Ex Parte Hammad

Patent Trial and Appeal Board

Oct 23, 2018

12431476 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/431,476 04/28/2009 Ayman Hammad
66945 7590 10/25/2018
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.
l 6222U-04 l 7 40US 5223
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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 A YMAN HAMMAD 1
Appeal2017-006797
Application 12/431,476
Technology Center 3600
Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Visa U.S.A. Inc. See
App. Br. 3.
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Application 12/431,476
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-5, 7, 8, 10, 12-14, and 25-35. Claims 2, 6, 9, 11, and 15-24 are
canceled. App. Br. 34--38, Claims App'x. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm. 2
THE INVENTION
The claims are directed to an authorization system with split
messaging. Spec., Title. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A non-transitory computer readable medium having computer
readable program code embodied therein, said computer
readable program code adapted to be executed by a processor to
implement a method, the method comprising:
receiving a first authorization request message from an
access device at a merchant after the access device interacts with
and receives from a portable consumer device at least two
account numbers, including an issuer account number and a
loyalty account number,
wherein the first authorization request message
includes the issuer account number and the loyalty account
number, and a data tag which indicates a presence of the
loyalty account number, wherein the issuer account number
was previously generated by an issuer computer, wherein the
loyalty account number was previously generated by a loyalty
computer,
analyzing the first authorization request message;
in response to analyzing, determining that the first
authorization request message comprises split payment data
2 We refer to the Specification, filed April 28, 2009 ("Spec."); the Final
Office Action, mailed May 4, 2016 ("Final Act."); Appeal Brief, filed
October 18, 2016 ("App. Br."); the Examiner's Answer, mailed January 25,
2017 ("Ans.") and the Reply Brief filed March 24, 2017 ("Reply Br.").
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based on the issuer account number and the loyalty account
number included in the first authorization request message;
generating and formatting a second authorization request
message for a first service provider;
generating and formatting a third authorization request
message for a second service provider;
sending the second authorization request message to the
first service provider associated with the issuer account number;
sending the third authorization request message to the
second service provider associated with the loyalty account
number, the sending of the second and third authorization request
messages occurring in parallel;
receiving a first response message comprising a first
approval indication from the first service provider;
receiving a second response message comprising a second
approval indication from the second service provider; and
sending a third response message comprising the first
approval indication and the second approval indication to the
access device.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Postrel
White et al.
US 2005/0021400 Al
US 2008/0133350 Al
Jan.27,2005
June 5, 2008
Track format of magnetic stripe cards (track 1 and track 2),
from ACME Technologies, downloaded 28 April 2016
from http://web.archive.org/web/20051118231852/
http://www.acmetech.com/ documentation/ credit_cards/
magstripe_track_format.html (hereinafter "ACME").
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REJECTIONS
The Examiner made the following rejections:
Claims 1, 3-5, 7, 8, 10, 12-14, and 25-35 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 7-8, 13-17.
Claims 1, 3-5, 7, 8, 10, 12-14, and 25-35 stand rejected under
35 U.S.C. § 112, first paragraph, because the specification does not enable
any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make or use the invention commensurate in scope with
the claims. Final Act. 8.
Claims 1, 3-5, 7, 8, 10, 12-14, and 25-35 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention. Final Act. 8-13, 17-21.
Claims 3, 8, 23, 27, and 28 stand rejected under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form for failing to further
limit the subject matter of the claim upon which it depends. Final Act. 21-
23.
Claims 1, 3-5, 7, 8, 10, 12-14, and 25-35 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 23-30.
Claims 1, 3-5, 7, 8, 10, 12-14, and 25-35 stand rejected under
35 U.S.C. § 103(a) as unpatentable over White, Postrel, and Acme. Final
Act. 30-48.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred in rejecting independent claims 1, 3-
5, 7, 8, 10, 12-14, and 25-35 under 35 U.S.C. § 112, first, second, and
fourth paragraphs and, except as discussed below in connection with claims
27 and 32, we agree with Appellant's conclusions as to these rejections of
the claims. However, in connection with the rejections under 35 U.S.C.
§§ 101 and 103(a), Appellant's contentions are unpersuasive of reversible
Examiner error and, except as discussed below, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 23--48) and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to Appellant's Appeal Brief
(Ans. 22--41) and concur with the conclusions reached by the Examiner. We
highlight the following for emphasis.
A. 35 US.C. § 112,first paragraph: written description
Independent Claims 1 and 7
The Examiner finds there is inadequate written description to support
the limitation of a "data tag which indicates the presence of a loyalty account
number," as recited by independent claims 1 and 7. Final Act. 14. Although
the Examiner interprets "data tags" to include all credit card processing
information, the Examiner finds the Specification fails to disclose the
specified information ( a "loyalty account number") is included as part of the
recited tag. Id. Appellant responds, directing attention to paragraph 26 of
the Specification disclosing that a data tag indicates a presence of a loyalty
account number. App. Br. 13. The Examiner responds, finding that the
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Specification discloses only the data tags may contain split payment data but
that "there is no indication that this split payment data may, or necessarily
would, indicate the presence of any loyalty account number." Ans. 9.
Appellant replies, directing attention to paragraph 21 of the Specification
disclosing that a debit card may store a "consumer's debit account number,
loyalty account number, and other split payment data." Reply Br. 5.
Appellant's argument is persuasive. Paragraph 21 discloses that a
loyalty account number is a type of split payment data such that it would
have been understood that, by including split payment data in a tag, the tag
could include various types of split payment data including the disclosed
loyalty account number. Therefore, we do not sustain the rejection of
independent claims 1 and 7 or of dependent claims 3-5, 8, 10, 12-14, and
25, 29-31, and 33-35 under 35 U.S.C. § 112, first paragraph for lack of
written description.
Dependent Claim 26
26. The non-transitory computer readable medium of
claim 1, wherein the first authorization request message includes
a second loyalty account number and the method further
comprises:
sending a fourth authorization request message to a third
service provider associated with the second loyalty account
number; and
receiving a fourth authorization response message from
the third service provider, wherein data from the fourth
authorization response message is incorporated with the third
response message to the access device.
The Examiner further finds lack of written description for the "fourth
authorization request message sent to a third service provider associated
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with a second loyalty account number," as recited by claim 26. Final Act.
14--15. According to the Examiner, "there does not appear to be any
discussion [in the Specification] of including a second loyalty provider in a
single transaction." Id. at 15.
Although noting that claim 26 does not mention a "second loyalty
provider," in support of the disputed limitation, Appellant directs attention to
lines 10-13 of paragraph 31 ( emphasis omitted) disclosing "[ t ]he loyalty
provider A 40 and/or the loyalty provider B 42 could be affiliated with the
merchant 22 such that any benefits (e.g., points) accrued by the consumer 30
and managed by loyalty provider A 40 and/or the loyalty provider B 42 can
be the same as merchant 22." App. Br. 13. The Examiner responds,
explaining the existence of two loyalty providers does not disclose both are
included in a single transaction. Ans. 10. Appellant replies, directing
attention to the disclosure of "'three, four, or more authorization request
messages that are derived from an initial authorization request message"' in
support of loyalty provider A 40 and B 42, each of which is in
communication with payment processing network 26, and disclosing the first
and second loyalty providers involved in a single transaction. Reply Br. 7-8.
Appellant's argument is persuasive. Appellant discloses
"[e]mbodiments of the invention can allow a consumer to pay for a single
transaction by sending messages to different service providers requesting
that any value held by the service providers on behalf of the consumer be
applied to the product or service being purchased in the single transaction."
Spec. ,r 8. Figure 1 depicts two Loyalty Providers connected to payment
processing network 26. One skilled in the art at the time of the invention
would have appreciated that additional authorization requests derived from
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an initial authorization request message would be directed to a second one of
the other loyalty providers depicted in Figure 1 and, thus disclose a second
loyalty provider involved in a common, i.e., single transaction. Accordingly,
we do not sustain the rejection of claim 26 under 35 U.S.C. § 112, first
paragraph.
Dependent Claim 2 7
27. The non-transitory computer readable medium of
claim 26, wherein the first service provider is an issuer, the
second service provider and third service provider are loyalty
providers, and the second service provider and the third service
provider are associated with a same business entity as the
merchant. [(Emphasis added)]
In connection with dependent claim 27, the Examiner finds the
limitation requiring the "second service provider and third service provider
are associated with the same business entity as the merchant" is not
supported by the Specification. Final Act. 14--15 (emphasis added). The
Examiner finds "there is no description or indication of any limitation as to
how much, or what type, association is required" or that "two separate
loyalty programs ( the second and third service providers) [are] associated
with the same merchant, as claimed at claim 27." Id. at 15-16. Appellant
contends the limitation is supported by the disclosure that "[ t ]he loyalty
provider A 40 and/or the loyalty provider B 42 could be affiliated with the
merchant 22 such that any benefits (e.g., points) accrued by the consumer 30
and managed by loyalty provider A 40 and/or the loyalty provider B 42 are
redeemable at the merchant 22." App. Br. 13, citing Spec. ,r 31, 11. 10-13
( emphasis omitted). The Examiner responds, finding "[ t ]he term
'associated' (as used in the claims) appears to be much broader term than
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'affiliated' (as used in the specification), and does not appear to convey the
same 'association' to the merchant." Ans. 11-12. According to the
Examiner:
An affiliation would appear to indicate some legal or ongoing
business relationship, as the specification appears to reflect;
however, an association may be based on anything that indicates
similarity - entities may be associated since they are in the same
business field ( e.g. competitors), or they may be associated since
in the same city, state, or country, or the same chamber of
commerce, etc.
Ans. 12. Appellant replies, arguing "'affiliated' and 'associated' are
sufficiently synonymous terms and Appellant did not intend to broaden the
scope of the claims by reciting 'associated' rather than 'affiliated' in the
claims, especially in view ofMPEP 2163.05.[3]" Reply Br. 8.
Appellant's contention is unpersuasive for lack of sufficient evidence
the terms are synonymous. Mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such
argument take the place of evidence lacking in the record. Furthermore,
3 The failure to meet the written description requirement of 35 U.S.C. § 112,
first paragraph, commonly arises when the claims are changed after filing to
either broaden or narrow the breadth of the claim limitations, or to alter a
numerical range limitation or to use claim language which is not
synonymous with the terminology used in the original disclosure. To
comply with the written description requirement of 35 U.S.C. § 112, para. 1,
or to be entitled to an earlier priority date or filing date under 35 U.S.C.
§§ 119, 120, or 365(c), each claim limitation must be expressly, implicitly,
or inherently supported in the originally filed disclosure.
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"[ c ]onstruing claims broadly during prosecution is not unfair to the applicant
... because the applicant has the opportunity to amend the claims to obtain
more precise claim coverage." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). See also In re Zietz, 893 F.2d 319, 321 (Fed.
Cir. 1989) ("[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed."). Accordingly, we sustain the rejection of claim
27 under 35 U.S.C. § 112, paragraph 1, for lacking a sufficient written
description.
Dependent Claim 2 8
28. The non-transitory computer readable medium of
claim 1, wherein sending the second authorization request
message to the first service provider and sending the third
authorization request message to the second service provider is
complete before receiving the first response message from the
first service provider and the second response message from the
second service provider.
The Examiner finds a disclosure of simultaneous messaging "does not
convey the concept of somehow delaying or forestalling the response
message receiving ... until after the rest of the second and third messages
were completely sent." Final Act. 16. Appellant notes the language as
paraphrased by the Examiner is not recited by claim 28. Appellant directs
attention to paragraphs 21-23 of the Specification in support of the disputed
limitation and, in particular, lines 5-9 of paragraph 23, which read as
follows: "The server computer in the payment processing network can [ after
sending the second authorization request to the issuer of the debit card and
third authorization request to the loyalty provider] receive a first response
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message from the issuer and can receive a second response message from
the loyalty provider." App. Br. 14. The Examiner answers, interpreting the
Specification to describe independent sequences of (i) completion of sending
of the second authorization request message before receiving the first
response message and (ii) completion of sending of the third authorization
request message before receiving the second response message. Ans. 13-14.
However, according to the Examiner, "[ n Jo thing at Appellant[' s] paragraph
0023 would appear to prevent receiving a response from one message before
completing the sending of the other message, regardless which is instigated
before the other." Ans. 14.
We agree with Appellant. The cited portion of the Specification
discloses receiving the response messages after both second and third
authorization requests are sent, meaning sending has been completed.
Accordingly, we do not sustain the rejection of claim 28 under 35 U.S.C.
§ 112, first paragraph for lack of written description.
Dependent Claim 3 2
32. The non-transitory computer readable medium of
claim 1 wherein the loyalty account number is present in a
supplementary data field in the authorization request message
and the issuer account number is in a separate area of the first
authorization request message.
The Examiner finds the Specification does not disclose separate areas.
Final Act. 17. Appellant contends the limitations of claim 32 are supported
by paragraphs 24, 27, and 55 of the Specification. App. Br. 14.
We agree with the Examiner. Appellant fails to explain why the cited
portions of the Specification lend support for the issuer account number
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being in a separate area of the first authorization request message and we are
unable to identify a disclosure of separate areas in the cited portions of the
Specification. Accordingly, we sustain the rejection of claim 32 under
35 U.S.C. § 112, paragraph 1, for lacking a sufficient written description.
B. 35 USC§ 112,first paragraph: enablement
The Examiner finds there is a lack of enablement for the limitation
"receiving a first authorization request message from an access device at a
merchant after the access device interacts with and receives from a portable
consumer device at least two account numbers" as recited by independent
claims 1 and 7. Final Act. 8 ( emphasis added). According to the Examiner,
the payment processor is incapable of determining whether the access device
has interacted and received two account numbers from a portable device
because there is no disclosure that such information is sent to the server. Id.
at 9. The Examiner explains the Specification does
not indicate any information being sent to the server that
identifies where, when, or how the split payment data was
provided to the customer or the merchant - all the server would
know is that it is receiving ( or has received) the data, and
possibly from a merchant or which merchant.
Id. According to the Examiner "[i]n order for this phrasing to have effect as
a limitation, Applicant needs to have described this as a limitation in some
manner and not just one of a number of different circumstances that
might/may happen." Id. at 10.
The Examiner distinguishes types of disclosed consumer devices as
depicted in Figure 1 including (i) "Portable Consumer Device A [BJ" 32-1
and 32-2, described as hand-held and compact with examples including
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smart cards, cellular phones, personal digital assistants, etc., and
(ii) "Consumer Device C" 32-3, described as a personal computer. Final
Act. 11. Because the claims recite a "portable consumer device," the
Examiner interprets the required device to be other than a personal computer
such as described in connection with consumer device 32-3. Id. According
to the Examiner, "the implication of considering this a limitation is the
claims preclude any personal computer interaction with the merchant (to
provide split payment data)" and that such an interpretation "would require
impermissibly reading limitations from the specification into the claims ...
but the server still would not know the origin or timing of the data until it is
( or would be) so informed." Id. ( citations omitted). The Examiner further
finds, applying the Wands factors, 4 Appellant has failed to enable control
over the circumstances precedent to receipt of an authorization request such
that those circumstances comport with the recited timing and source of
information or enable knowing whether those circumstances existed. Id. at
12.
Appellant responds, arguing the disputed limitation
is enabled by the specification, since this limitation states that a
payment server can receive an authorization request after an
4 "Whether undue experimentation is required 'is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations."' Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F .3d
1269, 1288 (Fed. Cir. 2012) (quoting ALZA Corp. v. Andrx Pharm., LLC,
603 F.3d 935, 940 (Fed. Cir. 2010)). As summarized in In re Wands, 858
F.2d 731,737 (Fed. Cir. 1988), relevant factors may "include (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples,
( 4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative
skill of those in the art, (7) the predictability or unpredictability of the art,
and (8) the breadth of the claims."
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access device ( e.g., a POS terminal) interacts with a consumer
device ( e.g., a credit card). Additionally, it takes place in the field
of electronics and computers, so there are no unpredictable
factors that might be present in chemical or biological type
inventions. As such, the claims are enabled by the specification.
App. Br. 11. The Examiner answers, finding no support for "limiting the
invention to just a merchant access device sending the received request after
the access device has interacted with, and received account numbers from, a
portable consumer device." Ans. 4. Furthermore, according to the
Examiner and contrary to Appellant's argument, the disputed limitations are
neither from the mechanical or electrical arts and, presumably, are not
entitled to a presumption of predictability. Id. at 5. Appellant replies,
arguing "that no undue experimentation is required, because the person of
ordinary skill in the art would understand how to transfer data according to a
particular sequence of events, including the limitations recited in the
claims." Reply Br. 3.
We disagree with the Examiner because, although the scope of the
claims require at least receipt of a first authorization request message
(i) from an access device at a merchant (ii) after the access device interacts
with and received (a) from a portable consumer device (b) at least two
account numbers, embodiments of the invention do not exclude performance
of additional activities, i.e., the claimed invention must perform at least the
recited activities but may do more. That is, when broadly interpreted, the
claims require at least the recited steps but are not restricted to only the
recited steps, i.e., the claims are open ended. For example, there is no
requirement for detecting the specified conditions, i.e., whether the first
authorization request message was received from an access device or
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requirement subsequent step not be performed if the first authorization
request message was received from a device other than the recited access
device. Broadly but reasonably construed, the claims require only that the
program code of claim 1 be capable of, and the method of claim 7 perform a
step of, receiving the recited message from an access device at least after it
has interacted with received account numbers from a portable consumer
device. We conclude the Specification enables the claims as so construed.
Furthermore, we disagree with the Examiner that one skilled in the art
would not have been able to make and use the claimed invention without
undue experimentation. Ans. 6-8. The disputed language first requires a
first authorization request message be received from an access device, e.g.,
point of sale terminal 34, after the access device interacts with and receives
from a portable consumer device, e.g., debit card A 32-1, at least two
account numbers. An example of a suitable interface for a debit card
includes a card reader such as a magnetic stripe reader. Spec. ,r 41. One
skilled in the art would have understood use of an appropriate interface
would also limit the devices with which access device 34 could interact and
receive data. Thus, successful reading of a debit card by an appropriate card
reader would indicate interaction with and receipt of account numbers from
a portable consumer device, i.e., debit card. Furthermore, because one
skilled in the art would have understood a debit card could store a user's
account numbers, the artisan would also have understood that an
authorization request that requires transmission of account numbers could
not proceed without, and therefore must follow, receipt of those account
numbers.
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For the foregoing reasons, we disagree the Specification is not
enabling of the disputed language of claims 1 and 7 and, at least based on
that rationale, we do not sustain the rejection of those claims or claims
dependent therefrom under 35 U.S.C. § 112, first paragraph.
C. 35 US.C. § 112, second paragraph: indefiniteness
Independent Claims 1 and 7
The Examiner finds the recitation of "receiving a first authorization
request message from an access device at a merchant after the access device
interacts with and receives from a portable consumer device at least two
account numbers" renders the claims indefinite. Final Act. 8, 13. According
to the Examiner, the disputed language renders "uncertain whether the claim
phrasing [ quoted] is required as claimed, or if this is merely descriptive
matter related to what may happen in some circumstances." Final Act. 13.
Appellant responds, contending the language "would be understood by the
person of ordinary skill in the art to mean that an access device receives at
least two account numbers including an issuer account number and a loyalty
account number from a portable consumer device." App. Br. 12-13. The
Examiner answers, noting that "Appellant never argues or indicates that this
element either is required or not required, nor does Appellant appear to make
any attempt to clarify the issue of whether this element is required." Ans. 8-
9.
We are unpersuaded claims 1 and 7 are indefinite. Instead, for the
reasons discussed above, the disputed language is merely broad, requiring
the program code of claim 1 and method of claim 7 support or require
certain actions be performed at least when certain conditions are satisfied
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but without restricting the actions be performed responsive to or limited to
the presence of those conditions. In particular, the step of receiving a first
authorization request must accommodate receipt from an access device and
the receiving must be capable of being performed after the access device
interacts with and receives account numbers from a portable consumer
device. However broad, there is no requirement to detect or otherwise
recognize the recited temporal or interactions described, only that the recited
receiving of a first authorization request message occur.
The Examiner further finds the requirement for parallel sending of the
second and third authorization request messages renders claims 1 and 7
indefinite. Final Act. 1 7. The Examiner directs attention to the
Specification describing the messages may be sent "in parallel and/or
substantially simultaneously." Id. at 18, citing Spec. ,r,r 5 8, 69. According
to the Examiner "[ t ]he 'and/ or' phrasing indicates that 1) 'parallel' includes
but is apparently not limited to 'substantially simultaneously' (the 'and'
option: parallel and substantially simultaneously), or 2) 'parallel' is distinct
from 'substantially simultaneously' (the 'or' option: parallel or substantially
simultaneously, such as two possibilities)." Id. at 18. Appellant argues
"'parallel' means 'involving simultaneous performance of operations' or
'occurring or existing at the same time or in a similar way; corresponding."'
App. Br. 14, citing the Concise Oxford English Dictionary. The Examiner
answers, finding the definition unhelpful and, in particular, objecting to the
definition equating "parallel" to sending messages in a similar way. Ans. 16.
We disagree the term "parallel" renders the claims indefinite.
Paragraph 57 of the Specification discloses "[t]he sending of the second and
third authorization messages to the various service providers can be done in
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any suitable order, and may be done in parallel and/or substantially
simultaneously." We disagree with the Examiner that the parallel limitation
must be distinguished from "substantially simultaneously" merely because
the Specification uses both in describing the relationship between sending
the second and third authorization request messages. Instead, we agree with
Appellant that one skilled in the art at the time of the invention would have
understood "in parallel" to mean at the same time.
Accordingly, we do not sustain the rejection of claims 1 and 7 under
35 U.S.C. § 112, second paragraph, or the rejection of dependent claims 3-5,
8, 10, 12-14, 25-28, 30, and 32-35.
Dependent Claim 29
29. The non-transitory computer readable medium of claim 1,
wherein the split payment data is included in the data tag.
The Examiner finds requiring the split payment data be included in
the data tag as recited by dependent claim 29 conflicts with claim 1 's
requirement of determining that the first authorization message comprises
split payment data based on the user account number and the loyalty account
number included in the first authorization request message. Final Act. 20.
That is, according to the Examiner, "if the split payment data is provided in
the data tag (per claim 29), there is apparently no determination based on
account numbers at claim 1, and if the split payment data is determined at
claim 1, then it appears it cannot be ( or need not be) provided at claim 29"
Id. Appellant argues the disputed limitation is not indefinite but does not
address the Examiner's logic. App. Br. 15. The Examiner answers,
explaining "if [split payment data] is included [in the data tag], it does not
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need to be 'determined' at claim 1, whereas if it is determined, it apparently
is not included [in the data tag]." Ans. 19.
Although the Examiner's logic from a design perspective may be
correct in that there may be no need to both provide and separately
determine the split information, neither does requiring information, even if
redundant, unnecessary or contrary to conventional design practice, render
the claim indefinite. Furthermore, because, under a broad interpretation, the
split payment data may include several components, we see no inherent
conflict in both determining and providing data. Accordingly, we do not
sustain the rejection of claim 29 under 35 U.S.C. § 112, second paragraph.
Dependent Claim 31
3 1. The method of claim 7 wherein the first authorization request
message includes account information associated with the
portable consumer device, including a bank identification
number (BIN) and an expiration date.
The Examiner finds "there is a lack of antecedent basis for 'account
information associated with the portable consumer device"' and further
expresses uncertainty about what is being referenced by the disputed account
information. Final Act. 21. Appellant contends there is no requirement for
antecedent basis because the "account information" is not introduced by the
definite article "the," i.e., is first introduced by claim 31 with no reference to
a specific feature of a prior claim. App. Br. 15-16. The Examiner answers,
explaining "[t]he rejection is not based on there being a lack of antecedent
basis - the Examiner merely states that there is none." Ans. 20. Instead, the
Examiner finds the claim indefinite because of uncertainty concerning which
account information, if any, is being referenced, i.e., any account
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information, a device account number, the recited issuer account number, or
the recited loyalty account number. Id. at 20. Appellant replies, arguing the
"account information" of claim 31 is not limited to any of the
aforementioned accounts. Reply Br. 12-13.
We disagree claim 31 is indefinite. The breadth of the claim should
not be confused with indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA
1971 ). Appellant is not required to relate the account information back to a
particular account recited in claim 1 nor does a failure to specify which, if
any of the recited accounts, is required to include a bank identification
number (BIN) and an expiration date render the claim indefinite.
Accordingly, we do not sustain the rejection of claim 31 under 35 U.S.C.
§ 112, second paragraph.
D. 35 US.C. § 112,fourth paragraph: improper dependency
Dependent Claims 3 and 8
3. The non-transitory computer readable medium of claim I
wherein the first service provider is an issuer and the second
service provider is a loyalty provider.
The Examiner rejects dependent claims 3 and 85 as failing to further
limit the subject matter of the claim upon which it depends. According to
the Examiner, the limitation "the first service provider is an issuer and the
second service provider is a loyalty provider" of the dependent claims is
redundant of the requirement that "a first service provider associated with
the issuer account number" and "a second service provider associated with
the loyalty account number" as recited by independent base claims 1 and 7.
5 Although claim 23 is also included in the statement of the rejection (Final
Act. 21-23), Appellant notes that claim 23 is canceled (App. Br. 16).
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Final Act. 21-22. Appellant traverses by directing attention to the language
of the dependent claims without further explanation. App. Br. 16. The
Examiner answers by questioning "[ w ]ho else [but the recited issuer and
loyalty provider] would qualify as a service 'associated with' the respective
account numbers?" Ans. 21. Appellant replies "any 'service provider' may
be 'associated with' account numbers in claim 1, and in claim 3 only the
'issuer' is associated with the account number." Reply Br. 13.
Appellant's argument is persuasive of Examiner error. As explained
by Appellant, the recitations of dependent claims 3 and 8 specify a further
limitation of the subject matter claimed by their respective base claims and,
accordingly, comply with 35 U.S.C. § 112, fourth paragraph. Accordingly,
we do not sustain the rejection of dependent claims 3 and 8.
Dependent Claim 2 7
27. The non-transitory computer readable medium of claim 26,
wherein the first service provider is an issuer, the second service
provider and third service provider are loyalty providers, and the
second service provider and the third service provider are
associated with a same business entity as the merchant.
The Examiner finds the relationship between parties recited by claim
2 7 must exist to allow for the processing required by claim 1 such that
recitation of the relationship in claim 27 fails to specify a further limitation
of the subject matter claimed as required by 35 U.S.C. § 112, fourth
paragraph. Final Act. 22-23. According to the Examiner "[ t ]here does not
appear to be any reasonable way for claim 1 to happen unless the association
claimed at claim 27 exists. Therefore, claim 27 appears inherent to claim 1
and offers no further limitation to either of parent claims 26 or 1." Id. at 23.
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Appellant traverses by directing attention to the language of the dependent
claim without further explanation. App. Br. 16. Appellant notes the
Examiner does not respond to the traversal. Reply Br. 14.
We are not persuaded by the Examiner's logic. The Examiner's
conclusion is based on assumptions that are not true in all situations. For
example, rather than the first service provider itself being an issuer it may be
a service bureau associated with an issuer. See, e.g., Spec. ,r 21 ( an issuer
described as an example of a first service provider). Accordingly, we do not
sustain the rejection of dependent claim 27.
Dependent Claim 2 8
28. The non-transitory computer readable medium of claim 1,
wherein sending the second authorization request message to the
first service provider and sending the third authorization request
message to the second service provider is complete before
receiving the first response message from the first service
provider and the second response message from the second
service provider.
The Examiner finds the language requiring sending the second and
third authorization request messages be completed before receiving the
respective response is encompassed by the recited parallel messaging recited
by base claim 1. Final Act. 23. Appellant traverses by directing attention to
the language of the dependent claim without further explanation. App. Br.
17. The Examiner answers, explaining the parallel timing of claim 1
indicates the step of sending must be complete before receiving can occur
because "[a] computer cannot generally (or ever) reply to a message until it
has received the message to which it is replying; therefore, the sending must
be complete before the replying computer can send a response message and
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the response may be received." Ans. 21. Appellant replies, erroneously
indicating the Examiner failed to respond and presuming the rejection is
overcome and withdrawn. Reply Br. 14.
Despite Appellant's overlooking of the Examiner's response to
argument, we agree that claim 28 further limits the subject matter of claim 1.
Contrary to the Examiner's finding, we disagree both sending operations
must be complete prior to receiving a response even though one skilled in
the art would have appreciated such a temporal relationship might be
desirable. That is, because the Examiner had failed to provide sufficient
evidence that the parallel timing of claim 1 necessarily and/or inherently
results in the recited limitations, we do not sustain the rejection of dependent
claim 28 under 35 U.S.C. § 112, fourth paragraph.
E. 35 USC§ 101: nonstatutory subject matter
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily eligible, the subject matter of an invention must be a "new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof." 35 U.S.C. § 101. We initially note that
"Beuregard" type claims 1, 3-5, 26-29, and 32-35 are directed to a non-
transitory computer readable medium and claims 7, 8, 10, 12-14, 25, 30, and
31 are directed to a method. Thus, each of the claims is directed to one of
the four statutory categories of patentable subject matter.
The Supreme Court, however, has held there are implicit exceptions to
the categories of patentable subject matter identified in § 101, including
(1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Alice
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Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014). To
determine whether claims are patent eligible under § 101, we apply the
Supreme Court's two-step test as articulated in Alice. First, we determine
whether the claims are directed to a patent-ineligible concept: laws of
nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so, we
then proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the
claims contain an "inventive concept" sufficient to transform the claimed
abstract idea into a patent-eligible application. Id. at 2357.
Alice Step One
Appellant relies on the arguments made for claim 1 to argue the
patentability of the remaining pending claims. See generally App. Br. 17-
28. We, therefore, select independent claim 1 as the representative claim for
this group, and the remaining claims 3-5, 7, 8, 10, 12-14, and 25-35 stand
or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 recites several key functions-(a) interacting with and
receiving by an access device ( e.g., point of sale terminal) issuer and loyalty
account numbers from a portable consumer device (e.g., debit card or cell
phone); (b) receiving from the access device a first authorization request
message including the account numbers and a data tag indicating a presence
of the loyalty account, the account numbers having been previously
generated by respective issuer and loyalty computers; ( c) analyzing the first
authorization request message to determine it includes split payment data
based on the account numbers; ( d) generating, formatting, and sending, in
parallel, second and third authorization request messages for and to
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respective first and second service providers; ( e) receiving first and second
response messages back from the service providers; and (f) sending a third
response message to the access device ( e.g., point of sale terminal) including
the first and second response messages. See also Final Act. 26. As the
Examiner finds, at a high level of abstraction claim 1, as a whole, is directed
to collecting, analyzing data, and providing results of comparisons ( e.g., a
fundamental economic practice of obtaining account information and
requesting payment authorization from payment sources, i.e., account
service providers). Final Act. 24--28 ( concluding claim 1 is directed to the
abstract idea of "executing split payment purchases").
Appellant contends "[a] primafacie case of patent ineligibility has not
been established, because the Examiner has not established that the alleged
abstract idea of 'executing split payment purchases' has been identified as
such by the courts." App. Br. 18. Appellant argues the Examiner errs in
concluding the claims are similar to prior decisions determining the claimed
subject matter is directed to an abstract idea. Id., citing Classen, 6
6 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed.
Cir. 2011) ( claim involving "the idea of collecting and comparing known
information," without more, is directed to an abstract idea).
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Cyberfone,7 CyberSource, 8 SmartGene, 9 buySAFE, 10 and Bilski. 11
According to Appellant, "[ c ]laim 1 in the Appellant's applications has
nothing to do with 'hedging' or reducing that concept to 'a mathematical
formula."' App. Br. 22.
The Examiner answers, finding "Appellant has merely cited a/the
claim at issue in various cases, but has not really provided any analysis,
comparison, or explanation of those claims or whether they are or are not
analogous or similar to the instant claims." Ans. 22. According to the
Examiner, the rejected claims gather data, compare and/or analyze that data,
and transmit or respond based on the data and received responses and are
similar to claims determined to be abstract as "[a]n [i]dea [o]f[i]tself." Ans.
22-23. Addressing the argued lack of correspondence between the rejected
claims and claims determined to be abstract in the cited cases, the Examiner
answers "although the fields-of-use may be different, the analysis and
application, and the level of generality indicated by the instant claims, all
7 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x
988, 991-92 (Fed. Cir. 2014) (non-precedential) (claims involving collecting
data, recognizing certain data in the set, and storing recognized data in
memory are directed to an abstract idea).
8 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) ( computer-implemented system for "verifying the validity of a
credit card transaction over the Internet" directed to patent-ineligible abstract
idea of obtaining and comparing intangible data).
9 SmartGene, Inc. v. Advanced Biological Laboratories, S.A., 555 F. App'x
950, 954--56 (Fed. Cir. 2014) (claims drawn to abstract idea of comparing
new and stored information and using rules to identify options).
10 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354--55 (Fed. Cir. 2014)
( claims directed to creating a contractual relationship----a "'transaction
performance guaranty'" deemed abstract).
11 Bilski v. Kappas, 561 U.S. 593, 599, 611 (2010) (claims directed to risk
hedging ineligibly directed to an abstract idea).
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appear similar to the cited cases; therefore, they each appear analogous for
eligibility analysis." Ans. 23. The Examiner further likens the claims to
those found ineligible in Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353-54 (Fed. Cir. 2016) (claims directed to collecting
information, analyzing it, and displaying certain results are directed to an
abstract idea). According to the Examiner, the "various messaging and
authorizations indicated at the claims could be performed by hand by a
person ... by just looking up the appropriate information." Ans. 24. The
Examiner also finds the claims are directed to a fundamental economic
practice because "the transactions and messaging indicated in the instant
claims appear to [] be financial transaction[ s] performed according to
contracts or agreements." Ans. 25.
We are not persuaded the Examiner has failed to set forth a prima
facie case of patent-ineligibility. The Federal Circuit has repeatedly
observed that "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, "together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(internal quotation marks and citation omitted). Thus, all that is required of
the Office is that it sets forth the statutory basis of the rejection in a
sufficiently articulate and informative manner as to meet the notice
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requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) (Section 132 "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection").
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner notified Appellant that the claims are directed the abstract idea of
"executing split payment purchases" which is "a fundamental economic
practice, a method of organizing human activities, and/or an idea 'of itself."'
Final Act. 24. The Examiner further determined the additional elements or
combination of elements, other than the abstract idea, do/ does not provide
meaningful limitations to transform the abstract idea into a patent-eligible
application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself. Id. Appellant does not contend the
Examiner's rejection under§ 101 was not understood or that the Examiner's
rejection, otherwise, fails to satisfy the notice requirements of§ 132.
Instead, Appellant's understanding of the rejection is clearly manifested by
Appellant's response as set forth in the briefs.
We further agree with the Examiner's description of the claims as
directed to executing split payment purchases as this determination is fully
consistent the Appellant's Specification:
Embodiments of the invention are directed to methods and
systems involving split messaging in the context of a payment
transaction or the like. Embodiments of the invention can allow
a consumer to pay for a single transaction by sending messages
to different service providers requesting that any value held by
the service providers on behalf of the consumer be applied to the
product or service being purchased in the single transaction.
Spec. ,r 8.
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We are unpersuaded the cited case law precedents "have absolutely no
similarities with the claims in the present application," as Appellant argues.
App. Br. 22. The Examiner identifies multiple relevant decisions
determining claims were directed to ineligible subject matter (abstract ideas)
where they were directed to economic agreements between people including
the performance of financial transactions (buySAFE), verifying a credit card
transaction (CyberSource), and hedging (Bilski). Final Act. 30. The
Examiner further determines the claimed steps of receiving (i.e., collecting)
information and analyzing it so as to provide the results are analogous to the
collection, analysis, and display of information held to be mental processes
within the abstract-idea category in Electric Power. Ans. 23. Appellant's
naked contention that the claims of the cited cases "have absolutely no
similarities with the claims in the present application" (App. Br. 22) is also
unpersuasive for lack of any analysis. For example, Appellant fails to
explain why the determination that performance of financial transitions is an
abstract idea in buySAFE is not applicable to the idea of splitting one
transaction into two payment requests in accordance with the rejected
claims. Although claim 1 may "ha[ ve] nothing to do with 'hedging"' as in
Bilski (App. Br. 22), claim 1 is directed to a fundamental economic practice,
i.e., methods and systems for paying for goods and services, long prevalent
in our system of commerce, as was the abstract idea to which the claim were
directed in that decision. See Bilski, 561 U.S. at 611.
We are also unpersuaded the Examiner's position is inconsistent with
the Enfzsh decision. App. Br. 22, citing Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016). Appellant argues the Examiner failed to take
into account the numerous detailed limitations in the claims in determining
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the claims are directed to an abstract idea. Id. at 23. We disagree. As
pointed out by the Examiner, rather than ignoring claim limitations, the
Examiner provided a detailed analysis of the claims. Ans. 25, citing Final
Act. 26-29.
We further disagree the Examiner has described the invention at a
"high level of abstraction and untethered from the language of the claims."
App. Br. 23. In articulating the subject matter to which the claims are
directed, we note "[ a ]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
41 (Fed. Cir. 2016). There is no definitive rule to determine what constitutes
an "abstract idea." Rather, our reviewing court has explained that "both [it]
and the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334. In that regard, we agree with the
Examiner in finding little difference between claim 1, directed to executing
split payment purchases using messaging and authorizations (Final Act. 24),
and those in, for example, Electric Power, as cited by the Examiner. Ans.
23-24. Similar to the claims in Electric Power,
the claims do not go beyond requiring the collection, analysis,
and display of available information in a particular field, stating
those functions in general terms, without limiting them to
technical means for performing the functions that are arguably
an advance over conventional computer and network technology.
The claims, defining a desirable information-based result and not
limited to inventive means of achieving the result, fail under
§ 101.
Elec. Power, 830 F.3d at 1351. Contrary to Appellant's argument, and just
as in Electric Power, we find "collecting information, including when
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limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." Id. at 1353.
For reasons discussed above, we concur with the Examiner's
conclusion that the claims are directed to abstract ideas such as, for example,
a fundamental economic practice. See Bilski, 561 U.S. at 611..
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we "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." Alice, 134 S. Ct. at 2355 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
In this regard, "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Id. at 2358.
Furthermore, the "computer functions [ must be more than] 'well-understood,
routine, conventional activit[ies]' previously known to the industry." Id. at
2359 (second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellant argues the claims recite significantly more than an abstract
idea itself because embodiments of the application solve a number of
technical problems and improve upon standard transaction processing by
repurposing data fields that were previously unused for account numbers.
App. Br. 25. Appellant also argues the claims include significantly more
because, as further argued by Appellant and despite the outstanding rejection
under 35 U.S.C. § 103(a), the prior art fails to render the claims obvious. Id.
at 26. Appellant further argues the claims do no preempt every way of
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executing split payment purchases citing Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Id.
In response, the Examiner finds no description of claim elements that
improve the functioning of conventional computer systems. Ans. 28. The
Examiner further finds a lack of any description of a technical problem as
asserted by Appellant. Id. The Examiner also disputes Appellant's assertion
that the invention reduces the number of account numbers sent per request.
Id. at 29--30. Concerning the argued repurposing of data fields feature, the
Examiner distinguishes the argued feature as disclosed versus what is
claimed, asserting that Appellant's "argument indicates no improvements to
the claimed subject matter." Id. at 30-31 (emphasis added). Nonetheless,
the Examiner finds the argued repurposing merely sends different data while
remaining within the confines of the limitations of the payment processing
system, which does not constitute a technological improvement. Id. at 31-
32. The Examiner further finds Appellant's citation to Bascom
unpersuasive, noting a lack of analysis including "specific[ s] as to what
elements of the claims are 'significantly more."' Id. at 33. Addressing
Appellant's preemption argument, the Examiner explains "'the absence of
complete preemption does not guarantee that a claim is eligible."' Id.; see
also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015).
We find unavailing Appellant's argument that claim 1 amounts to
significantly more than a patent on the abstract idea itself. Contrary to
Appellant's argument and consistent with the Examiner's stated position, we
find insufficient support for Appellant's contentions and disagree that the
claims include additional elements that transform the nature of the claim into
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a patent-eligible application under step 2 of the Alice framework. Rather
than solving a technical problem, claim 1 automates a manual process of
paying for a transaction using two sources of funds by requesting and
receiving authorization from each of the designated sources.
As explained by the Examiner, split payment purchases are a form of
fundamental economic practice that has been long prevalent in our system of
commerce. Final Act. 30; Ans. 24, citing Bilski. Instead of describing and
claiming a technological improvement to address a technological problem,
Appellant discloses the use of conventional technological platforms for
implementing the abstract idea, e.g., a personal computer or PC (Spec. ,r 40).
Furthermore, we do not find that the functions performed by the computer of
claim 1, beyond implementing the abstract ideas, are anything other than
well-understood, routine, and conventional. Nor is the recited use of generic
computer hardware enough to confer subject matter eligibility. See Alice,
134 S. Ct. at 2358 ("[I]f 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." ( second alteration in original)
( citation omitted)).
Appellant's reliance on Bascom, 827 F.3d at 1350, is also
unpersuasive. App. Br. 26-27. In Bascom, the court determined that "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." Bascom, 827 F.3d at 1350. In
that case, the installation of a filtering tool at a specific location, remote
from the end users, with customizable filtering features specific to each end
user, provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
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server. Id. We find no analogous non-conventional, non-generic
arrangement of known, conventional pieces within a network or an
achievement of a technical improvement. Instead, the claims recite results-
focused limitations of receiving an authorization request message from an
access device ( e.g., point of sale terminal) the message including loyalty and
issuer account numbers received from a portable consumer device ( e.g.,
debit card or cell phone); determining there is split payment data based on
the account numbers; generating, formatting, and sending authorization
request messages to and receive response messages from respective service
providers; and sending a response based on the messages received from the
service providers. Accordingly, Appellant's reliance on Bascom is
inapposite and, therefore, unpersuasive of Examiner error.
We also agree with the Examiner that Appellant's preemption
argument is unpersuasive. See Final Act. 57-58; Ans. 33-34; App. Br. 27.
Although pre-emption "'might tend to impede innovation more than it would
tend to promote it,' thereby thwarting the primary object of the patent laws"
(Alice, 134 S. Ct. at 2354 (citing Mayo, 566 U.S. at 71)), "the absence of
complete preemption does not demonstrate patent eligibility." Ariosa, 788
F.3d at 1379; see also OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359,
13 62---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.").
We are also unpersuaded by Appellant's argument "the prior art fails
to render the claims obvious, so the claims must therefore recite an
'inventive concept' that is 'significantly more."' App. Br. 26. We disagree
with Appellant's premise that the claims are not obvious (see discussion
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below of rejection under 35 U.S.C. § 103(a)) and we disagree with the
conclusion that the non-obviousness demonstrates the inventive concept is
significantly more under step 2 of the Alice framework. As explained by the
Examiner (Final Act. 57-58; Ans. 33-34), although preemption may be the
concern driving the exclusion of abstract ideas from patent-eligible subject
matter, preemption is not the test for eligibility.
We are not persuaded by Appellant's argument analogizing the
rejected claims to those found patent-eligible in McRO. See Reply Br. 15.
In contrast to McRO, Appellant fails to persuade us the rejected claims
produce an improvement in computer-related technology. The claims in
McRO recited a "specific ... improvement in computer animation" using
"unconventional rules that relate[ d] sub-sequences of phonemes, timings,
and morph weight sets." McRO, Inc. v. Bandai Namco America Inc., 837
F.3d 1299, 1302---03, 1307---08, 1314--15 (Fed. Cir. 2016). Moreover, it was
not the mere presence of unconventional rules in McRO that led to patent
eligibility; rather, it was that the rules were used "in a process specifically
designed to achieve an improved technological result." Id. at 1316. Here,
Appellant has not shown how the claimed split messaging is used in a
process to achieve an improved technological result.
For the reasons given by the Examiner and as discussed above, "the
claims at issue amount to 'nothing significantly more' than an instruction to
apply the abstract idea ... using some unspecified, generic computer."
Alice, 134 S. Ct. at 2360 (quoting Mayo, 566 U.S. at 79). Accordingly, we
are not persuaded the Examiner erred in rejecting the claims as directed to
ineligible subject matter under 35 U.S.C. § 101.
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F. 35 US.C. § 103(a): obviousness
Independent Claims 1 and 7
Appellant contends the Examiner erred in finding White discloses the
issuer and loyalty account numbers may be the same number and that the
rewards data source may be separate, characterizing the findings "a
fabrication by the Examiner." App. Br. 28. Appellant further contends
neither White nor the relied-upon Postrel reference discloses either a
message including both issuer and loyalty account numbers or a request
message with a data tag as required by claim 1. Id. at 27. Appellant also
contends, by disclosing the aggregation of reward points into a single reward
exchange account, Postrel teaches away from the disputed limitation of
separate accounts and messages Id. at 30.
The Examiner answers, explaining the assertion that the issuer and
loyalty numbers may be the same is a matter of claim construction rather
than a teaching of the prior art or a fabrication by the Examiner. Ans. 34--36.
Under a claim interpretation requiring only a single account number, the
Examiner maintains White standing alone renders the independent claims
obvious. Id. However, alternatively, the Examiner applies Postrel's multiple
account numbers encoded on a single card to White's split payment system,
finding the combination teaches or suggests the disputed limitations. Id. at
36-37. The Examiner finds unpersuasive Appellant's argument that Postrel
aggregates the account numbers into a single exchange account for
transmission, concluding "the claim merely requires that the issuer account
number and loyalty account number be included in the authorization request
message - NOT that the account numbers be in any particular form, or of any
particular length, or not be combined with other data such as other account
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numbers, etc." Id. at 37-38. In response to Appellant's teaching away
argument the Examiner explains the argued goal of Postrel to reduce storage
at a server by storing more data on a card is irrelevant to Postrel's disclosure
of the presence and use of the accounts. Id. at 38.
Appellant replies, arguing the Specification discloses "the service
providers that receive the authorization request messages are in separate
systems that correspond with separate account numbers" and that it would
not make sense to use the same account number for both purposes. Reply
Br. 16-1 7. Appellant repeats the assertion " [ t ]he references fail to teach or
suggest these two account numbers in the authorization request message,"
arguing Postrel' s aggregation of account numbers into a single exchange
account fails to teach an authorization request message that contains both
issuer and loyalty account numbers. Id. at 17.
Appellant's contentions are unpersuasive. Although we agree with the
Examiner that the recited issuer and loyalty numbers may be the same, i.e.,
equal values, we do not agree a disclosure of a single account number
discloses two separate, even if equal, account numbers. However, because
Postrel' s multiple but separate accounts disclose the at least two account
numbers recited by the independent claims, we agree the combination of
White's authorization request message, including an account number, and
Postrel' s multiple account numbers teaches or suggests the disputed two
account numbers in the authorization request message. We disagree
Postrel' s disclosure of aggregating reward points from multiple accounts
into a single reward exchange account negates the disclosure of the
originally separate accounts. Appellant's argument improperly relies on
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wholesale incorporation/combination of structures rather than what the
combination of White and Postrel teaches and suggests.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413,425 (CCPA 1981). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Furthermore, the
skilled artisan would "be able to fit the teachings of multiple patents together
like pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
420-21 (2007). Here, Appellant has not demonstrated the Examiner's
proffered combination in support of the conclusion of obviousness would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
We are also unpersuaded by Appellant's contention that Postrel
teaches away from the combination. See App. Br. 30. To teach away, the
prior art must "criticize, discredit, or otherwise discourage the solution
claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Teaching an
alternative method does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433,438 (CCPA 1965); see also Ex parte Shuping,
No. 2008-0394, 2008 WL 336222, at *2 (BPAI 2008) (unpublished)
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("' [T]eaching a way is not teaching away."' ( citation omitted)); Geisler, 116
F.3d at 1471 (holding that merely "express[ing] a preference" falls short of
discouraging one of ordinary skill in the art from following a particular
path). Although Postrel discloses a single exchange account, as explained by
the Examiner, that account represents multiple accounts. Furthermore,
Appellant does not identify any teaching in Postrel that disparages sending
separate messages for respective accounts when there is a need for
authorizations from separate service providers.
Because Appellant's contentions are not persuasive of Examiner error,
we sustain the rejection of independent claims 1 and 7 under 35 U.S.C.
§ 103(a) together with the rejection of dependent claims 3-5, 8, 10, 12-14,
25, 27-29, and 31-35, which are not argued separately with particularity.
Claim 26
Appellant's argument in connection with claim 26 is similar to that
presented in connection with the independent claims. In particular,
Appellant argues Postrel' s single exchange account fails to disclose an
authorization request message including a second loyalty account number.
This argument is unpersuasive because the Examiner relies on the
combination of White's authorization request message including an account
number and Postrel' s disclosure of multiple accounts for teaching or
suggesting the disputed limitation. Final Act. 44; Ans. 39-40. It is well
established that one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
See Keller, 642 F.2d at 426; In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Accordingly, we sustain the rejection of dependent claim 26
under 35 U.S.C. § 103(a).
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Claim 30
Appellant argues the cited paragraph 66 of Postrel fails to disclose
split payment data stored at the server computer as asserted by the Examiner.
App. Br. 31. The Examiner answers, correcting the questioned citation to
Postrel' s paragraph 7 6 describing a central server aggregation model
including a trading server where data is stored and retrieved. Ans. 40.
Appellant replies, arguing "[ t ]he devices that the Examiner points to are not
performing this 'receiving' step in the cited references" and, therefore, fail to
teach or suggest the disputed limitation of wherein the split payment data is
stored at the server computer. Reply Br. 19.
Appellant's argument is not persuasive of Examiner error. Postrel's
disclosure of storing account information (e.g., reward points for a user) on a
trading server teaches or suggests the argued storing of split payment data on
a server computer as required by dependent claim 30. Under a broad but
reasonable interpretation, the argued functionality is not required to be
provided by a single computer but may be provided by some combination of
multiple devices, such as Appellant's minicomputer cluster. See Ans. 40,
citing Spec. ,r,r 38-39. Furthermore, one skilled in the art at the time of the
invention would have recognized separate functionalities provided by
multiple devices ( e.g., receiving and storing) may be consolidated into a
single platform. Still further, the server processing recited by claim 7,
including determining that the first authorization request message contains
split payment data, would have at least suggested that the split payment data
was available to the server and therefore stored, at least temporarily, on the
server while the request message is processed to determine if it contains split
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payment data. Accordingly, we sustain the rejection of claim 30 under
35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's decision to reject claims 1, 3-5, 7, 8, 10,
12-14, 25, 26, 28-31, and 33-35 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
We affirm the Examiner's decision to reject claims 27 and 32 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the Examiner's decision to reject claims 1, 3-5, 7, 8, 10,
12-14, and 25-35 under 35 U.S.C. § 112, first paragraph, based on a lack of
enablement.
We reverse the Examiner's decision to reject claims 1, 3-5, 7, 8, 10,
12-14, and 25-35 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
We reverse the Examiner's decision to reject claims 3, 8, 23, 27, and
28 under 35 U.S.C. § 112, fourth paragraph, as being in improper dependent
form.
We affirm the Examiner's decision to reject claims 1, 3-5, 7, 8, 10,
12-14, and 25-35 under 35 U.S.C. § 101 as directed to a judicial exception
to patent eligibility without significantly more.
We affirm the Examiner's decision to reject claims 1, 3-5, 7, 8, 10,
12-14, and 25-35 under 35 U.S.C. § 103(a) as unpatentable over White,
Postrel, and Acme.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision rejecting
claims 1, 3-5, 7, 8, 10, 12-14, and 25-35. See 37 C.F.R. § 4I.50(a)(l)
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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