Barbara Febonio et al.

Patent Trials and Appeals Board

Aug 6, 2019

12486073 - (D) (P.T.A.B. Aug. 6, 2019)

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.
12/486,073 06/17/2009 Barbara Febonio FR920080055US1 4423
37945 7590 08/06/2019
DUKE W. YEE
YEE AND ASSOCIATES, P.C.
P.O. BOX 190809
DALLAS, TX 75219
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/06/2019 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARBARA FEBONIO and SANDRO PICCININI1
____________
Appeal 2018-001458
Application 12/486,073
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–7 and 9–19, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 The Appellants identify International Business Machines Corporation of
Armonk New York as the real party in interest. (App. Br 2).
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THE INVENTION
The Appellants’ claimed invention is directed to a method and system
for authorizing an electronic payment (Spec., para. 11). Claim 1, reproduced
below with the italics added, is representative of the subject matter on
appeal.

1. A method performed by a computer for authorizing an
electronic payment request, the method comprising:
the computer requesting a first code from a user on receipt
of a payment request made with a payment card configured with
a one or more details of a one or more devices in the possession
of a one or more owners of the payment card;
the computer comparing the first code with a predefined
second code;
the computer refusing to make the payment in the event the
first code does not substantially match the predefined second
code, otherwise the computer performs steps, in the event the
first code substantially matches the second code, of:
requesting a third code from the one or more
devices with whose details the payment card is configured;
comparing the third code with a predefined fourth
code; and
refusing to make the payment in the event the third
code does not substantially match the predefined fourth
code, otherwise authorizing the payment in the event the
third code substantially matches the predefined fourth
code.

THE REJECTION
The following rejection is before us for review:
Claims 1–7 and 9–19 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 8–14; Reply Br. 3–7).
The Appellants argue further that the claim is “significantly more” than the
alleged abstract idea (App. Br. 14–16; Reply Br. 7, 8). The Appellants also
argue that that claim does not preempt all methods of “requesting, collecting,
and comparing information of the codes for authorizing/refusing the
electronic payment request made with the payment card” (App. Br. 15).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–19; Ans. 6–22).
We agree with the Examiner. 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 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 Supreme Court’s two-step framework, described in Mayo

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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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
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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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
Supreme 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 Supreme Court also indicated that a claim “seeking patent
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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. (internal 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.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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, do we then look 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.
See Guidance, 84 Fed. Reg. at 54–56.

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
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concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “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].’” 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.
Here, the Examiner has determined that the claim is directed to the
concepts of “requesting, collecting, and comparing the information of the
codes for authorizing/refusing the electronic payment request made with a
payment card” which is directed to “[c]ollecting and comparing known
information” and is therefore an abstract idea (Final Act. 3). We
substantially agree with the Examiner in this regard. In claim 1, the steps of
“requesting a first code from a user on receipt of a payment request made
with a payment card”; “comparing the first code with a predefined second
code”; “comparing the first code with a predefined second code”; “refusing
to make the payment in the event the first code does not substantially match
the predefined second code”; otherwise “requesting a third code from the
one or more devices with whose details the payment card is configured;
comparing the third code with a predefined fourth code; and refusing to
make the payment in the event the third code does not substantially match
the predefined fourth code, otherwise authorizing the payment in the event
the third code substantially matches the predefined fourth code are all steps
one would perform in authorizing an electronic payment request by
comparing and requesting codes. Such actions are a fundamental economic
practice, which is one of certain methods of organizing human activities
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determined to be an abstract concept. We nonetheless also point out that
Courts have found, in certain circumstances, that claims reciting requesting,
collecting, and comparing information are mental processes, which are also
an abstract idea, in that the focus of the claim, in such a situation, is a
comparison step, which, at its most general, is no more than a person
mentally observing two objects and making an “evaluation, judgment,
opinion” as to the similarities and difference between them. Content
Extraction and Transmission LLC v. Wells Fargo Bank, National
Association, 776 F.3d 1343, 1347 (Fed. Cir. 2014). See also Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (certain
methods of collecting information, analyzing it, and displaying results from
certain results of the collection and analysis was held to be patent in-
eligible). See Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (local processing of payments for remotely
purchased goods is a fundamental economic practice). In buySAFE, Inc. v.
Google, 765 F.3d 1350, 1355 (Fed. Cir. 2014) claims drawn to creating a
contractual relationship and long-familiar commercial transactions is a
fundamental economic practice. And most relevant to here, in
FairwarningIP, LLC v. Iatiric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016), claims directed to collecting and analyzing information to detect
misuse and notifying a user when misuse is detected were similarly held
patent in-eligible because those claims also concern steps that can be
performed practically in the human mind.
Thus, we consider the claim to recite at least one abstract idea as
identified above.
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Turning to the second prong of the “directed to” inquiry of the
Guidance, we determine whether there are additional elements that integrate
the above abstract ideas into a practical application. We determine they do
not. The claims do not improve computer functionality, improve another
field or technology, utilize a particular machine, or effect a physical
transformation. Rather, we determine that nothing in the claims imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of “the computer requesting” a first
code on receipt of a payment request; [2] “the computer comparing” the first
and second codes; [3] “ the computer refusing to make the payment” if there
is no substantial match; otherwise the computer [4] “requesting a third
code”; [4] “comparing” the third code with a fourth code; [5] “refusing to
make payment” in the event the third and fourth code does not substantially
match; and otherwise the computer “authorizing the payment” are merely
generic steps performed by a generic computer to request data, compare
data, and executing certain steps based on the comparison of the data. The
steps that the computer performs does not improve computer functionality.
That is, these recited steps [1]–[5] “do not purport to improve the
functioning of the computer itself” but are merely generic functions
performed by a conventional processor. Likewise, these same steps [1]–[5]
listed above do not improve the technology of the technical field and merely
use generic computer components and functions to perform the steps. Also,
the recited method steps [1]–[5] above do not require a “particular machine”
and can be utilized with a general purpose computer, and the steps
performed are purely generic. In this case the general purpose computer is
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merely an object on which the method operates in a generic manner and does
not provide “significantly more” to the claim beyond a nominal or
insignificant execution of the method. Further, the claim as a whole fails to
effect any particular transformation of an article to a different state in a
manner that would render the claim “significantly more” than the abstract
idea. The recited steps [1]–[5] fail to provide meaningful limitations to limit
the judicial exception and rather are mere instructions to apply the method to
a generic computer. Considering the elements of the claim both individually
and as “an ordered combination” the functions performed by the computer
system at each step of the process are purely generic. Each step of the
claimed method does no more than require a generic computer to perform a
generic computer function.
Finally, we determine whether the claim recites additional elements
sufficient to “transform” the abstract nature of the claim into a patent-
eligible application. This is sometimes termed the search for an “inventive
concept.” There, we determine that the claim fails to add a specific
limitation beyond the judicial exception that is not well-understood, routine,
and conventional in the field. Rather the claim uses well-understood,
routine, and conventional activities previously known in the art at a high
level of generality to the judicial exception. The Specification at paragraph
39 for example describes using conventional computer components such as a
computer, memory, and network in a conventional manner. The claim
specifically includes recitations for a “computer” to implement the method
but these computer components are all used in a manner that is well-
understood, routine, and conventional in the field. The Appellant has not
shown these claimed generic computer components which are used to
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implement the claimed method are not well understood, routine, or
conventional in the field. The Appellants have not demonstrated that the
computer described in the Specification paragraph 39 and the
microprocessor for instance are not a general purpose computer components
beyond those known to be routine and conventional known to perform
similar functions in a well-understood manner.
We note the point about pre-emption (App. Br. 15, 16). While pre-
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws”’ (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
The Appellants in the Appeal Brief at page 11 have cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract but the claims in that case were not similar in scope to
those here in contrast and were in contrast directed to a self-referential data
table.
The Appellants in the Appeal Brief at pages 11 and 12 have also cited
to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) but the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
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For these reasons the rejection of claim 1 is sustained.
With regard to claim 2, the Appellants argue that the claim limitation
for “configuring the payment card with a phone number of a mobile phone
of the owner of the payment card; and requesting a third code comprises
making a call to the mobile phone and waiting for a preconfigured answer to
the call” renders the claim not abstract and significantly more than the
rejection put forth for claim 1. We have considered but reject this argument.
The Appellants have not shown how a conventional mobile phone acts in a
manner that renders the claimed method not abstract. The mobile phone has
not been shown to act as more than a general purpose communication device
or to contain more than a general purpose computer. Claim 2 is substantially
similar to claim 1, and the recitation for a mobile phone and preconfigured
answer fails to change the abstract nature of the claim identified for claim 1
or provide “significantly more” as well. For these above reasons, the
rejection of claim 2 is sustained.
With regards to claim 6, 7, and 9 the Appellants argue that respective
limitations of each also render each to provide a “technological
improvement” for providing “enhanced security features” and that the
rejections are therefore improper (Ans. 17-19). In each of claims 6, 7, and 9
the Appellant’s argue that the respective claimed use a “International Mobile
Equipment Identity”, “Bluetooth”; “radio frequency tags”; and a “dual
authentication process” provide a “technological improvement” by those
“enhanced security features”. The Appellant’s have not asserted that use of
any of the “International Mobile Equipment Identity”, “Bluetooth”; “radio
frequency tags”; and a “dual authentication process” are new technologies.
Here, each of these argued elements are considered conventional computer
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tools that are well known to provide enhanced computer security and the
Appellants fail to show how the use of these conventional tools adds
“significantly more” in the context of each respective claim and transform
the abstract nature of the claim. Thus we have considered but reject these
arguments and the rejection of these claims is sustained.
The Appellants have provided the same arguments for the remaining
claims and the rejection of these claims is sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1–7 and 9–19 under 35 U.S.C. § 101

DECISION
The Examiner’s rejection of claims 1–7 and 9–19 is sustained.
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