Ex Parte Carroll et al

Patent Trial and Appeal Board

Jul 24, 2017

13138286 (P.T.A.B. Jul. 24, 2017)

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.
13/138,286 07/27/2011 Pat Carroll 4199.P0002US 5963
23474 7590 07/26/2017
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
DOCKET@FLYNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAT CARROLL, JOHN PETERSEN, and JONATHAN ALFORD
Appeal 2015-003030
Application 13/138,286
Technology Center 3600
Before ANTON W. FETTING, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pat Carroll, John Petersen, and Jonathan Alford (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1—9, 14, 17—22, 25, 27,
and 36-43, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 22, 2014) and Reply Brief (“Reply Br.,” filed
December 30, 2014), and the Examiner’s Answer (“Ans.,” mailed October
30, 2014), and Final Action (“Final Act.,” mailed April 23, 2014).
Appeal 2015-003030
Application 13/138,286
The Appellants invented a way of determining the validity of a requested
transaction and preventing card presentment false-positives. Specification
1:4—7.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for authenticating a transaction comprising the
steps of:
[1] receiving a transaction request;
[2] processing the transaction request
to determine if the transaction request can be approved
without further processing;
and
[3] allowing the transaction
if a determination is made that the transaction request can
be approved without further processing;
[4] wherein if a determination is made that the transaction
request cannot be approved without further processing, the
method further comprises:
[5] receiving, by a computer or a server,
data identifying a region where the transaction is
being requested;
[6] determining,
with the computer or the server and from
Location Register (LR) data obtained from a
mobile network provider for a mobile
communication device associated with a
person requesting the transaction,
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data identifying a region where the mobile
communication device is located;
[7] comparing,
with the computer or the server,
the data identifying the region where the
transaction is being requested
with
the data identifying the region where the mobile
communication device is located;
and
[8] if the compared region data match,
allowing the transaction,
or,
[9] if the compared region data do not match,
not allowing the transaction without further
verification of authenticity;
[10] wherein
the data identifying the region where the mobile
communication device is located comprises
Mobile Country Code data
or
data identifying a state or a city
and
the data identifying the region where the transaction is
being requested comprises
transaction country data
or
data identifying a state or a city.
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Application 13/138,286
The Examiner relies upon the following prior art:
Benco US 2007/0108269 A1 May 17, 2007
Dankar US 2008/0227471 A1 Sept. 18, 2008
Ashfield US 2010/0022254 A1 Jan. 28, 2010
Claims 1 and 38 stand rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 38, and 40 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking a supporting written description within the original
disclosure.
Claims 1, 38, and 40 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1—9, 14, 17—22, 25, 27, 36—37, 40, 41, and 43 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Ashfield, Benco, and Dankar.
Claims 38, 39, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dankar and Ashfield.
Claims 1—9, 14, 17—22, 25, 27, and 36-43 stand provisionally rejected
under the judicially created doctrine of obviousness type double patenting as
claiming the patentably indistinguishable subject matter as another U.S.
Patent.
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Application 13/138,286
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims are drawn to more than conceptual advice. The issues of written
description turn primarily on whether the Specification supports the step
sequence in the claims. The issues of indefiniteness turn primarily on
whether breadth is indefiniteness. The issues of obviousness turn primarily
on whether the recited step sequence in the claims is the same as described
by Ashfield.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants ’ Disclosure
01. Once the bank or financial service provider 107 has received
the transaction request, it may optionally perform additional
processing to determine (using software risk engines or in-house
logic) whether the transaction is likely to be fraudulent, for
example if the transaction is for a large amount. However, if the
financial service provider 107 determines that the transaction is
likely to be genuine, then it can proceed directly to the
authorisation process, at step 217, allowing the transaction at step
219. If the financial service provider determines that the
transaction is likely to be fraudulent, then it passes the request to
the server, 101. The server 101 then extracts country code
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information contained within the transaction information, at step
207. Spec. 5:10-29.
Facts Related to the Prior Art
Ashfield
02. Ashfield is directed to location-based authentication of an
electronic transaction. Ashfield para. 4.
03. Ashfield determines device location prior to an initial decision.
Ashfield Fig. 3 refs. 304 and 307 and Fig. 4 refs. 404 and 407.
Benco
04. Benco is directed to an integrated approach to the processing of
retail purchases in conjunction with wireless mobile devices.
Benco paras. 3-A.
Dankar
05. Dankar is directed to comparing a wireless device’s location
obtained from a wireless network with the wireless device user’s
location. Dankar para. 17.
ANALYSIS
Claims 1 and 38 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
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Application 13/138,286
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us?” [] To answer that
question, [] consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis as a search for an “inventive
concept”—i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp., Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The Examiner finds claim 1 is directed to location based authentication
of a transaction request. The preamble to claim 1 recites that it is a method
for authenticating a transaction. The steps in claim 1 result in going forward
or not going forward with a transaction. The Specification at 1:4 recites that
the invention relates to determining the validity of a requested transaction.
Thus, all this evidence shows that claim 1 is directed to validating a
transaction, i.e. evaluating whether to enter a transaction.
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It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of evaluating whether to enter a transaction is
a fundamental business practice long prevalent in our system of commerce.
The use of evaluating whether to enter a transaction is also a building block
of all market economies. Thus, evaluating whether to enter a transaction,
like hedging, is an “abstract idea” beyond the scope of § 101. See Alice
Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of evaluating
whether to enter a transaction at issue here. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. See Alice Corp.
Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d at 611; FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016). Claim 1, unlike
the claims found non-abstract in prior cases, uses generic computer
technology to perform data collection, analysis, and control and does not
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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”). As such, claim 1 is
directed to the abstract idea of receiving, analyzing, and controlling the
further processing of data.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive and process data, and select whether to execute code
based on criteria amounts to electronic data query and retrieval—one of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of evaluating whether to enter a transaction as
performed by a generic computer. To be sure, the claims recite doing so by
advising one to examine a transaction, and if criteria are unmet at that point,
eliciting further information and checking that information against further
criteria, and allowing or disallowing the transaction based on the result. But
this is no more than abstract conceptual advice on the parameters for such
evaluating whether to enter a transaction and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Nor do they effect an improvement
in any other technology or technical field. The 13 pages of specification
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spell out different generic equipment and potential parameters using this
concept and the particular steps such conventional processing would entail
based on the concept of allowing or disallowing a transaction based on
multiple layers of criteria. They do not describe any particular improvement
in the manner a computer functions. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply the abstract idea of
evaluating whether to enter a transaction using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants’ argument that there are
unconventional steps that confine the claim to a particular useful application
and is not merely a drafting effort designed to monopolize an abstract idea.
Reply Br. 2—3. Appellants contend that because the claim recites specific
steps with some purpose, the claim is directed to more than an abstract idea.
But conceptual advice, no matter how detailed, is an abstract idea, because it
would allow the Appellants to pre-empt the use of this approach in all fields,
and would effectively grant a monopoly over an abstract idea. Bilski v.
Kappos, 561 U.S. 593, 611—12 (2010). That the claims do not preempt all
forms of the abstraction or may be limited to the abstract idea in the e-
commerce setting do not make them any less abstract. See OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015).
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Claims 1, 38, and 40 rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure
We are persuaded by Appellants’ argument that Specification 5 supports
the timing of the region matching as occurring after steps 3 and 4. App. Br.
7—10. See also FF 01. The Examiner invites us to treat the Specification
under broadest reasonable interpretation. FinalAct.il. We decline the
invitation, as broadest reasonable interpretation is a tool in claim
construction and not Specification interpretation.
This result is determinative of the obviousness rejection infra.
Claims 1, 38, and 40 rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention
We are persuaded by Appellants’ argument that breadth of a claim is not
to be equated with indefmiteness. App. Br. 11.
Claims 1—9, 14, 17—22, 25, 27, 36—37, 40, 41, and 43 rejected under 35
U.S.C. § 103(a) as unpatentable over Ashfield, Benco, andDankar
We are persuaded by Appellants’ argument that Ashfield reverses the
decision and location determination steps from the recited sequence. App.
Br. 20. See FF 03. The issue of whether Ashfield is prior art is therefore
moot.
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Claims 38, 39, and 42 rejected under 35 U.S.C. § 103(a) as unpatentable
over Dankar and Ashfield
These are dependent claims.
Claims 1—9, 14, 17—22, 25, 27, and 36—43 provisionally rejected under the
judicially created doctrine of obviousness type double patenting as claiming
the patentably indistinguishable subject matter as another U.S. Patent
Appellants do not contest this provisional rejection.
CONCLUSIONS OF LAW
The rejection of claims 1 and 38 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is proper.
The rejection of claims 1, 38, and 40 under 35 U.S.C. § 112, first
paragraph, as lacking a supporting written description within the original
disclosure is improper.
The rejection of claims 1,38, and 40 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claims 1—9, 14, 17—22, 25, 27, 36—37, 40, 41, and 43
under 35 U.S.C. § 103(a) as unpatentable over Ashfield, Benco, and Dankar
is improper.
The rejection of claims 38, 39, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Dankar and Ashfield is improper.
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The provisional rejection of claims 1—9, 14, 17—22, 25, 27, and 36-43
under the judicially created doctrine of obviousness type double patenting as
claiming the patentably indistinguishable subject matter as another U.S.
Patent is uncontested.
DECISION
The rejection of claims 1 and 38 is affirmed.
The rejection of claims 2—9, 14, 17—22, 25, 27, 36, 37, and 39-43 is
reversed.
The provisional rejection of claims 1—9, 14, 17—22, 25, 27, and 36-43 is
uncontested.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED-IN—PART
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