14270644 - (D) (P.T.A.B. Feb. 18, 2020)

Sarada Mohapatra

Patent Trials and Appeals BoardFeb 18, 2020

14270644 - (D) (P.T.A.B. Feb. 18, 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. 14/270,644 05/06/2014 Sarada Mohapatra 7754 111721 7590 02/18/2020 Sarada Mohapatra 3820 Highknob Cir Naperville, IL 60564 EXAMINER KENNEDY, JOSHUA T ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 02/18/2020 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): sarada.mohapatra@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SARADA MOHAPATRA ____________________ Appeal 2018-008151 Application 14/270,644 Technology Center 3600 ____________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of claims 18–22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sarada Mohapatra. Appeal Br. 2. Appeal 2018-008151 Application 14/270,644 2 CLAIMED SUBJECT MATTER The claims are directed to a cardholder changeable card security code. Independent claim 18, below, is illustrative of the claimed subject matter: 18. A method for countering credit card fraud arising from compromised credit card information by utilizing cardholder changeable card security code (CSC; also known as card verification value CVV2 or card verification data CVD or card identification code CID or card verification code CVC2) comprising: a) A card issuer enabling change of card security code printed on the card, by allowing cardholder to choose a new security code value as often as cardholder wishes, facilitating recordation of chosen card security code by the cardholder by providing an internet connected card account management facility, using most recently recorded card security code to verify subsequent transaction authorization requests without requiring any change in existing credit cards, terminals, equipment, computer software and communication protocols used in transaction authorization, and denying transactions when card security code provided during authorization does not match card security code on record; b) Cardholder changing card security code any time s/he deems it necessary to mitigate risk from possible card security code compromise, by selecting a new security code value to be used as personal secret separate from the card without requiring assistance from any software program running on any device, ensuring that selected new security code value is different from the printed code on first change and is different from last recorded code on subsequent changes, Appeal 2018-008151 Application 14/270,644 3 recording the new card security code value using issuer provided internet connected card account management facility, and remembering and providing the new card security code when prompted during subsequent credit card authorizations. REJECTIONS Claim 18 is rejected under 35 U.S.C. § 112(b) as being indefinite. Claims 18–22 are rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter. Claims 18–22 are rejected under 35 U.S.C. § 103 as being unpatentable over Adams (US 2011/0178903 A1, pub. July 21, 2011). OPINION 35 U.S.C. § 112 – Indefinite Claim 18 is rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4–5. Appellant does not address this rejection. See generally, Appeal Br. Thus, we summarily affirm the 35 U.S.C. § 112(b) rejection of claim 18. 35 U.S.C. § 101 – Patent Eligibility 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 determined that there are certain judicial exceptions to § 101, namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. See Mayo Collaborative Svc. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71 (2012). Appeal 2018-008151 Application 14/270,644 4 The Supreme Court has set forth “a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208,217 (2014) (citing Mayo, 566 U.S. at 72–73). According to the Supreme Court, we first determine whether the claims at issue are directed to one of those concepts. Id. If so, we secondly “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.” Id. (quoting Mayo, 566 U.S. at 79, 78). The PTO published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). When conducting step one of the Alice framework under this guidance, we first look to whether the claim recites: Prong 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 Prong 2 additional elements that integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. 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: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field; 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. Appeal 2018-008151 Application 14/270,644 5 See Revised Guidance, 84 Fed. Reg. at 51. § 101 Analysis Applying the Revised Guidance to the facts on this record, we find that Appellant’s claims are directed to patent-ineligible subject matter without significantly more. Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong 1 of the 2019 Revised Guidance The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Under Prong 1, we determine that the claimed “method for countering credit card fraud” is directed to the abstract idea of a method of organizing human activity in the form of fundamental economic practices. See Final Act. 3, 6 (Finding the claims are directed to a method of organizing human activity involving fundamental business concepts). This can be seen, not only in the preamble of claim 18, but also in the recited steps including: “allowing cardholder to choose a new [credit card] security code,” “facilitating recordation of chosen card security code,” “verify subsequent transaction authorization requests,” “denying transactions when card security code . . . does not match card security code on record,” “[c]ardholder changing card security code any time . . . necessary,” “selecting a new security code value,” “ensuring that selected new security code value is different from [prior codes],” “recording the new card security Appeal 2018-008151 Application 14/270,644 6 code value,” and “remembering and providing the new card security code when prompted during subsequent credit card authorizations.” Practical Application: Step One of the Mayo/Alice Framework; Step 2A, Prong 2 of the 2019 Revised Guidance Having concluded that claim 18 recites a judicial exception, i.e., an abstract idea, we next consider under Prong 2, whether the claim recites additional elements, considered individually and in combination, that integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. Here, the additional elements recited in claim 18, beyond the abstract idea, include: “providing an internet connected card account management facility.” Though the Specification does not describe “an internet connected card account management facility,” it could be understood to be a financial institution’s computer system. We are not persuaded this limitation, considered individually or as an ordered combination, integrates the abstract idea into a practical application. For example, we find no indication that providing an internet connected card account management facility, reflects an improvement to the functionality of a computer or an improvement to technology. At best, the limitation generally links the use of the abstract idea to a particular technological environment involving a financial institution. Appellant argues that other patents have issued in the area of card verification codes and authorization systems, implying that this area of technology is inherently a practical application. See Appeal Br. 4. However, our analysis is limited to the claims that are currently before us. Appellant does not provide analysis of the claim language in this section of Appeal 2018-008151 Application 14/270,644 7 argument. Id. Thus, we are not informed of error in the Examiner’s rejection. In view of the above, we determine that under Prong 2, the additional elements do not integrate the recited abstract idea into a practical application. Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2B of the 2019 Revised Guidance) Under this step, the Examiner determined that “the additional elements or combination of elements in the claims (internet, web application, mobile application) do not add significantly more so as to transform the abstract idea into patent-eligible subject matter.” Final Act. 3. Further, the Examiner found that “the elements other than the abstract idea . . . amount to no more than instructions to implement the abstract idea on a computer [and] . . . performs generic computer functions that are well understood, routine and conventional activities previously known to the industry.” Id. at 3–4. We agree. As discussed above, almost all of the claimed steps recite the abstract idea of a method of organizing human activity in the form of fundamental economic practices. “[P]roviding an internet connected card account management facility” or otherwise storing the data, etc., does no more than implement the abstract idea on a computer. Appellant argues that there are a number of benefits to the invention, especially in preventing credit card fraud and that the benefits are “significantly more” than that offered currently. Appeal Br. 3–4. However, Appellant’s argument simply describes the benefits of the abstract idea, rather than identifying that there is something claimed beyond Appeal 2018-008151 Application 14/270,644 8 the abstract idea. We agree that Appellant has expressed noble intentions and there might be some public benefit from Appellant’s invention. However, we are constrained to determine whether the invention, as defined by the claim language is eligible or ineligible based on the Supreme Court’s exceptions to eligible subject matter. For all of the above reasons, we are not persuaded of error in the Examiner’s rejection of claim 18 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 18, and claims 19–22, which fall with claim 18. 35 U.S.C. § 103 – Obviousness The Examiner finds that Adams’ “method of enabling a card holder to select a new changeable card security code (i.e. PIN number)” teaches most of the features of the claims. Final Act. 5. The Examiner finds that Adams does not teach “the changing of a CVV2/ CSC/ CVD/ CID/ CVC2.” Id. However, the Examiner determines that “it would have been obvious . . . to change a security code such as a CVV2 number as this is merely a predictable variation of changing a PIN number as taught by Adams producing expected and predictable results.” Id. at 6. Appellant argues that “CVV2 on a card has been fixed from its inception. Making is changeable is an important aspect of my patent application.” Appeal Br. 5. The Examiner finds that “persons of ordinary skill in the art have recognized a need to change the values of the CVV2 on a card for security purposes,” after citing several patents that are not formally applied in the obviousness rejection. Ans. 10. Appeal 2018-008151 Application 14/270,644 9 However, the Examiner has not identified where any of these patents teaches a “change of card security code” where the card security code is “printed on the card” as required by claim 18. In fact, each of these patents, though related, appears to be primarily directed to electronic credit cards or dynamic security codes. See U.S. Pat. 8,567,670 B2, iss. Oct. 29, 2013 (related to a one time use CVC for an electronic credit card); U.S. Pat. 8,086,493 B1, iss. Dec. 9, 2011 (related to electronic token with dynamic CID); U.S. Pat. 8,930,273 B2, iss. Jan. 6, 2015 (related to dynamic card value for mobile payments). For this reason, we do not sustain the Examiner’s rejection of the claims as obvious. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 18 112(b) Indefiniteness 18 18–22 101 Eligibility 18–22 18–22 103 Adams 18–22 Overall Outcome2 18–22 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) (2017). AFFIRMED 2 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”