Ex Parte Plastina et al

Patent Trials and Appeals Board

Jun 14, 2019

13047287 - (D) (P.T.A.B. Jun. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/047,287 03/14/2011
25297 7590 06/18/2019
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
FIRST NAMED INVENTOR
Franco Plastina
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.
1322/401/2 6550
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/18/2019 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):
usptomail@jwth.com
datcheson@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCO PLASTINA, ROBERT J. TINSLEY,
and PETER J. MARSICO
Appeal2018-005332
Application 13/047,287
Technology Center 3600
Before JOHN A. JEFFERY, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 5, 6, 8-11, 13-17, 20, and 22. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention detects fraudulent or potentially fraudulent
activity associated with geographically unconstrained transactions, namely
those that may be readily performed at different geographic locations. Spec.
1. In one aspect, a mobile device's location is compared to that of a
1 Appellants identify the real party in interest as Tekelec Global,
Inc. App. Br. 2.
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transaction to determine a likelihood of fraud regarding the transaction.
Spec. 6. Claim 1 is illustrative:
1. A method for facilitating detection of transactional fraud,
the method comprising:
receiving mobility management signaling messages at a
mobile communications network node including at least one
processor, the mobile communications network node
comprising a Diameter router, and the mobility management
signaling messages being associated with managing mobile
communications device mobility in a mobile communications
network;
for a credit or debit card transaction associated with a
first transaction location and an account holder of the credit or
debit card, receiving at the mobile communications network
node a request for mobile location information associated with
the account holder;
identifying a mobile communications device that is also
associated with the account holder of the credit or debit card;
obtaining, by the mobile communications network node,
mobile location information associated with the account holder,
the mobile location information being derived from one or more
of the mobility management signaling messages that are
associated with mobility of a mobile communications device
that is associated with the account holder;
comparing the transaction location information and the
mobile location information and determining whether a location
of the mobile communications device coincides with a location
associated with the credit or debit card transaction; and
responding to the request for mobile location
information, based on results of the comparison, with an
indication of a likelihood of fraud to the requestor.
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THE REJECTIONS 2
The Examiner rejected claims 1, 3, 5,3 6, 8-11, 13-17, 20, and 22
under 35 U.S.C. § 101 as directed to ineligible subject matter. Final Act.
3-8.4
The Examiner rejected claims 1, 3, 5, 8, 11, 20, and 22 under
35 U.S.C. § 103 as unpatentable over Singh (US 2007/0174082 Al;
published July 26, 2007) and Cai (US 9,240,946 B2; issued Jan. 19, 2016).
Final Act. 9-11.
The Examiner rejected claims 6, 9, 10, and 13-17 under 35 U.S.C.
§ 103 as unpatentable over Singh, Cai, and Eden (US 2008/022203 8 Al;
published Sept. 11, 2008). Final Act. 12-15.
THE INELIGIBILITY REJECTION
The Examiner determines that the claims are directed to an abstract
idea, namely detecting transactional fraud, which is said to be a fundamental
economic practice. Final Act. 3---6. The Examiner adds that the claims do
not include elements that add significantly more than the abstract idea, but
merely recite, among other things, generic computer components. Id. at 6-8.
Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 11-15; Reply Br. 2-5. According to Appellants, not
2 Because the Examiner withdrew the rejection under§ 112 (Ans. 3--4), that
rejection is not before us.
3 Although claim 5 depends from cancelled claim 4, we, nevertheless,
presume that claim 5 was intended to depend from claim 1.
4 Throughout this Opinion, we refer to (1) the Final Office Action mailed
March 10, 2017 ("Final Act."); (2) the Appeal Brief filed August 14, 2017
("App. Br."); (3) the Examiner's Answer mailed February 26, 2018
("Ans."); and (4) the Reply Brief filed April 26, 2018 ("Reply Br.").
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only does the claimed invention use a particular machine, namely a
Diameter router, but this router is also said to be used in a "non-standard"
way, namely (1) deriving mobile location information associated with a
credit or debit card holder from mobility management signaling messages,
and (2) using the location information to determine a likelihood of credit or
debit card transactional fraud. App. Br. 11-15; Reply Br. 2-5. This
technique is said to (1) provide for interplay between two separate data
networks, and (2) improve a transaction processing system's ability to detect
fraud regarding geographically unconstrained transactions. App. Br. 15;
Reply Br. 3-5.
Appellants add that the claimed invention adds significantly more to
the purported abstract idea by reciting, among other things, a mobile
communications device and Diameter router that are not commonly
associated with processing credit or debit card transactions or detecting
fraud with respect to those transactions-an unconventional use of these
devices that is said to improve the ability of a credit or debit card transaction
processing network to detect fraud. App. Br. 15-18; Reply Br. 5-8.
ISSUE
Under§ 101, has the Examiner erred in rejecting 1, 3, 5, 6, 8-11,
13-17, 20, and 22 as directed to ineligible subject matter? This issue turns
on whether the claims are directed to an abstract idea and, if so, whether
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recited elements----considered individually and as an ordered
combination-transform the nature of the claims into a patent-eligible
application of that abstract idea.
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.
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. Pty. Ltd. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014) (quotation marks and citation omitted).
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
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determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 187; 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."). That
said, 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 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
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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.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). 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, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
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ANALYSIS
Claims 1, 3, 5, 6, 8-11, 13-17, 20, and 22: Alice/Mayo Step One
Representative independent claim 1 recites
[ a] method for facilitating detection of transactional
fraud, the method comprising:
receiving mobility management signaling messages at a
mobile communications network node including at least one
processor, the mobile communications network node
comprising a Diameter router, and the mobility management
signaling messages being associated with managing mobile
communications device mobility in a mobile communications
network;
for a credit or debit card transaction associated with a
first transaction location and an account holder of the credit or
debit card, receiving at the mobile communications network
node a request for mobile location information associated with
the account holder;
identifying a mobile communications device that is also
associated with the account holder of the credit or debit card;
obtaining, by the mobile communications network node,
mobile location information associated with the account holder,
the mobile location information being derived from one or more
of the mobility management signaling messages that are
associated with mobility of a mobile communications device
that is associated with the account holder;
comparing the transaction location information and the
mobile location information and determining whether a
location of the mobile communications device coincides with a
location associated with the credit or debit card transaction;
and
responding to the request for mobile location
information, based on results of the comparison, with an
indication of a likelihood of fraud to the requestor. [5J
5 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
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As the disclosure explains, Appellants' invention detects fraudulent or
potentially fraudulent activity associated with geographically unconstrained
transactions, namely those that may be readily performed at different
geographic locations. Spec. 1. As shown in the embodiment of Appellants'
Figure 9, the invention uses a Diameter relay node or router 220 that
receives a query from a requester 100, such as a bank, to obtain location
information for a mobile device that is believed to be associated with a
transaction of interest. Spec. 11. In response to this request, the Diameter
router then generates a query requesting the location information from a
home subscriber server ("HSS") 320. See Spec. 11; Fig. 9. The HSS then
provides this information, such as the user's geo-location coordinates, to the
Diameter router that then relays this location information to the requestor.
See Spec. 11; Fig. 9. This location is then compared to that of the
transaction to determine a likelihood of fraud regarding the transaction.
Spec. 6.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 29 is directed to
an abstract idea, namely detecting transactional fraud, which is said to be a
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fundamental economic practice. Final Act. 3---6. To determine whether a
claim recites an abstract idea, we (1) identify the claim's specific limitations
that recite an abstract idea, and (2) determine whether the identified
limitations fall within certain subject matter groupings, namely (a)
mathematical concepts6; (b) certain methods of organizing human activity7;
or ( c) mental processes. 8
Here, apart from the recited (1) receiving mobility management
signaling messages at a mobile communications network node including at
least one processor, the mobile communications network node comprising a
Diameter router; (2) receiving a request for mobile location information at
the mobile communications network node; and (3) obtaining mobile location
information by the mobile communications network node, all of claim 1 's
recited limitations, which collectively are directed to determining the
likelihood of a fraudulent transaction based on the relative locations of the
transaction and a party to that transaction, fit squarely within at least one of
the above categories of the US PTO' s guidelines.
6 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
7 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
8 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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First, receiving mobility management signaling messages ... being
associated with managing mobile communications device mobility in a
mobile communications network involve at least personal interactions,
including following rules or instructions, at least to the extent that a person
could receive these messages either entirely mentally by merely reading
pertinent records or other associated information, or alternatively receive
that information via face-to-face or written communication with another
person with such knowledge, such as a colleague. Cf CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that
limitation reciting obtaining information about transactions that have used an
Internet address identified with a credit card transaction can be performed by
a human who simply reads records of Internet credit card transactions from a
pre-existing database); In re Salwan, 681 F. App'x 938, 939--41 (Fed. Cir.
2017) (unpublished) (holding ineligible claims reciting, among other things,
receiving medical records information and transmitting reports where the
claimed invention's objective was to enable electronic communication of
tasks that were otherwise done manually using paper, phone, and facsimile
machine); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed.
Cir. 2018) (noting that a nontechnical human activity of passing a note to a
person who is in a meeting or conversation as illustrating the invention's
focus, namely providing information to a person without interfering with the
person's primary activity); LendingTree, LLC v. Zillow, Inc., 656 F. App'x
991, 993-94, 996 (Fed. Cir. 2016) (unpublished) (holding ineligible claims
reciting, among other things, (1) receiving selection criteria from lending
institutions and credit data from a computer user, and (2) forwarding the
credit data to selected lending institutions as directed to an abstract idea).
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Therefore, the recited signaling message receiving limitation falls squarely
within the mental processes and methods of organizing human activity
categories of the agency's guidelines and, therefore, recites an abstract idea.
See Guidance, 84 Fed. Reg. at 52 (listing exemplary (1) mental processes
including observation and evaluation, and (2) methods of organizing human
activity, including personal interactions and following rules or instructions).
Second, the limitations reciting ( 1) for a credit or debit card
transaction associated with a first transaction location and an account
holder of the credit or debit card, receiving ... a request for mobile location
information associated with the account holder; (2) identifying a mobile
communications device that is also associated with the account holder of the
credit or debit card; and (3) obtaining . .. mobile location information
associated with the account holder, the mobile location information being
derived from one or more of the mobility management signaling messages
that are associated with mobility of a mobile communications device that is
associated with the account holder also involve at least personal
interactions, including following rules or instructions, at least to the extent
that a person could receive these messages either entirely mentally by
merely reading pertinent records or other associated information, or
alternatively receive that information via face-to-face or written
communication with another person with such knowledge, such as a
colleague. Cf CyberSource, 654 F.3d at 1372 (noting that limitation reciting
obtaining information about transactions that have used an Internet address
identified with a credit card transaction can be performed by a human who
simply reads records of Internet credit card transactions from a pre-existing
database); Salwan, 681 F. App 'x at 939--41 (holding ineligible claims
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reciting, among other things, receiving medical records information and
transmitting reports where the claimed invention's objective was to enable
electronic communication of tasks that were otherwise done manually using
paper, phone, and facsimile machine); Interval Licensing, 896 F.3d at 1344
(noting that a nontechnical human activity of passing a note to a person who
is in a meeting or conversation as illustrating the invention's focus, namely
providing information to a person without interfering with the person's
primary activity); LendingTree, 656 F. App'x at 993-94 (unpublished)
(holding ineligible claims reciting, among other things, ( 1) receiving
selection criteria from lending institutions and credit data from a computer
user, and (2) forwarding the credit data to selected lending institutions as
directed to an abstract idea).
In addition, identifying the mobile communications device and
obtaining the mobile location information by deriving this information from
signaling messages can be performed entirely mentally by merely thinking
about this information or writing it down-both involving mere observation
and logical reasoning. Cf CyberSource, 654 F.3d at 1372 (noting that a
recited step that utilized a map of credit card numbers to determine the
validity of a credit card transaction could be performed entirely mentally by
merely using logical reasoning to identify a likely instance of fraud by
merely observing that numerous transactions using different credit cards all
originated from the same IP address). Therefore, the recited identifying and
obtaining limitations fall squarely within the mental processes category of
the US PTO' s guidelines and, therefore, recite an abstract idea. See
Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including
observation and evaluation).
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The recited comparing the transaction location information and the
mobile location information and determining whether a location of the
mobile communications device coincides with a location associated with the
credit or debit card transaction not only could be performed entirely
mentally, but this comparison also involves organizing human activity, at
least to the extent that it involves a fundamental economic practice including
ensuring integrity of commercial and financial transactions by comparing
indicia associated with transacting parties. Cf CyberSource, 654 F .3d at
1372 (noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address); Prism Techs.
LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1016-18 (Fed. Cir. 2017)
(unpublished) (holding ineligible claims directed to the abstract process of
( 1) receiving identity data from a device with a request for access to
resources; (2) confirming authenticity of the identity data associated with
that device; (3) determining whether the identified device is authorized to
access the requested resources; and (4) if authorized, permitting access to the
requested resources). Therefore, the recited location information
comparison falls squarely within the mental processes and methods of
organizing human activity categories of the agency's guidelines and,
therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing
exemplary (1) mental processes including observation and evaluation, and
(2) methods of organizing human activity, including personal interactions
and following rules or instructions and fundamental economic practices).
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Lastly, responding to the request for mobile location information,
based on results of the comparison, with an indication of a likelihood of
fraud to the requestor also involves organizing human activity, at least to the
extent that it involves a fundamental economic practice including ensuring
integrity of commercial and financial transactions by comparing indicia
associated with transacting parties or entities. Cf CyberSource, 654 F.3d at
1372 (noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address); Zuili v.
Google LLC, 722 F. App'x 1027, 1029--31 (Fed. Cir. 2018) (unpublished)
(holding ineligible claims directed to abstract idea of collecting,
transmitting, analyzing, and storing data to detect fraudulent and/or invalid
clicks based on the time between two requests by the same device or client);
See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1092-98 (Fed.
Cir. 2016) (holding ineligible claims reciting detecting improper access of a
patient's protected health information ("PHI") in a computer environment by
(1) applying a rule with at least one criterion related to accesses (a)
exceeding a specific volume; (b) during a predetermined time interval; and
( c) by a specific user indicating improper access of a patient's PHI; (2)
storing a hit in memory if an event occurs meeting at least one criterion; and
(3) providing notification if the event occurs); Prism Techs., 696 F. App'x at
1016-18 (holding ineligible claims directed to the abstract process of ( 1)
receiving identity data from a device with a request for access to resources;
(2) confirming authenticity of the identity data associated with that device;
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(3) determining whether the identified device is authorized to access the
requested resources; and ( 4) if authorized, permitting access to the requested
resources).
Although the claim recites an abstract idea based on these methods of
organizing human activity and mental processes, we nevertheless must still
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1) identify whether
there are any additional recited elements beyond the abstract idea, and (2)
evaluate those elements individually and collectively to determine whether
they integrate the exception into a practical application. See id.
Here, the recited (1) receiving mobility management signaling
messages at a mobile communications network node including at least one
processor, the mobile communications network node comprising a Diameter
router; (2) receiving a request for mobile location information at the mobile
communications network node; and (3) obtaining mobile location
information by the mobile communications network node, are the only
recited elements beyond the abstract idea, but these additional elements do
not integrate the abstract idea into a practical application when reading claim
1 as a whole. First, we are not persuaded that the claimed invention
improves the computer or its components' functionality or efficiency, or
otherwise changes the way those devices function, at least in the sense
contemplated by the Federal Circuit in Enfzsh LLC v. Microsoft Corporation,
822 F.3d 1327 (Fed. Cir. 2016), despite Appellants' arguments to the
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contrary (App. Br. 14--15). The claimed self-referential table in Enfish was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellants contend that the claimed invention uses such a data structure to
improve a computer's functionality or efficiency, or otherwise change the
way that device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent Appellants contend that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
App. Br. 11-15; Reply Br. 2-5), we disagree. Even assuming, without
deciding, that the claimed invention can determine ( 1) mobile and
transaction location information, and (2) the likelihood of fraud associated
with that transaction based on that information faster than doing so
manually, any speed increase comes from the capabilities of the generic
computer components-not the recited process itself. See FairWarning, 839
F.3d at 1095 (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.")); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir.
2017) (unpublished) ("Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a
general-purpose computer do not materially alter the patent eligibility of the
claimed subject matter.") ( quotation marks, bracketed alteration, and citation
omitted). Like the claims in Fair Warning, the focus of claim 1 is not on an
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improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095 (quotation marks and citations omitted).
As with the ineligible claimed invention in BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1284--91 (Fed. Cir. 2018), the claimed
invention does not improve a computer's functionality or that of its
associated components, but rather the benefits flow from performing the
abstract idea in conjunction with those generic computer components. See
BSG, 899 F .3d at 1288 ("While the presentation of summary comparison
usage information to users improves the quality of the information added to
the database, an improvement [in] ... the information stored by a database is
not equivalent to an improvement in the database's functionality.").
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) despite
Appellants' arguments to the contrary (App. Br. 17-18). There, instead of a
computer network operating in its normal, expected manner by sending a
website visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented ( 1) product information from the third
party, and (2) visual "look and feel" elements from the host website. DDR,
773 F.3d at 1258-59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
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That is not the case here. As noted previously, Appellants' claimed
invention, in essence, is directed to determining the likelihood of a
fraudulent transaction based on the relative locations of the transaction and a
party to that transaction-albeit using computer-based components to
achieve that end. The claimed invention here is not necessarily rooted in
computer technology in the sense contemplated by DDR where the claimed
invention solved a challenge particular to the Internet. Although Appellants'
invention uses various computer-based components noted previously, the
claimed invention does not solve a challenge particular to the computing
components used to implement this functionality.
This case is also not analogous to SRI International, Inc. v. Cisco
Systems, Inc., 918 F.3d 1368 (Fed. Cir. 2019). There, the court held eligible
claims reciting hierarchical event monitoring and analysis within an
enterprise network where network monitors ( 1) detected suspicious network
activity based on analysis of network traffic data selected from specific
network-specific categories, and (2) generated reports of the suspicious
activity. SRI Int'!, 918 F.3d at 1373. The claim added that the reports were
automatically received and integrated by one or more hierarchical monitors.
Id. In reaching its eligibility conclusion, the court noted that the claims were
not directed to using a computer as a tool-that is, automating a
conventional idea on a computer. Id. at 1376. Rather, the claimed invention
in SRI improved the computer's technical functioning as well as that of the
associated network by reciting a specific technique for improving computer
network security. Id.
That is not the case here. Although Appellants' claimed invention
uses computer and associated network components, including a Diameter
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router, the claimed invention does not improve their technical functioning as
was the case with the computer- and network-based improvements in SRI.
Rather, Appellants' claimed invention merely uses computer- and
network-based components to, among other things, obtain location
information that is used as a basis for comparison to detect the likelihood of
fraud in connection with a debit or credit card transaction-functions that
could otherwise be done manually as noted above.
We also find unavailing Appellants' contention that the claimed
invention is eligible because it is tied to particular machines, namely a
mobile communications device and Diameter router. App. Br. 11; Reply Br.
7. To be sure, the machine-or-transformation test, although not the only test,
can nevertheless provide a "useful clue" in the second step of the
Alice/Mayo framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (quoting Bilski v. Kappas, 561 U.S. 593, 594 (2010)).
Under the machine-or-transformation test, a claimed process is
patent-eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski, 545
F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski, 561 U.S. at 593.
It is well settled, however, that whether a recited device is a tangible
system or, in§ 101 terms, a "machine," is not dispositive. ChargePoint, Inc.
v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019) (quoting In re TL!
Commc 'ns, 823 F.3d 607, 611 (Fed. Cir. 2016) ("[N]ot every claim that
recites concrete, tangible components escapes the reach of the abstract-idea
inquiry."). For a machine to impose a meaningful limit on the claimed
invention, it must play a significant part in permitting a claimed method to
be performed, rather than function solely as an obvious mechanism for
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permitting a solution to be achieved more quickly. Versata Dev. Grp. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also MPEP
§ 2106.05(b)(II) (citing Versata). The latter role is the case here, for the
recited Diameter router is merely an obvious mechanism that achieves the
recited solution more quickly, namely obtaining location information faster
than by manual data gathering methods. We reach a similar conclusion
regarding the recited mobile communications device, for the focus of the
claim is directed to solving a business
problem-not a technical problem-by detecting transactional fraud. Cf
ChargePoint, 920 F.3d at 772-73 (holding ineligible claim reciting a
network-controlled charge transfer system for electric vehicles comprising,
among other things, a communication device configured to connect a
controller to a mobile wireless communication device for communication
between the electric vehicle operator and the controller); see also id. at 772
(noting that the lack of an indication that the disclosed invention intended to
improve the recited components, including the communications devices, or
that the inventors viewed the combination of those components as their
invention).
As was the case with the Internet in CyberSource, the recited
Diameter router cannot detect fraud, but rather is merely used as a data
source to achieve that end. See CyberSource, 654 F.3d at 1370 (noting that
mere data gathering steps cannot make an otherwise ineligible claim
eligible). In fact, using communications network nodes to obtain mobile
location information for comparison purposes to detect the likelihood of
criminal behavior was the very issue in Carpenter v. United States, 138 S.
Ct. 2206, 2211-12 (2018) (noting that a time-stamped record, namely
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cell-site location information ("CSLI"), is generated each time a cell phone
connects to a cell site); see also id. at 2212-13 (noting that CSLI was used to
produce maps confirming that the defendant's phone was located at the time
and place where crimes were committed). As was the case with the Internet
in CyberSource, the mobile communications network node in Carpenter did
not itself detect the likelihood of its user committing crimes at the locations
specified by the associated mobile location information, but was rather used
merely as a data source to achieve that end, namely by providing the mobile
location data that was later analyzed and compared to draw conclusions from
that data. See id. at 2218 ("From the 12 7 days of location data it received,
the Government could, in combination with other information, deduce a
detailed log of Carpenter's movements, including when he was at the site of
the robberies."). This use of a mobile communications network node as a
data source, like the Internet in CyberSource, is analogous to the recited
function of the Diameter router that is used merely to provide location data
for later analysis and comparison to determine whether a likelihood of fraud
exists based on that gathered data.
Appellants' reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 13-14;
Reply Br. 3--4, 6) is likewise unavailing. There, the court held eligible
claims directed to a technology-based solution to filter Internet content that
overcame existing problems with other Internet filtering systems by making
a known filtering solution-namely a "one-size-fits-all" filter at an Internet
Service Provider (ISP}--more dynamic and efficient via individualized
filtering at the ISP. BASCOM, 827 F.3d at 1351. Notably, this customizable
filtering solution improved the computer system's performance and,
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therefore, was patent-eligible. See id. But unlike the filtering system
improvements in BASCOM that added significantly more to the abstract idea
in that case, the claimed invention here uses generic computing components
to implement an abstract idea as noted previously.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellants' arguments to the contrary (Reply Br. 3--4).
There, the claimed process used a combined order of specific rules that
rendered information in a specific format that was applied to create a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to determine the
likelihood of a fraudulent transaction based on the relative locations of the
transaction and a party to that transaction. This generic computer
implementation is not only directed to organizing human activity and mental
processes, but also does not improve a display mechanism as was the case in
McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) ( distinguishing McRO).
We also find unavailing Appellants' contention that the claimed
invention does not preempt all ways of detecting fraud, but rather is directed
to a particular method of identifying a potentially fraudulent transaction by
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deriving relevant location data from mobility management signaling
messages received by a Diameter router. App. Br. 16-17. Where, as here,
the claims cover a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Alice/Mayo framework.
See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015).
In conclusion, although the recited functions may be beneficial by
determining the likelihood of a fraudulent transaction based on the relative
locations of the transaction and a party to that transaction, a claim for a
useful or beneficial abstract idea is still an abstract idea. See id. at 1379--80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Claims 1, 3, 5, 6, 8-11, 13-17, 20, and 22: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1 's additional recited elements,
namely the the recited (1) receiving mobility management signaling
messages at a mobile communications network node including at least one
processor, the mobile communications network node comprising a Diameter
router; (2) receiving a request for mobile location information at the mobile
communications network node; and (3) obtaining mobile location
information by the mobile communications network node----considered
individually and as an ordered combination----do not provide an inventive
concept such that these additional elements amount to significantly more
than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance, 84
Fed. Reg. at 56. As noted above, the claimed invention merely uses generic
computing components to implement the recited abstract idea.
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To the extent Appellants contend that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 20-22; Reply Br. 7-10), these limitations
are not additional elements beyond the abstract idea, but rather are directed
to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the the recited (1) receiving mobility management signaling
messages at a mobile communications network node including at least one
processor, the mobile communications network node comprising a Diameter
router; (2) receiving a request for mobile location information at the mobile
communications network node; and (3) obtaining mobile location
information by the mobile communications network node are additional
recited elements whose generic computing functionality is
well-understood, routine, and conventional. See Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) (noting
that a recited user profile (i.e., a profile keyed to a user identity), database,
and communication medium are generic computer elements); Mortgage
Grader Inc. v. First Choice Loan Services, Inc., 811 F .3d 1314, 1324--25
(Fed. Cir. 2016) (noting that components such an "interface," "network,"
and "database" are generic computer components that do not satisfy the
inventive concept requirement); buySAFE v. Google, Inc., 765 F.3d 1350,
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1355 (Fed. Cir. 2014) ("That a computer receives and sends the information
over a network-with no further specification-is not even arguably
inventive."); Carpenter, 138 S. Ct. at 2212-18 (noting the use of mobile
location information obtained from communications network nodes to
determine whether the user was located near the time and place where a
crime was committed). Accord Spec. 3 ( describing generic computer
components used to implement the invention); Final Act. 7-8; Ans. 5, 8
( concluding that the claims' generically recited computer components do not
add significantly more than the abstract idea).
In conclusion, the additional recited elements----considered
individually and as an ordered combination----do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 and claims 3, 5, 6, 8-11, 13-17, 20, and 22 not argued separately
with particularity. 9
THE OBVIOUSNESS REJECTION OVER SINGH AND CAI
Regarding independent claim 1, the Examiner finds that Singh
discloses, among other things, (1) receiving a request for mobile location
9 Although Appellants nominally argue independent claims 8 and 11
separately (App. Br. 18-19; Reply Br. 9-10), Appellants reiterate arguments
similar to those made for claim 1. We, therefore, group these claims
accordingly. Accord Alice, 573 U.S. at 208 ("[T]he system claims are no
different in substance from the method claims."); CyberSource, 654 F.3d at
1374 (noting that the underlying invention for both the method and
computer-readable medium claims was a method for detecting credit card
fraud-not a manufacture for storing computer-readable information).
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information associated with an account holder of a credit or debit card; (2)
comparing transaction location information and the mobile location
information; and (3) determining whether a mobile communications device's
location coincides with that of the transaction. Final Act. 9--10. Although
the Examiner acknowledges that Singh does not receive mobility
management signaling messages at a mobile communications network node
comprising a Diameter router, the Examiner cites Cai for teaching this
feature in concluding that the claim would have been obvious. Final Act.
10-11.
Appellants argue that the cited prior art does not teach or suggest (1)
receiving a request for mobile location information associated with an
account holder of a credit or debit card associated with a credit or debit card
transaction, and (2) comparing transaction location information and the
mobile location information and determining whether a mobile
communications device's location coincides with that of the transaction.
App. Br. 20-22; Reply Br. 11-13. According to Appellants, not only do
Singh's "m-commerce" transactions use a mobile phone as a payment device
instead of credit and debit card transactions, but Singh merely determines
the likelihood that a person could have traveled from a previous transaction
location to a present transaction location-a determination that is said to not
identify a correspondence between the credit or debit card holder and the
mobile subscriber. App. Br. 20-22; Reply Br. 11-13.
ISSUE
Under§ 103, has the Examiner erred by finding that Singh and Cai
collectively would have taught or suggested (1) receiving a request for
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mobile location information associated with an account holder of a credit or
debit card; (2) comparing transaction location information and the mobile
location information; and (3) determining whether a mobile communications
device's location coincides with that of the transaction as recited in claim 1?
ANALYSIS
Claims 1, 3, 5, 8, 11, 20, and 22
We begin by noting, as does the Examiner, that independent claim 1 is
replete with instances of the broad term "associated with," including, among
other things, (1) a credit or debit card transaction associated with a first
transaction location and an account holder of that card; (2) identifying a
mobile communications device associated with that account holder; (3)
obtaining mobile location information associated with the account holder;
( 4) determining whether the mobile communications device's location
coincides with a location associated with the credit or debit card holder.
Accord Ans. 11 ( articulating the undisputed broad construction of the term
"associated" as "any association or relationship between [the] ... claimed
elements"). Therefore, to the extent that Appellants contend that this
"associated with" language requires two different accounts, namely a first
credit or debit card account and a second mobile service subscription
account (Reply Br. 11 ), such arguments are not commensurate with the
scope of the claim, which does not require both of those accounts.
Given the scope and breadth of the claim language, we see no error in
the Examiner's reliance on Singh and Cai for collectively at least suggesting
the recited limitations. As shown in Singh's Figure 3A, a user 300 can
interact with a base station 310 in one location, such as New York City.
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Singh ,r 26. If a person purporting to be the user, however, makes a mobile
payment in a different location, such as base station 315 in Los Angeles, the
system compares the time difference between these interactions to the
average travel time required to reach the radius of the second base station
from the first base station. Id. If the average travel time is greater that this
time difference, the payment transaction is identified as having a high
probability of fraud, and can be flagged or rejected. Id.
Singh's Figure 4 also shows the procedure where a location score is
computed based on the user's pattern of use, and if an associated location
score determined when the user attempts a mobile payment or transaction is
higher than a certain threshold level, the transaction is identified as likely
fraudulent. See Singh ,r,r 31-32.
Given this functionality, Singh at least suggests receiving a request for
mobile location information associated with an account holder of a credit or
debit card associated with a credit or debit card transaction in light of the
location-based determinations associated with the transactions in Figures 3A
and 4. Even assuming, without deciding, that Singh's mobile commerce
("m-commerce") systems use only the phone as a payment device instead of
a credit or debit card as Appellants contend (App. Br. 20; Reply Br. 12-13),
we see no reason why Singh's fraud location-based identification techniques
could not be used in connection with a credit or debit card transaction,
particularly given Singh's teaching in paragraph 6 of using phones not only
for payment akin to a debit or credit card, but also for communications and
data access. Despite Appellants' arguments to the contrary (Reply Br. 13),
we do not find that Singh criticizes, discredits, or discourages using credit or
debit cards as payment to teach away from those alternatives. See Norgren
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Inc. v. Int'! Trade Comm'n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also
In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). In short, despite Singh's
"m-commerce" transactions, using Singh's phones to facilitate credit or
debit card transactions would have been at least an obvious variation well
within the level of ordinary skill in the art and would yield predictable
results. To the extent that Appellants contend otherwise, there is no
persuasive evidence on this record to substantiate such a contention.
We also find unavailing Appellants' contention that Singh does not
teach or suggest the recited comparison because Singh merely determines
the likelihood that a person could have traveled from a previous transaction
location to a present transaction location-a determination that is said to not
identify a correspondence between the credit or debit card holder and the
mobile subscriber. App. Br. 21-22; Reply Br. 11-12. Here again, this
argument is not commensurate with the scope of the claim that requires no
such correspondence. Rather, the claim requires, in pertinent part, (1)
comparing transaction location information and the mobile location
information; and (2) determining whether a mobile communications device's
location coincides with that of the transaction. By determining the average
travel time required to reach the radius of the second base station from the
first base station in Singh's paragraph 26, information associated with
communications device's location at the first base station in New York and
the location of the transaction in Los Angeles would be at least compared to
determine the average time needed to travel the distance between those
locations. This determination-based on comparing location information
regarding both the transaction in Los Angeles and the communications
device's location in New York-at least suggests the recited comparison.
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We reach a similar conclusion regarding the location score-based
functionality of Singh's Figure 4. See Singh ,r,r 31-32.
Nor do we find error in the Examiner's reliance on Cai for the limited
purpose for which it was cited, namely for at least suggesting receiving
mobility management signaling messages at a node comprising a Diameter
router as claimed. Final Act. 10. Appellants' arguments regarding Cai's
individual shortcomings regarding the recited comparison (see App. Br. 22)
are not only inapposite to the Examiner's reliance on Singh for teaching that
feature, but these contentions do not show nonobviousness where, as here,
the rejection is based on the cited references' collective teachings. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 5, 8, 11, 20, and 22 not argued separately with
particularity. 10
THE OBVIOUSNESS REJECTION OVER SINGH, CAI, AND EDEN
We also sustain the Examiner's rejection of claims 6, 9, 10, and 13-17
over Singh, Cai, and Eden. Final Act. 12-15; Ans. 13-15. Despite
Appellants' arguments to the contrary (App. Br. 27-28; Reply Br. 15-16),
we see no error in the Examiner's reliance on the cited prior art for at least
suggesting the recited limitations for the reasons noted above and by the
Examiner. Final Act. 12-15; Ans. 13-15. Appellants' arguments pertaining
10 Although Appellants nominally argue claims 8, 11, and 22 separately
(App. Br. 22-26; Reply Br. 13-15), Appellants reiterate arguments similar
to those made for claim 1. We, therefore, group these claims accordingly.
We treat other nominally-argued claims similarly, and group those claims
accordingly.
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to Eden's individual shortcomings regarding using a Diameter router to
collect mobility management signaling messages from which subscriber
location is derived (App. Br. 27-28; Reply Br. 15-16) do not show
nonobviousness where, as here, the rejection is based on the cited
references' collective teachings. See Merck, 800 F.2d at 1097.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 6, 9, 10, and 13-17.
CONCLUSION
The Examiner did not err in rejecting claims 1, 3, 5, 6, 8-11, 13-17,
20, and 22 under§§ 101 and 103.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, 5, 6, 8-11,
13-17, 20, and 22.
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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