Ex Parte Dominguez et al

Patent Trials and Appeals Board

Jun 28, 2019

13467731 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/467,731 05/09/2012 Benedicto H. Dominguez
66945 7590 07/02/2019
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-840199 7838
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENEDICTO H. DOMINGUEZ,
THOMAS J. MANESSIS, and JAMES DONALD RENO
Appeal2018-005236
Application 13/467,731 1
Technology Center 3600
Before JOSEPH P. LENTIVECH, PHILLIP A. BENNETT, and
SCOTT RAEVSKY, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 22, 23, 29-31, 39, 41, 43-53. Claims 1-21, 24--28,
32-38, 40, and 42 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 Appellants' Brief ("App. Br.") identifies Visa International Service
Association as the real party in interest. App. Br. 2.
Appeal2018-005236
Application 13/467,731
CLAIMED SUBJECT MATTER
The claims are directed to an online account authentication service.
Claim 22, reproduced below, is illustrative of the claimed subject matter:
22. A method comprising:
receiving, by a merchant computer comprising a plug-in
module, an account number from a client device operated by a
user in an online transaction;
sending, by the merchant computer, during an
authentication process for the online transaction, a verify
enrollment request message comprising the account number to
an access control server operated by an issuer of the account
number, wherein the verify enrollment request message requests
an enrollment status for the account number, where the account
number is used by a user conducting the online transaction;
receiving, by the merchant computer, during the
authentication process for the online transaction, from the access
control server, a verify enrollment response message, wherein
the verify enrollment response message indicates that the user is
enrolled with the access control server;
sending, by the merchant computer, during the
authentication process for the online transaction, a payer
authentication request message to the access control server,
wherein the payer authentication request message is sent via the
client device operated by the user;
receiving, by the merchant computer, during the
authentication process for the online transaction, a payer
authentication response message comprising a digitally signed
receipt and an indication from the access control server, the
indication indicating that the access control server authenticated
the user, wherein the payer authentication response message is
received via the client device;
verifying, by the plug-in module in the merchant
computer, the digitally signed receipt;
transmitting, by the merchant computer, an authorization
request message comprising the account number and the
indication to the issuer; and
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rece1vmg an authorization response message from the
issuer.
App. Br. 25 (Claims Appendix).
REJECTION
Claims 22, 23, 29-31, 39, 41, and 43-53 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
2-7.
REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208 (2014). The Supreme
Court instructs us to "first determine whether the claims at issue are directed
to a patent-ineligible concept" (id. at 216-18), and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we "consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as a search for "an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself."' Id. ( quoting Mayo, 566 U.S. at 72-
73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
("MPEP") § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 52.
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Application 13/467,731
Examiner's Findings and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
independent claims are directed to an abstract idea of "authenticating a user
in a payment transaction." Final Act. 6. The Examiner further determines
the claims are directed to an abstract idea because the claims are "an idea of
itself similar to those identified by the courts such as obtaining and
comparing intangible [information]." Final Act. 6 (citing CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). The
Examiner further determined the remaining limitations amount to only
insignificant post-solution activity. Final Act. 6.
In Alice step 2, the Examiner finds the claims do not amount to
significantly more than the abstract idea because:
The claims are amended to describe the environment in which
the process takes place and includes the account number in the
enrollment request message however, the environment does not
make the idea less abstract and neither does the inclusion of the
account number as it is well-understood, routine and
conventional to reference an account number in a database
lookup. The claims also recite an access control server but this is
merely a generic device which cannot serve as significantly
more.
Final Act. 7.
Our Review
Applying the guidance set forth in the Memorandum, we are not
persuaded the Examiner has erred in rejecting the claims as being directed to
patent-ineligible subject matter. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings: (1)
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mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices or managing personal behavior or
relationships or interactions between people, and (3) mental processes. We
focus here on the second grouping----certain methods of organizing human
activity such as fundamental economic practices.
Claim 22 recites the following limitations: (1) "receiving ... an
account number," (2) "sending ... a verify enrollment request message
comprising the account number," (3) "receiving ... a verify enrollment
response message," ( 4) "sending ... a payer authentication request
message," and (5) "receiving ... a payer authentication request message
... indicating ... the ... authenticat[ion of] the user." App. Br. 25 (Claims
Appendix). These limitations, under their broadest reasonable interpretation,
recite the fundamental economic practice of authenticating a user in a
payment transaction because the limitations all recite the operations that
would ordinarily take place in performing any such authentication.
For example, receiving an account number, as recited in limitation (1 ),
reflects the well-established practice of receiving a credit card number from
a customer seeking to purchase a good or service. Similarly, the recitation
of sending and receiving verify enrollment request and response messages
that include the account number, as set forth in limitations (2) and (3), is
analogous to the historical practice of calling a bank to confirm the existence
of an account number on a check, or calling a credit card company to
confirm an account for a card number actually exists. Further, the practice
of sending and receiving payer authentication messages, as recited in
limitations ( 4) and ( 5) are characteristic of the customary practice of
authenticating the identity of a person seeking to conduct business using a
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specific account. Like the concept of intermediated settlement in Alice, and
the concept of hedging in Bilski, the concept of authenticating a user in a
payment transaction recited in Appellants' claims "is a fundamental
economic practice long prevalent in our system of commerce." Alice, 573
U.S. at 219 (citations and internal quotation marks omitted). Accordingly,
we conclude the claims recite a judicial exception of a fundamental
economic practice.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.0S(a}-(c), (e}-(h). Appellants' claim 22
recites various computer-related limitations, including a "merchant
computer," an "access control server," and a "client device." Although these
computer-related limitations are not wholly generic in nature and are
specific to conducting transactions, they are described at a high level in the
Specification without significant detail about their structure or configuration.
As such, we do not find the computer-related limitations are sufficient to
integrate the judicial exception into a practical application.
Claim 1 recites the following limitations: (1) the account number is
received at a merchant computer "comprising a plug-in module" and from a
client device "operated by a user in an online transaction," (2) the verify
enrollment request message is sent "during an authentication process for the
online transaction" and to an access control server "operated by an issuer of
the account number, wherein the verify enrollment request message requests
an enrollment status for the account number, where the account number is
used by a user conducting the online transaction," (3) the verify enrollment
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response message is received "during the authentication process for the
online transaction" and it "indicates that the user is enrolled with the access
control server," (4) the payer authentication request message is sent "during
the authentication process for the online transaction" and it is sent "to the
access control server ... via the client device operated by the user," (5) the
payer authentication response message is sent "during the authentication
process for the online transaction ... comprising a digitally signed receipt
and an indication from the access control server ... that the access control
server authenticated the user, wherein the payer authentication response
message is received via the client device," (6) "verifying, by the plug-in
module, ... the digitally signed receipt," (7) "transmitting ... an
authorization request message comprising the account number and the
indication to the issuer," and (8) "receiving an authorization response
message from the issuer."
In evaluating whether a claim integrates an abstract idea into a
practical application, the Memorandum instructs to consider limitations that
are indicative of "integration into a practical application" include (1)
improvements to the functioning of a computer, or to any other technology
or technical field-see MPEP § 2106.0S(a); (2) applying the judicial
exception with, or by use of, a particular machine-see MPEP
§ 2106.05(b ); (3) effecting a transformation or reduction of a particular
article to a different state or thing-see MPEP § 2106.0S(c); and (4)
applying or using the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception-see MPEP
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§ 2106.05(e). See Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
We are not persuaded these limitations integrate the abstract idea into
a practical application. Appellants assert that the "invention relates to
problems associated [with] authenticating a user in an online transaction,
where multiple parties ... are involved," and that the "claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." App. Br. 14--15.
However, the problem of authenticating the identity of a person presenting a
non-cash payment is a problem that existed long before the computer
networks. For example, persons seeking to pay with checks have long been
required by merchants to present identification to authenticate their identity
and authorization to trade on the checking account.
Moreover, Appellants do not adequately explain how the functioning
of a computer is improved by the use of the claimed verification and
authentication messages. In our view, these purported improvements are
better characterized as improvements to the abstract idea itself-they
improve the process of authenticating a user in a payment transaction. See
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. May 15,
2018) ("[ w ]hat is needed is an inventive concept in the non-abstract realm").
Appellants do not persuasively explain how the features provide
improvements in the non-abstract realm-aside from an unsupported
assertion that they provide "better data security" and that prior systems were
difficult to use. App. Br. 20 ( citing Spec. 2, 11. 4--15). However, the benefits
described in the cited passage are business-oriented benefits and not
improvements to the functioning of a computer. Spec. 2, 11. 6-9
("Authenticating the payer during online purchase transaction will reduce
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the levels of fraud, disputes, retrievals and charge backs, which subsequently
will reduce the costs associated with each of these events."). Although the
passage mentions "security," it does so in the context of addressing
"consumer security concerns," which, is primarily a business issue.
Appellants also do not provide persuasive arguments that the claims apply
the judicial exception with, or by use of, a particular machine - see MPEP
§ 2106.05(b ). Appellants assert only that the claims "clearly" meet apply
the judicial exception in this way because "these claims recite computer
components in a distributed system." However, Appellants do not explain
why any specific component in this distributed system qualifies as a
particular machine under the Memorandum or binding precedent.
In short, Appellants' arguments do not persuade us that the claims
integrate the recited judicial exception into a practical application, and we
therefore conclude the claim is directed to the recited judicial exception.
Having determined the claim is directed to a judicial exception, we
proceed to Step 2B (also referred to as Alice step 2) in evaluating whether
the claim adds any specific limitation beyond the judicial exception that is
not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)) or simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See Memorandum.
Here, we find the Examiner's analysis insufficient. Appellants argue
the "claims involve more than performance of 'well understood, routine,
[and] conventional activities previously known to the industry."' Reply Br.
6; see also App. Br. 20. Appellants argue "[t]he Examiner has provided no
evidence showing that the combination of steps is conventional" and that
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"[t]he Examiner cannot simply allege without any evidence whatsoever, that
the claim limitations are 'conventional'." Reply Br. 7 ( citing MPEP
2106.07).
Under the examination procedure published online by the USPTO on
April 19, 2018, entitled "Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" ("Berkheimer Memorandum"), there is a fact
finding requirement for Examiners, as applicable to rejections under § 101.
Specifically, Examiners must now provide specific types of evidence to
support a finding that claim elements ( or combinations of elements) are
well-understood, routine, and conventional.
Here, the Examiner's determination that the claims are directed to an
abstract idea and do not amount to significantly more than the abstract idea
is predicated, at least in part, on a finding that Appellants' claims are
directed to routine, conventional, computer operations. In light of this
challenge, the burden falls on the Examiner to provide evidence in support
of the finding-but no evidence has been provided. Specifically, the
Examiner does not point to any portion of the Specification, case law, or
evidence in the prior art indicating the various components of the claim
(such as, for example, the use of "digitally-signed receipts" or "a merchant
computer comprising a plug-in module") were well-understood, routine, and
conventional at the time this application was filed in 2001. Consequently,
we do not sustain the rejection of claim 22 under 35 U.S.C. § 101 for lack of
supporting evidence based on the Berkheimer Memorandum, which
mandates that evidence be provided to support such a finding. The
remaining claims depend from claim 22 and stand for the same reason.
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DECISION
We reverse the Examiner's rejection of claims 22, 23, 29-31, 39, 41,
43-53.
REVERSED
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