Ex Parte HOWE

Patent Trial and Appeal BoardFeb 25, 2019

14519737 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/519,737 10/21/2014 125578 7590 02/27/2019 MASTERCARD C/0 Buchanan Ingersoll & Rooney PC P.O. Box 1404 Alexandria, VA 22314 FIRST NAMED INVENTOR Justin X. HOWE 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. 0076412-000321 5256 EXAMINER ZARE, SCOTT A ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 02/27/2019 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): ADIPDOC 1@BIPC.com charles. wieland@bipc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUSTIN X. HOWE Appeal2017-006104 Application 14/519,737 Technology Center 3600 Before: CARL W. WHITEHEAD JR., BETH Z. SHAW, and JOSEPH P. LENTIVECH, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-006104 Application 14/519, 737 Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 24. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to identifying merchant descriptors for declined transactions. Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for identifying merchant descriptors for a declined transaction, comprising: storing, in an authorization database, a plurality of authorization requests, wherein each authorization request corresponds to an approved payment transaction and includes at least one merchant descriptors and transaction data: storing, in a clearing database, a plurality of clearing records, wherein each clearing record corresponds to a cleared payment transaction and includes at least two merchant descriptors and transaction data; receiving, by a receiving device, a declined authorization request corresponding to a declined payment transaction, wherein the declined authorization request includes at least one merchant descriptor; identifying, in the authorization database, an authorization request related to the at least one merchant descriptor where at least one of the included at least one merchant descriptors corresponds to the at least one merchant descriptor included in the received declined authorization request; identifying, in the clearing database, a specific clearing record that corresponds to the identified related authorization request based on a correspondence between the transaction data included in the specific clearing record and the transaction data included in the identified related authorization request; and transmitting, by a transmitting device, the declined authorization request and the at least two merchant descriptors included in the identified specific clearing record. App. Br. 22-23 (Claims Appendix). 2 Appeal2017-006104 Application 14/519, 737 REJECTION The Examiner rejected claims 1-24 under 35 U.S.C. Â§ 101. CONTENTIONS AND ANALYSIS Appellant argues the pending claims as a group. As permitted by 37 C.F.R. Â§ 41.37, we decide the appeal based on claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Section 101 of the Patent Act provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' is patent eligible. 35 U.S.C. Â§ 101. But the Supreme Court has long recognized an implicit exception to this section: "Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is "directed to one of those patent-ineligible concepts." Alice, 573 U.S. at 217. Ifso, we then examine "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an "inventive concept," "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 3 Appeal2017-006104 Application 14/519, 737 concept] itself."' Alice, 573 U.S. at 217-18 ( alteration in original) ( quoting Mayo, 566 U.S. at 72-73). The Patent Office recently issued guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Eligibility Guidance"). Under the guidance, to decide whether a claim is "directed to" an abstract idea, we evaluate whether the claim (1) recites an abstract idea grouping listed in the guidance and (2) fails to integrate the recited abstract idea into a practical application. See 2019 Eligibility Guidance 84 Fed. Reg. at 51. If the claim is "directed to" an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The guidance explains that when making this determination, we should consider whether the additional claim elements add "a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field" or "simply append[] well-understood, routine, conventional activities previously known to the industry." 2019 Eligibility Guidance 84 Fed. Reg. at 56. With these principles in mind, we tum to the Examiner's Â§ 101 rejection. Abstract Idea The Examiner determines the claims are directed to a "method of associating authorization requests with approved authorization requests based on common merchant descriptors and updating a record of the denied authorization request with additional merchant descriptors from a more detailed clearing record related to the approved authorization request," explaining that this was an abstract idea because it is merely "an idea of itself because conceptually, the claims are directed to mining a transaction 4 Appeal2017-006104 Application 14/519, 737 record database to augment an incomplete transaction record of a given merchant with information from [a] complete transaction record of the same merchant," and alternately, a fundamental economic practice, "because it relates to storing, searching, matching, and updating records of commercial transactions." Ans. 5; Final Act. 3--4. We agree with the Examiner that claim 1 is directed to an abstract idea because the claim recites a method of organizing human activity, a fundamental economic practice, one of the abstract idea groupings listed in the 2019 Eligibility Guidance. See 2019 Eligibility Guidance 84 Fed. Reg. at 52, 53 (listing "Certain methods of organizing human activity-fundamental economic principles or practices" as one of the "enumerated groupings of abstract ideas"). Claim 1 recites a method for "identifying merchant descriptors for a declined transaction." App. Br. 22 (Claims App'x.). The system receives a declined authorization request, identifies merchant descriptors for the declined transaction, and identifies a clearing record that corresponds to the authorization request. Spec. ,r 1; Claims App 'x. Claim 1 is thus similar to claims that courts have concluded recite a fundamental economic practice. See, e.g., Bilski v. Kappas, 561 U.S. 593, 611 (2010) (determining that hedging risk is a "fundamental economic practice long prevalent in our system of commerce"); Alice, 573 U.S. at 219--20 ( determining that intermediated settlement is a fundamental economic practice); see also 2019 Eligibility Guidance 84 Fed. Reg. at 52 n.13. Accordingly, claim 1 is directed to a fundamental economic practice. The remaining elements recited in claim 1 do not integrate the abstract idea into a practical application. In addition to the steps discussed above, 5 Appeal2017-006104 Application 14/519, 737 claim 1 recites storing requests in an "an authorization database," storing records in "a clearing database," and transmitting information (i.e., the declined authorization request and two merchant descriptors in the identified specific clearing record) by a "transmitting device." The written description discloses that the recited databases and devices encompass generic components such as a general-purpose computer. See, e.g., Spec. ,r 74 ("a general purpose processor device."). Simply programming a general-purpose computer to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Eligibility Guidance 84 Fed. Reg. at 55 (identifying "merely includ[ing] instructions to implement an abstract idea on a computer" as an example of when an abstract idea has not been integrated into a practical application). Appellant's arguments do not persuade us claim 1 is "directed to" a patent-eligible concept. Inventive Concept Because we determine claim 1 is "directed to" an abstract idea, we consider whether claim 1 recites an "inventive concept." The Examiner determined claim 1 does not recite an inventive concept because the additional elements in the claim do not amount to "significantly more" than an abstract idea. See Final Act. 4, 5. We agree. The additional elements recited in the claim include "an authorization database," "a clearing database," and a "transmitting device." The claim recites these elements at a high level of generality, and the written description indicates that these elements are generic computer components. See, e.g., Spec. ,r 74. Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See Alice, 6 Appeal2017-006104 Application 14/519, 737 573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). Thus, these elements, taken individually or together, do not amount to "significantly more" than the abstract ideas themselves. Appellant contends various elements recited in the claim provide the necessary "inventive concept." See App. Br. 18-20. For example, Appellant contends "the present claims improve upon existing technologies by providing a technical solution to identify suspicious merchants according to declined authorization requests." Id. at 19. But these elements form part of the recited abstract idea and thus are not "additional elements" that "'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also 2019 Eligibility Guidance 84 Fed. Reg. at 55 n.24 ("USPTO guidance uses the term 'additional elements' to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identifiedjudicial exception." (emphasis added)). DECISION For the above reasons, the Examiner's rejection of claims 1-24 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 )(iv) (2009). AFFIRMED 7