Robert D. Reany et al.

Patent Trials and Appeals Board

Sep 22, 2020

2018005395 (P.T.A.B. Sep. 22, 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.
12/813,766 06/11/2010 Robert D. Reany P00522-US-UTIL 7673
98665 7590 09/22/2020
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
CTOFFICE@OEKLAW.COM
admin1@oeklaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT D. REANY, DENNIS J. HILL,
SARA E. FIEBIGER, SUSAN E. RISKOVSKY,
and SANDEEP MALHOTRA
____________________

Appeal 2018-0053951
Application 12/813,7662
Technology Center 3600
____________________

Before HUBERT C. LORIN, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing (“Request” or “Req. Reh’g”)
pursuant to 37 C.F.R. § 41.52 on April 27, 2020, seeking reconsideration of
our Decision on Appeal, mailed February 25, 2020 (“Decision” or “Dec.”),
in which we affirmed the Examiner’s rejection of claims 1–5 and 7–21 under
35 U.S.C. § 101 as directed to patent ineligible subject matter.
We have jurisdiction over the Request under 35 U.S.C. § 6(b).

1 Our decision references Appellant’s Appeal Brief, filed November 20,
2017 (“Appeal Br.”) and Reply Brief, filed May 1, 2018 (“Reply Br.”), and
the Examiner's Answer, mailed March 1, 2018 (“Ans.”) and the Final Office
Action, mailed May 3, 2017 (“Final Act.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies MasterCard International Incorporated as
the real party in interest. Appeal Br. 3.
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DISCUSSION
Appellant asserts that the Board misapprehended the subject matter of
exemplary independent claim 1 by overgeneralizing and oversimplifying the
claim as reciting the abstract idea of “‘placing and releasing a hold on an
account involved in a pending transaction.’” Req. Reh’g 4 (quoting Dec. 8).
More particularly, Appellant argues that the Board’s determination
specifically abstracts away at least one of basis of novelty in the
claim, i.e., the claimed “releasing any portion of said hold
amount which exceeds said amount of said transaction,
reducing said hold amount to said amount of said transaction,”
and therefore evidences a misapprehension of the claimed
subject matter.
Req. Reh’g 4. According to Appellant, “[t]he claims are clearly directed to
the specific technological advancement . . . of ‘releasing any portion of said
hold amount which exceeds said amount of said transaction, reducing said
hold amount to said amount of said transaction,’” and thus, simply
“[r]eleasing a hold is not commensurate in scope with the claimed ‘reducing
said hold amount.’” Id.
We disagree with Appellant that the Board overgeneralized and
oversimplified the subject matter of exemplary independent claim 1 in
“agree[ing] with the Examiner that independent claim 1 broadly recites
‘placing and releasing a hold on an account involved in a pending
transaction.’” Dec. 8. Even if we were to accept Appellant’s position that
“[r]eleasing a hold is not commensurate in scope with the claimed ‘reducing
said hold amount’” (Req. Reh’g 4), and characterize exemplary independent
claim 1 anew as reciting the abstract idea of “placing and [reducing] a hold
on an account involved in a pending transaction” (cf. Dec. 8; Final Act. 3),
that does not make the claim any less directed to an abstract idea.
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Under the first step of the Alice framework, “[w]e must first determine
whether the claims at issue are directed to a patent-ineligible concept,” such
as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.
Ct. 2347, 2355 (2014). That claim 1 includes more words than the phrase
the Examiner used to articulate the abstract idea or that the Examiner
articulates the abstract idea at a higher level of abstraction than would
Appellant is an insufficient basis to argue persuasively that the claim
language has been overgeneralized or oversimplified. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016); see also Solutran,
Inc. v. Ela-von, Inc., 931 F.3d 1161, 1166 (Fed. Cir. 2019).
Equally unpersuasive is Appellant’s argument that our determination
“specifically abstracts away at least one of basis of novelty in the claim.”
Req. Reh’g 4. In this regard, Appellant’s argument is not determinative here
because a novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 90 (2012); see also Diamond v. Diehr, 450 U.S.
175, 188-89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Appellant further argues that the Board improperly agrees with the
Examiner by determining “that ‘[t]his is a concept involving human activity
related to commercial practices and managing relationships or transactions
between people.’” Req. Reh’g 5 (quoting Dec. 8). According to Appellant,
“the Decision includes no explanation for ‘why a specific limitation(s)
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recited in the claim falls within one of the enumerated groupings of abstract
ideas.” Req. Reh’g 6. We cannot agree.
Instead, we maintain that the Decision adequately explains that
claim 1 recites a certain method of organizing human activity after
considering each of the individual limitations recited in the claim. See Dec.
7–8.3 And, after analyzing each of the limitations of independent claim 1,
the Decision stated that
[u]nderstood in light of the Specification, we agree with
the Examiner that independent claim 1 broadly recites “placing
and releasing a hold on an account involved in a pending
transaction, which is an abstract idea.” Final Act. 3. We also
agree with the Examiner that “[t]his is a concept involving
human activity related to commercial practices and managing
relationships or transactions between people.” Id. at 5; see also
Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d
1364, 1372 (Fed. Cir. 2017) (holding claims to verifying
(authenticating) payment information directed to an abstract
idea under Alice step one); Smartflash LLC v. Apple LLC, 680
F. Appx. 977, 982-83 (Fed. Cir. 2017) (holding claims to
controlling access to content data based on verification of
payment information patent ineligible); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370-73 (Fed. Cir. 2011)
(holding claims to a computer-implemented system for
“verifying the validity of a credit card transaction over the
Internet” patent ineligible); and Inventor Holdings, LLC v. Bed
Bath & Beyond Inc., 876 F.3d 1372 (Fed. Cir. 2017) (claims
directed to the use of a POS terminal to transmit transaction-
related information and to process payments held invalid under
35 U.S.C. § 101).

3 Although the Decision does not cite the October 2019 Update to the
Revised Guidance, the Update was considered. In addition, the October
2019 Update did not substantively change the analysis prescribed by the
Revised Guidance, so the lack of a citation to the October 2019 Update does
not reflect any error in the analysis presented in the Decision.
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Dec. 8–9. Other than simply asserting that claim 1 “cannot be considered
one of the limited ‘certain methods of organizing human activity’” (Req.
Reh’g. 5), Appellant’s Request for Rehearing fails to provide any argument
or explanation as to how independent claim 1 is not a certain method of
organizing human activity or otherwise distinct from the similar concepts
that the courts have held to be abstract in the cases cited in the Decision .
Equally unpersuasive is Appellant’s argument that “neither the
Examiner nor the Board has established a human analog for ‘releasing any
portion of said hold amount which exceeds said amount of said transaction,
reducing said hold amount to said amount of said transaction.’” Req.
Reh’g 5. To the extent Appellant argues that our determination requires
evidence regarding “a human analog for ‘releasing any portion of said hold
amount which exceeds said amount of said transaction, reducing said hold
amount to said amount of said transaction’” (Req. Reh’g 5), Appellant’s
argument is misplaced. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (“Instead of a definition [for what an
‘abstract idea’ encompasses], then, the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen—what prior cases were about, and which way they were
decided.”); see also Dec. 8–9.
However, even accepting Appellant’s premise that a human being
could not perform the task of releasing a portion of the amount held which
exceeds the amount of the transaction, this would not be dispositive of patent
eligibility because “the inability for the human mind to perform each claim
step does not alone confer patentability.” FairWarning IP, LLC v. Iatric
Sys. Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). As our reviewing court has
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explained, “the fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Thus, the fact that
releasing a portion of the amount held could be performed more quickly or
efficiently via a computer does not materially alter the patent eligibility of
independent claim 1.
Appellant further argues that “the Decision does not address or
consider the impact of the claimed ‘facilitating . . . placement of a hold
amount against a payment card account of a customer, in response to said
customer presenting a payment device, associated with said payment card
account, in connection with a non-PIN, signature-based, dual-message
transaction with a merchant.’” Req. Reh’g 6–7. More particularly,
Appellant argues that “the additional steps performed in the context of the
claimed ‘non-PIN, signature-based, dual-message transaction’ provide ‘a
specific solution to a technical problem’ (i.e., an excessive hold amount
being in place in non-PIN, signature-based, dual-message transactions until a
later clearing and settlement), similar to the claims in Enfish[, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).]” Req. Reh’g 8.
We disagree with Appellant’s argument.
Unlike Enfish, and as we discussed in the Decision (pages 12–13), this
is not a situation where the steps recited by independent claim 1 “are
directed to a specific improvement to the way computers operate” and
therefore not directed to an abstract idea. Instead, we maintain that
claim 1, viewed as a whole and in light of the Specification,
amounts to nothing significantly more than an instruction to
apply the abstract idea of “placing and releasing a hold on an
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account involved in a pending transaction” according to ISO
standards using conventional and generic components, which
under our precedents, is not enough to transform an abstract
idea into a patent-eligible invention.
Id. (citations omitted); see also id. at 16 (“[I]ndependent claim 1 operates in
a manner that ‘conform[s] to the International Organization for
Standardization (ISO) Standard 8583 . . . which is the ISO standard for
systems that exchange electronic transactions made by cardholders using
payment cards.’ Spec. 11:12–16.”). And, in contrast to Appellant’s
assertion, the Decision did in fact consider the fact that the step of
“facilitating . . . placement of a hold amount” occurred “in connection with a
non-PIN, signature-based, dual-message transaction with a merchant,” as
recited by independent claim 1. See, e.g., Dec. 11–13, 15–16.
Appellant last asserts that the Examiner’s suggestion in the Answer
“that ‘[t]he claimed invention . . . is also not necessarily rooted in computer
technology’” represents a new ground of rejection. Req. Reh’g 8–9. More
particularly, Appellant argues
the idea that the claimed invention was “not necessarily rooted
in computer technology” was new to prosecution (i.e., not
found in the Final Rejection). The Examiner did not previously
communicate this position. Accordingly, Appellants have not
been afforded a “fair opportunity to react to the thrust of the
rejection” (see [In re Kronig, 539 F.2d 1300, 1302–03 (CCPA
1976)]) and the rejection should be identified as a new ground
of rejection with the all the associated protections afforded to
the Appellant.”
Req. Reh’g 9.
However, Appellant’s assertion does not identify any points that were
misapprehended or overlooked by the Decision that resulted in error.
Instead, Appellant’s proper recourse would have been file a petition under
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37 CFR § 1.181 (a) within two months from the mailing date of the Answer.
Appellant does not appear to have done so. Even so, the basic thrust of the
Examiner’s rejection of claims 1–5 and 7–21 under 35 U.S.C. § 101 has not
changed. The legal basis and rationale provided for this rejection in each of
the Final Office Action, the Examiner’s Answer, and the Decision follow
judicial precedent.4
We also cannot agree with Appellant that they “have not been
afforded a ‘fair opportunity to react to the thrust of the rejection.’” Req.
Reh’g 9 (quoting In re Kronig, 539 F.2d at 1303). In this regard, Appellant
did have an opportunity to address and provide arguments in response to the
Examiner’s purported new “position” in its Reply Brief. See, e.g., Reply
Br. 13. And, Appellant’s arguments were addressed in the Decision at pages
11 through 13. Here, other than asserting that “the rejection should be
identified as a new ground of rejection” (Req. Reh’g 9), Appellant’s Request
does not identify points that were misapprehended or overlooked by the
original Decision that resulted in error.
In summary, Appellant’s Request has been granted only to the extent
that we have reconsidered our Decision in light of Appellant’s Request, but
is denied in all substantive respects. Accordingly, we decline to modify our
original Decision.5

4 See Alice, 573 U.S. at 217–18; Mayo, 566 U.S. at 75–77; see also, e.g., In
re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (to determine whether an
invention claims ineligible subject matter, one applies “the now-familiar
two-step test introduced in Mayo, and further explained in Alice”) (citation
omitted).
5 We acknowledge Appellant’s references to various decisions by other
panels of the Board. Req. 6, 8. However, we note that we are not, in any
event, bound by a non-precedential decision of another panel of the Board.
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CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–5, 7–21 101 Eligibility 1–5, 7–21
Overall
Outcome
1–5, 7–21
Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–21 101 Eligibility 1–5, 7–21
Overall
Outcome
1–5, 7–21
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).
DENIED