Ex Parte SAGASTIVERZA et al

Patent Trial and Appeal Board

Dec 10, 2018

14086693 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/086,693 11/21/2013
126944 7590 12/12/2018
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Jazmin SAGASTIVERZA
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.
37537.0032Ul- 2058
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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 JAZMIN SAGASTIVERZA, ADRIAN BOTTA,
PRANA V GANDHI, JOSHUA LAGAN, JOEL LASKO,
MARIA EMILIA ORDONEZ, and JON-PAUL WITKOP
Appeal2018-005059
Application 14/086,693 1
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is MasterCard
International Incorporated. App. Br. 2.
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Application 14/086,693
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention relates generally to
enabling pooling and sharing of funds to cover shared expenses. See
Spec. ,r 1. 2
Claim 1 is representative and reads as follows:
1. A method comprising:
creating a virtual payment card, the virtual payment card
having a unique identifier and a virtual payment card balance;
linking, with a processor, a primary account number of a
physical payment card to the virtual payment card;
receiving a financial transaction request message, via a
network interface, the financial transaction request message
containing a transaction amount and the primary account number
of the physical payment card;
substituting, with the processor, the primary account
number of the physical payment card with the unique identifier
of the virtual payment card in response to receiving the financial
transaction request message;
approving or declining a financial transaction for the
transaction amount using the substituted unique identifier;
transmitting, via the network interface, an approval
message, when the financial transaction is approved; and
transmitting, via the network interface, a decline message,
when the financial transaction is declined.
App. Br. 20 (Claims App'x.).
2 Our Decision refers to the Final Office Action mailed December 30, 2016
("Final Act."), Appellants' Appeal Brief filed July 5, 2017 ("App. Br.") and
Reply Brief filed April 13, 2018 ("Reply Br."), the Examiner's Answer
mailed February 13, 2018, and the original Specification filed November 21,
2013 ("Spec.").
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Rejection on Appeal3
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter.
ANALYSIS
Applicable Law
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
Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
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, 75-77 (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 the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. The
3 The Examiner withdrew the rejection of claims 1-20 under
35 U.S.C. § 103(a). See Ans. 3. Thus, this rejection is not before us.
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"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter.'" Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
citations omitted). In that regard, we determine whether the claims "focus
on a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent eligible
under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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).
In other words, the second step is to "search for an "'inventive concept"'-
i. e., 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."' Id. (brackets in original) ( quoting Mayo,
566 U.S. at 72-73). The prohibition against patenting an abstract idea
"'cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment' or adding 'insignificant post solution
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activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation
omitted).
Appellants' Arguments.±
Appellants contend the Examiner has not adequately explained, and
has not provided any evidence, that the claims are directed to an abstract
idea. See App. Br. 6. Appellants argue the claimed subject matter of linking
redemption of electronic voucher offers with payment card transactions on
payment card instructions is not similar to any idea previously found to be
abstract. See App. Br. 8-9. Appellants further argue that the claims are not
directed to a fundamental commercial or business practice, nor a method of
organizing human activity. See App. Br. 9-10. According to Appellants,
the claims are not merely the computerization of a long-standing practice,
but, instead, are fundamentally rooted in computer technology. See App.
Br. 10.
In addition, Appellants contend, similar to the claims at issue in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),
that the claims are necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks
and do not merely recite the performance of some business practice known
from the pre-Internet world with the requirement to perform it on the
Internet. See App. Br. 12. As argued by Appellants, the claimed invention
4 Appellants argue claims 1-20 as a group, focusing on claim 1. See App.
Br. 6-14. Although Appellants argue that the dependent claims have not
been properly interpreted (see App. Br. 9), Appellants fails to proffer any
separate arguments for the patent-eligibility of the dependent claims. We
consider claim 1 to be representative of the claimed subject matter on appeal
and, therefore, we decide the rejection of claims 1-20 on the basis of
representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
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addresses the network-centric challenge of processing virtual prepaid cards
at locations that can only process physical payment cards, by providing a
solution that is necessarily rooted in computer technology. See id.
Appellants argue that the claims are directed to providing a technical
solution that is neither conventional nor routine, as the claims specify how
interactions between computer components are manipulated to yield a
desired result, which is non-routine and non-conventional. See App. Br. 13.
Appellants further argue that the claims do not merely implement an alleged
abstract idea on a generic computer, but, instead, are directed to using
particular computer technology and devices in a very specific way to achieve
new and useful results; and, thus, the claims result in the requirement of a
computer system with improved functionality over a generic computer. See
App. Br. 14.
Further, in their Reply Brief, Appellants argue, similar to the claims at
issue in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016), claim 1 does not preempt a patent ineligible concept. See
Reply Br. 4--5. Appellants also argue, similar to the claims at issue in
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018),
claim 1 is directed to a non-abstract improvement in computer function, as
claim 1 recites a method that enables a payment network to process a virtual
payment card transaction using a primary account number associated with a
separate, physical payment card. See Reply Br. 8.
Step One of Alice
The Examiner finds claim 1 is directed to enabling pooling and
sharing of funds to cover shared expenses, which the Examiner considers to
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be both a fundamental commercial/business practice and a method of
organizing human activities, which are both examples of an abstract idea.
See Final Act. 3.
Considering the focus of claim 1 as a whole, in view of Appellants'
Specification, we agree with the Examiner that claim 1 is directed to an
abstract idea (i.e., enabling pooling and sharing of funds to cover shared
expenses). Consistent with the Examiner's findings, we find claim 1 is
directed to a method of: ( 1) "creating a virtual payment card ... having a
unique identifier and a virtual payment card balance"; (2) "linking ... a
primary account number of a physical payment card to the virtual payment
card"; (3) "receiving a financial transaction request message ... containing a
transaction amount and the primary account number of the physical payment
card"; (4) "substituting ... the primary account number of the physical
payment card with the unique identifier of the virtual payment card in
response to receiving the financial transaction request message"; (5)
"approving or declining a financial transaction for the transaction amount
using the substituted unique identifier"; (6) "transmitting ... an approval
message, when the financial transaction is approved;" and (7) "transmitting
... a decline message, when the financial transaction is declined". App.
Br. 20. We agree with the Examiner that the aforementioned recited steps
are steps of either a fundamental economic practice or a method of
organizing human activities, where both are types of abstract ideas. See
Final Act. 3. Consistent with the Examiner's findings, and contrary to
Appellants' argument that claim 1 is not similar to any idea previously found
to be abstract (see App. Br. 8-9), we see no meaningful difference between
claim 1 and similar claims that our reviewing court has found are directed to
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an abstract idea. See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of
intermediated settlement is an abstract idea directed to a "fundamental
economic practice long prevalent in our system of commerce" ( citation
omitted)); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-54
(Fed. Cir. 2014) ( citing cases where contractual relations at issue constituted
fundamental economic practices, and noting that forming or manipulating
economic relations may involve an abstract idea); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) ("'automatic
pricing method and apparatus for use in electronic commerce'"); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to "the mere
formation and manipulation of economic relations" and "the performance of
certain financial transactions" have been held to involve abstract ideas);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(holding that claims reciting a method of using advertising as an exchange or
currency are directed to an abstract idea).
Although Appellants argue claim 1 does not define a fundamental
economic practice or method of organizing human activity (see App. Br. 9-
10), Appellants fail to particularly explain why claim 1 is distinct from a
fundamental economic practice or method or organizing human activity.
Thus, Appellants fail to persuasively rebut the Examiner's findings that
claim 1 is directed to a fundamental economic practice or method of
organizing human activity. Further, although Appellants argue claim 1 is
not the computerization of some long-standing practice, Appellants fail to
explain why the substitution of a first account number with a second account
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number in relation to a financial transaction is not simply a long-standing
practice that is implemented on a general-purpose computer.
We also are not persuaded by Appellants' arguments that claim 1 does
not seek to tie up or otherwise preempt an abstract idea. See Reply Br. 4--5.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility .... 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." 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) ("that 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").
Thus, Appellants' arguments that the claims are not directed to an
abstract idea are not persuasive.
Step Two of Alice
Regarding step two of the Alice analysis, the Examiner finds the
elements of claim 1, when considered individually or in combination, do not
recite substantially more than the abstract idea. See Final Act. 4; see also
Ans. 5. The Examiner further finds claim 1 recites the additional elements
"processor" and "network interface," and these elements amount to no more
than: (i) mere instructions to implement the idea on a computer; and (ii) a
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry. See Final Act. 3; see
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also Ans. 6. As further found by the Examiner, these additional claim
elements do not provide meaningful limitations to transform the abstract
idea into a patent eligible application of the abstract idea because the claim
does not effect an improvement to another technology or technical field, the
claim does not amount to an improvement to the functioning of a computer
itself, and the claim does not move beyond a general link of the use of an
abstract idea to a particular technological environment. See Final Act. 4.
For the reasons stated by the Examiner, we agree with the Examiner's
findings and conclusions.
We are not persuaded by Appellants' argument that claim 1 is similar
to the claims in DDR Holdings. See App. Br. 12. In DDR Holdings, the
disputed claims solved an Internet-specific problem with an Internet-based
solution that was "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 1257-58. That is not the case here. Instead,
consistent with the Examiner's findings, the problem of requiring a
substitution of a first account number with a second account number in
relation to a financial transaction is not a problem specifically arising in the
realm of computer networks, and users previously had, and currently can,
substitute one account number with another account number for a financial
transaction without the use of a computer. See Ans. 7-8.
Appellants' argument that claim 1 does not recite functionality that is
well-understood, routine, and conventional is also not persuasive. See App.
Br. 13. Claim 1 recites that the steps of linking a primary account number of
a physical payment card to a virtual payment card and substituting the
primary account number of the physical payment card with a unique
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identifier of the virtual payment card are performed by "a processor." The
Examiner cites Appellants' Specification as evidence that the claimed
"processor" is a general-purpose computer processor that performs functions
that are routine, conventional, and well-understood to one of ordinary skill in
the relevant art. See Ans. 6-7 ( citing Spec. ,r,r 23--40), see also Spec. ,r 31
("processor 2100 may be any central processing unit, microprocessor, micro-
controller, computational device or circuit known in the art"), ,r 43 ("[i]t is
understood that instructions for [ method or process embodiments illustrated
in FIGS. 3-9] may be ... executed by their respective processors"). As
Appellants have not persuasively rebutted the Examiner's findings, this
argument is not persuasive.
We also are not persuaded by Appellants' argument that claim 1
improves the functionality of a general-purpose computer. See App. Br. 14.
Appellants have not identified any portion of the Specification, nor provided
any evidence or technical reasoning, persuasively demonstrating claim 1 is
directed to a technical advance or improvement to computer functionality. 5
Further, Appellants' argument that claim 1 is similar to the claims at issue in
Finjan are also not persuasive (see Reply Br. 8), because Appellants have
5 Although Appellants allege the Specification describes a particular
problem and a specific technical solution to the particular problem (see
Reply Br. 7-8 (citing Spec.,r,r 4---6, 19, 60)), we do not agree with
Appellants' characterization of the problem and solution. Instead, we
conclude the cited paragraphs of Appellants' Specification identify a general
problem that arises in the relevant business practice and describe applying an
instruction to substitute a first account number with a second account
number in relation to a financial transaction on a general-purpose computer.
See Spec.,r,r 4---6, 19, 60. Such a disclosure does not persuasively
demonstrate the claims are directed to a technical advance or improvement
to computer functionality.
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not persuasively demonstrated that claim 1 is directed to an improvement to
computer functionality, as previously described.
In view of Appellants' Specification, and consistent with the
Examiner's determinations, the claims do not recite: (i) an improvement to
the functioning of a computer; (ii) an improvement to another technology or
technical field; (iii) an application of the abstract idea with, or by use of, a
particular machine; (iv) a transformation or reduction of a particular article
to a different state or thing; (v) a specific limitation other than what is well-
understood, routine, conventional activity in the field or unconventional
steps that confine the claim to a particular useful application; or (vi) other
meaningful limitations beyond generally linking the use of the abstract idea
to a particular technological environment. See Manual of Patent Examining
Procedure ("MPEP") § 2106.05. Thus, the claims are not directed to
something significantly more than the abstract idea.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101. For the same
reasons, we sustain the rejection of claims 2-20, which are not separately
argued, under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-20 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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