Ex Parte Hirka et al

Patent Trial and Appeal Board

Jun 7, 2018

14258151 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/258,151 04/22/2014
131244 7590 06/07/2018
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Jeffrey L. HIRKA
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.
47004.000801 2063
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
MAILDATE DELIVERY MODE
06/07/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY L. HIRKA,
DEBRA C. FELLNER,
STEVEN FOX, and
LEE KNACKSTEDT
Appeal2017-000554
Application 14/258, 151 1
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey L. Hirka, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Non-Final Rejection of claims 1-3 and 5-16. We have
jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify JPMorgan Chase Bank, N.A. and its parents and
subsidiary companies as the real party in interest. App. Br. 1.
Appeal2017-000554
Application 14/258, 151
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for using a financial
transaction device to access multiple accounts, comprising:
issuing a financial transaction device to a cardholder
wherein the financial transaction device stores machine
readable data linked to a first account;
processing, by the computer processor, a transaction
initiated by the financial transaction device;
routing, by the computer processor, the transaction
through a financial processing chain based on the data
pertaining to the first account;
applying post-transaction decisioning to the transaction
which comprises applying predefined rules to the transaction,
the predefined rules shifting the application of the transaction to
a second account, that is selected from one or more pre-existing
accounts associated with the financial transaction device that
differs from the first account; and
determining, by the computer processor, that at least one
arbitration rule exists comprising logic to resolve conflicts for
accessing the second account based upon the transaction,
wherein the at least one arbitration rule presents an option for
override.
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Application 14/258, 151
THE REJECTION
The following rejection is before us for review:
Claims 1-3 and 5-16 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1-3 and 5-16 under
35 U.S.C. § 101 as being directed to non-statutory subject matter?
ANALYSIS
The Appellants argue these claims as a group. See App. Br. 4--10.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 3, and 5-16 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially excepted from patent-eligibility under 35 U.S.C.
§ 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner
determined "Applicant's claims are ... directed to financial transactions."
Non-Final Act. 4 (boldface omitted).
The Appellants point to various steps the Examiner should have taken
to reach that determination. App. Br. 4--7; Reply Br. 2--4. Nevertheless, the
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Appellants agree. See App. Br. 6 ("Clearly Appellant's claims may be
considered to be directed towards a financial transaction .... ").
The Appellants suggest that the claims are directed to something else.
What that is the Appeal Brief does not say. The Reply Brief indicates that
"[t]he claims ... relate to ... a method by which multiple accounts may be
associated with a single financial transaction device." Reply Br. 4. But that
characterization of what the claims are directed to is not commensurate in
scope with what is claimed. What is claimed (i.e., claim 1) is a process for
using a financial transaction device to access multiple accounts, not
associating multiple accounts with a single financial transaction device.
Be that as it may, whether the claims are characterized as directed
(undisputably) to "financial transactions" or (alternatively) "a method by
which multiple accounts may be associated with a single financial
transaction device," they are directed to abstract ideas. This is so because
analogous concepts have previously been deemed abstract ideas. See, e.g.,
Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 581 (D. Del.
2015) ("Performing a sales transaction over the Internet, or in conjunction
with an auction and a competitive activity" is an abstract idea.), aff'd, 627
F. App'x 925 (Fed. Cir. 2016); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370-73 (Fed. Cir. 2011) ("[a] method for
verifying the validity of a credit card transaction over the Internet" is
directed to a mental process, i.e., an abstract idea).
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
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concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 US 66, 73
(2012)).
In that regard, the Examiner determined that the claims do not add
significantly more to the abstract idea to which they are directed to
transform the abstract idea into an inventive concept, arguing, inter alia, that
"[t]he claims are not solving a technical problem. If they are solving a
problem it is in the area of the economy and commerce." Non-Final Act.
8.
The Appellants argue in response that
[h ]ere, the claimed embodiments solve the specific technology
based problem of accessing, interacting, and managing,
multiple accounts based on the use of a single financial device
with a single magnetic strip.
App. Br. 8.
But that argument cannot be persuasive as to error in the Examiner's
determination because claim 1 makes no mention of "a single financial
device with a single magnetic strip," let alone using one to access, interact,
and manage multiple accounts. According to claim 1, a transaction initiated
by a financial transaction device storing machine readable data linked to a
first account issued to a cardholder is processed by a computer processor.
Thereafter, the transaction is routed through a financial processing chain,
predefined rules are applied to it shifting the application of the transaction to
a second pre-existing account different from the first account, and an
arbitration rule comprising logic to resolve conflicts for accessing the second
account based upon the transaction, wherein the at least one arbitration rule
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presents an option for override, is determined to exist. The argument is not
commensurate in scope with what is claimed.
The Appellants further argue that "[t]he claimed embodiments are
not found in the prior art." App. Br. 9.
The question in step two of the Alice framework is not whether an
additional feature is novel but whether the implementation of the abstract
idea involves "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134
S. Ct. at 2359). Although "the§ 101 patent-eligibility inquiry and, say, the
§ 102 novelty inquiry might sometimes overlap," Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (quoting Mayo, 566
U.S. at 90), "a claim for a new abstract idea is still an abstract idea." Id. In
that regard, the Appellants have not shown novel features which transform
the abstract idea into patent-eligible subject matter. We have reviewed the
Appeal Brief and have been unable to ascertain the claim features the
Appellants are pointing to as transforming the abstract idea, whether it is
characterized as "financial transactions" or "a method by which multiple
accounts may be associated with a single financial transaction device." The
Reply Brief repeats that Appellants solve the "problem of accessing,
interacting, and managing, multiple accounts based on the use of a single
financial device with a single magnetic strip." Reply Br. 5. But claim 1 has
a much broader scope than that.
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We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, because representative claim 1
and claims 2, 3, and 5-16, which stand or fall with claim 1, are directed to
an abstract idea and do not present an "inventive concept," we sustain the
Examiner's determination that they are directed to ineligible subject matter
under 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc., 656 F. App'x
991, 997 (Fed. Cir. 2016) ("We have considered all ofLendingTree's
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an 'inventive concept,' we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.").
DECISION
The decision of the Examiner to reject claims 1-3 and 5-16 is
affirmed.
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).
AFFIRMED
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