Ex Parte Roman

Patent Trials and Appeals Board

Feb 28, 2019

11965494 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/965,494 12/27/2007
75564 7590 03/04/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Alan P. Roman
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.
21652-00010 3595
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN P. ROMAN
Appeal 2018-002351 1
Application 11/965,494
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-6, 14, 16, 18-23,
25, and 29-31. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6.
The invention relates generally to processing a payment transaction.
Spec. ,r 1.
1 The Appellant identifies MasterCard International Inc. as the real party in
interest. Appeal Br. 1.
Appeal2018-002351
Application 11/965,494
Claim 1 is illustrative:
1. A method for electronically converting, in real time, a
payment transaction initiated via a check into a debit card
transaction, the method implemented using a point of sale (POS)
computing device being in communication with a debit switch
computer device via a member interface processor (MIP)
computing device, the POS computing device being
communicatively coupled to a memory device and a scanning
device, said method comprising:
electronically capturing at the POS computing device
using the scanning device, check data from the check used in the
payment transaction, wherein the check data includes an issuing
bank routing number and an account number associated with an
account;
electronically converting the payment transaction via the
check into the debit card transaction by i) electronically
querying, by the POS computing device and using the issuing
bank routing number, a lookup database table stored within the
memory device, ii) determining, by the POS computing device,
based on the querying, a bank identification number (BIN) that
corresponds to the issuing bank routing number, and iii)
generating, by the POS computing device, a debit card number,
including generating a predefined quantity of characters
comprising the identified BIN and at least one additional
character;
generating a debit authorization request message that
includes the debit card number and check data, including
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Application 11/965,494
formatting the check data and the debit card number into a format
usable by the debit switch computer device;
transmitting the debit authorization request message via
the MIP computing device to the debit switch computer device;
receiving an authorization response from the debit switch
computer device via the MIP computing device; and
completing the payment transaction that was initiated via
the check as the debit card transaction in real time.
The Examiner rejected claims 1---6, 14, 16, 18-23, 25, and 29-31
under 35 U.S.C. § 101 as directed to ineligible subject matter in the form of
abstract ideas.
We AFFIRM.
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
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Application 11/965,494
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "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." Alice, 573 U.S. at 221 (quotation marks omitted). "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]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 P.R. 50 (2019).
Claim 1 recites steps that gather information, convert the information
to different information, package and transmit the information, receive a
response based on the transmitted information, and use a positive response
as an indication to complete a sale, as a method of conducting a payment
transaction. This corresponds to the Examiner's finding that the claims are
directed to processing a payment transaction at a point of sale. Final Act. 3.
Because the claim is directed to the performance of financial transactions, it
is thus directed to an abstract idea. See MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.04(a)(2)(I)(A). In addition, other than using
processing devices, the method could be performed mentally by a person
looking at and communicating the information. See id. at (III)(A}-(B).
The method does not integrate the abstract idea into a practical
application. For example, the method does not improve the underlying
computer by establishing and enforcing price limits, because any processor
can be used to execute the claimed method. See Spec. ,r 18 ("a processor
may include any programmable system"). In addition, the method is
directed to payment transactions, and as such the claimed method does not
improve another technology. See MPEP § 2106.05(a). Because a particular
computer is not required, the claim also does not define or rely on a
"particular machine." See id. at (b ). Further, the method does not transform
matter. See id. at ( c ). Instead, the claim merely gathers, converts, transmits,
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and receives data. As such, the method has no other meaningful limitations
(see id. at ( e) ), and thus merely recites instructions to execute the abstract
idea on a computer (see id. at (f)).
The only elements, beyond the abstract idea of gathering, generating,
sending, and receiving data within the processing of a payment transaction,
are various "computing devices" ( a point of sale computing device, in
communication with a debit switch computer device, and a member interface
processor (MIP) computing device), using general purpose computer servers
and any communications network. Spec. ,r 25. The operations of storing,
analyzing, receiving, and writing data are primitive computer operations
found in any computer system. See In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). Thus, the only
additional elements beyond the abstract idea are well-understood, routine,
and conventional. See MPEP ,r 2106.05(d).
"[ A ]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted). Here, independent claims 14, 18, and 22
merely recite system, device, and medium that comprise processors
configured to execute instructions that correspond to the steps of method
claim 1. Independent claims 14, 18, and 22 thus also are directed to abstract
ideas. The Examiner finds the dependent claims are also directed to abstract
ideas. Final Act. 5.
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Thus, the claims are directed to abstract ideas, and do not recite
limitations that transform the abstract ideas into eligible subject matter.
We are not persuaded by the Appellant's arguments, citing McRO,
Inc. v. Bandai Namco Games Am., 837 F. 3d 1299 (Fed. Cir. 2016), that the
claims recite eligible subject matter because they recite a particular
automated process, which is a concrete application of specific and unique
processes. Appeal Br. 9-12; see also Reply Br. 2-3. No matter how
particular, concrete, or specific, the claims involve only gathering, looking
up, altering, assembling, sending, and receiving data as part of initiating a
payment transaction, and are thus directed to abstract ideas.
We also are unpersuaded by the Appellant's argument that the claims
do not preempt other methods of performing payment transactions,
especially where, as in dependent claim 5, a specific type of data is added to
the data in the message. Appeal Br. 12-13; see also Reply Br. 4. While
preemption may signal patent-ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility. 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.") Moreover, we
are unpersuaded that merely appending some data to other data has
substantive significance with respect to subject matter eligibility, especially
where the data appended is content lacking a functional aspect. Praxair
Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed.
Cir. 2018) ("Claim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to patentable
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weight because such information is not patent eligible subject matter under
35 U.S.C. § 101.").
Because the Appellant has not shown error in the Examiner's
rejection, we sustain the rejection of all claims under 35 U.S.C. § 101 as
directed to abstract ideas.
DECISION
We affirm the rejection of claims 1---6, 14, 16, 18-23, 25, and 29-31
under 35 U.S.C. § 101.
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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