Ex Parte Rodriguez et al

Patent Trial and Appeal Board

Mar 16, 2018

14052261 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/052,261 10/11/2013
144887 7590 03/20/2018
Tong, Rea, Bentley & Kim, LLC/Conduent
12 Christopher Way
Suite 105
Eatontown, NJ 07724
FIRST NAMED INVENTOR
ALBERTO RODRIGUEZ
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.
20130431-US-NP 4813
EXAMINER
OUSSIR, EL MEHDI
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
docketing@trbklaw.com
Conduent.PatentDocketing@Conduent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERTO RODRIGUEZ and REIKO ROMMELMANN
Appeal2017-000848
Application 14/052,261 1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and SCOTT E.
BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 8, 10-13, and 17, which constitute all claims
pending in the application. Claims 5-7, 9, 14--16, and 18-20 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Xerox Corporation as the real party in interest. App.
Br. 3.
Appeal2017-000848
Application 14/052,261
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to credit card security, and more
specifically, to the use of a "vendor-specific" PIN (personal identification
number) for authorizing credit card purchases on the Internet. Spec. i-fi-f l--4.
Claims 1 and 10 are independent. Claim 1 is illustrative of the invention and
the subject matter of the appeal, and reads as follows:
1. A method for authorizing a website transaction,
compnsmg:
receiving, by a processor of a server at a bank, a request
from an endpoint device of a user to select a vendor specific
personal identification number (PIN) for a credit card account
issued by the bank and associated with the user;
establishing, by the processor, the vendor specific PIN for
one of a plurality of different vendors selected by the user,
wherein the vendor specific PIN is different for each one of the
plurality of different vendors, wherein the vendor specific PIN is
associated with one or more parameters defined by the user
comprising a plurality of authorized users for the vendor specific
PIN for the each one of the plurality of different vendors of the
credit card account and an authorized time range, wherein the
vendor specific PIN for each one of the plurality of different
vendors authorizes a different one or more of the plurality of
authorized users;
receiving, by the processor, a request from a vendor to
validate the website transaction with the vendor using the credit
card account;
sending, by the processor, a request to the user of the credit
card account for the vendor specific PIN associated with the
credit card account, wherein the request is sent to the endpoint
device of the user via at least one of: an email, a text message, a
push notification or a telephone call;
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Application 14/052,261
receiving, by the processor, the vendor specific PIN via
the endpoint device of the user;
determining, by the processor, that the vendor specific PIN
received from the endpoint device of the user matches the vendor
specific PIN that was established and associated with the credit
card account, that the user is one of the plurality of authorized
users and that the website transaction is within the authorized
time range; and
authorizing, by the processor, the website transaction with
the vendor using the credit card account.
App. Br. 18 (Claims App'x.) (emphasis added).
The Rejections on Appeal
Claims 1--4, 8, 10-13, and 17 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 9--13.
Claims 1--4, 8, 10-13, and 17 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Varadarajan et al. (US
2011/0276495 Al; publ. Nov. 10, 2011) ("Varadarajan"), Risafi et al. (US
6,473,500 Bl; iss. Oct. 29, 2002) ("Risafi"), and Madhok et al. (US
2006/0059110 Al; publ. March 16, 2006) ("Madhok"). Final Act. 13-17.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
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Rejection Under 35 USC§ 101
Appellants argue the Examiner erred in rejecting the claims as
directed to ineligible subject matter, namely, the abstract idea of conducting
an online credit card transaction authenticated with a vendor-specific PIN. 2
App. Br. 12-13; Final Act. 11. Appellants contend the claims are not
abstract because they recite elements that "require authorization of a website
transaction that requires interaction of hardware devices over the Internet,"
and cannot be performed manually by a human. App. Br. 12; Reply Br. 2-3.
Appellants further argue that, even if the claims recite an abstract idea, the
claims also are rooted in computer technology and thus include
"significantly more" than an abstract idea, thereby transforming the abstract
idea into patent-eligible subject matter. App. Br. 12-13; Reply Br. 3. We
are not persuaded.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies. First, we must "determine whether the claims at issue are directed
2 Appellants argue all pending claims as a group, and we choose claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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to one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355.
Second, if the claim is directed to one of those patent-ineligible concepts, 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., 566
U.S. 66, 79, 78 (2012)). Put differently, we must search the claims for an
"inventive concept," that is, "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
(quoting Mayo, 566 U.S. at 72-73).
Regarding step one of the Alice analysis, we discern no error in the
Examiner's finding that the claims are "directed to the concept of
authorizing an online transaction using a personal identification number."
As the Examiner finds, the claims recite "obtaining and comparing" data
such as PINs and credit card account numbers. Ans. 5. Data collection and
analysis is well within the realm of abstract ideas. See, e.g., Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); see
also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) (holding "method for verifying the validity of a credit card
transaction over the Internet" is an unpatentable abstract idea). Accordingly,
we, like the Examiner, conclude the claims are directed to the abstract idea
of data collection and analysis, and therefore proceed to the second step of
the Alice analysis.
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In step two of Alice,
we must examine the elements of the claim to determine whether
it contains an "inventive concept" sufficient to "transform" the
claimed abstract idea into a patent-eligible application .... A
claim that recites an abstract idea must include "additional
features" to ensure "that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea]."
Alice Corp., 134 S. Ct. at 2357 (internal citations omitted). As the Examiner
finds, Appellants' claims recite generic computing elements such as "a
website," "processor," server," user "device," and utilize generic
communication methods such as "text" and "instructions" to carry out the
claimed limitations. Ans. 6. Appellants do not argue or demonstrate that the
claimed invention improves the recited processor, server, or website by
means of the invention. Ans. 7. Accordingly, we find the computing
elements in the claims are insufficient to transform the claims into patent-
eligible subject matter. See Alice, 134 S. Ct. at 2358-59 (holding "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention"); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715-16 (Fed. Cir. 2014) (claims merely reciting abstract idea of
using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013) (claims reciting "generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible).
Similarly, we are not persuaded by Appellants' argument that the
claims do not preempt the field of online website transaction authorization.
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Reply Br. 2. Although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert denied,
136 S. Ct. 701, 193 (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"). Where, as here, "a patent's
claims are deemed only to disclose patent ineligible subject matter under the
[Alice] framework ... preemption concerns are fully addressed and made
moot." Ariosa, 788 F.3d at 1379.
Accordingly, we conclude each of Appellants' claims 1--4, 8, 10-13,
and 17 is directed to a patent-ineligible abstract concept, and does not recite
something "significantly more" under the second step of the Alice analysis.
We, therefore, sustain the rejection of claims 1--4, 8, 10-13, and 17 as
directed to ineligible subject matter.
Rejections Under 35 USC§ 103
Appellants argue the Examiner erred in finding the prior art teaches or
suggests "establishing, by the processor, the vendor specific PIN for one of a
plurality of different vendors selected by the user, wherein the vendor
specific PIN is different for each one of the plurality of different vendors
... ,"as recited in claim 1. App. Br. 14--16; Reply Br. 3-5.
As the Examiner finds, however, Varadarajan teaches a "one time
password" (OTP) for use in authenticating online credit card transactions.
Varadarajan Abstract, Fig. 1, i-f 3; Ans. 11-13. Varadarajan further teaches
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the OTP "may take the form of a PIN," and can be "specific to ... the
merchant" (i.e., vendor) associated with the transaction or a "class of
merchants." Id. i-fi-132, 59 (emphasis added); Ans. 11-13.3 In light of this
evidence, we discern no error in the Examiner's finding that the foregoing
passages in Varadarajan teach a "vendor specific PIN," as recited in claim 1.
Appellants further argue Varadarajan fails to teach "different [PINs]
can be created for different vendors," and that "a different group of
authorized users may be established for each vendor specific PIN." App.
Br. 14--15. Appellants contend Risafi and Madhok fail to cure these alleged
deficiencies of Varadarajan. Id. at 15-16. We, however, are not persuaded
by these arguments, which effectively are restatements of the same argument
discussed above. Namely, Varadarajan's teaching of a vendor "specific"
PIN would be understood by one of ordinary skill in the art as meaning that
different vendors may have different PINs. Ans. 13; Varadarajan i132; see
also Risafi col. 6, 11. 66-67 (prepaid card is specific to "approved ...
merchants."). Further, Appellants' reference to "a different group of
authorized users" (id. at 15), is not in the claim, which recites "one or more
of the plurality of authorized users." App. Br. 18 (emphasis added).
In the Reply Brief, Appellants also make the new argument that
Varadarajan's teaching of the OTP (i.e., PIN) involves a "different sequence
of events" than claim 1, and specifically, does not include the "bank
send[ing] a notification to an endpoint device of a user to request the vendor
3 As the Examiner further finds, Risafi also teaches a vendor specific PIN,
i.e., a prepaid card having a user-selected PIN, which may be used at
"approved establishments [or] merchants." Risafi col. 3, 11. 65-66, col. 6,
11. 65-67.
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specific PIN to verify the transaction." Reply Br. 4. This newly raised
argument (not responsive to any new findings in the Answer) is waived as
untimely (37 C.F.R. § 41.41(b )(2)). Even if our reviewing court were to find
it was timely raised, we find the argument to be unpersuasive because it fails
to account for the Examiner's combination of Madhok and Risafi with
Varadarajan. As the Examiner finds, for example, Madhok teaches a
payment processor (e.g., bank) "sending an SMS text message" to a user that
summarizes the transaction and asks the user to confirm using the applicable
PIN. Madhok i-f 20. The user's reply containing the PIN and other
information will verify the transaction. Id.
Accordingly, we discern no error in the Examiner's obviousness
rejection of claim 1. Appellants do not argue the remaining claims
separately. For the foregoing reasons, we sustain the obviousness rejection
of claims 1--4, 8, 10-13, and 17.
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 8, 10-13,
and 17.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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