MasterCard International Incorporated

Patent Trials and Appeals BoardMar 26, 2021

2020006289 (P.T.A.B. Mar. 26, 2021)

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. 15/609,333 05/31/2017 Pravin Parekh P02877-US- UTIL (M01.557) 1042 125619 7590 03/26/2021 Mastercard International Incorporated c/o Buckley, Maschoff & Talwalkar LLC 50 Locust Avenue New Canaan, CT 06840 EXAMINER MALHOTRA, SANJEEV ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 03/26/2021 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 PRAVIN PAREKH ____________ Appeal 2020-006289 Application 15/609,333 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and KENNETH G. SCHOPFER, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION 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 2020-006289 Application 15/609,333 2 THE INVENTION Appellant claims a method and system for local and international funds transfer. (Spec. ¶ 2, Title.) Claim 1 is representative of the subject matter on appeal. 1) A method of transferring funds between a user and a beneficiary, the method including, in one or more electronic processing devices: a) receiving a funds transfer request from a client device of the user, the funds transfer request being indicative of: i) user account information indicative of a user account associated with the user; ii) a unique beneficiary identifier, the unique beneficiary identifier being a national identifier issued to the beneficiary by an issuing country; and iii) an amount of funds to be transferred to the beneficiary; b) determining an indication of the issuing country; c) using the unique beneficiary identifier and indication of the issuing country to retrieve beneficiary account information indicative of a beneficiary account associated with the beneficiary; and d) causing the funds to be transferred between the user account and the beneficiary account using the user account information and the beneficiary account information. THE REJECTION Claims 1–18 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2020-006289 Application 15/609,333 3 ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1–18 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See 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. Appeal 2020-006289 Application 15/609,333 4 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. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims recite steps associated with determining user and beneficiary data for transfer of funds to a beneficiary. (Final Act. 4.) The Examiner determines that similar manual activities can be carried out for organizing human activity and/or by mental steps. The Examiner finds the claims recite a client device and a bank processing device at a high level of generality and therefore these recitations amount to a generic processor performing a generic computer function of processing data and therefore does not integrate the abstract idea into a practical application and does not amount to significantly more than the abstract ideas. (Final Act. 4–5.) The Specification discloses that the invention is a method and system for transfer of funds between a user and a beneficiary. (Spec. ¶ 2.) Local and international funds transfers or remittances involve an electronic transfer of funds from one person or entity to another. Typically, funds are transferred from a bank account of a user to a bank account of a beneficiary. (Spec. ¶ 4.) In order to complete a local or international funds transfer between a user and a beneficiary, specific information from the beneficiary of the transfer is required, including information such as name and address, Appeal 2020-006289 Application 15/609,333 5 name of beneficiary’s bank, beneficiaries’ bank identifier etc. (Spec. ¶ 10.) One or more electronic processing devices can transfer account information request to the bank processing device using the beneficiary bank identifier and receive beneficiary account information from the bank processing device. (Spec. ¶ 3.) We thus agree with the Examiner’s findings that the claims recite a method for controlling the behavior of persons concerning steps associated with determining user and beneficiary data for transmitting a notification of transfer of funds to a beneficiary. Controlling the behavior of persons concerning transfer of funds is a method of organizing human behavior, which is not eligible subject matter. See Alice, 573 U.S. at 220. Also, we find the steps of claim 1 in which funds request data is transmitted, received and analyzed and in which beneficiary account information is retrieved constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exception of a method of organizing human activity in the form of a fundamental economic practice and in the alternative, a mental process. Turning to the second prong of the “directed to test,” claim 1 merely requires one or more “electronic processing devices,” and a “client device.” These recitations do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to Appeal 2020-006289 Application 15/609,333 6 monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the Revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of the electronic processing devices or client device or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 is directed to a judicial exception that is not integrated into a practical application and thus is an “abstract idea.” Appeal 2020-006289 Application 15/609,333 7 Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “‘inventive concept’ ” in order to be patent-eligible, i.e., there must be “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] idea itself.” See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The introduction of electronic processing and client devices into the claims does not alter the analysis at Alice step two. [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. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Appeal 2020-006289 Application 15/609,333 8 Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. They do not. Taking the claim elements separately, the function performed by the electronic processing device and client devices at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the electronic processing devices and the client devices of Appellant’s claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis-access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for Appeal 2020-006289 Application 15/609,333 9 exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 1 does not, for example, purport to improve the functioning of the electronic processing device and client device. As we stated above, claim 1 does not affect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. ¶¶ 36, 68, 74.) Thus, claim 1 amounts to nothing significantly more than instructions to apply the abstract idea of determining user and beneficiary data for transmitting a notification of transfer of funds to a beneficiary using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 7–9; Reply Br. 2–3) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which Appeal 2020-006289 Application 15/609,333 10 have been made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of same. Appellant argues that the claims have been over-generalized as a method of funds transfer requests. (Appeal Br. 7.) Specifically, Appellant argues that although the claims include the user of funds transfer requests, the claims are directed to a process of more efficiently transferring data between two parties, which is not a certain method of organizing human activity. This argument is not persuasive because Appellant does not explain how the claims recite a process that more efficiently transfers data. In addition, in our view, the Examiner’s characterization here is fully consistent with the Specification, as discussed above. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the focus of the claims is directed to a particular manner of transferring funds between a bank and a beneficiary associated with a particular country in the highly technological environment of “big data” processing. (Appeal Br. 7.) This argument fails because it is not commensurate with the recitations in claim 1 which does not recite anything about “big data.” Rather, claim 1 is directed to a process that occurs between “a” user and “a” beneficiary. Appellant argues that the instant invention provides improvements to devices relating to how to electronically transfer funds between a user and a beneficiary in a standardized manner. (Appeal Br. 8) We agree with the Examiner’s response to this argument found on page 5 of the Answer. In this regard, we agree, as we discussed above, that there is no improvement to the devices recited in claim 1. We note that the Specification discloses that the problem solved by the instant invention is one posed by the onerous task Appeal 2020-006289 Application 15/609,333 11 of ascertaining all the details required for funds transfer to a beneficiary in a particular country. As such, the instant invention is directed to solving problems related to ascertaining funds transfer details rather than a computer problem and as we stated above the devices recited in the claim are generic devices. Appellant further argues that the claims are directed to an improved beneficiary fund transfer process which results in a new way of transferring funds in a way that prior art systems were previously not equipped to do. To the extent Appellant maintains that the limitations of claim 1 necessarily amount to “significantly more” than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellant misapprehend the controlling precedent. Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “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, 573 U.S. at 217–18. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 566 U.S. at 90. Appellant argues that the instant claims are similar to the claims in Uniloc USA v. LG Elecs. USA, 957 F.3d 1303, 1308 (Fed. Cir. 2020). (Reply Br. 2.) In Uniloc, the court held the claims at issue were directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems. The Court found that the claims at issue recited a primary station for use in a communication system “wherein means are provided for . . . Appeal 2020-006289 Application 15/609,333 12 adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.” Uniloc, 957 F.3d at 1307. The additional data field enabled a primary station to simultaneously send inquiry messages and poll parked secondary stations. The invention of the claims at issue in Uniloc reduced the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages. Therefore, the invention of the claims at issue in Uniloc changed the normal operation of the communication system itself to “overcome a problem specifically arising in the realm of computer networks.” See DDR Holdings, 773 F.3d at 1257–58. As such, the court found these claims eligible because they recited computer improvement. As we discussed above, claim 1 does not recite an improvement to the devices recited. Rather, generic unimproved devices are used to perform the steps of the invention of claim 1. Appeal 2020-006289 Application 15/609,333 13 In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain this rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. CONCLUSION We conclude the Examiner did not err in rejecting claims 1–18 under 35 U.S.C. § 101. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–18 101 Eligibility 1–18 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) (2019). AFFIRMED