Ex Parte Torreyson et al

Patent Trial and Appeal Board

Oct 12, 2017

12756795 (P.T.A.B. Oct. 12, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/756,795 04/08/2010 Denise Torreyson 21652-00083 1352
75564 7590 10/16/2017
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/16/2017 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):
USpatents @ armstrongteasdale. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENISE TORREYSON, ANANT NAMBIAR,
DEBORAH BARTA, AMY NEVELS-BARNETT,
ANNE HENKE, and JODI DAVID
Appeal 2016-0031921
Application 12/756,795
Technology Center 3600
Before: MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 3—18, and 20—
33. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify “MasterCard International Incorporated” as the
real party in interest. App. Br. 1.
Appeal 2016-003192
Application 12/756,795
The invention relates generally to “linking at least one secondary
account to a primary account wherein at least one of the accounts has a
transaction card associated therewith.” Spec. 12.
Claim 1 is illustrative:
1. A method for processing a financial transaction using
an interchange network computer coupled to a database, the
financial transaction initiated with a first transaction card
associated with a linked account, said method comprising:
receiving, at the interchange network computer, a linked
account data file for the first transaction card, the linked account
data file including data associating the first transaction card with
a first secondary account, and data linking the first secondary
account to a first primary account, the first transaction card
issued by an issuer bank, wherein the first primary account and
the first secondary account are financial accounts issued by the
issuer bank for processing financial transactions and wherein the
first primary account is associated with a primary interchange
rate and the first secondary account is associated with a
secondary interchange rate;
storing the linked account data file within the database;
receiving a first authorization request message for a first
financial transaction, wherein the first transaction card is used to
initiate the first financial transaction and wherein the first
authorization request message includes the secondary
interchange rate;
retrieving the primary interchange rate upon determining,
at the interchange network computer, based on data included
within the first authorization request message and the linked
account data file, that the first transaction card is associated with
the first secondary account; and
processing, at the network interchange computer, the first
authorization request message by replacing the secondary
interchange rate with the primary interchange rate.
Claims 1, 3—18, and 20-33 are rejected under 35 U.S.C. § 101 as
reciting ineligible subject matter in the form of an abstract idea.
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We AFFIRM.
ANALYSIS
The Appellants argue all claims together as a group (App. Br. 11), so
we select independent claim 1 as representative. See 37 C.F.R.
§41.37(c)(l)(iv).
We are not persuaded by the Appellants’ argument that, according to
the Appellants, the Examiner “ignores” and “improperly construes” the
claim language, and fails to present evidence in support of the rejection of
the claims as reciting an abstract idea. App. Br. 6—8; see also Reply Br. 1—2.
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 implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
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against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The following method is then used to determine whether what the
claim is “directed to” is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were
decided. See, e.g.. Elec. Power Grp., 830 F.3d at 1353—54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355—57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
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waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Independent claim 1 recites receiving a file, over a computer network,
and replacing data in the file with data retrieved from a “linked account data
file.” Put more succinctly, we find that the independent claims are directed
to “substituting one item of data for another item of linked data.” The
specification supports this finding. See Spec. 12 (“[LJinking at least one
secondary account to a primary account wherein at least one of the accounts
has a transaction card associated therewith.”); || 6, 11, 95; 196 (“[T]he
above-described embodiments can be combining to facilitate providing
combined and continuous data.”); 198 (“Exemplary embodiments of
methods and systems for linking transaction cards are described above in
detail.”).
Independent claim 1 is similar to several claims found to recite
abstract ideas by our reviewing courts. See Amdocs, 841 F.3d at 1294. For
example, the present claims are also similar to claim 1 in buySafe, cited by
the Examiner, where the system offers a transaction “[that binds] a
transaction performance guaranty [to the online] commercial transaction,”
thus, linking the transaction and the guaranty. Ans. 3 (citing buySAFE, Inc.
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v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)). In a further example,
dependent claims 2-4 of the ’510 and ’720 patents found unpatentable in
Alice recite a transaction “linked” to either a share price, weather event, or
market event. Id. at 2359 (“[T]he relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer. They do not.”) In
addition, the instant claims are similar to the claims in Planet Bingo, where a
player identification number is used to retrieve different sets of numbers
associated with the player identification number. See Planet Bingo, LLC v.
VKGSLLC, 576 Fed. App’x. 1005 (Fed. Cir. 2014).
The Appellants cite Ex parte Poisson, No. 2012-011084 (PTAB
Feb. 27, 2015), which is set forth to contend reversal of the Examiner's
rejection is necessary. App. Br. 6, Reply Br. 2. We disagree that Poisson is
controlling or relevant. First, we note that Poisson is not a precedential
decision, and, therefore, we are not bound by it.
Second, we have reviewed Poisson and do not consider it to be
pertinent to the issue in this appeal. In Poisson, the Board rejected the
Examiner’s conclusion that the claims were directed to an abstract idea of a
new set of rules for playing a card game. Poisson 5. Instead, the Board
found that the claim involved playing a game of football “using a table and
cards.” Id. The Board reversed the Examiner’s rejection because the
Examiner did not provide adequate findings of fact “on which to base the
Alice analysis.” Id. Thus, the Board concluded that the facts and evidence
relied upon by the Examiner did not support a finding that the claim was an
ineligible abstract idea. Id. Here, the Examiner made adequate findings of
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fact, including finding the claims similar to the abstract ideas recited in
buy Safe, a method cited approvingly by our reviewing court in Amdocs.
Thus, because we find that what independent claim 1 is “directed to”
to is similar to other claims found by the courts to be “directed to” abstract
ideas, we are unpersuaded that the Examiner erred in asserting that
independent claim 1 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
independent claim 1 is directed to an abstract idea, the claim must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element, or combination of elements which is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
To that end, we are unpersuaded by the Appellants’ argument that the
claims recite “significantly more than an abstract idea,” because, according
to the Appellants, the claims solve a problem that “arises from the use of
payment cards over an interchange network” and, thus, arises “specifically”
in computer networks. App. Br. 9—10. The specification discloses that “the
methods may also be used in combination with other account systems and
methods, and are not limited to practice with only the transaction card
account systems and methods as described herein.” Spec. 198. Thus, we
are unpersuaded that the problem purportedly solve is one unique to
“payment cards over an interchange network.”
The Appellants’ arguments concerning the import of “interchange
rate” and “interchange network” are similarly unpersuasive. App. Br. 9—11;
Reply Br. 2—3. For “interchange rate,” independent claim 1 recites replacing
a secondary “interchange rate” with a primary “interchange rate” located
through a data file that links the two rates. As recited, however, we are
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unclear how “interchange rate” is any different than generic data, in that
independent claim 1 merely recites receiving data at a computer, retrieving
other data, and replacing the received data with the retrieved data, using a
computer, none of which appears to require “interchange rate” data
specifically. We are unpersuaded that generic data is “significantly more.”
Indeed, we note that an “interchange rate” is something that can be
received, retrieved, and replaced mentally by a person. The Federal Circuit
has held that if a method can be performed by human thought alone, or by a
human using pen and paper, it is merely an abstract idea and is not patent-
eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.”). Furthermore, mental processes, e.g., retrieving and replacing data,
as recited in independent claim 1, remain unpatentable even when automated
to reduce the burden on the user of what once could have been done with
pen and paper. Id. at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63
(1972)].”).
For “interchange network,” as an initial matter, the only relevance of
“interchange network” we are able to discern is that the recited computer is
connected to the “interchange network,” as independent claim 1 only recites
receiving information at the “interchange network computer.” With that
addressed, independent claim 1 only utilizes what is essentially a generic
computer, which we are unpersuaded is “significantly more.” See Spec.
11 60-61. “[A]fter Alice, there can remain no doubt: recitation of generic
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computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted). Furthermore, for “interchange network”
itself, the specification discloses that it is conventional. Spec. 133 (“The
present invention relates to a payment card system, such as a credit card
payment system using the MasterCard® interchange.”).
Dependent claims 3—9, 31, and 33 expand on the recordkeeping and
use of data recited in claim 1. We are unpersuaded that anything, however,
in claims 1, 3—9, 31, or 33 purports to improve computer functioning or
“effect an improvement in any other technology or technical field” beyond
applying “substituting one item of data for another item of linked data” to
the rate interchange field. Alice, 134 S. Ct. at 2359. Nor are we persuaded
that the claims solve a problem unique to the Internet, because the Internet is
not recited, and not utilized in all embodiments described in the
specification. See DDR Holdings, 773 F.3d at 1257. The claims also are not
adequately tied to “a particular machine or apparatus.” Bilski v. Kappos, 561
U.S. 593, 602 (2010).
Because claims 1, 3—9, 31, and 33 are directed to an abstract idea and
nothing in the claims adds an inventive concept, the claims are not patent-
eligible under § 101. Therefore, we sustain the Examiner's rejection of
claims 1, 3—9, 31, and 33 under 35 U.S.C. § 101.
We find no meaningful distinction between independent method
claim 1 and either independent “system” claim 10, independent “computer”
claim 18, or independent “medium” claim 26; the claims all are directed to
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the same underlying invention. We, therefore, sustain the rejection under
§ 101 of claims 10, 18, and 26. As the Federal Circuit has made clear, “the
basic character of a process claim drawn to an abstract idea is not changed
by claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource, 654 F.3d at 1375-76 (citingIn reAbele, 684 F.2d 902 (CCPA
1982)). Additionally, because we find that dependent claims 11—17, 20-25,
and 27—33 lack additional elements that would render the claims patent-
eligible, we also sustain the rejection under § 101 of these dependent claims
on the same basis as the independent claims from which they depend.
DECISION
We AFFIRM the rejection of claims 1, 3—18, and 20-33 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
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