Ex Parte French et al

Patent Trial and Appeal Board

Jul 31, 2018

13089231 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/089,231 04/18/2011 Susan French
66945 7590 08/02/2018
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.
79900-791990 1054
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
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 SUSAN FRENCH, MARK CARLSON, ALESIA
PANAGIOTIDES, JUSTIN CHACE, KATE KENNEDY, ASHWIN RAJ,
JOHN TULLIS, and VISHWANATH SHASTRY
Appeal2016-007616
Application 13/089 ,231 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY,
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 1-23. 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 13, 2016, hereafter "App.
Br.," 3.
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Application 13/089,231
BACKGROUND
The invention relates to methods and systems for determining
currency rate exchanges for money transfer transactions. Specification,
hereafter "Spec." ,r 6.
Representative claim 1 is reproduced from page 14 of the Claims
Appendix of the Appeal Brief (Claims App.) as follows:
1. A payment processing network server comprising:
a processor;
a memory coupled to the processor, the memory including a
data store; and a rules engine coupled to the processor;
wherein the processor is configured to:
receive, from a sending financial institution, a first
account identifier for a first account associated with a sending
entity in a money transfer transaction;
receive, from the sending financial institution, account
information for a second account associated with a receiving
entity in the money transfer transaction, the account
information for the second account including a second account
identifier;
derive a first currency associated with the first account
based on information in the first account identifier;
derive a second currency associated with the second
account based on information in the second account identifier,
wherein the second currency is derived by identifying an
account range of account identifiers that the second account
identifier belongs to, and determining which currency is
associated with the identified account range of account
identifiers;
determine a currency exchange rate between the first
currency and the second currency;
determine a currency markup charge based on the first
currency and the second currency;
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Application 13/089,231
apply the currency markup charge to the money transfer
transaction;
determine a total amount payable by the sending entity,
the total amount including the currency markup charge;
present the total amount to the sending entity for
approval;
receive input from the sending entity, the input indicative
of approval or denial of the total amount; and
debit the first account for the total amount, if the input
indicates that the sending entity has approved the total amount.
The Examiner rejects claims 1-23 under 35 U.S.C. § 101 as reciting a
judicial exception without significantly more. Final Action mailed May 29,
2015, hereafter "Final Act.," 3-5; see also Examiner's Answer mailed June
7, 2016, hereinafter "Ans.," 2-3.
DISCUSSION
§ 101
Appellants argue the § 101 rejection using independent claim 1 as
representative. See App. Br. 7-13. We will address the rejection in the
same manner.
The Examiner determines that the claims, and, more specifically,
representative claim 1, are directed to the abstract idea of "determining [a]
foreign exchange rate for a value transfer transaction." Final Act. 5. The
Examiner finds that "these claims do not effect an improvement to another
technology or technical field; the claims do not amount to an improvement
to the functioning of a computer itself; and the claims do not move beyond a
general link of the use of an abstract idea to a particular technological
environment." Id. at 4. The Examiner further finds that the determination of
the foreign exchange rate is similar to the idea in CyberSource Corp. v.
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Application 13/089,231
Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), which the Federal
Circuit found to be an abstract idea. Ans. 4. Additionally, the Examiner
finds that the claim elements in combination "add nothing more than what is
present when the elements are considered individually." Id. The Examiner
further finds that the claims to "amount to nothing more than requiring a
generic computer system to merely carry out the abstract idea itself," and the
claims "are nothing more than the instruction to implement the abstract idea
in a particular, albeit well-understood, routine and conventional
technological environment." Final Act. 5.
Appellants argue that the rejection of claim 1 is flawed because the
Examiner did not identify the specific judicially-recognized exception for
the inventive concept of the claimed foreign rate change determination, and
therefore the rejection did not meet the USPTO's requirements for the initial
burden of proof. App. Br. 8-9. Appellants aver that because the claims
features can be performed by a generic computer, that does not
automatically make the claim patent ineligible. Id. at 10. Appellants refer to
DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed Cir. 2014) and
Research Corp. Techs Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir.
2010), as examples where claimed steps that were performed on a generic
computer, but were patent eligible, alleging that the claim 1 steps are similar
to those examples. Id.; Reply Br. 2-3. More specifically, Appellants assert
that, similar to DDR, the invention offers techniques that can improve the
functioning of computer system because the use of account ranges to derive
currencies eliminates the need for transmission of currency designations and
thereby reduces network bandwidth utilization and data storage. App. Br.
11-12; see also Reply Br. 3. Appellants further contend that deriving the
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Application 13/089,231
second currency '"by identifying an account range of account identifiers that
the second account identifier belongs to, and determining which currency is
associated with the identified account range of account identifiers,' as
recited in claim 1 is not routine or conventional, [a]s evident by the
withdrawal of the prior art rejections." Id. at 12; see also Reply Br. 4.
Appellants additionally refer to BASCOM Global Internet Servs. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), further arguing that,
similar to that case, claim 1 does not preempt all ways of determining
foreign exchange rates because it uses an implementation to utilize account
ranges to derive the currencies rather than the conventional way of mapping
accounts to corresponding currencies. Reply Br. 3--4. Appellants contend
that "the lack of prior art being cited against the claims is evident that the
combination of the claimed elements provides an inventive concept over the
prior art." Id. at 4. Appellants further allege that the claims "do not merely
recite the alleged abstract idea of determining foreign exchange rate for a
value transfer transaction, or to perform it on a set of generic computer
components." Id.
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]aws of nature; natural phenomena; and
abstract ideas." See Mayo Collaborative Services v. Prometheus Labs., Inc.,
566 U.S. 66, 70 (2012).
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In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) ("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
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 two steps involve "overlapping scrutiny of the content of the
claims," where the Federal Circuit has described "the first-stage inquiry as
looking at the 'focus' of the claims, their 'character as a whole,' and the
second-stage inquiry (where reached) as looking more precisely at what the
claim elements add-specifically, whether, in the Supreme Court's terms,
they identify an 'inventive concept' in the application of the ineligible matter
to which (by assumption at stage two) the claim is directed." Electric Power
Grp, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
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After considering Appellants' arguments and the record in this Appeal
for the§ 101 rejections, we are not persuaded that Appellants identify
reversible error. We add the following for emphasis.
We agree with the Examiner that when all the elements of claim 1 are
considered in combination-receiving respective account identifiers,
deriving currencies and currency markup charge associated with account
identifiers, determining a currency exchange rate between the currencies,
determining a total amount payable by the sending entity, and getting
approval for and debiting the sending account-the elements are directed to
the abstract idea of determining a foreign exchange rate for a value transfer
transaction. See Final Act. 5; Ans. 4. The Specification confirms that the
purported advance over the prior art of the claimed invention is limited to
using account information for determining currency exchange rates, rather
than the sender identifying the receiver currency. Spec. ,r,r 5, 6, 71. In that
context, considering claim 1 in light of the Specification and on its
"character as a whole," we agree with the Examiner that claim 1 is directed
to determining currency exchange rates for transfer transactions, an abstract
idea. The claim here is similar to ones the Federal Circuit has deemed
abstract in Electric Power Grp., 830 F.3d at 1353-54 (gathering and
analyzing information by steps people go through in their minds, or by
mathematical algorithms, of a specific content and displaying the results),
Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (explaining "[t]he series of steps covered by the asserted
claims ... could all be performed by humans without a computer" in
concluding that the claims are directed to an abstract idea), and Content
Extraction and Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343,
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1347 (Fed. Cir. 2014) (collecting, recognizing, and storing data is an abstract
idea). Smart Systems Innovation, Inc. v. Chicago Transit Authority, 873
F.3d 1364 (Fed. Cir. 2017) is also informative. In that case, the claim
included, inter alia, elements that verified of the validity of a bankcard,
funded a transit ride from one of multiple balances associated with a
bankcard, and identified the types of transit tickets associated with a
bankcard. Id. at 1371-72. There, the Federal Circuit found that the claims
did not improve technological processes, and "[ r ]ather, the claims are
directed to the collection, storage, and recognition of data," which is an
abstract idea. Id. at 1372. Here, similarly, the claims are directed to the
receipt of data, derivation of data, and use of the data for determining
foreign exchange rates for value transfer transactions.
The Examiner finds that the abstract ideas of the claim elements are
implemented on a generic computer system that is a conventional
technological environment. Final Act. 5. Appellants do not allege any issue
of disputed material fact or error relating to the Examiner's findings on this
issue, however, Appellants argue that the claims do not have to be
performed on a generic computer. See Reply Br. 4. We find no reversible
error with the Examiner's findings concerning implementation on a generic
computer system; the Specification discloses the use of general, non-
specialized computer components and systems, and we find no suggestion
that a specialized computer system must be used. Spec. ,r,r 42--45, 53, Fig. 4.
And, perhaps more importantly, the claims do not require the use of a
specialized computer system.
We are also not persuaded by Appellants' allegation that the specific
claimed way of effecting a value transfer, that is, by using the account range
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to derive the currency rather than the receiver currency being sent, is an
"improve[ ment] [in] the functioning of computer systems." App. Br. 11.
The Specification provides no support for the alleged benefits argued by the
Appellants of less use of bandwidth and data storage by the use of the
claimed method-instead the Specification states that the account
information is used because "the sender may not know the receiver
currency." There is no support in the record for the benefits alleged by the
Appellants. Moreover, Appellants' argued improvements do not represent
patentable technological improvements to computer systems or technology.
Rather, 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 performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium."
CyberSource, 654 F.3d at 1375 (Fed. Cir. 2011). The claims here are
distinguishable from BASCOM, where 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."). Appellants' arguments regarding DDR and
Research Corp. also fail 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. And, as explained the
Federal Circuit in Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada
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(US.), 687 F.3d 1266, 1279 (Fed. Cir. 2012), "the claimed processes in
Research Corp. plainly represented improvements to computer technologies
in the marketplace," that "required the manipulation of computer data
structures ... and the output of a modified computer data structure ...
dependent upon the computer components required to perform it." See
Research Corp., 627 F.3d at 865.
We are also not persuaded by Appellants' argument that the claims
will not tie up any judicial exception so that others cannot practice it, that is,
preempt other methods of currency exchange determination. Reply Br. 8-9.
Preemption, or more accurately the lack thereof, is not dispositive as to
whether the claims are patent eligible. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility."). Finally, Appellants'
contention that the claim 1 limitation of "identifying an account range" is
not routine or conventional, "[a]s evident by the withdrawal of the prior art
rejections" is not persuasive. App. Br. 12. This argument relates 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.").
Therefore, we sustain the rejection of claims 1-23 under § 101.
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SUMMARY
The rejection of claims 1-23 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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