Sharon A. Rosano et al.Download PDFPatent Trials and Appeals BoardSep 3, 201913915339 - (D) (P.T.A.B. Sep. 3, 2019) 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. 13/915,339 06/11/2013 Sharon A. Rosano 21652-00275 5463 75564 7590 09/03/2019 DANIEL M. FITZGERALD (21652) ARMSTRONG TEASDALE LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 EXAMINER MILEF, ELDA G ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): USpatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SHARON A. ROSANO, RICHARD ROZBICKI, and TIMOTHY TUDOR HOPKINS ____________________ Appeal 2018-005837 Application 13/915,3391 Technology Center 3600 ____________________ Before JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24. Claims 2, 4, 5, 9, 11, 12, 17, 19, 20, 21, and 23 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellants identify Mastercard International Incorporated as the real party in interest. App. Br. 3. Appeal 2018-005837 Application 13/915,339 2 STATEMENT OF THE CASE Introduction Appellants generally describe the disclosed and claimed invention as follows: A method for denying a payment transaction initiated by a user using a payment card associated with a blocked account [that] . . . . includes receiving by the computing device a request to block an account number from being used in connection with payment transactions, . . . storing the account number in the memory device as a blocked account number. . . [,] receiving by the computing device a request to verify that a new payment transaction as not being associated with a blocked account number, the verification request including a candidate account number. . . [,] comparing the candidate account number with the blocked account number stored in the memory device, and denying verification of the new payment transaction when at least a portion of the candidate account number matches the blocked account number. Abstract.2 Claims 1, 8, 16, and 22 are independent claims. Claim 1 is representative of the subject matter on appeal and reads as follows: 1. A method for denying a payment transaction initiated by a user using a payment card associated with a blocked account, said method implemented by an account number blocking computer device coupled to a memory device and to a payment processor computer device, said method comprising: receiving, by the account number blocking computer device, a request from a payment card issuer to block multiple 2 Our Decision refers to the Final Office Action mailed July 12, 2017 (“Final Act.”), Appellants’ Appeal Brief filed February 8, 2018 (“App. Br.”) and Reply Brief filed May 18, 2018 (“Reply Br.”), the Examiner’s Answer mailed March 19, 2018 (“Ans.”), and the original Specification filed June 11, 2013 (“Spec.”). Appeal 2018-005837 Application 13/915,339 3 disabled payment cards from being used in connection with payment transactions, wherein the request from the payment card issuer to block the multiple disabled payment cards includes at least one bank identification number (BIN) that identifies a the multiple disabled payment cards via respective primary account numbers (PANs); storing the at least one BIN in the memory device as a blocked account identifier, thereby enabling the account number blocking computer device to block payment transactions associated with any of the multiple disabled payment cards in reference to the at least one BIN; receiving, by the account number blocking computer device, a verification request to verify a new payment transaction as not being associated with the blocked account identifier, the verification request including a candidate account identifier; determining, by the account number blocking computer device, whether at least a predetermined part of the candidate account identifier matches the blocked account identifier by comparing the candidate account identifier to the blocked account identifier; transmitting, by the account number blocking computer device, a match notification to the payment processor computer device, wherein the match notification indicates that at least the predetermined part of the candidate account identifier corresponds to the blocked account identifier and to one of the multiple disabled payment cards; and causing, by transmission of the match notification, the payment processor computer device to (i) deny the new payment transaction and (ii) transmit a denial notification to at least one of a merchant computer device, a cardholder computer device, and a computer device of the issuer. App. Br. 34–35 (Claims App’x). Appeal 2018-005837 Application 13/915,339 4 Rejections3 1. Claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception (i.e., an abstract idea) without significantly more. Final Act. 4–8. 2. Claims 1, 3, 6–8, 10, 13–16, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Patterson (US 2010/0228671 A1; Sept. 9, 2010) and Mohsenzadeh (US 8,583,549 B1; Nov. 12, 2013). Id. at 8–13. 3. Claims 22 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Patterson, Mohsenzadeh, and Klein et al. (US 2014/0114843 A1; Apr. 24, 2014) (“Klein”).4 Id. at 14. ANALYSIS We have reviewed the rejections of claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 in light of Appellants’ arguments that the Examiner erred. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments, which Appellants could have made, but chose not to make in the Briefs, are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Except where otherwise indicated in our analysis below, we adopt as our own the Examiner’s findings and reasons set forth in 3 The present Application is being examined under the AIA first inventor to file provisions. Final Act. 2. 4 The Examiner also rejected claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 under 35 U.S.C. § 112(a), for failing to comply with the written description requirement, and under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Final Act. 3–4. However, the Examiner withdrew both of these rejections. Ans. 3. Appeal 2018-005837 Application 13/915,339 5 the Final Rejection from which this appeal is taken and in the Examiner’s Answer. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. SUBJECT MATTER ELIGIBILITY An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5 The Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “‘[l]aws of nature, natural phenomena, and abstract ideas’ are not patentable.” Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). Under § 101 precedent, even if a judicial exception is recited in one or more of the claim elements, the claim may also recite additional elements that render it patent-eligible.6 The Federal Circuit has held claims eligible at the second step (Step 2B) of the Mayo/Alice framework because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the 5 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the patent-eligibility inquiry under 35 U.S.C. § 101. 6 See, e.g., Diamond v. Diehr, 450 U.S. 175, 187 (1981). Appeal 2018-005837 Application 13/915,339 6 additional elements were unconventional in combination).7 Therefore, if a claim has been determined to be directed to a judicial exception under Step 2A, we must evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).8 The USPTO recently published revised guidance in the Federal Register concerning the application of § 101.9 Under the Revised Guidance, if the Examiner determines that a claim (1) recites a judicial exception10 and (2) does not recite additional elements that integrate that exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)),11 the Examiner must consider in Step 2B whether an additional element or combination of elements of the claim: (1) “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present” (Rev. Guid. 56; see 7 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). 8 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325. (Fed. Cir. 2016). 9 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance,” or “Rev. Guid.”) (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). 10 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 11 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). Appeal 2018-005837 Application 13/915,339 7 also MPEP § 2106.05(d)); or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present” (Rev. Guid. 56). As explained in the February 2018 Berkheimer decision by the Federal Circuit, it is important to note that “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). In accordance with existing Step 2B guidance and in response to Berkheimer, the USPTO issued new guidelines for examining patent applications under Step 2B of the Mayo/Alice framework. See Robert W. Bahr, Changes in Examination Procedures Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 1–5 (2018) (“Berkheimer Memo”); see also MPEP § 2106.05(d). In particular, the Berkheimer Memo states that an Examiner’s finding that an additional element (or combination of elements) or its recited functions is well-understood, routine, and conventional requires express written support in the form of one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well- understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the Appeal 2018-005837 Application 13/915,339 8 well-understood, routine, conventional nature of the additional element(s) . . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). Berkheimer Memo 3–4. If—and only if—the Examiner provides such express written support for the § 101 rejection may the claim be determined ineligible under Step 2B and rejected for lack of subject matter eligibility. See id. As an initial matter, we agree with the Examiner that, with respect to Steps 1 and 2A of the Mayo/Alice framework, claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 are “directed to” an abstract idea under 35 U.S.C. § 101. See Final Act. 4–8; Ans. 3–10. For the reasons discussed below, however, we are persuaded that the Examiner errs in failing to provide sufficient evidence under Step 2B of the Mayo/Alice framework that demonstrates the well- understood, routine, and conventional nature of the additional element(s) of the claims. In relevant part, the Examiner’s Final Rejection asserts that: [t]he computer device, the memory device and the payment processor computer device are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to transmit information through an unspecified interface does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the Appeal 2018-005837 Application 13/915,339 9 additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Final Act. 6–7. In response to Appellants’ arguments, the Final Rejection also asserts that “that the finding of the additional elements, i.e., computer devices, and a memory device are ‘merely conclusory’ rather than articulated,” the Examiner reiterates that “[t]he claimed invention fails to provide an implementation that is significantly more than the abstract idea” and “further note[s] that upon review of the specification, the Examiner is unable to ascertain how the claims use the computer devices and the memory device in a manner other than their conventional generic use.” Id. at 17. In the Appeal Brief, Appellants dispute among other things, the Examiner’s assertions that the additional elements recited in the claims are well-understood, routine and conventional. App. Br. 26–27. In particular, Appellants argue that [t]he rejection purports to have considered ‘additional elements’ and finds them as lacking ‘significantly more’ in the present Office Action in evaluating Step 2B, but the Office has clearly undertaken no specific analysis of the pending claims in this regard. Such treatment is believed to be ‘merely conclusory’ rather than articulated reasoning as required to assess patent eligibility. App. Br. 26. Appellants also assert that “[w]ith respect to ‘generic computer functions’ or ‘conventional computer implementation’, this without more cannot support the § 101 rejection. . . . As the present rejection is generally dismissive of generic computer components per se, the rejection is unsustainable as articulated.” Id. at 26–27. In the Examiner’s Answer, the Examiner responds that “unlike rejections under 35 U.S.C. § 102 and § 103 which are evidenced based, a Appeal 2018-005837 Application 13/915,339 10 rejection under 35 U.S.C. § 101 is not evidenced based but rather is a matter of law and as such, no evidence is required.” Ans. 4. The Examiner adds that [l]imitations which describe only procedure or structure common to every means of accomplishing a given result, cannot provide an inventive concept. In other words, limitations that simply comprise the abstract concept are not inventive. . . . For example, a claim cannot become eligible by reciting that physical automation is accomplished by a machine or that logical automation is accomplished by a computer . . . because physical automation requires a machine and logical automation requires a computer. Because such elements cannot restrict a claim to a particular way of automating, recitation of a machine or computer to lend speed and efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility. Ans. 6–7 (citations and internal quotations omitted). In the Reply Brief, Appellants respond by citing Berkheimer and stating that, “[a]s it stands, no evidence has been cited by the Office to establish the required fact that the claimed combination is well-understood, routine and conventional as opposed to significantly more than an abstract idea.” Reply Br. 4 (citing Berkheimer, 881 F.3d at 1368).12 Accordingly, Appellants assert that “[s]ince the factual basis for the conclusion made by the Office is clearly in dispute, the Office cannot carry its burden of 12 See also id. at 5 (“The Office has not provided any documentary evidence or any findings to support its conclusion that the claimed combination is well-understood, that the claimed combination is routine, or that the claimed combination is conventional to support the conclusion that the present claims do not amount to significantly more than an abstract idea under Step 2A of the Alice analysis.”). Appeal 2018-005837 Application 13/915,339 11 production to establish a prima facie case of unpatentability of the claimed invention without evidentiary support.” Id. (citing MPEP § 2144.03). We agree with Appellants that the Examiner has not provided sufficient evidence, as required by Berkheimer and explained by the Berkheimer Memo, to support the assertion under Step 2B of the Mayo/Alice framework that each of the additional elements of the claims—i.e., the account number blocking computer device, memory device, payment processor computer device, network-based system, and computer-readable storage media—and their recited functions are well-understood, routine, and conventional. Thus, upon considering the Examiner’s § 101 rejection in view of the Federal Circuit’s decision in Berkheimer, the Berkheimer Memo, and Appellants’ arguments, we are constrained on this record to reverse pro forma the Examiner’s rejection of claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 under 35 U.S.C. § 101 because the Step 2B analysis of the rejection is not properly supported by evidence that each of the additional elements of the claims is “well-understood, routine, and conventional.” Nevertheless, upon review of Appellants’ claims in view of the Specification, we are unable to find an inventive concept such as a specific limitation or combination of limitations that are not well-understood, routine, or conventional activity. Instead, the Specification appears to describe the recited computing elements and functionality at a high level of generality and in no more than well-understood, routine and conventional terms. See, e.g., Spec. ¶¶ 26, 31–34, 36–39, 46–56, 72, 75, 76; Figs. 2, 4, 5. In the event of further prosecution, we leave to the Examiner any further explanation as to why the additional computing elements and functions of the claims are well-understood, routine, and conventional— using the Appeal 2018-005837 Application 13/915,339 12 Specification or any other accepted form of evidence in view of Berkheimer and the Berkheimer Memo. Because our analysis deviates from the Examiner’s rejection, we designate and enter it as a new ground of rejection under 35 U.S.C. § 101. OBVIOUSNESS CLAIMS 1, 3, 6–8, 10, 13–16, AND 18: OBVIOUSNESS OVER PATTERSON AND MOHSENZADEH Appellants present a series of arguments for the § 103 rejection of claim 1. App. Br. 29–31. Appellants do not argue the § 103 rejections of claims 2, 3, 6–8, 10, 13–16, and 18 separately with particularity beyond the arguments advanced for claim 1. Id. Therefore, we decide the appeal of this § 103 rejection on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). In rejecting claim 1, the Examiner finds Patterson teaches all of the limitations, except that Patterson fails to explicitly disclose “that the primary account number (PAN) includes the BIN number[,] storing the at least one BIN in the memory device as a blocked account identifier. . . . [and] blocking payment transactions associated with multiple payment cards in reference to the at least one BIN” (Final Act. 9–10). See id. at 8–12 (citing Patterson ¶¶ 7, 9, 22, 30, 54, 56, 62, 67, 69, 70–74). To address these elements, the Examiner cites Mohsenzadeh as evidence that “[i]t is notoriously old and well known in the art of credit card payment transactions that a bank identification number (BIN) is the first several digits of a credit card number” (id. at 9, citing Mohsenzadeh 8:66–9:2) and finds that Mohsenzadeh also teaches “storing the at least one BIN in the memory Appeal 2018-005837 Application 13/915,339 13 device as a blocked account identifier” (id.at 9–10, citing Mohsenzadeh 3:52–55, 14:45, 14:49–15:16). The Examiner concludes [i]t would have been obvious . . . to include in the system and method for account level blocking of Patterson . . . that the primary account number comprises a BIN as is . . . as evidenced by Mohsenzadeh and blocked BIN stored on [sic] a table in a storage device since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Final Act. 10. The Examiner additionally finds that Mohsenzadeh teaches “blocking payment transactions associated with multiple payment cards in reference to the at least one BIN” (id. at 10, citing Mohsenzadeh 14:40–48) and concludes that “[i]t would have been obvious . . .to modify Patterson to explicitly disclose that . . . BINs on a blocking list may be . . . associated with a plurality of cards as taught by Mohsenzadeh in order to block processing of cards having certain BINs.” Id. Appellants dispute the Examiner’s interpretation of the claim limitation “multiple disabled payment cards” as “multiple payment cards” because the Examiner has improperly read the word “disabled” out of the claim. App. Br. 29. Even if Appellants were correct, we are not persuaded the Examiner errs because the proposed combination of references, as cited by the Examiner, teaches or at least fairly suggests a system configured to identify and block “multiple disabled payment cards” as recited in claim 1. In particular, the Examiner finds that Patterson discloses an account level blocking system in which a card issuer may specify blocking criteria that may be stored and used to block a set of cards involved in transactions. Final Act 8–9 (citing Patterson ¶ 22); see also Ans. 8 (additionally citing Appeal 2018-005837 Application 13/915,339 14 Patterson ¶¶ 7, 9). The Examiner further finds that Patterson’s blocking system may compare a list of lost or stolen cards with the account number in a transaction clearing request to determine if there is a match and, if so, deny the transaction clearing request. Final Act. 9, 11–12 (citing Patterson ¶¶ 54, 69–70, 74); see also Ans. 8–9. These disclosures of Patterson show a system configured to block cards, independent of their activity status, from being used to conduct a transaction so long as their account numbers match stored blocking criteria. In other words, regardless of whether a card were lost, stolen, disabled, or active, if a match were determined, Patterson’s blocking system would operate in the same way, using the same functionality, to block the card. Because Patterson’s blocking system is readily applicable to a card independent of its activity status, we find the cited disclosures of Patterson, in combination with those of Mohsenzadeh, teach or at least fairly suggest identifying and blocking “multiple disabled payment cards” as claimed. In view of the foregoing, we are not persuaded by Appellants’ argument that the Examiner errs. Appellants’ remaining Appeal Brief arguments for claim 1 center on purported deficiencies of Mohsenzadeh. App. Br. 30–31. For the reasons stated below, Appellants’ arguments do not persuade us that the Examiner errs. First, Appellants argue Mohsenzadeh “is generally directed to the problem of different interchange fees being assessed by different card networks” which “has no logical relation to the present invention . . . , and accordingly the citation of Mohsezadeh as a whole is inapposite to the presently claimed subject matter.” App. Br. 30; Reply Br. 12. We are not persuaded by Appellants’ argument. Appeal 2018-005837 Application 13/915,339 15 At most, Appellants have shown that Mohsenzadeh relates to a different problem than Appellants’ invention. But to show that a reference is nonanalogous art and, thus, unqualified for obviousness purposes, Appellants must show not only that the reference is not reasonably pertinent to the particular problem with which the inventor is involved, but also that the reference is from a different field of endeavor. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”). Appellants have not made such a showing. Moreover, the Examiner finds, and we agree, that Mohsenzadeh and Appellants’ claimed invention are analogous art at least because they are from the same field of endeavor—i.e., managing payment transactions. Ans. 9, see also id. at 3–4; compare, e.g., Mohsenzadeh, Abstract, with Spec. ¶ 1. Second, Appellants argue that “[t]he decision to block cards in the context of Mohsezadeh . . . would not be made by a card issuer, but is instead made from the perspective of a merchant that would prefer not to accept a payment card of certain issuers in favor of cards having lower fees in order to achieve the highest cost savings possible.” App. Br. 30–31. In a similar vein, Appellants submit that Mohsenzadeh has no capability to detect and deny fraudulent transactions associated with discontinued BINs and disabled cards. Id. at 31. We are not persuaded of error because Appellants’ arguments are not responsive to the Examiner’s rejection and attack the references individually, Appeal 2018-005837 Application 13/915,339 16 whereas the Examiner’s rejection (Final Act. 8–12) relies on the combined teachings of Patterson and Mohsenzadeh. Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner finds, and we agree, Patterson teaches an account level blocking system in which a card issuer specifies blocking criteria (e.g., account numbers) used to block a set of cards (e.g., lost or stolen cards) from conducting a transaction. See, e.g., Final Act 8–9, 11–12 (citing Patterson ¶¶ 22, 54, 69–70, 74); see also Ans. 8–9. The Examiner cites Mohsenzadeh (1) as evidence that it was old and well known that a BIN represents the first several digits of a credit card account number (i.e., PAN) and (2) for the concepts of storing the BIN and blocking payment transactions associated with cards in reference to the BIN. See Final Act. 9– 10 (citing Mohsenzadeh 3:52–55, 8:66–9:2, 14:40–15:16). And as discussed above, the Examiner provides specific rationales to combine the teachings of Patterson with those of Mohsenzadeh to arrive at the claimed invention. See id. at 10. Appellants do not persuasively rebut the findings, reasoning, and conclusion of the Examiner. Further, to the extent Appellants are arguing that one of ordinary skill in the art would be forced to combine the prior art systems into a single system that includes all of their disclosed elements, we disagree. One of ordinary skill in the art is “a person of ordinary creativity, not an Appeal 2018-005837 Application 13/915,339 17 automaton,” KSR, 550 U.S. at 421, and accordingly would recognize that it would be unnecessary to combine every aspect of each disclosed system into a single system. Rather, one of ordinary skill in the art would “be able to fit the teachings of the [cited art] . . . together like pieces of puzzle.” Id. at 420. In the Reply Brief, Appellants dispute the Examiner’s finding that the PAN includes a BIN in Patterson because it conflicts with Appellants’ Specification, which discloses a first embodiment wherein the account number to be blocked may be a PAN, and a second embodiment wherein the account number to be blocked may be a BIN. Reply Br. 11 (citing Spec. ¶¶ 58, 63, 65). We are not persuaded by Appellants’ argument. Having the BIN represent the first several numbers of a PAN would not necessarily conflict with Appellants’ cited disclosures. For example, assume 1234 5678 9999 8888 is the PAN, with the first 8 digits of the PAN, 1234 5678, representing the BIN. Accordingly, in Appellants’ first embodiment, the account number to be blocked would be the PAN, 1234 5678 9999 8888; in Appellants’ second embodiment, the account number to be blocked would be the BIN, 1234 5678. We see no reason why such an implementation would not comport with Appellants’ Specification. Nor do Appellants identify a disclosure in Appellants’ Specification that would preclude it. Appellants further argue that the BIN blocking of Appellants’ invention is not “account level blocking” in the context of Patterson, which relates to blocking lost or stolen cards by individual account number. Reply Br. at 12. Appellants assert that an issuer in Patterson would not block all PANs having the same BIN number because it would necessarily block cards that are neither lost nor stolen. Id. Appeal 2018-005837 Application 13/915,339 18 At most, Appellants have shown that there may be differences between Patterson and the claimed invention, but this is insufficient to rebut a prima facie case of obviousness over a combination of references. See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992); Keller, 642 F.2d at 425 (“The test for obviousness is not . . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Further, Appellants’ assertion that Patterson would not block all PANs having the same BIN number is merely speculative and unsupported by fact. Lawyer’s arguments that amount to mere conjecture or speculation unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).13 Moreover, Appellants do not present any persuasive evidence that Patterson’s account level blocking system could not be modified such that it could be applied to BINs, as evidenced by Mohsenzadeh. In other words, Appellants do not point to any evidence of record that the combination would be “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 13 Arguments of counsel cannot take the place of factually supported objective evidence. In re Huang, 100 F.3d 135, 139−140 (Fed. Cir. 1996). Attorney argument is not evidence, In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974), nor can it take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appeal 2018-005837 Application 13/915,339 19 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007)). Thus, we are not persuaded that Patterson’s disclosure of embodiments that block PANs of lost or stolen cards would foreclose Patterson’s applicability or compatibility with other blocking arrangements, e.g., BIN blocking. For the foregoing reasons, we sustain the Examiner’s rejection of claims 1, 3, 6–8, 10, 13–16, and 18 under 35 U.S.C. § 103. CLAIMS 22 AND 24: OBVIOUSNESS OVER PATTERSON, MOHSENZADEH, AND KLEIN With respect to claims 22 and 24, Appellants assert the Klein reference “relates to the field of malware detection and prevention and specifically to a method of detecting a fraudulent transaction of money transfer to a mule account.” App. Br. 32; Reply Br. 13–14. Accordingly, Appellants argue “Klein addresses a fundamentally different type of fraud than the Appellants’[] invention, and bears no apparent logical connections to the teaching of Mohsezadeh [sic].” App. Br. 32; Reply Br. 14. According to Appellants, “[w]hen the cited art does not acknowledge the problem to which the present invention is directed, it cannot be reasonably characterized as suggesting the solution.” Reply Br. 14. We are not persuaded by Appellants’ arguments. At most, Appellants have shown that there may be differences between Klein, Mohsenzadeh, and the claimed invention, but this is insufficient to rebut a prima facie case of obviousness over a combination of references. See Beattie, 974 F.2d at 1312–13; Keller, 642 F.2d at 425. Moreover, we disagree with Appellants that the cited prior art must acknowledge the same problem with which the present invention is directed. As discussed above, to show that a reference is Appeal 2018-005837 Application 13/915,339 20 nonanalogous art and, thus, unqualified for obviousness purposes, Appellants must show not only that the reference is not reasonably pertinent to the particular problem with which the inventor is involved, but also that the reference is from a different field of endeavor. Klein, 647 F.3d at 1348. Appellants have not made such a showing. Moreover, Klein and Appellants’ claimed invention are analogous art at least because they are from the same field of endeavor—i.e., managing payment transactions, for example, by detecting fraudulent transactions. Compare, e.g., Klein ¶ 1, with Spec. ¶ 1. For the foregoing reasons, we sustain the Examiner’s rejection of claims 22 and 24 under 35 U.S.C. § 103. CLAIMS 1, 3, 6–8, 10, 13–16, 18, 22, and 24: NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112(A) Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection. Specifically, we reject claims 1, 3, 6,–8, 10, 13–16, 18, 22, and 24 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Section 112(a) states, in relevant part: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . . 35 U.S.C. § 112(a). The record indicates that Appellants’ Specification, as filed on June 11, 2013, states that [i]n at least one embodiment, the account number to be blocked may be a PAN. For example, when issuer 30 or cardholder 22 decides to disable an individual payment card, the PAN Appeal 2018-005837 Application 13/915,339 21 associated with the payment card may be sent from client systems 114 or cardholder computing device 121 to server system 112. In other embodiments, the account number to be blocked may be a BIN. When issuer 30 decides to disable multiple payment cards that share a single BIN, the BIN to be blocked may be sent to the account number blocking module 117 via server system 112 from one of client systems 114. Spec. ¶ 58. The Specification, including the claims, as originally filed, does not appear to state that the payment card or multiple payment cards are “disabled” prior to blocking. On May 23, 2017, however, Appellants amended independent claims 1, 8, 16, and 22 to recite functions of receiving a request to block, identifying, storing, and transmitting, with respect to “multiple disabled payment cards.” Amendment filed May 23, 2017 (“Amendment”) 2–9. On July 12, 2017, the Examiner rejected claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 2–3. The Examiner explained that paragraph 58 of the Specification “fails to describe blocking multiple disabled payment cards, i.e., blocking multiple payment cards that are already disabled.” Id. at 3 (citing Spec. ¶ 58). In the Appeal Brief, Appellants assert that there is adequate written description support for this feature in the Specification for the following reasons: “[l]ogically, the disabling of a BIN by an issuer necessarily disables multiple individual payment cards that share the disabled BIN. The BIN to be blocked (the disabled bin) that is sent to the account number blocking module, causes transactions to be denied for the multiple payment cards that are disabled.” App. Br. 21. In response, the Examiner withdrew the rejection in the Answer. Ans. 3. Appeal 2018-005837 Application 13/915,339 22 It is well-settled that new or amended claims introducing recitations that are not supported by the original disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required “to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement (i.e., no requirement that the same terms be used verbatim), newly added claim recitations must be supported by the original disclosure, either expressly, implicitly, or inherently. The fundamental factual inquiry is whether the specification conveys, with reasonable clarity to those skilled in the art, that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64. Based on our review of the record, we determine that Appellants’ original Specification did not show or describe “multiple disabled payment cards” as recited in the claims. A plain reading of this term is multiple payment cards that have already been “disabled” prior to undergoing any further operations. The only paragraph of Appellants’ original Specification that mentions the word “disable” describes blocking multiple payment cards in order to “disable” them, but it does not disclose that the cards had already been disabled prior to, for example, receiving a request to block them. See Spec. ¶ 58. We decline to adopt Appellants’ strained interpretation of the Appeal 2018-005837 Application 13/915,339 23 claim language at issue because it is not consistent with a plain reading of the claim in view of the Specification. Thus, for the foregoing reasons, we enter a new ground of rejection, in which we reject claims 1, 8, 16, and 22 under 35 U.S.C. § 112(a), as failing to comply with the written description requirement, because the claim recites “multiple disabled payment cards.” For similar reasons, we reject claims 3, 6, 7, 10, 13–15, 18, and 24, which depend therefrom and include the same deficiencies. DECISION We affirm the Examiner’s rejections of claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24 under 35 U.S.C. § 103. We reverse pro forma the Examiner’s rejection of claims 1, 3, 6–8, 10, 13–16, and 18, 22, and 24 under 35 U.S.C. § 101 and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 101. We enter a NEW GROUND OF REJECTION under 35 U.S.C. § 112(a), as failing to comply with the written description requirement, for Claims 1, 3, 6–8, 10, 13–16, 18, 22, and 24. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be Appeal 2018-005837 Application 13/915,339 24 remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the MANUAL OF PATENT EXAMINING PROCEDURE § 1214.01 (9th Ed., Rev. 08.2017, Jan. 2018). Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation