Ex Parte Carlson

Patent Trial and Appeal Board

Sep 24, 2018

12435195 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/435, 195 05/04/2009 Mark Carlson
66945 7590 09/26/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-758826(044400US) 2831
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK CARLSON
Appeal2017-000482 1
Application 12/435,1952
Technology Center 3600
Before ANTON W. PETTING, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 5-8, 10-14, 16-19, 21-25, and 27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellant's Appeal Brief ("Appeal Br.," filed
February 29, 2016) and Reply Brief ("Reply Br.," filed October 7, 2016), the
Examiner's Answer ("Ans.," mailed August 8, 2016), and Final Office
Action ("Final Act.," mailed July 30, 2015).
2 Appellant identifies Visa International Service Association as the real party
in interest (Appeal Br. 3).
Appeal2017-000482
Application 12/435,195
CLAIMED INVENTION
Appellant's claims relate generally to "an alert message [that] can be
sent to a consumer's phone indicating that a transaction has taken place
using the user's portable consumer device" (Spec. ,r 5).
Claims 1, 6, 11, and 16 are the independent claims on appeal. Claim
1, reproduced below with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. 1. A server computer in transaction processing network,
the server computer comprising:
[a] a processor; and
[b] a computer readable medium coupled to the processor,
wherein the computer readable medium comprises code
executable by the processor, for implementing a method
comprising[:]
[ c] receiving an authorization request message at a server
computer, wherein the authorization request message is
associated with a transaction conducted by a consumer with a
merchant using an account;
[ d] sending the authorization request message to an issuer
of the account;
[ e] receiving an authorization response message from the
issuer authorizing the transaction;
[ fJ using the server computer, sending a transaction alert
message to a consumer device, wherein the transaction alert
message includes information identifying the transaction;
[g] using the server computer, sending the authorization
response message received from the issuer authorizing the
transaction to the merchant, the authorization response message
initiating a fulfillment process to fulfill the transaction before
rece1vmg an alert response message for the transaction alert
message;
[h] rece1vmg the alert response message at the server
computer from the consumer device indicating that the
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transaction is not authorized, after the authorization response
message is received from the issuer;
[i] using the server computer, sending a termination
message to the merchant in response to receiving the alert
response message; and
Li] receiving a chargeback message from the merchant at
the server computer after sending the termination message.
REJECTION
Claims 1, 2, 5-8, 10-14, 16-19, 21-25, and 27 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
ANALYSIS
Independent claims 1, 6, 11, and 16 and dependent claims 2, 5, 7, 8, 10,
12-14, 17-19, 21-25, and 27
Appellant argues claims 1, 2, 5-8, 10, 21, 22, and 27 as a group (see
Appeal Br. 8, 15). We select independent claim 1 as representative. Claims
2, 5-8, 10-14, 16-19, 21-25, and 27 stand or fall with independent claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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 Corp. Pty.
Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts." Id. (citing Mayo, 566 U.S. at 79)
( emphasis added). If so, the second step is to consider the elements of the
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claims "individually and 'as an ordered combination"' to determine whether
the additional elements "'transform the nature of the claim' into a patent-
eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78).
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 concept] itself."' Id. ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
Appellant argues that the Examiner's rejection is in error because the
Examiner fails establish a prima facie case of subject matter ineligibility (see
Appeal Br. 8-12; see also Reply Br. 2-3). More particularly, Appellant
argues that, "the Examiner's characterization of the claims as simply
managing relationships or transactions oversimplifies the claims and ignores
the problem being addressed by the claims" (Reply Br. 2-3). Appellant's
arguments are not persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework (Final Act.
2-6; Ans. 3-5). Here, the Examiner maintains the claims are directed to "a
method of organizing human activities" (Final Act. 4 ). The Examiner also
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characterizes the claims as being directed to "using [a] series of
message/alert exchanges[] for transaction authentication and authorization"
(Ans. 4) (emphasis omitted). And, looking to the language of the claims, the
Examiner further determines
all the steps in the claims are directed to a series of behavioral
activities including e.g. receiving an authorization request
message. . . , sending the authorization request message. . . ,
receiving an authorization response message ... , sending a
transaction alert message ... authorization response message
... , initiating a fulfillment process ... , receiving the alert
response message ... , sending a termination message ... , and
receiving a chargeback message . . . , which, when viewed
individually and in combination, constitute an abstract idea of
certain methods of organizing human activity. These particular
behaviors are "interpersonal activities" of "managing
relationships or transactions between people, social activities, or
behaviors," "satisfying or avoiding a legal obligation," and
"advertising, marketing, and sales activities or behaviors," which
are subcategories of activities that the precedential courts have
found to be abstract idea under "certain methods of organizing
human activity."
(Ans. 3--4 ( emphasis omitted); see also Final Act. 5). The Examiner cites
abstract ideas from previous judicial decisions and compares the present idea
to the abstract ideas in those decisions (see Final Act. 3; see also Ans. 4).
The Examiner also determines that the additional elements of the claims,
taken alone and as an ordered combination, do not ensure that the claims
amount to significantly more than the abstract idea (see Final Act. 5; see
also Ans. 5). The Examiner, thus, has clearly followed the two-part
framework specified by the Supreme Court in Mayol Alice consistent with
Office guidelines.
In this regard, the Examiner has articulated the reasons for the
rejection and has notified Appellant of the reasons for the rejection "together
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with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 35 U.S.C.
§ 132. And we find that, in doing so, the Examiner sets forth a prima facie
case of subject matter ineligibility. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection"). Further, there is no such requirement that Examiners must
provide evidentiary or documentary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. 3
Evidence may be helpful in certain situations where, for instance, facts are in
dispute. But it is not always necessary. It is not necessary in this case.
Although Appellant cites to the Board decisions in PNC Bank v. Secure
Axcess, LLC, Case CBM2014-00100, 2014 WL 4537440 (PTAB Sept. 9,
2014) (Paper 10) and Ex parte Renald Poisson, Appeal 2012-011084 (PTAB
Feb. 27, 2015), Appellant does not direct attention to, nor do we find, any
statement that requires the Examiner to identify specific references or
documentation to support a finding that a claim is directed to an abstract
idea. 4
3 See, e.g., MPEP § 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law .... Thus, the court does not require 'evidence' that a
claimed concept is a judicial exception, and generally decides the legal
conclusion of eligibility without resolving any factual issues" (internal
citations omitted)).
4 We would not be bound, in any event, by a non-precedential decision of
the Board.
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We also agree with the Examiner that under step one of the
framework set forth in Mayol Alice, the claimed invention is directed broadly
to "a method of organizing human activities" (Final Act. 4), as well as
directed to a "process ( using series of message/ alert exchanges) for
transaction authentication and authorization[]" ( Ans. 4) ( emphasis omitted),
and similar to certain methods of organizing human activities that our
reviewing court has found patent ineligible, such as "unpatentable mental
processes" including "steps [that] can be performed in the human mind, or
by a human using a pen and paper" in CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011), and the concept of
collecting information, analyzing it, and displaying certain results of the
collection and analysis in Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016).
In making this determination, we note that the present invention is
described as being directed to "methods for improved transactions" (Spec.
,r 5). According to the Specification, "[ c ]redit card fraud is a major problem
for payment entities" (id. ,r 2) and "[i]n the past, schemes have been
proposed by which a user is asked to authenticate transactions" (id. ,r 3).
The problem with past schemes, however, is that "they can significantly
increase the time delay between when an order is placed by the consumer
and when the order is fulfilled" (id.). To address this drawback, the present
invention discloses
an alert message can be sent to a consumer's phone indicating
that a transaction has taken place using the user's portable
consumer device. The user may directly respond to the alert
message indicating that the transaction is authorized or not
authorized by the consumer. If it is not authorized, the user's
response to the alert message may be used to automatically
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initiate a chargeback process after the transaction was otherwise
authorized by an issuer associated with the portable consumer
device.
(Id. ,r 5). And, taking independent claim 1 as representative, the claimed
subject matter is generally directed to "receiving an authorization request,"
"sending the authorization request message to an issuer," "receiving an
authorization response message from the issuer authorizing the transaction,"
"sending a transaction alert message to a consumer device," "sending the
authorization response message received from the issuer authorizing the
transaction to the merchant ... initiating a fulfillment process to fulfill the
transaction before receiving an alert response message for the transaction
alert message," "receiving the alert response message ... indicating that the
transaction is not authorized, after the authorization response message is
received from the issuer," "sending a termination message to the merchant in
response to receiving the alert response message," and "receiving a
chargeback message from the merchant." Thus, independent claim 1
involves nothing more than sending, receiving, and analyzing data of a
specific content and/or from a specific source, from one place to another,
without any particular inventive technology- an abstract idea. See Electric
Power, 830 F.3d at 1354. Claim 1, unlike the claims found non-abstract in
prior cases, uses generic computer technology to send, receive, and analyze
data and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
Turning to the second step of the Mayol Alice framework, rather than
reciting additional elements that amount to "significantly more" than the
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abstract idea, exemplary independent claim 1, at best, adds only a
"processor, memory, display, and data communication system [that] are used
to process the data and transmit and receive data" (Final Act. 5), which does
not satisfy the inventive concept. The Specification discloses that the
"consumer device" may be "a computer terminal, television, personal or
laptop computer" (Spec. ,r 19), the "server computer 44(a) may comprise a
processor; and a computer readable medium coupled to the processor" (id.
,r 23), and "a payment processing network 26, which may include a server
computer 26(a)" that "can be a large mainframe, a minicomputer cluster, or
a group of servers functioning as a unit" (id. ,r 27). Thus, we agree with the
Examiner that exemplary independent claim 1 does not include additional
elements alone or in combination that are sufficient to amount to
significantly more than the abstract idea. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal quotation
marks omitted) ("[ A ]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible .... The bare fact that a computer exists in the physical rather
than purely conceptual realm 'is beside the point"') (internal citation
omitted).
And, similar to Electric Power, we are not apprised of anything other
than off-the-shelf, conventional computer technology for sending, receiving,
and analyzing data. For example, the Specification merely discloses
[t]he [merchant] server computer 44(a) may comprise a
processor; and a computer readable medium coupled to the
processor, wherein the computer readable medium comprises
code executable by the processor, the computer readable medium
comprising (i) code for sending an authorization request message
associated with a transaction, (ii) code for receiving an
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authorization response message approving the transaction, (iii)
code for receiving a termination message after receiving the
authorization response message, (iv) code for initiating a
termination process for the transaction, and (v) code for sending
a chargeback message.
(Spec. ,r 23). In a similar manner, the Specification discloses
The [payment processing network] server computer 26( a) may
comprise a processor; and a computer readable medium coupled
to the processor, wherein the computer readable medium
comprises code executable by the processor, the computer
readable medium comprising (i) code for receiving an
authorization request message, wherein the authorization request
message is associated with a transaction, (ii) code for sending an
authorization response message authorizing the transaction, (iii)
code for sending a transaction alert message to a consumer
device, wherein the transaction alert message includes
information identifying the transaction, (iv) code for receiving an
alert response message indicating that the transaction is not
authorized, (v) code for sending a termination message, and (vi)
code for receiving a chargeback message after sending the
termination message.
(Id. ,r 27). As the court explained in Electric Power, "merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas." Elec. Power Grp., 830 F.3d at 1355. Here, as
the Examiner points out, the steps of independent claim 1 are all "steps that
can be performed by a human being using a generic processor and a user
interface" (Final Act. 2). Thus, the steps recited by independent claim 1
amount to nothing more than mere instructions to implement the abstract
idea on a computer-none of which add inventiveness because they merely
require the application of conventional, well-known analytical steps. See
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Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) ("[T]he
claimed sequence of steps comprises only 'conventional steps, specified at a
high level of generality,' which is insufficient to supply an 'inventive
concept"') (citing Alice, 134 S. Ct. at 2357) (internal citations omitted).
In response, Appellant argues
[i]n contrast to such conventional techniques, the claims utilize
the authorization response message from the issuer to initiate the
fulfillment process without waiting for an alert response message
from the user's communication device. This is neither routine
nor conventional at the time of filing of the present case, and the
Examiner has not provided any documentary support to establish
the contrary.
(Appeal Br. 15; see also Reply Br. 4--5). However, Appellant does not
adequately show how the claimed steps are technically done such that they
are not routine, conventional functions of a generic computer. See
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) ("Rather, the 'interactive interface' simply describes a
generic web server with attendant software, tasked with providing web pages
to and communicating with the user's computer"). As discussed above,
there is no indication in the record that any specialized computer hardware is
required or evidence that the programming related to the limitations of
independent claim 1 entail anything atypical from conventional
programming. Instead, the Specification discloses utilizing conventional
computer components to perform generic computer limitations (see Spec.
,r,r 17-29). And it is well-settled that "merely recit[ing] the abstract idea ...
with the requirement to perform it on the Internet, or to perform it on a set of
generic computer components ... would not contain an inventive concept."
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See BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016).
And, considered as an ordered combination, the computer components
of Appellant's independent claim 1 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
Appellant's claims simply recite the concept "using [a] series of
message/alert exchanges[] for transaction authentication and authorization"
(Ans. 4) ( emphasis omitted) using a computer. The 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.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of "using [a] series of message/ alert
exchanges[] for transaction authentication and authorization" (Ans. 4)
( emphasis omitted), which under our precedents, is not enough to transform
an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at
2360.
Appellant further argues that present claim is similar to the
hypothetical, patent-eligible claim 2 in Example 21 (see Appeal Br. 13-14
(citing JULY 2015 UPDATE APPENDIX 1: EXAMPLES, Ex. 21) (hereinafter
"JULY 2015 UPDATE"); see also Reply Br. 2--4), because the present "claims
address the Internet-centric challenge of initiating a fulfillment process in a
card-not-present transaction (e.g., an Internet transaction) when a user's
communication device is offline and cannot immediately receive or response
to an alert message" (Appeal Br. 14; see also Reply Br. 2). We cannot
agree.
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Appellant's argument is at least not persuasive because the steps of
independent claim 1 do not necessarily occur in a "card-not-present
transaction." That is, claim 2, which depends on claim 1, further recites
"[t]he server computer of claim 1 wherein the transaction is a card not
present type of transaction." Nevertheless, hypothetical claim 2 recites a
series of steps for distributing stock quotes to selected remote devices that
amount to "comparing and organizing data," which is a concept similar to
mental processes and other concepts that courts have found to be abstract
under step one (see JULY 2015 UPDATE 4). However, similar to the claims in
DDR Holdings, claim 2 of Example 21 was deemed patent-eligible because
the claimed invention "addresses the Internet-centric challenge of alerting a
subscriber with time sensitive information when the subscriber's computer is
offline" by "transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to display[,] and
enables the connection of the remote subscriber computer to the data source
over the Internet when the remote subscriber computer comes online" (id.).
Here, we find no analogous limitation is recited in Appellant's claim 1.
Unlike hypothetical claim 2, Appellant's claim 1 does not cause the
consumer device to activate some application and enable a connection.
In view of the foregoing, we sustain the Examiner's rejection under 35
U.S.C. § 101 of independent claim 1, and claims 2, 5-8, 10-14, 16-19,
21-25, and 27, which fall with independent claim 1.
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DECISION
The Examiner's rejection of claims 1, 2, 5-8, 10-14, 16-19, 21-25,
and 27 under 35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
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