Ex Parte Patterson et al

Patent Trial and Appeal Board

Jul 26, 2017

12358790 (P.T.A.B. Jul. 26, 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.
12/358,790 01/23/2009 Barbara Patterson 80083-792208(078110US) 3180
66945 7590 07/28/2017
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHEIN, ALLEN C
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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 BARBARA PATTERSON, KELLY ALPERT,
JENNIFER SCHULZ, and STACY POURFALLAH
Appeal 2016-003619
Application 12/358,790
Technology Center 3600
Before ALLEN R. MacDONALD, KARA L. SZPONDOWSKI, and
SHARON FENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 32—55. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-003619
Application 12/358,790
STATEMENT OF THE CASE
Appellants’ invention is directed to a system and method for
conducting transactions with a financial presentation device linked to
multiple accounts. Spec. Tflf 2, 6. Claim 32, reproduced below, is
representative of the claimed subject matter:
32. A method comprising:
receiving a first authorization request for a first financial
transaction, the first authorization request being initiated by a first
merchant computer at a first point of sale in response to a presentation
of a financial presentation device at the first point of sale;
determining, by at least one computer processor, whether a
primary account number in the first authorization request is associated
with multiple financial accounts;
selecting, by the at least one processor, a primary account of the
multiple financial accounts based on the primary account number in
the received first authorization request and a set of predetermined
rules for determining which of the multiple financial accounts is to be
used to conduct financial transactions;
forwarding the first authorization request, without modifying
the primary account number in the first authorization request, to a first
issuer of the primary account;
receiving a first authorization response from the first issuer;
forwarding the first authorization response, without modifying
the primary account number in the first authorization response, to the
first merchant;
receiving a second authorization request for a second financial
transaction, the second authorization request being initiated by a
second merchant computer at a second point of sale in response to a
presentation of the financial presentation device at the second point of
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sale, the second authorization request having the primary account
number therein;
selecting, by the at least one processor, a secondary account of
the multiple financial accounts based on the primary account number
in the received second authorization request and the set of
predetermined rules;
replacing the primary account number in the second
authorization request with a financial account identifier associated
with the secondary account; and then
sending the second authorization request with the replaced
financial account identifier to a second issuer of the secondary
account;
receiving a second authorization response from the second
issuer;
determining that the second authorization request message and
the second authorization response message are associated with the
same transaction utilizing a first unique pairing identifier in the
second authorization request message and a second unique pairing
identifier in the second authorization response message;
in response to the determining that the second authorization
request message and the second authorization response message are
associated with the same transaction, replacing the financial account
identifier associated with the secondary account in the second
authorization response with the primary account number in the second
authorization request; and then
sending the second authorization response with the primary
account number to the second merchant.
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REJECTIONS
Claims 32—55 stand rejected under 35U.S.C. § 101 as directed to
nonstatutory subject matter.
Claims 32—36, 42-47, 51, and 53—55 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Zacharias (US
6,494,367 Bl; issued Dec. 17, 2002), Flitcroft et al. (US 7,571,142 Bl;
issued Aug. 4, 2009) (“Flitcroft”), Ball et al. (US 7,831,521 Bl; issued Nov.
9, 2010) (“Ball), Macklin et al. (US 6,732,919 B2; issued May 11, 2004)
(“Macklin”), and Rago (US 5,089,954; issued Feb. 18, 1992).
Claim 52 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zacharias, Flitcroft, Ball, Macklin, Rago, and Official
Notice.
Claims 37, 38, 48, and 49 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Zacharias, Flitcroft, Ball,
Macklin, and Patterson et al. (US 2008/0010096 Al; issued Jan. 10, 2008)
(“Patterson”).
Claims 39 and 50 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zacharias, Flitcroft, Ball, Macklin,
Patterson, and Appellants’ Admitted Prior Art (“AAPA”).
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zacharias, Flitcroft, Ball, Macklin,
Patterson, and Curtiss et al. (US 5,712,629; issued Jan. 27, 1998)
(“Curtiss”).
Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zacharias, Flitcroft, Ball, Macklin,
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Patterson, Curtiss, and Dibiasi et al. (US 2007/0203757 Al; published Aug.
30, 2007).
ANALYSIS
35 U.S.C. § 101 Rejections
Issue 1: Did the Examiner err in finding claims 32—55 are directed to
nonstatutory subject matter?
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 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.
In the first step, “[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
The Examiner concludes the claims “are directed to selecting a card
for a [point of sale] transaction, a fundamental economic practice.” Final
Act. 10 ; see Final Act. 3 (“[t]he [EJxaminer considers the claimed card
selection and processing to be one abstract idea”). The Examiner also
concludes “[e]very person who has more than one payment card engages in
this mental process when making a purchase, if only selecting their primary
card.” Ans. 4.
Appellants argue the Examiner’s findings are “based on an
oversimplification of the claims that ignores most of the features of the
independent claims.” App. Br. 6; Reply Br. 3-A. Appellants further argue
“the Examiner provides no more than conclusory statements” and “the
claims cannot encompass a ‘fundamental economic practice’ when the
Examiner cannot even establish that the concept defined by the claims as a
whole can be found in many prior art references.” App. Br. 7.
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We agree with the Examiner that claims 32—55 are directed to the
abstract idea of selecting a card for a point of sale transaction, a fundamental
economic practice. See Final Act. 3,10; Ans. 4. Although the claim
language includes more words than the phrase the Examiner used to
articulate the abstract idea, this is an insufficient reason to persuasively
argue the claims are not directed to an abstract idea. Cf. Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016) (“An abstract
idea can generally be described at different levels of abstraction. As the
Board has done, the claimed abstract idea could be described as generating
menus on a computer, or generating a second menu from a first menu and
sending the second menu to another location. It could be described in other
ways, including, as indicated in the specification, taking orders from
restaurant customers on a computer.”).
Moreover, Appellants have not provided explanation contrary to the
Examiner’s findings that the claims are a fundamental economic practice or
adequately shown the claims are not directed to an abstract idea. We are
persuaded that the claims are “directed to” a fundamental economic practice,
in that it is much like the concept of intermediated settlement in Alice and
the concept of risk hedging in Bilski v. Kappos, 561 U.S. 593 (2010), and,
thus, is an abstract idea beyond the scope of § 101. See Alice, 134 S. Ct. at
2356; Bilski, 561 U.S. at 611; see also Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass % 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(explaining claims directed to “the mere formation and manipulation of
economic relations” and “the performance of certain financial transactions”
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Appellants further argue the claims “are subject to a streamlined
eligibility analysis, because the claims do not seek to tie up any judicial
exception.” App. Br. 8. According to Appellants, “[claim 32] does not ‘tie
up’ any and all ways to ‘select a card for a [point of sale] transaction.’”
App. Br. 10; see Reply Br. 4—5. Appellants’ preemption argument does not
alter our § 101 analysis. We find that this argument is adequately addressed
by the remainder of the Alice analysis. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.”); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362—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.”).
In the second step of Alice, 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., 132 S. Ct. 1289, 1297—98 (2012)). In other
words, the second 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. (quoting Mayo, 132 S. Ct. at 1294).
With regard to step 2, the Examiner concludes the claims “do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because they amount to no more than:
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implementation of the idea on a general purpose computer system.” Final
Act. 10.
Appellants argue the last three limitations in claim 32 are “not well-
understood, routine and conventional in the field.” App. Br. 11—12.
Appellants further argue “the recited claim elements clearly improve the
functioning of a generic computer system.” Id. at 12. Relying on DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
According to Appellants, “the problems to be solved relates to routing
payment transactions to appropriate issuers and providing responses in a
computing environment.” Id.\ see Reply Br. 5—6. Additionally, because
“the Examiner relies on no less than five prior art references,” Appellants
assert “the features of the claims could not possibly be well-understood,
routine, and conventional.” App. Br. 12—13.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s findings and conclusions. See Final Act. 3-4, 10; Ans. 5..6.
Although the second step in the Alice/Mayo framework is termed a search
for an “inventi ve concept,” the analysis is not an evaluation of novelty or
non-obviousness, but rather, a search for “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.’” Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo 132 S. Ct. at 1301,
1304; Parker v. Flook, 437 U.S. 584, 588—595 (1978). Appellants’
arguments regarding the number of references relied upon by the Examiner
in the obviousness analysis, therefore, are not persuasive. no vi of
any element or steps in a process, or even of the process itself, is of no
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relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter,” Diamond v.
Diehr, 450 U.S. 175, 188—89 (1981); see also Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”).
Appellants have not adequately explained how the claims are
performed such that they are not routine, conventional functions of a generic
computer. The functionality performed in the claims, i.e., receiving,
processing, and sending data, are routine, conventional, and well-known
functions, and require nothing more than a generic computer performing
generic computer functions.
We agree with the Examiner that the limitations amount to no more
than “implementation of the idea on a general purpose computer system.”
Final Act. 10; see Ans. 4. Appellants have not directed us to any indication
in the record that any specialized computer hardware or other ‘inventive’
computer components are required. See Spec. 37-42, Fig. 2. Rather than
reciting additional elements that amount to “significantly more” than the
abstract idea, the pending claims, at best, add only a “computer,”
“processor,” and/or “memory,” i.e., generic components (see Spec. If]} 37..
39, Fig. 2), which do not satisfy the inventive concept. See, e.g., DDR
Holdings, 773 F.3d at 1256 (internal quotation marks omitted) (“[Ajfter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. The bare feet
a computer exists in the physical rather than purely conceptual realm is
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beside the point.”). Nor have Appellants adequately shown why the claim
elements “clearly improve the functioning of a generic computer system.”
Moreover, contrary' to Appellants’ arguments (App. Br. 12), the
claims at issue here are not like the claims at issue in DDR Holdings. The
claims in DDR Holdings were directed to retaining website visitors, and in
particular to a system that modified the conventional web browsing
experience by directing a user of a host website who clicks an advertisement
to a “store within a store” on the host website, rather directing the user to an
advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257—1258.
The Court determined “the claims address a business challenge (retaining
website visitors) [that] is a challenge particular to the Internet.” Id. at 1257.
The Court also determined that the invention was “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” and that the claimed invention did not
simply use computers to serve a conventional business purpose. Id. Rather,
there was a change to the routine, conventional functioning of Internet
hyperlink protocol. Id.
Here, as the Examiner points out (Ans. 6), selection of a card for a
point of sale transaction and processing the transaction is not a challenge
particular to computer networks, nor is it necessarily rooted in computer
technology. See also Spec. H 4—6. Rather, it is an implementation on
generic computer components of the abstract idea itself. Even accepting
Appellants’ assertion that the claims address a challenge particular to
computer networks, we are not persuaded that they do so by achieving a
result that overrides the routine and conventional use of the recited devices
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and functions. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—718
(Fed. Cir. 2014).
We have also considered Appellants’ argument that the claims of the
Zacharias patent “indicate] that the subject matter of the current patent is
actually patent eligible.” Reply Br. 4. The Court of Customs and Patent
Appeals, predecessor court to the Court of Appeals for the Federal Circuit,
held that “[e]ach case is determined on its own merits. In reviewing specific
rejections of specific claims, this court does not consider allowed claims in
other applications or patents.” In re Gyurik, 596 F.2d 1012, 1018 n.15
(CCPA 1979) (citations omitted). Accordingly, we will not consider the
allowed claims in other patents when determining whether the present
claims are directed to non-statutory subject matter.
The claims when viewed as whole are nothing more than performing
conventional processing functions that courts have routinely found
insignificant to transform an abstract idea into a patent-eligible invention.
As such, the claims amount to nothing significantly more than an instruction
to implement the abstract idea on a generic computer, which is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360. Therefore, we are not persuaded the Examiner erred in rejecting
claims 32-55 under 35 U.8.C. § 101.
35 U.S.C. § 103(a) Rejections
Issue 2\ Did the Examiner err in combining Zacharias, Flitcroft, Ball,
Macklin, and Rago?
The Examiner finds “[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to combine Zacharias with
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the card remapping of Flitcroft with the motivation of reducing fraud.” Final
Act. 17—18; see also Ans. 8.
Appellants argue “there is no rational underpinning to support the
legal conclusion of obviousness.” App. Br. 14. Specifically, Appellants
argue “one would not have combined Zacharias with Flitcroft in the manner
proposed by the Examiner, because the proposed modification would have
made the primary reference unsatisfactory for its intended purpose and the
modification is not rational.” Id. at 13. According to Appellants,
if one were to substitute Flitcroft’s limited use credit card
number for Zacharaias’ [sic] Supracard, this would result in a
‘limited use Supracard’ which would be completely contrary to
the purpose of the Supracard, which is to have a single static
card which can be linked to a number of secondary accounts.
Id. at 14. Appellants argue because “the Supracard number [in Zacharias] is
already secure ... it would not make sense to make the Supracard number a
limited use card number [as in Flitcroft.]” Id. at 15.
We are not persuaded by Appellants’ arguments because they do not
persuasively address the Examiner’s rejection. The Examiner relies on
Flitcroft for its account number remapping and proposes modifying
Zacharias with the account number remapping. Final Act. 17—18; see also
Ans. 8. The Examiner’s rejection is not based upon a substitution of
Flitcroft’s limited use credit card number for Zacharias’ Supracard, but
rather on the combined teachings of the references, ft is well established
that the obviousness inquiry does not ask “whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425
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(CCPA 1981). Appellants have not shown that combining the prior art was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418-419 (2007)). We find that the
Examiner has articulated how the claimed features are met by the proposed
combination of the reference teachings with some rational underpinning,
consistent with the guidelines stated in KSR. See Final Act. 17—18; Ans. 8.
Appellants further argue “the Examiner has made an inconsistent
mapping.” App. Br. 15. Specifically, Appellants argue the Examiner “is
simultaneously mapping the primary account number to a ‘standard credit
card’ of Macklin and to a ‘limited use’ card of Flitcroft depending on what
mapping best fits his argument at the time.” Id. at 16; see Reply Br. 6—7.
We are not persuaded by Appellants’ arguments. Despite the
differing terminology used in the references, Flitcroft and Macklin are both
referring to a primary account. See Flitcroft, col. 24,11. 64—66 (“the
additional credit card number would be matched to the customer account and
the account would be debited accordingly”); col. 27,11. 12—19 (“a database
look-up procedure determines the associated master account number and
transmits the number (i.e. the master account number) back into the
processing system . . . Once the master account number is substituted for the
limited use number a number of additional steps are required.”); Macklin,
col. 3,11. 64—65 (“has selected an American Express® credit card 305 as the
primary credit card”); Fig. 3.
With respect to the Examiner’s proposed combination of Macklin
with the other references, Appellants argue “making this modification would
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defeat the primary purpose of Zacharias” because “Zacharias’ system must
modify the Supracard number with the consumer’s selected account number
by using a card translator, or else it will not work.” App. Br. 16.
The Examiner finds “it would have been obvious to one of ordinary
skill in the art at the time the invention was made to combine the references
with the primary multi use card of Macklin with the motivation of reducing
the number of credit cards carried.” Final Act. 19. The Examiner further
finds:
Simply substituting the Supracard [of Zacharias] with an
actual primary card with associated primary account as taught
by Macklin would achieve a system where both the primary
account could be used directly or secondary accounts could be
used instead. Presumably, the primary account could be the
consumer’s selected account or a default of choice.
Ans. 12.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s findings. See Ans. 12. Zacharias is directed to “[a] multi­
application card for providing secure access to multiple card accounts.”
Zacharias Abstract. As such, we are not persuaded substituting a primary
account number for the Supracard number of Zacharias would defeat this
primary purpose. See Ans. 12. Moreover, we find that the Examiner has
articulated how the claimed features are met by the proposed combination of
the reference teachings with some rational underpinning, consistent with the
guidelines stated in KSR. See Final Act. 19; Ans. 12.
With respect to the Examiner’s proposed combination of Rago with
the other references, Appellants argue such a modification would “also
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defeat the intended purpose of Zacharias’ system as it would make
Zacharias’ card translator 225 obsolete.” App. Br. 17.
Zacharias’ card translator “manages the database of Supracard
information.” Zacharias, col. 4,11. 52—53; col. 8,11. 32-42. We agree with
the Examiner that Appellants have not sufficiently explained “why matching
messages with identifiers would be incompatible with card translation.” See
Ans. 13. Accordingly, with respect to Rago, we also find the Examiner has
articulated how the claimed features are met by the proposed combination of
the reference teachings with some rational underpinning, consistent with the
guidelines stated in KSR. See Final Act. 20-21; Ans. 12.
Issue 3: Did the Examiner err in finding the combination of
Zacharias, Flitcroft, Ball, Macklin, and Rago teaches or suggests
determining that the second authorization request message and
the second authorization response message are associated with
the same transaction utilizing a first unique pairing identifier in
the second authorization request message and a second unique
pairing identifier in the second authorization response message;
[and] in response to the determining that the second
authorization request message and the second authorization
response message are associated with the same transaction,
replacing a financial account identifier associated with the
secondary account in the second authorization response with the
primary account number in the second authorization request;
and then sending the second authorization response with the
primary account number to the second merchant,
as recited in independent claim 32 and commensurately recited in
independent claims 42 and 43?
Appellants argue “even assuming, arguendo, that the ‘transaction
identifier’ in Rago is a ‘pairing identifier,’ it is not present in an
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‘authorization request message’ and an ‘authorization response message,’
and it is certainly not used to determine if an account number should be
placed in an authorization response message.” App. Br. 18. Appellants
further argue “[t]here is no disclosure in the combination of Zacharias and
Rago of replacing a secondary account number with a primary account
number in an authorization response message in response to determining that
unique pairing identifiers in authorization request and response messages are
associated with the same transaction.” Id. at 19. Appellants also argue
Flitcroft does not teach or suggest “replacing a financial account identifier
associated with the secondary account in the second authorization response
with the primary account number in the second authorization request; and
then sending the second authorization response with the primary account
number to the second merchant,” because “the ‘limited use’ credit card
number of Flitcroft cannot be a real credit card number and the primary
account number recited in claim 32 must be a real account number.” Id.
We are not persuaded by Appellants’ arguments because they do not
address the combination of references as relied upon by the Examiner. See,
e.g., Final Act. 11—21; Ans. 8—14. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Appellants attack the references in isolation, or
in groups of two, while failing to persuasively address the combination of
references the Examiner relies upon.
For example, the Examiner relies on Zacharias to teach or suggest
“sending the second authorization request...” and “receiving a second
authorization request. . . .” Final Act. 14. Rago is relied upon to teach or
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suggest using a unique identifier for matching request/response messages.
Final Act. 20; Ans. 14. Therefore, Appellants’ argument that Rago’s
identifier “is not present in an ‘authorization request’ message’ and an
‘authorization response message’” (App. Br. 18) is not persuasive because it
is not responsive to the Examiner’s rejection because it ignores the
Examiner’s reliance on Zacharias.
The Examiner also relies on Zacharias to teach or suggest “replacing
the financial account identifier associated with the secondary account in the
second authorization response with the primary account number in the
second authorization request.” Final Act. 13. However, the Examiner also
relies on Flitcroft to teach or suggest that portion of the limitation, as well as
the latter portion of the limitation, “in response to the determining that the
second authorization request message and the second authorization response
message are associated with the same transaction.” Final Act. 16—18.
Therefore, Appellants’ argument that “[tjhere is no disclosure in the
combination of Zacharias and Rago of replacing a secondary account
number with a primary account number in an authorization response
message in response to determining that unique pairing identifiers in
authorization request and response messages are associated with the same
transaction” is not persuasive because it ignores the inclusion of Flitcroft in
the combination. App. Br. 19. Similarly, Appellants’ arguments that Rago’s
identifier “is certainly not used to determine if an account number should be
placed in an authorization response message” is not persuasive because it
does not address the Examiner’s reliance on Zacharias and Flitcroft. App.
Br. 18. Likewise, Appellants’ arguments that Flitcroft does not teach or
suggest “replacing the financial account identifier associated with the
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secondary account in the second authorization response with the primary
account number in the second authorization request; and then sending the
second authorization response with the primary account number to the
merchant,” ignores the Examiner’s reliance on Zacharias. App. Br. 19.
Given the disclosures relied upon by the Examiner in Zacharias,
Flitcroft, and Rago, we agree with the Examiner (Final Act. 11—21; Ans. 8—
14) that these references, as combined by the Examiner, teach or suggest the
disputed limitations. See Keller, 642 F.2d at 425 (“the test [for obviousness]
is what the combined teachings of [the] references would have suggested to
those of ordinary skill in the art.”)
Issue 4\ Did the Examiner improperly use hindsight?
Appellants contend “improper hindsight was used to reject the present
claims.” App. Br. 19—22. Appellants argue “the Examiner cannot
reasonably conclude that one would have taken the tortuous path set forth
above with ‘only’ knowledge of the person of ordinary skill in the art, and
without looking at Appellants’ disclosure.” Id. at 22.
Appellants’ arguments are not persuasive because Appellants do not
identify, nor do we discern, any knowledge that the Examiner relied upon
that was gleaned only from Appellants’ disclosure and that was not
otherwise within the level of ordinary skill at the time of the invention.
Thus, the Examiner is correct to note that so long as a conclusion of
obviousness is based on a reconstruction that “takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from [Appellants’] disclosure, such a reconstruction is proper.” Ans. 6—7
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(citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). Moreover, the
number of references relied upon by the Examiner in the obviousness
rejection is not pertinent to the analysis. See In re Gorman, 933 F.2d 982,
986 (Fed. Cir. 1991) (affirming obviousness rejection over thirteen
references) (“The criterion ... is not the number of references, but what they
would have meant to a person of ordinary skill in the field of the
invention.”).
Accordingly, for all of the foregoing reasons (Issues 2-4), we are not
persuaded the Examiner erred in rejecting independent claims 32, 42, and 43
under 35 U.S.C. § 103(a), and, therefore, sustain those rejections.
Appellants do not separately argue dependent claims 33—38, 40, 41, 44-49,
51, and 53-55, so we sustain the Examiner’s 35 U.S.C. § 103(a) rejections
of those claims for the same reasons.
Issue 5: Did the Examiner err in taking Official Notice that
“sequential values,” as recited in claim 52 are old and well known in the art?
Claim 52 recites “The method of claim 32 wherein the first unique
pairing identifier and the second unique pairing identifier are sequential
values.” The Examiner finds it is “old and well known to uniquely identify
items with sequential values.” Final Act. 31.
Appellants contend “in response to Appellants’ traversal of the taking
of Official Notice, the Examiner has provided absolutely no documentary
evidence that the feature in dependent 52 is actually well known in the prior
art.” App. Br. 23. Appellants further argue “[t]he facts which the Examiner
asserts are well-known, are not capable of instant and unquestionable
demonstration as being well-known, and without being provided a proper
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basis for assessing the Official Notice, Appellants have not been given the
opportunity to properly traverse the rejection.” Id. at 24.
We are not persuaded. Rather, we agree with the Examiner that
Appellants did not adequately traverse the officially noticed facts in their
response dated February 2, 2015. See Ans. 15. MPEP 2144.03 requires that
“[t]o adequately traverse such a finding, an applicant must specifically point
out the supposed errors in the examiner’s action, which would include
stating why the noticed fact is not considered to be common knowledge or
well known in the art.” Appellants simply stated “Applicants traverse the
taking of Official Notice and request that a reference be supplied to support
the Examiner’s allegation.” February 2, 2015 Response, 23; see also Ans.
15. An adequate traverse must “contain adequate information or argument
so that on its face it creates a reasonable doubt regarding the circumstances”
justifying Examiner’s notice of what is well known to one of ordinary skill
in the art. See In re Boon, 439 F.2d 724, 728 (CCPA 1971). Therefore, we
are not persuaded the Examiner’s reliance on Official Notice is improper.
Accordingly, we are not persuaded the Examiner erred in rejecting
dependent claim 52 under 35 IJ.8.C. § 103(a), and, therefore, sustain those
rejections.
Issue 6: Did the Examiner err in finding the combination of
Zacharias, Flitcroft, Ball, Macklin, Rago, and AAPA teach or suggest
“wherein the set of predetermined rules comprises a condition that all
transactions for travel and restaurant services be conducted using the
primary account,” as recited in dependent claims 39 and 50?
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The Examiner finds the references do not explicitly teach restaurant
services, but is obvious in view of AAPA, which “teaches that restaurant
services are old and well known as a source of payment transactions.” Final
Act. 35. The Examiner further finds Ball generally speaks to tying a specific
account to a specific transaction type. Final Act. 35; see Ball, col. 4,11. 47—
54. Accordingly, the Examiner finds it is “well within the design choice of
one of ordinary skill to choose the same account to pay for more than [one]
service.” Final Act. 35. Further, the Examiner finds “[a]ll the claimed
elements were known in the prior art and one of ordinary skill in the art at
the time of the invention could have combined the elements as claimed by
known methods with no change in their respective functions, and the
combination would have yielded predictable results.” Final Act. 35—36.
Appellants argue “a ‘design choice’ is a conclusion and is not a reason
why the skilled artisan would have modified the prior art in the manner
proposed by the Examiner.” App. Br. 25.
We are not persuaded by Appellants’ arguments. As set forth by the
Examiner, Ball teaches predetermined rules for tying a specific account to a
specific transaction type. E.g., Ball, col. 4,1. 42 (“for merchant B, use
checking account to get [a] discount”); col. 4,11. 51—52 (“for airline tickets,
use checking account; otherwise use credit card A”), col. 4,1. 53 (“for gas,
use credit card A; otherwise use credit card B”). Although Ball does not
explicitly describe rules defining restaurant services, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR, 550
U.S. 398 at 421. Appellants have not presented persuasive explanation or
evidence to show that including restaurant services would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
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“represented an unobvious step over the prior art.” Leapfrog, 485 F.3d at
1162 (citing KSR, 550 U.S. at 418-19).
Accordingly, we are not persuaded the Examiner erred in rejecting
dependent claims 39 and 50 under 35 U.S.C. § 103(a), and, therefore, sustain
those rejections.
DECISION
The Examiner’s 35 U.S.C. § 101 rejection of claims 32—55 is
affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 32—55 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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