Ex Parte Balasubramanian et al

Patent Trial and Appeal Board

Jul 31, 2018

14026209 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/026,209 09/13/2013
144885 7590 08/02/2018
The Webb Law Firm/ Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Chandra Balasubramanian
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.
8223-1710146(CC-0006US09) 7192
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANDRA BALASUBRAMANIAN, FRANCIS M. SHERWIN,
MICHAEL A. KERESEMAN III, and ADAM RATICA
Appeal2017-004156
Application 14/026,209 1
Technology Center 3600
Before: JOSEPH A. FISCHETTI, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify CardinalCommerce Corporation as the real party in
interest. Appeal Br. 1.
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Application 14/026,209
SUMMARY OF DECISION
THE INVENTION
Appellants claim subject matter that relates to the art of
authentication. Spec. ,r 2.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A system comprising:
a storage storing authentication initiatives
information for a plurality of payment options, at least
some of the authentication initiatives information being for
different payment options of the plurality of payment
options;
a network interface, to receive and transmit internet
communications; and
a computer system, the computer system coupled in
communication with the network interface and the storage,
the computer system programmed to:
receive a payment information over the internet
via the network interface, the payment information
identifying a particular payment option of the plurality of
payment options, the particular payment option used by a
second party with a first party for a transaction, wherein
the first party includes an interface to accept payment
via the plurality of payment options selectable by the
second party, the plurality of payment options being
associated with a plurality of different authentication
initiatives prescribed thereof;
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determine from the payment information a first
authentication initiative from the plurality of
authentication initiatives prescribed for the particular
payment option;
access the authentications initiatives information
corresponding to the first authentication initiative to
generate an authentication request in a format in
accordance with the first authentication initiative;
address communications for routing the authentication
request over the internet via the network interface; and
obtain an authentication determination over the
internet via the network interface, the authentication
determination in accordance with the first authentication
initiative.
App. Br. 21, Claims App.
THE REJECTION
The following rejections is before us for review.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. App. Br. 9;
see also Final Act. 2, Answer 3.
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-20 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, we 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 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 Banklnt'l, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we determine that this case's claims themselves and
the Specification provide enough information to inform one as to what they
are directed to.
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The steps in representative claim 1 result in:
access the authentications initiatives information
corresponding to the first authentication initiative to generate
an authentication request in a format in accordance with the
first authentication initiative;
address communications for routing the authentication
request over the internet via the network interface; and
obtain an authentication determination over the internet
via the network inteiface, the authentication determination in
accordance with the first authentication initiative.
The Examiner found that the claims are directed to an abstract idea of
"'authentication initiative' [which] is an economic principal and considered
an abstract idea." Final Act. 4. The Specification states,
While widely used for more traditional face-to-face
transactions, use of standard cards in connection with e-
commerce presents certain difficulties, including difficulties
concerning authentication or positive identification of the
cardholder. For example, maintaining consumer confidence in
security has become difficult with increased reports of fraud.
The resulting apprehension is also fueled by consumer
uncertainty of the reputation or integrity of a merchant with
whom the consumer is dealing. Questionable security of the
consumer's card information or other personal information
typically submitted along with a traditional e-commerce
transaction (e.g., address, card number, phone number, etc.)
serves to increase apprehension even more. Additionally,
cardholders, merchants and financial institutions are all
concerned about safeguarding against fraudulent or otherwise
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unauthorized transactions. Similarly, other payments methods
are concerned with security.
Specification ,r 4. The Specification states:
a plurality of individual authentication initiative plug-in
components 232 that listen to the message distribution layer
220 for a specific message type. The respective plug-in
component 232 is activated by the message distribution layer
220 that sends messages to the specified plug-in component 232
based upon the type of payment instrument or method being
used for the transaction being processed. For example, as
shown, the MAPS 200 optionally includes plug-in components
232 for Visa®, MasterCard® and other payment instruments or
methods.
Spec. ,r 37. The Specification describes:
Suitably, via the thin-client approach ( or alternately the
direct or easy connection approaches) the MAPS 200 obtains
payment information for the transaction from the merchant's
server 100. Suitably, the payment information includes a
number or name identifying the particular payment instrument
or account being used (i.e., the card number or account number
or account name), an expiration date, transaction details (i.e.,
the transaction amount, etc), and other pertinent payment data.
In the case of the thin-client approach, the payment information
is obtained from the merchant's website or page via the request
layer 110 in the form of name/value pairs.
Spec.,r 42.
Thus, all this evidence shows that claim 1 is directed to a merchant
authentication payment process with plural authentication initiatives
prescribed for each of different payment options. It follows from prior
Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972), in
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particular, that the claims at issue here are directed to an abstract idea. A
merchant authentication payment process with plural authentication
initiatives prescribed for each of different payment options is a fundamental
economic practice because it safeguards against fraud. See Specification ,r 4.
The patent-ineligible end of the spectrum includes fundamental economic
practices. See Alice, 134 S.Ct. at 2355-2357; see also Bilski, 561 U.S. at
611.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. Id. It is enough to recognize that
there is no meaningful distinction in the level of abstraction between the
concept of an intermediated settlement in Alice and the concept of a
merchant authentication payment process with plural authentication
initiatives prescribed for each of different payment options, at issue here.
Both are squarely within the realm of "abstract ideas" as the Court has used
that term. Id. That the claims do not preempt all forms of the abstraction or
may be limited to airline seating, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir.
2015).
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
linkage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (Finding claims not abstract
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because they "focused on a specific asserted improvement in computer
animation.").
The introduction of a computer into the claims does not alter the
analysis at Mayo 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
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, 134 S.Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data, and thus,
modifying the data as a result, amounts to electronic data query and
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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 industry. See Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1354 (Fed. Cir. 2016); see also In re Katz Interactive Call
Processing Patent Litigation, 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 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 America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1022 (Fed.
Cir. 2018) ( citation omitted).
Considered as an ordered combination, the computer components of
Appellants' method add 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) (Sequence of data retrieval, analysis, modification, generation,
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display, and transmission.); Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (Sequence of
processing, routing, controlling, and monitoring.). The ordering of the steps
is, therefore, ordinary and conventional.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect 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. ,r,r 19--21. The Specification does not describe any particular
improvement in the manner a computer functions, at least with respect to the
claims in the instant application. Instead, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S.Ct. at 2360.
As to the system claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
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Id.
We have reviewed all the arguments (Appeal Br. 9-19) Appellants
have 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.
Appellants argue "[ t ]he Examiner provides no support in making the
allegation and thus fails to establish a prima facie case that the claims are for
an abstract idea." Appeal Br. 10.
We disagree with Appellants. In rejecting the pending claims under
section 101, the Examiner analyzed the claims using the Mayo/Alice two-
step framework, consistent with the guidance set forth in the USPTO's 2014
INTERIM GUIDANCE ON p ATENT SUBJECT MATTER ELIGIBILITY. See Final
Act. 4. Specifically, the Examiner notified Appellants that the claims are
broadly directed to an "' authentication initiative' [which] is an economic
principal and considered an abstract idea." Id. The Examiner further found,
"[ s ]ince the claim is directed to payment system and while there are many
steps regarding authentication the concept of money and a payment system
is an economic principal." Id. at 5. Turning to step two, the Examiner
determined "[t]he [E]xaminer also acknowledges that the claims include
'over the internet' and 'via the network' however those elements are not
significant enough to overcome the rejection." Id.
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All that is required of the Office to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132; see In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). Here, as we found above, the Exarniner has
made these findings as required by the statute. See Final Act. 4----5.
Appellants argue,
[ t ]he features of claim 1 clearly result in improved
technical functioning. In particular, the features of
claim 1 result in the ability to support multiple
different authentication protocols and/or initiatives
employed in connection with multiple different
payment types or options .... Further, the claimed
architecture reduces the amount of data that is
processed and/ or reduces the burden on the
processor( s) and/ or memory and/ or other
computing equipment of the merchant and thus
improves its technical functioning, as the
merchant's equipment does not have to support
multiple different authentication protocols and/or
initiatives.
Appeal Br. 11.
We disagree with Appellants. The court in Enfish LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-1336 (Fed. Cir. 2016), framed the question as
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"whether the focus of the claims is on [a] specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfish,
822 F.3d at 1335-1336. Here, as found supra, we find nothing in the claims
that is directed to an improvement in computer capabilities. The capability
of the computer as claimed before us here remains that of a generic
computer. That the claimed process allegedly results in the "ability to
support multiple different authentication protocols and/or initiatives
employed in connection with multiple different payment types or options
[ (App. Br. 11)]," is not the function of a technical improvement in the
computer, e.g., higher speed processor due to circuit construction. Rather, it
is merely the normal work by computers invoked as the tool for the process.
Automation to reduce the burden on the user of what once could have
been done with pen and paper, does not qualify a mental process for patent
eligibility. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011). Also, the subject matter of mental thought cannot
distinguish one mental process from another because an abstraction does not
change its essence because of its subject matter, and a claim for a new
abstract idea is still an abstract idea. See Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Also, "[a]n abstract idea can
generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016).
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Appellants further argue, "[t]he present claims provide an inventive
concept since they otherwise appear to be allowable under § 102 and § 103
(i.e., no rejections of the claims are presently made under relevant
sections)." Appeal Br. 12.
We are not persuaded by Appellants' argument because the standard
for patentability under 35 U.S.C. § 103(a) is obviousness, the standard for
patentability under 35 U.S.C. § 102 is novelty, and the standard for patent
eligibility under 35 U.S.C. § 101 is abstract idea. Each of these standards is
separately required to be met before patentability can be conferred on
invention, which is not the case here based on the latter standard. The
question in step two of the Alice framework is not whether an additional
feature is novel, but whether the implementation of the abstract idea
involves "more than the performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347-1348 (quoting Alice, 134 S.Ct. at 2359). As found supra, we
find nothing which takes the claimed implementation outside of this
standard.
Appellants argue,
[ t ]he claims thus call for a change in authentication
processing steps depending upon a determination
of the payment instrument type used in connection
with a given transaction. This is NOT a mere
manipulation of data in an abstract manner. The
claims call for a physical change in the processing
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steps depending upon outcome determinative
logic.
Appeal Br. 16-1 7.
We disagree with Appellants that physical change occurs in the
context of changing authentication of processing steps. In Diamond v.
Diehr, 450 U.S. 175 (1981), the Court established eligibility under section
101 for claims containing mathematical formulas when the claim
"implements or applies that formula in a structure or process which, when
considered as a whole, causes or performs (e.g., transforming or reducing an
article to a different state or thing)." Diamond, 450 U.S. at 176. In contrast,
we fail to see how changing authentication of processing steps transforms an
article into a different state or thing.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
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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)(l )(iv).
AFFIRMED.
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