Ex Parte Rogers et al

Patent Trials and Appeals BoardJun 28, 2019

11055028 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/055,028 02/09/2005 20350 7590 07/02/2019 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Suzanne Rogers 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. 87188-693653 (039610US) 4894 EXAMINER ZIEGLE, STEPHANIE M ART UNIT PAPER NUMBER 4134 NOTIFICATION DATE DELIVERY MODE 07/02/2019 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 SUZANNE ROGERS, TIMOTHY HORTON, and GARY J. TRAINOR Appeal 2018-004990 Application 11/055,028 Technology Center 3600 Before JENNIFER L. McKEOWN, CATHERINE SHIANG and SCOTT E. BAIN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-15, 17-22, and 25-35. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is First Data Corporation. App. Br. 3. Appeal2017-004990 Application 11/055,028 STATEMENT OF THE CASE Appellants' disclosed and claimed invention "relates generally to transaction processing" and "relates to methods and systems that provide presentation instruments used in transactions with multiple functions." Spec. ,-J 3. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for processing a purchase transaction using a processor between a first party and a second party, the method comprising: enrolling, by a host system, an existing financial presentation instrument of the first party by creating a customer account associated with the existing financial presentation instrument, wherein the existing financial presentation instrument comprises at least one of a microchip and a radio frequency identification (RFID) chip, and wherein: the first party is in possession of the existing financial presentation instrument prior to enrollment; and the existing financial presentation instrument is used for performing multiple purchase transactions; receiving, by the host system, from the first party, at least two sets of preference information for use with the customer account and the existing financial presentation instrument, wherein: each set of preference information specifies terms for an allocation of transaction amounts among a plurality of transaction types; and the at least two sets of preference information each specify different loyalty accounts; after enrollment, receiving, at the host system, from a point-of-sale device operated by a second party, information defining terms of the purchase transaction, identifying the second party, and identifying the existing financial presentation instrument, wherein the point-of-sale device receives an identifier identifying the existing financial presentation instrument that is stored as machine-readable data by the existing financial presentation instrument; 2 Appeal2017-004990 Application 11/055,028 retrieving, by the host system, one of the at least two sets of preference information associated with the existing financial presentation instrument and the customer account based on an identity of the second party, wherein: the retrieved preference information specifies terms for an allocation of transaction amounts among a plurality of transaction types, and the plurality of transaction types access specific payment accounts of different types from which payment will be made for the purchase transaction and one of the specific payment accounts is a loyalty account; and allocating, by the host system, a non-zero amount for the transaction from at least two of the plurality of transaction types in accordance with the terms of the purchase transaction and the terms for the allocation. THE REJECTIONS The Examiner rejected claims 1-15, 17-22, and 25-35 under 35 U.S.C. Â§ 101 as directed to patent ineligible subject matter. Final Act. 13-17. The Examiner rejected claims 1, 4-9, 14, 15, 17, 18, 20, 25, 28, 30, and 35 under 35 U.S.C. Â§ 103 as unpatentable over Maskatiya (US 6,758,394 B2; Jul. 6, 2004), Pitoda (US 5,590,038; Dec. 31, 1996), Lalonde (US 5,477,040; Dec. 19, 1995), Smith (US 2004/0225602 Al; Nov. 11, 2004), and Gupta (US 2012/0136752 Al; May 31, 2012). Final Act. 18-35. The Examiner rejected claims 2, 3, 10-13, 21, 22, 26, 27, and 31-33 under 35 U.S.C. Â§ 103 as unpatentable over Maskatiya, Piroda, Lalonde, Smith, Gupta, and Fisher (US 2003/0126094 Al; Jul. 3, 2003). Final Act. 35-44. 3 Appeal2017-004990 Application 11/055,028 The Examiner rejected claims 19, 29, and 34 under 35 U.S.C. Â§ 103 as unpatentable over Maskatiya, Piroda, Lalonde, Smith, Gupta, and Applicants' Admitted Prior Art (AAPA). Final Act. 45-46. ANALYSIS THEÂ§ 101 REJECTIONS Claims 1-15, 17-22, and 25-35 Based on the record before us, Appellants have not persuaded that the Examiner erred in rejecting claims 1-15, 17-22, and 25-35 as directed to patent ineligible subject matter. 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. Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216 (2014). 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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("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."). 4 Appeal2017-004990 Application 11/055,028 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, 191 (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 176; see also id. at 191 ("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 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."). 5 Appeal2017-004990 Application 11/055,028 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 ( citation 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 section 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). 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 (see MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") Â§ 2106.05(a)-(c), (e)-(h) (9th ed. 2018)). See Memorandum 52, 55-56. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: 6 Appeal2017-004990 Application 11/055,028 (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(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 Memorandum 56. Analysis - Revised Step 1 In step one we consider whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. Â§ 101: process, machine, manufacture, or composition of matter. The claimed invention here recites a process including a number of a steps. Accordingly, the claimed invention falls within the process category. Analysis - Revised Step 2A Under the Memorandum, in prong one of step 2A we look to whether the claims recite a judicial exception. The claimed invention includes "enrolling, by a host system, an existing financial presentation instrument of the first party by creating a customer account associated with the existing financial presentation instrument," "the first party is in possession of the existing financial presentation instrument prior to enrollment;" "the existing financial presentation instrument is used for performing multiple purchase transactions;" "receiving, by the host system, from the first party, at least two sets of preference information for use with the customer account and the existing financial presentation instrument;" "each set of preference information specifies terms for an allocation of transaction amounts among a 7 Appeal2017-004990 Application 11/055,028 plurality of transaction types;" "the at least two sets of preference information each specify different loyalty accounts;" "after enrollment, receiving, at the host system, from a point-of-sale device operated by a second party, information defining terms of the purchase transaction, identifying the second party, and identifying the existing financial presentation instrument, wherein the point-of-sale device receives an identifier identifying the existing financial presentation instrument that is stored as machine-readable data by the existing financial presentation instrument;" "retrieving, by the host system, one of the at least two sets of preference information associated with the existing financial presentation instrument and the customer account based on an identity of the second party," "the retrieved preference information specifies terms for an allocation of transaction amounts among a plurality of transaction types;" "the plurality of transaction types access specific payment accounts of different types from which payment will be made for the purchase transaction and one of the specific payment accounts is a loyalty account;" and "allocating, by the host system, a non-zero amount for the transaction from at least two of the plurality of transaction types in accordance with the terms of the purchase transaction and the terms for the allocation." The claimed invention, thus, recites a method for processing a purchase transaction using a financial presentation instrument that identifies sets of preferences including loyalty accounts and allocation of transaction amounts among a plurality of transaction types. These limitations are commercial or sales related activities, namely using a financial presentation instrument to facilitate a purchase transaction between a first and second party. Accordingly, we agree with the Examiner that the claimed invention 8 Appeal2017-004990 Application 11/055,028 recites a fundamental economic practice. See Final Act. 13; Ans. 6. As such, the claimed invention recites certain methods of organizing human behavior, which is an abstract idea. See also Smart Systems Innovations, LLC v. Transportation Systems, Inc., 873 F.3d 1364 (Fed. Cir. 2018). Under prong two of revised step 2A, 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 (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. We determine that the claimed invention is not integrated into a practical application. The claimed invention additionally recites a processor, a microchip or radio frequency identification chip (RFID), and a point-of- sale device. As the Examiner determines, the claimed invention "does not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do[ es] not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment." Final Act. 14. Appellants argue that the claimed system is an improvement to prior art systems. App. Br. 11-15. Appellants, however, fail to persuasively explain how the claimed invention provides such improvements to the prior art process. Instead, Appellants merely repeat the claim limitations. See, e.g., App. Br. 9-10. As such, we are not persuaded that the claimed invention provides an improvement to the prior art process. We further note that the steps of receiving data, such as receiving sets of preference information, is insignificant extra-solution activity because _. 9 Appeal2017-004990 Application 11/055,028 The claimed invention receives, processes, and displays data - this is merely conventional data gathering and analysis. See MPEP Â§ 2106.05(g); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the record before us, we determine that the claimed invention is not integrated into a practical application. Analysis - Revised Step 2B Under step 2B, we determine that the claimed invention does not add significantly more to the abstract idea. In particular, Appellants argue that the claimed inventions "are clearly more than a generic computer devices performing generic computer functions" (App. Br. 16) and also argues that the Examiner fails to sufficiently support the finding the additional limitations as well-understood, routine, and conventional. Reply Br. 3. We disagree. As the Examiner observes, "the additional limitations are merely receiving or transmitting data over a network and receiving, processing, and storing data; both of which have been held to be well- understood, routine and conventional functions." Ans. 9. Further, as Examiner explains, the claimed invention merely appl[ies] the commonplace business method and pre- internet method of processing a purchase transaction between a first party and a second party to the particular technological environment of the internet using generic computer functions and conventional network operations and therefore, are not directed towards a particular problem rooted solely in computer technology. Ans. 11; see also Spec. ,-J,-J 51 and 53; Ans. 5; Electric Power Group LLC, 830 F.3d at 1354 (finding that use of "conventional computer, network, and 10 Appeal2017-004990 Application 11/055,028 display technology for gathering, sending, and presenting the desired information" does not add significantly more to the claimed abstract idea); Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data collection, recognition, and storage is well-known); CyberSource Corporation v. Retail Decisions, Inc., 654 F.3d 136, 1375 (Fed. Cir. 20ll)("[T]he incidental use of a computer to perform the [ claimed process] does not impose a sufficiently meaningful limitation on the claim's scope."). As such, based on the record before us, we are not persuaded that the Examiner erred in finding that the claimed invention is directed to ineligible subject matter. Claims 25-34 The Examiner additionally explains that claim 25 recites a computer readable medium, which can cover transitory propagating signals, and, thus, rejects claims 25-34 as directed to non-statutory subject matter. Final Act. 15-16. Appellants do not respond to this rejection. As such, based on the record before us, we affirm the Examiner's additionalÂ§ 101 rejection of claims 2 5-34. 11 Appeal2017-004990 Application 11/055,028 THEÂ§ 103 REJECTION BASED ON MASKATIYA, PITRODA, LALONDE, SMITH, AND GUPTA Claims 1, 4-9, 14, 15, 17, 18, 20, 25, 28, 30, and 35 Based on the record before us, we are not persuaded that the Examiner erred in finding that claims 1, 4-9, 14, 15, 17, 18, 20, 25, 28, 30, and 35 are unpatentable over Maskatiya, Pitroda, Lalonde, Smith, and Gupta. Appellants contend that Maskatiya fails to teach or suggest enrolling a presentation instrument. App. Br. 20. According to Appellants, "Maskatiya describes 'enrollment' as a 'process used to verify the identity of the human participant' and as an 'aid in future identification' ( col. 3, lines 32-37). The verification instrument, even if deemed an 'existing financial presentation instrument,' is not being enrolled in Maskatiya." Id. (bolded removed). Appellants further explain it is the customer, not the presentation instrument, that is enrolled. Id. We find this argument unpersuasive. Notably, the disputed limitation recites "enrolling ... an existing financial presentation instrument. .. by creating a customer account associated with the existing financial presentation instrument." In other words, the claimed enrolling is done by creating a customer account and merely associating that account with the financial presentation instrument. The Specification also support this interpretation. For example, the Specification describes that if an enrollment request is approved, "the host system establishes a customer account with the system, and links that customer account with both the presentation instrument and the 30 identified financial account at block 436." Spec. ,-J 61. As the Examiner finds, Maskatiya similarly discloses a process of enrolling a human participant and recording verification information, i.e. associating a 12 Appeal2017-004990 Application 11/055,028 presentation instrument with the created customer account. See, e.g., Final Act. 18 (citing Maskatiya col. 3, 11. 22-37). We further note that the Specification also includes biometric data, such as used in Maskatiya, as an exemplary presentation instrument. See Spec. ,-J 25. As such, we are not persuaded that the Examiner erred in finding that Maskatiya teaches or suggest the claimed enrolling limitation. We likewise find unavailing Appellants' argument that the cited combination fails to teach or suggest sets of preference information, each specifying different loyalty accounts. See App. Br. 20. As the Examiner finds, Lalonde teaches a charge card selector card that selects from a variety of payment cards in accordance with received predetermined preferences. Final Act. 19 (citing Lalonde col. 5, 11. 1-7, col. 4, 11. 42-67, and col. 6, 11. 50-60). Smith additionally teaches use of a variety of credit or loyalty programs. Smith ,-i,-i 24, 28, and 29. As such, together the cited prior art teaches the claimed sets of preferences including each specifying different loyalty accounts. Appellants next assert that cited combination fails to teach or suggest retrieving preference information based on an identity of the second party. App. Br. 22. We disagree. Lalonde teaches generating merchant identification data and transferring that data, along with data from the charge card selecting card, to the charge card selector. Lalonde then uses this transferred data to select the card to be charged. Lalonde, col. 4, 11. 52-61. As the Examiner finds, "[t]he merchant identification (i.e. the identity of the second part[y]) that is retrieved along with the transaction information is used along with the preference information to make a card selection." Ans. 16. We agree that these teachings at least suggests that to a skilled artisan 13 Appeal2017-004990 Application 11/055,028 that Lalonde uses the merchant identification information in the selection of the card. As such, we are not persuaded that the cited combination fails to teach or suggest the retrieving limitation. Finally, Appellants argue that the cited combination does not teach or suggest retrieving preference information specifying allocation to payment accounts, where one of the accounts is a loyalty account. As discussed above, Lalonde teaches using a charge card selector that may select from a variety of credit cards in accordance with predetermined preferences (Lalonde, col. 4, 11. 42-60) and Smith teaches use of credit or loyalty accounts. Smith ,i,i 24, 28, and 29; see also Final Act. 20-21; Ans. 16. As such, we find Appellants' arguments unpersuasive. Accordingly, we affirm the Examiner's decision to reject claims 1, 4- 9, 14, 15, 17, 18, 20, 25, 28, 30, and 35 as unpatentable over the cited combination of prior art. THE REMAINING 103 REJECTIONS Claims 2, 3, 10-13, 19, 21, 22, 26, 27, 29, and 31-34 Appellants do not present separate arguments for the patentability of claims 2, 3, 10-13, 19, 21, 22, 26, 27, 29, and 31-34. Instead, Appellants rely on the arguments presented for claim 1. See App. Br. 23. As discussed above, we find these arguments unpersuasive. Accordingly, we affirm the Examiner's decision to reject claims 2, 3, 10-13, 19, 21, 22, 26, 27, 29, and 31-34 as unpatentable over the cited combinations of prior art. 14 Appeal2017-004990 Application 11/055,028 DECISION We affirm the Examiner's decision to reject claims 1-15, 17-22, and 25-35. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a). AFFIRMED 15