Ex Parte Kemper et al

Patent Trial and Appeal Board

Nov 9, 2018

12129217 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/129,217 05/29/2008 Lynn Kemper
66945 7590 11/14/2018
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.
80083-750365(009412US) 1706
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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 LYNN KEMPER, AKSHEY SHAWN VIJ, and
ROBIN O'CONNELL
Appeal2017-004339
Application 12/129,217
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 34--43, 45, and 47-57. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
BACKGROUND
Appellants' invention is directed to a system for personal
authorization control for card transactions. Spec. 1
Claim 34 is illustrative:
34. A method comprising:
Appeal2017-004339
Application 12/129,217
receiving at an interface, a cardholder selection of a
combination of notification parameters from a
cardholder, the notification parameters specifying
constraints that will cause notifications to be sent to the
cardholder when transaction details of the transactions
conducted by a card presenter match the constraints,
wherein the constraints specified by the notification
parameters are unrelated to authorization of the
transactions;
storing the cardholder selected notification
parameters in a parameter table database;
determining, with a subprocessor, that transaction
details of a transaction conducted by the card presenter
matches the constraints, the constraints being unrelated to
authorization of the transaction; and
sending a notification by the subprocessor to a
device associated with the cardholder when the
transaction details of the transaction conducted by the
card presenter match the constraints specified by the
notification parameters, the notification including
the transaction details of the transaction,
wherein the constraints are in a plurality of
constraints, and wherein the plurality of constraints are
displayed to the cardholder such that the cardholder is
capable of selecting arbitrary combinations of the
constraints.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Kumar
Dent
Wronski
Ahuja
Stevanovski
Sancho
US 2001/0032182 Al
US 2002/0026396 Al
US 2003/0101137 Al
US 2007/0174448 Al
US 7,653,597 Bl
US 7,885,899 Bl
2
Oct. 18, 2001
Feb.28,2002
May 29, 2003
July 26, 2007
Jan.26,2010
Feb. 8, 2011
Appeal2017-004339
Application 12/129,217
Appellant(s) appeal the following rejection(s):
Claims 34--43, 45, and 47-57 under 35 U.S.C. § 101 as the claimed
invention is directed to non-statutory subject matter.
Claims 34-37, 39--41, 45, 47--49, 52, and 55-57 are rejected under
35 U.S.C. § 103(a) as unpatentable over Stevanoski in view of Ahuja.
Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stevanovski in view of Ahuja and Dent.
Claim 42 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stevanovski in view of Ahuja and Sancho.
Claim 43 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stevanovski in view of Ahuja and Wronski.
Claims 50 and 51 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevanovski in view of Ahuja and Kumar.
PRINCIPLES OF LAW
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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
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claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594-595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594-95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69 (citation omitted).
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
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Application 12/129,217
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"); see also In re TL! Comma 'ns
LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016)
(determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
Rejection under 35 USC§ 101
The Examiner determines that the claims are directed to providing
rules governing the use of a financial transaction card which is a
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fundamental economic practice. Non-Final Act. 11. The Examiner also
determines that the claims are related to an idea of itself such as comparing
new and stored information and using rules to identify options. Non-Final
Act. 12.
We agree with the Examiner that the claims are directed to a
fundamental economic practice and are directed to the collection, analysis
and display of data, and thus are directed to an abstract idea on either basis.
The Examiner finds that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because processing notification parameters including displaying constraint
options does not include an improvement to another technology or technical
field, an improvement to the functioning of the computer itself or provide
meaningful limitations beyond generally linking the use of the abstract idea
to a particular technological environment. See id. at 13. The Examiner
further finds that the instant claims are done by a generically recited
computer/processor and a trading system. We agree.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner failed to establish a prima facie case
of ineligibility because the Examiner concludes that the claims are directed
to a judicial exception without any logic, reasoning or discussion of the
facts. See Non-Final Act. 11. Regarding step 1 of Alice, we conclude that
the Examiner's statement, which A .. ppellant acknowledges, is sufficient to
place Appellant on notice as to step 1 of ABce as required under 35 U.S.C. §
132. The Examiner makes a dear determination that the claims are directed
to the fundamental economic practice of providing rules governing the user
of a financial transaction card and to the collection, analysis and display of
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Application 12/129,217
data. Appellant demonstrates an understanding of the determination of the
Examiner by the arguments presented. For example, on page 8 of the Brief,
Appellants state that the Examiner seems to suggest that the present claims
are all about storing and comparing data. On the issue of prima fade notice,
particularly related to anticipation but also generally, our reviewing comi
was clear inJn re Jung, 637 F.3d 1356 (Fed. Cir. 2011):
There has never been a requirement for an examiner to make an
on-the-record claim construction of every term in every rejected
claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prirna facie
rejection.
637 F.3d at 1363. The Federal Circuit further stated:
"[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132
merely ensures that an applicant at least be infon11ed of the
broad statutory basis for the rejection of his claims, so that he
may determine what the issues are on which he can or should
produce evidence." Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, all that is required of the office to
meet its prima fade burden of production is to set forth the
statutory basis of the rejection and the reference or references
relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132. As the statute itself
instn1cts, the examiner must "notify the applicant," "stating the
reasons for such rejection," "together with such information and
references as mav be useful in 1·udging the proprietv of
J ... '--' ..;
continuing prosecution of his application." 35 U.S.C. § 132.
Id.
We conclude the Exarniner's discussion was more than sufficient to
meet this burden as to Alice step 1.
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\Ve are not persuaded of error on the part of the Examiner by
.Appellants' argument that the claims are not similar to the abstract idea in
()ibe,jone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx.
988, 992 (Fed. Cir. 2014) or Smartgene Inc. v. Advanced Biological
Laboratories, SA, 555 Fed. Appx. 950 (Fed. Cir. 2014). We agree with the
Examiner that the claims are similar to the claims in (~yhe1:fbne and
Srnartgene in that the claims are directed to the collection, analysis and
display of data. In this regard, clairn 34 recites that data regarding a
cardholder selected constraints is collected and stored, and that stored data is
analyzed to determine if transaction details match the selected constraints
and data is transmitted to the cardholder when the selection matches the
constraints.
Appellants argue that the claims recite an improvement to the
functioning of a computer similar to the claims in En:fzsh LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). In support of this argument,
the Appellants direct our attention to the steps of claim 34 with emphasis on
the language "plurality of constraints are displayed to the cardholder such
that the cardholder is capable of selecting arbitrary combinations of the
constraints." However, the Appellants do not explain how the functioning of
the cmnputer itself is improved. \Ve note that there is a fundamental
difference between computer functionality improvernents, on the one ham .. i;
and uses of existing computers as tools to perfonn a particular task, on the
other. Indeed, the Federal Circuit applied this distinction in Enjish in
rejecting a§ 101 challenge because the claims at issue focused on a specific
type of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
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storing and retrieving data, and not merely on asserted advances in uses to
which existing computer capabilities could be put E11fish, 822 F.3d at
1335-36.
\Ve are not persuaded that the problems addressed by the present
invention are rooted in computer technology similar to the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) as argued by Appellants. Appeal Brief 9, In DDR, the Court noted
that a claim may amount to more than any abstract idea recited in the clairns
when it addresses a business challenge, such as "retaining website visitorst
where that challenge is particular to a specific technological environment,
such as the Internet Appellants contend that the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of online computing. Appeal Brief 10. In
this regard, Appellants argue that using the instant invention, seemingly
arbitrary constraints can be used to determine the type of transaction alerts
that might be set to a user's communication device.
In DDJ( the court stated that '"the [] patent's claims address the
problem of retaining website visitors that if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an advertisernent
and activating a hyperlink" DDR Holdings, 773 F.3d at 1257. This was
done in the DDR claims by serving a composite page with content based on
the link that was activated to serve the page.
In contrast, claim 34 perfonns a process that allows a cardholder to
select which constraints will necessitate a notification to the cardholder,
storing the notification constraints, and sending a notification when
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transaction details match the selected constraints. \Ve are unpersuaded that
using a processer to collect data (chosen constraints), match the stored data
with transaction data, and transmit data in the form of a notification does not
provide a technical solution to a technical problem. Rather, the problem
addressed by the present invention is to prevent authorization of transactions
in the case of a stolen card. Spec. 14. \Ne are unpersuaded that the
prevention of the use of a stolen card may be assisted by the use of a
computer is not pertinent to determining whether the claim itself provides a
technical solution to a technical problem. And, unlike the situation in DDR
Holdings, we find no indication in the record, nor do Appellants point us to
any indication, that the cardholder interface, subprocessor, or database
elements are used other than in their normal, expected, and routine manner,
e.g., for receiving, analyzing and displaying data.
We also are not persuaded by Appellants' argument that the present
claims should have been analyzed using the streamlined analysis. A .. ppeal
Br. 11. The Appellants direct our attention to the Office's "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec.
16, 2014). However, this guidance states that the streamlined analysis is an
optional tool that an examiner may use at his or her discretion. The
Guidance; thus, instructs that "[f]or purposes of efficiency in examination, a
streamlined eligibility analysis can be used." See Interim Guidance, 79 Fed.
Reg. at 74625 (emphasis added). The Guidance also instn1cts that "if there
is doubt as to whether the applicant is effectively seeking coverage for a
judicial exception itself, the full analysis should be conducted to determine
whether the claim recites significantly more than the judicial exception." Id.
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( emphasis added). The Examiner's decision here to perform a full § 1 01
analysis was, in our view, a proper exercise of the Examiner's discretion.
Appellants argue that certain features of the claim are significantly
more than any abstract idea, because they are directed to an inventive
concept that defines over the prior art. Appeal Brief 13. Appellants directed
our attention to the receiving step, where the constraints are displayed to the
cardholder, and argue that this feature is not part of an abstract idea. We do
not agree. The receipt of data in the form of cardholder selection, and the
display of a plurality of constraints to the cardholder for selection, is the
collection and display of data which is clearly part of the abstract idea
identified by the Examiner.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner did not identify the limitations
beyond the judicial exception, and analyze each such limitations individually
or in combination to determine if they amount to significantly more than the
alleged exception. Appeal Brief 13. The Examiner does indeed recognize
that the recitation of a subprocessor, a database and a device associated with
the cardholder are not part of the abstract idea of the collection, analysis and
display of data. However, the Examiner found that these elements of claim
34 are but generically recited computer/processor elements that are no more
than a generic computer which performs generic computer functions. Non-
Final Act. 14.
Appellants argue that the recitations in claim 34 are not what are well-
understood, routine and conventional in the field because the limitations in
the claim are not in the prior art. App. Brief 13. Appellants' argument does
not apprise us of error because Appellants conflate the conventionality of the
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steps being performed by a processor and the conventionality of the
computer functions required to implement the steps. Appellants have not
demonstrated that the computer functions of collection, analysis and display
of data are any more than the functions that are performed by all generic
computer.
To the extent Appellants maintain that the limitations of claim 1
necessarily amount to "significantly rnore" than an abstract idea because the
claimed apparatus is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent A hhough the second step in the
Alicellvlayo frarnework is tenned a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "'an element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly rnore than a patent
upon the [ineligible concept] itself"' Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
In view of the foregoing, we will sustain this rejection as it is directed to
claim 34. We will also sustain this rejection as it is directed to the remaining
claims subject to this rejection because Appellants have not argued the
separate eligibility of these claims.
Prior Art Reiections
We will not sustain this rejection because we agree with Appellants that
the prior art does not disclose receiving cardholder selection of notification
parameters specifying constraints that will cause notification, where the
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constraints are displayed to the cardholder such that the cardholder is
capable of selecting arbitrary combinations of constraints. Appeal Brief 20.
The Examiner relies on Stevanovski for teaching that a customer sets
purchase parameters at column 2, lines 1-5, and for teaching notification to
a customer electronically of any account activity at column 4, lines 39-64.
Non-Final Act. 18. These portions of Stevenovski teach that the customer
can select purchase parameters and can be notified of account activity.
Stevenovski also discloses that the customer can select how the notification
is sent. We agree with the Appellants, and find that these portions of
Stebenobski are not a teaching of receiving cardholder selection of
notification parameters specifying constraints that will cause notification,
where the constraints are displayed to the cardholder such that the
cardholder is capable of selecting arbitrary combinations of constraints.
Alternatively, the Examiner relies on Ahuja for teaching this subject
matter. We find that Ahuja discloses that the cardholder can select the time
and mode of notification. ,r 48. However, we agree with the Appellants that
this is not a teaching that a cardholder can select an arbitrary combination of
constraints from a plurality of constraints that are displayed to the
cardholder, and that the notification is sent when the transaction details
match those arbitrarily selected constraints.
In view of the foregoing, we will not sustain the rejection of claim 34 as
being unpatentable over Stevanovski and Ahuja. We will also not sustain
this rejection directed to the remaining claims subject to this rejection for the
same reason.
We will also not sustain the remaining prior art rejections because the
Examiner relies on Stevanovski and Ahuja for teaching the subject matter
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we have found lacking in the portion of each reference relied on by the
Examiner.
DECISION
We affirm the Examiner's§ 101 rejection.
We do not affirm the Examiner's§ 103 rejections.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l) (2009).
ORDER
AFFIRMED
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