Ex Parte Hammad

Patent Trial and Appeal Board

Jul 28, 2017

12712870 (P.T.A.B. Jul. 28, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/712,870 02/25/2010 Ay man Hammad 79900-751370 3562
66945 7590 08/01/2017
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
YU, ARIEL J
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/01/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
EDurrell @ kilpatrickto wnsend .com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AYMAN HAMMAD
Appeal 2016-003017
Application 12/712,87c1
Technology Center 3600
Before ALLEN R. MacDONALD, JASON V. MORGAN, and
AARON W. MOORE, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20, 22—24, and 26—30. Claims 21 and 25 are canceled.
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Visa International Service Association as the real party
in interest. App. Br. 3.
Appeal 2016-003017
Application 12/712,870
Invention
Appellant discloses a method to “improve the security of [a]
transaction by providing additional authentication data” regarding the
transaction. Spec. 1 5.
Exemplary Claim
Claim 11, reproduced below with key limitations emphasized, is
11. A method comprising:
a) receiving, by a server computer, an authorization request
message, wherein the authorization request message requests
authorization to proceed with a transaction conducted between a
first party and a second party using a portable device;
b) analyzing the authorization request message, by the server
computer, to determine if the portable device is enrolled in a
transaction alert program;
c) if the portable device is enrolled in the transaction alert
program, initiating, by the server computer, the sending of a
transaction alert request message to a third party notification
device operated by a third party, the transaction alert request
message requesting approval to proceed with the transaction;
d) receiving, by the server computer, a transaction alert
response message from the third party notification device
indicating that the third party approves of the transaction;
e) after receiving the transaction alert response message from
the third party notification device:
modifying, by the server computer, the authorization
request message to include an indicator that indicates to
an issuer associated with the portable device that the
third party approves of the transaction; and
sending, by the server computer, the modified
authorization request message to the issuer associated
with the portable device;
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f) receiving, by the server computer, an authorization response
message from the issuer; and
g) sending, by the server computer, the authorization response
message to the second party.
Rejections
The Examiner rejects claims 1—20, 22—24, and 26—30 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 3^4.
The Examiner rejects claims 1—20, 22—24, and 26—30 under 35 U.S.C.
§ 103(a) as being unpatentable over Koch (US 7,877,326 B2; issued Jan. 25,
2011) and DeLuca et al. (US 2010/0077036 Al; published Mar. 25, 2010).
Final Act. 5—13.
ANALYSIS
35 U.S.C. §101
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, 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. 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 Corp. Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). The
Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. (citing Mayo Collaborative
Servs. v. Prometheus Labs, Inc., 132 S.Ct. 1289 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if a patent-ineligible
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concept is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the patent-ineligible concept itself. See
Alice, 134 S.Ct. at 2355.
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner concludes
that the claim as a whole is
directed to the abstract idea of (i) a fundamental economic
practice, (ii) a method of organizing human activities, (iii) an
idea of itself, or (iv) a mathematical relationship or formula.
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no
more than: (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure
that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry.
Final Act. 3.
The Examiner further concludes that the claim, in reciting
the steps of receiving^ an authorization request message;
analyzing the authorization request message and initiating a
transaction alert request message to a third party notification
device if the portable device is enrolled in a transaction alert
program; receiving a transaction alert response message from
the third party; modifying the authorization request message to
include the approval from the third party; sending the modified
authorization response message to [the] issuer; and sending the
authorization response message to the second party
(Ans. 3 4) evinces that the claim is directed to
simply the organization and comparison of data which can be
perform[ed] mentally and is an idea of itself .... similar to
other concepts that have been identified as abstract by the
courts, such as using categories to organize, store and transmit
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information ... or comparing new and stored information and
using rules to identify options
(id. at 4).
Appellant contends the Examiner erred by merely reciting categories
of abstract ideas without setting “forth the specific fundamental economic
practice, method of organizing human activities, idea of itself, or
mathematical relationship or formula recited by claim 1.” App. Br. 13. That
is, Appellant argues the Examiner has not set forth proper analysis under the
first step of the Alice test to show that the claim is directed to a patent-
ineligible concept.
Appellant further contends that the Examiner’s additional analysis in
the Answer is insufficient because the Examiner does not show claim 1 is
‘“directed to’ comparing and storing information and [fusing rules to
identify options’ and ‘using categories to organize, store and transmit
information.’” Reply Br. 3.
We agree with Appellant that the Examiner does not provide
sufficient analysis with respect to the first step of the Alice test for
ascertaining whether a claim is directed to patentable subject matter.
The Examiner’s analysis in the Final Action (see Final Act. 3) merely
lists known categories of abstract ideas without “look[ing] at the ‘focus of
the claimed advance over the prior art’ to determine if the claim’s ‘character
as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas,
LLCv. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
In the Answer, the Examiner narrows down the scope of the alleged
abstract idea to “using categories to organize, store and transmit information
. . . , or comparing new and stored information and using rules to identify
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options.” Ans. 4. However, the Examiner merely recites numerous
elements of the claim without showing a connection between the claim
recitations and one of the abstract ideas identified. See id. at 3^4. We do
not see how the cited claim recitations support the Examiner’s proffered
domains of abstract ideas.
If anything, claim 1—which recites the receipt of and a process for
responding to an “authorization request message [that] requests
authorization to proceed with a transaction conducted between a first party
and a second party”—is broadly directed to the facilitation of a contract
between parties. Such facilitation may be directed to an impermissible
abstract idea. Cf. In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009) (methods
directed to resolving binding arbitration involving legal documents, such as
contracts, were patent-ineligible). However, the Examiner’s analysis does
not identify such facilitation as the abstract idea to which claim 1 is directed.
We decline to further explore this potential basis for rejection and do not
provide analysis to set forth a prima facie case that claim 1 is directed to
non-statutory subject matter based on this previously unanalyzed domain of
abstract idea.
Because the Examiner does not provide sufficient evidence or analysis
showing that claim 1 is directed to patent-ineligible subject matter, we do
not sustain the Examiner’s 35U.S.C. § 101 rejection of claim 1, and of
claims 2—20, 22—24, and 26—30, which are similarly rejected.
35 U.S.C. § 103(a)—Claims 1—10 and 26—28
Koch teaches a system that can, for example, provide an opportunity
for a parent to act as a collaborating party to approve or deny credit card
charges, at the time of sale, of a teenage son or daughter using the parent’s
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credit card to make a purchase. See Koch col. 3,11. 41—57. In Koch’s
system, “commerce application 20 initiates communication with the second,
collaborating party 54.” Id. at col. 7,11. 24—25. “[C]ommerce application 20
then awaits the response 56 ... . [which] indicates an authorization, or a
denial, from the collaborating party 54.” Id. at col. 7,11. 27—29.
The Examiner finds the Koch response 56 “is considered [to be] ‘the
authorization request message to include an indicator that indicates that the
third party approves of the transaction.’” Final Act. 6. Thus, the Examiner
relies on Koch’s response 56 to teach or suggest modifying the authorization
request message to include an indicator that indicates to an issuer
associated with the portable device that the third party approves of the
transaction, as recited in claim 1. Final Act. 6 (citing Koch col. 1,1. 45—col.
2,1. 18, col. 3,11. 40-67 and 52-58, col. 4,11. 47-61, and col. 7,11. 10-39);
see also Ans. 5—7.
Appellant contends the Examiner erred because “response message 56
already indicates the decision made by collaborating party 54, and thus there
would be no reason for commerce application 20 to modify this message
upon receipt to include an indication of collaborating party’s 54 decision.”
App. Br. 28. Thus, Appellant argues “Koch does not receive an
authorization request as it is being sent to an issuer, and then modify it based
upon a response that is received from a notification device.” Reply Br. 5.
We find Appellant’s arguments persuasive.
The Examiner’s findings do not show that Koch’s response message
56 is a modified authorization request message (i.e., a message that
“requests authorization to proceed with a transaction conducted between a
first party and a second party”) or is used to modify an authorization request
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message. The Examiner’s findings correctly show that “response 56
indicates an authorization, or a denial, from the collaborating party 54.”
Final Act. 6. However, the Examiner does not proffer findings as to the
form of such authorization or denial, or as to the use of such authorization or
denial as it pertains to an authorization request message (e.g., whether it
would have been obvious to modify an authorization request message to
keep a record of precisely what was authorized or denied). See id.', Ans. 5—
7. The Examiner also do not show that DeLuca—which the Examiner relies
on for where to send the modified authorization request message—teaches,
suggests, or otherwise renders obvious making the claimed modification.
See Final Act. 7—8; Ans. 7—8.
Because the Examiner does not present adequate findings with respect
to modifying the authorization request message to include an indicator in
the manner claimed, we cannot sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1, and claims 2—10 and 26—28, which depend therefrom.
35 U.S.C. § 103(a)—Claims 11—20, 22—24, 29, and 30
Our basis for reversing the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 1 is inapplicable with respect to claim 11. Claim 1 recites a server
computer comprising a computer readable medium having code executable
by the processor for implementing a method that includes the step of
“modifying the authorization request message to include an indicator ...”
The server computer and computer readable medium of claim 1 would need
to have code for performing the relevant step regardless of whether the
particular code is executed. Claim 11, in contrast, merely recites the method
itself.
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Importantly, the claimed method recites that step c is performed “if
the portable device is enrolled in the transaction alert program.” Thus, step c
is a conditional recitation that need not be performed in the broadest
reasonable scenario (i.e., when the portable device is not enrolled in the
transaction alert program). See Ex parte Schulhauser, 2016 BL 173053
(PTAB 2016) (precedential) (BNA), No. 2013-007847, slip op. at 10,
available at https://www.uspto.gov/sites/default/files/documents/
Ex%20parte%20Schulhauser%202016_04_28.pdf, citing Cybersettle, Inc. v.
Natl Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007)
(unpublished) (“If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed.”).
Claim 11 steps d through g all have limitations with antecedents
having some basis in the conditional recitation of step c. For example,
step d recites receiving “a transaction alert response message from the
third party notification device indicating that the third party approves of the
transaction” (emphases added). However, the antecedent basis for the third
party and the third party notification device are both in the conditional step
of “initiating ... the sending of a transaction alert request message to a
third party notification device operated by a third party'1'’ (emphases added).
Similarly, step e—under which the disputed modifying step is performed—
is performed “after receiving the transaction alert response message [with
antecedent in step d] from the third party notification device [with
antecedent in the condition portion of step c].”
Because claim 11 steps d through g all recite limitations with
antecedents having some basis in the conditional recitation of step c, steps d
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through g are similarly conditional recitations. That is, these steps are not
additional steps that are always performed as part of the method, but merely
expand on the set of steps performed when the condition of step c is met.
For this reason, the step of “modifying . . . the authorization request
message to include an indicator” is conditional and does not distinguish the
claimed invention from the teachings and suggestions of Koch and DeLuca.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 11, and claims 17—20, 22, 24, and 29, which Appellant does not argue
separately. App. Br. 34.
Appellant further contends that Examiner erred with respect to claims
12, 23, and 30, which depend from claim 11. See id. at 32—34. However,
the recitations of claims 12, 23, and 30—like the disputed recitation of claim
11—all contain limitations having antecedents with some basis in claim 11 ’ s
conditional step c. Therefore, these dependent claims merely expand on or
further limit steps performed when the condition of claim 11 step c is met.
These dependent claims do not add steps or limit steps that are always
performed. As such, the recitations of claims 12, 23, and 30 are also
conditional and do not distinguish the claimed inventions from the teachings
and suggestions of Koch and DeLuca.
Accordingly, we also sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 12, 23, and 30, and claims 13—16, which Appellant does
not argue separately. Id. at 34.
Had the recitation “if the portable device is enrolled in the transaction
alert program” been omitted from claim 11, we would have reversed the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 11—20, 22—24, 29, and 30
for the reasons discussed above with respect to claim 1.
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DECISION
We affirm the Examiner’s decision rejecting claims 11—20, 22—24, 29,
and 30.
We reverse the Examiner’s decision rejecting claims 1—10 and 26—28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
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