Ex Parte Persaud et al

Patent Trial and Appeal Board

Aug 21, 2018

13487033 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/487,033 06/01/2012 Omesh A. Persaud
66945 7590 08/23/2018
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.
79900-840712(096200USNP) 7713
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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 OMESH A. PERSAUD, LORI D. VAN DeLOO, CHRIS J.
TRUELSON, and ZACK FUERSTENBERG
Appeal2017-006836
Application 13/487,033 1
Technology Center 3600
Before HUNG H. BUI, AMBER HAGY, KARA SZPONDOWSKI,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3-5, 7-11, 13-15, 17-20, and 29-
33, which are all the claims pending in the application. Claims 2, 6, 12, 16,
and 21-28 are canceled. Claims App 'x. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Visa International
Service Association. App Br. 3.
2 Our Decision refers to Appellants' Appeal Brief filed March 15, 2016
("Appeal Br."); Reply Brief filed March 20, 2017 ("Reply Br."); Examiner's
Answer mailed January 19, 2017 ("Ans."); Final Office Action mailed
October 16, 2015 ("Final Act."); and original Specification filed June 1,
2012 ("Spec.").
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Application 13/487,033
STATEMENT OF THE CASE
Appellants' invention relates to "systems and methods for creating
and terminating links between a first payment device of a primary user and a
second payment device of a secondary user" and further relates to
"processing transactions involving the secondary payment device where
clearing and settlement for the transactions is conducted against the account
of the first payment device." Spec. ,r 11; see also Abstract.
Claims 1 and 11 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A method comprising:
receiving, by a processor computer from a client
computer, configuration data for establishing a link between a
first account of a primary user and a second account of a
secondary user, the configuration data further including an
amount of an account limit of the first account to allocate to the
second account for use by the second account in transactions;
generating, by the processor computer, a first
authorization request message to establish a first pre-
authorization hold on the first account for a first pre-
authorization amount equal to the amount;
sending, by the processor computer to an authorizing
computer associated with the first account, the first authorization
request message, wherein the authorizing computer establishes
the pre-authorization hold on the first account for the first pre-
authorization amount, and wherein the authorizing computer
establishes an open-to-buy balance for the second account equal
to the first pre-authorization amount;
receiving, by the processor computer from a merchant
computer, a second authorization request message, wherein the
second authorization request message requests authorization to
conduct a transaction for a transaction amount using the second
account of the secondary user, wherein the transaction 1s
conducted between the secondary user and a payee;
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sending, by the processor computer to the authorizing
computer associated with the second account, the second
authorization request message;
receiving, by the processor computer from the authorizing
computer associated with the second account, a second
authorization response message indicating the transaction is
authorized against the second account;
modifying, by the processor computer, the open-to-buy
balance of the second account by the transaction amount;
receiving, by the processor computer from the merchant
computer, a settlement file comprising transaction details for the
transaction, including a second account identifier associated with
the second account;
retrieving, by the processor computer from a database, a
first account identifier associated with the first account linked to
the second account identifier associated with the second account;
modifying, by the processor computer, the settlement file
to include the first account identifier and a tag identifier
indicating the link between the first account and the second
account; and
initiating, by the processor computer, a transfer of funds
for the transaction amount from the first account of the primary
user to the payee based on the transaction details for the
transaction in the received modified settlement file.
Claims App 'x 2-3.
EXAMINER'S REJECTION
Claims 1, 3-5, 7-11, 13-15, 17-20, and 29-33 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to patent-
ineligible subject matter (abstract idea). Final Act. 2-3.
DISCUSSION
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
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forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "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. ( citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1, 3-5, 7-11, 13-15, 17-20, and 29-33 under 35
U.S.C. § 101, the Examiner determines: (1) these claims are directed to an
abstract idea of "establishing and terminating a linked relationship between
transactions accounts," i.e., "between a primary account of a primary user
and a secondary account of a secondary user," which is a fundamental
economic practice; and (2) the additional elements in the claims 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
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well-understood, routine, and conventional activities previously known to
the industry." Final Act. 2-3.
At the outset, Appellants argue the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because the
Examiner fails to provide "evidence to establish that 'establishing and
terminating a linked relationship between a primary account of a primary
user and a secondary account of a secondary user' is a 'fundamental
economic practice' and/or an 'abstract idea."' App. Br. 16; Reply Br. 2-3.
However, this argument is not persuasive because (1) patent eligibility under
35 U.S.C. § 101 is a question of law that is reviewable de nova (see
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)); and
(2) we are aware of no controlling authority that requires the Office to
provide factual evidence to support a determination that a claim is directed
to an abstract idea. 3 Instead, the Federal Circuit has repeatedly noted that
"the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The court has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
3 Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018), holds that
the question of whether certain claim limitations represent well-understood,
routine, conventional activity under Alice step 2 may raise a disputed factual
issue. That question, however, is not at issue in this case. As in Berkheimer,
in determining that the claims are directed to an abstract idea, the Examiner
compared the claims to claims held to be abstract in prior judicial
decisions. Compare Ans. 2 with Berkheimer, 881 F.3d at 1366-67.
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rejection, "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the]
application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all
that is required of the Office is that it set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. Id., see also Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when [the]
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.").
Appellants do not contend that the Examiner's rejection under 35
U.S.C. § 101 cannot be understood or that the Examiner's rejection,
otherwise, fails to satisfy the notice requirements of 35 U.S.C. § 132.
Indeed, Appellants' understanding of the rejection is clearly manifested by
their response as set forth in the briefs.
Moreover, there is no single definition of an "abstract idea." As the
Federal Circuit succinctly put it:
The problem with articulating a single, universal definition of
'abstract idea' is that it is difficult to fashion a workable
definition to be applied to as-yet-unknown cases with as-yet-
unknown inventions.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). Because there is no single definition of an abstract idea, the
Federal Circuit has required us "to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs, 841 F.3d at 1288 (citing Elec.
Power Grp., v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016);
accord USPTO Memorandum, July 2015 Update: Subject Matter Eligibility
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(July 30, 2015), https://www.uspto.gov/sites/default/files/docmnents/ieg-
july-2015-update.pdf (instructing Examiners that "a claimed concept is not
identified as an abstract idea unless it is similar to at least one concept that
the courts have identified as an abstract idea"). In this case, the Examiner
did what was required under the USPTO Memorandum, and characterized
the claims as required under Alice.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue "the
claims are not directed to an abstract idea" because, similar to DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),
"the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks." App. Br. 17-19. According to Appellants,
[the] the claims are not directed to "establishing and terminating
a linked relationship between a primary account of a primary user
and a secondary account of a secondary user," as asserted by the
Examiner, but address a challenge that is specific to computing
environments, particularly to the efficient processing of
transactions involving linked accounts.
App. Br. 18.
Appellants' arguments are not persuasive. Appellants' Specification
is directed to "creating and terminating links between a first payment device
of a primary user and a second payment device of a secondary user" and
then "processing transactions involving the secondary payment device where
clearing and settlement for the transactions is conducted against the account
of the first payment device." Spec. ,r 11; see also Abstract. Embodiments of
Appellants' Specification, shown in Figure 5, describe a process of creating
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a link between a primary account and a secondary account and setting the
secondary account for payment transactions, as reproduced below with
additional markings for illustration:
Appellants' Figure 5 shows creating a link between a primary account
and a secondary account and setting the secondary account for payment
transactions.
Creating and terminating links between a first payment device of a
primary user and a second payment device of a secondary user for
"processing transactions involving the secondary payment device where
clearing and settlement for the transactions is conducted against the account
of the first payment device" is a fundamental business practice, like: ( 1) risk
hedging in Bilski; (2) intermediated settlement in Alice, 134 S. Ct. at 2356-
57; (3) verifying credit card transactions in CyberSource, 654 F.3d at 1370;
(4) guaranteeing transactions in buySAFE, Inc., 765 F.3d at 1354; (5)
distributing products over the Internet in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014); (6) determining a price of a product offered
to a purchasing organization in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for sale in OIP Techs.,
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Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Processing
transactions involving the secondary payment device where clearing and
settlement for the transactions is conducted against the account of the first
payment device is also a building block of a market economy. Thus,
creating links between transaction accounts and processing transactions
involving such accounts, like risk hedging, intermediated settlement, and
verifying credit card transactions, is an "abstract idea" beyond the scope of
35 U.S.C. § 101. See Alice, 134 S. Ct. at 2356.
Lastly, with respect to Appellants' argument that the claims are
necessarily rooted in computer technology, we disagree. Appellants' claims
1 and 11 do not improve the performance of a computer or solve a problem
specific to computers or computer networks. Nowhere in Appellants'
Specification is there any description that creating the link between
transaction accounts would improve any computer technology or address
any "problem specifically arising in the realm of computer networks" similar
to DDR, as Appellants argue. App. Br. 17-18. As correctly recognized by
the Examiner, the claims only use a conventional, general purpose computer
as a tool to perform generic computer functions, i.e. "creating a link between
transaction accounts." Ans. 5.
Accordingly, we agree with the Examiner that claims 1, 3-5, 7-11,
13-15, 17-20, and 29-33 are directed to an abstract idea of "establishing
and terminating a linked relationship between [transactions] accounts,"
which is a fundamental economic practice. Final Act. 2.
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Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claims
recite "significantly more" than the abstract idea because:
(1) "[T]he claimed method provides an improvement in the
technical field of processing electronic transactions by providing
a novel method of efficiently performing an authorization
process and a settlement process for a transaction involving a
second account using funds associated with a first account"; and
(2) "[A]s evidenced the withdrawal of the obviousness
rejections under 35 U.S.C. § 103, the claims recite novel and
non-obvious limitations."
App. Br. 19--23.
Appellants' arguments are not persuasive. At the outset, we note that
(1) "the concept of inventiveness is distinct from that of novelty" and
(2) "[ t ]he inventiveness inquiry of§ 101 should therefore not be confused
with the separate novelty inquiry of§ 102 or the obviousness inquiry of
§ 103." Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288, 1311
(Fed. Cir. 2016). We may even assume that the techniques claimed are
"[g]roundbreaking, innovative, or even brilliant," but that is not enough for
eligibility. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that
claimed techniques be novel and nonobvious in light of prior art, passing
muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89--90 (2012); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating§ 102 novelty."); Intellectual
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Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(same for obviousness) (Symantec). The claims here are ineligible because
their innovation is an innovation in ineligible subject matter. Their subject is
nothing but updating electronic data records in a database. An advance of
that nature is ineligible for patenting.
According to the Supreme Court in Alice, the second step is to "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, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 72-73). Under current Federal Circuit
precedent, an "inventive concept" under Alice step 2 can be established by
showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016); or
(3) "entail[] an unconventional solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
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In this case, however, we find no element or combination of elements
recited in Appellants' claims 1 and 11 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept (i.e.,
"establishing and terminating a linked relationship between transactions
accounts") into a patent-eligible application. Alice, 134 S. Ct. at 2357.
Instead, we agree with the Examiner that added computer elements such as a
client computer, authorizing computer, merchant computer, processor, and
memory cannot transform the abstract idea into a patent eligible invention.
As our reviewing court has observed, "after Alice, there can remain no
doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing
Alice, 134 S. Ct. at 2358)).
Because Appellants' claims 1 and 11 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1, 3-5, 7-11, 13-15, 17-20, and 29-33 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1, 3-5, 7-11, 13-15,
17-20, and 29-33 under 35 U.S.C. § 101.
DECISION
As such, we affirm the Examiner's rejection of claims 1, 3-5, 7-11,
13-15, 17-20, and 29-33 under 35 U.S.C. § 101.
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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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