Ex Parte Powell

Patent Trial and Appeal Board

Sep 21, 2018

13953016 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/953,016 07/29/2013
126944 7590 09/25/2018
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Jonathan R. Powell
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.
37537.0013Ul- 6224
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN R. POWELL
Appeal2016-008498 1
Application 13/953,0162
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL R. ZECHER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellant's Appeal Brief ("Br.," filed
February 16, 2016) and Specification ("Spec.," filed July 29, 2013), and the
Examiner's Answer ("Ans.," mailed June 30, 2016) and Final Office Action
("Final Act.," mailed June 16, 2015).
2 Appellant identifies MasterCard International Incorporated as the real party
in interest. Br. 2.
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CLAIMED INVENTION
Appellant describes that the claimed invention generally relates to
financial services and, more particularly, to enabling an immediate online
credit return refund transaction. Spec. ,r 1.
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An online return payment card network method
compnsmg:
receiving from a merchant or acquirer, via a network
interface, a credit reversal message, the credit reversal message
containing an account number for the reversal transaction and
original purchase transaction details with a merchant;
verifying, with an issuer of an account associated with the
account number via the network interface, that the account is in
good standing;
comparing, with a processor, certain details in the credit
reversal message and the original purchase transaction details
stored by the payment card network; [ and]
sending, via the network interface, a credit reversal to the
issuer when the account is verified in good standing, and certain
details in the credit reversal message and the payment card
network's original purchase transaction details match or are
otherwise accepted.
REJECTIONS
Claims 1-24 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter (i.e., they are directed to a judicial exception
without significantly more).
Claims 1-3, 7-9, 13-15, 21, and 24 are rejected under 35 U.S.C.
§ 103 as unpatentable over Kumamoto (US 2003/0163424 Al, pub. Aug. 28,
2003) and Rowen (US 2011/0238510 Al, pub. Sept. 29, 2011).
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Claims 4, 10, 16, 22, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Kumamoto, Rowen, and Katz (US 2010/0161457 Al,
pub. June 24, 2010).
Claims 5, 6, 11, 12, 17, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Kumamoto, Rowen, Katz, and Starr (US 7,428,988 B 1,
iss. Sept. 30, 2008).
Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Kumamoto, Rowen, and McGlinn (US 2002/0152134 Al, pub. Oct. 17,
2002).
Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over
Kumamoto, Rowen, and Starr.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
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directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the U.S. Court of
Appeals for the Federal Circuit has instructed that claims are to be
considered in their entirety to determine "whether their character as a whole
is directed to excluded subject matter." McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "a series of steps
instructing how to handl[ e] credit returns of products or services," the series
of steps including "receiving," "verifying," "comparing," and "sending."
Final Act. 6 ( emphasis omitted). The Examiner determined that instructing
how to handle credit returns is similar to concepts that the courts have found
to be directed to an abstract idea, such a fundamental economic practice and
a method of organizing human activities. Id. The Examiner also determined
that the claims only recite generic computer elements and, therefore, they do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception. Id. at 6-7.
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Appellant argues that the§ 101 rejection cannot be sustained because
the Examiner mischaracterizes and overgeneralizes the claimed subject
matter. Br. 7. In particular, Appellant asserts that the claimed invention is
not directed to an abstract idea of handing credit returns of goods and
services, but instead is directed to "a very technical method and system for
enabling an immediate online credit refund transaction, by the payment card
network apparatus." Id.; see also id. at 8-10 (arguing "[t]he claims are not
'directed toward' an abstract idea"). Appellant contends that "the claimed
invention solves the technical limitation of the conventional return process."
Id. ( emphasis omitted); see also id. at 9 ( explaining that the conventional
return process prevents the instantaneous return of a customer's credit).
Yet, the question at step one is not whether the claimed invention is
technical. Instead, at step one, we consider whether the "focus of the
claims" is on a "specific asserted improvement in computer capabilities ... ,
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016). Here, claim 1 recites a method for
processing a credit reversal associated with a payment card that includes
four steps: (1) receiving a credit reversal message; (2) verifying that the
account is in good standing; (3) comparing details in the credit reversal
message and original purchase transaction; and ( 4) sending a credit reversal
when the account is in good standing and the details are acceptable. Claims
7 and 13 are apparatus and computer-readable storage medium claims,
respectively, that recite language similar to claim 1.
Appellant's Specification makes clear that the claims focus on
improving a process for card returns that conventionally relied upon batch
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processing. For example, the Background section of Appellant's
Specification provides that card returns are processed in a batch submission
process, which "results in cardholders typically waiting days for a return
credit to post to their account balance." Spec. ,r 3. Because of the delay,
cardholders approaching their credit limit cannot make additional purchases
while waiting for the credit return to post. Id. ,r 4. "[C]ardholder inquiries
on purchase returns are the single most prevalent customer service issue."
Id. To address this business problem, Appellant's claimed invention seeks
to enable an "immediate online credit refund transaction." Id. ,r 15.
Whether labeled as a fundamental, long-prevalent practice or a well-
established method of organizing human activity, processing card returns
qualifies as an abstract idea. See also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (holding that a
claim whose "steps can be performed in the human mind, or by a human
using a pen and paper" is directed to an "unpatentable mental process[]");
Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) ("[p]atent law
does not protect claims to an 'asserted advance in the realm of abstract ideas
... no matter how groundbreaking the advance."') ( citation omitted).
Appellant argues that the pending claims are analogous to subject
matter presented in the Office's January 2015 Guidance, 3 Example 2, which
is modeled after the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). Br. 9. Specifically, Appellant asserts that the
claims are "useful for 'handling credit returns of products or services,' [but]
3 See Examples: Abstract Ideas (Jan. 2015) (available at
https ://www. uspto. gov/ sites/ default/files/ documents/ abstract_idea_examples
.pdf) (hereinafter "Jan. 2015 Examples")
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they are not solely directed to such an objective" because they overcome a
problem with the conventional return process in which instantaneous return
of a customer's credit was prevented. Id. Appellant additionally contends
that the claims are like those in DDR Holdings, because the claims "neither
recite a mathematical algorithm nor a fundamental or longstanding
commercial practice." Br. 10 ("[ t ]here is nothing fundamental about a
method of immediately processing a credit reversal").
Yet, Appellant cannot reasonably deny that credit return processing is
a longstanding practice in our system of commerce, nor that the recited steps
( e.g., "receiving," "verifying," "comparing," and "sending") can be
performed by a human. Unlike the situation in DDR Holdings, Appellant's
claimed invention is not "necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks." DDR Holdings, 773 F.3d at 1257. Instead, Appellant's claims
address a problem arising in the realm of the abstract - credit return
processing. Also unlike the situation in DDR Holdings, there is no
indication that Appellant's claims change the routine, conventional
functioning of computer networks. See id. ( determining that the claims
changed the routine, conventional functioning of Internet hyperlink
protocol). Instead, Appellant's claimed invention improves upon
conventional processing for credit returns - processing that is itself abstract
-to avoid the use of batch credit return submission and, thereby, avoid its
associated delays.
Appellant argues that "the claims require implementation by
computing devices as they are dependent upon data files associated with
computing systems indicative of a payment network." Br. 9. Appellant
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further argues that "the present claims are not useful outside of the
computer-implemented environment to which they are directed and require
particular programming and specified communication between multiple
computer devices to be carried out." Id. at 10. Yet, "after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible." DDR Holdings, 773 F.3d at
1256. Moreover, limiting the use of an abstract idea to a particular
technological environment is not enough to impart patent eligibility. Alice,
134 S. Ct. at 2350.
Appellant asserts that, even if the claims are directed to an abstract
idea, they include additional limitations, "such as using a processing server
having a microprocessor and network interface," and "the physical actions of
receiving and transmitting data from the system." Br. 11. Yet, these
limitations, whether considered individually or as an ordered combination,
do not supply even an arguably inventive concept that ensures the patent
amounts to significantly more than a patent upon the ineligible concept
itself. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016) ("invocations of computers and networks that are not even
arguably inventive are 'insufficient to pass the test of an inventive concept in
the application' of an abstract idea") ( citation omitted); see also id.
("selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas").
Appellant argues that the claims are akin to Example 21 because the
recitations "facilitate a new manner in which data can be distributed via
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methods and systems rooted in computer technology." Br. 11 (citing the
Office's July 2015 Guidance,4 Example 21). Example 21 describes a
hypothetical claim 1 as patent-ineligible, and a hypothetical claim 2 as
patent-eligible. July 2015 Guidance 2-3. Appellant does not specify which
claim( s) from Example 21 the present claims allegedly resemble. See Br. 11
("the present claims are similar to ... Example 21 "). But we treat the
argument as seeking to analogize the present claims to Example 21 's claim
2. See July 2015 Guidance 4--5.
We do not agree with Appellant that claim 2 of Example 21 is
analogous to the present claims. Claim 2 "recites a series of acts for
distributing stock quotes to selected remote devices." July 2015 Guidance 4.
Applying the first step of the Alice analysis, the Office's July 2015 Guidance
determines that steps of comparing and organizing data are a mental process,
similar to other concepts held by the courts to be abstract. Id. Turning to
the second step, the Office's July 2015 Guidance explains that some of the
additional limitations (e.g., storing subscriber preferences and transmitting
an alert), viewed individually, do not amount to significantly more than the
abstract idea. Id. However, when viewed as an ordered combination, the
claimed invention "amounts to significantly more than [ the abstract idea of]
organizing and comparing data" because it "addresses the Internet-centric
challenge of alerting a subscriber with time sensitive information when the
subscriber's computer is offline." Id. Specifically, it transmits an alert over
a wireless communication channel to activate the stock viewer application,
4 See July 2015 Update Appendix 1: Examples (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
appl.pdf).
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thereby causing the alert to display and enabling the subscriber's computer
to connect to the data source over the Internet when the remote subscriber's
computer comes online. Id. We are not persuaded that the present claims
address any comparable Internet-centric challenge. Instead, the claims more
closely resemble patent-ineligible claim 1 of Example 21, which recites
steps similar to those in claim 2 (e.g., receives, filters, generates, formats,
and transmits) but does not provide the stock viewer application. Id. at 2-3.
The Office's July 2015 Guidance describes claim 1 at step 2 as being
directed to a mental process (i.e., an abstract idea) that does not recite
additional limitations that impose meaningful limits thereon. Id. at 3--4.
We also are not persuaded of Examiner error by Appellant's argument
regarding preemption. Br. 12-13. There is no dispute that the Supreme
Court has described "the concern that drives [ the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption." Alice, 134 S. Ct.
at 2354. But characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). "[P]reemption may
signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility." Id.
Appellant argues that the claims are inextricably tied to "a computer-
implemented environment in order to overcome a problem that has arisen in
in refunding payment card transactions," analogous to the claims in DDR
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Holdings. Br. 14--16. However, we see no parallel to the claims at issue in
DDR Holdings for the reasons described above. Moreover, limiting the use
of the abstract idea to a particular technological environment ( e.g., a
computer-implemented environment) is insufficient to transform an
otherwise patent-ineligible abstract idea into patent-eligible subject matter.
See Alice, 134 S. Ct. at 2358; see also Elec. Power Grp., 830 F.3d at 1355
("the claims' invocation of computers, networks, and displays does not
transform the claimed subject matter into patent-eligible applications").
Appellant also argues that the claims "require specific programming,
[ and] the resulting computer would be a specific purpose computer" that
provides "improved functionality over a 'generic' computer." Br. 17 ( citing
In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994)). However, in EON
Corp. v. AT&T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015), the Federal
Circuit explicitly noted that "Alappat has been superseded by Bilski and
Alice Corp." Id. at 623 ( citations omitted). Here, there is no indication that
the claims require more than generic computer limitations. And, as the
Supreme Court made clear in Alice, the recitation of generic computer
limitations is not enough to transform an otherwise patent-ineligible abstract
idea into a patentable invention. See Alice, 134 S. Ct. at 2358.
Appellant argues that the present claims improve existing
technologies in that they "store, receive, identify, compare, and additionally
store very specific and sensitive information in a very specific manner in a
hardware-based system that has not been done before in the industry,"
analogous to the claims at issue in Diamond v. Diehr, 450 U.S. 175 (1981).
Br. 18. Yet, the claims in Die hr were directed to a process for curing
synthetic rubber, and recited a series of steps ( e.g., the loading of a mold
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with raw, uncured rubber, closing the mold, constantly determining the mold
temperature, constantly recalculating the cure time, and automatically
opening the press at the proper time) that, together, provided a significant
and novel practical application of the well-known Arrhenius equation and
transformed uncured synthetic rubber into a new state or thing. See Diehr,
450 U.S. at 184--87. Here, we find nothing in the claims analogous to
controlling a physical process that involves the transformation of an article
into a different state or thing, like the rubber molding process in Diehr.
Moreover, to the extent that Appellant argues that the Examiner erred
in determining that the claims do not require "significantly more" than the
abstract idea, because the limitations have not been done in industry,
Appellant misconstrues the law. It is not enough for subject-matter
eligibility that the claimed techniques be novel and non-obvious in light of
prior art. SAP America, Inc. v. Investpic LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018); see also Mayo, 566 U.S. at 90. Much like the claims at issue in
SAP, the claims here are ineligible because their innovation is in ineligible
subject matter. Id. ("No matter how much of an advance in the finance field
the claims recite, the advance lies entirely in the realm of abstract ideas, with
no plausibly alleged innovation in the non-abstract application realm."); see
also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty"). Appellant has not identified, and we do not find, any
plausible alleged innovation in the non-abstract realm.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that independent claims 1-24 are patent-
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ineligible. Accordingly, we sustain the Examiner's rejection of claims 1-24
under 35 U.S.C. § 101.
Obviousness
Independent Claims 1, 7, and 13, and Dependent Claims 2, 3, 8, 9, 14, 15,
20, 21, and 24
We are not persuaded by Appellant's argument that Kumamoto and
Rowen do not teach or suggest "sending, via the network interface, a credit
reversal to the issuer when the account is verified in good standing, and
certain details in the credit reversal message and the payment card network's
original purchase transaction details match or are otherwise accepted," as
recited in claim 1, and similarly recited in claims 7 and 13. Br. 19-20. The
Examiner maintains that the combined teachings of Kumamoto and Rowen
account for the argued limitation. Final Act. 8 ( citing Kumamoto ,r,r 27-28,
Rowen ,r 104); see also Ans. 7-8. Specifically, the Examiner determines
that Kumamoto teaches sending a credit reversal to the issuer when certain
details in the credit card reversal message and the payment card network's
original purchase transaction details match or are otherwise accepted. Id.
(finding Kumamoto ,r,r 27-28 teaches matching the transaction data,
compacting a refund amount to a transaction amount, and generating
electronic money data corresponding to the refund amount). The Examiner
acknowledges that Kumamoto does not describe verifying the account is in
good standing, and relies on Rowen for this teaching. Id. at 8.
Rowen provides a conventional payment card industry process for
authorizing card purchases. Rowen ,r 82, Fig. 1. The process includes, in
part, a merchant system transmitting an authorization request, which
includes purchase transaction data and payment card data, to the payment
card processor. Id. ,r 100. The payment card processor separates the
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authorization request data into purchase transaction data and payment card
data, and formats each for use in the payment card issuer's account
verification and fraud screening process data. Id. ,r 103. Payment card data
is used to verify that the card account is in good standing, and the amount of
purchase is compared to the payment card account's purchasing capacity to
verify whether the transaction can be approved from an account standpoint.
Id. ,I 104.
Appellant argues that Rowen teaches verifying whether a payment
account is in good standing as a step when authorizing a payment
transaction, not as a step during refund processing. Br. 20; see also id.
("Rowen does not address the concept of a reversal at all" and, thus, "fails to
disclose or suggest sending a credit reversal to the issuer when the account is
verified in good standing"). Yet, Kumamoto is relied on for a credit reversal
processing. See Final Act. 8 (citing Kumamoto ,r,r 27-28). Rowen is relied
on for additional information that is verified during an authorization process
- namely, account standing and whether a card transaction can be approved
from an account standpoint. Id. (citing Rowen ,r 104). Although Rowen's
verification occurs during authorization of a payment transaction instead of a
refund transaction, one of ordinary skill in the art would appreciate that
determining whether a card transaction can be approved from an account
standpoint ( e.g., the account is open) is a relevant consideration for both a
purchase transaction and a refund transaction.
Appellant argues that the Examiner relies on impermissible hindsight
reasoning to reject the claims over the combined teachings of Kumamoto
and Rowen. Br. 20-21. Specifically, Appellant contends that "[t]he
references themselves must provide some teaching whereby the applicant's
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combination would have been obvious," and Kumamoto and Rowen do not
provide any such teaching or motivation as to why one of ordinary skill in
the art would have combined Kumamoto' s system to generate electronic
money data with Rowen's purchase authorization method. Br. 21 (citing In
re Gorman, 933 F.2d 982 (Fed. Cir. 1991)). Yet, the Supreme Court made
clear in KSR that, when considering obviousness, "the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). In our view, the Examiner's proposed
modification of Kumamoto' s credit reversal process to further verify
whether a transaction can be approved from an account standpoint, as
disclosed Rowen, before sending a credit reversal to the issuer is no more
than a combination of prior art elements according to their established
functions, and yields a predictable result. See id. at 416 ("[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results").
Appellant argues that "the Rowen reference actually teaches away
from the claimed invention" because the verification is used for an
approve/ decline decision process and such verification is not needed by the
issuer for a refund. Br. 21. Appellant's argument is not persuasive at least
because Appellant does not point to any passage in Rowen that criticizes,
discredits, or otherwise discourages the verification of an account for a
refund-which is required to establish a "teaching away." See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs when a
reference discourages one skilled in the art from following the claimed path,
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or when the reference would lead one skilled in the art in a direction
divergent from the path that was taken by the applicant.).
In view of the foregoing, we sustain the Examiner's rejection under 35
U.S.C. § 103 of independent claims 1, 7, and 13, and dependent claims 2, 3,
8, 9, 14, 15, 21, and 24. We also sustain the Examiner's rejection under 35
U.S.C. § 103 of dependent claim 20, which is not argued separately.
Dependent Claims 4, 5, 6, 10-12, 16-18, 22, and 23
Appellant argues that the Examiner erred in rejecting claims 4, 10, 16,
22, and 23 under 35 U.S.C. § 103 because Katz "deal[s] with a third entirely
different type of process-a charge back dispute template" (Br. 21 ( citing
Katz ,r,r 28, 29, 52)), and "[n]o one of ordinary skill in the art would
combine these three types of processes," i.e., a refund process, an
authorization process, and a chargeback dispute process (id.) ( emphasis
omitted). Appellant's argument is not persuasive, because it does not
address the rationale articulated by the Examiner for the proposed
combination. Here, the Examiner modifies the combination of Kumamoto
and Rowen with the teachings of Katz to include a list of services/products
purchased in the transaction details ( claims 4, 10, and 16) in order to
incorporate the necessary information to dispute a charge; and to remove the
authorization network trace identifier from the reversal clearing records
( claim 22) and notify the issuer ( claim 23) in order to ensure all disputed
claims are properly addressed. See Final Act. 14--16. Apart from a naked
assertion that Kumamote, Rowan, and Katz are directed to different types of
processes, Appellant does not present any persuasive argument or technical
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reasoning to explain why the motivation set forth by the Examiner is
insufficient.
In view of the foregoing, we sustain the Examiner's rejection under 35
U.S.C. § 103 dependent claims 4, 10, 16, 22, and 23 . We also sustain the
Examiner's rejection under 35 U.S.C. § 103 of dependent claims 5, 6, 11,
12, 17, and 18, which are not argued separately.
Dependent claim 19
Appellant argues that the Examiner erred in rejecting claim 19 under
35 U.S.C. § 103 because one of ordinary skill in the art would not be
motivated to modify the combined teachings of Kumamoto and Rowen with
McGlinn. Br. 22. Appellant asserts that Kumamoto and Rowen "are
directed to methods of providing a refund and authorizing a payment,
respectively," whereas McGlinn teaches "a system and method for certifying
the identity and legitimacy of web-sites ofbrick-and-morter merchants." Id.
Appellant charges that "one of ordinary skill in the art would recognize that
these references are directed to disparate processes that are not
interchangeable," and that the Examiner "is literally picking-and-choosing
from disparate references using the claimed invention as a template." Br.
22. We disagree.
In rejecting claim 19, the Examiner finds that the combination of
Kumamoto and Rowen does not teach verifying that the merchant is certified
to submit the credit reversal message. However, the Examiner finds that
McGlinn teaches this limitation, and the Examiner determines that it would
have been obvious to verify the merchant, as taught by McGlinn to "'allow
Internet consumers to identify trusted online merchants."' Final Act. 20
(citing McGlinn ,r,r 17-18). Apart from a naked assertion that Kumamote,
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Application 13/953,016
Rowan, and McGlinn are directed to different purposes or techniques,
Appellant does not present any persuasive argument or technical reasoning
to explain why the motivation set forth by the Examiner is insufficient.
In view of the foregoing, we sustain the Examiner's rejection under 35
U.S.C. § 103 of dependent claim 19.
DECISION
The Examiner's rejection of claims 1-24 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 1-24 under 35 U.S.C. § 103 are
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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