Ex Parte FELDMAN

Patent Trial and Appeal Board

Jul 25, 2018

14087910 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/087,910 11/22/2013
21839 7590 07/27/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Jason A. FELDMAN
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.
007 6412-000161 5753
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON A. FELDMAN
Appeal2017-004540
Application 14/087,910 1
Technology Center 3600
Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4--7, 10-20, 22-25, and 28-38. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to scoring and processing of cross-border
payment transactions. Spec. ,r 1. Claim 1 is illustrative of the invention and
is reproduced below:
1. A computer-implemented method for increasing
authorization for electronically processed
cross-border transactions, comprising:
1 According to Appellant, MasterCard International Inc. is the real party in
interest. App. Br. 2.
Appeal2017-004540
Application 14/087,910
storing, in a database of a processing server of a financial
corporation, a consumer profile, wherein the consumer profile
includes data related to a consumer including at least an account
identifier corresponding to a payment account associated with
the related consumer and a device identifier corresponding to a
computing device associated with a first country;
receiving, by a receiving device of the processing server
of the financial corporation via a payment network, a browser
cookie originating from the computing device, wherein the
browser cookie includes at least the device identifier and an
indication of the computing device being located in a second
country;
receiving, by the receiving device of the processing server
of the financial corporation via the payment network, an
authorization request for a cross-border payment transaction,
wherein the authorization request originates from the second
country and includes at least the account identifier;
identifying, by a processing device of the processing
server of the financial corporation via the payment network, a
fraud score based on at least one fraud rule and based on at least
the received indication of the computing device being located in
the second country; and
transmitting, by a transmitting device of the processing
server of the financial corporation via the payment network, at
least the authorization request and the identified fraud score for
approval or denial of the cross-border payment transaction.
REJECTION AT ISSUE
Claims 1, 2, 4--7, 10-20, 22-25, and 28-38 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception to patentable
subject matter. Final Act. 2-8.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
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make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
The Examiner concludes claims 1, 2, 4--7, 10-20, 22-25, and 28-38
are directed to an abstract idea of identifying a fraud score for authenticating
a cross-border transaction. Final Act. 2. Also, the Examiner analogizes the
present claims to Content Extraction and Transmission L.L. C. v. Wells
Fargo Bank, National Association, 776 F.3d 1343 (Fed. Cir 2014). Id. at 4.
Additionally, the Examiner concludes the present claims do not amount to
significantly more than an abstract idea because there are no technical
improvements to the field and do not perform a transformation. Id. at 7-8.
Appellant argues the present claims are not directed to an abstract idea
because the Examiner overlooks separate receiving steps in independent
claims 1, 7, 13, 19, 25, and 31 that provide technical improvements to the
problem of increasing authorization for electronically processed cross-border
transactions similar to the improvement discussed in Enfish LLC v.
Microsoft Corporation, 822 F.3d 1327. App. Br. 9-12. Appellant argues
the present claims are distinguishable from Content Extraction because the
court determined that the claims in Content Extraction involved merely the
application of a previously known industry to a generic computer, which is
unlike the present claims that increase the authorization of electronically
processed cross-border transactions. Id. at 12-13. And Appellant argues the
present claims recite significantly more than an abstract idea because they
are similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014 ), in that they are rooted necessarily in computer technology and
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overcomes problems arising in computer networks. Id. at 13-15. Moreover,
Appellant argues the present claims amount to significantly more than an
abstract idea because they are similar to Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, No. 2015-1763 (Fed. Cir. 2016)); the present
claims recite an inventive concept that is found in non-conventional and
non-generic arrangement of known, conventional pieces. Id. at 15-16;
Reply Br. 3. In addition, Appellant argues the lack of a prior art rejection is
evidence the present claims recite unconventional features, and weighs in
favor of concluding the claims are patent eligible. We disagree with
Appellant.
Following the decision in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S.Ct. 2347 (2014) (citing Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1300 (2012)), we analyze
claims where the abstract idea judicial exception to the categories of
statutory subject matter is at issue using the following two-part analysis set
forth in Mayo: 1) Determine whether the claim is directed to an abstract
idea; and 2) if an abstract idea is present in the claim, determine whether any
element, or combination of elements, in the claim is sufficient to ensure that
the claim amounts to significantly more than the abstract idea itself. See
Alice, 134 S. Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices; 2 certain
2 Alice Corp., at 2350: e.g., intermediated settlement, i.e., the use of a third
party intermediary to mitigate settlement risk.
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methods of organizing human activities; 3 "an idea of itself'; 4 and,
mathematical relationships or formulas. 5 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: Improvements to another
technology or technical field; 6 improvements to the functioning of the
computer itself; 7 and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 8
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
3 Id. at 2356: e.g., a series of steps instructing how to hedge risk (citing
Bilski v. Kappas, 561 U.S. 593, 599 (2010)).
4 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1853)).
5 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
6 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
7 Id. at 2359.
8 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [ method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
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non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea; 9 mere instructions to implement an
abstract idea on a computer; 10 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 11
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to
non-statutory subject matter under 35 U.S.C. § 101.
Step 2A
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are directed to an abstract idea. The
present case is similar to Fairwarning IP, LLC v. Iatric Systems, Inc., 839
F.3d, 1089 (Fed. Cir. 2016). InFairwarning, the Federal Circuit cites to
Content Extraction. Id. at 1097. And the Federal Circuit stated:
We find that, under step one, the claims of the '500 patent are
directed to an abstract idea. As the '500 patent specification
explains, the invention relates to a system and method of
detecting fraud and/ or misuse in a computer environment based
on analyzing data such as in log files, or other similar records,
including user identifier data. The district court found that the
'500 patent is directed to or drawn to the concept of analyzing
records of human activity to detect suspicious behavior. We
agree.
9 Id. at 2357-58.
10 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer (citing Mayo, 132 S.Ct. at 1301).
11 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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Id. at 1093 (internal citations and quotations omitted).
Similarly, in the present case, we conclude the present claims are
directed to detecting fraud and/ or misuse in a computer environment based
on analyzing data such as in log files, or other similar records, including user
identifier data, which is an abstract idea for the reasons discussed in
Fairwarning. And we conclude the present claims are directed to or drawn
to the concept of analyzing records of human activity to detect suspicious
behavior, which is an abstract idea for the reasons discussed in Fairwarning.
Regarding Appellant's arguments that Examiner overlooked specific
receiving steps recited in the independent claims that provide technical
improvements similar to the improvements in Enfzsh, we conclude the
receiving steps do not render the claims patent eligible. We also conclude
the present claims recite an abstraction that happens to be performed with
technology, yet offers not improvements to the underlying technology.
Because the present claims are directed to an abstract idea, we
proceed to step (2B) of the Alice, two-part test.
Step 2B
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims do not amount to significantly more than
an abstract idea. That is, we conclude the present claims are not technical
improvements to the field and do not perform a transformation. Final Act.
7-8.
Regarding Appellant's arguments relying on DDR 12 , BASCOM, and
McRo (App. Br. 13-16; Reply Br. 3), we note in Fairwarning, the Federal
12 We note that Appellant's arguments are misplaced because DDR pertains
to step (2A) rather than step (2B). Nonetheless, we conclude the present
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Circuit cited to DDR, BASCOM, and McRO, yet explained "[t]he claim
limitations, analyzed alone and in combination, fail to add something more
to transform the claimed abstract idea of collecting and analyzing
information to detect misuse into a patent-eligible application."
Fairwarning IP, LLC v. Iatric Systems, Inc., 839 F.3d at 1095. The rationale
in Fairwarning applies to the present claims (i.e., the present claims do not
amount to significantly more than an abstract idea).
With regard to Appellant's argument that the pending claims are
patent eligible because there are no obviousness or novelty rejections of the
claims, (see App. Br. 17), Appellant improperly conflate the requirements
for eligible subject matter(§ 101) with the independent requirements of
novelty(§ 102) and non-obviousness(§ 103). "The '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 § 101
categories of possibly patentable subject matter." Diamond, 450 U.S. 175,
188-89 (1981); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice framework,
a claim directed to a newly discovered law of nature ( or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility").
Appellant does not separately argue dependent claims 2, 4---6, 10-12,
14--18, 20, 22-24, 28-30, and 32-38 with particularity, but assert the
rejections of those claims should be withdrawn for at least the same reasons
as argued in independent claims 1, 7, 13, 19, 25, and 31. App. Br. 7, 17.
claims recite an abstract idea for the reasons stated supra and the present
claims do not amount to significantly more for the reasons stated infra.
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Accordingly, for the reasons stated supra, we sustain the Examiner's
rejection of: (1) independent claims 1, 7, 13, 19, 25, and 31; and
(2) dependent claims 2, 4---6, 10-12, 14--18, 20, 22-24, 28-30, and 32-38
under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4--7, 10-20,
22-25, and 28-38 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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