Ex Parte Raj et al

Patent Trial and Appeal Board

Jul 27, 2018

13681220 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/681,220 11/19/2012 Thanigaivel Ashwin Raj
66945 7590 07/31/2018
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.
79900-857342(068410USC1) 7705
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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 THANIGAIVEL ASHWIN RAJ,
JACOB SAUL FUENTES, JOHN TULLIS, and
VISHWANATH SHASTRY
Appeal2017-005144
Application 13/681,220 1
Technology Center 3600
Before ALLEN R. MacDONALD, IRVINE. BRANCH, and
AARON W. MOORE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 11, 21, 25, 28, 39, 40, 42, 43, 46, 48, and 49, which are all of the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Technology
The application relates to "conducting alias management and value
transfer claim processing." Spec., ,r 18.
1 According to Appellants, the real party in interest is Visa International
Service Association. App. Br. 3.
Appeal2017-005144
Application 13/681,220
Illustrative Claim
Claim 11 is illustrative and reproduced below:
11. A method for transferring value from a sending entity to a
recipient entity, the method comprising:
receiving, by a sending entity issuer computer, a first
message from a server computer of a payment processing
network, the first message instructing the sending entity issuer
computer to reserve an amount of funds for a recipient entity
identified by a recipient entity alias, wherein the amount of funds
corresponds to a transfer amount indicated by a request to
transfer value, the request including the recipient entity alias and
a sending entity identifier of a sending entity, wherein the first
message is received by the sending entity issuer computer based
on a determination that the recipient entity alias is not registered
with the payment processing network, wherein a registration
request message is sent by the server computer of the payment
processing network to the recipient entity associated with the
recipient entity alias based on the determination, and wherein the
registration request message includes a request for the recipient
entity to register with the payment processing network;
responsive to the first message received from the server
computer, reserving, by the sending entity issuer computer, the
amount of funds corresponding to the transfer amount, the
amount of funds being reserved in a source account of the
sending entity identified by the sending entity identifier;
determining, based on a second message received from the
server computer of the payment processing network, whether the
server computer received a response, from the recipient entity, to
the registration request message for registration of the recipient
entity with the payment processing network;
upon determining that the server computer did not receive
the response to the registration request message, removing a
reservation of the reserved amount of funds in the source
account;
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Application 13/681,220
upon determining that the server computer received the
response to the registration request, debiting, by the sending
entity issuer computer, the reserved amount of funds; and
sending a confirmation message to the server computer,
the confirmation message indicating that the reserved amount of
funds have been debited.
Rejection2
Claims 11, 21, 25, 28, 39, 40, 42, 43, 46, 48, and 49 stand rejected
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. Final Act. 2-5.
ANALYSIS
Section 101 defines patent-eligible subject matter as "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 3 5 U.S. C. § 101. The Supreme Court has
"long held that this provision contains an important implicit exception[:]
Laws of nature, natural phenomena, and abstract ideas are not patentable."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013) (internal brackets omitted) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)).
To distinguish "patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts," the Supreme Court has set up an analytical framework. Alice
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
June 21, 2016 ("Final Act."), the Examiner's Answer mailed December 2 7,
2016 ("Ans."), and Appellants' Reply Brief filed February 10, 2017 ("Reply
Br.").
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Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo, 566
U.S. at 71-73). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that in itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
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Application 13/681,220
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Claim 11, which is representative of the claims before us, is directed
to "transferring value from a sending entity to a recipient entity." The
Examiner concludes that claim 11 is directed towards the "abstract idea" of a
fundamental economic practice. Final Act. 4. We agree, and adopt the
Examiner's findings as our own.
Appellants raise several arguments challenging the Examiner's
conclusion that the claims are directed to an abstract idea. See App. Br. 7-
14. For instance, Appellants argue that the claims here are akin to those
found patent eligible in DDR Holdings, LLC v. Hotels.com, et al., 773 F.3d
1245 (Fed. Cir. 2014). See App. Br. 7-10. Appellants do not point to - and
we do not find - limitations in the pending claims that support this
contention. To the contrary, we find the claims amount to no more than
using generic computer hardware and technology to implement the
fundamental economic practice of transferring value from one entity to
another. We find unconvincing Appellant's reference to Appellants'
Specification (App. Br. 8-9) because the items Appellants describe, such as
application programming interfaces ("APis") and software development kits
("SDKs"), are neither recited in the claims nor anything but generic, even if
they were to be recited in the claims.
We are not persuaded that the Examiner has oversimplified and
mischaracterized the claims as Appellants argue. App. Br. 10-11; Reply Br.
2-3. We are not persuaded because Appellants do not identify with
sufficient specificity which elements remove the pending claims from
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implementing a fundamental economic practice using generic computer
technology and hardware.
Accordingly, because we agree with the Examiner, at step one of the
Alice analysis, that the claims are directed to an abstract idea, we tum to the
second step of the Alice analysis, in which we must determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Abstract Idea
Into Patent-Eligible Subject Matter
The Examiner finds that the claims do not amount to significantly
more than the abstract idea. Final Act. 4--5. Notably, the Examiner finds
the ability to receive and send data, create and remove
reservations of funds and use a processor to make a
determination is something that every "off the shelf computer" is
configured to do by virtue of having a processor that can execute
whatever software is loaded into the computer. The claimed
steps do not require a particular machine.
Ans. 5. We agree and do not otherwise find limitations that amount to
"significantly more," such that the abstract idea becomes patent eligible.
Appellants argue - again, without reference to specific elements of the
claims -that "the present claims are directed towards solving problems in
facilitating secure electronic communication between computer systems of
different issuers." Reply Br. 6-7; see App. Br. 15-16. To whatever extent
this may be true, the contention is unpersuasive because this improvement is
not apparent from a reading of the claims, which amount to sending
messages among computers and decision making based on the content of the
messages or other data. Such routine data processing using generic
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computers and technology does not add significantly more to the abstract
idea of transferring value, which is a fundamental economic practice.
Accordingly, for the foregoing reasons, we are not persuaded the
Examiner erred in rejecting independent claim 11 under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter, or in rejecting on the same basis
independent claims 21 and 28, as well as dependent claims 25, 39, 40, 42,
43, 46, 48, and 49.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 11, 21, 25, 28, 39, 40, 42, 43, 46, 48, and 49.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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