Ex Parte Prabhu et al

Patent Trial and Appeal Board

Apr 27, 2018

13533005 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/533,005 06/26/2012
125619 7590 04/27/2018
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust A venue
New Canaan, CT 06840
FIRST NAMED INVENTOR
Rajen S. Prabhu
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.
P00775-US-UTIL
(MOl.205)
EXAMINER
MASUD, ROKIB
1594
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
04/27/2018 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 RAJEN S. PRABHU
and DAVID CHAN
Appeal2017-000585 1
Application 13/533,0052
Technology Center 3600
Before JOSEPH A. FISCHETTI, MATTHEW S. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-final Rejection of claims 7, 8, 14, and 16-27. We have jurisdiction
under 35 U.S.C. § 6(b ). We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
May 27, 2016) and Reply Brief ("Reply Br.," filed October 7, 2016), the
Examiner's Answer ("Ans.," mailed September 16, 2016), and Non-Final
Office Action ("Non-Final Act.," mailed December 18, 2015).
2 Appellants identify MasterCard International Incorporated as the real party
in interest (Appeal Br. 2).
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Application 13/533,005
CLAIMED INVENTION
Appellants' claims relate "to processing point-of-sale (POS)
transactions," and more particularly, to "processing a POS transaction using
a mobile card and a mobile phone" (Spec. ,r 1 ).
Claims 7, 14, and 16 are the independent claims on appeal. Claim 7
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
7. A method for operating a processing system,
compnsmg:
[a] providing a mobile card, the mobile card being a
physical transaction card, the mobile card storing card
information, the card information compnsmg a bank
identification number (BIN) associated with a mobile network
and a serial number associated with the mobile card, the mobile
card having a front side that permanently displays a portion of
the stored card information but not all of the stored card
information, the displayed portion of the card information
including the serial number; and the BIN being a portion of the
card information that is not displayed on the front side of the
mobile card;
[b] determining, by the processing system, that the mobile
card has been presented as payment in a point-of-sale (POS)
transaction, wherein said determining comprises using a POS
device to retrieve the card information from the mobile card and
receiving the card information and a transaction amount sent
from the POS device;
[ c] determining, by the processing system, that a mobile
phone is associated with the mobile card;
[ d] sending a transaction request to the mobile phone;
[ e] receiving a transaction authorization from the mobile
phone;
[ fJ authorizing the POS transaction; and
[g] causing the transaction amount to be paid using a
mobile wallet account associated with the mobile phone and the
mobile card.
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REJECTIONS
Claims 7, 8, 14, and 16-27 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 7, 8, 14, and 16-27 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Yoo (US 2012/0173348 Al, pub. July 5, 2012), Wong
(US 2012/0143752 Al, pub. June 7, 2012), and Joubert (US 2010/0287085
Al, pub. Nov. 11, 2010).
ANALYSIS
Non-statutory subject matter
Appellants argue claims 7, 8, 14, and 16-27 as a group (see Appeal
Br. 8-9). We select independent claim 7 as representative. Claims 8, 14,
and 16-27 stand or fall with independent claim 7. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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
Banklnt'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
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directed to one of those patent-ineligible concepts," id., e.g., to an abstract
idea. If the claims are not directed to a patent-ineligible concept, 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." Alice, 134 S. Ct.
at 2355 (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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting claims 7, 8, 14, and 16-27, the Examiner determines
the claims are "directed to authorizing point of sale transaction using a
mobile card" (Ans. 4; see also Non-Final Act. 3). The Examiner also
determines that independent claim 7 is "considered to be [an] abstract idea
because it [] amounts to nothing more than a business practice" which "can
be performed using any generic computers that are used to perform generic
computer functions" (Non-Final Act. 3; see also Ans. 3).
Appellants argue that the Examiner's rejection is improper because
[t]he Examiner has completely failed to provide such a reasoned
rationale. He has merely asserted in conclusory terms that "the
claims are directed to [an] abstract idea", after listing a sequence
of the method steps present in claim 7. The Examiner has not
even stated what the alleged abstract idea is.
(Appeal Br. 8). Appellants' argument is not persuasive.
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By way of background, the Examiner determines the "claims are
directed to system and method of providing a mobile card, determining that
the mobile card has been presented as payment, sending a transaction
request, [and] authorizing the POS transaction, which are considered to be
[an] abstract idea because [they] amount[] to nothing more than a business
practice" (Non-Final Act. 3). In the Answer, the Examiner further
characterizes the claims as being "directed to authorizing [a] point of sale
transaction using a mobile card" (Ans. 4). Thus, we determine initially the
Examiner has adequately articulated what abstract idea the claims are
directed to.
Appellants further argue that the Examiner fails to satisfy the first step
of the Alice analysis, because the Examiner "does not clearly enunciate what
the Examiner considers to be 'abstract' about claim 7, and does not compare
any alleged 'abstract idea' with allegedly corresponding concepts that courts
have identified" (Appeal Br. 9; see also Reply Br. 2). However, we agree
with the Examiner that independent claim 7 is directed to "authorizing [a]
point of sale transaction using a mobile card" (Ans. 4; see also Non-Final
Act. 3), and is similar to certain fundamental economic and conventional
business practices that our reviewing courts have found patent ineligible,
like intermediated settlement (see Alice, 134 S. Ct. at 2356-57), creating a
contractual relationship in guaranteeing performance of an online transaction
(see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir.
2014) ), "verifying the validity of a credit card transaction over the Internet"
(CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) ), and using advertising as a currency on the Internet ( Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)).
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Furthermore, as in Alice, we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of authorizing a point of sale transaction using a mobile card at issue here.
Both are squarely within the realm of "abstract ideas" as the Court has used
that term. See Alice, 134 S. Ct. at 2357. Here, independent claim 7, unlike
the claims found non-abstract in prior cases, uses generic computer
technology (see, e.g., Spec. ,r 14 (describing that "[t]he system 100 includes
a mobile card 102, a POS device 104, an acquirer system 106, a card issuer
system 108, a mobile network system 110, a mobile phone 112, and a
mobile wallet account 114); see also id. ,r,r 13, 15-17) to "process[] a POS
transaction using a mobile card and a mobile phone" (see Spec. ,r 1 ), and
does not recite an improvement to a particular computer technology. See,
e.g., McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299,
1314--15 (Fed. Cir. 2016) (determining claims not abstract because they
"focused on a specific asserted improvement in computer animation").
Thus, independent claim 7 is directed to a patent-ineligible abstract idea.
Appellants also argue that the Examiner fails to satisfy the second step
of the Alice analysis, because the Examiner "fails to take the individual
claim elements either individually (some are omitted) or in combination to
explain why the 'something more' is not present" (Appeal Br. 9; see also
Reply Br. 2). However, we agree with the Examiner that "[t]he additional
elements taken alone or in combination do not perform anything more than
conventional computer implementation" (Ans. 5). More particularly, we
agree with the Examiner that the claims recite generic components and "[i]n
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each instance, the functions performed by the computer components include
communicating data, generating records data, [and] authorizing data" (id. at
4).
Appellants further argue that "at least based on the limitation of
providing a mobile card, it is believed that claim 7 satisfies the requirement
of 'something more' to achieve patent-eligibility, as called for in Alice"
(Appeal Br. 9). However, Appellants do not point to a particular portion of
the Specification to show where the Specification discloses how the step of
"providing a mobile card" transforms the abstract idea into patent-eligible
subject matter. Nor do Appellants provide adequate evidence or technical
reasoning that independent claim 7 improves some existing technological
process or solves some technological problem in conventional industry
practice, such as in Diamond v. Diehr, 450 U.S. 175 (1981). See Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015)
( determining that the "claims recit[ ed] a commonplace business method
aimed at processing business information despite being applied on a general
purpose computer"), cert. denied, 136 S. Ct. 2510 (2016); see also Alice,
134 S. Ct. at 2359.
Here, we determine the steps of "providing a mobile card,"
"determining ... that the mobile card has been presented as payment in a
point-of-sale (POS) transaction," "determining ... that a mobile phone is
associated with the mobile card," sending and receiving transaction
information, authorizing, and "causing the transaction amount to be paid
using" an associated account, amount to nothing more than mere instructions
to implement the abstract idea on a computer-none of which add an
inventive concept because they merely require the application of
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conventional, well-known analytical steps. See Ultramercial, 772 F.3d at
716 ("[T]he claimed sequence of steps comprises only 'conventional steps,
specified at a high level of generality,' which is insufficient to supply an
'inventive concept."' (citing Alice, 134 S. Ct. at2357)). Thus, each
limitation does no more than require a generic computer to perform generic
computer functions.
And, considered as an ordered combination, the computer components
of Appellants' independent claim 7 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
Appellants' claims simply recite the concept of "authorizing [a] point of sale
transaction using a mobile card" (Ans. 3). The claims do not, for example,
purport to improve the functioning of the computer itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of "authorizing [a] point of sale transaction using a
mobile card" (Ans. 3), which under our precedents, is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2360.
Appellants further argue that the Examiner's rejection is improper
because "[ t ]he Examiner does not even mention a point of novelty in the
claims, i.e., a mobile card that stores but does not display a BIN (bank
identification number)" (Appeal Br. 8; see also Reply Br. 2). However,
Appellants do not adequately show how the claimed steps are technically
done such that they are not routine, conventional functions of a generic
computer. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) ("Rather, the 'interactive interface' simply
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describes a generic web server with attendant software, tasked with
providing web pages to and communicating with the user's computer."). In
this regard, Appellants have not established that the claimed invention
relates to a software-based invention that improves the performance of the
computer system itself. And it is well-settled that "merely recit[ing] the
abstract idea ... with the requirement to perform it on the Internet, or to
perform it on a set of generic computer components ... would not contain
an inventive concept." See Bascom Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Appellants last argue that the present claims "hardly would preempt
all manners of authorizing a card transaction at the point of sale" because
"no transaction authorization technique would be barred by the claims on
appeal unless the technique featured a mobile card that stores but does not
display a BIN" (Reply Br. 2). However, Appellants' preemption argument
does not alter our § 101 analysis. Preemption concerns are fully addressed
and made moot where a patent's claims are deemed to disclose patent
ineligible subject matter under the two-part framework described in Mayo
and Alice. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). "While preemption may signal patent ineligible matter, the
absence of complete preemption does not demonstrate patent eligibility." Id.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 7, and claims 8, 14, and 16-27, which
fall with independent claim 7.
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Obviousness
Independent claim 7 and dependent claims 8 and 21-23
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 7 under 35 U.S.C. § 103(a) because the
combination of Yoo, Wong, and Joubert does not disclose or suggest "a
mobile card ... [ configured to store] card information" as required by
limitation [a] of independent claim 7 (see Appeal Br. 10-12). More
particularly, Appellants argue that limitation [a] requires the mobile card
store "a bank identification number (BIN)" and "a serial number," but also
requires that "the BIN is not displayed on the card, while the serial number
is displayed on the card" (id. at 10). Thus, Appellants argue that the
combination of Yoo, Wong, and Joubert fails to disclose or suggest "a
mobile card that stores but does not display a BIN," as required by limitation
[a] of independent claim 7 (id. at 10).
The Examiner maintains the rejection is proper, and cites Joubert, at
paragraphs 24--27, as disclosing the argued feature (see Non-Final Act. 7-9;
see also Ans. 7).
Joubert is directed to a system "that allow[ s] for personalized data to
be embedded in a primary account number [(PAN)] associated with a
consumer device" (Joubert ,r 4). Joubert discloses that its PAN "includes a
bank identification number and the bank identification number and the
personalized data overlap. For example, an account number might include a
BIN or bank identification number '23456' and the number '6' may start a
data string associated with a consumer's telephone number" (id. ,r 5). More
particularly, Joubert discloses
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a PAN 803 for a consumer device such as a debit card includes
several parts as shown in FIG. 8(b). The first few digits 803(a)
may be a BIN which can be four to six digits. The next digit
803( b) may be a free or spare digit. The next two digits 803( c)
may be a product code. The next several digits 803( d) may be a
running serial number. The next few digits 803(e) may be an
add-on card. The final digit 801(/) may be a check digit which
is derived from the previous digits in the PAN
(id. ,r 23 ). Joubert further discloses that "[ t ]he personalized PAN is
associated with the body of the consumer device" and "the personalized
PAN may be stored in a memory in the body, printed on the body, or
embossed on the body" (id. ,r 24).
We have reviewed the cited portions of Joubert, and agree with
Appellants that none of the cited portions of Joubert discloses or suggests
the argued features of limitation [a] of independent claim 7. In particular,
we fail to see, and the Examiner does not adequately explain, how Joubert's
disclosure regarding its personalized PAN discloses or suggests limitation
[a] of independent claim 7, which requires in part:
providing a mobile card, the mobile card being a physical
transaction card, the mobile card storing card information, the
card information comprising a bank identification number (BIN)
associated with a mobile network and a serial number associated
with the mobile card, the mobile card having a front side that
permanently displays a portion of the stored card information but
not all of the stored card information, the displayed portion of the
card information including the serial number; and the BIN being
a portion of the card information that is not displayed on the front
side of the mobile card
(Appeal Br. 13; Claims App. (emphasis added)).
In response to Appellants' argument, the Examiner points out that
Joubert "discloses that the primary account number PAN which consists [ofJ
serial number and Bank Identification Number (BIN), can be personalized
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[in] that [it] may be stored in a memory in the body, printed on the body or
embossed on the body of the card" (Ans. 5 (citing Joubert ,r,r 24--27)).
Although we agree with the Examiner that Joubert discloses that
"personalized PAN may be stored in a memory in the body" (Joubert ,r 24),
and as such, not displayed on the body of the card, we cannot agree with the
Examiner that this disclosure satisfies or otherwise renders obvious the
requirements of limitation [a] of independent claim 7. In making this
determination, we note that Joubert discloses that its PAN "includes a bank
identification number and the bank identification number and the
personalized data overlap" (id. ,r 5; see also id. ,r,r 21-37). Consequently, if
Joubert' s PAN were only to be stored in the body of the card, Joubert would
fail to disclose or suggest "the displayed portion of the card information
including the serial number," as required by limitation [a] of independent
claim 7. The Examiner does not rely on Yoo or Wong to address this
deficiency.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 7 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner's rejection of claims 8 and 21-23 which
depend from independent claim 7.
Independent claims 14 and 16, and dependent claims 16-20 and 24-27
Independent claims 14 and 16 include limitations substantially similar
to the argued subject matter of independent claim 7 discussed above.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 14 and 16, and claims 17-20 and 24--27 that
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depend therefrom, for the same reasons set forth above with respect to
independent claim 7.
DECISION
The Examiner's rejection of claims 7, 8, 14, and 16-27 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 7, 8, 14, and 16-27 under
35 U.S.C. § 103(a) is reversed.
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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