Sharon A. Rosano et al.

Patent Trials and Appeals Board

Sep 3, 2019

13915339 - (D) (P.T.A.B. Sep. 3, 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.
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)