Ex Parte BuchhopDownload PDFPatent Trial and Appeal BoardDec 8, 201713283221 (P.T.A.B. Dec. 8, 2017) Copy Citation 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. 13/283,221 10/27/2011 Peter Buchhop 007131.01115 2589 71733 7590 12/12/2017 BANNER & WITCOFF, LTD 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER SHAIKH, MOHAMMAD Z ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 12/12/2017 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): PTO-71733 @bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER BUCHHOP Appeal 2016-0060801 Application 13/283,221 Technology Center 3600 Before ALLEN R. MacDONALD, ADAM J. PYONIN, and AMBER L. HAGY, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of all pending claims: claims 1—3, 5—12, 14—21, and 23—27. See Br. 8; Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Introduction The Application is directed to a “location-based authentication of an electronic transaction” for a financial service, “based on a calculated 1 Bank of America Corporation is identified as the real party in interest. Appeal 2016-006080 Application 13/283,221 velocity that would be necessary to travel between the geographic locations of two successive attempts to access the financial service.” Spec. 14. Claims 1, 10, and 19 are independent. Claim 1 is reproduced below for reference (emphasis added): 1. A method, comprising: receiving from a first electronic device first credentials regarding a first financial transaction; determining a first geographic location associated with the first electronic device and a first time at which the first credentials were received; receiving from a second electronic device the first credentials regarding a second financial transaction; determining a second geographic location associated with the second electronic device and a second time at which the first credentials were again received; calculating, at an implied velocity calculator, an implied velocity of travel between the first geographic location and the second geographic location based on a distance between the first and second geographic locations and divided by a time difference between the first time at which the first credentials were received and the second time at which the first credentials were again received; determining a type of device of the first electronic device and the second electronic device, the first electronic device being a different type of device from the second electronic device; determining, based on the determined type of the device of the first electronic device and the second electronic device, a velocity threshold; determining whether the implied velocity exceeds the determined velocity threshold; responsive to determining that the implied velocity exceeds the determined velocity threshold, requesting a first authentication mechanism for approval of the second financial transaction; and responsive to determining that the implied velocity does not exceed the determined velocity threshold, requesting a second authentication mechanism for approval of the second 2 Appeal 2016-006080 Application 13/283,221 financial transaction, the second authentication mechanism being different from the first authentication mechanism. References and Rejections Claims 1—3, 5—12, 14—21, and 23—27 are rejected under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final Act. 3—24. Claims 1, 5, 7, 9, 10, 14, 16, 18, 19, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jackson (US 8,793,776 Bl; July 29, 2014), Powers (US 2010/0051684 Al; Mar. 4, 2010), and Greene (US 7,673,793 B2; Mar. 9, 2010). Final Act 25-35. Claims 2, 3, 6, 8, 11, 12, 15, 17, 20, 21, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Jackson, Powers, Greene, and other prior art references. Final Act. 35-39. ANALYSIS We have reviewed the Examiner's rejections in light of Appellant’s arguments. We have considered in this Decision only those arguments Appellant actually raised in the Brief. Any other arguments Appellant could have made but chose not to make are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv). A. 101 Rejection Appellant argues the Examiner erred in concluding independent claim 1 is patent-ineligible, because “claim 1 is not directed to an abstract idea, and even assuming, without conceding, that claim 1 is considered to include 3 Appeal 2016-006080 Application 13/283,221 an abstract idea, claim 1 amounts to ‘significantly more’ than any such abstract idea and is thus directed to patent-eligible subject matter.” Br. 10. We are not persuaded the Examiner erred; we adopt the Examiner’s findings and conclusions as our own (see Final Act. 4—24; Ans. 2—15). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (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., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” e.g., to an abstract idea. Alice Corp., 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible concept, the inquiry proceeds to the second step, where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant 4 Appeal 2016-006080 Application 13/283,221 technology, or instead are 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). Regarding the first step of the Alice test, Appellant contends claim 1 is “directed to identifying fraud or potential fraud,” and is “not directed toward any of the judicial exceptions, e.g., an abstract idea,” that are “similar to those found by the courts to be abstract.” Br. 11—12. Particularly, Appellant “respectfully submits that ‘using user credentials to authorize a financial transaction based on the time and geographic location of the transaction’ cannot properly be considered a ‘fundamental economic practice,’ let alone a patent-ineligible abstract idea.” Br. 14. Claim 1 recites a method of requesting authorization mechanisms2 for transaction approvals, responsive to calculations based on the locations and times of various financial transactions. We are not persuaded the Examiner erred in determining the claim is directed to an abstract idea pursuant to Alice, and that the claimed “authorizing of [] purchasing transactions using a user’s credential is in fundamental or foundational principle in the realm of conducting an electronic commerce between two parties.” Ans. 10; see also Final Act. 10. The Examiner’s position is supported by caselaw, as our reviewing court has held claims similarly directed to certain methods of transaction authorization and fraud detection to be directed to abstract ideas. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (“These are the same questions (though perhaps phrased with different 2 We note the Specification does not recite the claim term “authorization mechanism.” In the event of further prosecution, the Examiner may wish to determine whether claim 1 conforms with the requirements of both first and second paragraphs of 35 U.S.C. § 112. 5 Appeal 2016-006080 Application 13/283,221 words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.”); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (the abstract idea of verifying credit card transactions); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (“the abstract idea of‘processing an application for financing a purchase’”). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. See Ans. 4. Regarding the second step of the Alice test, Appellant further argues “the claims recite additional elements that amount to significantly more than any purported abstract idea because the claims recite several additional limitations besides the asserted abstract idea.” Br. 15. Appellant contends “claim 1 recites a specific computer system performing a specific sequence of steps that involves interactions between multiple different computing systems as well as combinations of functions that affect these multiple different computer systems,” such that, “[tjaken together, the features of claim 1 involve performing significant computer implemented functions.” Br. 16. Appellant does not persuade us claim 1 recites elements that transform the nature of the claim into a patent-eligible application. As correctly noted by the Examiner, claim 1 recites “generic computer architecture that is being used to apply the abstract idea of using user credentials to authorize a financial transaction based on the time and geographic location of the transaction, [which] does not add amount to significantly more than the abstract idea.” Ans. 7; see also Spec. 114 (“[A]ny functions attributed to a computing device as described herein may be implemented using such 6 Appeal 2016-006080 Application 13/283,221 computer-readable instructions read and executed by that computing device, and/or by any hardware (e.g., a processor) from which the computing device is composed.”). Rather than addressing a technical problem, the method of claim 1 is used to solve the business problem (and fundamental economic practice) of authenticating a financial transaction. See Spec. 111-5 ; see also Ans. 13. That such processes may be performed more efficiently by a computer does not ‘“transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297); see also Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter.”). Accordingly, we are not persuaded the Examiner erred in determining claim 1 is patent ineligible pursuant to the two-part Alice test. See Final Act. 4. Appellant presents similar arguments for independent claims 10 and 19, which we find similarly unpersuasive. See Br. 17—28; Ans. 14—15. We sustain the Examiner’s 35U.S.C. § 101 rejection of the independent claims as well as the claims that depend therefrom not separately argued. See Br. 17, 23,28. 7 Appeal 2016-006080 Application 13/283,221 B. 103 Rejections The Examiner finds Jackson teaches the following limitations recited by independent claim 1: determining a type of device of the first electronic device and the second electronic device the first electronic device being a different type of device from the second electronic device (At least: column 12: lines 1-20; column 10: lines 29-32; Fig 1: 115a, lib; column 4: lines 41-51); determining, based on the determined type of the device of the first electronic device and the second electronic device, a velocity threshold, (column 12: lines 1-20,21-36). Final Act. 26. Appellant argues the Examiner’s findings are in error, because “[w]hile Jackson describes determining whether a computed distance exceeds a threshold, there is no teaching or suggestion in Jackson of the threshold being based on the type of device of the first electronic device and the second electronic device, as recited in claim 1,” as Jackson provides “no teaching or suggestion of determining a type of device.” Br. 30. We are persuaded by Appellant’s arguments. The Examiner finds “the different type of electronic devices are being recited [in Jackson].” Ans. 16. Claim 1, however, recites more than just having different types of devices—the types of the devices must also be determined. Jackson teaches using various types of devices in a system, but does not disclose or suggest any determination is made as to the device types. See, e.g., Jackson 5:21—30 (describing a server configured to work with one or more user devices). Thus, we agree with Appellant that Jackson does not describe “determining a type of device” or “the determined type of device,” as claimed. See Br. 30. The Examiner does not rely on the other cited references for determining a type of device. See Ans. 15—18. As such, we 8 Appeal 2016-006080 Application 13/283,221 are persuaded the Examiner erred in finding the cited references teach or suggest the limitations of claim 1, and the limitations similarly recited by independent claims 10 and 19. We do not sustain the Examiner’s obviousness rejection of these claims, or the claims dependent thereon. DECISION The Examiner’s decision rejecting claims 1—3, 5—12, 14—21, and 23—27 is affirmed.3 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 3 The Examiner’s decision is affirmed because we have affirmed at least one ground of rejection with respect to each claim on appeal. See 37 C.F.R. § 41.50(a)(1). 9 Copy with citationCopy as parenthetical citation