Rosenblatt, Charles A. et al.Download PDFPatent Trials and Appeals BoardMar 24, 202010729997 - (D) (P.T.A.B. Mar. 24, 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. 10/729,997 12/09/2003 Charles A. Rosenblatt 05793.3125-00000 2800 121629 7590 03/24/2020 Finnegan/Capital One 901 New York Ave., NW Washington, DC 20001 EXAMINER TROTTER, SCOTT S ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 03/24/2020 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): CapOne_USPTO@finnegan.com lisa.tkach@finnegan.com regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES A. ROSENBLATT and JACK M. FORESTELL ____________ Appeal 2018-006760 Application 10/729,997 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s non–final rejection of claims 1–4, 6–8, 10, 13–19, 32–35, 37–39, 41, 44–50, 63–66, 68–70, 72, 75–81 and 94–96. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a Methods and Systems for Offering a Credit Card Account to a Consumer at a Point-Of-Sale Location. Title. Claim 1 is representative of the subject matter on appeal. 1. A method for providing a credit card account to a Appeal 2018-006760 Application 10/729,997 2 consumer, the method comprising: receiving, at a computer system associated with an issuer of the credit card account, an application for the credit card account from the consumer through a point-of-sale location; receiving, at the computer system, a notification that the consumer requests to purchase a product at the point-of-sale location using the credit card account, wherein the product comprises functions associated with reoccurring fees; creating, by the computer system, the credit card account for the consumer based on the notification of the consumer's request to purchase the product and the consumer's application; and configuring, by the computer system, the credit card account such that the issuer of the credit card account charges to the credit card account the reoccurring fees associated with the functions of the product; determining, by the computer system, that the created credit card account is at least one of closed and delinquent; and causing, by the computer system, a subset of the functions associated with the product to become inoperable by generating a signal instructing an issuer processor to disable one or more of the functions of the product based on the determination that the credit card account is at least one of closed and delinquent. THE REJECTION Claims are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–4, 6–8, 10, 13–19, 32–35, 37–39, 41, 44–50, 63–66, 68–70, 72, 75–81, and 94–96 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Appeal 2018-006760 Application 10/729,997 3 ANALYSIS 35 U.S.C. § 101 REJECTION In the briefing, Appellant refers to prior USPTO guidance regarding § 101, including, for example: 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (December 16, 2014). However, the 2014 Guidance and other prior guidance, including: (1) July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015); (2) May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016); and (3) Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016 have been superseded by the 2019 Revised Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52. As such, our analysis will not address the sufficiency of the Examiner’s rejection against the cited prior guidance. Rather, our analysis will comport with the 2019 Revised Guidance as discussed below. We will sustain the rejection of claims 1–4, 6–8, 10, 13–19, 32–35, 37–39, 41, 44–50, 63–66, 68–70, 72, 75–81, and 94–96 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. . . . [The Court] described step Appeal 2018-006760 Application 10/729,997 4 two of this analysis as a 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.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019). The Examiner determines that the claims are directed to the concept of providing a credit card account to consumers at a point of sale location. (Non–Final Act. 7). The Examiner further determines that the concept recited in the claims is a fundamental economic activity, and also is comparing new and stored information, collecting information, analyzing it Appeal 2018-006760 Application 10/729,997 5 and displaying certain results of the collection and analysis. The Examiner finds that the claims have limitations to simply implement the abstract idea via a general purpose computer and/or computer system. The claims implement a method using a client device, a general purpose computer and/or a computer system to accomplish a plurality of process steps to practice the abstract idea. (Non–Final Act. 8). The Specification describes that many merchants offering products are more willing to sell a product to a consumer if the consumer pays by credit card but all consumers do not have credit cards. In situations where the consumer does not have a credit card, the merchant usually does not have the ability to offer the consumer a credit card. (Specification ¶5). There is a need for a system and method for offering a credit card account to a consumer at a point-of-sale location. (Specification ¶4). Consistent with the disclosure, claim 1 recites, “receiving . . . an application for the credit card account from the consumer through a point-of- sale location,” and “creating . . . the credit card account.” We thus agree with the Examiner’s findings that claim 1 is directed to providing a credit card account to consumers at a point of sale location. Offering a credit card account to a consumer is a marketing/sales activity and therefore is the judicial exception of a certain method organizing human activity i.e. a fundamental economic practice. Guidance 84 Fed. Reg. at 52. We also find the steps of claim 1 constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving Appeal 2018-006760 Application 10/729,997 6 contractual relations are directed to abstract ideas). Thus, we find that claim 1 recites the abstract ideas of a certain method of organizing human activity and in the alternative a mental process. Turning to the second prong of the “directed to test”, claim 1 requires a “computer system.” The recitation of the words “computer system” does not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance 84 Fed. Reg. at 53. We find no indication in the Specification, nor do Appellant directs us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. Appeal 2018-006760 Application 10/729,997 7 In this regard, the recitation of a computer system does not affect an improvement in the functioning of a computer system or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 recites judicial exceptions that are not integrated into a practical application and thus claim 1 is directed to an “abstract idea.” Turning to the second step of the Alice analysis, because we find that claim 1 is directed to abstract ideas, claim 1 must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). The Examiner makes the correct finding here stating, e.,g., [t]he elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field. (Non–Final Act. 9). The introduction of a computer into the claims does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an Appeal 2018-006760 Application 10/729,997 8 abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. Taking the claim elements separately, the function performed by the computer system at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic Appeal 2018-006760 Application 10/729,997 9 computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer system of Appellant’s claim 1 adds nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The claims do not, for example, purport to improve the functioning of the computer itself. As we stated above, the claims do not affect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. ¶ 32). Thus, claim 1 at issue amounts to nothing significantly more than instructions to apply the abstract idea of providing a credit card account to consumers at a point of sale location using some Appeal 2018-006760 Application 10/729,997 10 unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 9–33; Reply Br. 1– 7) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims recite a specific technological solution to an existing problem in electronic transactions. (Appeal Br. 14). Specifically, Appellant argues that the specific steps of claim 1 allow merchants to provide customers without existing credit cards with the ability to purchase a product with recurring payments. However, the problem of customers without credit cards is a business problem not a technological problem. In addition, we do not agree with Appellant that claim 1 is analogous to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Appeal Br. 20). In DDR Holdings, the Court evaluated the eligibility of claims “address[ing] the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.” DDR, 773 F.3d at 1257. There, the Court found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre- Appeal 2018-006760 Application 10/729,997 11 Internet analog.” Id. at 1258. The Court cautioned, however, “that not all claims purporting to address Internet-centric challenges are eligible for patent.” Id. For example, in DDR Holdings the Court distinguished the patent-eligible claims at issue from claims found patent-ineligible in Ultramercial. See DDR, 773 at 1258–59 (citing Ultramercial, 772 F.3d 7 0 9 , 715–16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims were “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims were patent ineligible because they “merely recite[d] the abstract idea of ‘offering media content in exchange for viewing an advertisement,’ along with ‘routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet.’” Id. Appellant’s claim 1 i s analogous to claims found ineligible in Ultramercial and distinct from claims found eligible in DDR Holdings. The ineligible claims in Ultramercial recited “providing [a] media product for sale at an Internet website;” “restricting general public access to said media product;” “receiving from the consumer a request to view [a] sponsor message;” and “if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query.” Ultramercial, 772 F.3d at 712. Similarly, Appellants’ asserted claims recite receiving, analyzing, modifying, and transmitting data. This is precisely the type of Internet activity found ineligible in Ultramercial. We do not agree with the Appellant that the Examiner has no support for the finding that the elements in addition to the abstract idea are well Appeal 2018-006760 Application 10/729,997 12 understood, routine and conventional. (Appeal Br. 24). The Specification itself is evidence that the computer system recited in claim 1 is well understood, routine and conventional because it discloses that the system of the invention can be implemented with any type of computer operating environment such as hand-held devices, multiprocessor systems, microprocessor based or programmable sender electronic devices, minicomputers, mainframe computers and the like. In addition, the Specification describes that the processor of claim 1 may be a mobile terminal such as a smart phone, a cellular telephone, a personal digital assistant, an intelligent pager etc. (Specification ¶ 32). We do not agree with Appellant that claim 1 recites a technological- based solution using an unconventional arrangement of elements like the claims in BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appellant argues that the arrangement of elements or process steps for creating and administering credit card accounts is unconventional. (Appeal Br. 28–29). According to Appellant, claim 1 recites a specific way to create accounts and ensure payments. (Appeal Br. 29). In BASCOM, the Federal Circuit followed the Supreme Court’s guidance for determining whether the claims recite an inventive concept set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2357–60 (2014). In Alice, the Supreme Court explained that, under the second step of the patent-eligibility analysis, “the 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.” 134 S. Ct. 2347, 2359 (2014). The Supreme Court also provided examples of claims that represent Appeal 2018-006760 Application 10/729,997 13 more than instructions to implement an abstract idea on a generic computer, such as claims that purport to improve the functioning of the computer itself and claims that effect an improvement in any other technology or technical field. Id. at 2359–60. Turning to BASCOM, the Federal Circuit held “[t]he inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from end-users, with customizable filtering features specific to each end user.” 827 F.3d at 1350. In determining this feature to be an inventive concept, the Federal Circuit explained that the remote location of a filtering tool having customizable user-specific filtering features provides the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server and is a technical improvement over prior art ways of filtering content. Id. at 1350–51. Notably, the Federal Circuit specifically determined that “the claims may be read to ‘improve[] an existing technological process.’” Id. at 1351 (citing Alice, 134 S. Ct. at 2358). The improvement that the Appellant touts is a specific way to create accounts and ensure payments using credit card accounts linked to the functions of a product purchased with the account. (Appeal Br. 29). This is a business improvement to how credit accounts are created. No improvement of the computer system is recited in claim 1 and therefore claim 1 is not analogous to the claims in Bascom. We do not agree with Appellant that claim 1 transforms a physical product from a functioning device into a non-functioning device. (Appeal Br. 33). We agree with the Examiner that it is the network which receives the signal and is told to stop providing functionality to the product. However, the product is unchanged and therefore the product is not transformed in any way. (Ans. 10). Appeal 2018-006760 Application 10/729,997 14 In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. §101. We will also sustain the rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1–4, 6–8, 10, 13–19, 32–35, 37–39, 41, 44–50, 63–66, 68–70, 72, 75–81 and 94–96 under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 1-–4, 6-–8, 10, 13-–19, 32-–35, 37-–39, 41, 44-–50, 63-–66, 68-–70, 72, 75-–81 and 94-–96 is affirmed. Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–8, 10, 13–19, 32–35, 37– 39, 41, 44– 50, 63–66, 68–70, 72, 75–81 and 94–96 101 Eligibility 1-–4, 6-–8, 10, 13-–19, 32-–35, 37- –39, 41, 44- –50, 63-–66, 68-–70, 72, 75-–81 and 94-–96 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation