Ex Parte Abel et al

Patent Trial and Appeal Board

Sep 18, 2018

13345976 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/345,976 01/09/2012
21839 7590 09/20/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Luther C. Abel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0076412-000229 5000
EXAMINER
DONLON, RY AND
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUTHER C. ABEL, and ROBERT E. COUSINS
Appeal2017-006138
Application 13/345,976
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
SCOTT C. MOORE, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants 1 seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1-9, 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 MasterCard International Incorporated is the real party in interest (App. Br.
2).
Appeal2017-006138
Application 13/345,976
THE INVENTION
The Appellants' claimed invention is directed to a system and method
for consumer control over card-based transactions and associated accounts
(Spec., para. 19). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An electronic system for managing transactions within an
account associated with a transaction card, comprising:
at least one computer server comprising at least one
processor executing instructions that cause the server to generate:
an interface configured to electronically receive, via an
electronic network, (1) pre-selected criteria from a computer
system of an account holder associated with a transaction card
account and (2) transaction information, from a merchant
terminal, pertaining to a financial transaction performed at said
merchant with the transaction card account, wherein (i) said
preselected criteria includes at least one payment condition and
at least one payment method associated with said payment
condition and (ii) said interface electronically communicates
information between the merchant terminal and an issuer of said
transaction card account;
an account transaction record storing at least one
settlement record, said settlement record corresponding to the
payment transaction performed using said transaction card
account; and
an automated processing system engine, coupled to said
account holder interface and to said account transaction record,
said automated processing system engine configured to
determine whether said payment transaction satisfies said
payment condition,
wherein when said automated processing system engine
determines that said payment transaction satisfies said payment
condition, said automated processing system engine
automatically electronically communicates at least the
transaction card account information and said transaction
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Application 13/345,976
information to said issuer, said electronic communication to said
issuer triggers said issuer to accept or decline said payment
transaction.
THE REJECTION
The following rejection is before us for review:
Claims 1-9 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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
Re} ection under 3 5 US. 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. 6-20, Reply Br. 2-7).
The Appellants also argue that the claim is "significantly more" than the
alleged abstract idea (App. Br. 20-23, Reply Br. 7-9).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 3-8, Ans. 2-7).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
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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Application 13/345,976
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention". Id at 2358.
Here, we determine that the claim is directed to the concept of
receiving information related to a transaction and determining whether or
not accept or decline the payment transaction. 3 This is a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of§ 101. In Buysafe, Inc. v. Google, Inc. 7 65
F.3d 1350, 1355 (Fed. Cir. 2014) it was held that claims drawn to creating a
contractual relationship were directed to an abstract idea. In Inventor
3 This is substantively similar to the Examiner's determination that the
claims are directed to "managing transaction of a card," i.e., "track
transactions and bill the client and make a commission/profit (loss)," with
which we are also in agreement. Ans. 3--4.
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Application 13/345,976
Holdings, LLC v. Bed Bath & Beyond Inc., 876 F.3d 1372, 1378 claims
directed to the local processing of payments for remotely purchased goods
were held to be directed to an abstract idea. The Specification at para. 19
states the invention relates to card-based transactions and accounts.
The Appellants in the Appeal Brief at pages 10-12 have cited
to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim here is not abstract, but the claims in that case were not similar
in scope to those here, and were, in contrast, directed to a self-referential
data table. The Appellants argue in the Appeal Brief at pages 13 and 14 that
the claims at issue here differ from those in Buysafe because the claims here
are directed to the particulars of how the transaction is carried out. We
disagree in this regard and determine the claims here are directed to the
abstract idea identified above.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that they do
not. 4 The Specification at paragraphs 19, 36, 40, and 42 describes the use of
conventional computer components used in a manner for their known
functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
4 This comports with the Examiner's analysis at pages 4---6 of the Answer.
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Application 13/345,976
We note the point about pre-emption (App. Br. 18, 19, Reply Br. 6, 7).
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.").
For these above reasons the rejection of claim 1 is sustained.
With regard to claims 2-9 the Appellants argue that the rejection of
record did not analyze each claim individually (App. Br. 23, 24, Reply Br.
9). However, the Appellants present no specific arguments as to why these
claims are statutory subject matter. Regardless, a review of these claims
shows them to be directed to substantially the same subject matter as claim
1. For example, dependent claim 2 concerns receipt of payment, dependent
claim 3 concerns an additional account, and dependent claims 4--8 concern
payment conditions, all of which concern receiving information related to a
transaction and determining whether or not accept or decline the payment
transaction. Dependent claim 9 concerns a web interface, which the
Specification at paragraph 42 describes using conventional computer
components used in a known manner for their known functions. As no
specific arguments have been provided for these claims, and they are
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directed largely to the same subject matter as claim 1, 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 1-9 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-9 is sustained.
AFFIRMED
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