Ex Parte Flitcroft et al

Patent Trial and Appeal Board

Oct 31, 2017

10160190 (P.T.A.B. Oct. 31, 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.
10/160,190 06/04/2002 Daniel Ian Flitcroft 1032668-000033 1850
21839 7590 11/02/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CAMPBELL, KELLIE L
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL IAN FLITCROFT, GRAHAM O'DONNELL, CONOR
LANGFORD, and JAMES CARROLL
Appeal 2016-0058001
Application 10/160,190
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN., Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants2 appeal under 35U.S.C. § 134 from the Examiner’s
rejections of claims 27-47. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 An oral hearing was held on October 24, 2017.
2 “Orbis Patents, LTD is the real party in interest.” (Appeal Br. 2.)
Appeal 2016-005800
Application 10/160,190
STATEMENT OF THE CASE
According to the Appellants, “the present invention provides for
business-to-business transactions using financial transaction numbers (e.g.,
specifically Controlled Payment Numbers (CPNs)) as accounting tools.”
(Spec. 1.)
Illustrative Claim
27. A method of conducting commerce using controlled
payment numbers (CPNs), comprising the steps of:
receiving, by a processor of a computer processing
device, a user request for issuance of a CPN, the request
including user-defined restrictions on use in a financial
transaction for a purchase of goods and/or services and user-
defined purchase information, wherein at least part of said user-
defined purchase information describes a future purchase of
goods and/or services that is not required for the financial
transaction;
generating, by the processor, in response to the received
request, a unique CPN that (i) constitutes a financial transaction
payment instrument, (ii) is limited in use in the financial
transaction to the user-defined restrictions on use included in
the request, and (iii) constitutes a unique identifier for both the
financial transaction and the user-defined purchase information;
creating, in a database connected to the computer
processing device, an accounting record for the user-defined
purchase information that is (i) identified by the CPN and (ii)
links the unique CPN with the user-defined purchase
information without requiring merchant involvement;
receiving, in the computer processing device, an
authorization request from a merchant whereat a transaction for
goods and/or services is initiated with the unique CPN, said
authorization request including the unique CPN and transaction
information pertaining to the transaction;
based on the unique CPN included in the authorization
request, identifying, in the database, the accounting record
associated therewith;
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transmitting, from the computer processing device, an
authorization notification to the merchant when the transaction
complies with the user-defined restrictions on use that are
linked to the CPN in the identified accounting record for the
user-defined purchase information; and
modifying the accounting record for the user-defined
purchase information to reflect the purchase of goods and/or
services and the transaction information, such that the purchase
of goods and/or services and the transaction information are
linked to the user-defined purchase information and uniquely
identified by the CPN.
Rejections
I. The Examiner rejects claims 27-47 under 35 U.S.C. § 101 as
failing to recite statutory subject matter. (Final Action 8.)
II. The Examiner rejects claims 27-47 under 35 U.S.C. § 103(a) as
unpatentable over Franklin3 and Praisner.4 (Final Action 9.)
ANAFYSIS
Claims 27 and 34 are the independent claims on appeal, with the rest
of the claims on appeal (i.e., claims 28—33 and 35—47) depending directly or
indirectly from independent claim 27. (See Appeal Br., Claims App.)
Independent claims 27 and 34 recite steps/operations related to
conducting or facilitating commerce using “controlled payment numbers
(CPNs).” (Appeal Br., Claims, App.) The Appellants define a “CPN” as “a
primary account number, expiry date, and additional verification value” that
is “used instead of the cardholder’s ‘reaf account details in a transaction.”
3 US 5,883,810 issued March 16, 1999.
4 US 7,319,986 B2 issued January 15, 2008.
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(Spec. 8.) The Appellants also describe a CPN as a “financial transaction
number[]” that is used as an “accounting tool[].” (Id. at 1.)
Independent claims 27 and 34 more specifically recite, inter alia,
“receiving” a “user request” for the CPN that includes “purchase
information,” “generating” the CPN in response to this request, “creating”
an “accounting record” for the purchase information that is identified by the
CPN, “receiving” an “authorization request” from a merchant that includes
the CPN, “identifying” the accounting record “associated” with the CPN,
“transmitting” an “authorization notification” to the merchant, and
“modifying” the accounting record such that “transaction information” is
“linked” to “purchase information” and “uniquely identified by the CPN.”
(Appeal Br., Claims App.) Thus, according to the Appellants, “the
uniqueness of the CPN” can be “used to unambiguously match [] purchase
and payment information.” (Spec. 9.)
Rejection I
As discussed above, independent claims 27 and 34 recite the receipt of
CPN-related request data; the generation of CPN data; the creation,
identification, and modification of CPN-associated record data; and the
transmission of CPN-resultant notification data. (See Appeal Br., Claims
App.) Independent claim 27 requires the CPN-related user request to be
received “by a processor of a computer processing device” and requires the
CPN-associated accounting record to be created “in a database.” (Id.)
Independent claim 34 requires the above-mentioned receipt, generation,
creation, identification, modification, and transmission operations to be
carried out when a computer program is “executed by the computer.” (Id.)
According to the Appellants, “[njaturally,” the various methods steps “can
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be carried out on multiple computer, computer systems, and/or computer
networks.” (Spec. 41).
The Examiner determines that the claims on appeal are directed a
“fundamental economic practice” and/or “a method of organizing human
activity,” and thus are directed to an “abstract idea.” (Final Action 8.) The
Examiner also determines that the additional elements in the claims amount
to no more than “instructions to implement the idea on a computer” and/or
“generic computer structure that serves to perform generic computer
functions.” {Id.) More succinctly, the Examiner applies the two-step Alice
test5 and determines that the claims on appeal do not pass muster under
35U.S.C. § 101.
The Appellants argue that the claims on appeal are “not directed
toward an abstract idea” and/or include “additional recitations that are
‘significantly more’ than an abstract idea.” (Appeal Br. 28; see also Reply
Br. 9—10.) We are unpersuaded by the Appellants’ arguments because, as
explained below, when we apply the two-step Alice test to the claims on
5 In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CIS Banklnt’l,
134 S. Ct. 2347 (2014); and it decision requires us to apply a two-part test for
distinguishing a claim to an “abstract idea” from a claim to a “patent-eligible
application” of an abstract idea. Alice, 134 S. Ct. at 2355 (citations omitted).
The first step is to determine if “the claims at issue are directed to a patent-
ineligible concept.” Id. If the claims are determined to be directed to a
patent-ineligible concept, then the second step is to determine if “the elements
of the claim” contain “an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citations
omitted). The second step of the Alice test has been described “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.’” Id., at 2355 (citations
omitted).
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appeal, we likewise reach the conclusion that they do not pass muster under
35 U.S.C. § 101.
With respect to the first step of the Alice test, this step requires a
determination of whether the claims at issue are directed to a patent-
ineligible concept. We agree with the Examiner that independent claims 27
and 34 are directed to an abstract idea. In our view, the focus of the claims
on appeal is on receiving, manipulating (e.g., generating, recording,
identifying, modifying, etc.), and transmitting intangible data of a specified
content (i.e., accounting data relating specifically to a financial transaction);
and therefore fall under the umbrella of information-based abstract ideas.6
With respect to the second step of the Alice test, this step requires a
determination of whether additional claim elements transform the above-
identified abstract idea into a patent-eligible application. We agree with the
Examiner that the additional elements recited in independent claims 27
and 34 are insufficient, either alone or in an ordered combination, to
accomplish this transformation. The additional elements recited in
independent claim 27 amount to “a processor of a computer processing
device,” and “a database connected to the computer processing device.”
(Appeal Br., Claims App.) These are generic computer components,
carrying out operations (e.g., receiving data, generating data, recording data,
identifying data, transmitting data, modifying data, etc.) routinely performed
by a processing device and database connected thereto. As for independent
6 See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—1354
(Fed. Cir. 2016) (When “the focus of the asserted claims” is “on collecting
information, analyzing it, and displaying certain results of the collection and
analysis,” the claims are directed to an abstract idea).
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claim 34, as indicated above, it merely recites “a computer” that is caused to
“carry out” these routine operations when a computer program is executed.
{Id.)
The Appellants argue that “the presence of specific details
limitations” make “the claim scope narrower than an abstract idea.” (Appeal
Br. 21.) However, the Appellants do not point with particularity to the claim
limitation(s) responsible for this allegedly narrowing effect. Furthermore,
although the Appellants’ claim language is abundant with accounting
terminology (e.g., “user request,” “purchase information,” “restrictions on
use,” “transaction information,” “accounting record,” “authorization
request,” “authorization notification,” “financial transaction payment
instrument,” etc.), these limitations relate solely to details of the content
and/or source of intangible information. Such recitals do not elevate the
status of the claimed subject matter beyond that of an abstract idea, under
either the first or second step of the Alice test.7
The Appellants also argue the claims on appeal “address a
technological problem associated with the processing performed by
electronic financial processing systems” and correspondingly solve “a
technological problem.” (Appeal Br. 24, 27.) Along this same line, the
7 See, e.g., Elec. Power Grp., LLC, 830 F.3d at 1353—54. In this case, the
Federal Circuit held that the claims were directed to “an abstract idea,” even
though the recited data content and data manipulation related specifically to
“electrical power-grid performance.” Id. The Federal Circuit also held that
although “a large portion of the lengthy claims is devoted to enumerating
types of information and information sources available within the power-
grid environment,” “merely selecting information, by content or source, for
collection, analysis, and display” did “nothing significant” to distinguish the
claimed process from an abstract idea. Id.
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Appellants argue that the “claimed solution is ‘necessarily rooted in
computer technology to overcome a problem specifically arising in the realm
of computer networks.’” (Id. at 24—25.) We disagree. The problem
addressed by the Appellants is a principle that is “a fundamental basis of
accounting,” namely the “matching” of purchase and payment information.
(Spec. 1.) And this problem is solved not by technical improvements made
to computer components, but rather by an accounting tactic in which a
financial transaction number (i.e., intangible data) constitutes “a unique
identifier for both the future transaction and the purchase order information.”
(Appeal Br. 23.)8
We further note that, even if the Appellants’ claimed concept solves a
challenge existing only in a network (e.g., Internet) environment, this alone
is insufficient to transform a patent-ineligible abstract idea into patent-
eligible subject matter.9 In this regard, the Appellants do not assert that their
8 Independent claims 27 and 34 additionally recite that the user request
includes “user-defined restrictions on use in a financial transaction for a
purchase of goods and/or service” and that the authorization notification is
transmitted to the merchant “when the transaction complies with the user-
defined restrictions.” (Appeal Br., Claims App.) These restrictions on use
appear to address another common transactional-accounting problem,
namely insuring that authorization for a transaction is only given in
appropriate circumstances. And this problem is likewise solved by the “user
defined restrictions on use” being “linked to the CPN.” (Id.)
9 In Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014), for
example, the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was previously unknown
and never employed on the Internet before.” However, the recited steps
relating to the Internet, “such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Internet[,]” were insufficient to transform the patent-ineligible abstract
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invention resides in a change to accepted or established Internet interactions
and events. Rather, any of the recited operations that could be performed
within an Internet environment are done for purpose of conveying data to
generic computer components that implement the abstract idea of collecting,
manipulating, and transmitting intangible information.
The Appellants additionally argue that the claimed subject matter
requires a “special purpose” computer. (See Appeal Br. 25.) This argument
appears to be premised primarily upon the recited computer components
being programmed to perform routine operations (e.g., receiving, recording,
manipulating, and transmitting data) necessary to accomplish the above-
identified abstract idea. The flaw in this argument is that it just another way
saying that these computer components are being used to implement an
abstract idea. Inasmuch as the recited computer components allow faster
processing of larger amounts of data, this is generally true of most computer-
implemented processes and, in any event, is not enough to impart patent
eligibility.10
The Appellants also contend that, due to the sensitive financial nature
of the information being handled, generic components could not be
idea (i.e., offering media content exchange for viewing an advertisement)
into patent-eligible subject matter. Id. at 715—16. In contrast, in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), 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.
10 See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (“[R] dying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible”).
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employed to carry out the computer-implemented steps recited in the claims.
(See Appeal Br. 26.) For example, according to the Appellants, “specified
communication protocols and data formatting standards are required for
communication along payment rails.” (Id.) However, we see no mention in
the claims on appeal of protocols, formatting standards, or payment rails.
Moreover, the computer components in Alice would have been likewise
handling sensitive financial information, and this did nothing to sway the
direction of the Supreme Court’s inventive-concept conclusion.11
That being said, we recognize that it is possible for an inventive
concept to be found in the arrangement, or ordered combination, of generic
computer components.12 Here, however, the only arrangement recited in the
independent claims pertains to the database being “connected to the
computer processing device” (Appeal Br., Claims App.), and such a
connection is conventional and generic. The claims on appeal do not, for
example, recite a network arrangement among the computer system of a
buyer, the computer system of a merchant, and the computer systems of
transaction-coordinating entities (e.g., the buyer’s bank, the issuer’s bank, an
exchange, a software platform, etc.). Moreover, a network arrangement of
these respective computer systems would appear to likewise be conventional
11 See Alice, 134 S. Ct. at 2359 (“[U]se of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions” is
not an inventive concept).
12 See Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016) (“[A]n inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces,”
even if these pieces constitute generic computer, network, and internet
components).
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and generic in the world of electronic transactions. Insofar as the Appellants
claim a variation in the flow pattern of data collection during an
electronically processed transaction (e.g., providing pre-purchase purchase
information), this does not equate to an inventive arrangement or ordered
combination of computer systems.
The Appellants further argue that “there are countless manners in
which numbers may be used identify a payment or transaction” which are
not encompassed by the claims, and thus preemption is not a risk. (Appeal
Br. 22.) However, claims that are otherwise directed to patent-ineligible
subject matter cannot be saved by arguing the absence of preemption.13
Here, preemption concerns are fully addressed and made moot, as the claims
are deemed to recite only patent ineligible subject matter under the two-step
Alice test.
Thus, we sustain the Examiner’s rejection of independent claims 27
and 34, and dependent claims 28—33 and 35—47, under 35 U.S.C. § 101.14
13 See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015). (“While preemption may signal patent ineligible matter, the
absence of complete preemption does not demonstrate patent eligibility”).
14 As for the dependent claims, they recite details of the informational
content of the data {e.g., dependent claims 28—33, 38-40, 42, and 43); the
receipt, manipulation, and/or transmission of additional data (e.g., dependent
claims 35, 36, 43, 44, 46, and 47), the display of data (e.g., dependent
claims 36, 37, 40, and 41), and/or a computer program for performing
routine data-handling operations (e.g., dependent claim 45). (See Appeal
Br., Claims App.) For the same reasons as discussed above in connection
with independent claim 27, these recitals are insufficient to elevate the status
of the claimed subject matter above an abstract idea; and these recitals are
insufficient to transform the claimed subject matter into a patent-eligible
application of an abstract idea.
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Rejection II
As indicated above, independent claims 27 and 34 recite the receipt of
a user request for a CPN. (Appeal Br., Claims App.) Independent claims 27
and 34 also recite that the user request includes purchase information, at
least a part of which “describes a future purchase of goods and/or services
that is not required for the financial transaction.” {Id., emphasis added.)
The Examiner finds that Franklin discloses a method of conducting
commerce in which a user requests a financial transaction number and a
financial transaction number is generated in response to this request. (See
Final Action 9—10.) The Examiner also finds that Franklin’s user request
includes purchase information describing a future purchase of goods that is
not required for the financial transaction. (See id. at 10.)
The Appellants argue that, insofar as Franklin may disclose a user
request for a financial transaction number, and insofar as this user request
includes purchase information, any so-included information is required for
the financial transaction. (See Appeal Br. 9.) We are persuaded by the
Appellants’ arguments because, as explained below, the Examiner’s findings
to the contrary are not sufficiently supported by the record.
In Franklin, “the customer decides to commence an online transaction
with the merchant, such as purchasing a product from the merchant.”
(Franklin, col. 8,11. 26—28.) The customer then requests a transaction
number from his or her bank. (See id., col. 8,11. 36-45, 57.) The bank’s
computing system receives the request and “create[s] a transaction number
to be used as proxy form the customer account number during the online
commerce transaction.” {Id., col. 8,11. 57, 63—65.) Franklin discloses that
“[f]or added security, the transaction number can be linked to transaction
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information to ensure the number is only used for one specific transaction.”
(Franklin, col. 9,11. 64—66.) To this end, Franklin’s system “may require
the customer to enter information pertaining to the purchase, like the
purchase price, the model or item number, the merchant name, and the like.”
{Id., col. 9,1. 67 — col. 10,1. 3, emphasis added.)
We agree with the Appellants’ sentiment that Franklin is, at best,
unclear as to whether the purchase information entered by the customer for
security purposes is required (or not required) for the financial transaction.
Franklin indicates that the bank’s computing system “examines any extra
transaction information” before an “authorization reply” is returned to the
merchant. (Franklin, col. 11,11. 19, 38—39.) As such, it is indeed plausible
that “contrary to the present claims, such [purchase] information is required
for the transaction to continue” in Franklin. (Appeal Br. 10.) And the
Examiner does not adequately address why it would have been obvious to
one of ordinary skill in the art to include unrequired purchase information in
Franklin’s user request for a transaction number. (See Answer 5—6.)
Thus, we do not sustain the Examiner’s rejection of independent
claims 27 and 34, and dependent claims 28—33 and 35—47, under
35U.S.C. § 103.15
15 The Examiner’s further findings with respect to the dependent claims {see
Final Action 12—19) do not compensate for the above-discussed deficiency
in the obviousness rejection of independent claim 27.
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DECISION
We AFFIRM the Examiner’s rejection of claims 27-47 under
35 U.S.C. § 101.
We REVERSE the Examiner’s rejection of claims 27-47 under
35 U.S.C. § 103.
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
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