Keenan, Rob A.

Patent Trials and Appeals Board

Nov 21, 2019

13062403 - (D) (P.T.A.B. Nov. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/062,403 05/03/2011
21839 7590 01/22/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Rob A. Keenan
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.
0076412-000025 3767
EXAMINER
PRESTON, JOHN 0
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB A. KEENAN
Appeal 2017-011835
Application 13/062,403
Technology Center 3600
Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner's final decision to reject claims 1-4, 7-10, 13-15, and 18-21.
The Appellant's representative appeared for Oral Argument on October 24,
2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 We use the word "Appellant" to refer to "applicant" as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
MasterCard International Incorporated. Appeal Br. 2.
Appeal 2017-011835
Application 13/062,403
CLAIMED SUBJECT MATTER
The Appellant's invention:
relates to a method for payment cardholders to control and
manage a payment card through usage parameters. More
specifically, the method provides payment cardholders with the
ability to select usage parameters and define rules for the usage
parameters that allow the cardholder to manage and safeguard
the payment card by providing messages and declining
transactions based on the occurrence of predefined usage
parameters and providing analysis of the payment cardholder's
transactions.
Spec. ,-i 2.
Claims 1, 8, and 14 are the independent claims. Claim 1 is illustrative
of the subject matter on appeal and is reproduced below (with added
bracketing for reference):
1. A method for providing a payment cardholder with control
over a payment card comprising:
[(a)] enabling, through the use of a managing platform, a
card issuer to establish a set of predefined usage parameters for
usage of the payment card from which the payment cardholder
may select;
[ (b)] associating, by a processing device of said managing
platform, the payment card with said managing platform;
[( c )] allowing, via an interface of said managing platform,
the payment cardholder to (i) select one or more of said usage
parameters as defined by the card issuer and (ii) define rules for
each selected usage parameter;
[ ( d)] storing, by the managing platform, as a set of
cardholder parameters, the selected one or more usage
parameters and their associated user-defined rules;
[ ( e)] associating, by the processing device of said
managing platform, the set of cardholder parameters with the
payment card such that said set of cardholder parameters
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determine whether an attempted transaction using the payment
card is acceptable or unacceptable;
[(f)] intercepting, by the processing device of said
managing platform, authorizations for transactions of the
payment card transmitted by a merchant to an issuer of the
payment card, wherein said managing platform is an entity
separate and distinct from both said issuer of said payment card
and said merchant and functions as an intermediary between said
issuer and said merchant;
[ (g)] identifying, by the processing device of said
managing platform, based on said set of cardholder parameters,
each attempted transaction of said payment card as being an
acceptable transaction or an unacceptable transaction; and
[(h)] when an attempted transaction is identified as being
an unacceptable transaction, notifying the payment cardholder of
said identified unacceptable transaction by delivering a message
from said managing platform to said payment cardholder.
Appeal Br. 23-24 (Claims App'x.).
REJECTION
Claims 1-4, 7-10, 13-15, and 18-21 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.
OPINION
The Appellant argues the claims as a group. See Appeal Br. 8, 21.
We select claim 1 as representative of the group with the remaining claims
standing or falling therewith. See 37 C.F.R. 41.37(c)(l)(iv).
35 U.S. C. § 1 OJ Framework
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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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.").
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, 67 (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 (185))); 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
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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.").
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. ( alterations in original) ( 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.
After the Appellant's briefs were filed and the Examiner's Answer
mailed, the U.S. Patent and Trademark Office ("USPTO") published revised
guidance on the application of§ 101. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019
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Revised Guidance"). That guidance revised the USPTO's examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that is considered an abstract idea;
and (2) clarifying that a claim is not "directed to" a judicial exception if the
judicial exception is integrated into a practical application of that exception.
Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. 2 Under the 2019 Revised 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) §§ 2106.05(a)-(c), (e)-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.04(II) and also supersedes all versions of the
USPTO's "Eligibility Quick Reference Sheet Identifying Abstract Ideas."
See 2019 Revised Guidance, 84 Fed. Reg. at 51 ("Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon."). Accordingly,
Appellant's arguments challenging the sufficiency of the Examiner's
rejection (see, e.g., Appeal Br. 21; Reply Br. 8) will not be addressed to the
extent those arguments are based on now superseded USPTO guidance.
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(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 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 1 is "directed to a method for providing a payment
cardholder with control over a payment card," which is "a concept involving
human activity related to commercial practices, similar to the concept found
in Ultramerciall Inc.] v. HululLLCJ ... [772 F.3d 709 (Fed. Cir. 2014)]."
Final Act. 6. When viewed through the lens of the 2019 Revised Guidance,
the Examiner's analysis depicts the claimed subject matter as a "[ c Jertain
method[] of organizing human activity-... commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations)" under Prong One of Revised Step 2A. 2019 Revised Guidance,
84 Fed. Reg. at 52.
The Appellant disagrees with the Examiner's determinations. See
Appeal Br. 8. The Appellant does not state to what the claim is directed, but
contends "the Examiner does not characterize the Appellant's claims in a
manner that adequately describes the subject matter to which the claims are
directed and omits core features of the claims." Id. at 10; see also Reply
Br. 3-4.
Before determining whether the claims at issue are directed to an
abstract idea, we first determine to what the claims are directed. The Federal
Circuit has explained that "the 'directed to' inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether 'their
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character as a whole is directed to excluded subject matter."' Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an "abstract
idea" for which computers are invoked merely as a tool. See id. at 1335-36.
Here, it is clear from the Specification, including the claim language, that
claim 1 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for "A METHOD FOR A PAYMENT
CARDHOLDER TO CONTROL AND MANAGE THE USE OF A
PAYMENT CARD." Spec., Title. In the "Field of the Invention" section,
the Specification provides for a method that:
provides payment cardholders with the ability to select usage
parameters and define rules for the usage parameters that allow
the cardholder to manage and safeguard the payment card by
providing messages and declining transactions based on the
occurrence of predefined usage parameters and providing
analysis of the payment cardholder' s transactions.
Id. ,-i 2. In the "Background" section, the Specification discusses that
payment cardholders are reluctant to use a payment card because of fraud
risks associated with usage (id. ,-i 3) and "a feeling of loss of control of
spending" (id. ,-i 4). To addresses these issues, "it would be advantageous to
provide a cardholder with the ability to control and manage spending and the
usage of the payment card, by providing the payment cardholder with
greater confidence when using the payment card and encouraging the
payment cardholder to use the payment card for all transaction." Id. ,-i 5.
Thus, the invention aims to:
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provide[] a payment cardholder with additional reassurances
and gives the payment cardholder extra peace of mind by
allowing the payment cardholder to use a card protection plan
with existing payment cards that provides protection from fraud
or misuse, and allows the cardholder to use the payment card to
manage and monitor spending habits.
Id. iJ 14.
Consistent with the disclosure, claim 1 recites "[a] method for
providing a payment cardholder with control over a payment card
comprising:" the steps of: (a) "enabling, through the use of a managing
platform, a card issuer to establish a set of predefined [selectable] usage
parameters"; (b) "associating, by a processing device of said managing
platform, the payment card with said managing platform;" ( c) allowing, via
an interface of said managing platform, the payment cardholder to (i) select"
at least one of the usage parameters and "(ii) define rules for each selected
usage parameter;" ( d) "storing, by the managing platform," a set of
cardholder parameters comprising the selected usage parameter(s) and their
associated user-defined rules; ( e) "associating, by the processing device of
said managing platform, the set of cardholder parameters with the payment
card"; (f) "intercepting, by the processing device of said managing platform,
authorizations for transactions of the payment card transmitted by a"
separate merchant intermediary entity to an issuer of the payment card;
(g) "identifying, by the processing device of said managing platform, based
on said set of cardholder parameters, each attempted transaction of said
payment card as being an acceptable transaction or an unacceptable
transaction;" and (h) conditionally notifying by message the payment
cardholder when the attempted transaction is identified as being an
unacceptable transaction. Appeal Br. 22-23.
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When considered collectively and under the broadest reasonable
interpretation of the claim's limitations, we agree with the Examiner that the
claim recites a method for providing a payment cardholder with control over
a payment card to reduce risk of unacceptable transactions. 3 The limitations
of enabling, associating, allowing, intercepting, and identifying (limitations
(a), (b), (c), (e), (f), and (g)) are functionally recited without any detail
regarding how the results are accomplished, i.e., in what way(s)
technologically or by what algorithm, and thus can be done by any known
method and/or mentally. Storing data (limitation (d)) is an extra-solution
activity. See Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). Conditionally notifying
of the results of the analysis (limitation (h)) is a post-solution activity. See
Flook, 437 U.S. at 590.
The managing platform is not structurally defined in the claim or
elsewhere in the Specification, but the Specification provides an example of
the platform of "the service provided under the trademark 'MasterCard
inControl' registered to MasterCard International, Inc." (Spec. ,-J 17) that
"may reside on one or more central processing units, which are networked
and accessible through any known technique or interface" (id. ,-i 18), and
thus, can comprise a generic computer. The "processing device of the
managing platform" (Claim 1) is not described in the Specification and thus
3 We note that "[ a ]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board's "slight revision of its abstract idea analysis
does not impact the patentability analysis." Id. at 1241.
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comprises a generic processing device. There is also no claimed or
described structural elements of the merchant entity.
Providing a payment cardholder with control over a payment card to
reduce risk of unacceptable transactions is similar to the concepts of
collecting and analyzing information for the purpose of preventing improper
access in Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016), of verifying the validity of a credit card transaction over
the Internet in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011), of identifying unwanted files in a computer network
in Intellectual Ventures I LLC v. Erie Indem. Co., 711 F. App'x 1012, 1015
(Fed. Cir. 2017)), and of using a third party to mitigate settlement risk in
Alice, 573 U.S. at 219. Accordingly, we conclude the claim recites a way of
providing a payment cardholder with control over a payment card to reduce
risk of unacceptable transactions, which is a commercial interaction, one of
the certain methods of organizing human activity as identified in the 2019
Revised Guidance, 84 Fed. Reg. at 52, and thus, an abstract idea. As such,
we disagree that the Appellant's contentions that the Examiner's does not
accurately summarize the subject matter (Appeal Br. 9-12; see also Reply
Br. 3-4) and that "[t]he cited case law does not address claims directed to
subject matter similar to Appellant's claimed subject matter" (Appeal Br. 13;
see also id. at 14-1 7).
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claims "apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
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monopolize the judicial exception," i.e., "integrates a judicial exception into
a practical application." Here, the Appellant contends:
The instant claims improve upon existing systems and provide
an added level of security against fraud by improving security
over the use of credit cards and enabling cardholders more
control over how, when, where, etc. their credit cards are used.
More specifically, Appellant's claims [sic] to improve a manner
in which financial transactions are processed by generating
cardholder specific rules for application to received authorization
requests to identify positive or negative responses.
Appeal Br. 11. Similarly, the Appellant contends:
The instant claims improve upon existing systems and methods
by providing an intermediary managing platform that improves
security over use of credit cards by enabling the creation of
cardholder-specific controls on use and improving a manner in
which financial transactions are processed by applying such
cardholder-specific controls on use to received authorization
requests to identify positive or negative responses.
Id. at 12 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016); see also id. at 14-17; Reply Br. 4-5. When viewed
through the lens of the 2019 Revised Guidance, the Appellant contends that
under Prong Two, the elements of the claim integrate the abstract idea into a
practical application because the combination of the elements "reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field." 84 Fed. Reg. at 55 ( citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). We disagree.
Specifically, the Appellant contends that the claim addresses "a
problem which exists entirely within the realm of electronic transaction
processing and define a new and useful technique by which a transaction
authentication process is executed that results in further protection of
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cardholders against unwanted spending and/or fraudulent use of his/her
payment card" by "providing a managing platform that intercepts
authorization requests transmitted from a merchant POS device to an issuer,
analyzing the intercepted authorization requests and applying user-defined
controls on use." Appeal Br. 15, 16. However, the Appellant does not
provide reasoning or evidence, and we do not see from the claim, how the
limitations claim a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR Holdings, 773 F.3d at 1257. The problems of unwanted
spending and fraudulent use of payment cards existed prior to the Internet
and are business and personal finance concerns. See FairWarning, 839 F.3d
at 1094-95 ( determining whether user accesses were authorized or
fraudulent incorporated "the same questions (though perhaps phrased with
different words) that humans in analogous situations detecting fraud have
asked for decades, if not centuries"). Although here, the transactions are
"electronic" (Appeal Br. 14), there is not a problem rooted in technology
arising out of computer networks. Instead, the Specification, at paragraph 2,
describes that the problems are related to payment cards and are not limited
to Internet transactions.
Further, the purported solution of a management platform acting as an
intermediary comprises the use of a generic processor operating in its
ordinary and conventional capacity. See supra; see also Alice, 573 U.S.
at 224-26. The Appellant does not, and cannot, claim to have invented the
use of the management platform processor. The "focus" of the claim is not
"on the specific asserted improvement in computer capabilities" (Enfish, 822
F.3d at 1335) or on the payment card itself (see Smart Systems Innovations,
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LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017), but
rather on using the processor component as a tool to implement the abstract
idea in the particular field of payments/transactions. See Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)
("merely limiting the field of use of the abstract idea to a particular ...
environment does not render the claim any less abstract").
In McRO, the claims were directed to a specific improvement in
computer animation and used rules to automate a subjective task of humans
to create a sequence of synchronized, animated characters. See McRO,
837 F.3d at 1314-15. Unlike Flook, Bilski, and Alice, it was not the use of
the computer but the incorporation of the rules that improved an existing
technological process. Id. at 1314. Here, as discussed above, there is no
such improvement to technology or a technological process. The Appellant
also does not direct our attention to anything in the Specification to indicate
that the invention provides a technical improvement in enabling
establishment of parameters, associating data, allowing selection of data,
storing data, intercepting transmitted data, identifying data, and delivering
data or that claim 1 incorporates rules to automate a subjective task of
humans, as in McRO. See Fair Warning, 839 F.3d at1394-95.
Regarding the Appellant's argument that claim 1 is not directed to an
abstract idea because it "do[es] not 'tie-up' or pre-empt others from using an
alleged abstract idea" (Appeal Br. 17; see also id. at 18; Reply Br. 9-10),
although the Supreme Court has described "the concern that drives this
exclusionary principle[, i.e., the exclusion of abstract ideas from patent
eligible subject matter,] as one of pre-emption" (see Alice, 573 U.S. 208),
characterizing preemption as a driving concern for patent eligibility is not
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the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. 208); cf Reply Br. 2-3. Although "preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Id.
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayol Alice Framework
Under the second step in the Alice framework ( corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner's
determination that the claim's limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
exception "because taken as a whole, the claims simply instruct the
practitioner to implement the abstract idea with routine, conventional
activity." Final Act. 6.
The Appellant contends that "like the claims of Bascom (and
Intellectual Ventures [I LLC v. J. Crew Group, Inc., Case No. 6: 16-CV-196-
JRG, (E.D. Tex. 2016)]), the present claims provide an inventive concept by
virtue of the non-conventional arrangement and configuration of devices."
Appeal Br. 20; see also Reply Br. 6-7, 10-12. When viewed through the
lens of the 2019 Revised Guidance, the Appellant argues that claim 1
"[ a ]dds a specific ... combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
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that an inventive concept may be present." 2019 Revised Guidance, 84 Fed.
Reg. at 56.
The Appellant argues "the claim involves a very specific
technological environment and communication with a very specific network,
i.e., payment network." Appeal Br. 20. However, "[t]he Supreme Court and
[the Federal Circuit] have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract." Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (citing
cases). And, the Appellant's statement that "an unspecified generic
computer ( e.g., standard desktop computer) performing routine and
conventional activities is not capable of communicating with a
payment/transaction system/network as communication with such a
payment/transaction system requires the use of communication protocols
and data formatting standards that are unavailable to unspecified, generic
computers" (Appeal Br. 20) is unsupported attorney argument. Further, the
claim does not address or recite an improvement in any formatting issues.
See FairWarning, 839 F.3d at 1097.
With regard to the Appellant's argument that "[s]uch a non-
conventional arrangement and configuration is evidenced by the lack of
application of prior art against Appellant's claims" (Appeal Br. 20
(emphases omitted)), an abstract idea does not transform into an inventive
concept just because the prior art does not disclose or suggest it. See Mayo,
566 U.S. at 78. "Ground-breaking, innovative, or even brilliant discovery
does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, "[t]he 'novelty'
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of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter." Diehr, 450 U.S.
at 188-89; see also Mayo, 566 U.S. at 91 (rejecting "the Government's
invitation to substitute§§ 102, 103, and 112 inquiries for the better
established inquiry under § 10 l ").
Further, it is not clear how the features of the platform enabling,
associating, allowing, storing, intercepting, identifying, and conditionally
delivering data is similar to BASCOM's "non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM, 827 F.3d at 1350.
In BASCOM, the Federal Circuit determined that "its particular arrangement
of elements is a technical improvement over prior art ways of filtering such
content." Id. The patent at issue "claim[ ed] a technology-based solution
(not an abstract-idea-based solution implemented with generic technical
components in a conventional way) to filter content on the Internet that
overcomes existing problems with other Internet filtering systems." Id.
at 13 51. The court determined that "[b ]y taking a prior art filter solution
(one-size-fits-all filter at the ISP server) and making it more dynamic and
efficient (providing individualized filtering at the ISP server), the claimed
invention represents a 'software-based invention[] that improve[s] the
performance of the computer system itself."' Id. Here, there is no such
improvement to the claimed computer component itself. And, the Appellant
provides no further arguments how the claim's particular arrangement and/or
integration of elements is a technical improvement or is otherwise similar to
BASCOM.
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We note that, as discussed above, the claim simply recites the
functional results to be achieved by a conventional computer. The claim
"provides only a result-oriented solution[] with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017)
("Capital One"). Taking the claimed elements separately, the functions
performed by the computer are purely conventional. The claimed platform
comprises a generic computing device (see supra) and operates in its
ordinary and conventional capacities to perform the well-understood,
routine, and conventional functions of enabling establishment of,
associating, allowing selection of, storing, intercepting, identifying, and
delivering data. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (gathering, sending, monitoring, analyzing,
selecting, and presenting information does not transform the abstract process
into a patent-eligible invention); FairWarning, 839 F.3d at 1095 (generating
a rule related to accessing information, applying the rule, and storing and
announcing the result did not transform the abstract idea into a patent-
eligible invention); Alice, 573 U.S. at 226 ("Nearly every computer will
include a 'communications controller' and 'data storage unit' capable of
performing the basic calculation, storage, and transmission functions
required by the method claims."). The only additional elements beyond the
abstract idea are the managing platform and merchant entity, which are
recited at a high level of generality.
Considered as an ordered combination, the components of the
Appellant's claim add nothing that is not already present when the steps are
considered separately. The sequence of establishing, associating, selecting,
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Application 13/062,403
storing, intercepting, identifying, and delivering data, is equally generic and
conventional or otherwise held to be abstract. See Capital One, 850 F.3d at
1341 (holding that the sequence of collecting, organizing, identifying,
mapping, organizing, defining, and detecting was abstract); Electric Power,
830 F.3d at 1354-56 (holding that the sequence of gathering, analyzing, and
displaying in real-time was abstract); Fair Warning, 839 F.3d at 1095
(holding that sequence of generating a rule related to accessing information,
applying the rule, and storing and announcing was abstract).
Thus, we are not persuaded of error in the Examiner's determination
that the limitations of claim 1 do not transform the claims into significantly
more than the abstract idea.
The Appellant also contends that the Examiner errs in not explaining
each claim individually. Appeal Br. 21; Reply Br. 12. However, there is no
specific requirement that each claim be examined individually by the
Examiner in determining that the claims are directed to an abstract idea. See
Alice, 573 U.S. 208 at 217-21 (addressing the claims together). The
Examiner includes the dependent claims with the analysis of the independent
claims and states that "each dependent claim inherited the ineligibility of the
independent claims because no dependent claim added any limitations to
overcome the deficiencies found in the independent claims." Ans. 6; see
also Final Act. 5-6. There is no indication that the Appellant was not put on
notice of the Examiner's rejection regarding claims 2-4, 7-10, 13-15, and
18-21. Moreover, the Appellant does not provide any argument against
each independent or any individual dependent claim. See Appeal Br. 21-22.
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For at least the reasons above, we sustain the Examiner's rejection
under 35 U.S.C. § 101 of independent claim 1 and of claims 2-4, 7-10,
13-15, and 18-21, the rejection of which stands with claim 1.
CONCLUSION
The Examiner's decision to reject claims 1-4, 7-10, 13-15, and
18-21 under 35 U.S.C. § 101 is sustained.
In summary:
1-4, 7-10, 101
13-15, 18-21
DECISION SUMMARY
Eligibility 1-4, 7-10,
13-15, 18-21
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l)(iv).
AFFIRMED
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