Ex Parte Hammad

Patent Trials and Appeals BoardMar 29, 2019

13038268 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/038,268 03/01/2011 Ayman Hammad 66945 7590 04/02/2019 KILPATRICK TOWNSEND & STOCKTONLLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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. 79900-791225 8488 EXAMINER LIU, CHIA-YI ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte A YMAN HAMMAD Appeal2017-010399 Application 13/03 8,268 Technology Center 3600 Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 3---6, 8-11, 13-16, and 21-32, which are all of the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 According to Appellant, the real party in interest is Visa International Service Association. App. Br. 2. 2 Claims 2, 7, 12, and 17-20 have been canceled. Final Act. 2. Appeal2017-010399 Application 13/03 8,268 INVENTION Appellant's invention relates to including customized linkage rules in payment transactions. Abstract. Claim 1 is illustrative and reads as follows: 1. A system comprising: a computer readable storage medium; and a processor coupled to the computer readable storage medium, wherein the processor is configured to execute program code stored on the computer readable storage medium to implement a method comprising: linking, using a linkage rule, ( 1) a verification token device, (2) a user communication device, and (3) a payment account of a portable consumer device; receiving an authentication request message for a payment transaction on the payment account, the authentication request message received from the user communication device, the authentication request message comprising (1) a verification token identifier that identifies the verification token device used to conduct a payment transaction, (2) a user communication device identifier that identifies the user communication device used to conduct the payment transaction, and (3) an account identifier that identifies the payment account for conducting the payment transaction, wherein the verification token device receives the account identifier from the portable consumer device; identifying the linkage rule based on the account identifier included in the authentication request message; authenticating the payment transaction using the identified linkage rule by verifying that the verification token identifier that identifies the verification token device used to conduct the payment transaction and the user communication device identifier that identifies the user communication device used to conduct the payment transaction included in the authentication request message respectively identify the verification token device and the user communication device specified in the linkage rule; 2 Appeal2017-010399 Application 13/03 8,268 in response to the authenticating of the payment transaction using the identified linkage rule, generating a dynamic verification value based at least in part on the account identifier; providing the dynamic verification value to either ( 1) the verification token device used to conduct the payment transaction or (2) the user communication device used to conduct the payment transaction, wherein either the verification token device or the user communication device provides the dynamic verification value to a merchant server to conduct the payment transaction on the payment account; and receiving an authorization request message from the merchant server, the authorization request message comprising the dynamic verification value; and sending an authorization response message indicating whether the payment transaction is approved or declined based on verification of the dynamic verification value. REJECTION Claims 1, 3-6, 8-11, 13-16, and 21-32 stand rejected under 35 U.S.C. Â§ 101 as they are directed to an abstract idea without significantly more. Final Act. 2--4. ANALYSIS An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Alice Corp. v. CLS Bank Int 'l, 573 3 Appeal2017-010399 Application 13/03 8,268 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 218-19 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also 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."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding ... rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection 4 Appeal2017-010399 Application 13/03 8,268 of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 (internal quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of Â§ 101. USPTO's January 7, 2019 Memorandum, 84 Fed. Reg. 50, 2019 Revised Patent Subject Matter Eligibility Guidance ("2019 Guidance"). Under that guidance, we first look to whether the claim recites: ( 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 ("Prong Two") (see MPEP Â§ 2106.05(a}-(c), (e}- (h)) (9th ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that 5 Appeal2017-010399 Application 13/03 8,268 exception into a practical application, do we 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 2019 Guidance. Step 2A - Prong 1: Judicial Exception Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One we evaluate whether the claim recites a judicial exception. As set forth in the 2019 Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include ( 1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes. Among those certain methods of organizing human activity listed in the 2019 Guidance are fundamental economic practices, such as the concept of mitigating risk in Alice, and the concept of hedging in Bilski. Here, claim 1 recites operations that would ordinarily take place when authorizing financial transactions: linking, using a linkage rule, (1) a verification token device, (2) a user communication device, and (3) a payment account of a portable consumer device; receiving an authentication request message for a payment transaction on the payment account, ... the authentication request message comprising ( 1) a verification token identifier that identifies the verification token device used to conduct a payment transaction, (2) a user communication device identifier that identifies the user communication device used to conduct the payment transaction, and (3) an account identifier that identifies the payment account for conducting the payment transaction, wherein the verification token device 6 Appeal2017-010399 Application 13/03 8,268 receives the account identifier from the portable consumer device; identifying the linkage rule based on the account identifier included in the authentication request message; authenticating the payment transaction using the identified linkage rule by verifying that the verification token identifier that identifies the verification token device used to conduct the payment transaction and the user communication device identifier that identifies the user communication device used to conduct the payment transaction included in the authentication request message respectively identify the verification token device and the user communication device specified in the linkage rule; in response to the authenticating of the payment transaction using the identified linkage rule, generating a dynamic verification value based at least in part on the account identifier; receiving an authorization request message ... , the authorization request message comprising the dynamic verification value; and sending an authorization response message indicating whether the payment transaction is approved or declined based on verification of the dynamic verification value. These limitations, under their broadest reasonable interpretation, recite authorizing a financial transaction because the limitations all recite operations that would ordinarily take place in authorizing a financial transaction. For example, when authorizing a financial transaction, it is desirable to verify that the transaction originates from an authorized source. See Spec. ,r 29. To provide security for the electronic payment transaction being authorized, "receiving an authentication request message for a payment transaction on the payment account" that includes data such as that recited in the claim: 7 Appeal2017-010399 Application 13/03 8,268 (1) a verification token identifier that identifies the verification token device used to conduct a payment transaction, (2) a user communication device identifier that identifies the user communication device used to conduct the payment transaction, and (3) an account identifier that identifies the payment account for conducting the payment transaction, wherein the verification token device receives the account identifier from the portable consumer device would take place whenever one is authorizing a payment transaction. Similarly, the limitation "identifying the linkage rule based on the account identifier included in the authentication request message" and the "authenticating," "generating," and "receiving" limitations would take place whenever one is authorizing a payment transaction. When authorizing a financial transaction, sending an authorization response message would take place, indicating whether the payment transaction is approved or declined ("sending an authorization response message indicating whether the payment transaction is approved or declined based on verification of the dynamic verification value"). Authorizing financial transactions in the manner recited by the claim is a fundamental economic practice, which is one of certain methods of organizing human activity, and thus an abstract idea under the 2019 Guidance. Step 2A - Prong 2 - Practical Application If a claim recites a judicial exception, in Prong Two we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and 8 Appeal2017-010399 Application 13/03 8,268 (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Here, claim 1 recites the additional elements of: "a computer readable storage medium" "a processor coupled to the computer readable storage medium, wherein the processor is configured to execute program code stored on the computer readable storage medium to implement a method'' "the authentication request message received from the user communication device" ''providing the dynamic verification value to either (1) the verification token device used to conduct the payment transaction or (2) the user communication device used to conduct the payment transaction, wherein either the verification token device or the user communication device provides the dynamic verification value to a merchant server to conduct the payment transaction on the payment account" "merchant server" Considering the claim as a whole, the ''providing" step applies or uses the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP Â§ 2106.0S(e). The ''providing" is "to either (1) the verification token device used to conduct the payment transaction or (2) the user communication device used to conduct the payment transaction, wherein either the verification token device or the user communication device provides the dynamic verification value to a merchant server to conduct the payment transaction on the payment account." Here, the device to which the dynamic verification value is provided further provides it to a merchant 9 Appeal2017-010399 Application 13/03 8,268 server to conduct the payment transaction on the payment account. Thus, the limitation imposes meaningful limits on the claim such that it is more than nominally or tangentially related to the invention. The limitation amounts to more than insignificant extra-solution activity or generally linking the use of the abstract idea to a particular technological environment. Thus, the abstract idea in claim 1 is integrated into a practical application. Claims 11 recites a similar "providing" step, which applies or uses the abstract idea in a meaningful way. Because claims 1 and 11 integrate the recited judicial exception into a practical application, they are not "directed to" a judicial exception and, therefore, our inquiry ends. For these reasons, under the 2019 Guidance, we reverse the Examiner's Â§ 101 rejection of independent claims 1 and 11. We also reverse the Examiner'sÂ§ 101 rejection of dependent claims 3-6, 8-10, 13-16, and 21-32, which stand or fall with the independent claims from which they depend. DECISION We reverse the Examiner's decision rejecting claims 1, 3---6, 8-11, 13-16, and 21-32. REVERSED 10