Ex Parte Belamant

Patent Trial and Appeal Board

Feb 26, 2018

13774804 (P.T.A.B. Feb. 26, 2018)

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.
13/774,804 02/22/2013 Serge Christian Pierre Belamant ADMS:003USD1 1055
26263 7590
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
02/26/2018 EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
02/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGE CHRISTIAN PIERRE BELAMANT
Appeal 2016-0083481
Application 13/774,8042
Technology Center 3600
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is NET1UEPS Technologies Inc. App. Br. 1.
2 Related Appeal 2016-008442 (U.S. Patent Application No. 12/515,058)
is the parent application of this application on appeal. Id. This appeal and
its related appeal are directed to the same underlying invention and issues.
These appeals are decided concurrently.
Appeal 2016-008348
Application 13/774,804
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 18—20, 23, 25, 26, 44, 45, 47, 49, and
51, constituting all claims pending in the current application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
“This invention relates to electronic financial transactions.” Spec. 1:6.
Claims 18 and 44 are representative and reproduced below (emphasis,
formatting, and bracketed material added):
18. A system for processing a secure financial transaction
comprising:
a) a financial transaction number generator which
generates an encrypted simulated primary account number
(PAN) that simulates a conventional credit or debit card PAN
and which has incorporated therein an account number of a
transactor;
b) a communication interface which receives a request, in
association with the simulated PAN, to authorize payment of a
deal amount;
c) a storage unit which stores previously received
simulated PANs;
d) a processor configured to decrypt PAN; and
e) an extractor for extracting from the decrypted simulated
PAN, the conventional credit or debit card PAN, and transactor
account number;
[f)]3 wherein after verifying the encrypted simulated PAN
has not previously been used by the transactor,
3 Although items f) and g) might initially appear to be process steps, which
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[(i)] the encrypted simulated PAN is decrypted and
[(ii)] the conventional credit or debit card PAN and
transactor account number are extracted; and
[g)] wherein the communication interface authorizes an
acquiring bank and a merchant to complete the secure financial
transaction.
44. A method of processing a secure financial transaction,
comprising:
i) receiving an encrypted simulated primary account
number (PAN) that simulates a conventional credit or debit card
PAN and which has incorporated therein an account number of a
transactor;
ii) receiving a request, in association with the encrypted
simulated PAN, to authorize payment of a deal amount;
iii) verifying the encrypted simulated PAN has not
previously been used by the transactor;
iv) decrypting the encrypted simulated PAN with a
processor;
v) extracting from the decrypted simulated PAN the
conventional credit or debit card PAN and transactor account
number;
vi) debiting the deal amount from a transactor account; and
vii) communicating an authorization to an acquiring bank
and a merchant to complete the secure financial transaction.
render claim 18 an improper hybrid (apparatus/method) claim, we do not so
construe claim 18. Rather, we read items f) and g) as setting forth the timing
sequence for the functions to be performed by items a)—e).
Also, for purposes of this appeal, we read the processor as configured
to verify the encrypted simulated PAN has not previously been used by the
transactor. Otherwise, nothing in claim 18 is recited as performing the
verifying function of item f) and claim 18 is indefinite. Should there be
further prosecution, we recommend Appellant address this issue.
3
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Rejection
The Examiner rejected claims 18—20, 23, 25, 26, 44, 45, 47, 49, and
51 under 35 U.S.C. § 101.4 Final Act. 2—3.
ANALYSIS
Background
The Examiner determines claims 18—20, 23, 25, 26, 44, 45, 47, 49,
and 51 are “directed to non-statutory subject matter because the claim(s) as a
whole, considering all claim elements both individually and in combination,
do not amount to significantly more than an abstract idea.” Final Act. 2.
The Examiner determines “[t]he claim(s) is/are directed to the abstract idea
of a fundamental economic practice and a mathematical procedure for
converting one form of numerical representation to another.” Id. at 2. The
Examiner also determines additional elements recited in these claims do not
amount to significantly more than the abstract idea itself. Id. at 2—3.
According to the Examiner, the claims are a “recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry.” Id. at 2.
Appellant presents several arguments against the 35 U.S.C. § 101
rejection. App. Br. 2—15; Reply Br. 2—10. Appellant contends the claims
are not directed to an abstract idea and that the claims amount to
significantly more than an abstract idea. Id. We do not find Appellant’s
4 We select claim 18 as representative. Separate patentability is not argued
for claims 19, 20, 23, 25, 26, 44, 45, 47, 49, and 51. Except for our ultimate
decision, claim 18 is not discussed further herein.
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arguments persuasive. Instead, as discussed infra, we agree with the
Examiner’s conclusion that the claimed invention is directed to non-statutory
subject matter. Final Act. 2—3; Ans. 3—5.
Case Law
The Supreme Court has long held that “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
‘“abstract ideas’ category embodies ‘the longstanding rule that ‘[a]n idea of
itself, is not patentable.’” Id. at 2355 (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75—78 (2012)). The first step in the analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea. Id.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 77—79). In other words, the
second step is to “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
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concept] itself.’” Id. (alteration in original) (quoting Mayo, 566 U.S. at 77—
78). The prohibition against patenting an abstract idea ‘“cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610—11 (2010).
Appellant’s Arguments
1
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the claims do not describe an abstract idea. App.
Br. 3. Particularly, Appellant contends:
[T]he claims recite physical components specifically configured
to execute physical steps addressing a very real problem inherent
and specific to modem electronic financial transactions
indicating, on its face, that the claims are not directed to an
abstract idea.
App. Br. 3 (emphasis added).
The improvements on electronic financial transaction security
and simplicity within the technological fields of e-commerce,
banking, and finance are significant and can be readily
appreciated.
App. Br. 4—5 (emphasis added).
Recently, the Patent Trial and Appeal Board (“PTAB”) decided
that claims directed to “a computer-implemented method to
transform data in a particular manner—by inserting an
authenticity key to create formatted data, enabling a particular
type of computer file to be located and from which an
authenticity stamp is retrieved”—were “on its face” not directed
to an abstract idea. PNC Bank v. Secure Axcess, LLC, Case No.
CBM2014-00100, 2014 WL 4537440 (PTAB Sept. 9, 2014).
Moreover, the PTAB reasoned that the disputed claim, as a
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whole, was distinguishable from the patent ineligible abstract
concepts found in Alice and Bilski v. Kappas, 130 S. Ct. 3218
(2010). . . . The same is true for the claims on appeal. By
inserting a credit or debit card PAN and transactor account
number into a financial transaction number generator to create an
encrypted sPAN, possibly including additional details pertaining
to the specific financial transaction (e.g., transaction amount),
thereby enabling an electronic financial transaction to proceed
and from which the authenticity can be verified, the appealed
claims “on [their] face” are not directed to an abstract idea.
App. Br. 5 (emphasis added).
We are not persuaded by Appellant’s arguments. First, contrary to
Appellant’s assertion, claim 18 is not “on its face” a claim “not directed to
an abstract idea.” Appellant underpins this assertion with a further assertion
that e-commerce, banking, and finance are technological fields. App. Br. 5.
Appellant’s underlying assertion is mistaken. While improvements in
technological fields may be applied in patent eligible ways to a fundamental
economic practice (i.e., commercial practices), the economic practice is not
itself a technological field.
Second, Appellant further argues, based on PNC Bank v. Secure
Axcess, LLC, that the “appealed claims ‘on [their] face’ are not directed to an
abstract idea.” App. Br. 5. However, PNC Bank is a nonprecedential PTAB
opinion, and therefore, not binding on this panel. Moreover, there are
significant differences between the attorney arguments presented in a post­
grant AIA-CBM proceeding such as PNC Bank, compared to findings and
conclusions of an Examiner. See Icon Health & Fitness, Inc. v. Strava, Inc.,
849 F.3d 1034, 1042^44 (Fed. Cir. 2017) (discussing differences between
attorney arguments and the Examiner’s findings). And, as noted by
Appellant, the claims in PNC Bank are “claims directed to ‘a computer-
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implemented method to transform data in a particular manner. ' App. Br. 5
(emphasis added). Contrary to Appellant’s arguments, beyond stating the
type (i.e., financial transaction) of information to be encrypted/decrypted
(a well-known conventional process), we find no such particular manner of
encrypting and decrypting the information in claim 18. Rather, as
Appellant’s Specification states, the invention may use “a suitable
encryption algorithm” (Spec. 3:12) and “an appropriate decryption
algorithm” (Spec. 8:20). We conclude that Appellant’s claim 18 does not
transform data in a particular manner as discussed in PNC Bank.
2
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the claims do not describe a fundamental economic
practice. Ap. Br. 5. Particularly, Appellant contends:
[Tjhere is nothing in or about the claims as a whole that suggest
a “fundamental economic practice” as exemplified by the courts.
App. Br. 6 (emphasis added).
We are not persuaded by Appellant’s argument. We conclude that, on
its face, claim 18 is quite specifically directed to a fundamental economic
practice of “processing a . . . financial transaction” which “authorize^]
payment of a deal amount” by “authorizing] an acquiring bank and a
merchant to complete the . . . financial transaction” using a “conventional
credit or debit card” and a “transactor account number.” That the claimed
financial processing is claimed as being made “secure” by applying (as
disclosed) a “suitable encryption algorithm” and applying (as disclosed) an
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“appropriate decryption algorithm” does not change the result that claim 18
is directed to a fundamental economic practice.
3
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the claims do not describe a mathematical
procedure. App. Br. 7.
A
Particularly, Appellant initially contends:
Benson does not stand for the principle that “converting one form
of numerical representation [] to another []” is an abstract idea.
App. Br. 7. Appellant further contends:
First, unlike in Benson, for reasons explained in further
detail below, claims 18 and 44 are not so abstract as to cover
“known and unknown” uses of encryption. Second, the claims
are expressly limited to electronic financial transactions using
conventional credit or debit card PANs. Third, in stark contrast
to the rather simplistic mathematical formula recited in Benson,
the sophisticated encryption required for modem security must
be performed by a computer and thus, by definition, cannot be
performed in the human mind. . . . Fourth, as a whole, the
express result and purpose of the instant claims is to address the
real and practical commercial problems inherent to modem
electronic transactions and therefore goes beyond the mere inner
functionality of computers. And fifth, as the claims do not
explicitly recite a mathematical equation or specific steps of an
algorithm, as did the claims in Benson, issuance of the pending
claims would not preempt any particular mathematical
relationship or formula.
App. Br. 8 (emphasis added).
We are not persuaded by Appellant’s arguments. As to Appellant’s
initial contention, Appellant is simply mistaken. The Court in Alice stated
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“[w]e accordingly ‘held that simply implementing a mathematical principle
on a physical machine, namely a computer, [i]s not a patentable application
of that principle.’” 134 S. Ct. 2347, 2357—58. Therefore, contrary to
Appellant’s argument, “a principle that converts one form of numerical
representation to another” (i.e., a mathematical principle) is an abstract idea.
As to Appellant’s argument labelled as “First,” the opposite is true.
Appellant’s claim 18 is so abstract so as to cover “known and unknown”
uses of encryption. Particularly, as we discuss supra, Appellant’s
Specification states, the invention may use “a suitable encryption algorithm”
(Spec. 3:12) and “an appropriate decryption algorithm” (Spec. 8:20).
Appellant’s claim is not limited to any particular encryption method.
As to Appellant’s argument labelled as “Second,” we are
unpersuaded. See Bilski v. Kappos, 561 U.S. 593, 612 (2010) (“Flook
established that limiting an abstract idea to one field of use . . . did not make
the concept patentable.”) The claimed encryption is an unpatentable abstract
idea being applied to further narrow a financial transaction which is itself an
unpatentable abstract idea. Appellant’s argued additional “electronic”
limitation of this layered abstract idea is exactly the type of “mere recitation
of a generic computer” the Court warns about in Alice. Alice, 134 S. Ct. at
2358. Appellant’s argument that this layering of unpatentable abstract ideas,
one on another, results in a patentable invention does not persuade us of
Examiner error.
As to Appellant’s argument labelled as “Third,” we are unpersuaded.
Contrary to Appellant’s assertion that “sophisticated encryption [is]
required,” as we noted supra, Appellant’s Specification states, the invention
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may use “a suitable encryption algorithm” (Spec. 3:12) and “an appropriate
decryption algorithm” (Spec. 8:20).
As to Appellant’s argument labelled as “Fourth,” we are unpersuaded
for the reasons discussed supra as to Appellant’s “Second” argument.
As to Appellant’s argument labelled as “Fifth,” essentially, Appellant
is arguing claim 18 does not recite an abstract idea because it does not recite
a particular “mathematical algorithm abstract idea;” rather, it recites a more
general idea of encryption using any mathematical algorithm. We are
unpersuaded by this argument.
B
Appellant also contends:
[T]he assertion by the Examiner that [“] [t]he claimed invention
is also an example of a mathematical procedure for converting
one form of numerical representation (credit/debit PAN) to
another (encrypted [sPAN])” is inaccurate: Final Action, at p. 3.
This assertion and simplistic take on Digitech fails for at least
two reasons. First, the Examiner ignores the claims as a whole
and the additional limitations recited therein. Second, such an
assertion would necessarily and incorrectly conclude that all
software is not patentable.
App. Br. 9 (emphasis added).
We are not persuaded by Appellant’s argument. Contrary to
Appellant’s argument that “the Examiner ignores the claims as a whole and
the additional limitations recited therein” (App. Br. 9 (emphasis added)), the
Examiner expressly states “[vjiewed as a whole, these additional claim
element(s) do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea” (Final Act. 2). As
to Appellant’s argument that the Examiner “incorrectly conclude[s] that all
software is not patentable,” (App. Br. 9), Appellant does not cite where they
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find this assertion by the Examiner, and we find no such assertion. We are
unpersuaded by these arguments.
4
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because “[o]n their face, the instant claims do not recite a
mathematical algorithm nor a fundamental economic or longstanding
commercial practice.” App. Br. 10. Particularly, Appellant contends:
In DDR Holdings, LLCv. Hotels.com, 773 F.3d 1245, 1257 (Fed.
Cir. 2014), ... the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” This is also true for
the claims on appeal. Not only are the claimed system and
method previously unknown to financial transactions prior to
e-commerce, but the claimed solution is rooted in modern
online and electronic transactions and overcomes the specific
problems arising from computer storage of transactor account
details. Furthermore, just as in DDR Holdings, no idea similar to
those previously found by the courts to be abstract can be
identified in the claims on appeal.
App. Br. 10-11 (emphasis added).
The Examiner however asserts that DDR Holdings does not
apply to the present case because “Appellants do not identify any
problem particular to computer networks and/or the Internet that
claim 44 allegedly overcomes.” Answer, page 5. But contrary to
the Examiner’s assertions, the claimed invention solves
problems that are particular to the Internet by improving
security. Specification, p. 2, lines 7-8. For example,
dissemination of personal credit card and debit card account
information over computer networks or the Internet may lead to
identity theft and fraudulent transactions, and the claimed
invention overcomes this problem by generating an encrypted
unique transaction number which simulates a conventional credit
or debit card primary account number and incorporates therein
an account number of a transactor.
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Reply Br. 5 (emphasis added).
We are not persuaded by Appellant’s arguments. Appellant argues
“[n]ot only are the claimed system and method previously unknown to
financial transactions prior to e-commerce, but the claimed solution is rooted
in modem online and electronic transactions and overcomes the specific
problems arising from computer storage of transactor account details.” App.
Br. 11. According to Appellants, those specific problems are “dissemination
of personal credit card and debit card account information over computer
networks or the Internet may lead to identity theft and fraudulent
transactions.” Reply Br. 5. We disagree. The problems of identity theft and
fraudulent transactions due to the dissemination of personal credit card
account information are longstanding problems in the field of financial
tmncations. These problems existed in the era of paper based credit card
transaction and long predate the Internet.5
Appellant argues the claims are rooted in computer technology. App.
Br. 10-11 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (2014)). The claimed invention in DDR Holdings did not merely use
the Internet but rather changed how interactions on the Internet operated. In
contrast, Appellant’s claims are not directed to a problem rooted in computer
5 “Back in the 1970s, a common form of credit card fraud involved a thief
dumpster diving for the carbon copy layer of a charge slip, on which the
credit card number could easily be read.” Hack Proofing Your Identity In the
Information Age; Bidwell; Syngress Publishing; page 12; 2002.
“One of the earliest ways of committing credit card fraud was either
by stealing the card from someone’s wallet or by ‘dumpster diving’ for
carbon copies of credit card receipts.” https://www.britannica.com/topic
/credit-card-fraud. Debra E. Ross; Aug 01, 2016 (accessed February 17,
2018).
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technology, as outlined in DDR Holdings. Reading the present claim
limitations alone and as an ordered combination, Appellant’s claimed
invention corresponds to a system/method of “processing a secure financial
transaction” as explicitly recited in claims 18 and 44.
5
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the claims meet the machine-or-transformation test.
App. Br. 12. Particularly, Appellant contends:
Like preemption, another test that is a useful tool for
determining whether an invention is a patent-eligible process
under 35 U.S.C. § 101 is the machine-or-transformation
test. . . . [T]he instant claims are inextricably tied to physical
electronic devices within a system comprising, inter alia, “a
financial transaction number generator,” “a communication
interface,” “a storage unit,” “a processor,” and “an extractor.”
For at least these reasons, the appealed claims satisfy the
machine-or-transformation test further demonstrating that they
are not directed to an abstract idea and are, accordingly, patent-
eligible subject-matter.
App. Br. 12 (emphasis added).
We are not persuaded by Appellant’s argument. Appellant’s machine-
or-transformation argument overlooks that the Court’s Alice two-step
(abstract idea/significantly more) analysis is the Court’s framework for
determining patent ineligible subject matter. “[W]e set forth a frame-work
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. Contrary to Appellant’s argument, the
Examiner applied this framework at pages 2—3 of the Final Action.
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6
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the claims contain an inventive concept. App. Br.
12. Particularly, Appellant contends:
[I]n combination, the claims directly solve a long-standing
problem with electronic financial transactions: dissemination of
personal credit card and debit card account information leading
to identity theft and fraudulent transactions.
App. Br. 14 (emphasis added).
We are not persuaded by Appellant’s argument. As we have
previously discussed, the problems of identity theft and fraudulent
transactions due to the dissemination of personal credit card account
information are longstanding problems in the field of financial transactions.
These problems existed in the era of paper-based credit card transactions and
long predates the Internet. Contrary to Appellant’s argument, claim 18’s
solution is to an underlying financial transaction problem, rather than a
solution rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks as found in DDR
Holdings.
7
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the claimed invention cannot be performed
mentally. Reply Br. 4. Particularly, Appellant contends:
The rejection should also be reversed because a human
does not possess the necessary tools required by the claims and
described in the specification and therefore cannot perform these
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acts required by the claim mentally. The Answer asserts “[t]his
is simply the organization and manipulation of data which can be
performed mentally and is an idea of itself.” Answer, p. 3.
However, a human does not possess a financial transaction
number generator, a communication interface, a storage unit, a
processor, and an extractor required by claim[l 8].
Reply Br. 4—5 (emphasis added).
We are not persuaded by Appellant’s argument. Encryption of
information is an activity capable of being performed by a person, possibly
with the aid of pen and paper. Additionally, the financial transactions using
credit primary account number and a transactor account number have
conventionally been performed by a person, also possibly with the aid of pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) (“[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.”) The mere mention of certain claimed computer hardware
components (e.g. “a computer system” and “secure storage”) does not
impose sufficiently meaningful limitations on claim scope beyond these
mental steps. Id. at 1372—73, 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson’’ ).
8
In the Reply Brief, Appellant further contends the Examiner erred in
rejecting claim 18 under 35U.S.C. § 101 because:
Similar to the claims in Enfish, the claimed invention is
directed to an improvement of a computer system, specifically
the security of Internet transactions. See Specification, p. 2, lines
7-8. The invention, as recited in claims 18-20, 23, and 25-26,
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accomplishes this by employing a system for processing a secure
financial transaction, including a financial number generator and
other features, or by practicing the corresponding methods for
processing secure financial transactions as recited in claims 44-
45, 47, 49, and 51. The claimed invention therefore solves
problems that are particular to computer networks and the
Internet by improving functionality and security of computer
systems.
Reply Br. 7 (emphasis added).
Similar to the claims at issue in Bascom, the claimed
invention is not merely directed to an abstract idea with the
requirement of performing it on the Internet, but improves
security and performance of the computer system and the
Internet itself. Specification, p.2, lines 7-8. As in Bascom, the
claimed invention does not preempt the use of an abstract idea,
such as, e.g., generating numbers or generally enhancing security
on the Internet, but carves out a specific subject matter of a
particular system for processing a secure financial transaction
and corresponding methods.
Reply Br. 8—9 (emphasis added).
We are not persuaded by Appellant’s arguments. Contrary to
Appellant’s arguments, the claims are not directed to a specific improvement
in the way computers operate. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335—36 (Fed. Cir. 2016). Further, Appellant fails to explain how
claim 18’s particular arrangement of elements is a technical improvement
over prior art ways of encrypting financial transactions. Cf. Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349—50 (Fed.
Cir. 2016).
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9
Appellant contends the Examiner erred in rejecting claim 18 under
35 U.S.C. § 101 because the inventive concept can be found in the ordered
arrangement of elements as recited in the claims. Reply Br. 9. Particularly,
Appellant contends:
The present claims, as in the claims at issue in Bascom,
recite a non-conventional and non-generic arrangement of the
features, encompassing an inventive concept. For example, claim
18 recites that the system for processing a secure financial
transaction is arranged so that after verifying that the encrypted
simulated PAN has not previously been used by the transactor,
the encrypted simulated PAN is decrypted, the conventional
credit or debit card PAN and transactor account number are
extracted, and the communication interface authorizes an
acquiring bank and a merchant to complete the secure financial
transaction. Similarly, the features of claim 44 are arranged so
that, e.g., the encrypted PAN simulates a conventional credit or
debit card PAN that has incorporated an account number of a
transactor, the encrypted simulated PAN has not previously been
used, and an authorization is communicated to an acquiring bank
and a merchant to complete the secure financial transaction.
Reply Br. 9-10 (emphasis added).
We are not persuaded by Appellant’s argument. Appellant attempts to
show the claim is significantly more by arguing a non-conventional and non­
generic arrangement of encryption, credit/debit card numbers, transactor
account numbers, and financial transaction. However, these are limitations
directed to the abstract idea. Essentially, Appellant is arguing that the
abstract idea is non-conventional and non-generic, therefore it is
significantly more. We disagree. It is the epitome of the abstract idea of
encryption applied to the abstract idea of performance of a business practice.
No matter how complex the claim’s ultimate abstract idea, it does not serve
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as “the additional elements [to] ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1298, 1297).
CONCLUSION
Because Appellant’s claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
The Examiner has not erred in rejecting claims 18—20, 23, 25, 26, 44,
45, 47, 49, and 51 und 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
DECISION
The Examiner’s decision rejecting claims 18—20, 23, 25, 26, 44, 45,
47, 49, and 51 is affirmed.
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).
AFFIRMED
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