13748939 (P.T.A.B. Aug. 27, 2018)

Ex Parte Jeffries et al

Patent Trial and Appeal BoardAug 27, 2018

13748939 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/748,939 01/24/2013 126944 7590 08/29/2018 MasterCard c/o Ballard Spahr LLP 999 Peachtree Street, Suite 1000 Atlanta, GA 30309 FIRST NAMED INVENTOR Matt Jeffries 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. 37537.0002Ul 7354 EXAMINER ALLADIN, AMBREEN A ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): uspatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATT JEFFRIES, JOHN CHISHOLM, THERESA LAROSA, KIRK MENARD, PRASAD RAO, and DENISE SCHROEDER Appeal2017-005745 Application 13/748,939 1 Technology Center 3600 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL Introduction Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-6, 8-13, and 15-20, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). Claims 7, 14, and 21 have been cancelled. We AFFIRM. 2 1 According to Appellants, the real party in interest is MasterCard International Incorporated. Br. 2. 2 Our Decision refers to Appellants' Appeal Brief filed November 2, 2015 ("Br."); Examiner's Answer mailed March 25, 2016 ("Ans."); Advisory Action mailed March 23, 2015 ("Adv. Act.); and Final Office Action mailed January 13, 2015 ("Final Act."). Appeal2017-005745 Application 13/748,939 STATEMENT OF THE CASE Claims on Appeal Claims 1, 8, and 15 are independent claims. Claim 1 is reproduced below. 1. A method of processing an Automated Teller Machine transaction at a processing network, the method comprising: receiving, via a computer network, Automated Teller Machine (ATM) transaction data from a merchant bank, the Automated Teller Machine transaction data including a primary account number (PAN) associated with a customer; retrieving, from a database, customer history associated with the primary account number; applying a rule from a rules engine to the Automated Teller Machine transaction data based on the customer history; based on the rule application from the rules engine, pre- emptively declining the Automated Teller Machine transaction via the computer network instead of forwarding the Automated Teller Machine transaction data to an issuer; and transmitting to the merchant bank, via the computer network, a reason for the pre-emptive declining. Scragg Reference US 2011/0016052 Al Examiner's Rejections Jan. 20, 2011 Claims 1-6, 8-13, and 15-20 stand rejected under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. Final Act. 2. Claims 1-6, 8-13, and 15-20 stand rejected under 35 U.S.C. Â§ I02(b) as being anticipated by Scragg. Id. at 3---6. 2 Appeal2017-005745 Application 13/748,939 Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. Arguments not made are waived. See MPEP Â§ 1205.02; 37 C.F.R. Â§Â§ 4I.37(c)(l)(iv) and 4I.39(a)(l). ANALYSIS 35 US.C. Â§101: Claims 1-6. 8-13. and 15-20 In Alice, the Supreme Court set forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If so, the second step is to consider the elements of the claims "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent- eligible application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to "search for an 'inventive concept' - i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). Step One Appellants contend the Examiner erred in determining the claims are directed to an abstract idea. Br. 4. Specifically, Appellants argue "the 3 Appeal2017-005745 Application 13/748,939 Examiner has failed to establish a prima facie case of ineligibility, at least as required by the U.S. Supreme Court, because the Examiner has failed to provide supporting citations or a logical analysis under the first part of the two-part test." Id. We are not persuaded. We agree with the Examiner that these "claims directed to the performance of certain financial transactions" are directed to an abstract idea (Final Act. 7) and that the claimed "[p ]erformance of' financial transactions, e.g., "ATM transactions," is "a fundamental economic practice" (Final Act. 2; Ans. 8). Indeed, the claims recite steps for performing a financial transaction, i.e., "applying a rule from a rules engine to the Automated Teller Machine transaction data based on the customer history; based on the rule application from the rules engine, pre-emptively declining the Automated Teller Machine transaction." Further, the claimed steps of "receiving ... Automated Teller Machine (ATM) transaction data," "retrieving ... customer history," and "transmitting, to the merchant bank, via the computer network, a reason for the pre-emptive declining" recite collecting information and transmitting the result of the analysis of that information. Those steps of collecting and transmitting information are further directed to an abstract idea. See Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed. Appx. 988, 992 (Fed. Cir. 2014) ("collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible"). Contrary to Appellants' argument that "the Examiner has failed to establish a prima facie case of ineligibility ... under the first part of the two- part test" (Br. 4), the Examiner's analysis identifies the abstract idea as a 4 Appeal2017-005745 Application 13/748,939 fundamental economic activity based on financial transaction processing, as recited in the claims (Final Act. 2, 7-8; Ans. 8), and is sufficient to place Appellants on notice as to the first step of Alice. Appellants' understanding of the Examiner's rejection on this point was manifested by Appellants' response to the Office Action. See Br. 4. Appellants argued a requirement that is not required of the Examiner, i.e., "citations" to, e.g., "scholarly articles." Id. Absent any additional arguments directly addressing the Examiner's identification of the "abstract idea," Appellants have not presented persuasive argument demonstrating the Examiner erred in determining the claims are directed to an abstract idea. Step Two Appellants contend the Examiner erred in determining the claims do not recite significantly more than the abstract idea itself. Br. 5. Specifically, Appellants argue "the Examiner has failed to demonstrate that the claims do not include 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 abstract idea itself." Id. We are not persuaded. We agree with the Examiner that the "additional element(s)" recited in the claim, e.g., the "computer network," "database," "rules engine," do not transform the abstract idea into patent- eligible subject matter. Final Act. 2, 8-10. The Examiner finds that the Specification describes that those additional elements that implement the abstract idea are provided by "a generic computer ... in a general purpose computing environment." Final Act. 10; Ans. 11-12. In particular, the Specification's discussion of the "exemplary system" implementing the 5 Appeal2017-005745 Application 13/748,939 claimed invention broadly describes "server system 112" and "client systems 114," which communicate via various networks. Spec. ,r,r 37--40. The Specification further describes that "the system is run on a mainframe environment and a UNIXÂ® server environment" or "in a WindowsÂ® environment." Id. ,r 29. As our reviewing court has determined, such "UNIXâ„¢, or Microsoft Corp.'s Windows95â„¢ or WindowNTâ„¢" servers are conventional servers, and using those conventional servers to process rules and transmit information over a network is a routine use of those conventional servers, thus failing to transform the abstract idea into patent- eligible subject matter. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Accordingly, Appellants have not persuaded us claims 1---6, 8-13, and 15-20 are directed to patent-eligible subject matter. Therefore, we sustain the rejection of claims 1---6, 8-13, and 15-20 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. 35 USCÂ§ 102(b): Claims 1-6, 8-13, and 15-20 Appellants contend the Examiner erred in finding Scragg discloses "transmitting to the merchant bank, via the computer network, a reason for the pre-emptive declining," as recited in claim 1 and similarly recited in claims 8 and 15. Br. 6-7. Specifically, Appellants argue Scragg does not disclose "transmitting [the] reason for the pre-emptive declining to the merchant bank." Id. at 6. As an initial matter, we note that the Examiner initially rejected the claims under 35 U.S.C. Â§ 102(b) as anticipated by Scragg and under 35 U.S.C. Â§ 103(a) as obvious over Scragg in the Final Office Action (Final 6 Appeal2017-005745 Application 13/748,939 Act. 3, 12-13; Adv. Act. 2) but subsequently withdrew the 35 U.S.C. Â§ 103(a) rejection over Scragg in the Answer (Ans. 2). Accordingly, our consideration of the Examiner's findings and conclusions is constrained by the law of anticipation, which strictly requires "each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,631 (Fed. Cir. 1987). In light of this consideration, we are persuaded by Appellants' arguments. The Examiner relies on (Final Act. 4; Ans. 13-14) Scragg's disclosure that, "[i]f a transaction matches the criteria of a flash fraud rule, the server computer system 200(a) is configured to deny the transaction and to report the transaction as a fraudulent transaction" (Scragg ,r 35; see Scragg ,r 61, Fig. 5). However, the Examiner has not identified where, or clearly explained how, Scragg discloses that the fraud is reported, i.e., transmitted, to "the merchant bank." That is, although Scragg discloses reporting fraudulent transactions, the Examiner does not identify where Scragg expressly states where, or to what entity, that fraud is reported. Nor has the Examiner explained why one of ordinary skill in the art would have understood that Scragg discloses that its fraud report is transmitted to another entity. The Examiner additionally relies on (Ans. 14; Final Act. 11-12) Scragg's description that, "[i]f the transaction meets scrutiny, then the transaction is approved in step 740. In step 745, transaction event data of the consumer is updated to the cardholder database 200( b) to include the events of the processed transaction" (Scragg ,r 64). However, that portion of Scragg describes updating the database when the transaction is approved, 7 Appeal2017-005745 Application 13/748,939 rather than updating the database when the transaction is declined; the flowchart accompanying that description illustrates that the database is updated when transactions are not declined. See Scragg Fig. 5. We are constrained by the record, therefore, to find the Examiner has not shown Scragg discloses "transmitting to the merchant bank, via the computer network, a reason for the pre-emptive declining," as recited in claim 1 and similarly recited in claims 8 and 15. Further, because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. See Br. 6-7. Based on the foregoing, we do not sustain the rejection of claims 1-6, 8-13, and 15-20 under 35 U.S.C. Â§ 102(b). Our reversal should not be taken as an indication of allowability or non-obviousness. Whether an ordinarily skilled artisan would have found it obvious to transmit the fraud report to a merchant bank is not a question before us because the Examiner has not made those conclusions; we will not speculate in that regard here in the first instance on appeal. DECISION We affirm the Examiner's decision rejecting claims 1-6, 8-13, and 15-20 under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. We reverse the Examiner's decision rejecting claims 1---6, 8-13, and 15-20 under 35 U.S.C. Â§ 102(b) as being anticipated by Scragg. 8 Appeal2017-005745 Application 13/748,939 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 9