MasterCard International IncorporatedDownload PDFPatent Trials and Appeals BoardOct 23, 20202020002283 (P.T.A.B. Oct. 23, 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. 15/041,830 02/11/2016 Axel Cateland P01888-US- UTIL (M01.332) 5282 125619 7590 10/23/2020 Mastercard International Incorporated c/o Buckley, Maschoff & Talwalkar LLC 50 Locust Avenue New Canaan, CT 06840 EXAMINER CHOO, JOHANN Y ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 10/23/2020 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): colabella@bmtpatent.com martin@bmtpatent.com szpara@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte AXEL CATELAND ________________ Appeal 2020-002283 Application 15/041,830 Technology Center 3600 ________________ Before JOHN A. EVANS, LARRY J. HUME, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 10–13.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The claimed invention relates to enhancing security of payment transactions. Spec. 2:11–12. Claim 10 is illustrative of the invention and is reproduced below: 10. A method for enhancing security of operation of a computerized payment account transaction system, the system 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, MasterCard International Incorporated is the real party in interest. Appeal Br. 2. 2 Claims 1–9 and 14–20 are cancelled. Appeal Br. 12–13. Appeal 2020-002283 Application 15/041,830 2 including a plurality of computers interconnected with each other by digital signal transmission channels, the computers including a payment support services computer, the payment support services computer including a processor and a memory device in communication with the processor, the memory device storing program instructions for controlling the processor, the method comprising: receiving, by the processor in the payment support services computer, an authorization request for a payment account transaction, the authorization request including a payment token, a nonce value and a security code, the nonce value in a format that matches a format of a payment account expiration date, the nonce value contained in an account expiration date data field of said authorization request, the security code being a three-digit number; using, by the processor, a cryptographic key to cryptographically process the payment token with the nonce value to produce a presumed security code value, the presumed security code being a three-digit number; comparing, by the processor, the presumed security code value with the security code included in the authorization request; and generating, by the processor, a verification indication based at least in part on a result of the comparing step, said verification indication verifying authenticity of the payment token. Appeal Br. 12 (Claims Appendix) (emphases added). REJECTIONS The Examiner rejects claims 10–13 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act. 3–5. The Examiner rejects claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Sheets (US 2015/0019443 A1; published Jan. 15, 2014) and Hammad (US 2010/0252623 A1; published Oct. 7, 2010). Final Act. 5–9. Appeal 2020-002283 Application 15/041,830 3 The Examiner rejects claims 12 and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Sheets, Hammad, and Ciurea (US 2011/0258118 A1; published Oct. 20, 2011). Final Act. 9–10. ANALYSIS I. Claims 10–13 Rejected Under 35 U.S.C. § 101 A. 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 U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part 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. Kappos, 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 Appeal 2020-002283 Application 15/041,830 4 mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 waterproof 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))). In Diehr, the claim at issue recited a mathematical formula, but the 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.”). Having said that, the 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. (citation omitted) (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 turn 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 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to Appeal 2020-002283 Application 15/041,830 5 ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (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. B. USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also Update at 1. Under the 2019 Revised Guidance and the Update, 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”) (available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf). 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a Appeal 2020-002283 Application 15/041,830 6 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is 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. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. C. The Examiner’s Rejection and Appellant’s Arguments The Examiner concludes the present claims recite certain methods of organizing human activity. Ans. 5. The Examiner concludes the present claims are not integrated into a practical application and there are no limitations recited in the present claims that add significantly more to the abstract idea. Final Act. 4; Ans. 3. The Examiner determines the present claims do not amount to significantly more than an abstract idea itself because the abstract idea is implemented using additional elements that are well-understood, routine, and conventional. Ans. 4 (citing “receiving data”). Appellant argues that the present claims does not recite an abstract idea because it is a method that improves security for operating a computerized payment network. Appeal Br. 8. Appellant argues the present claims do not preempt any abstract idea. Id. at 7; Reply Br. 2. Appellant argues the Examiner does not provide the evidence required by Berkheimer practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2020-002283 Application 15/041,830 7 to support a determination that the additional elements are well-understood, routine, or conventional. Appeal Br. 8 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). We disagree with Appellant. D. Step 2A, Prong 1 Patent eligibility under 35 U.S.C. § 101 is a question that we resolve pursuant to the 2019 Revised Guidance. The emphasized portions of claim 10,5 reproduced above (see supra at 2), recite commercial interactions because they pertain to security of payment transactions. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. Commercial interactions fall into the category of certain methods of organizing human activity. Id. Certain methods of organizing human activity are a type of abstract idea. Id. We, therefore, disagree with Appellant’s argument that the present claims do not recite an abstract idea because it is a method that operates a computerized payment network. Appeal Br. 8. The additional elements (i.e., the non-emphasized portions of claim 1 recited supra at 1–2) are generic computer components for the reasons discussed infra. We 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 2019 Revised Guidance, 84 Fed. Reg. at 54–55. We therefore (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements both 5 Appellant states claim 10 may be taken as exemplary of the pending claims. Appeal Br. 6. We, therefore, group claims 10–13 together and refer to this grouping as the “present claims.” Appeal 2020-002283 Application 15/041,830 8 individually and collectively to determine whether they integrate the exception into a practical application. See id. Accordingly, we proceed to Prong 2. E. Step 2A, Prong 2 Here, the elements in the present claims used to implement the abstract idea are the “computerized payment account transaction system,” “computers,” “payment support services computer,” “processor,” and “memory device.” See 2019 Revised Guidance, 84 Fed. Reg. at 52. The additional elements of the present claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea for the following reasons. Appellant does not identify persuasively how the Specification sets forth an improvement in technology. Appeal Br. 9–10 (citing Core Wireless Licensing S.A.R.L v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). The Update addresses how we consider evidence of improvement that is presented to us. The Update states: [T]he evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole “integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Update 11 (emphases added). The Update further states: During examination, the examiner should analyze the “improvements” consideration by evaluating the specification and the claims to ensure that a technical explanation of the Appeal 2020-002283 Application 15/041,830 9 asserted improvement is present in the specification, and that the claim reflects the asserted improvement. Generally, examiners are not expected to make a qualitative judgment on the merits of the asserted improvement. If the examiner concludes the disclosed invention does not improve technology, the burden shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology. Any such evidence submitted under 37 C.F.R. § 1.132 must establish what the specification would convey to one of ordinary skill in the art and cannot be used to supplement the specification. For example, in response to a rejection under 35 U.S.C. § 101, an applicant could submit a declaration under § 1.132 providing testimony on how one of ordinary skill in the art would interpret the disclosed invention as improving technology and the underlying factual basis for that conclusion. Id. at 13 (emphasis added). We, therefore, focus on any evidence Appellant cites in its briefs, as discussed in the Update. Appellant does not refer us to any paragraphs of the Specification or other evidence of an improvement to a technology or technological field. Appeal Br. 18–20. We, therefore, disagree with Appellant’s argument that the present claims recite an improvement to the security for operating a computerized payment network. Appeal Br. 8. This argument amounts merely to attorney argument unsupported by evidence. Furthermore, the additional elements in the present claims, namely “computerized payment account transaction system,” “computers,” “payment support services computer,” “processor,” and “memory device” do not, either individually or in combination, integrate the abstract idea into a practical application. In particular, Appellant’s Specification discloses that these elements encompass generic computer components. Spec. 4:1–2, 4:11–23, 5:19–29, 7:4–5, 7:19–23. Merely adding generic computer Appeal 2020-002283 Application 15/041,830 10 components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). We, therefore, conclude that the additional elements, whether considered individually or as an ordered combination, do not integrate the abstract idea into a practical application because the additional elements are generic computer components that do not impose meaningful limits on practicing the abstract idea. Moreover, at best, the present claims are directed to improvements to an abstract idea (i.e., certain methods of organizing human activity), rather than to improvements to a technology or technological field. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Appellant’s arguments that the present claims do not preempt any abstract idea (Appeal Br. 7; Reply Br. 2), do not persuade us that the claims are patent eligible. Although preemption may denote patent ineligibility, its absence does not demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-ineligible concept, preemption concerns “are fully addressed and Appeal 2020-002283 Application 15/041,830 11 made moot” by an analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Appellant does not make any other arguments pertaining to Step 2A, Prong 2. Because we determine that the present claims recite an abstract idea that is not integrated into a practical application, we proceed to Step 2B. F. Step 2B We disagree with Appellant’s argument that the Examiner fails to provide sufficient evidence to support the finding that the additional elements implementing the abstract idea, whether considered individually or as an ordered combination, are well-understood, routine, and conventional. Appeal Br. 8 (citing Berkheimer, 881 F.3d 1360). The Examiner determines the present claims do not amount to significantly more than an abstract idea itself because the abstract idea is implemented using additional elements that are well-understood, routine, and conventional. Ans. 4 (citing “receiving data” as evidentiary support). Courts have recognized “receiving data” as computer functions that are well- understood, routine, and conventional activities. MPEP § 2106.05(d) (citing In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)). To the extent that Appellant is arguing that the Specification does not support a finding that the additional elements implementing the abstract idea are well-understood, routine, and conventional, we disagree because the Specification indicates that the additional elements (i.e., “computerized payment account transaction system,” “computers,” “payment support services computer,” “processor,” and “memory device”) are nothing more Appeal 2020-002283 Application 15/041,830 12 than generic computer components. Spec. 4:1–2, 4:11–23, 5:19–29, 7:4–5, 7:19–23. Appellant’s Specification indicates these additional elements were well-understood, routine, and conventional components because it describes them at a high level of generality and in a manner that indicates that they are sufficiently well-known. Appellant does not argue that the dependent claims recite any additional features that would transform the abstract idea embodied in independent claim 10 into an inventive concept. We, therefore, sustain the Examiner’s rejection of: (1) independent claim 10; and (2) dependent claims 11–13 under § 101. II. Claims 10–13 Rejected Under 35 U.S.C. § 103 The Examiner finds Sheets teaches the limitation “the nonce value in a format that matches a format of a payment account expiration date.” Final Act. 6 (citing Sheets ¶¶ 37, 182, 199, 201). Appellant argues Sheets merely teaches a “nonce value,” but fails to teach the nonce value is in a format of a payment account expiration date. Appeal Br. 9–10; Reply Br. 2. Appellant argues that Sheets and Hammad teaches away from the claimed concept of a nonce value in the format of an expiration date. Appeal Br. 10. We disagree with Appellant. Claim construction is an issue of law that is left for a court or a tribunal. “[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). “[T]he ultimate issue of the proper construction of a claim should be treated as a question of law.” Id. at 326. Appeal 2020-002283 Application 15/041,830 13 We construe claim terms according to their broadest reasonable construction in light of the specification of the patent or application in which they appear. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent with the broadest reasonable construction, claim terms are generally given their ordinary and customary meaning, as understood by a person of ordinary skill in the art, in the context of the entire specification. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification.”). However, a term may be defined in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We note that the limitation “the nonce value in a format that matches a format of a payment account expiration date” recites non-functional descriptive material because it does not change the operation of the claimed processor. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006). As a result, we need not decide whether Sheets teaches the limitation “the nonce value in a format that matches a format of a payment account expiration date.” Appeal Br. 9–10; Reply Br. 2. Under this construction, we Appeal 2020-002283 Application 15/041,830 14 also need not decide whether Sheets and Hammad teaches away from the claimed concept of a nonce value in the format of an expiration date. Appeal Br. 10. Appellant states claim 10 is exemplary of the pending claims. Appeal Br. 9. We, therefore, sustain the Examiner’s rejection of: (1) independent claim 10; and (2) dependent claims 11–13 under § 103. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION 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). See 37 C.F.R. § 41.50(f). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10–13 101 Eligibility 10–13 10, 11 103 Sheets, Hammad 10, 11 12, 13 103 Sheets, Hammad, Ciurea 12, 13 Overall Outcome 10–13 Copy with citationCopy as parenthetical citation