Mastercard International Incorporated

Patent Trials and Appeals Board

Dec 2, 2020

2020002995 (P.T.A.B. Dec. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/987,696 05/23/2018 Denise Schroeder 50500-CIP1-CNT1 3703
150180 7590 12/02/2020
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENISE SCHROEDER, DAWN STROHBACH,
KIRK MENARD, BRENDA HOPKINS, and MARK B. WIESMAN
Appeal 2020-002995
Application 15/987,696
Technology Center 3600
Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–19. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Mastercard
International. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims are directed to an automated teller machine transaction
premium listing to prevent transaction blocking. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system comprising:
an automated teller machine configured to perform
withdrawal transactions, the automated teller machine receiving
a particular withdrawal transaction request including a particular
account number, wherein the particular withdrawal transaction
request includes presentation of a physical card issued by a
particular financial institution;
a fraud prevention mechanism applying one or more fraud
prevention rules to the particular withdrawal transaction request;
a premium list of account numbers stored in a database,
wherein the premium list of account numbers is provided by the
particular financial institution; and
an electronic processor configured to improve
performance of the withdrawal transactions by the automated
teller machine, the electronic processor –
determining whether the particular account number
is in the premium list of account numbers,
causing the automated teller machine to reject the
particular withdrawal transaction request if the particular
withdrawal transaction request violates the one or more
fraud prevention rules and the particular account number
is not in the premium list of account numbers, and
causing the automated teller machine to fulfill the
particular withdrawal transaction request if the particular
withdrawal transaction request violates the one or more
fraud prevention rules and the particular account number
is in the premium list of account numbers.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Caulfield US 2003/0135453 A1 July 17, 2003
Scragg US 2011/0016052 A1 Jan. 20, 2011
Luk US 2012/0317027 A1 Dec. 13, 2012
Canetto US 2012/0323783 A1 Dec. 20, 2012
Park KR 20040099035 A Nov. 26, 2004

REJECTIONS2
Claims 1, 7, and 15 are rejected under U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 12.
Claims 1–3 and 5–19 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Final Act. 13.
Claims 1–3 and 5–19 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without significantly more.
Final Act. 3.
Claims 1, 6, 7, 10, 11, 14, 15, and 17 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Scragg (US 2011/0016052 A1;

2 The rejection of claims 7, 12, 15 and 18 under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite, as to the
intended use limitations, was withdrawn by the Examiner, and, thus, they are
not before us for review. See Ans. 48.

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Jan. 20, 2011) in view of Canetto (US 2012/0323783 A1; Dec. 20, 2012).
Final Act. 16.
Claims 12 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Scragg in view Canetto and further in view of Luk
et al. (US 2012/0317027 A1; Dec. 13, 2012) (“Luk”). Final Act. 29.3
Claims 2, 3, 8, 9, and 16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Scragg in view of Canetto and further in
view of Park (KR 20040099035A; Nov. 26, 2004). Final Act. 32.
Claims 5, 13, and 19 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Scragg in view of Canetto and Caulfield et al. (US
2003/0135453 A1; July 17, 2003) (“Caulfield”). Final Act. 34.

3 The Examiner indicates the rejection as being unpatentable over Scragg in
view of Luk but then states “[r]egarding Claims 12 and 18, these claims
recite the limitations of Claims 11 and 15 and as to those limitations is
rejected as would have been obvious based on the previous claims.” Final
Act. 29. Thus, claims 12 and 18 are rejected as being unpatentable over
Scragg in view of Luk and further in view of Park. Similarly the rejections
of claims 2, 3, 8, 9, and 16 rely on the rejections of the claims from which
they depend. See Final Act. 33. Thus, claims 2, 3, 8, 9, 16 are rejected over
Scragg in view of Canetto and further in view of Park. Id.
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Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 7, 15 112, first paragraph Written Description
1–3, 5–19 112, second paragraph Indefiniteness
1–3, 5–19 101 Eligibility
1, 6, 7, 10, 11, 14, 15,
17
103(a) Scragg, Canetto
12, 18 103(a) Scragg, Canetto, Luk
2, 3, 8, 9, 16 103(a) Scragg, Canetto, Park
5, 13, 19 103(a) Scragg, Canetto,
Caulfield

OPINION
We adopt the Examiner’s findings in the Answer and Final Office
Action unless as otherwise indicated in the Opinion and we add the
following for emphasis. We note that if Appellant failed to present
arguments on a particular rejection, we will not unilaterally review those
uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14
(Fed. Cir. 2008) (the Board may treat arguments Appellant failed to make
for a given ground of rejection as waived).

Claims 1, 7, and 15 Rejected under U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), First Paragraph, as Failing to Comply with the Written Description
Requirement
The Examiner finds that the amendment filed April 15, 2019
introduces new matter into the disclosure, not supported by the original
disclosure. In each of the independent claims, Appellant added “an
electronic processor configured to improve performance of the withdrawal
transactions by the automated teller machine - the electronic
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processor.” Final Act. 13.
The Examiner finds that the limitation, as amended, is not supported
by the Specification. Id. The Examiner finds that there is mention of
configuration date used to create the customer specific execution plan and
that these configurations are cached in memory and refreshed at a
configurable interval for improved performance in paragraph 82 of
Appellant’s Specification. Id. However, the Examiner finds that there is no
recitation of a processor configured to improve performance of the
withdrawal transactions by the ATM. Id.
Appellant argues that “configure” merely means “to set up for
operation especially in a particular way.” App. Br. 18 (citing
https://www.merriam-webster.com/dictionary/configure). In that light,
Appellant argues that the claimed processor is clearly disclosed and
originally claimed as being “configured” -i.e., set up-to perform the recited
functional limitations. Id. Appellant explains that these functional
limitations are clearly disclosed and originally claimed as involving the
ATM-i.e., as causing the ATM to reject or fulfill the particular withdrawal
transaction. Id. Appellant argues that the recited functional limitations are
integral to the claimed “system and method . . . to provide value added
services to their customers.” Id. (citing para. 28). Appellant explains that
“value added” merely means “of, relating to, or being a product whose value
has been increased especially by . . . processing.” Id. (citing
https://www.merriamwebster.com/dictionary/value-added). Appellant
asserts that this is synonymous with “improved.” Id. (citing
https://www.wordhippo.com/what-is/another-word-for/value-added.html).
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We agree with Appellant that the added “configured to improve
performance of the withdrawal transactions by the automated teller machine
. . . the electronic processor” does not constitute new matter in light of
Appellant’s Specification paragraph 28.
Accordingly, we reverse the Examiner’s rejection of claims 1, 7, and
15 as failing to comply with the written description requirement.

Claims 1–3 and 5–19 Rejected under U.S.C. § 101 as Being Directed to non-
Statutory Subject Matter
Appellant does not separately argue the claims with particularity. See
Appeal Br. 10–11. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that claim 1 is patent ineligible under 35 U.S.C.
§ 101, because the claim recites applying fraud prevention procedures to
ATM withdrawal transactions, which is a commercial or legal interaction
and/or managing personal behavior or relationships or interactions between
people and is thus organizing human activity which is an abstract idea. Final
Act. 5.
Prior to the filing of the Appeal Brief, the USPTO published revised
guidance on the application of § 101. See USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”); USPTO’s October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), noticed at 84 Fed. Reg. 55942 (Oct.
18, 2019). Pursuant to the Memorandum “Step 2A,” the Office first looks to
whether the claim recites:
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(1) Prong One: 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) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP
§§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017 (Jan. 2018))).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then (pursuant to the
Memorandum “Step 2B”) look to whether the claim:
(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 Fed. Reg. at 54–56.
Pursuant to Step 2A, Prong One of the Memorandum, the Office first
looks to “evaluate whether the claim recites a judicial exception, i.e., an
abstract idea.” Memorandum, 84 Fed. Reg. at 54. Here, claim 1 recites
determining whether the particular account number is in
the premium list of account numbers,
causing the automated teller machine to reject the
particular withdrawal transaction request if the particular
withdrawal transaction request violates the one or more fraud
prevention rules and the particular account number is not in the
premium list of account numbers, and
causing the automated teller machine to fulfill the
particular withdrawal transaction request if the particular
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withdrawal transaction request violates the one or more fraud
prevention rules and the particular account number is in the
premium list of account numbers.

We agree with the Examiner that these steps recite commercial or
legal interactions and/or managing personal behavior or relationships or
interactions between people and is thus organizing human activity which is
an abstract idea.
Accordingly, claim 1 “recites a judicial exception . . . [and] requires
further analysis in Prong Two” of the Memorandum. See Memorandum, 84
Fed. Reg. at 54.
Pursuant to Step 2A, Prong Two, we are not persuaded the Examiner
has erred in finding that claim 1 is directed to an abstract idea. That is, we
determine claim 1 does not integrate the recited judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54.
Appellant argues that, viewed as a whole, the claims are confined to a
particular useful application of an abstract idea in achieving a particular
solution (i.e., increased evaluative power and transactional flexibility) to a
particular problem (e.g., rejecting or fulfilling withdrawal transactions) in a
particular field (i.e., financial services) using a particular machine (e.g., an
ATM or improvised ATM). Appeal Br. 15.
We do not agree with Appellant’s argument. We agree with the
Examiner that Appellant’s claims and Specification do not sufficiently
support achieving the particular solution of increased evaluative power and
transactional flexibility. Ans. 48. The Examiner finds that while the
Specification makes note of a flexible transaction processor (FlexTP), the
claims do not recite a flexible transaction processor, and rather recite “an
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electronic processor.” Id. (citing para. 61). The Examiner further finds that
the Specification also teaches that the platform is flexible, that the system
features a flexible workflow and that the application is flexible and designed
to run in various different environments without compromising major
functionality; and that transaction processing is highly flexible because of
the ability to customize and plug in new components, however the claims do
not recite plug ins of new components that could be related to flexibility. Id.
(citing Spec. paras. 29, 34, and 49). The Examiner further finds that the
Specification does not mention the words “power” or any variation of
evaluative power. Id.
We agree with the Examiner that under Prong Two, claim 1 does not
recite additional elements that integrate the exception into a practical
application. We agree with the Examiner’s finding that claim 1 does not
recite a flexible transaction processor (FlexTP), but rather “an electronic
processor.” See Ans. 48. In other words, the electronic processor as claimed
is used as a tool to either reject or fulfill the particular withdrawal
transaction. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044
(Fed. Cir. 2017) (using a computer as a tool to process an application for
financing a purchase).
Further, the claim limitation of “a fraud prevention mechanism
applying one or more fraud prevention rules to the particular withdrawal
transaction request” may make fraud prevention more efficient but does not
make the computer itself more efficient, and, thus, it is not a technical
solution to a technical problem. See Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader
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faster and more efficient, not the computer. This is not a technical solution
to a technical problem.”).
Furthermore the limitations pertaining to “causing the automated teller
machine to reject” or “fulfill the particular withdrawal transaction request”
based on one or more fraud prevention rules constitutes an insignificant
extra-solution activity to the judicial exception. See Memorandum, 84 Fed.
Reg. at 55 n.31 (stating that a mere data gathering, such as a step of
obtaining information about credit card transactions so that the information
can be analyzed, in order to detect whether the transactions were fraudulent,
constitutes insignificant extra-solution activity (citing CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011))).
Moreover, Appellant’s purportedly improved abstract concept is still
an abstract concept under the Memorandum. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea”) (emphasis omitted). As the argued
elements are part of the abstract idea, they are not additional elements that
integrate the identified abstract idea into a practical application. See
Memorandum, 84 Fed. Reg. at 54–55 (“[E]valuate integration into a
practical application by: (a) Identifying whether there are any additional
elements recited in the claim beyond the judicial exception(s)”).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. We determine the “claim recites a judicial exception and fails to
integrate the exception into a practical application,” therefore we proceed
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with “further analysis pursuant to the second step of the Alice/Mayo test
(USPTO Step 2B).”4 Memorandum, 84 Fed. Reg. at 51.
We further agree with the Examiner in response to Appellant’s
argument that the claimed invention does not tie up a judicial exception
or preempt all use of the abstract idea, preemption is not a standalone test for
eligibility. Ans. 49. We agree with the Examiner that,
[w]hile 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.

Id. (alterations in original) (citing Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
We agree with the Examiner that the claimed elements and
combination of elements do not amount to significantly more than the
judicial exception itself. See Ans. 48–49; see also Memorandum, 84 Fed.
Reg. at 56.
Appellant argues that the integrated nature of the ATM and the
electronic processor and the additional elements are individually and/or in
combination “‘sufficient to ensure that the claim as a whole amounts to
significantly more than the judicial exception itself,’ and ensure that the
claimed invention is eligible subject matter under Step 2B of the Subject
Matter Eligibility Flowchart.” Appeal Br. 17.

4 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
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We are not persuaded because, as explained above, claim 1’s
ATM and electronic processor do not reflect significantly more (Ans.
50) and they are well-understood, routine and conventional.
Furthermore, Claim 1’s abstract ideas are accomplished through
conventional functions implemented using an ATM and a generic
electronic processor. In particular, the Examiner finds, and we agree
that Appellant’s Specification discloses the claimed elements as being
well-understood, routine, and conventional. See Final Act. 8–9. The
Examiner finds:

The specification notes that in an embodiment a
computer program is provided that is embodied on a computer
readable medium and utilized SQL with a client user interface
front end administration and a web interface for standard user
inputs and reports that can be web enabled and run on a
business entity intranet, or a UNIX mainframe, or a Windows
environment. (See Applicant Specification paragraph 34)
Further, the specification notes that the "application is flexible
and designed to run in various different environments without
compromising any major functionality" and the components of
each system and process can be processed independently and
separate from other components and processes and can also be
used in combination with other assembly packages and
processes. (See Applicant Specification paragraphs 34-35)
The disclosure notes that the ATM card machine
payment system used can be that using the
MasterCard® interchange, the Cirrus® network or Maestro®.
(See Applicant Specification paragraph 36 and Fig. 1) The
ATM card includes a variety of cards including debit cards and
may include other devices that may hold payment account
information, including mobile phones, personal digital
assistants (PDAs) and key fobs. (See Applicant Specification
paragraph 40)
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The client systems are noted to be computers including a
web browser and are interconnected to the Internet using
various interfaces including LAN, WAN, dial-in, cable modems
and ISDN lines and that those client systems can be any device
capable of interconnecting to the Internet including a webbased
phone, PDA, or other web based connectable equipment. (See
Applicant Specification paragraph 42) The database server,
server architecture and system architecture includes other
servers and disk storage connected through LAN, WAN or
Internet connectivity. (See Applicant Specification paragraph
43-45) The transaction processor and controller appear to be
using generic systemization with flexible plug in architecture as
well as output channel adaptor plug ins. (See Applicant
Specification paragraphs 61-63, 89-92) In an embodiment, a
computer and computer program are provided to perform
processes similar to those recited and the system may be
implemented in hardware, firmware or software
encoded on a non-transitory computer readable storage medium
as understood by those familiar with the art. (See Applicant
Specification paragraph 93 and 124)
The specification and drawings note that the method is
performed by a generic computer (i.e. in a general purpose
computing system environment). (See Applicant Specification
and Figures 2-3)
Generic computer components recited as performing
generic computer functions that are well understood,
routine and conventional activities amount to no more than
implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually. There is no indication that the combination
of elements improves the functioning of a computer or
improves any other technology. The collective
functions appear to be implemented using conventional
computer systemization.

Id.
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Accordingly, we affirm the Examiner’s rejection of independent claim
1 under U.S.C. § 101 as being directed to non-statutory subject matter and
the rejection of claims 2, 3, and 5–19 not separately argued with
particularity.

Claims 1–3 and 5–19 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite
1. Claims, 1, 7, and 15
The Examiner finds that claims 1, 7, and 15 are incomplete for
omitting essential elements, such omission amounting to a gap between the
elements. Final Act. 13 (citing MPEP § 706.03(f)).
In particular, the Examiner finds:
The following step recites a fraud prevention mechanism
applying one or more fraud prevention rules. What is this
mechanism? Where is this mechanism? Is it embodied within
the individual ATM? Is the fraud mechanism employed by a
network? Is the transaction sent somewhere to be analyzed?
There is no recitation that explains how this process is
occurring.
The claims then recite a premium list of account numbers
stored in a database, however it is unclear where this database is
or how/if the database is actually accessed. Similarly, the
following step recites an electronic processor that determines
(somehow) whether the particular account number is in the
premium list of account numbers, yet there is no indication as
to where this processor is. Is this within the ATM? Is this a
remote processor to the ATM that is connected somehow? Is
the data being remotely accessed?
The next steps are varied in the independent claims, but
all center around some sort of fraud analysis that is done by
some unclaimed mechanism presumably by the electronic
processor, however it is unclear if that is the case as claimed.
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Overall, the claims do not appear to disclose a complete
"system". The metes and bounds of the claim are unclear and
Examiner is left to wonder what the contours of the invention
that Applicant wishes to claim are. The connections between
the system elements are unclear. While there is a list of account
numbers stored in a database, there is no retrieval or
comparison of said numbers in order to determine whether the
particular account number is in the premium list of account
numbers.
Final Act. 14.
Appellant responds that, as stated in MPEP § 2173.04, breadth
of a claim is not to be equated with indefiniteness. Appeal Br. 21 (citing In
re Miller, 441 F.2d 689 (CCPA 1971); In re Gardner, 427 F.2d 786, 788
(CCPA 1970)). Appellant argues that these rejections appear to
misunderstand the concept of “essential elements/steps” as that concept
relates to claims under 35 U.S.C. § 112, second paragraph, and appear to
incorrectly conflate breadth with indefiniteness. Appeal Br. 22. Appellant
argues that the Examiner’s identified details of the limitations are not
“essential” to the claimed invention. Id. According to Appellant, where the
fraud prevention mechanism, database, and processor are located-whether,
for example, in the ATM itself or remote from it-are not only non-essential,
they are irrelevant to the invention as currently claimed. Id.
We agree with Appellant that, according to MPEP § 2173.04,
breadth of a claim is not to be equated with indefiniteness. See Appeal Br.
21 (citing Miller and Gardner).
Accordingly, we reverse the Examiner’s rejection of claims 1, 7, and
15 under indefiniteness.

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Claims 1, 6, 7, 10, 11, 14, 15, and 17 rejected under 35 U.S.C. § 103(a)
Appellant argues that Scragg does not teach the step of distinguishing
between premium and non-premium accounts because Scragg recognizes
only one kind of account and treats all of the accounts the same. Appeal Br.
26.
The Examiner finds that the use of the flash fraud and real time
filtering rules that are configured by the issuer that are synced to a particular
group of consumer accounts that is retrieved are in fact distinguishing
between a particular group of consumer accounts (premium) and other
accounts or groups of accounts (non-premium). Ans. 52. In particular, the
Examiner finds that Scragg teaches that the flash fraud and real time filtering
rules can be configured by the issuer and may each apply a similar or
identical analysis, but according to different authorization parameters. Id.
(citing Scragg para. 38). Thus, we agree with the Examiner that the
accounts, or particular groups of consumer accounts, can be treated
differently.
Appellant further argues that claim 1 requires the limitation of
“causing the automated teller machine to fulfill the particular withdrawal
transaction request if the particular withdrawal transaction request violates
the one or more fraud prevention rules and the particular account number
is in the premium list of account numbers.” Appeal Br. 27 (underlining
omitted). Appellant argues that, in contrast, Scragg never approves a
transaction that does not pass a fraud check: in decision step 715 if there is
“Likely Fraud” then the transaction is declined, in decision step 735 if there
is “Possible Fraud” then the transaction is not approved but sent for
additional fraud analysis, and in decision step 755 if there is “Fraud” then
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the transaction is declined. Id. Appellant explains that, in clear contrast, the
claimed invention requires that a transaction be approved despite the fact
that it failed a fraud check if the associated account appears in the premium
list provided by the card issuer. Id.
The Examiner finds that Scragg teaches the flash fraud and real time
filtering rules analyze velocity of historical events of a particular consumer
account or particular group of accounts. Ans. 53 (citing Scragg para. 19).
The flash fraud rules can deny a transaction or pass the transaction on to the
real time filtering rules. Id. (citing Scragg para. 19). The real time filtering
rules can approve the transaction or pass the transaction on to a third party
fraud detection system. Id. “The flash fraud and real time filtering rules
may employ similar rules with different authorization parameters, which
reduces the amount of transactions passed to the third party fraud
detection system and these rules may be customizable by an issuer via a
user interface.” Ans. 53 (citing Scragg paras. 19, 38).
The Examiner finds that Scragg teaches
a method may be configured to deny a payment request,
or pass the payment request to a third party fraud analysis
system, if all, one or a specific plurality of the real time filtering
rules are satisfied and a method may also be configured to
approve the payment request if all, one or a specific plurality of
the real time rules are not satisfied.

Id. (citing Scragg para. 47).
Accordingly, we agree with the Examiner that Scragg teaches that a
payment request may be denied if one or a specific plurality of flash
fraud rules are satisfied, and the method may pass the payment request to the
real time filtering rules if one or a specific plurality of flash fraud rules are
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not satisfied. Ans. 54. Scragg teaches that a method may be configured to
approve the payment request if all, one, or a specific plurality of real time
rules are not satisfied. Id. Therefore, we agree with the Examiner that
Scragg teaches or suggests the method can be configured to approve a
payment request (fulfill the particular withdrawal request) even if all, one, or
a specific plurality of real time rules are not satisfied (i.e., violating one or
more rules). Id.
Accordingly, we affirm the Examiner’s rejection of claims 1, 6, 7, 10,
11, 14, 15, and 17 rejected under 35 U.S.C. § 103(a).

Claims 5, 13, and 19 rejected under 35 U.S.C. § 103(a)
Appellant argues that dependent claims 5, 13, and 19 recite the
limitation of “the electronic processor rejecting a fraud-related chargeback
request resulting from allowing the automated teller machine to fulfill the
particular withdrawal transaction even though the particular withdrawal
transaction request violates the one or more fraud prevention rules.” Appeal
Br. 28.
Appellant argues that Caulfield does not teach, suggest, or otherwise
reasonably account for anything more relevant than the concept of rules to
determine a recommended action regarding a transaction dispute, and does
not teach, suggest, or otherwise account for the claimed limitation of
rejecting a fraud-related chargeback request resulting from allowing the
ATM to fulfill the particular withdrawal transaction even though the
transaction failed a fraud check. Id.
The Examiner relied on Caulfield solely for the teaching of rejecting a
fraud related chargeback. See Final Act. 38. In particular, the Examiner finds:
Appeal 2020-002995
Application 15/987,696

20
Scragg in view of Canetto discloses the invention except
as to rejecting a fraud related chargeback.
Caulfield discloses his invention as to a system for
receiving data regarding transaction disputes to determine
recommended actions. (See Caufield Abstract) Dispute data is
received from a transaction processing system and a
recommended action rule for resolving the dispute is executed
by a decision tree in order to come to a resolution. (See
Caulfield paragraphs 5-9) The invention is designed to be used
as an interface with a card management system and is operated
by a card issuer company. (See Caulfield paragraphs 36 and
Figure 1) The issuer has a number of options with regard to
processing the dispute including writing off the transaction (if
the dispute is valid but the Issuer is entirely at fault) and
therefore has no possibility of recovering money through
chargeback or collections. (See Caulfield paragraph 57)
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the method of
providing flash fraud and real time filtering rule processing to
transactions as disclosed by Scragg with the ability to reject
chargeback requests as taught by Caulfield in order to reduce
chargeback costs.
Id.
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with the Examiner that
Appellant is attacking the references individually because Caulfield was
only relied on for teaching rejecting a fraud related chargeback. Ans. 56.
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Application 15/987,696

21
The Examiner relied on the combination of Scragg and Canetta for all the
other recited limitations. Id.
Accordingly, we affirm the Examiner’s rejection of claims 5, 13, and
19 rejected under 35 U.S.C. § 103(a).

Claims 2, 3, 8, 9, 12, 16, and 18 rejected under 35 U.S.C. § 103(a)
Appellant does not separately argue the Examiner’s rejection of
claims 2, 3, 8, 9, 12, 16, and 18. Accordingly, we also affirm the
Examiner’s rejections of claims 2, 3, 8, 9, 12, 16, and 18 for the same
reasons as stated supra.

CONCLUSION
The Examiner’s rejections are AFFIRMED.
More specifically:
The Examiner’s decision to reject claims 1, 7, and 15 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The Examiner’s decision to reject claims 1–3 and 5–19 under 35
U.S.C. § 112, second paragraph, is reversed.
The Examiner’s decision to reject claims 1–3 and 5–19 under 35
U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 1, 6, 7, 10, 11, 14, 15, and
17 under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s decision to reject claims 12 and 18 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s decision to reject claims 2, 3, 8, 9, and 16 under 35
U.S.C. § 103(a) is affirmed.
Appeal 2020-002995
Application 15/987,696

22
The Examiner’s decision to reject claims 5, 13, and 19 under 35
U.S.C. § 103(a) is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7, 15 112, first
paragraph
Written
Description
1, 7, 15
1–3, 5–19 112, second
paragraph
Indefiniteness 1–3, 5–19
1–3, 5–19 101 Eligibility 1–3, 5–19
1, 6, 7, 10,
11, 14, 15,
17
103(a) Scragg, Canetto 1, 6, 7, 10,
11, 14, 15,
17

12, 18 103(a) Scragg, Canetto,
Luk
12, 18
2, 3, 8, 9, 16 103(a) Scragg, Park 2, 3, 8, 9, 16
5, 13, 19 103(a) Scragg, Canetto,
Caulfield
5, 13, 19
Overall
Outcome
1–3, 5–19

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED