MasterCard International IncorporatedDownload PDFPatent Trials and Appeals BoardMar 29, 20212020006264 (P.T.A.B. Mar. 29, 2021) Copy Citation 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. 15/040,495 02/10/2016 Manoneet Kohli P02863-US- UTIL (M01.414) 3195 125619 7590 03/29/2021 Mastercard International Incorporated c/o Buckley, Maschoff & Talwalkar LLC 50 Locust Avenue New Canaan, CT 06840 EXAMINER BRIDGES, CHRISTOPHER ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 03/29/2021 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): colabella@bmtpatent.com martin@bmtpatent.com szpara@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MANONEET KOHLI ____________ Appeal 2020-006264 Application 15/040,495 Technology Center 3600 ____________ Before HUBERT C. LORIN, BIBHU R. MOHANTY, and KENNETH G. SCHOPFER, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Mastercard International Incorporated (Appeal Br. 2). Appeal 2020-006264 Application 15/040,495 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to determining that a benefit payment is due to be made to a recipient using a data store and an indication of biometric user authentication as proof-of-life (Spec., Abstr.). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A method for biometric proof-of-life processing, the method comprising: determining, by a first computer, that a benefit payment is due to be made to a recipient; accessing, by the first computer, a data store containing records of payment transactions made by the recipient, said data store maintained by a second computer different from the first computer, said second computer having compiled said records of payment transactions from data supplied by a computerized payment system; receiving, by the first computer, an indication from the data store that the recipient had successfully performed a biometric user authentication with respect to at least one of the payment transactions; accepting, by the first computer, the received indication as proof-of-life with respect to the recipient; and the first computer making the benefit payment to the recipient in response to said proof-of-life; wherein said first computer includes a first processor and a first memory in communication with said first processor, said first memory storing program instructions for controlling the first processor, said second computer including a second processor and a second memory in communication with said second processor, said second memory storing program instructions for controlling the second processor. Appeal 2020-006264 Application 15/040,495 3 THE REJECTION The following rejection is before us for review: Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 8; Reply Br. 2). The Appellant argues further that the claim is integrated into a practical application (Appeal Br. 8, 9). The Appellant argues further that the claim is “significantly more” than the alleged abstract idea (Appeal Br. 9; Reply Br. 3). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2–10; Ans. 3–13). We agree with the Examiner. 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 implicit exceptions: “[l]aws of nature, natural 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2020-006264 Application 15/040,495 4 phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 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. Kappos, 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 (Gottschalk v. 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, 192 (1981)); “tanning, dyeing, making waterproof 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 187; see also id. at 191 (“We Appeal 2020-006264 Application 15/040,495 5 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. (internal citation omitted) (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.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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 monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)). 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 Appeal 2020-006264 Application 15/040,495 6 (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 Guidance. If the claim is “directed to” an abstract idea, we turn 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. Here, the Examiner has determined that the claim sets forth “making a payment to an authenticated individual,” which is both a certain method of organizing human activity as a fundamental economic practice and a mental process, which are abstract ideas (Final Act. 2-5). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of: [1] “determining, . . . that a benefit payment is due to be made to a recipient”; [2] “accessing . . . a data store containing records of payment transactions made by the recipient”; [3] “receiving . . . an indication from the data store that the recipient had successfully performed a biometric user authentication with respect to at least one of the payment transactions”; [4] “accepting . . . the received indication as proof-of-life with respect to the recipient”; and [5] “making the benefit payment to the recipient in response to said proof-of-life”, which is a Appeal 2020-006264 Application 15/040,495 7 method of determining that benefit payment is due to be made to a user using data and an indication as proof-of-life and is a certain method of organizing human activities and a fundamental economic practice; or a mental process, i.e., a judicial exception. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. Courts have found claims directed to collecting, recognizing, and storing data in a computer memory to be directed to an abstract idea. Content Extraction and Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d 1343 (Fed. Cir. 2014). In Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) claims directed to the local processing of payments for remotely purchased goods was held to be directed to an abstract idea. In FairwarningIP, LLC v. Iatiric Systems, Inc., 839 F.3d 1089, 1094, Oct. 11, 2016, it was held that claim directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected was directed to an abstract idea. We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. Appeal 2020-006264 Application 15/040,495 8 For example, in the claim, the additional elements beyond the abstract idea are the recited first and second computers. The claimed limitations of “determining,” “accessing,” “receiving,” “accepting,” and “making the benefit payment” as recited “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at Appeal 2020-006264 Application 15/040,495 9 pages 8 and 9, for example, describes using conventional computer components such as a processor, storage devices, and input device in a conventional manner. The claim specifically includes recitations for computers to implement the method but these computer components are all used in a manner that is well understood, routine, and conventional in the field. Here, the claimed generic computer components which are used to implement the claimed method are well understood, routine, or conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. For these above reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining method claims 2–13, which are drawn to similar subject matter, and the rejection of these claims is sustained for the same reasons given above. We reach the same conclusion as to independent system claim 14. Here, as in Alice, “the system claims are no different in substance from the method claims. 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.” Alice, 134 S. Ct. at 2351. “[T]he 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.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294). For these reasons, the rejection of claim 14 and its dependent claims is sustained. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 101. Appeal 2020-006264 Application 15/040,495 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 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. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation