Ex Parte CAGLAYAN et al

Patent Trials and Appeals Board

Apr 30, 2019

14483254 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/483,254 09/11/2014
125578 7590 05/02/2019
MASTERCARD
C/0 Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22314
FIRST NAMED INVENTOR
Yigit CAGLA YAN
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.
0076412-000301 2661
EXAMINER
TRAN,HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
ADIPDOC 1@BIPC.com
charles. wieland@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI GIT CAGLA YAN and KEMAL UY AN
Appeal2018-002102
Application 14/483,254
Technology Center 3600
Before MARC S. HOFF, BETH Z. SHAW, and STEVEN M.
AMUNDSON, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 10-15, 26-31, 33, and 34. Claims 1-9, 16-25, and 32 were
previously cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants MasterCard International Incorporated is the real
party in interest. App. Br. 2.
Appeal2018-002102
Application 14/483,254
INVENTION
The claims recite a system and method for processing financial
transactions using a mobile device. Claim 10, reproduced below, is
illustrative of the claimed subject matter:
10. A computer-implemented method for identifying
payment details, comprising:
storing, in a database of a processing server device, a
plurality of wallet data entries, wherein each wallet data entry
includes at least (i) a mobile device identifier associated with a
mobile computing device, (ii) payment details associated with a
plurality of payment accounts and (iii) a default payment
account identified from the plurality of payment accounts, said
default payment account to be used to fund payment
transactions, wherein said payment details associated with the
plurality of payment accounts are not stored locally on the
mobile computing device;
receiving, by a receiving device of the processing server,
an authorization request for a financial transaction from a
transaction system of a merchant involved in the financial
transaction, wherein the authorization request includes at least a
mobile device identifier and transaction details, and does not
include payment details;
in response to receiving the authorization request from
the financial system of the merchant, transmitting, by a
transmitting device of the processing server device, over a
communication network, via mobile network operator (MNO),
to a mobile computing device associated with the mobile device
identifier included in the authorization request, a confirmation
request, said confirmation request including at least the
transaction details associated with the financial transaction with
the merchant, wherein said transmission activates an application
program installed on the mobile computing device causing the
transaction details to be displayed on a display of the mobile
computing device and prompting user-confirmation of the
financial transaction;
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receiving, by the receiving device of the processing
server, via the communication network, from the mobile
computing device, confirmation of the financial transaction;
in response to receiving confirmation of the financial
transaction from the mobile computing device, identifying, by
the processing device of the processing server device, in the
database of the processing server device, a specific wallet data
entry including the mobile device identifier included in the
authorization request received from the transaction system of
the merchant;
determining, by the processing device of the processing
server device, whether a default payment account is identified
from the plurality of payment accounts in the specific wallet
data entry;
when a default payment account is identified from the
plurality of payment accounts in the specific wallet data entry,
identifying, by the processing device of the processing server
device, in the specific wallet data entry, payment details
associated with default payment account; and
transmitting, by the transmitting device of the processing
server device, the identified payment details of the default
payment account to a payment network for approval or denial
of the payment transaction.
RELATED APPEALS
This appeal is related to Application No. 13/833,625, Appeal No.
2018-002185. App. Br. 2.
REJECTION
The Examiner rejected claims 10-15, 26-31, 33, and 34 under
35 U.S.C. § 101.
CONTENTIONS AND ANALYSIS
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
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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. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 67 (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 water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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
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. (citing Benson and Flook); see, e.g., Diehr, 450 U.S.
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.").
If the claim is "directed to" an abstract idea, we tum 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
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.
The U.S. Patent and Trademark Office ("USPTO") recently published
revised guidance on the application of§ 101. USPTO' s 2019 REVISED
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PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Revised Guidance"). Under that Revised 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 MANUAL OF PATENT EXAMINING PROCEDURE
("MPEP") §§ 2106.05(a}-(c), (e}-(h) (9th ed. rev. 08.2017, Jan.
2018)).
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 Revised Guidance.
Abstract Idea
Appellants address the claims as a group, and we treat claim 10 as
representative. Under Supreme Court precedent, claims directed purely to
an abstract idea are patent ineligible. As set forth in the Revised Guidance,
which extracts and synthesizes key concepts identified by the courts, abstract
ideas include (1) mathematical concepts, (2) certain methods of organizing
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human activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices or commercial interactions. Claim 10 recites a
fundamental economic practice or commercial interaction. Specifically, the
steps of claim 10 fall under the umbrella of fundamental economic practices
or commercial interactions, including transactions or sales activities, because
"receiving" "an authorization request for a financial transaction" and
"transmitting" "payment details" would ordinarily take place in a sale or
market transaction, which occurs in a commercial transaction that requires a
payment. See Spec. ,r 1 ("The present disclosure relates to the conducting of
financial transactions using a mobile device .... "); Spec. ,r 4 ("The present
disclosure provides a description of systems and methods for the processing
of financial transactions and identification of payment details.").
Claim 10 is, thus, similar to claims that courts have concluded recite a
fundamental economic practice. See, e.g., Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that
concept of "local processing of payments for remotely purchased goods" is a
"fundamental economic practice, which Alice made clear is, without more,
outside the patent system.") (quotation marks and citation omitted); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015)
( concluding that claimed concept of "offer-based price optimization" is an
abstract idea "similar to other 'fundamental economic concepts' found to be
abstract ideas by the Supreme Court and this court") ( citation omitted);
buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014)
(holding that concept of "creating a contractual relationship----a 'transaction
performance guaranty"' is an abstract idea) ( citation omitted); see also
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Revised Guidance, 84 Fed. Reg. at 52, 53 (listing "[c]ertain methods of
organizing human activity-fundamental economic principles or practices"
as one of the "enumerated groupings of abstract ideas"). Thus, we conclude
claim 10 recites a fundamental economic practice, one of certain methods of
organizing human activity identified in the Revised Guidance, and, thus, an
abstract idea.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a}-(c) and (e}-(h), we determine that additional elements of
claim 10 integrate a judicial exception, in this case the abstract idea of a
fundamental economic practice, into a practical application.
Claim 10 recites additional elements of
in response to receiving the authorization request from
the financial system of the merchant, transmitting, by a
transmitting device of the processing server device, over a
communication network, via mobile network operator (MNO),
to a mobile computing device associated with the mobile device
identifier included in the authorization request, a confirmation
request,
"said confirmation request including at least the transaction details
associated with the financial transaction with the merchant," "wherein said
transmission activates an application program installed on the mobile
computing device causing the transaction details to be displayed on a display
of the mobile computing device and prompting user-confirmation of the
financial transaction." The claim as a whole integrates the fundamental
economic practice into a practical application. Specifically, the additional
elements recite a specific manner of transmitting a confirmation to a mobile
computing device, activating "an application program installed on the
mobile computing device," "causing the transaction details to be displayed
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on a display of the mobile computing device," and "prompting user-
confirmation of the financial transaction." These elements provide a specific
improvement over prior systems, resulting in an improved system for
confirming payment at a mobile device, without requiring storage of
payment information at the mobile device and without requiring
transmission of payment information directly from the mobile device to a
device of a merchant.
Accordingly, the claim as a whole integrates the abstract idea into a
practical application because the claim limitations, e.g., "in response to
receiving the authorization request from the financial system of the
merchant," "transmitting, by a transmitting device of the processing server
device, over a communication network, via mobile network operator
(MNO), to a mobile computing device associated with the mobile device
identifier included in the authorization request, a confirmation request,"
"said confirmation request including at least the transaction details
associated with the financial transaction with the merchant," and "wherein
said transmission activates an application program installed on the mobile
computing device causing the transaction details to be displayed on a display
of the mobile computing device and prompting user-confirmation of the
financial transaction," impose meaningful limits on practicing the abstract
idea. For these reasons, the claims are directed to patent-eligible subject
matter.
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DECISION
For the above reasons, the Examiner's rejection of claims 10-15,
26-31, 33, and 34 is reversed.
REVERSED
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