Ex Parte Angoy

Patent Trial and Appeal Board

Sep 27, 2017

14267071 (P.T.A.B. Sep. 27, 2017)

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.
14/267,071 05/01/2014 Fredrick Hugo Robinson Angoy 134325.00002 2198
29880 7590 09/29/2017
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
EAWRENCEVTT.TE, NJ 08648
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
ipdocket @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRICK HUGO ROBINSON ANGOY
Appeal 2016-002906
Application 14/267,0711
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 4—11, and 13—24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to “a payment processing
system.” (Spec. 14.)
1 According to Appellant, the real party in interest is Fredrick Hugo
Robinson Angoy. (Appeal Br. 3.)
Appeal 2016-002906
Application 14/267,071
Claims 1, 10, 19, and 21 are the independent claims on appeal.
Claim 1 is illustrative. It recites:
1. A method of processing a secure payment transaction, the
method comprising, by a processor:
receiving, from an electronic device of a payor, a request
for an authorization code for an authorized payment amount;
ascertaining a unique identifier associated with the payor
by parsing the request for the first authorization code for the
authorized payment amount;
verifying the payor’s identity using the unique identifier;
generating a first authorization code for a payment
transaction;
storing the first authorization code in association with the
authorized payment amount;
sending the first authorization code to a mobile device
associated with the payor;
receiving, from a third party payee, a request for payment,
wherein the request comprises a payor identifier, a requested
payment amount and a second authorization code;
determining whether the second authorization code
matches the first authorization code, and whether the requested
payment amount is less than or equal to the authorized payment
amount; and
if the second authorization code matches the first
authorization code, and the requested payment amount is less
than or equal to the authorized payment amount, then
transmitting an instruction to process the payment in the
authorized payment amount to the third party payee, otherwise
denying payment to the third party payee.
2
Appeal 2016-002906
Application 14/267,071
REJECTIONS
Claims 1, 2, 4—11, and 13—24 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.2
Claims 1, 2, 7, 10, 11, and 16 are rejected under 35 U.S.C. § 103 in
view of Das (US 2013/0041831 Al, pub. Feb. 14, 2013) and Guillot
(US 2007/0063024 Al, pub. Mar. 22, 2007).
Claims 4—6, 8, 9, 13—15, 17, 18, 21, and 22 are rejected under
35 U.S.C. § 103 in view of Das, Guillot, and Linlor (US 2008/0091544 Al,
pub. Apr. 17, 2008).
Claims 19 and 20 are rejected under 35 U.S.C. § 103 in view of Das,
Guillot, Linlor, and Patel (US 2007/0055597 Al, pub. Mar. 8, 2007).
Claims 23 and 24 are rejected under 35 U.S.C. § 103 in view of Das,
Guillot, Linlor, and applicant admitted prior art.
ANALYSIS
The §101 rejection
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355.
2 Because only claims 1, 2, 4—11, and 13—24 are pending in the application
(see Final Action 1), we treat the statement that “[cjlaims 1—24 are rejected
under 35 U.S.C. 101” as inadvertently including claims 3 and 12. See id.
at 4.
3
Appeal 2016-002906
Application 14/267,071
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
The Examiner determines that “[t]he claims are directed to the
abstract idea of a fundamental economic practice and a fundamental method
of organizing human activities.” (Final Action 5, emphasis omitted.) In
particular, the Examiner determines that the claims “merely amount[] to the
application of instructions to apply the abstract idea (i.e. a method of
processing a secure transaction) by a processor, and [are] considered to
amount to nothing more than requiring a generic computer system (e.g. a
processor) to merely carry out the abstract idea itself.” {Id., emphasis
omitted.)
Appellant disagrees and argues that “the claims include concrete,
physical steps accomplished through the use of an apparatus (a processor)
for a ‘new and useful end.’” (Appeal Br. 13.)
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, while we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
4
Appeal 2016-002906
Application 14/267,071
In this case, the Specification discloses that the invention is directed to
“a payment processing system,” and, in particular, one for “processing [a]
secure payment transaction.” (Spec. 14.) Claim 1 recites the steps of
“receiving ... a request for an authorization code,” “ascertaining a unique
identifier associated with the payer,” “verifying the payor’s identity,”
“generating a first authorization code,” “storing the . . . code,” “sending the
. . . code,” “receiving ... a request for payment. . . and a second
authorization code,” “determining whether the second authorization code
matches the first,” and if the codes match and the amount is less than or
equal to the authorized amount, “then transmitting an instruction to process
the payment.”
Appellant argues that the present claims are analogous to those “found
to be patent eligible in DDR Holdings, LLC v. Hotels.com.'” (Appeal
Br. 13.) Appellant argues that the claimed “method requires a specific set of
steps for securely processing a payment transaction.” (Id. at 14.) But,
unlike Appellant’s claims, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result — a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.'” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) (emphasis added).
Appellant does not persuasively argue how the present claims override a
routine and conventional sequence of events in, e.g., the processor.
We find the claims more analogous to those in CyberSource which the
Federal Circuit determined to be directed to an abstract idea and to be patent
ineligible subject matter. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375—76 (Fed. Cir. 2011). Claim 2 in CyberSource relates to
5
Appeal 2016-002906
Application 14/267,071
“obtaining credit card information,” “verifying the credit card information
based upon values of [a] plurality of parameters,” weighting each value,
“obtaining information about other transactions” using an identified Internet
address, “constructing a map of credit card numbers,” and “utilizing the map
... to determine if the credit card transaction is valid.” CyberSource, 654
F.3d at 1373—74 (emphasis omitted).
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
We next look to part two of the Alice framework which has been
described “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, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72—73).
Alice instructs us to consider “the claim elements separately” and “‘as an
ordered combination.’” Alice, 134 S. Ct. at 2359.
Appellant argues that “[t]he claims . . . require a particular set of
detailed steps that distinguish the claims from ‘computer functions that are
well-understood, routine, conventional, and previously known to purchasing
vendors.’” (Appeal Br. 15.) Specifically, Appellant argues that
the additional steps place meaningful limitations upon the
application of the claimed process of securely processing
payment transactions such that the claims transform a general-
purpose computer into a specific-purpose machine that does
something computers could not do before. For example, the
computer is transformed to automatically ascertain a unique
identifier associated with the payor by parsing a request, and
processing a payment by automatically determining whether the
second authorization code matches the first authorization code,
6
Appeal 2016-002906
Application 14/267,071
and whether the requested payment amount is less than or equal
to the authorized payment amount.
{Id. at 15—16.) We are not persuaded of reversible error.
“Taking the claim elements separately, the function performed by the
[processor] at each step of the process is ‘[pjurely conventional.’” Alice,
134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 79). Using a processor to, e.g.,
determine a value, parse data, compare/match data, and determine if one
value is less than or equal to another, are all basic functions of a processor.
Appellant does not persuasively argue why these are functions that a
“computer could not do before” the claimed invention. (See Appeal Br. 15—
16.)
Considered as an ordered combination, the processor of Appellant’s
method adds nothing that is not already present when the steps are
considered separately. The claims do not, for example, purport to improve
the functioning of the processor itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea
using an unspecified, generic processor. That is not enough to transform an
abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 under § 101. Claims 2, 4—11, and 13—24 are not separately argued
with regard to this rejection and, therefore, fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
7
Appeal 2016-002906
Application 14/267,071
The f103 rejection of independent claims 1 and 10 and
dependent claims 2, 4-9, 11, and 13—18
In rejecting independent claims 1 and 10 under § 103, the Examiner
finds that Guillot teaches “ascertaining a unique identifier associated with
the payor by parsing the request for the first authorization code for the
authorized payment amount.” (Final Action 7—8, emphasis omitted.)
Specifically, the Examiner finds that
Guillot teaches the use of electronic wallets, which store end-
user data elements such as shipping address, billing address, and
payment card details, to ascertain the identities of remote end
users by using an online user authentication protocol [0058]. He
teaches and [sic] interchange compliance module that behaves
like a virtual merchant although it is implemented in the issuer
domain [0084], After having determined that a “micro­
transaction” was authorized, the system increments the count of
successful micro-transactions in step and checks it against a pre­
set cumulative threshold. If the threshold is reached, then the
system requests an authorization for an amount equal to the
threshold [Id.]. Examiner maintains that determining that a
“micro-transaction ” was authorized is indicative of Appellant’s
ascertaining a unique identifier associated with the payor.
Examiner maintains that checking it (i.e. “the count of successful
micro-transactions ”) against a pre-set cumulative threshold is
indicative of Appellant’s verifying the payor’s identity using the
unique identifier. Examiner maintains Guillot disclosing “a
count of successful micro-transactions''’ is indicative of Guillot
teaching “parsing (‘breaking down ’ as interpreted by the
Examiner) the request for the first authorization code".
(Answer 17—18.)
Appellant disagrees and argues that “the teachings of Guillot simply
do not specify a user authentication protocol or teach the claimed steps of
ascertaining a unique identifier . . . by parsing the request for the first
authorization code for the authorized payment amount.” (Reply Br. 7.) In
8
Appeal 2016-002906
Application 14/267,071
particular, Appellant argues that “the method and system of Guillot do not
include receiving (from the payor) a request for an authorization code. . . .
Hence, unique identifier for the payer cannot be ascertained from a request
for authorization code received from the payer.” (Id. at 7—8.)
Even if we agreed with the Examiner that Guillot discloses a request
for an authorization code, we are persuaded that the Examiner erred in
finding that Guillot discloses “ascertaining a unique identifier associated
with the payor by parsing the request for the first authorization code for the
authorized payment amount,” as recited in claim 1. The count of successful
micro-transactions measured in Guillot, which the Examiner finds “is
indicative of Guillot teaching ‘parsing’” (Answer 18), is determined after
the micro-transaction is authorized. (See Guillot Fig. 16, see also id. 1 84.)
The Examiner does not explain how this post-authorization activity discloses
the pre-authorization parsing of the request for the first authorization code of
claim 1. Independent claim 10 includes similar language. Therefore, we are
persuaded that the Examiner erred in rejecting claims 1 and 10 under § 103.
With regard to claims 2, 4—9, 11, and 13—18, which depend from claims 1
and 10, the Examiner does not rely on the additional cited art to cure the
above discussed deficiency in Guillot. Therefore, we are similarly
persuaded that the Examiner erred in rejecting dependent claims 2, 4—9, 11,
and 13—18.
The f103 rejection of independent claims 19 and 21 and
dependent claims 20 and 22—24
Independent claim 19 recites, in relevant part, “verifying the payor’s
identity, wherein the verifying comprises: ascertaining the mobile device
9
Appeal 2016-002906
Application 14/267,071
associated with the payor using the unique identifier, generating a telephone
call to the mobile device, receiving a personal identification code from the
payor over the telephone call.” Independent claim 21 contains similar
language.
The Examiner finds that paragraph 24 of Linlor discloses
“automatically generating a telephone call to the mobile device.”
(Answer 19.)
Appellant disagrees and argues that “Linlor is silent with respect to
generating a telephone call to the identified mobile device payor and
receiving a personal identification code over the telephone call.” (Appeal
Br. 23.)
With regard to telephone communications, paragraph 24 of Linlor
discloses that “[t]he transaction database 140 is in communication with
various product vendors, such as via a telephone, internet, or wireless
connection, for example. In one embodiment, the payment resolution
module 110 also generates an authorization code for any requested
transaction that has been approved.” (Linlor 124.) The Examiner does not
explain how this communication with a product vendor, i.e., a payee,
discloses generating a telephone call to a payor. Therefore, we are
persuaded that the Examiner erred in rejecting claims 19 and 21 under § 103.
With regard to claims 20 and 22—24, which depend from claims 19 and 21,
the Examiner does not rely on the additional cited art to cure the above
discussed deficiency in Linlor. Therefore, we are similarly persuaded that
the Examiner erred in rejecting dependent claims 20 and 22—24.
10
Appeal 2016-002906
Application 14/267,071
DECISION
The Examiner’s rejection of claims 1, 2, 4—11, and 13—24 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1, 2, 4—11, and 13—24 under
35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
11