Ex Parte Killian et al

Patent Trial and Appeal Board

Mar 15, 2018

13777487 (P.T.A.B. Mar. 15, 2018)

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.
13/777,487 02/26/2013 Patrick Killian P00438-US-CONT 7053
(M01.092C)
125619 7590 03/19/2018
MasterCard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
martin @ bmtpatent. com
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK KILLIAN, SANDEEP MALHOTRA,
ANDREW D. CAMPBELL, SHOON PING WONG,
and DANA LORBERG
Appeal 2016-003706
Application 13/777,487
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Patrick Killian, Sandeep Malhotra, Andrew D. Campbell, Shoon Ping
Wong, and Dana Lorberg (Appellants)2 seek review under 35 U.S.C. § 134
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 24, 2015) and Reply Brief (“Reply Br.,” filed February
22, 2016), and the Examiner’s Answer (“Ans.,” mailed December 24, 2015),
and Final Action (“Final Act.,” mailed April 1, 2015).
2 Appellants identify the Applicant, Mastercard International Incorporated,
as the real party in interest. App. Br. 2.
Appeal 2016-003706
Application 13/777,487
of a Final Rejection of claims 1—20, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of implementing a payment system on
the basis of a payment card system. Specification 1:7—9.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] receiving, by a wireless communications terminal of a
merchant device,
an input from a customer mobile device
concerning a financial transaction;
[2] selecting, by the merchant device,
a payment transaction mode of operation
when the input from the customer mobile device is
a request for a payment card system payment transaction,
and further comprising:
[3] providing, by the merchant device,
transaction data comprising
an amount due
and
a merchant identifier to the customer
mobile device
for requesting a payment card system transaction;
[4] receiving, by the merchant device,
a confirmation
from a merchant financial institution
of the payment card system
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that a funds transfer to a payment card account of
the merchant has been accomplished;
and
[5] accepting, by the merchant device,
the confirmation as payment by a customer
to complete the financial transaction;
and
[6] selecting, by the merchant device,
a payment card purchase transaction mode of
operation
when the input from the customer mobile device is
a payment card account number,
and further comprising:
[7] transmitting, by the merchant device,
a payment card authorization request
including the payment card account number to an
acquirer financial institution;
and
[8] receiving a payment card authorization response
from the acquirer financial institution; and
[9] completing, by the merchant device, the financial
transaction.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
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ANALYSIS
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent—eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent—ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] consider 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. [The Court] described step two of this
analysis 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent—ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in completing a financial transaction. The
Specification at 1:7—9 recites that the invention relates to implementing a
payment system on the basis of a payment card system. Thus, all this
evidence shows that claim 1 is directed to payment processing, i.e. financial
payment.
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It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
financial payment is a fundamental business practice long prevalent in our
system of commerce. The use of financial payment is also a building block
of any market economy. Thus, financial payment, like hedging, is an
“abstract idea” beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of financial
payment at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp, LLC. 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 TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non—abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
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As such, claim 1 is directed to the abstract idea of collecting, analyzing, and
transmitting data.
The remaining claims merely describe generic equipment and generic
instructions. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent—ineligible abstract idea into a patent—eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, select, provide, accept, and transmit data amounts to
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electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well—understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of financial payment as performed by a generic
computer. To be sure, the claims recite doing so by advising one to select a
payment channel and possibly send data to a wireless device and rely on
some confirmation in the process that otherwise is conventional payment
processing. But this is no more than abstract conceptual advice on the
parameters for such financial payment and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of financial payment under different scenarios. It does
not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of financial payment using
some unspecified, generic computer. Under our precedents, that is not
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enough to transform an abstract idea into a patent—eligible invention. See
Alice Corp. Pty. Ltd. at 2360. There is no particular invention in the
ordering of the combination, either. Simply selecting a payment
communication channel as claim 1 does is a generic variation on
conventional payment process selection, such as among payment types and
service providers.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants' argument that the Examiner fails to
present a prima facie case. App. Br. 10—11. The Examiner finds that the
claims are directed to the concept of completing a financial transaction using
dual modes. Final Act. 3. As we find supra, the intrinsic evidence supports
this finding. The Examiner then finds the limitations are merely instructions
to implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry. Id. Again, the intrinsic evidence, indeed the claims themselves,
support this finding, as we find supra. All of the steps are conventional data
processing steps. Thus, the Examiner has laid out a prima facie case
according to the Alice test.
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We are not persuaded by Appellants' argument that the claims recite
significantly more than an abstract concept. App. Br. 12—14. The Examiner
finds the claims directed to the concept of completing a financial transaction
using dual modes. Final Act. 3. Appellants recite various claim limitations
and then allege each is significantly more with no reason for why this would
be so. The only added step Appellants point to is the step of selecting a
payment mode. But selection per se is itself an abstract concept. “Adding
one abstract idea ... to another abstract idea . . . does not render the claim
nonabstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(2017)
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated
the eligibility of claims “address[ing] 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 advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were
patent eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715—16) (Fed. Cir. 2014). As noted there, the
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Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at
714). Nevertheless, those claims were patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement, ’ along with ‘routine additional steps 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.’” Id. at 715-16.
Appellants’ asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellants’ asserted claims recite
collecting, analyzing, and transmitting data. This is precisely the type of
Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that the claims as a
series of ordered steps recite eligible subject matter. App. Br. 14—16. As we
find supra, the only ordering that is added to conventional payment
processing is selecting a mode of communicating data. In either branch of
selection, the data communication is generic and conventional. Beyond that,
what happens in each branch is equivalent processing, as in each branch the
claims recite sending and receiving data, rendering the fact that there is a
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branch per se of little weight. Whether the data differs in each branch is of
no patentable weight, as the nature of the data is perceptible only to the
human mind. In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). But the
data in each branch is actually equivalent even to the human mind, as each
branch transmits transaction data and receives payment notification. The
claims do not recite what processing occurs between that transmission and
reception, so any difference is outside the scope of the claims. It is this
difference that Appellants argue.
We are not persuaded by Appellants' argument that the claims do not
preempt the field of use. App. Br. 16. “Where a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo [/Alice]
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” fAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
CONCLUSIONS OF LAW
The rejection of claims 1—20 under 35 U.S.C. § 101 as directed to
non—statutory subject matter is proper.
DECISION
The rejection of claims 1—20 is affirmed.
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)(iv) (2011).
AFFIRMED
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