Ex Parte Hildred

Patent Trial and Appeal Board

Mar 7, 2019

12512340 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/512,340
107681 7590
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
07/30/2009
03/11/2019
FIRST NAMED INVENTOR
Richard N. Hildred
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.
14773 5520
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/11/2019 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD N. HILDRED
Appeal2018-001865
Application 12/512,340 1
Technology Center 3600
Before MARC S. HOFF, STEPHEN C. SIU, and SCOTT E. BAIN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1---6 and 11-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant states that the real party in interest is NCR Corporation. App.
Br. 2.
Appeal2018-001865
Application 12/512,340
Appellant's invention is a computer-implemented method of
processing payments for a merchant selling goods or services. The method
comprises, at a first time, receiving from the consumer a first payment made
by check, and at a second time, receiving from said consumer a second
payment made by credit card. Spec. 1-2. Processing is performed to link
the check and credit card purchases to the same consumer, allowing the
merchant to link the two purchases without having to ask the consumer for
any personal information. Abstract.
Claim 1 is reproduced below:
1. A computer-implemented method of processing
payments for a merchant selling goods or services to a
consumer, the computer-implemented method comprising:
at a first time, receiving from the consumer a first
payment made by a check for a first purchase of goods or
services;
electronically by a processor, identifying account details
associated with the check;
electronically by a processor, comparing the account
details associated with the check with account details of
accounts already stored in an accounts database;
electronically by a processor, determining if the account
details associated with the check can be matched to account
details of an account already stored in the accounts database;
electronically by a processor, if a determination is made
that the account details associated with the check does not
match account details of an account already stored in the
accounts database, creating a new account using the account
details associated with the check and adding the new account to
the accounts database without having to ask the consumer for
any personal information when the new account is being added
as a new account to the accounts database and without having
had to ask the consumer for any personal information when the
first payment was being received from the consumer;
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Application 12/512,340
electronically by a processor, if a determination is made
that the account details associated with the check does match
account details of an account already stored in the accounts
database, alerting the merchant that the account details
associated with the check for the first purchase of goods or
services have been matched to account details of an account
already stored in the accounts database;
at a second time which is after the first time, receiving
from the consumer a second payment made by a credit card for
a second purchase of goods or services;
electronically by a processor, identifying account details
associated with the credit card;
electronically by a processor, comparing the account
details associated with the credit card with account details of
accounts already stored in the accounts database;
electronically by a processor, determining if the account
details associated with the credit card can be matched to
account details of an account already stored in the accounts
database;
electronically by a processor, if a determination is made
that the account details associated with the credit card does not
match account details of an account already stored in the
accounts database, creating a new account using the account
details associated with the credit card and adding the new
account to the accounts database without having to ask the
consumer for any personal information when the new account is
being added as a new account to the accounts database and
without having had to ask the consumer for any personal
information when the second payment was being received from
the consumer;
electronically by a processor, if a determination is made
that the account details associated with the credit card does
match account details of an account already stored in the
accounts database, alerting the merchant that (i) the account
details associated with the credit card for the second purchase
of goods or services have been matched to account details of an
account already stored in the accounts database, and (ii) the
second purchase of goods or services made by the credit card
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Application 12/512,340
and the first purchase of goods or services made by the check
were made by the same person;
incrementing by a processor, a token counter each time a
match is made between information extracted from a particular
method of payment with a particular account already stored in
the accounts database;
comparing a current value of the token counter and
determining whether matches are acceptable and when the
current value is below a predetermined token number but
different methods of payment are used by the person at a same
store location determining a match has successfully occurred
and when the current value is below the predetermined token
number identifying other affirmative steps of verification to
perform before identifying a successful match; and
maintaining with the new account created for or the
particular account of the consumer purchasing habits for a
merchant for both the first purchase and the second purchase
even when the first purchase and the second purchase use
different payment methods and are processed over different
channels.
Claims 1---6 and 11-14 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Aug. 29, 2017), the Reply Brief ("Reply Br.," filed Dec.
11, 2017), and the Examiner's Answer ("Ans.," mailed Oct. 11, 2017) for
their respective details.
ISSUES
1. Is the claimed invention directed to a judicial exception?
2. Is the judicial exception integrated into a practical application?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bankint'l, 573 U.S.
208,216 (2014).
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. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that
framework, we first determine what concept the claim is "directed to." See
Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
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Subject Matter Eligibility Guidance ("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 MPEP § 2106.0S(a}-(c), (e}-(h)).
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 are
not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
ANALYSIS
SECTION 101 REJECTION
Independent claim 1 is directed to a computer-implemented method of
processing payments, including determining if account details of a check can
be matched to details of another account in the database; automatically
creating a new account if the details do not match; alerting the merchant if
the details do match; at another time, determining if account details of a
credit card can be matched to details of another account in the database;
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automatically creating a new account if the details do not match; alerting the
merchant if the details do match; performing certain verification details; and
maintaining purchasing habits across payment methods. Appellant presents
a unitary argument directed to all claims together. Accordingly, we select
claim 1 for discussion as representative of the rejected claims.
ABSTRACT IDEA - FUND AMENT AL ECONOMIC PRACTICE
We agree with the Examiner that the claimed invention is directed to
the abstract idea of a fundamental economic practice. Ans. 3; Alice, 573
U.S. at 219-20 ( concluding that use of a third party to mediate settlement
risk is a "fundamental economic practice" and thus an abstract idea); id.
( describing the concept of risk hedging identified as an abstract idea in Bilski
as "a method of organizing human activity"); Bilski, 561 U.S. at 611-12
( concluding that hedging is a "fundamental economic practice" and therefore
an abstract idea); Bancorp Servs. L.L.C. v. Sun Life Assurance Co., 687 F.3d
1266, 1280 (Fed. Cir. 2012) (concluding that "managing a stable value
protected life insurance policy by performing calculations and manipulating
the results" is an abstract idea); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that concept
of "local processing of payments for remotely purchased goods" is a
"fundamental economic practice, which Alice made clear is, without more,
outside the patent system."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015) (citation omitted) (concluding that claimed
concept of "offer-based price optimization" is an abstract idea "similar to
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other 'fundamental economic concepts' found to be abstract ideas by the
Supreme Court and this court").
We determine that the claimed payment processing using different
payment types is a fundamental economic practice ( concepts demonstrated
to be fundamental, long prevalent, well-known, and extensively used for
many years) because check and credit card payment processing have been in
long-standing operation, with or without the involvement of technological
means.
Further, we agree with the Examiner that the claimed steps of
payment processing using different payment types correspond to concepts
identified as abstract ideas by the courts. Final Act. 3. In Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), the claimed
invention concerned detecting events on an electric power grid, comprising
receiving a plurality of data streams, receiving data from other power system
data sources, receiving data from non-grid data sources, detecting and
analyzing events in real-time from the plurality of data streams, and
displaying the event analysis results and diagnoses of events, displaying
concurrent visualization of measurements from the data streams,
accumulating and updating the measurements from the data streams, and
deriving a composite indicator of reliability. Id. at 1351. Similarly, the
claimed invention concerns detecting financial transaction events from a
plurality of data streams, analyzing financial events in real time, and
displaying or transmitting the results of said analysis. In Content Extraction
& Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014),
the claimed invention concerned processing information from hard copy
documents, including storing information from digitized documents to a
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memory, recognizing portions of said documents corresponding to a first
data field, and storing information from said portions of said document
corresponding to said first data field into memory. Id. at 1345. Similarly, in
the claimed invention, pertinent information regarding customer transactions
is recognized from among other information and stored. In both Electric
Power Group and Content Extraction, the court concluded that the claimed
invention was directed to an abstract idea. See Ans. 4. We agree with the
Examiner that analyzing payment data to determine if the customer is a new
customer, or an existing customer who has made payment by a different
form similarly constitutes an abstract idea.
INTEGRATION INTO A PRACTICAL APPLICATION
We determine that identified abstract idea is not integrated into a
practical application. The claimed invention does not constitute an
improvement to the functioning of a computer; rather, we determine that it
merely constitutes the adaptation of an abstract idea, previously performed
mentally or manually, to execution as steps performed by a computer.
MPEP § 2106.05(a). The invention is directed to the use of the computer as
merely a tool to perform an existing process, in this case, processing check
and credit card payments, and, under certain circumstances, opening new
accounts. We agree with the Examiner that "[ m ]atching payment data of a
present transaction with preexisting records as recited does not suggest an
improvement to an existing technology or a technological solution to a
problem." Ans. 6. Appellant's Specification makes clear that an object of
the invention is "to identify that the consumer in the first transaction and the
consumer in the second transaction are the same person." Spec. 1. A
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disclosed advantage of the linkage between the check payment and credit
card payment is that
the merchant is able to identify a single individual person
amongst a plurality of commercial transactions even though this
person used a different payment instrument in each of the
plurality of transactions .... This knowledge about the person
may enable the merchant to custom design a marketing
campaign targeted specifically for this person.
Spec. 6. Appellant concedes that the claimed invention may be performed
by "suitable servers and microcomputers" that are "readily available." Spec.
2. We find that the ability to design an individualized marketing campaign
constitutes only an improvement to the underlying abstract idea, using the
computer merely as a tool. Id.
Appellant argues that the customer tracking across multiple payment
methods "at least improves the capabilities associated with purchase
verification by extending and enhancing such existing capabilities" and that
the present claims "improve the technological processes transaction
verification processing." Reply Br. 2-3. Appellant provides no evidence in
support of these alleged improved capabilities, and fail to explain how the
case law mentioned in passing (Enfish, McRO, NVIDIA, Bascom )2 is
analogous to the invention under appeal. See App. Br. 10-11. We are not
persuaded that the claimed invention constitutes an improvement to the
2 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016);
Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017);
BASCOM Glob. Internet Servs. v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed.
Cir. 2016).
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functioning of a computer, rather than an improvement to the underlying
abstract idea of payment processing and customer purchase history tracking.
Turning to the other examples under the Guidelines of an abstract idea
integrated into a practical application, the claimed invention is not applied
with, or by use of, a particular machine. MPEP § 2106.05(b). Appellant's
invention does not cause the transformation or reduction of a particular
article to a different state or thing. MPEP § 2106.05(c). We agree with the
Examiner that Appellant's invention constitutes mere instructions to
implement an abstract idea on a computer. Ans. 6; MPEP § 2106.05(±).
In response to Appellant's argument that the claims do not "present
any concern of preempting any existing commercial or known human-based
activity," (App. Br. 12), a lack of preemption does not necessarily
demonstrate patent eligibility. Ans. 7. "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
WELL-UNDERSTOOD, ROUTINE, AND CONVENTIONAL
Having determined that the claims recite a judicial exception, and do
not integrate that exception into a practical application, we consider whether
the claim adds a specific limitation beyond the judicial exception that is not
"well understood, routine, and conventional" in the field. US PTO, 2019
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Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50, 56
(January 7, 2019) ("Revised Guidance").
Appellant's claimed invention (independent claims 1, 6) recites "a
computer-implemented method of processing payments." Several of the
steps of the claimed method are recited as performed by "a processor."
Appellant's Specification discloses a computer-implemented process
that "may be carried [out] by a merchant server or microcomputer (both not
shown). Suitable servers and microcomputers are readily available in the
marketplace and, therefore, will not be described." Spec. 2. Appellant's
statement that "readily available" hardware may be used to perform the
disclosed and claimed method, and that such hardware need not be
described, is tantamount to an admission that the means for performing the
steps of the claimed method are "well-understood, routine, and
conventional." Similarly, Appellant's disclosure of the claimed "processor"
can be interpreted as being at a high level of generality.
Appellant's argument that the absence of a prior art rejection in the
invention under appeal leads to a conclusion that the combination of
elements and processing must necessarily be unconventional and novel is
not persuasive. App. Br. 13. Novelty under§ 102 and non-obviousness
under § 103 are separate and distinct inquiries from the question of patent
eligibility under § 101.
We conclude that none of the claim limitations, viewed "both
individually and as an ordered combination," amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 573 U.S. at 217
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( citation and quotation marks omitted). Accordingly, we sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 1-6 and 11-14.
CONCLUSIONS
1. The claimed invention is directed to a judicial exception.
2. The judicial exception is not integrated into a practical application.
DECISION
The Examiner's decision to reject claims 1---6 and 11-14 under 35
U.S.C. § 101 is affirmed.
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).
AFFIRMED
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