative of the subject matter on appeal: 4. A proxy card management system for managing a first card associated with a first monetary account and a second card associated with a second monetary account in conjunction with management of a proxy card having no direct monetary account representation, the proxy card management system comprising: [a] a processing infrastructure configured to implement a proxy card setup system through which a proxy card holder associates the proxy card with both the first card and the second card, the processing infrastructure supporting at least one transaction rule that includes allocating purchases between the first monetary account and the second monetary account; [b] the processing infrastructure configured to respond to a merchant communication by delivering a first approval code, the merchant communication identifying card data corresponding to the proxy card and purchase related data that includes a purchase amount; and [ c] the processing infrastructure configured to respond to receipt of a missing card indication that identifies the proxy card by disassociating both the first card and the second card from the proxy card without having to cancel either of the first card or the second card. REJECTIONS Claims 4--12 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 4 and 13 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Claim 4 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre- AIA), second paragraph, as being indefinite. 2 Appeal2017-008817 Application 14/282, 181 Claims 4--23 are rejected on the ground of non-statutory obviousness- type double patenting. ANALYSIS Non-statutory subject matter Independent claim 4 and dependent claims 5-12 Appellant argues claims 4--12 as a group (see Br. 9-14). We select independent claim 4 as representative. Claims 5-12 stand or fall with independent claim 4. See 37 C.F.R. § 4I.37(c)(l)(iv). The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. ( citing Mayo, 566 U.S. at 79) ( emphasis added). If so, the second step is to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether the additional elements "'transform the nature of the claim' into a patent- eligible application." Id. (quoting Mayo, 566 U.S. at 78-79). In other words, the second step is to "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."' Id. ( alteration in original) ( quoting Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of 3 Appeal2017-008817 Application 14/282, 181 nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, 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 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Appellant argues that the Examiner's rejection is in error because the Examiner fails to follow the Office guidelines for setting forth a prima facie case of subject matter ineligibility (see Br. 9--11 ). More particularly, Appellant argues that the Examiner improperly characterizes the claims as being "directed to the abstract idea of user management of multiple payment card accounts and user deactivation of an electronic payment card" (Br. 11 ), and "merely states his opinion as to the nature of present claims without referring to case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract" (Br. 11 ). Appellant's arguments are not persuasive. Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner analyzes the claims using the Mayo/Alice two-step framework. Specifically, the Examiner looks to the language of the claims and determines that the claims are directed to user management of multiple payment card accounts as recited in claim [ 4] by " ... a proxy card holder associates the proxy card with both the first card and the second card, . . . supporting at least one transaction rule that includes allocating purchases between the first monetary account and the second monetary account;" which is a method of organizing human activity and is similar to abstract ideas identified by the courts in SmartGene ( comparing new and stored information and using 4 Appeal2017-008817 Application 14/282, 181 rules to identify options) and Cyberfone ( using categories to organize, store and transmit information[)]. (Final Act. 2-3). The Examiner cites judicial decisions and compares the claim to ideas found to be abstract in those decisions (see Final Act. 2-3). The Examiner further determines that the additional elements of the claims, taken alone and as an ordered combination, do not ensure that the claims amount to significantly more than the abstract idea (see Final Act. 3--4; see also Ans. 2---6). The Examiner, thus, has clearly followed the guidelines. 3 In this regard, the Examiner has clearly articulated the reasons for the rejection and has notified Appellant of the reasons for the rejection "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 35 U.S.C. § 132. And we find that, in doing so, the Examiner set forth a prima facie case of unpatentability. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); 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."). Although Appellant cites to the Board decision Ex parte Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), Appellant does not direct attention to, nor do we find, any statement that requires the Examiner to identify specific references or documentation to support a finding that a claim is directed to an abstract idea. 4 We also note that Appellant's Appeal 3 We further note that the MPEP and guidelines are not legal requirements. Cf In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) ("The MPEP and Guidelines 'are not binding on this court"'). 4 We would not be bound, in any event, by a non-precedential decision of the Board. 5 Appeal2017-008817 Application 14/282, 181 Brief does not identify any particular deficiency with the Examiner's findings; it only asserts that "the Examiner merely states his opinion as to the nature of present claims without referring to case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract" (see Br. 11 ). Under the first step of the Mayol Alice framework, the Examiner determines that the claims are directed to "user management of multiple payment card accounts" (Final Act. 2; see also Ans. 2). Before determining whether the claims at issue are directed to an abstract idea, we must first determine what the claims are directed to. The "directed to" inquiry ... cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon-after all, they take place in the physical world. See Mayo, 132 S. Ct. at 1293 ("For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas."). Rather, the "directed to" inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether "their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs.Ltd. v.MerialL.L.C., [818F.3d 1369, 1375] (Fed. Cir. 2016) (inquiring into "the focus of the claimed advance over the prior art"). Enfzsh, 822 F.3d at 1335. The step-one analysis requires us to consider the claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp., 790 F.3d at 1346. The question is whether the claims as a whole "focus on a specific means or method that improves the relevant technology" or are "directed to a result or 6 Appeal2017-008817 Application 14/282, 181 effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Here, the preamble of independent claim 4 provides for a system for managing a proxy card configured to allow a proxy card holder to associate the proxy card with both a first card and second card based on at least one transaction rule, deliver information, e.g., approval code, proxy card identifying data, purchase related data, and dissociate the underlying cards from the proxy card based on receiving a missing card indication (see Br. 17 (Claims App.)). Other than "processing infrastructure" no other structure is claimed. The Specification describes that "multi-source processing system (MSPS) 113 facilitates financial transactions conducted from a point of sale unit 109 that uses a proxy card 125 associated with a plurality of monetary sources 117, 121 and 123" (Spec. 4:7-9) and "operates like a transaction processing center" (id. 9: 19-20). In that context, we agree with and find supported the Examiner's determination that independent claim 4 is directed to "user management of multiple payment card accounts" (Final Act. 2; see also Ans. 2). The abstract idea here is similar to ones our reviewing courts have deemed ineligible in Alice, 134 S. Ct. at 2356 (using a third party to mitigate settlement risk), buySAFE, Inc. v. Google, Inc., 765 F. 3d 1350, 1355 (Fed. Cir. 2014) (guaranteeing transactions), CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (verifying the validity of credit card transactions over the Internet), and Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1371-72 7 Appeal2017-008817 Application 14/282, 181 (Fed. Cir. 2017) (forming and collecting data for financial transactions in a certain field). Furthermore, as in Alice, we need not labor to delimit the precise contours of the "abstract ideas" category in this case. 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 "user management of multiple payment card accounts" (Final Act. 2; see also Ans. 2). Both are squarely within the realm of "abstract ideas" as the Court has used that term. See Alice, 134 S. Ct. at 2357. Here, independent claim 4, unlike the claims found non-abstract in prior cases, uses generic computer technology (see, e.g., Spec. 4: 15-23, 5: 1---6, 5: 19-24, 8: 12-15, 9:10-11, 9:19-20) to associate card information, deliver information, and dissociate card information, and does not recite an improvement to a particular computer technology. See, e.g., McRO, 837 F.3d at 1314--15 ( determining claims not abstract because they "focused on a specific asserted improvement in computer animation"). Thus, independent claim 4 is directed to a patent-ineligible abstract idea. We also find unpersuasive Appellant's argument that independent claim 4 is patent-eligible because it is directed to a proxy card management system that, by its very nature, is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks - in particular, the problem of electronically servicing a financial transaction by electronically dividing transactions among differing monetary sources via supporting electronic transactions. (Br. 12-13 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 8 Appeal2017-008817 Application 14/282, 181 1245, 1256 (Fed. Cir. 2014), the Federal Circuit determined that the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host's website after clicking on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claim a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." Id. In contrast, even if the problem is machine- oriented, there is no indication here that the claimed invention requires something other than the normal, conventional computer functionality found in a "transaction processing center" (see Spec. 9: 19--20) to allow a user to manage a proxy card (see e.g., Spec. 10:21-22 "the proxy card 125 provides such mapping information to the POS device or an ATM machine it is inserted in (or used with)."). We note that Appellant does not direct attention to, and we do not see, where the Specification provides for an improvement in the technology or technical functioning of the "processing infrastructure." Appellant argues that the current claims are not directed to an abstract idea because they are similar to the claims in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (see Br. 6). However, we find the focus of independent claim 4 is not on any technological advancement, but rather on the implementation of the abstract idea, "for which computers are invoked merely as a tool." See Enfzsh, 822 F.3d at 1336. In Enfzsh, the court explained, "the first step in the Alice inquiry ... asks whether the focus of the claims is on the specific asserted improvement 9 Appeal2017-008817 Application 14/282, 181 in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Id. at 1335-36. Here, we find the present claims are plainly of the second category, and the "focus of the claims," is on "user management of multiple payment card accounts" (Final Act. 2; see also Ans. 2). Thus, we find the present claims are not similar to the "self-referential table" in Enfzsh, which was a "specific improvement to the way computers operate" or the "specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type" held to be not abstract in McRO. We also are not persuaded by Appellant's argument that the claims are not directed to an abstract idea because "the claims recite features that do would [sic] not tie up every process for such an idea" (Br. 12). Although the Supreme Court has described "the concern that drives this exclusionary principle[, i.e., the exclusion of abstract ideas from patent eligible subject matter,] as one of pre-emption" (Alice, 134 S. Ct. at 2354), characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent 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). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id.; cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the 10 Appeal2017-008817 Application 14/282, 181 e-commerce setting do not make them any less abstract."), cert denied, 136 S. Ct. 701 (2015). Turning to the second step of the Alice analysis, we are not persuaded by Appellant's argument that independent claim 4 recites significantly more than this abstract idea because the claim requires "processing infrastructure and operations supported thereby" (Br. 13). In this regard, Appellant does not point to a particular portion of the Specification to show where the Specification discloses any specialized computer hardware or other "inventive" computer components that transforms the abstract idea into patent-eligible subject matter. Nor does Appellant provide adequate evidence or technical reasoning that the claims improve some existing technological process or solves some technological problem in conventional industry practice, such as in Diamond v. Diehr, 450 U.S. 175 (1981). See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (finding that the "claims recit[ ed] a commonplace business method aimed at processing business information despite being applied on a general purpose computer"), cert. denied, 136 S. Ct. 2510 (2016); see also Alice, 134 S. Ct. at 2359. Appellant argues that "the claims of the present application amount to significantly more than an abstract idea" because they include "a specific limitation other that what is well-understood, routine and conventional" (Br. 13). However, Appellant does not direct attention to, and we do not see, where the claims or Specification provide such a limitation. Here, as the Examiner points out, the processing infrastructure/management system recited by independent claim 4 is comprised of "generic devices associated with payment transactions such as a POS system and associated networks for 11 Appeal2017-008817 Application 14/282, 181 communicating and processing transactions which are conventional and routine" (Ans. 3). Thus, the individual functions of associating card information, delivering information, and dissociating card information, as recited by independent claim 4 do not supply an inventive concept because they merely require the application of conventional, well-known analytical steps. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) ("[T]he claimed sequence of steps comprises only 'conventional steps, specified at a high level of generality,' which is insufficient to supply an 'inventive concept."') (citing Alice, 134 S. Ct. at 2357). There is no indication in the record that any specialized computer hardware or other non-generic computer components are required. And, considered as an ordered combination, the computer components of Appellant's independent claim 4 add nothing that is not already present when the limitations are considered separately. Viewed as a whole, Appellant's claims simply recite to the concept of "user management of multiple payment card accounts" (Final Act. 2; see also Ans. 2) as performed by generic "processing infrastructure" a general purpose computer (see Ans. 5-6 (citing Figs. 1 and 2). The 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. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of "user management of multiple payment card accounts" (Final Act. 2; see also Ans. 2), which under our precedents, is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. 12 Appeal2017-008817 Application 14/282, 181 In view of the foregoing, we sustain the Examiner's rejection under 35 U.S.C. § 101 of independent claim 4, and claims 5-12, which falls with independent claim 4. Written Description In rejecting claims 4 and 13 under 35 U.S.C. § 112(a), the Examiner finds that there is no written description support in the Specification for "disassociating the monetary accounts from the proxy card without cancelling or closing the accounts" (Final Act. 8). The Examiner acknowledges that the Specification "discloses deactivating or locking user monetary accounts in the event of a lost proxy card," but finds the "claim limitations are broader than the [S]pecification allows" (id.). Appellant maintains that the rejection is improper, and asserts [i]n particular, step 713 of FIG. 7 of the application as filed states "MSPS sends message to all monetary sources through sms/ email/ other messaging about the lost card." At pa[ge] 19, lines 7-18, the deactivation process states that the proxy card is temporarily or permanently locked to all relevant monetary sources. This recitation implies that the monetary accounts are not canceled or closed while the monetary accounts are locked with respect to the proxy card. (Br. 15). Whether a Specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need not literally describe the claimed subject matter (i.e., using the same terms or in haec verb a) in order to satisfy the written 13 Appeal2017-008817 Application 14/282, 181 description requirement. But the Specification must convey with reasonable clarity to those skilled in the art that, as of the filing date, Appellant was in possession of the claimed invention. See id. Here, the Specification discloses [a]t block 713, after the authentication, the MSPS sends the information regarding the accounts associated with the lost proxy card that are to be temporarily or permanently locked to all relevant monetary sources. The MSPS determines which of the plurality of monetary sources to be targeted for such a message based on a proxy card to monetary source identification mapping that the MSPS maintains ( or has access to). The MSPS sends a lost proxy card message to the targeted monetary sources using one of an SMS message, an email, a lost card transaction message, etc. (Spec. 18: 15-21 ). Thus, we agree with Appellant that a person of ordinary skill in the art would reasonably understand from the Specification, as originally filed, that the Specification "implies that the monetary accounts are not canceled or closed while the monetary accounts are locked with respect to the proxy card" (Br. 15), and as such, provides support for the argued limitation, as recited by independent claims 4 and 13, at the time the application was filed. Therefore, we do not sustain the Examiner's rejection of claims 4 and 13 under 35 U.S.C. § 112(a). 14 Appeal2017-008817 Application 14/282, 181 Indefiniteness 5 Appellant does not challenge the Examiner's rejection under 35 U.S.C. § 112(b) (see Final Act. 9). Therefore, the indefiniteness rejection is summarily sustained. Double Patenting Appellant does not challenge the Examiner's double patenting rejection (see Br. 86). Therefore, the double patenting rejection is summarily sustained. DECISION The Examiner's rejection of claims 4--12 under 35 U.S.C. § 101 is affirmed. The Examiner's rejection of claims 4 and 13 under 35 U.S.C. § 112(a) is reversed. The Examiner's rejection of claim 4 under 35 U.S.C. § 112(b) is summarily affirmed. The Examiner's rejection of claims 4--23 on the ground of non- statutory obviousness-type double patenting is summarily affirmed. 5 We note that neither Appellant nor Examiner addresses the indefiniteness rejection in the Appeal Brief or Answer. However, given there is no indication in the Examiner's Answer that the Examiner intended to withdraw the rejection under 35 U.S.C. § 112(b) found on page 9 of the Final Action, the rejection remains. 6 Appellant identifies improperly claims 4, 5, and 13-16 as being rejected. We note, however, that claims 4--23 are rejected under this bases (see Final Act. 4--8). 15 Appeal2017-008817 Application 14/282, 181 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 16 Copy with citationCopy as parenthetical citation