Pawan Kumar et al.

Patent Trials and Appeals Board

Sep 27, 2019

14216843 - (D) (P.T.A.B. Sep. 27, 2019)

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.
14/216,843 03/17/2014 Pawan Kumar 79900-901695(043400NP) 4967
66945 7590 09/27/2019
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LICKTEIG, BLANE A
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAWAN KUMAR, MARK ALLEN NELSEN, and
TODD McGREGOR
____________

Appeal 2018-001430
Application 14/216,8431
Technology Center 3600
____________

Before ERIC S. FRAHM, SCOTT E. BAIN, and MICHAEL T. CYGAN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 5, 7–9, 11, 12, 14–17, and 22–25, which
constitute all claims pending in the application. Claims 3, 6, 10, 13, and 18–
21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Visa International Service Association as the real party
in interest. App. Br. 3.
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BACKGROUND
The Claimed Invention
The invention relates to fraud detection and notification for financial
accounts, such as credit card accounts. Spec. ¶¶ 2–3. Specifically, the
invention alerts issuers and account holders of potentially fraudulent
transactions along with a set of additional transactions that may not have
been identified as fraudulent but provide, for example, further context for the
alert. Id.
Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the
invention and the subject matter in dispute, and reads as follows:
1. A method comprising:
receiving, by a server computer, transaction data for a
transaction associated with a payment account of a user in an
authorization request message from an access device;
determining, by the server computer, that the transaction
is potentially fraudulent in view of a set of prior transactions
not previously identified as potentially fraudulent;
in response to determining that the transaction in
potentially fraudulent, generating, by the server computer, an
alert notification message after receiving the authorization
request message;
in response to determining that the transaction in
potentially fraudulent, initiating, by the server computer,
sending the alert notification message including information
about a plurality of transactions comprising the transaction and
the set of prior transactions not previously identified as
potentially fraudulent to a mobile device operated by a user
associated with the payment account, none of the set of prior
transactions having been sent to the mobile device utilizing an
alert notification message;
receiving a response indicating that a subset of
transactions in the plurality of transactions comprising the
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transaction and the set of prior transactions not previously
identified as potentially fraudulent have been rejected by the
user, the subset of transactions indicated as rejected by the user
including at least two transactions; and
determining, based on the received response, that the
subset of transactions in the plurality of transactions are
unauthorized transactions.
App. Br. 20 (Claims Appendix) (emphases added).
The Rejection on Appeal
Claims 1, 2, 4, 5, 7–9, 11, 12, 14–17, and 22–25 are rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
9–15.
DISCUSSION
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(iv). On the record before us, Appellants have not
persuaded us of error.
Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims are directed to determining
“risk of fraud,” which is a fundamental economic practice and, accordingly,
constitutes an abstract idea. Final Act. 9–11; Ans. 4; Alice Corp. v. CLS
Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”). Further, the Examiner found that additional elements in the
claims merely constituted conventional steps performed on a generic
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computer, and therefore did not include additional elements sufficient to
amount to significantly more than the abstract idea. Final Act. 13–14.
Accordingly, the Examiner concluded that the claims constitute ineligible
subject matter.
Appellants argue that the “anti-fraud protocol” recited in the claims is
not an abstract idea. App. Br. 13–14; Reply Br. 2–4. Appellants further
argue that even if the claims recite an abstract idea, they include
“significantly more,” namely, “multiple interrelated technical operations”
that make the claims patent-eligible subject matter. App. Br. 14–18 (citing
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014);
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)).
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See 84 Fed. Reg. at 54–55.
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Only if a claim recites a judicial exception, and 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
(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 id. at 56 (collectively “Step 2B”).
We begin our de novo review with Step 2A, Prong One of the
Guidance, as applied to Appellants’ claim 1.2 We observe that claim 1
recites “a method” comprising the following steps: (1) “receiving”
transaction “data;” (2) “determining” that a transaction is potentially
fraudulent; (3) “generating” an alert message; (4) “sending” the alert
message; (5) “receiving” a response (data); and (6) “determining” that a
subset of transactions are fraudulent. App. Br. 19–20. We agree with the
Examiner’s determination that the foregoing steps merely describe fraud
detection (e.g., credit card fraud detection), which is an abstract idea. Steps
(1) and (5) recite data retrieval associated with user transactions, including
transactions rejected by the user. Steps (2) and (6) recite data processing
according to rules for determining fraudulent (or potentially fraudulent)
transactions. Steps (3) and (4) recite generating and sending an alert

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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message based on the foregoing. Accordingly, read as a whole, the recited
steps describe a fraud detection system (or “protocol,” as Appellants
describe it), which is a fundamental economic practice.
Accordingly, we determine that, like the claims to hedging in Bilski
and the claims to mitigating settlement risk in Alice, claim 1 recites a
fundamental economic practice, which is one of the certain methods of
organizing human activity deemed to be an abstract idea under the
Guidance. See Bilski v. Kappos, 561 U.S. 593 (2010); Alice, 573 U.S. 208.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellants argue that claim 1 recites
“multiple interrelated technical operations” which integrate the abstract idea
into a practical application. App. Br. 16. Appellants argue claim 1 is similar
to the claims held patent-eligible in DDR and Bascom (see supra). Reply
Br. 5–7.
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Sect. III. Appellants, however,
do not explain, and we do not discern, any improvement in technology from
the claimed invention. Compare Bascom, 827 F.3d at 1350 (“harness[ing a]
technical feature of network technology in a filtering system” to customize
content filtering); DDR, 773 F.3d at 1258 (Fed. Cir. 2014) (“the claims at
issue here specify how interactions with the Internet are manipulated to yield
a desired result––a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink.”)
(emphasis added). The claims in Bascom and DDR, for example, were
“necessarily rooted in computer technology in order to overcome a problem
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specifically arising in the realm of computer networks,” see, e.g., DDR, 773
F.3d at 1257, but Appellant’s claim 1 recites a fraud detection protocol that
merely uses generic computing elements. See e.g., Spec. ¶¶ 23–26
(describing generic computing and communications elements, such as
“cellular phones, PDAs, personal computers,” an “access device,” a
“merchant computer,” and a “payment processing network”).
Appellants also do not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites detecting fraudulent transactions by “alert[ing]” the
user of certain transactions according to rules (not recited in claim 1), and
analyzing the user’s response. App. Br. 20 (Claims App’x.). Reciting a
result-oriented solution that lacks any details as to how the computer
performed the modifications is the equivalent of the words “apply it.”
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–
42 (Fed. Cir. 2015) (citing Elec. Power Grp., LLC, v. Alstrom S.A., 830 F.3d
1350, 1356 (Fed. Cir. 2016) (cautioning against claims “so result focused, so
functional, as to effectively cover any solution to an identified problem”));
see also CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011) (mere data gathering does not make a claim patent-eligible). The
data gathering and processing steps in claim 1 do not add meaningfully to
the recited fundamental economic practice.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
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skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites a fraud detection method that includes receiving,
analyzing, and transmitting data or messages. See supra. We agree with the
Examiner’s finding that simply using standard computer elements to
implement rules for facilitating data processing and analysis (and
specifically, a fraud detection protocol) is well understood, routine, and
conventional. Ans. 4–7; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (sending messages over a network, and storing
and retrieving information in memory is well-understood, routine,
conventional activity); CyberSource, 654 F.3d at 1372–73, 1375 (use of
computer to perform otherwise ineligible steps for determining fraudulent
transactions did not impart eligibility); Spec. ¶¶ 2–3 (acknowledging that
transaction alerts to mobile phones are known and conventional). Although
Appellants assert that the claims constitute a “technical solution” and
“specify how interactions with the Internet are manipulated to yield a desired
result,” Reply Br. 4–5, Appellants do not identify any unconventional
elements, and we discern none. See supra. As the Examiner finds, claim 1
recites “receiving and comparing data to make a determination regarding
fraud and providing an alert.” Ans. 5; Spec. ¶¶ 23–26.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. Appellant does not argue
any of the remaining claims separately from claim 1. See 37 C.F.R.
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§ 41.37(c)(1)(iv). We, therefore, sustain the rejection of claims 1, 2, 4, 5, 7–
9, 11, 12, 14–17, and 22–25 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 4, 5, 7–9, 11,
12, 14–17, and 22–25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED