Ex Parte Blinov

Patent Trial and Appeal Board

Dec 20, 2018

13600365 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/600,365 08/31/2012
98665 7590 12/21/2018
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
FIRST NAMED INVENTOR
Mikhail Blinov
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P00825-US-UTIL 8148
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
12/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKHAIL BLINOV
Appeal2017-003895
Application 13/600,365 1
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and HUNG H. BUI,
Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 8-13 and 20-34. Claims 1-7 and 14--19
are cancelled. Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellant, the real party in interest is MasterCard
International Incorporated. App. Br. 3.
2 Our Decision refers to Appellant's Appeal Brief ("App. Br.") filed July
26, 2016; Reply Brief ("Reply Br.") filed January 3, 2017; Examiner's
Answer ("Ans.") mailed October 31, 2016; Final Office Action ("Final
Act.") mailed November 23, 2015; and original Specification ("Spec.") filed
August 31, 2012.
Appeal2017-003895
Application 13/600,365
STATEMENT OF THE CASE
Appellant's Invention
Current online transactions typically require a consumer to order and
purchase goods and make payment with a credit or debit card with "full card
details to the online merchant" and the "merchant carries out an
authorization request for the stated amount, obtains an authorization
response, and if this is affirmative, delivers the goods" ordered, and then the
"merchant obtains the stated amount via a clearing and settlement process."
Spec. 1:7-12; 11:24--28. However, such online transactions are vulnerable
to "improper use of the consumer's card details by unscrupulous merchants
and/or third parties who have obtained the details in an improper manner."
Spec. 1:13-16.
As such, Appellant proposes providing the merchant with "a special
'credit only' payment card account" that "has all the properties of a normal
card amount except that ... it only be used for credit, not debit, transactions
(i.e., transferring money to it, not taking money from it" (Spec.12:29-31)
and that can be given "to the consumer together with the amount of the order
and a reference number [ assigned] for the particular purchase" via a payment
network, shown in Figure 4 (Spec. 14:13-15) so that the consumer can "pay
for goods by transferring money to the merchant's [credit-only] card instead
of providing details of the consumer's [credit] card to the merchant" (Spec.
11 :20-22) by way of the consumer approving "the purchase in a separate
interaction with his or her bank" (Spec. 12: 11-12) and "the consumer's bank
... sends a payment guarantee to the merchant's bank." (Spec. 15:25-26).
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Appeal2017-003895
Application 13/600,365
Appellant's Figure 4 is reproduced below for illustration purposes.
·:tl~ Gf.~FQ~T-.-C:-i\lt·
_..,.. _ ___..__ _ __, t\~.N- ,t..;r},:t():JNr,
< "-------- . . .
·x·,xnx,,,n.,,,.0..),-
.......... ----- ~JD G~}.~\RAf•,fift=:
f'/'..Y~j[~.J·s·
GONSUtvlEH'.S ----~
8<"\N1{4Q@. 1-----~--1 MERCHANT'S
CARD 4ij;)
Figure 4 shows a data flow diagram for online transactions using merchant's
"credit-only" payment card account between (1) consumer 404 and
consumer's bank 408, and (2) merchant 406 and merchant's bank 410.
Illustrative Claim
Claims 8, 20, 26, and 27 are independent. Representative claim 8 is
reproduced below with disputed limitations in italics:
8. A method comprising the steps of:
[1] assigning, by a merchant's bank, to said merchant
an account number of a credit only payment card account;
[2] obtaining, by said merchant's bank from a
consumer's bank, a guarantee that said consumer will cause a
total transaction amount of an on-line transaction to be credited
to said credit-only payment card account number of said
merchant, said guarantee being associated with a reference
number of said on-line transaction; and
[3] dispatching, by said merchant's bank, said
guarantee to said merchant.
App. Br. 27 (Claims App'x) (bracketing added).
3
Appeal2017-003895
Application 13/600,365
EXAMINER'S REJECTIONS and REFERENCES
(1) Claims 8-13 and 20-27 [sic, claims 8-13 and 20-34] stand
rejected under 35 U.S.C. § 101 because the claimed invention is directed to a
patent-ineligible "abstract idea" without significantly more. Final Act. 4--5;
Ans. 15-17.
(2) Claims 8, 13, 20, and 25-28 stand rejected under
35 U.S.C. § I03(a) as being obvious over O'Leary et al. (US 2003/0140004
Al; published July 24, 2003; "O'Leary"), Nappi (US 8,010,451 Bl; issued
Aug. 30, 2011 ), and Bhinder (US 2011/0302083 Al; published Dec. 8,
2011 ). Final Act. 6-9.
(3) Claims 9, 21, and 30 stand rejected under 35 U.S.C. § I03(a) as
being obvious over O'Leary, Nappi, Bhinder, and Frid-Nielsen et al. (US
8,116,288 B2; issued Feb. 14, 2012; "Frid-Nielsen"). Final Act. 9-10.
(4) Claims 10 and 22 stand rejected under 35 U.S.C. § I03(a) as
being obvious over O'Leary, Nappi, Bhinder, and Oaks et al. (US
2010/0094671 Al; published Apr. 15, 2010; "Oaks"). Final Act. 10-11.
(5) Claims 11, 12, 23, 24, and 29 stand rejected under
35 U.S.C. § I03(a) as being obvious over O'Leary, Nappi, Bhinder, and
Sobek (US 2005/0080728 Al; published Apr. 14, 2005). Final Act. 11-13.
(6) Claims 31-34 stand rejected under 35 U.S.C. § I03(a) as being
obvious over O'Leary, Nappi, Bhinder, Frid-Neilsen, and Sobek. Final Act.
13-17.
4
Appeal2017-003895
Application 13/600,365
ANALYSIS
Patent-Eligible Subject Matter
To determine whether subject matter is patent-eligible under§ 101,
the Supreme Court has set forth a two part test "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. If the claims
are directed to eligible subject matter, the inquiry ends. Thales Visionix Inc.
v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the
second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73). "'[W]ell-
understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
subject matter. Id. at 2359 (quoting Mayo, 566 U.S. at 73).
5
Appeal2017-003895
Application 13/600,365
In rejecting claims 8-13 and 20-34 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to the abstract idea of
"allowing purchasing by a crediting a merchant's card" which is "[a]
fundamental economic practice[]." Final Act. 5; Ans. 8. The Examiner also
determines the additional elements in the claims do not amount to
significantly more than the abstract idea itself because these claims: (1) "do
not effect an improvement to another technology or technical field;" (2) "do
not amount to an improvement to the functioning of a computer itself;" (3)
"do not move beyond a general link of the use of an abstract idea to a
particular technological environment"; ( 4) "amount to nothing more than
requiring a generic computer system to merely carry out the abstract idea
itself;" and (5) "are nothing more than the instruction to implement the
abstract idea in a particular, albeit well-understood, routine, and
conventional technological environment." Final Act. 5.
At the outset, Appellant argues the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because (1) the
Examiner "oversimplifies and mischaracterizes" the claims and (2) the
Examiner fails to provide any evidentiary support for the allegation that the
claims are directed to an abstract idea. App. Br. 8-10 (quoting Ex parte
Renald Poisson, Appeal No. 2012-011084, p. 5 (PTAB 2015); Reply Br. 9-
12.
Appellant's arguments are not persuasive. First, patent eligibility
under 35 U.S.C. § 101 is a question of law that is reviewable de nova (see
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)). In
particular, the question of whether a claim is directed to an abstract idea
under Alice step 1 is still a question of law even after Berkheimer v. HP Inc.,
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Appeal2017-003895
Application 13/600,365
881 F.3d 1360, 1366 (Fed. Cir. 2018). 3 See, e.g., In re Wang, 737 Fed.
App'x 534, 535 (Fed. Cir. 2018); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017); Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir. 2015) ("We review questions
concerning compliance with the doctrinal requirements of§ 101 of the
Patent Act (and its constructions) as questions of law, without deference to
the trial forum."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362 (Fed. Cir. 2015) ("Patent eligibility under 35 U.S.C. § 101 is an issue
of law reviewed de novo."); Prometheus Labs., Inc. v. Mayo Collaborative
Servs., 628 F.3d 1347, 1353 (Fed. Cir. 2010) ("Whether a patent claim is
directed to statutory subject matter is a question of law that we review de
nova."), rev 'don other grounds, Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66 (2012); In re Bilski, 545 F.3d 943, 951 (Fed. Cir.
2008) ( en bane) ("Whether a claim is drawn to patent-eligible subject matter
under § 101 is an issue of law that we review de novo. "), a.ff' din part, rev' d
in-part, Bilski v. Kappas, 561 U.S. 593 (2010). We are aware of no
controlling authority that requires the Office to provide factual evidence to
support a determination that a claim is directed to an abstract idea.
Second, Appellant's reliance on Ex parte Poisson is misplaced. See
App. Br. 9--10 (citing Appeal 2012-011084, slip op. at 5) (PTAB Feb. 27,
3 In Berkheimer, the Federal Circuit held that"[ w ]hether something [(i.e.,
additional elements beyond the abstract idea)] is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination." See Berkheimer, 881 F.3d at 1369. However, that question
is not at issue in this case, and Berkheimer is limited to Alice step 2 of the
two-step analysis, and is only applicable after a determination is made that a
patent claim is directed to an abstract idea under Alice step 1.
7
Appeal2017-003895
Application 13/600,365
2015). Non-precedential Board decisions, including Ex Parte Poisson, are
not binding, and are typically limited to the facts of those cases. Moreover,
the Board did not hold in Ex parte Poisson that evidence, beyond that
contained in the application itself, must be provided to support the
Examiner's determination that the claims are directed to an abstract idea.
There is simply no such requirement. Instead, the Federal Circuit has
repeatedly noted that "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus,
all that is required of the Office is that it set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. Id., see also Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when [the]
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.").
Appellant does not contend that the Examiner's rejection under 35
U.S.C. § 101 cannot be understood or that the Examiner's rejection,
otherwise, fails to satisfy the notice requirements of 35 U.S.C. § 132.
Indeed, Appellant's understanding of the rejection is clearly manifested by
their response as set forth in the briefs.
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Appeal2017-003895
Application 13/600,365
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellant argues the
claims are not directed to an abstract idea because: (1) "'allowing
purchasing by crediting a merchant's card on a computer,' and especially
doing so in the specific manner recited in the claims (e.g., implementing 'a
credit-only payment card account'), is not 'a fundamental economic practice
long prevalent in our system of commerce"' like the claims in Bilski v.
Kappas, 561 U.S. 593 (2010) and Alice; and (2) the claims similar or
analogous to the claims in Diamond v. Diehr, 450 U.S. 175 (1981) because
Appellant's claims "improve[] an existing technological process" and, as
such, are patent eligible. App. Br. 10-12.
Appellant's arguments are not persuasive. First, we note the Supreme
Court's decisions in Bilski and Alice is not limited to those "business
method" concepts that are "fundamental and long prevalent" such as "the
risk hedging claims of Bilski and the intermediate settlement concept at issue
in Alice," as Appellant argues. App. Br. 10; Reply Br. 11-12. Rather, the
Federal Circuit has identified numerous examples of "business method"
concepts as "abstract ideas that are not fundamental, long prevalent, or
concepts that have been in use for an extensive period of time." See PTO's
examples located at https://www.uspto.gov/ sites/ default/files/ documents/ieg-
iuly-2015-qrs.pdf.
Second, Appellant's reliance on Diehr is misplaced because Diehr is
not the appropriate authority for this case and does not address claims
directed to "a fundamental economic practice" as an abstract idea similarly
to Appellant's claims. For example, the Supreme Court in Diehr held that a
computerized process for curing synthetic rubber into a rubber product -
9
Appeal2017-003895
Application 13/600,365
the process including several steps reciting the use of a well-known
mathematical formula and a programmable digital computer- is a patent-
eligible "process" under 35 U.S.C. § 101.
Diehr's Figure 1 is representative of U.S. Patent No. 4,344,142
("Diehr' s '142 patent") titled "Direct Digital Control of Rubber Molding
Presses" as reproduced below:
r-·------------ARRHENIUS REACTION ACTUAL MOLD
CONSTANTS FOR COMPOUi'lD I TEMPERATURE
EVERY 10 SECONDS
• '
IDATA STORAGE: :; COMPUTER :
INPUT SIGNAL TO START
INTERIM TIMING IN COMPUTER
j CLOSE MOLD I
.1 MANUALLY
FIG. 1
·-·
COMPARES CALCULATED CURE
TIME WITH ELAPSED CURE
, TIME EVERY SECOND
I ·-·-
ACTUATES MOLD OPENING
- WHEN CALCULATED CURE
TIME EQUALS ELAPSED
CURE TIME
--~---------------i
CONTROLS MOLD PL.ATEN
TEMPERATURE WITH
PROPOR.TIONAL CONTROL
ALGORITHM
As shown in Diehr' s Figure 1, the process of curing synthetic rubber
monitors the temperature of a mold inside a press, and uses a well-known
mathematical formula (i.e., the Arrhenius equation) to calculate the required
cure time based on the measured temperature and to determine when to open
the press and remove the cured, molded rubber, as recited in Diehr's claims.
'142 patent, 2:17-37, 3:29-4:5. In other words, Diehr's claim requires a
practical application of such a mathematical algorithm, i.e., using a
mathematical algorithm in the context of a molding press to transform
synthetic rubber into cured rubber products.
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Application 13/600,365
The Supreme Court recognized that (1) mere inclusion of an "abstract
idea" in a process does not make the process patent-ineligible, and (2) even
if an "abstract idea" (i.e., mathematical algorithm or formula embedded in a
process) is unpatentable, the overall claimed process - taken as a whole and
resulting in a physical and chemical transformation from synthetic rubber to
cured, molded rubber - falls within the scope of patentable subject matter.
See Diehr, 450 U.S. at 183-89.
In contrast to Diehr, Appellant's claims and Specification are directed
to "electronic payment systems" which provide a merchant with "a special
'credit only' payment card account" that can be given "to the consumer
together with the amount of the order and a reference number [ assigned] for
the particular purchase" via a payment network, shown in Figure 4 (Spec.
12:20-24, 13:25-29) so that the consumer can "pay for goods by
transferring money to a merchant's [credit-only] card instead of providing
details of the consumer's [credit] card to the merchant" (Spec. 11:20-22;
12:3--4) by way of the consumer approving "the purchase in a separate
interaction with his or her bank" (Spec. 12: 11-12) and "the consumer's bank
[] sends a payment guarantee to the merchant's bank." (Spec. 15:25-28).
Appellant's Figure 4 shows online transactions using merchant's
"credit-only" payment card account between (1) consumer 404 and
consumer's bank 408, and (2) merchant 406 and merchant's bank 410, as
reproduced below for illustration purposes.
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Appeal2017-003895
Application 13/600,365
4 l-i CP[D~T·.·C:N~ ··t
__ __..__ _ __,, ~AN. t--;r~1e1u~(r,
CONS.l)tvlER'S , -"--.;:.-
8ANK, '.;'tQ.{l
r..;:JtFfJ{f}icr::- Nr:~. <------------ l\,W:::RCH/1.NT 406
Figure 4 shows a data flow diagram for online transactions using merchant's
"credit-only" payment card account between (1) consumer 404 and
consumer's bank 408, and (2) merchant 406 and merchant's bank 410.
A more appropriate authority for this case is (1) Bilski where the
Supreme Court unanimously held that Bilski 's method of hedging risk in
commodities trading is "a fundamental economic practice long prevalent in
our system of commerce" and, as such, is a patent-ineligible "abstract idea";
and (2) Alice where the Supreme Court also held that Alice's "process"
claims, like Bilski 's claims, recite a patent-ineligible "abstract idea" of
intermediated settlement risk management - "a fundamental economic
practice long prevalent in our system of commerce," i.e., "a building block
of the modem economy." Alice, 134 S. Ct. at 2357, 2356.
Similar to the Supreme Court's decisions in Bilski and Alice, the
Federal Circuit case on point is buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1354 (Fed. Cir. 2014) where the Federal Circuit held that patent
12
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Application 13/600,365
claims relating to a guaranty service for online transactions is a patent-
ineligible "abstract idea" under § 101.
Based on Appellant's claims and Specification, we agree with the
Examiner that the claims are directed to an abstract idea of "allowing
purchasing by a crediting a merchant's card" which is considered "a
fundamental economic practice." Final Act. 5; Ans. 16. Such activities are
squarely within the realm of abstract ideas. Online transactions, whether by
way of a consumer's credit or debit card (as commonly available) or by way
of crediting a merchant's "credit-only" card account (as disclosed by
Appellant's invention) is a fundamental business practice in our system of
commerce, like (1) the risk hedging in Bilski; (2) the intermediated
settlement in Alice; (3) verifying credit card transactions in CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011);
( 4) guaranteeing online transactions in buySAFE; ( 5) distributing products
over the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014 ); ( 6) determining a price of a product offered to a purchasing
organization in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306
(Fed. Cir. 2015); and (7) pricing a product for sale in OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Online transactions,
whether by way of crediting a merchant's "credit-only" card account is also
a building block of a market economy and, like risk hedging and
intermediated settlement, is an "abstract idea" beyond the scope of§ 101.
See Alice, 134 S. Ct. at 2356.
Separately, we note Appellant's claims 8, 20, 26, and 27 do not
improve the performance of a computer or solve a problem specific to
computers or computer networks. Appellant's Specification and arguments
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Application 13/600,365
do not demonstrate the claims "improve the way a computer stores and
retrieves data in memory," as the claims in Enfish did via a "self-referential
table for a computer database." See Enfzsh, 822 F.3d at 1336, 1339. Instead,
as recognized by the Examiner, the claimed invention does not provide a
technical improvement or improve an existing technological process. Ans.
16.
Accordingly, we agree with the Examiner that claims 8-13 and 20-34
are directed to an abstract idea of "allowing purchasing by a crediting a
merchant's card" which is considered "a fundamental economic practice."
Final Act. 5; Ans. 8.
Alice/ Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellant argues
( 1) "[ e ]mbodiments of the claimed invention have concrete and tangible
applications and represent significant improvements to technologies in the
marketplace, for example, by providing enhanced security for Internet
commerce transactions" and (2) "[g]iven the technological benefits
associated with embodiments of the present invention ... the claims contain
'an "inventive concept" sufficient to "transform" the claimed abstract idea
into a patent-eligible application."' App. Br. 11-13.
We disagree. According to Alice, the second step is to "search for an
'inventive concept'-i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(quoting Mayo, 566 U.S. at 72-73). The most relevant Federal Circuit cases
on point include (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841
14
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Application 13/600,365
F.3d 1288 (Fed. Cir. 2016). Both involve business-centric inventions that
are similar to Appellant's invention.
For example, the Federal Circuit found DDR 's claims contain an
"inventive concept" under Alice step 2 because DDR 's claims (1) do not
merely recite "the performance of some business practice known from the
pre-Internet world" previously disclosed in Bilski and Alice, but instead
(2) provide a technical solution to a technical problem unique to the Internet,
i.e., a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs'
claims contain a sufficient "inventive concept" because, like DDR, Amdocs'
claims "entail[] an unconventional technological solution ( enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)" and "improve the
performance of the system itself." Amdocs, 841 F.3d at 1300, 1302.
In contrast to DDR and Amdocs, Appellant's invention does not
provide a technical solution to a technical problem unique to the Internet,
i.e., a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Nor does Appellant's invention entail, like Amdocs,
any "unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302. As such, we find no element or
combination of elements recited in Appellant's claims 8, 20, 26, and 27 that
contains any "inventive concept" or adds anything "significantly more" to
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Appeal2017-003895
Application 13/600,365
transform the abstract concept into a patent-eligible application. Alice, 134
S. Ct. at 2357. Instead, we agree with the Examiner that the additional
elements recited in Appellant's claims 8, 20, 26, and 27 ( e.g., processor,
memory, merchant's bank, and consumer's bank) do not transform the
abstract idea into a patent eligible invention. Ans. 16. As our reviewing
court has observed, "after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible." DDR, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2358).
Because Appellant's claims 8, 20, 26, and 27 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 8-13 and 20-34 under 35 U.S.C. § 101.
Obviousness
Claims 8, 13, 20, and 25-28
In support of the § 103 rejection of independent claims 8, 20, 26, and
27, the Examiner finds O'Leary teaches an issuer of a merchant's bank
compnsmg
a memory ... and at least one processor ... operative to: [2]
obtain, by said merchant's bank from a consumer's bank, a
guarantee that said consumer will cause a total transaction
amount of an on-line transaction to be credited to said credit-only
payment card account number of said merchant, said guarantee
being associated with a reference number of said on-line
transaction ... ; and [3] dispatch, by said merchant's bank, said
guarantee to said merchant."
Final Act. 6 (citing O'Leary ,r,r 19, 71, 77, 82-83).
To support the conclusion of obviousness, the Examiner relies on
Nappi for teaching [ 1] "assigning to a merchant an account number of a
credit-only payment card account" and Bhinder for teaching that assignment
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Application 13/600,365
is handled by a merchant's bank. Final Act. 7 (citing Nappi 3:2---6, 4:31--42;
Bhinder ,r 170).
Appellant does not dispute the Examiner's factual findings regarding
0 'Leary. Instead, Appellant disputes the Examiner's findings regarding
Nappi. In particular, Appellant argues Nappi only "suggests that credit-only
(CO) identifiers should be assigned by an outside 'sales organization' (e.g.,
702 in Fig. 7 or 802 in Fig. 8), rather than by a merchant's bank" and, as
such, does not teach the disputed limitation: "assigning, by a merchant's
bank, to said merchant an account number of a credit-only payment card
account" as recited in claim 8, and similarly recited in claims 20, 26, and 27.
App. Br. 15; Reply Br. 19 (emphasis omitted). In addition, Appellant
argues:
Nappi expressly teaches away from the limitations of the
independent claims directed to obtaining a guarantee by said
merchant's bank from a consumer's bank, and also from the
arrangement taught by O'Leary at paragraph [0082]. Rather,
Nappi suggests that, when using credit-only identifiers, virtual
cash should be obtained by a merchant's bank from a third party
payment processor, rather than from the consumer's bank.
App. Br. 17; Reply Br. 21.
Appellant's arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by evidence. Ans. 17-18. As such, we adopt the Examiner's
findings and explanations provided therein. Id. For additional emphasis, we
note Appellant cannot show non-obviousness by attacking references
individually where the rejection is based on the combination of references.
In re Keller, 642 F.2d 413,425 (CCPA 1981). "The test for obviousness is
not whether the features of a secondary reference may be bodily
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incorporated into the structure of the primary reference .... Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." Id.
Contrary to Appellant's arguments, O'Leary (not Nappi) teaches
"obtain[ing], by said merchant's bank from a consumer's bank, a guarantee"
as recited in claims 8, 20, 26, and 27. Final Act. 6 (citing O'Leary ,r 82).
Likewise, both Nappi and Bhinder (not just Nappi) are relied upon for
teaching the disputed limitation: "assigning, by a merchant's bank, to a said
merchant an account number of a [credit-only] payment card account" as
recited in claims 8, 20, 26, and 27. Final Act. 7 ( citing Nappi 3 :2---6, 4:31-
42; Bhinder ,r 170). Moreover, the elements recited in claims 8, 20, 26, and
27, including: (1) the assignment of a merchant's "account number of a
credit-only payment card account" as evidenced from Nappi and Bhinder,
and (2) the use of "a guarantee" for that account to make on-line payment as
evidenced from O'Leary, are known and predictable prior art elements
necessary for financial transactions in our financial institutions. As the
Supreme Court recognizes, "[t ]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results" from "the predictable use of prior art elements
according to their established functions." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416-17 (2007). Because (1) the assignment of a merchant's
"account number of a credit-only payment card account" and (2) the use of
"a guarantee" for that account to make on-line payment are known and
predictable prior art elements, we are not persuaded that Nappi and Bhinder
teach away from the combination of references.
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For these reasons, we sustain the Examiner's rejection of independent
claims 8, 20, 26, and 27 and dependent claims 13, 25, and 28, argued for
their dependency on claims 8, 20, and 27.
Claims 9, 21, and 30
Claim 9 depends from independent claim 8, and further recites
"reformatting, by said merchant's bank, said guarantee prior to dispatching
said guarantee to said merchant" (hereinafter the "reformatting" limitation).
Claims 21 and 30 recite similar limitations. The Examiner further relies on
Frid-Nielsen for teaching the "reformatting" limitation. Final Act. 9 ( citing
Frid-Nielsen 11 :25--49).
Appellant acknowledges Frid-Nielsen teaches that "data should be
reformatted before transmission" but argues Frid-Nielsen's reformatting is
not the same as Appellant's claimed "guarantee." App. Br. 18.
We disagree. An obviousness "analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418. Data
generated for every financial transaction online has to be formatted and
reformatted for purposes of ensuring data compatibility between electronic
financial systems, as evidenced from Frid-Nielsen as well as Sobek (see
Sobek ,r,r 11, 43, 51-52, 54, 56, 58, 64, 67, 71, 75; Figs. 3, 10, 12, 14).
For these reasons, we sustain the Examiner's rejection of claims 9, 21,
and 30.
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Claims 10 and 22
Claim 10 depends from independent claim 8, and further recites:
"intercepting an attempt to debit said credit-only payment card account; and
preventing said attempt to debit said credit-only payment card account,
based on credit-only status of said credit-only payment card account."
Claim 22 recites similar limitations. The Examiner further relies on Oaks
for teaching these limitations. Final Act. 11 ( citing Oaks ,r 4).
Appellant argues Oaks only "suggests '(1) diverting PLD transactions
to the processing service for further processing and (2) causing non-PLD
transactions to be transparently processed according to a client's specific
payment processing procedures'" and, as such, does not teach "preventing
an attempt to debit a credit-only payment card account" as recited in claims
10 and 22. App. Br. 20 ( citing Oaks ,r,r 15, 26).
We agree with Appellant and, in the absence of the Examiner's
response to Appellant's argument (see Ans. 17-18), we are constrained to
reverse the Examiner's rejection of claims 10 and 22.
Claims 11, 12, 23, 24, and 29
Claim 11 depends from independent claim 8, and further recites that
"guarantee comprises an IS0-8583 message type 0100 with transaction type
twenty eight" (hereinafter the "standard data format" limitation). Claims 12,
23, 24, and 29 recite similar limitations. The Examiner further relies on
Sobek for teaching the "standard data format" limitation. Final Act. 11-12
( citing Sobek ,r 11 ).
Appellant acknowledges Sobek teaches formatting transaction data as
an IS0-8583 compatible message, but argues that Sobek's teaching is not
applicable in the context of Appellant's invention. App. Br. 20-21.
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We disagree. For the same reasons discussed relative to claims 9, 21,
and 30, we sustain the Examiner's rejection of claims 11, 12, 23, 24, and 29.
Claims 31-34
Claim 31 depends from independent claim 8, and further recites:
"reformatting, by said merchant's bank prior to dispatching said guarantee to
said merchant, said guarantee from an IS0-8583 message to a proprietary
format agreed to by said merchant and said merchant's bank." Claims 32-
34 recite similar limitations.
The Examiner further relies on ( 1) Frid-Nielsen for teaching the
"reformatting" limitation and (2) Sobek for teaching the "standard data
format" limitation. Final Act. 13-14 (citing Frid-Nielsen 11:25--49; Sobek ,r
11).
Appellant presents the same arguments against claims 9, 11, 12, 21,
23, 24, 29, and 30. App. Br. 22-25. For the same reasons discussed, we
also sustain the Examiner's rejection of claims 31-34.
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 8-13 and 20-34 under 35 U.S.C.
§ 101. We also conclude Appellant has not demonstrated the Examiner
erred in rejecting claims 8, 9, 20, 21, and 23-34 under 35 U.S.C. § 103, but
has demonstrated the Examiner erred in rejecting claims 10 and 22 under 35
U.S.C. § 103.
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DECISION
As such, we AFFIRM (1) the Examiner's final rejection of claims 8-
13 and 20-34 under 35 U.S.C. § 101 and (2) the Examiner's final rejection
of claims 8, 9, 20, 21, and 23-34 under 35 U.S.C. § 103. However, we
REVERSE the Examiner's final rejection of claims 10 and 22 under 35
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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