Ex Parte Carlson et al

Patent Trial and Appeal Board

Sep 4, 2018

12763957 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/763,957 04/20/2010 Mark Carlson
66945 7590 09/06/2018
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.
79900-801225(048080US) 6412
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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 and SHALINI MAYOR
Appeal2016-007643
Application 12/763,957 1
Technology Center 3600
Before KEVIN F. TURNER, KENNETH G. SCHOPPER,
and SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1--4, 6-14, 16-20, and 22-27. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Visa International
Service Association. Appeal Brief filed January 4, 2016, hereafter "App.
Br.," 3.
Appeal2016-007643
Application 12/763,957
BACKGROUND
The invention is directed to providing a consumer with an alert
regarding a payment transaction and, more specifically, to providing an alert
or a message that can be used to determine a suitable tip or gratuity for the
transaction. Specification, hereafter "Spec.," ,r 2.
Claims 1, 11, and 19 are the independent claims on appeal.
Representative claim 1 is reproduced from pages 19 and 20 of the Claims
Appendix of the Appeal Brief (Claims App.) as follows:
1. An apparatus for processing a payment transaction
conducted by a consumer, comprising:
an electronic processor programmed to execute a set of
instructions;
a data storage device coupled to the processor; and
the set of instructions contained in the data storage
device, wherein when the set of instructions are executed by the
processor, the apparatus processes the payment transaction by
receiving an authorization message for the payment
transaction from a merchant computer, wherein the
authorization message is provided to an issuer computer to
approve or decline the payment transaction;
processing the authorization message to determine if data
contained in the authorization message satisfies a condition
specified by the consumer for generating a transaction alert
message regarding a proposed gratuity for the payment
transaction;
accessing transaction alert message data regarding the
consumer's desired content for the transaction alert message
regarding the proposed gratuity for the payment transaction
when the data contained in the authorization message satisfies
the condition;
generating the transaction alert message containing
information regarding the proposed gratuity for the payment
transaction based on the accessed transaction alert message data
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when the data contained in the authorization message satisfies
the condition; and
providing the transaction alert message to a consumer
communication device operated by the consumer participating
in the payment transaction, wherein after providing the
transaction alert message to the consumer participating in the
payment transaction, the apparatus processes the payment
transaction by
receiving, from the consumer communication device, an
approval message that is separate from the authorization
message and contains a total amount for the payment
transaction that is approved by the consumer, the total amount
including a gratuity approved by the consumer;
comparing the total amount for the payment transaction
approved by the consumer to a total amount for the payment
transaction provided by the merchant computer for the payment
transaction;
determining that the total amount for the payment
transaction is not substantially the same as the total amount for
the payment transaction provided by the merchant computer;
generating a fraud alert message for the consumer
indicating the possibility of fraud that the merchant computer
provided a different gratuity amount than the gratuity approved
by the consumer in the payment transaction after determining
that the total amount for the payment transaction approved by
the consumer is not substantially the same as the total amount
for the payment transaction provided by the merchant computer
for the payment transaction; and
sending the fraud alert message to the consumer
communication device.
The Examiner rejects claims 1--4, 6-14, 16-20, and 22-27 under 35
U.S.C. § 101 as reciting a judicial exception without significantly more.
Final Action mailed August 7, 2015, hereafter "Final Act.," 3--4; see also
Examiner's Answer mailed June 7, 2016, hereinafter "Ans.," 2-3.
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DISCUSSION
Appellants argue the § 101 rejection using independent claim 1 as
representative. See App. Br. 8. We will address the rejection in the same
manner.
The Examiner determines that the claims, and more specifically,
representative claim 1, are directed to non-statutory subject matter because
they are directed to the abstract idea of a method of organizing human
activities. Final Act. 4. The Examiner determines that the creation of a
payment transaction conducted by a consumer is similar to methods of
organizing human activity found by the courts to be abstract ideas. Ans. 3
(citing Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) ("Alice")). Additional claim elements are determined to not be
significantly more than instructions to implement the idea on a computer
and/or perform generic computer functions that are well-understood, routine,
and conventional activities that were previously known. Final Act. 4.
Additionally, the claim elements do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the idea that
amounts to significantly more than the abstract idea. Id. Further, the
Examiner determines that:
The additional elements are an electronic processor, a data
storage device coupled to the processor, a user interface, a
database coupled to the processor, and a message delivery
element. Individually, the elements are well-understood, routine,
and conventional elements that amount to no more than
implementing the abstract idea with a computerized system.
Taken as combination, the elements add nothing more than what
is present when the elements are considered individually. There
is no indication that the combination provides any effect
regarding the functioning of the computer or any improvement
to another technology.
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Ans. 3--4.
Appellants argue that the rejection of claim 1 is flawed because the
Examiner does not provide sufficient support for the identification of the
abstract idea, does not address all the parts of the claim, nor is the claim
directed to organizing human activity or another abstract idea. App. Br. 8-
12; Reply Brief filed August 8, 2016, hereafter "Reply Br.," 2---6. Appellants
assert that the claims at issue are instead necessarily rooted in computer
technology and are directed to a problem arising in the realm of computer
technology, referring to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) ("DDR"). Id. at 14. Appellants also refer to Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) ("Enfish"), arguing
that the Examiner fails to take improvements to a computer by the additional
elements of the claim into account, as well as the technical improvements
over conventional systems with the use of a specialized apparatus. Reply
Br. 7-9.
Appellants additionally allege that, even if the claim is directed to an
abstract idea, it recites meaningful limitations that do not monopolize the
judicial exception such that others cannot practice all human activities. App.
Br. 12-16. Appellants argue that the invention improves technology and
computer functioning. Id. at 16. Appellants assert that conventional
computer systems had no way of alerting consumers of potential fraud and
the problem solved includes software on a communications device that
allows consumers to send gratuity information to a central computer. Id.
Appellants also allege that the claims add specific limitations that are not
well-understood, routine, or conventional and "are patentable over the prior
art, and the combination of limitations that make the claims patentable are
clearly 'outside' of any alleged 'abstract idea."' Id. at 16-17.
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Further, Appellants aver that the Examiner fails to explain why certain
elements are well-understood, routine, and conventional. Reply Br. 10
(citing Ans. 4). Appellants assert similarities to BASCOM Global Internet
Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) ("BASCOM'),
because the steps are alleged to represent specific, meaningful limitations
that do not perform generic computer functions. Id. at 12.
To provide context, 35 U.S.C. § 101 provides that a new and useful
"process, machine, manufacture, or composition of matter" is eligible for
patent protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappas, 561 U.S. 593, 609 (2010). There are, however, three
limited, judicially created exceptions to the broad categories of patent-
eligible subject matter in § 101: "[L Jaws of nature; natural phenomena, and
abstract ideas." See Mayo Collaborative Services v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012).
In Alice, the Supreme Court reiterated the framework set forth
previously in Mayo, "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 (citation omitted).
Under Alice, the first step of such analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
( citation omitted). If it is determined that 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 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
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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).
After considering Appellants' arguments and the evidence presented
in this Appeal for the§ 101 rejection, we are not persuaded that Appellants
identify reversible error. We add the following for emphasis.
We agree with the Examiner that all the elements of claim 1 are
directed towards the abstract idea of payment transactions conducted by a
consumer, which is a method of organizing human activity. The Federal
Circuit has held certain fundamental economic and conventional business
practices, like verifying credit card transactions (see CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), and collecting
and analyzing information to detect and notify of misuses (see Fair Warning
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)), as
being abstract ideas implemented on computers. The processing of payment
transactions of claim 1 is similar to these abstract ideas, and, thus, claim 1 is
directed to an abstract idea.
Appellants' arguments based upon DDR also fail to persuade because
claim 1 does not represent an improvement to technology. To contrast, in
DDR, the Federal Circuit found the claims patent eligible because they claim
a solution "necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer networks." DDR,
773 F.3d at 1257. Further, Appellants' arguments about alleged similarities
to Enfzsh fail to persuade because its claims were deemed to be patent
eligible because they were directed to improvements in the way computers
and networks carry out their basic functions. See Enfzsh, 822 F.3d at 1335-
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36. Instead, similar to the claims at issue in Electric Power Grp, LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016), the claimed invention
here receives, manipulates, and presents information, but does not use any
particular inventive technology for performing those functions. That the
information pertains to processing payment transactions with fraud alerts is
of little consequence because collecting, communicating, analyzing, and
reporting such information does not make the collection and reporting non-
abstract. See SAP America, Inc. v. Investpic, LLC, 2018 WL 3656048 at *1,
*5 (Fed. Cir. 2018) ("SAP") ("No matter how much of an advance in the
finance field the claims recite, the advance lies entirely in the realm of
abstract ideas, with no plausibly alleged innovation in the non-abstract
application realm"). Here, the focus of the claims is not to improved
computer operations or functions, but rather is directed to processing
payment transactions-an abstract idea.
Turning to step 2 of Alice, Appellants characterize the invention as
significantly more than an abstract idea because it improves technology and
computer functioning, where conventional computer systems had no way of
alerting consumers of potential fraud, and, additionally, that the claims add
specific limitations that are not well-understood, routine, or conventional
and are patentable over the prior art. App. Br. 16-17. We do not find these
arguments to be persuasive.
Although Appellants allege that the invention improves technology,
the Specification does not identify any of the elements of the claim, such as
the processor, data storage device, and consumer communications device, or
use of the Internet and/or communications functions, that are specialized, or
indicates any specialized improvements thereto. See Spec. ,r,r 23-30, 38-39,
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42. Additionally, the claim here is distinguishable from BASCOM2, because
the alleged inventive feature is solving the problem of gratuity mistakes by
allowing the consumer to enter and send the allowable gratuity information
to a computer (App. Br. 16}-but there is no support in the Specification that
this is anything but performing an abstract idea on a generic computer. And
under the claim recitals we discern no specialized computer-based method as
to how the fraud is detected-the claim is to a comparison of a consumer's
approved payment amount, including gratuity amount, sent from the
consumer communication device which is compared with the merchant
computer's requested gratuity amount.
On this issue, the Federal Circuit's analysis in SAP is instructive:
Some of the claims require various databases and processors,
which are in the physical realm of things. But it is clear, from
the claims themselves and the specification, that these limitations
require no improved computer resources [patent owner] claims
to have invented, just already available computers, with their
already available basic functions, to use as tools in executing the
claimed process.
SAP, 2018 WL 3656048 at *7.
There is a difference between improving computer functionality and
use of existing computers to perform tasks, and here, there is no underlying
change as to how the technology operates under claim 1. Here, the claim
only implements the abstract idea and it is "clear that the basic character of a
process claim drawn to an abstract idea is not changed by claiming only its
2 In BASCOM, the claims did not merely recite the abstract idea and generic
computer components. BASCOM, 827 F.3d at 1349--50 ("The claims do not
merely recite the abstract idea of filtering content along with the requirement
to perform it on the Internet, or to perform it on a set of generic computer
components. Such claims would not contain an inventive concept.").
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performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium." CyberSource, 654 F.3d at
1375. Moreover, the argument of whether the limitations are outside any
abstract idea because they are patentable over the prior art (App. Br. 16-17),
is related to whether a claim is novel or non-obvious, not whether the claim
is significantly more than the judicial exception. See Two-Way Media Ltd. v.
Comcast Cable Commc 'ns., 874 F.3d 1329, 1339-40 (Fed. Cir. 2017)
("Eligibility and novelty are separate inquiries.").
Finally, we are not persuaded by Appellants' allegation that the
Examiner has not explained why certain elements are well-understood,
routine, or conventional because Appellants' argument is misdirected.
Reply Br. 10 (citing Ans. 4). Although Appellants assert that the Examiner
failed to provide findings on the conventionality of the steps themselves 3, a
review of the record indicates that the Appellants considered only a select
portion of it. The Examiner's determinations were not directed to the
conventionality of the steps, but rather were directed to the computer
components and the implementation of an abstract idea on these
conventional elements, as well as whether there were any improvements to
the functioning of a computer system. See block quote supra 4--5 ( citing
Ans. 3--4). As discussed above, on this record, we discern no error in the
Examiner's determinations related to implementation of abstract ideas on
generic conventional computer systems under representative claim 1.
Therefore, we sustain the rejection of claims 1--4, 6-14, 16-20, and
22-27 under§ 101.
3 "Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination."
Berkheimerv. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
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SUMMARY
The rejection of claims 1--4, 6-14, 16-20, and 22-27 under 35 U.S.C.
§ 101 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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