Singhal, Tara Chand.

Patent Trials and Appeals Board

Jul 23, 2020

12928710 - (R) (P.T.A.B. Jul. 23, 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.
12/928,710 12/17/2010 Tara Chand Singhal 11195.37Div3 5129
103550 7590 07/23/2020
Tara Chand Singhal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
chand@internetpromise.com
singhal@att.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TARA CHAND SINGHAL
____________

Appeal 2019-000707
Application 12/928,710
Technology Center 3600
____________

Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant filed a Request for
Rehearing (“Req. Reh’g”), dated May 26, 2020, seeking reconsideration of
our Decision on Appeal mailed March 23, 2020 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. We have jurisdiction over the
Request for Rehearing under 35 U.S.C. § 6(b).
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing. See 37 C.F.R.
§ 41.52(a)(1). Also, a request for rehearing is not an opportunity to merely
express disagreement with a decision without setting forth points believed to
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have been misapprehended or overlooked. The proper course for an
Applicant dissatisfied with a Board decision is to seek judicial review, not to
file a request for rehearing to reargue issues that have already been decided.
See 35 U.S.C. §§ 141, 145.
In the Request for Rehearing, Appellant argues the Board has
overlooked four key issues. Req. Reh’g 3–4. First, Appellant argues the
Board misunderstood and misapplied Alice Corp. v. CLS Bank Int’l, 573
U.S. 208 (2014) when affirming the Examiner’s rejection of the claims
under § 101. In support of this argument, Appellant provides a lengthy
overview and interpretation of the Supreme Court’s decision in Alice. Req.
Reh’g 6–9.
Second, Appellant highlights several limitations from claims 1 and 11
as indicating the claimed subject matter is “not merely directed to a payment
transaction but to security of private data in payment transactions.” Req.
Reh’g 9. Claim 1, with Appellant’s highlighted limitations, is reproduced
below:
A secure payment system between a customer and a
merchant using a sales terminal of the merchant and a central
system on a global computer network, comprising:
a cellular wireless device of the customer, wherein the
wireless device is equipped with a wireless data receiving
sensor, wherein the wireless data receiving sensor is one or
more from a group of, a digital camera, a short distance RF
receiver and an infrared receiver, the wireless device using the
wireless data receiving sensor is able to receive a partial
payment authorization transaction record from the sales
terminal of the merchant;
a logic stored in a memory of the wireless device and
operating in a CPU of the wireless device receives and
processes the partial payment authorization transaction
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record from the sales terminal, wherein the partial payment
authorization transaction record meta data includes data
fields of only a date and a time of the sales transaction, a
transaction reference number, a merchant terminal
identification and a payment amount;
the logic in the wireless device processes the partial
payment authorization transaction record by first
authenticating the device to the central system and then
wirelessly transmitting the partial payment authorization
transaction record over a cellular wireless communication
network to the central system, thereby enable a payment
transaction from the customer to the merchant.
Req. Reh’g 9–10.
Third, Appellant argues that “the Board has misinterpreted as well as
has disregarded the highlighted claim terms as above under BRI to equate
them to a ‘fundamental economic practice’ as that term is defined in Alice.”
Req. Reh’g 11. Appellant argues each of the highlighted terms “are not and
do no[t] lead to a conclusion of an Alice defined ‘fundamental economic
practice.’” Req. Reh’g 11–12.
Fourth, Appellant argues the Board’s decision runs afoul of “Alice
Law in at least the three different instances.” Req. Reh’g 4. These three
instances include disregarding the highlighted essential claim limitations and
assigning meaning to other claim terms that is inconsistent with the
specification (Req. Reh’g 13); disregarding the highlighted claim limitations
which were not well-understood, routine, or conventional (Req. Reh’g 14);
and disregarding the highlighted claim limitations because they indicate the
use of non-conventional and non-generic arrangement of known,
conventional pieces that add sufficiently inventive concept (Req. Reh’g 14–
15).
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We are unpersuaded by Appellant’s arguments. In our Decision we
reviewed the Examiner’s rejection and Appellant’s arguments in light of the
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance (“2019 Revised Guidance”).1 “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under step 2A of the 2019 Revised Guidance and the October 2019
Update, 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)).
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to
step 2B of the Guidance to determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is 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 2019 Revised Guidance, 84 Fed. Reg. at 56.

1 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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Under prong one of step 2A of the Guidance, we reviewed claim 1’s
limitations to determine whether the claim recites an abstract idea. We
found that it does. Decision 6–7. In doing so, we followed the
2019 Revised Guidance which is based on appropriate Supreme Court and
Federal Circuit case law on patentable subject matter, including the Supreme
Court’s Alice decision. In applying the 2019 Revised Guidance we noted
claim 1 recites “[a] secure payment system between a customer and a
merchant using a sales terminal of the merchant and a central system on a
global computer network.” Decision 6. We found the claim recites secure
processing of payments and under Federal Circuit case law we concluded
that processing of payments is a fundamental economic practice. See
Decision 6 (citing Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876
F.3d 1372, 1378–79 (Fed. Cir. 2017); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). We also identified other
limitations, such as those reciting authentication of the device and
transmission of the transaction record over a cellular network to a central
system as further illustrating the fundamental economic practice of securely
processing payments. Decision 6–7. Under the 2019 Revised Guidance,
fundamental economic practices fall under the category of certain methods
of organizing human activity, which the Guidance recognizes as constituting
an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Appellant argues that we misunderstood and misapplied Alice in
concluding that the claims recite an abstract idea. Req. Reh’g 3, 4, 6–9.
Appellant provides its own summary of the Alice decision and argues that
others, including the Federal Circuit and the USPTO, have confused and
misconstrued the decision. Req. Reh’g 6 (stating that the “CAFC further
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confused and misconstrued these seminal phrases” and “USPTO legal staff
then attempted to interpret these confusing CAFC decisions” in providing
guidance to the examiners). Further, Appellant argues the Board “indulged
in a knee jerk decision without examining the technical features of the claim
directed to security of private data in payment transactions.” Req. Reh’g 9
(emphasis removed). As we noted above, however, we applied the 2019
Revised Guidance and Federal Circuit case law which are based on Alice
and other relevant Supreme Court decisions. We are not free to ignore our
reviewing court’s interpretation of Supreme Court decisions simply because
Appellant disagrees with these interpretations. Finally, Appellant is
incorrect that we did not examine technical features of the claims, as we
explain below with respect to prong two of step 2A and step 2B of the
Guidance.
Under prong two of step 2A of the Guidance we analyzed the claim
limitations individually and as a whole to determine whether the claim
integrates the recited abstract idea into a practical application of the abstract
idea. In doing so we identified any additional elements recited beyond the
abstract idea and analyzed those elements individually and in combination.
Decision 7–11. These additional elements include “a cellular wireless
device . . . equipped with a wireless data receiving sensor . . . able to receive
a partial payment authorization transaction record from the sales terminal of
the merchant” and
a logic stored in a memory of the wireless device . . . receives
and processes the partial payment authorization transaction
record from the sales terminal, wherein the partial payment
authorization transaction record meta data includes data fields
of only a date and a time of the sales transaction, a transaction
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reference number, a merchant terminal identification and a
payment amount.
Decision 9–10. We determined these limitations describe data gathering
steps and the content and format of the data gathered in order the process the
payment. Id. Data gathering steps “cannot make an otherwise nonstatutory
claim statutory.” CyberSource, 654 F.3d at 1370 (quoting In re Grams, 888
F.2d 835, 840 (Fed. Cir. 1989)).
We also addressed the hardware elements recited in claim 1, including
the “cellular wireless device,” the servers of the “central system,” and the
interfaces over a “global computer network.” Decision 10. We found
Appellant’s invention did not improve the functioning of any of these
elements, which instead serve only to provide the technological environment
in which the secure payment processing system is implemented. Decision
10 (citing Spec. 7:17–29, 15:17–20, 17:24–28, 18:8–12 Fig. 3).
Under step 2B we found that the above limitations are used in their
routine and conventional manner to implement the claimed secure payment
processing system and therefore did not provide significantly more than the
abstract idea. Decision 11–12. We also addressed Appellant’s argument
that the invention was non-routine and non-conventional because, according
to Appellant, merchants have no effective way to safeguard consumer
private data being acquired by sales terminals in the process of processing a
payment for sales transaction via a bankcard.
Appellant argues in the Request for Rehearing that several limitations
indicate the claimed subject matter is “not merely directed to a payment
transaction but to security of private data in payment transactions.” Req.
Reh’g 9. Appellant also argues each of the highlighted terms “are not and
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do no lead to a conclusion of an Alice defined ‘fundamental economic
practice.’” Req. Reh’g 11–12.
However, as we explained, the highlighted limitations were each
addressed in our Decision. For example, Appellant highlights a “secure
payment system,” “a central system on a global computer network,” “a
cellular wireless device of the customer wherein the wireless device is
equipped with a wireless data receiving sensor.” Req. Reh’g 9–10. These
limitations, as we explained, do not indicate an improvement to the
functioning of the hardware elements recited. Similarly, we explained that
the limitations reciting “the wireless device using the wireless data receiving
sensor is able to receive a partial payment authorization transaction record
from the sales terminal of the merchant” and “receives and processes the
partial payment authorization transaction record from the sales terminal,
wherein the partial payment authorization transaction record meta data
includes data fields of only a date and a time of the sales transaction, a
transaction reference number, a merchant terminal identification and a
payment amount” are directed to data gathering steps or to the format and
content of the data itself, which we determined did not constitute a practical
application of the abstract idea. Decision 9 (citing CyberSource, 654 F.3d at
1370 (quoting Grams, 888 F.2d at 840)). Finally, we determined the
limitation reciting logic for processing the payment authorization record by
authenticating the device to the central system and then wirelessly
transmitting the payment authorization record to the central system, was part
of the fundamental economic practice of secure payment processing.
Decision 6–7; see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use
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of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.”); 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); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
Appellant argues that we ran afoul of Alice because we disregarded
the highlighted essential claim limitations and assigned meaning to other
claim terms that is inconsistent with the specification (Req. Reh’g 13);
disregarded the highlighted claim limitations which were not well-
understood, routine, or conventional (Req. Reh’g 14); and disregarded the
highlighted claim limitations because they indicate the use of non-
conventional and non-generic arrangement of known, conventional pieces
that add sufficiently inventive concept (Req. Reh’g 14–15). However each
of the highlighted limitations have been addressed in our Decision and we
explained that several of them are described in the Specification as operating
in their well-understood, routine, and conventional ways. Decision 10–12.
Moreover, Appellant does not identify what meaning we assigned to the
limitations, nor how our interpretations are inconsistent with the
Specification nor why we erred in finding the highlighted hardware elements
operate in their well-understood and routine manner.
CONCLUSION
Accordingly, we are not persuaded of any basis for modifying the
Decision in light of the arguments presented in the Rehearing Request.
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DECISION
We deny Appellant’s Request with respect to making any changes to
our Decision.
DENIED