Ex Parte DuCharme et al

Patent Trial and Appeal Board

Mar 29, 2018

13750515 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131750,515 01125/2013
125619 7590 04/02/2018
MasterCard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust A venue
New Canaan, CT 06840
FIRST NAMED INVENTOR
Brian J. DuCharme
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.
P00758-US-UTIL
(MOl.202)
CONFIRMATION NO.
9378
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
martin@bmtpatent.com
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN J. DUCHARME and SHAWN HAGMEIER
Appeal2017-000945
Application 13/750,515
Technology Center 3600
Before JEREMY J. CURCURI, HUNG H. BUI, and
IRVINE. BRANCH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-17. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 1-17 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 10-11.
We AFFIRM.
Appeal2017-000945
Application 13/750,515
STATEMENT OF THE CASE
Appellants' invention relates to "leveraging an open-loop payment
card system to transfer funds to accounts which are not included in the open-
loop payment card system." Spec. i-f 1. Claim 1 is illustrative and reproduced
below:
1. A method performed by one or more processors at
an originating institution comprising:
preparing, using a first computer at the originating
institution, a payment message including a primary account
number identifying a wholesale payment card account and a non-
payment card destination account identifier, with the non-
payment card destination account identifier identifying a non-
payment card destination account to which a payment is to be
made from an account holder to a payee who is a different
individual from the account holder, the payee being owner of the
non-payment card destination account; the payment message
including a payment amount; and
sending the payment message to a second computer at a
receiving institution over an open-loop payment card network,
using the first computer, with the open-loop payment card
network configured to transfer a payment only to payment card
accounts and with the non-payment card destination account
identifier configured to facilitate transfer, at the receiving
institution, of the payment from the wholesale payment card
account to the non-payment card destination account identified
by the non-payment card destination account identifier;
system;
the open-loop payment card network including a global
telecommunications network;
the non-payment card destination account being an
account in a closed-loop payment system;
the first computer debiting an origination account
maintained in the originating institution in a first country;
the wholesale payment card account maintained in the
receiving institution in a second country different from the first
country;
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Application 13/750,515
said first computer including a first processor, a first
communication device, a first storage device, a first input device
and a first output device;
said first storage device storing a database of wholesale
payment card accounts, said identified wholesale payment card
account stored in and retrieved from said database; and
the second computer including a second processor, a
second communication device, a second storage device, a second
input device and a second output device.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
CONTENTIONS
The Examiner finds claims 1-1 7 are directed to a judicial exception
without significantly more. See Final Act. 10-11; see also Ans. 2-13. In
particular, the Examiner finds "[t]he claims are directed to the abstract idea
of person to person funds transfer payment systems." Final Act. 10. In
particular, the Examiner finds "the claim recites comparing and formatting
information for transmission. This is simply the organization and
comparison can be performed mentally and is an abstract idea of itself."
Ans. 3.
Appellants contend that the claims are directed to significantly more
than the abstract idea, or are not directed to an abstract idea at all. See App.
Br. 12-16. For example, Appellants present the following principal
arguments:
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1. "[T]he inclusion of two destination account identifiers in a
payment message improves the technological field of electronic-based
payment systems by providing a technological solution to the problem of
combining open-loop and closed-loop electronic payment systems." App.
Br. 13-14; see also App. Br. 14 ("Certainly the prior art of record does not
support a finding that it is conventional or 'generic' to include two
destination account identifiers in a payment message.").
11. "These [recited claim limitations] are unconventional features
that extend the capabilities of the open-loop systems now in existence such
that, with the features recited in the claims, open-loop systems are enabled to
facilitate P2P payment transactions in which the destination account is a
closed-loop system account." App. Br. 15; see also App. Br. 15. ("[The
invention] solve[ s] a problem in electronic funds transfer systems with a
claimed solution that is necessarily rooted in computer and communications
technology, similar to the additional elements in the DDR Holdings case
(DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).")
and Reply Br. 3--4.
111. "[T]he actual language of claim 1 (and the other independent
claims) is directed to a specific process for data communication between two
computers via an open-loop payment network." App. Br. 16.
1v. "[C]laim 1 and the other independent claims contain sufficient
limitations such that there is no danger that the broad concept of 'funds
transfer' would be pre-empted by the claims." App. Br. 16; see also Reply
Br. 3.
v.
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As [A ]ppellants pointed out at pages 12-13 of their Appeal
Brief, the claims recite a payment message that includes
two destination account numbers, namely a "primary
account number" which identifies an interim destination
account, plus a "nonpayment card account destination
account identifier,["] which identifies the ultimate account
that is to receive the payment. There is no evidence in the
record of this application to contradict [A ]ppellants'
assertion that these claim features constitute an "inventive
concept."
Supp. App. Br. 2-3 1 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)); see also Reply Br. 2-
3.
ANALYSIS
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws 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); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Notwithstanding that a law of nature or
an abstract idea, by itself, is not patentable, the application of these concepts
may be deserving of patent protection. Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the Court
stated that "to transform an unpatentable law of nature into a patent-eligible
1 Supplemental Appeal Brief filed July 15, 2016.
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application of such a law, one must do more than simply state the law of
nature while adding the words 'apply it."' Mayo, 566 U.S. at 72 (citation
omitted).
In Alice, the Supreme Court reaffirmed 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 these concepts." Alice, 134 S.Ct. at 2355. The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts." Id. If the claims are directed to a patent-
ineligible concept, then 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 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. (quoting Mayo, 566 U.S. at 72-73).
"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. at 2357 (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 post[-]solution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). The Court
in Alice noted that "' [ s ]imply appending conventional steps, specified at a
high level of generality,' [was] not 'enough' [in Mayo] to supply the
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'inventive concept."' Alice, 134 S.Ct. at 2357 (quoting Mayo, 566 U.S. at
82-83, 77-78, and 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 is representative. See App. Br. 11. Claim 1 is a method claim
reciting method steps of preparing a payment message, and sending the
payment message. The payment message includes a primary account number
identifying a wholesale payment card account, a non-payment card
destination account identifier, and a payment amount. The title of
Appellants' Specification is directed to "pay to any account service." The
Specification further provides embodiments of "payment systems" "to
transfer money between accounts", for example, "to transfer funds from an
authorized account such as savings or checking account, to a payment card
account." Spec. i-fi-18-9, 12. Thus, we agree with the Examiner that "[t]he
claims are directed to the abstract idea of person to person funds transfer
payment systems," i.e., "a series of steps for executing a person to person
funds transfers." Final Act. 10; Ans. 2. Such activities are squarely within
the realm of abstract ideas. A person to person funds transfer is a
fundamental business practice, long prevalent in our system of commerce,
like the risk hedging in Bilski (see Bilski v. Kappas, 561 U.S. 593 (2010)),
the intermediated settlement in Alice (see Alice, 134 S. Ct. at 2356-57),
verifying credit card transactions in CyberSource (see CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), collecting and
analyzing information to detect and notify of misuses in Fair Warning (see
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016)), and guaranteeing transactions (see buySAFE, Inc. v. Google, Inc.,
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765 F.3d 1350, 1354 (Fed. Cir. 2014)). A person to person funds transfers is
also a building block of a market economy. Thus, funds transfers, like risk
hedging and intermediated settlement, is an "abstract idea" beyond the scope
of§ 101. See Alice 134 S. Ct. at 2356.
Step two: Is there something else in the claims that ensures they are directed
to significantly more than a patent-ineligible concept?
Because claim 1 is directed to an abstract idea, the question to be
settled next, according to Alice, is whether claim 1 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than the abstract idea.
Claim 1 recites "using a first computer at the originating institution"
to prepare the payment message, and sending the payment message "to a
second computer at a receiving institution." These claimed computers are
generic, purely conventional elements. Additional limitations recited in the
claim include, for example, sending the payment message "over an open-
loop payment card network." Thus, the claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities. Put another way, looking beyond the
abstract idea of preparing a payment message and sending it for person to
person funds transfer, we do not see any inventive concept in the remaining
claim limitations individually or in combination. Appending various
combinations of conventional computers and networks is not enough to
transform the idea into a patent-eligible invention. See Alice, 134 S.Ct. at
2358 ("[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.").
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Regarding Appellants' argument (i), this argument does not show any
error in the Examiner's findings and conclusions because preparing the
payment message including the two destination account identifiers is
encompassed within the abstract idea. Appellants argue that the two
identifiers provide a technical solution. We disagree. In short, an instruction
to transfer funds does not improve computer or network functionality; rather,
the computer and network are operating as a generic computer and network,
performing steps that would otherwise be performed with pen and paper.
Thus, because all the method steps of claim 1 recite a fundamental economic
practice, claim 1 is directed to a patent-ineligible abstract idea.
Regarding Appellants' argument (ii), this argument does not show any
error in the Examiner's findings and conclusions because we see no parallel
between the present claims and those in DDR Holdings. In DDR Holdings,
the Federal Circuit determined that, although the patent claims at issue
involved conventional computers and the Internet, the claims addressed the
problem of retaining website visitors who, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
transported away from a host's website after "clicking" on an advertisement
and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal
Circuit held that the claims were directed to patent-eligible subject matter
because they claim a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." Id.
No such technological advance is evident in the present invention.
Unlike the situation in DDR Holdings, the method of claim 1 is not directed
toward a problem rooted in computer technology; rather, claim 1 uses
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computers to perform what could also be performed by a person writing in a
ledger, for example, transferring funds from account A to account B and
then to account C. See also Bancorp Services, L.L. C. v. Sun Life Assurance
Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that
the required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.").
Regarding Appellants' argument (iii), this argument does not show
any error in the Examiner's findings and conclusions because, as discussed
above, the claims are directed to the abstract idea of preparing and sending a
payment (person to person funds transfer), without significantly more. The
data communication between the two computers, recited as "sending the
payment message to a second computer at a receiving institution over an
open-loop payment card network" is entirely generic
Regarding Appellants' argument (iv), this argument does not show
any error in the Examiner's findings and conclusions. We recognize as a
threshold matter that the Supreme Court has described "the concern that
drives this exclusionary principle [to statutory patentability] as one of pre-
emption." See Alice Corp., 134 S.Ct. at 2354. Characterizing preemption as
a driving concern for patent eligibility, however, is not the same as
characterizing preemption as the sole test for patent eligibility. As our
reviewing court has explained: "questions on preemption are inherent in and
resolved by the [section] 101 analysis," and, although "preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); cf OIP Techs., Inc. v.
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Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
Regarding Appellants' argument (v), this argument does not show any
error in the Examiner's findings and conclusions because preparing the
payment message including the two destination account identifiers is
encompassed within the abstract idea. The claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities. Put another way, "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the
[section] 101 categories of possibly patentable subject matter." Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(quotingDiamondv. Diehr, 450 U.S. 175, 188-89 (1981)).
Accordingly, we sustain the rejection of representative claim 1, and
we also sustain the rejection of claims 2-17.
DECISION
The Examiner's decision rejecting claims 1-17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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