Ex Parte SAGASTIVERZA et alDownload PDFPatent Trials and Appeals BoardDec 10, 201814086693 - (D) (P.T.A.B. Dec. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/086,693 11/21/2013 126944 7590 12/12/2018 MasterCard c/o Ballard Spahr LLP 999 Peachtree Street, Suite 1000 Atlanta, GA 30309 FIRST NAMED INVENTOR Jazmin SAGASTIVERZA 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. 37537.0032Ul- 2058 EXAMINER KAZIMI, HAN! M ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 12/12/2018 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): uspatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAZMIN SAGASTIVERZA, ADRIAN BOTTA, PRANA V GANDHI, JOSHUA LAGAN, JOEL LASKO, MARIA EMILIA ORDONEZ, and JON-PAUL WITKOP Appeal2018-005059 Application 14/086,693 1 Technology Center 3600 Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest identified by Appellants is MasterCard International Incorporated. App. Br. 2. Appeal2018-005059 Application 14/086,693 STATEMENT OF THE CASE Introduction Appellants' described and claimed invention relates generally to enabling pooling and sharing of funds to cover shared expenses. See Spec. ,r 1. 2 Claim 1 is representative and reads as follows: 1. A method comprising: creating a virtual payment card, the virtual payment card having a unique identifier and a virtual payment card balance; linking, with a processor, a primary account number of a physical payment card to the virtual payment card; receiving a financial transaction request message, via a network interface, the financial transaction request message containing a transaction amount and the primary account number of the physical payment card; substituting, with the processor, the primary account number of the physical payment card with the unique identifier of the virtual payment card in response to receiving the financial transaction request message; approving or declining a financial transaction for the transaction amount using the substituted unique identifier; transmitting, via the network interface, an approval message, when the financial transaction is approved; and transmitting, via the network interface, a decline message, when the financial transaction is declined. App. Br. 20 (Claims App'x.). 2 Our Decision refers to the Final Office Action mailed December 30, 2016 ("Final Act."), Appellants' Appeal Brief filed July 5, 2017 ("App. Br.") and Reply Brief filed April 13, 2018 ("Reply Br."), the Examiner's Answer mailed February 13, 2018, and the original Specification filed November 21, 2013 ("Spec."). 2 Appeal2018-005059 Application 14/086,693 Rejection on Appeal3 Claims 1-20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent-ineligible subject matter. ANALYSIS Applicable Law Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and citation omitted). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. The 3 The Examiner withdrew the rejection of claims 1-20 under 35 U.S.C. § 103(a). See Ans. 3. Thus, this rejection is not before us. 3 Appeal2018-005059 Application 14/086,693 "directed to" inquiry asks not whether "the claims involve a patent-ineligible concept," but instead whether, "considered in light of the specification, ... 'their character as a whole is directed to excluded subject matter.'" Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we determine whether the claims "focus on a specific means or method that improves the relevant technology" or are "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). If, at the first stage of the Alice analysis, we conclude that the claim is not directed to a patent-ineligible concept, it is considered patent eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to "search for an "'inventive concept"'- i. e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. (brackets in original) ( quoting Mayo, 566 U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant post solution 4 Appeal2018-005059 Application 14/086,693 activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted). Appellants' Arguments.± Appellants contend the Examiner has not adequately explained, and has not provided any evidence, that the claims are directed to an abstract idea. See App. Br. 6. Appellants argue the claimed subject matter of linking redemption of electronic voucher offers with payment card transactions on payment card instructions is not similar to any idea previously found to be abstract. See App. Br. 8-9. Appellants further argue that the claims are not directed to a fundamental commercial or business practice, nor a method of organizing human activity. See App. Br. 9-10. According to Appellants, the claims are not merely the computerization of a long-standing practice, but, instead, are fundamentally rooted in computer technology. See App. Br. 10. In addition, Appellants contend, similar to the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), that the claims are necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks and do not merely recite the performance of some business practice known from the pre-Internet world with the requirement to perform it on the Internet. See App. Br. 12. As argued by Appellants, the claimed invention 4 Appellants argue claims 1-20 as a group, focusing on claim 1. See App. Br. 6-14. Although Appellants argue that the dependent claims have not been properly interpreted (see App. Br. 9), Appellants fails to proffer any separate arguments for the patent-eligibility of the dependent claims. We consider claim 1 to be representative of the claimed subject matter on appeal and, therefore, we decide the rejection of claims 1-20 on the basis of representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). 5 Appeal2018-005059 Application 14/086,693 addresses the network-centric challenge of processing virtual prepaid cards at locations that can only process physical payment cards, by providing a solution that is necessarily rooted in computer technology. See id. Appellants argue that the claims are directed to providing a technical solution that is neither conventional nor routine, as the claims specify how interactions between computer components are manipulated to yield a desired result, which is non-routine and non-conventional. See App. Br. 13. Appellants further argue that the claims do not merely implement an alleged abstract idea on a generic computer, but, instead, are directed to using particular computer technology and devices in a very specific way to achieve new and useful results; and, thus, the claims result in the requirement of a computer system with improved functionality over a generic computer. See App. Br. 14. Further, in their Reply Brief, Appellants argue, similar to the claims at issue in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), claim 1 does not preempt a patent ineligible concept. See Reply Br. 4--5. Appellants also argue, similar to the claims at issue in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), claim 1 is directed to a non-abstract improvement in computer function, as claim 1 recites a method that enables a payment network to process a virtual payment card transaction using a primary account number associated with a separate, physical payment card. See Reply Br. 8. Step One of Alice The Examiner finds claim 1 is directed to enabling pooling and sharing of funds to cover shared expenses, which the Examiner considers to 6 Appeal2018-005059 Application 14/086,693 be both a fundamental commercial/business practice and a method of organizing human activities, which are both examples of an abstract idea. See Final Act. 3. Considering the focus of claim 1 as a whole, in view of Appellants' Specification, we agree with the Examiner that claim 1 is directed to an abstract idea (i.e., enabling pooling and sharing of funds to cover shared expenses). Consistent with the Examiner's findings, we find claim 1 is directed to a method of: ( 1) "creating a virtual payment card ... having a unique identifier and a virtual payment card balance"; (2) "linking ... a primary account number of a physical payment card to the virtual payment card"; (3) "receiving a financial transaction request message ... containing a transaction amount and the primary account number of the physical payment card"; (4) "substituting ... the primary account number of the physical payment card with the unique identifier of the virtual payment card in response to receiving the financial transaction request message"; (5) "approving or declining a financial transaction for the transaction amount using the substituted unique identifier"; (6) "transmitting ... an approval message, when the financial transaction is approved;" and (7) "transmitting ... a decline message, when the financial transaction is declined". App. Br. 20. We agree with the Examiner that the aforementioned recited steps are steps of either a fundamental economic practice or a method of organizing human activities, where both are types of abstract ideas. See Final Act. 3. Consistent with the Examiner's findings, and contrary to Appellants' argument that claim 1 is not similar to any idea previously found to be abstract (see App. Br. 8-9), we see no meaningful difference between claim 1 and similar claims that our reviewing court has found are directed to 7 Appeal2018-005059 Application 14/086,693 an abstract idea. See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of intermediated settlement is an abstract idea directed to a "fundamental economic practice long prevalent in our system of commerce" ( citation omitted)); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir. 2014) ( citing cases where contractual relations at issue constituted fundamental economic practices, and noting that forming or manipulating economic relations may involve an abstract idea); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) ("'automatic pricing method and apparatus for use in electronic commerce'"); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to "the mere formation and manipulation of economic relations" and "the performance of certain financial transactions" have been held to involve abstract ideas); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (holding that claims reciting a method of using advertising as an exchange or currency are directed to an abstract idea). Although Appellants argue claim 1 does not define a fundamental economic practice or method of organizing human activity (see App. Br. 9- 10), Appellants fail to particularly explain why claim 1 is distinct from a fundamental economic practice or method or organizing human activity. Thus, Appellants fail to persuasively rebut the Examiner's findings that claim 1 is directed to a fundamental economic practice or method of organizing human activity. Further, although Appellants argue claim 1 is not the computerization of some long-standing practice, Appellants fail to explain why the substitution of a first account number with a second account 8 Appeal2018-005059 Application 14/086,693 number in relation to a financial transaction is not simply a long-standing practice that is implemented on a general-purpose computer. We also are not persuaded by Appellants' arguments that claim 1 does not seek to tie up or otherwise preempt an abstract idea. See Reply Br. 4--5. "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility .... 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); see also OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract"). Thus, Appellants' arguments that the claims are not directed to an abstract idea are not persuasive. Step Two of Alice Regarding step two of the Alice analysis, the Examiner finds the elements of claim 1, when considered individually or in combination, do not recite substantially more than the abstract idea. See Final Act. 4; see also Ans. 5. The Examiner further finds claim 1 recites the additional elements "processor" and "network interface," and these elements amount to no more than: (i) mere instructions to implement the idea on a computer; and (ii) a recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. See Final Act. 3; see 9 Appeal2018-005059 Application 14/086,693 also Ans. 6. As further found by the Examiner, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea because the claim does not effect an improvement to another technology or technical field, the claim does not amount to an improvement to the functioning of a computer itself, and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. See Final Act. 4. For the reasons stated by the Examiner, we agree with the Examiner's findings and conclusions. We are not persuaded by Appellants' argument that claim 1 is similar to the claims in DDR Holdings. See App. Br. 12. In DDR Holdings, the disputed claims solved an Internet-specific problem with an Internet-based solution that was "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR Holdings, 773 F.3d at 1257-58. That is not the case here. Instead, consistent with the Examiner's findings, the problem of requiring a substitution of a first account number with a second account number in relation to a financial transaction is not a problem specifically arising in the realm of computer networks, and users previously had, and currently can, substitute one account number with another account number for a financial transaction without the use of a computer. See Ans. 7-8. Appellants' argument that claim 1 does not recite functionality that is well-understood, routine, and conventional is also not persuasive. See App. Br. 13. Claim 1 recites that the steps of linking a primary account number of a physical payment card to a virtual payment card and substituting the primary account number of the physical payment card with a unique 10 Appeal2018-005059 Application 14/086,693 identifier of the virtual payment card are performed by "a processor." The Examiner cites Appellants' Specification as evidence that the claimed "processor" is a general-purpose computer processor that performs functions that are routine, conventional, and well-understood to one of ordinary skill in the relevant art. See Ans. 6-7 ( citing Spec. ,r,r 23--40), see also Spec. ,r 31 ("processor 2100 may be any central processing unit, microprocessor, micro- controller, computational device or circuit known in the art"), ,r 43 ("[i]t is understood that instructions for [ method or process embodiments illustrated in FIGS. 3-9] may be ... executed by their respective processors"). As Appellants have not persuasively rebutted the Examiner's findings, this argument is not persuasive. We also are not persuaded by Appellants' argument that claim 1 improves the functionality of a general-purpose computer. See App. Br. 14. Appellants have not identified any portion of the Specification, nor provided any evidence or technical reasoning, persuasively demonstrating claim 1 is directed to a technical advance or improvement to computer functionality. 5 Further, Appellants' argument that claim 1 is similar to the claims at issue in Finjan are also not persuasive (see Reply Br. 8), because Appellants have 5 Although Appellants allege the Specification describes a particular problem and a specific technical solution to the particular problem (see Reply Br. 7-8 (citing Spec.,r,r 4---6, 19, 60)), we do not agree with Appellants' characterization of the problem and solution. Instead, we conclude the cited paragraphs of Appellants' Specification identify a general problem that arises in the relevant business practice and describe applying an instruction to substitute a first account number with a second account number in relation to a financial transaction on a general-purpose computer. See Spec.,r,r 4---6, 19, 60. Such a disclosure does not persuasively demonstrate the claims are directed to a technical advance or improvement to computer functionality. 11 Appeal2018-005059 Application 14/086,693 not persuasively demonstrated that claim 1 is directed to an improvement to computer functionality, as previously described. In view of Appellants' Specification, and consistent with the Examiner's determinations, the claims do not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; (v) a specific limitation other than what is well- understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application; or (vi) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See Manual of Patent Examining Procedure ("MPEP") § 2106.05. Thus, the claims are not directed to something significantly more than the abstract idea. Accordingly, for the reasons discussed above, we sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the rejection of claims 2-20, which are not separately argued, under 35 U.S.C. § 101. DECISION We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C. § 101. 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 12 Copy with citationCopy as parenthetical citation