Ex Parte Dickelman

Patent Trials and Appeals BoardMar 28, 2019

14334170 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/334,170 07/17/2014 70813 7590 04/01/2019 GOODWIN PROCTER LLP 901 NEW YORK A VENUE, N.W. WASHINGTON, DC 20001 FIRST NAMED INVENTOR Mark J. Dickelman 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. ]47004.020144 1027 EXAMINER NGUYEN, TIEN C ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): AAlpha-Kpetewama@goodwinlaw.com patentdc@goodwinlaw.com lrogers@goodwinlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK J. DICKELMAN Appeal2018-002159 Application 14/334,170 Technology Center 3600 Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI and JOHN R. KENNY, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 is appealing the final rejection of claims 1-21 under 35 U.S.C. Â§ 134(a). Appeal Brief 4. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellant identifies JPMorgan Chase Bank, N.A. as the real party in interest. Appeal Brief 2. Appeal2018-002159 Application 14/334, 170 Introduction "The present invention relates generally to payment processing, and more particularly, to a payment processing system and method providing for effectively converting an initial type of financial transaction into a more advantageous final type of financial transaction." Specification 1. Illustrative Claim 1. A computer-implemented method for converting an initial financial transaction to a final financial transaction, the method compnsmg: storing instructions in a computer memory coupled to at least one computer processor; receiving over a network, from a mobile computing device physically remote from a merchant via a merchant server, electronic data of a first card instrument associated with a cardholder; generating a card-not-present (CNP) payment transaction based on said received electronic data of said first card instrument; receiving, over the network, card data read by a point of authentication (POA) device from the first card instrument or a second card instrument associated with said cardholder; accessing the stored instructions by the at least one computer processor; and executing the stored instructions to convert, by the at least one computer processor, said CNP payment transaction to a card- present (CP) payment transaction, the CP payment transaction being based at least in part on the card data read by said POA device and effectively replacing said CNP payment transaction. Rejection on Appeal Claims 1-21 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to non-statutory subject matter. Final Action 2--4. 2 Appeal2018-002159 Application 14/334, 170 ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief ( filed October 18, 2017), the Reply Brief ( filed December 20, 2017), the Final Action (mailed May 18, 2017) and the Answer (mailed November 2, 2017), for the respective details. 35 U.S.C. Â§ 101 rejection The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 101 because the claims are directed to an abstract idea comprising a fundamental economic practice or organizing human activity, and do not include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Action 2-3 ("[T]he claim recites receiving information of the card instrument, reading, extracting data, using the received information to organize, generate the card-not-present (CNP) payment transaction, compare and convert the CNP payment transaction to a card-present (CP) payment transaction."); see Answer 11 (citing Specification page 1, lines 10-12); see also Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,217 (2014) (describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts"). After the mailing of the Answer and the filing of the Briefs in this case, the USPTO published revised guidance on the application ofÂ§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the Office first looks to whether the claim recites: 3 Appeal2018-002159 Application 14/334, 170 ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.0S(a}-(c), (e}-(h) (9th ed. 2018)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. We are not persuaded the Examiner's rejection is in error. We adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis and clarification with respect to the Memorandum. Appellant argues the pending claims are not directed to an abstract idea "when every limitation is taken into consideration and the invention is viewed as a whole." Appeal Brief 12. Appellant further argues, [ t ]he claimed invention is not limited to merely using transactional information or directed to the naked idea of converting a payment transaction. Rather, the entire claimed invention, if properly appreciated as a whole, involves both the receipt/collection of payment/transaction data (e.g., from a physical payment instrument and POA device) and the use of such data for conversion of payment transactions. Appeal Brief 13. 4 Appeal2018-002159 Application 14/334, 170 We agree with the Examiner's determination that the claims are directed to an abstract idea. See Final Action 2. The Abstract discloses that the invention is "a system and method for converting initial financial transactions into final financial transactions entailing lower transaction fees or which are otherwise more advantageous." The Specification discloses: An embodiment of the present invention comprises a system and method for converting initial financial transactions into final financial transactions entailing lower transaction fees or which are otherwise more advantageous or efficient. According to one embodiment of the invention, a card not present (CNP) transaction is conducted for a remote ( e.g., physically remote insofar the card can not be handed over at that time) consumer buying goods/services. When the consumer later arrives at a point of authentication (POA), the consumer is presented with an opportunity to have the CNP transaction effectively converted to a card present (CP) transaction using the same card instrument or a different card instrument. Specification 5-6. Claim 1 recites "A computer-implemented method for converting an initial financial transaction to a final financial transaction"; "generating a card-not-present (CNP) payment transaction based on said received electronic data of said first card instrument"; and "executing the stored instructions to convert, by the at least one computer processor, said CNP payment transaction to a card-present (CP) payment transaction, the CP payment transaction being based at least in part on the card data read by said POA device and effectively replacing said CNP payment transaction." See Memorandum, Section I ( Groupings of Abstract Ideas); see also Specification 5-7. Our reviewing court has found claims to be directed to 5 Appeal2018-002159 Application 14/334, 170 abstract ideas when they recited similar subject matter. See Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk .... "); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims directed to abstract idea of processing loan information through a clearinghouse); 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) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract). Therefore, we conclude the claims recite an abstract idea pursuant to Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(l) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). Appellant argues: The claims in Enfzsh related to "a specific type of data structure designed to improve the way a computer stores and retrieves data in memory[.]" Enfzsh at 1691. The present claims are similarly directed to systems and methods for electronically converting and replacing a CNP payment transaction with a CP transaction. Indeed, the claims utilize integrated hardware and software components to achieve this result, and do not fall into the category of "generic computer functions merely used to implement the abstract ideas[.]" Final Office Action at 4. Appeal Brief 16. We do not find Appellants' arguments persuasive because the claims utilize a computer network, telephonic network, Internet, mail system or other private or public computer network as merely a tool to process financial transactions initiated by a mobile computing device. See 6 Appeal2018-002159 Application 14/334, 170 Specification 6-8; see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ("[W]e find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea ... the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool."). The claims do not recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. See Final Action 4--5 ("These components of the additional limitations of the claim are recited at a high level of generality to simply perform the required functions of receiving information, reading data, comparing and converting the payment transactions."); see also Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we rejected the argument that 'implement[ing] a principle in some specific fashion' will 'automatically fal[l] within the patentable subject matter of Â§ 101."' (Alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))). Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Nor do we find the claim includes a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see 7 Appeal2018-002159 Application 14/334, 170 also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept' cannot be the abstract idea itself'); see Final Action 3--4. Other than the abstract idea itself, the remaining claim elements only recite generic computer components that are well-understood, routine, and conventional. See Final Action 3--4; Specification 6-9; Alice, 573 U.S. at 226. Accordingly, we conclude that claims 1-21 recite a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Memorandum and thus an abstract idea. DECISION The Examiner's non-statutory subject matter rejection of claims 1-21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). See 37 C.F.R. Â§ 1.136(a)(l )(v). AFFIRMED 8