Ex Parte Roberts et al

Patent Trial and Appeal Board

Jun 26, 2018

13754419 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131754,419 01/30/2013
98665 7590 06/27/2018
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
FIRST NAMED INVENTOR
David A. Roberts
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.
P00619-US-CON 7079
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
MAILDATE DELIVERY MODE
06/27/2018 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 DAVID A. ROBERTS, DUNCAN GARRETT, and
EDDY L. H. VANDEVELDE 1
Appeal2017-003320
Application 13/754,419
Technology Center 3600
Before JASON V. MORGAN, ERIC B. CHEN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 4--19. Claims 1-3 are canceled. Final Act. 2; App. Br.
37. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the applicant, MasterCard International Incorporated,
identified in the Appeal Brief as the real party in interest. App. Br. 3.
Appeal2017-003320
Application 13/754,419
Invention
The Specification discloses a method for electronic payment that
includes: (1) detecting that a requested cryptogram was not received as
expected; (2) storing payment device and transaction recovery data; and (3)
sending a command to the payment device to re-compute the cryptogram to
complete a putative transaction. Abstract; Spec. 1.
Exemplary Claim
4. A method comprising the steps of:
upon initial presentation of a device to a terminal assembly in
connection with a putative data storage transaction, said device
comprising a device memory storing a device-side application, and at
least one device processor coupled to said device memory, said
terminal assembly comprising a terminal memory, storing a terminal-
side application, and at least one terminal processor coupled to said
terminal memory, said terminal-side application executing on said at
least one terminal processor establishing communications with said
device-side application executing on said at least one device
processor;
sending a first command from said terminal-side application executing
on said at least one terminal processor to said device-side application
executing on said at least one device processor to instruct said device-
side application executing on said at least one device processor to
compute a cryptogram to complete said putative data storage
transaction;
said terminal-side application executing on said at least one terminal
processor detecting that said cryptogram is not received as expected
from said device-side application executing on said at least one device
processor;
responsive to said detection, said terminal-side application executing
on said at least one terminal processor storing in a storage area of said
terminal memory an identifier of said device and data storage
transaction recovery data associated with said putative data storage
transaction;
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Application 13/754,419
obtaining, by said terminal-side application executing on said at least
one terminal processor, said identifier of said device, upon re-
presentation of said device to said terminal assembly;
upon said re-presentation of said device to said terminal assembly,
comparing, by said terminal-side application executing on said at least
one terminal processor, of said obtained identifier of said device to
contents of said storage area; and
conditioned at least upon said comparing yielding a match, sending a
second command from said terminal-side application executing on
said at least one terminal processor to said device-side application
executing on said at least one device processor, said second command
instructing said device-side application executing on said at least one
device processor to reproduce said cryptogram and send it to said
terminal-side application executing on said at least one terminal
processor to complete said putative data storage transaction.
Rejections
The Examiner rejects claims 4--19 on the ground of non-statutory
obviousness-type double-patenting as being unpatentable over claims 1-39
of Roberts et al. (US 8,370,258 B2; issued Feb. 5, 2013) ("Roberts"). Final
Act. 17-19.
The Examiner rejects claims 4--19 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3-5.
The Examiner rejects claims 4--8, 11, 14, and 17, 2 under
35 U.S.C. § 103(a) as being obvious over Ward et al. (US 2007 /0215697 Al;
published Sept. 20, 2007) ("Ward") and Brown et al. (US 8,201,742 B2;
issued June 19, 2012) ("Brown"). Final Act. 6-12.
2 The Examiner erroneously lists claims 4--19 as being rejected together
using the same prior art references. Final Act. 6. However, as noted, the
Examiner rejects several claims only with the use of additional references.
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Application 13/754,419
The Examiner rejects claims 9, 12, 15, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Ward, Brown, and Nakanishi et al. (US
7,080,259B1; issued July 18, 2006) ("Nakanishi"). Final Act. 12-13.
The Examiner rejects claims 1 0, 13, 16, and 19 under 3 5 U.S. C.
§ 103(a) as being unpatentable over Ward, Brown, and Paltenghe et al. (US
2002/0004783 Al; published Jan. 10, 2002) ("Paltenghe"). Final Act. 14--16
UNDISPUTED REJECTION
Appellant does not dispute the Examiner's obviousness-type double-
patenting rejection. See App. Br. 36. Accordingly, we summarily affirm
this rejection.
35 U.S.C. § 101
Findings and Contentions
In rejecting claim 4 as being directed to non-statutory subject matter,
the Examiner concludes claim 4 is directed to the "abstract idea of data
storage." Final Act. 3. In particular, the Examiner concludes the claimed
steps represent "a fundamental economic principle" and are "similar to other
concepts that have been identified as abstract by the courts such as
comparing new and stored information and using rules to identify options
(SmartGene )." Ans. 6.
Appellant contends the Examiner erred because "the distillation of the
claimed invention into the supposed abstract idea of data storage does not
comport with the explicit language of the independent claim[]," which
Appellant argues "recites numerous limitations providing a particular
technological environment in which the technical problem to be overcome
arises - namely, the 'tearing' of the card or other device from the reader
before the transaction completes, and how to recover such a 'tom'
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Application 13/754,419
transaction." App. Br. 15. That is, Appellant argues "L£]laim 4 is
specifically directed to solving a technical problem that arises during a data
storage transaction with a 'smart' or 'chip' card or similar device." Id. at 16;
see also Reply Br. 16.
Analysis
We agree with Appellant that the Examiner does not show that claim
4 is directed to an abstract idea. Abstract ideas include the concepts of
collecting data, recognizing certain data within the collected data set, and
storing the data in memory. Content Extraction & Transmission LLC v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). The
collection of information and analysis of information (e.g., recognizing
certain data within the dataset) are also abstract ideas. Electric Power
Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2017).
Similarly, merely "collecting, displaying, and manipulating data" is an
abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017). Other types of claims, such as those
directed to ideas such as "paying for a remote purchase at a local retailer"
have been found abstract. Inventor Holdings, LLC v. Bed Bath & Beyond,
Inc., 876 F.3d 1372, 1376 (Fed. Cir. 2017). Moreover, claims that "invoke
computers merely as tools to execute fundamental economic practices" have
also been found abstract. Smartflash LLC v. Apple Inc., 680 F.App'x 977,
982 (Fed. Cir. 2017) (non-precedential), cert. denied, 138 S.Ct. 687 (2018).
However, claims "directed to a specific improvement to the way computers
operate" have been found to be non-abstract. See Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336-39 (Fed. Cir. 2016) (Claims "specifically
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Application 13/754,419
directed to a self-referential table for a computer database" were not directed
to an abstract idea.).
Here, the claimed subject matter is not directed to merely collecting,
analyzing, displaying, and manipulating data. The claimed subject matter is
not directed to a general or fundamental practice. Nor does the claimed
subject matter invoke an existing technology (e.g., a terminal or device)
merely as a tool for executing an abstract idea. Rather, claim 4's method
includes taking steps responsive to "detecting that a cryptogram is not
received as expected" to store "an identifier of [the] device and data storage
transaction recovery data associated with a putative data storage
transaction" and further taking action "upon re-presentation of [the] device"
to a terminal assembly "complete [the] putative data storage transaction."
App. Br. 37-38, Claims App. (emphasis added).
Enabling recovery of a putative data storage transaction upon re-
presentation of a device to a terminal assembly constitutes improved
functionality for both the terminal assembly and the device. Rather than, for
example, having to initiate a new transaction, using the device and terminal
assembly enables completion of an interrupted transaction. This
functionality does not represent mere "data storage" (Final Act. 3), a
"fundamental economic principle" (Ans. 6), or the comparison of new and
stored information with rules to identify options (id.). Instead, this
functionality represents a non-abstract improvement in terminal assembly
and device functionality rather than an abstract idea. See Finjan, Inc. v. Blue
Coat Systems, Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (A claim
employing "a new kind of file that enables a computer security system to do
things it could not do before" represents "a non-abstract improvement in
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Application 13/754,419
computer functionality, rather than the abstract idea of computer security
writ large.").
For these reasons, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claim 4, and claims 5-19, which have similar recitations and are
similarly rejected.
35 U.S.C. § 103(a)
Findings and Contentions
In rejecting claim 4 as obvious, the Examiner finds that Ward's
application identifiers linked to software code in the form of firmware plus
data in a card memory teaches or suggests "responsive to said detection, said
terminal-side application executing on said at least one terminal processor
storing in a storage area of said terminal memory an identifier of said
device and data storage transaction recovery data associated with said
putative data storage transaction." Final Act. 7-8 (citing Ward i-f 25)
(emphasis added). The Examiner also finds Ward's computer-implemented
method for transaction adjustment teaches or suggests the claimed storing of
"data storage transaction recovery data associated with said putative data
storage transaction." Ans. 15 (citing Ward i-f 30, Fig. 2) (emphasis added).
Appellant contends that the Examiner erred because Ward's
applications and identifiers are on the card (i.e., on the presented device of
claim 4 ), but the disputed claim 4 recitation "refers to an identifier of the
payment device itself (and not an application on the payment device as in the
cited passage), being stored in the terminal." App. Br. 25. Appellant further
contends that the teachings in Ward directed to transaction adjustments
merely "provide a refund when the transaction fails due to tearing." Reply
Br. 42 (citing Ward i-f 36). Appellant argues that merely canceling a refund
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does not teach or suggest storing "transaction recovery data as claimed."
Reply Br. 42. Appellant notes that the system of Ward, rather than
recovering a transaction, allows "an unscrupulous cardholder[ to] 'rip' or
'tear' after a successful vend but before the card balance was decremented."
Id. (citing Ward i-fi-147--48).
Analysis
We agree with Appellant the Examiner erred. As Appellant
persuasively argues, Ward's application identifier teachings relate to
application identifiers stored in the memory of cards 102, 112 rather than in
terminals 122, 124, 126, 134, and 136. See Ward i-fi-125, 26, and Fig. 2; see
also App. Br. 25. The Examiner does not show that Ward teaches or
suggests storing the application identifiers in the terminals in a way that
accords with the claim 4 storage in "a storage area of said terminal memory"
of "an identifier of said device and data storage transaction recovery data
associated with said putative data storage transaction." App. Br. 37-38,
Claims App. (emphasis added).
Furthermore, the Examiner's findings do not show that Ward's
"detection of an irregularity with a putative transaction between a payment
device having an offline balance[] and an offline terminal" and adjustment
of "the offline balance responsive to the detection of the irregularity" teaches
or suggest the claimed storage of transaction recovery data. See Ward i130;
Fig. 2; see also Ans. 15. As evidenced by Ward's guidance that a cardholder
could "pull the card out and spend the offline value multiple times" (Ward
i1 48), Ward's teachings are not related to the recovery of a transaction. See
Reply Br. 42.
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The Examiner does not show that the other cited art references cure
the noted deficiency of Ward. Accordingly, we do not sustain the
Examiner's 35 U.S.C. § 103(a) rejection of claim 4, and the Examiner's
35 U.S.C. § 103(a) rejections of claims 5-19, which contain similar
recitations.
DECISION
We affirm the Examiner's obviousness-type double-patenting
rejection of claims 4--19.
19.
We reverse the Examiner's 35 U.S.C. § 101 rejection of claims 4--19.
We reverse the Examiner's 35 U.S.C. § 103(a) rejections of claims 4--
Because we affirm at least one rejection of each pending claim, we
affirm the Examiner's decision rejecting claims 4--19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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