MasterCard International IncorporatedDownload PDFPatent Trials and Appeals BoardMar 16, 202014980896 - (D) (P.T.A.B. Mar. 16, 2020) Copy Citation 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. 14/980,896 12/28/2015 Andres Guillermo Lopez 1615/90 1985 125621 7590 03/16/2020 MasterCard Worldwide Jenkins, Wilson, Taylor & Hunt, P.A. 3015 Carrington Mill Boulevard Suite 550 Morrisville, NC 27560 EXAMINER CHAKRAVARTI, ARUNAVA ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/16/2020 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDRES GUILLERMO LOPEZ, JUAN CARLOS LEONARDO WILEY GARCIA, JOHN ANTHONY GIOACCHINI, BRYAN JACOB WEXLER, and STEPHEN ANTHONY PARENTO ____________ Appeal 2019-004594 Application 14/980,896 Technology Center 3600 ____________ Before NORMAN H. BEAMER, ADAM J. PYONIN, and GARTH D. BAER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 4–10, and 13–21. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies MasterCard International Incorporated as the real party in interest. (Appeal Br. 2.) Appeal 2019-004594 Application 14/980,896 2 THE INVENTION Appellant’s disclosed and claimed invention is directed to electronically guaranteeing payment of bills that includes electronically allocating the monetary amount required to pay the one or more bills by placing a temporary lien on funds associated with the payment card number or the account number. (Abstract.) Independent claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for electronically guaranteeing payment of bills, the method comprising: at a host server including at least one processor, polling a plurality of application programing interfaces (APIs) of a plurality of utility servers to obtain account balances for a user for a plurality of different utility providers and providing a graphical user interface for allowing the user to view the account balances, determine amounts of funds to allocate to be paid to each of the utility providers, and provide payment information including a payment card number or an account number; at a utility payment management server (UPMS) including at least one processor: receiving, via a communications network, the payment information including the payment card number or the account number communicated from the host server; receiving, from the host server, an indication of the amounts of funds allocated by the user to be paid to the utility providers; electronically allocating the amounts of funds to be paid to the utility providers by placing a temporary lien on funds associated with the payment card number or the account number; and Appeal 2019-004594 Application 14/980,896 3 electronically releasing the amounts of funds to the utility providers according to a predetermined schedule as communicated by the host server. Appeal Br. 18. (Claims Appendix.) REJECTIONS The Examiner rejected claims 1, 4–10, and 13–21 under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. (Final Act. 2.) The Examiner rejected claims 1, 4–10, and 13–21 under 35 U.S.C. § 103 as being unpatentable over Gross (US 6,721,716 B1, iss. Apr. 13, 2004), in view of Jhunjhunwala et al. (US 2013/0159180 A1, pub. June 20, 2013) (hereinafter “Jhunjhunwala”). (Final Act. 6.) ISSUES ON APPEAL Appellant’s arguments in the Appeal and Reply Briefs present the following issues:2 Issue One: Whether the Examiner erred in finding claims 1, 4–10, and 13–21 are directed to a judicial exception without significantly more. (Appeal Br. 10–15; Reply Br. 2–5.) Issue Two: Whether the Examiner erred in finding the combination of Gross and Jhunjhunwala teaches or suggests the limitation of 2 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Jan. 14, 2019); the Reply Brief (filed May 20, 2019); the Final Office Action (mailed Aug. 10, 2018); the Advisory Action (mailed Oct. 25, 2018); and the Examiner’s Answer (mailed Mar. 19, 2019) for the respective details. Appeal 2019-004594 Application 14/980,896 4 at a host server including at least one processor, polling a plurality of application programing interfaces (APIs) of a plurality of utility servers to obtain account balances for a user for a plurality of different utility providers and providing a graphical user interface for allowing the user to view the account balances, determine amounts of funds to allocate to be paid to each of the utility providers, and provide payment information including a payment card number or an account number, as recited in independent claim 1, and the commensurate limitation recited in independent claims 10 and 21. (Appeal Br. 16–17; Reply Br. 5–6.) ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. Arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). First Issue — Patent Eligibility The Examiner concludes “the independent claims are directed to abstract ideas” (Ans. 5) and the claims are patent-ineligible under 35 U.S.C. § 101 because [b]ill payment is fundamental economic practice. Obtaining account balance and determining amount of fund to be paid to utility providers constitutes methods of organizing human activities. (Ans. 4.) The Examiner further concludes that there is nothing in the claims that is significantly more than the abstract idea, given that “[t]he focus of the claims is not on any improvement in computers or servers as tools, but on the performance of independently abstract ideas that merely use computers as tools” (Ans. 5–6), and given that Appeal 2019-004594 Application 14/980,896 5 viewed as an ordered combination, the claims simply recite the conventional methods of determining utility bill amount due, placing temporary lien on payment card account, and releasing funds using generic computers. (Ans. 8.) Appellant argues that [a] host server that includes at least one processor and that polls APIs associated with different utility [servers] of a plurality of different utility providers is a particular machine and the recitation of such a machine in the independent claims constitutes a practical application of the alleged abstract idea. (Reply Br. 2.) Appellant further argues the disclosure provides a “solution to the technological problem of how to interface with multiple servers of different providers” (Reply Br. 3), which is guaranteeing, via a computing platform, electronic payments via electronic fund allocation in addition to consolidating at a single computing platform multiple utility bills. (Reply Br. 3, quoting Spec. 22:9–11.) Appellant further contends that “[t]he coordination, scheduling, management, allocation, and settlement of utility bills via host server 106 (Figure 1) and UPMS 110 (Figure 3) is necessarily rooted in computer technology.” (Reply Br. 3, quoting Spec. 22:6–8.) An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S. C. § 101. Here, independent claim 1 and its dependent claims relate to a method, independent claim 10 and its dependent claims relate to a system, and independent claim 21 relates to a computer readable medium — i.e., a process, machine, and manufacture, respectively. However, the Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. Appeal 2019-004594 Application 14/980,896 6 208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 598–99 (2013)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice, 573 U.S. at 216–17. In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 217. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. 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 v. Kappos, 561 U.S. 593, 611 (2010); mathematical concepts (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 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. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claims are directed to a patent-ineligible concept, the second step in the Alice/Mayo 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.” 573 U.S. at 217 (quoting Mayo Collaborative Appeal 2019-004594 Application 14/980,896 7 Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). 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.”‘ 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73.) A claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea. 573 U.S. at 221. A transformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words “apply it.” Id. Further to the Alice/Mayo analytical framework, and acknowledged by Appellant in the Briefs, the USPTO published revised guidance on the application of Section 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance”). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: Appeal 2019-004594 Application 14/980,896 8 (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance. In evaluating the claims at issue, we consider claim 1 as representative, consistent with how Appellant and the Examiner analyze the claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2016). Omitting the portions of the claim invoking use of generic technology (which are discussed separately below), the remaining limitations of claim 1 elaborate on a method of electronically guaranteeing payment of bills, via the steps of: (a) polling a plurality of application programing interfaces (APIs) of a plurality of utility servers to obtain account balances for a user for a plurality of different utility providers and providing a graphical user interface . . .; (b) receiving, via a communications network, the payment information . . .; (c) receiving, from the host server, an indication of the amounts of funds allocated by the user to be paid to the utility providers; (d) electronically allocating the amounts of funds to be paid to the utility providers by placing a temporary lien . . .; and (e) electronically releasing the amounts of funds to the utility providers according to a predetermined schedule. Apart from the use of generic technology (discussed further below), each of these limitations describes steps taken to centralize bill payment in which each payee is ensured payment via a “temporary lien” placed on the payor’s funds. Appeal 2019-004594 Application 14/980,896 9 As stated in the Revised Guidance, methods of organizing human activity considered an abstract idea include “fundamental economic principles or practices (including hedging, insurance, [and] mitigating risk); [and] managing . . . interactions between people (including . . . following rules or instructions).” (Revised Guidance, 84 Fed. Reg. at 52). The above listed claim 1 limitations relate to the subject matter of centralizing accounts in which each account is guaranteed payment, which serves to mitigate the risk of non-payment incurred by the payees, which here are “utility providers.” See, e.g., Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Further, the claimed method performs the bill payment for the utility customer and as such represents “the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices” and constitutes an “abstract idea[].” Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). The above listed limitations of claim 1 relate to the subject matter of performing bill payment which is a managed interaction between people that follows rules and instructions. Therefore, we agree with the Examiner that the subject matter of claim 1 recites an abstract idea, as do the remaining claims. Further pursuant to the Revised Guidance, we consider whether there are additional elements set forth in claim 1 that integrate the judicial exception into a practical application. Revised Guidance, 84 Fed. Reg. at 54–55. Here, the abstract idea of claim 1 is carried out using a “host server including at least one processor” that interacts with a “utility payment management server (UPMS) including at least one processor.” We agree Appeal 2019-004594 Application 14/980,896 10 with the Examiner that the “focus of the claims is not on any improvement in computers or servers as tools, but on the performance of independently abstract ideas that merely use computers as tools.” (Ans. 5–6.) “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Mayo, 566 U.S. at 77. Appellant’s reliance on Bascom is unavailing. (Appeal Br. 11–12.) 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, 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 does the subject matter of claim 1 contain additional elements that implement the judicial exception with a “particular machine,” because the claims do not specify any details in regard to the processor. See MPEP § 2106.05(b). Particularly, Appellant’s argument that a “host server” that “polls APIs with different utility [servers]” is a “particular machine” (see Reply Br. 2) is undercut by the claim 1’s lack of details with regard to the APIs, as well as the admission in the disclosure that the host server is “leveraging existing API information” (Spec. 11:8, emphasis added) that any general-purpose processor could appear to handle. Appeal 2019-004594 Application 14/980,896 11 Further, the method does not transform matter; at best it transforms information. See MPEP § 2106. 05(c). Nor does claim 1 have any other meaningful limitations (MPEP § 2106. 05(e)), or any of the other considerations set forth in the Revised Guidance regarding a determination of whether additional elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Accordingly, we conclude that the subject matter of claim 1 (and the remaining claims) is directed to fundamental economic principles or practices and managing personal behavior or relationships or interactions between people, which are examples of the certain methods of organizing human activity, and thus an abstract idea, and the additional elements recited therein do not integrate the abstract idea into a practical application. Turning to the second step of the Alice inquiry, we 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.” 573 U.S. at 217 (quoting Mayo, 566 U.S. at 66, 79, 78 (2012)). We do not agree with Appellant that additional elements of claim 1, whether individually or in combination, add “significantly more” to the basic abstract idea encompassed by the claim sufficient to transform the claimed abstract idea into a patent-eligible application. Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention.”). Here, the arrangement of servers is part of the abstract idea of bill payment, in which the technical details of interfacing with different payees is moved to a server separate from the server that the payor Appeal 2019-004594 Application 14/980,896 12 interfaces. The benefits enumerated in the disclosure are societal; for example, electronically guaranteeing payments provides the utility or service provider with an increased level of assurance that a customer can pay for utility services provided, while the customer may experience discounted rates, improved quality of service, rebates, incentives, or the like. The methods, systems, and computer readable media described herein may advantageously increase access to various utilities, thereby decreasing the cost of the respective utilities. (Spec. 5:14–20.) Other than using generic technology — two servers, each including at least one processor — these improvements are elaborations on the basic abstract idea itself, in which a payor consolidates bill payments. “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself.” Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018). Moreover, “[p]atent law does not protect claims to an ‘asserted advance in the realm of abstract ideas . . . no matter how groundbreaking the advance.”‘ 890 F.3d at 1359 (Fed. Cir. 2018). The record supports the Examiner’s finding that the additional elements — such as a “laptop or mobile phone of utility servers, payment server, and cardholder platform over a network” use “generic architecture” and comprise “generic devices.” (Ans. 5.) These devices are well- understood, routine, conventional, and specified at a high level of generality. Revised Guidance, 84 Fed. Reg. at 56. Despite the disclosure’s insistence that host server 106 and/or CMS 110 “constitute special purpose computers” (Spec. 19:31–20:1), the descriptions of the servers in the disclosure include no distinguishing technical features. Further, as previously noted, the host server leverages “existing API information.” (Spec. 11:8, emphasis added.) Appeal 2019-004594 Application 14/980,896 13 Nothing regarding any aspect of the “ordered combination” of the claim elements provide significantly more than the abstract idea that claim 1 is directed to. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1. Appellant provides no arguments that would differentiate the remaining claims from claim 1. Thus, the foregoing analysis of claim 1 is exemplary of that for independent claims 10 and 21, and dependent claims 4–10, and 13–20. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). Therefore, we also sustain the Examiner’s 35 U.S.C. § 101 rejection of those claims. Second Issue — Obviousness In finding that the combination of Gross and Jhunjhunwala teaches or suggests the independent claim 1 limitation at issue, the Examiner relies on Gross’s disclosure of biller server database 128 and software 126 that is centrally located between the customer pc 112, the client database 122, the biller computing platform 124 and payment server 134, in which the customer may install customer client software that provides an electronic statement, bill presentment and a payment system. (Final Act. 6, Ans. 11– 14; Gross 3:60–65, 17:50–64, 20:20–65, 21:10–50, 9:5–45, 11:1–10, 8:30– 45, Figs. 1, 5.) Appellant argues that the Examiner’s Answer indicates that the architecture in Figure 1 of Gross discloses the claimed host server that queries the APIs of a plurality of different utility servers to obtain account balances. The analysis on pages 11–13 of the office action ignores the fact that the client, rather than a server separate from the utility servers polls the biller competing platforms to obtain the account balances. (Reply Br. 5–6, citing Gross 3:60–66.) Appeal 2019-004594 Application 14/980,896 14 We agree. The Examiner finds that “instead of a user installing a client software locally, it would have just as obvious to host the customer profile information at the server end and have the customer log into the server via the Internet to obtain bill information” (Ans. 14), but provides no explanation why one of ordinary skill in the art would make such a modification. We do not understand the Examiner’s statement that Gross’s reference to “intelligent polling” (Ans. 14, citing Gross 3:64) can be read as “acknowledg[ing] that the polling logic could be deployed at either the server end or the client end” (Ans. 14), because the “intelligent polling” is based on the “billing cycle” (Gross 3:65) and thus appears to relate to the timing of the polling. The addition of Jhunjhunwala does not cure the deficiencies of Gross. Accordingly, we are constrained by the record to reverse the Examiner’s obviousness rejection of independent claim 1, as well as independent claims 10 and 21 commensurate in scope, and all dependent claims. CONCLUSION For the reasons stated above, we affirm the Examiner’s non-statutory subject matter rejection of claims 1, 4–10, and 13–21, and reverse the Examiner’s obviousness rejection of claims 1, 4–10, and 13–21. Appeal 2019-004594 Application 14/980,896 15 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–10, 13– 21 101 non-statutory subject matter 1, 4–10, 13–21 1, 4–10, 13– 21 103 Gross, Jhunjhunwala 1, 4–10, 13–21 Overall Outcome 1, 4–10, 13–21 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation