Tara Singhal

Patent Trials and Appeals Board

Jun 24, 2020

2019006579 (P.T.A.B. Jun. 24, 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.
14/176,258 02/10/2014 Tara Chand Singhal 11195. 33C6 1588
103550 7590 06/24/2020
Tara Chand Singhal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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 2019-006579
Application 14/176,258
Technology Center 3600

Before MELISSA A. HAAPALA, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, 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 1–20, which are all the claims pending
in this application. 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 the
applicant/inventor Tara Chand Singhal. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s claimed subject matter relates generally to “facilitating
payment transactions to merchants using existing bankcards and bank
accounts of a customer.” Spec. 1.2 The invention “stores private data of the
customer that is not directly recognizable and traceable to the customer”
thereby providing “a level of security to the customer because the payment
card does not identify the customer. Further, the card number and/or the
expiration date of the payment card is not disclosed to the merchant.” Id. at
3.
Exemplary Claim
Claims 1 and 11 are independent. Independent claim 11 is exemplary
of the claims on appeal and is reproduced below:
11. A method for a system of security for a payment
card system that facilitates, bankcard payment transactions to
merchants, the system of security comprising the steps of:
a. providing by the system of security a database server
that stores pre-existing bankcard data of customers from
bankcards issued from card-issuing banks with at least one or
more pre-stored bankcard data of the customer and wherein
referencing the customer bankcard data in the database server
by a unique customer identifier, wherein not identifying by the
unique customer identifier the customer and the card-issuing
bank;

2 We refer to: (1) the originally filed Specification filed February 10, 2014
(“Spec.”); (2) the Final Office Action mailed October 5, 2017 (“Final Act.”);
(3) the Appeal Brief filed April 10, 2018 (“Appeal Br.”); (4) the Examiner’s
Answer mailed July 1, 2019 (“Ans.”); and (3) the Reply Brief filed
September 3, 2019 (“Reply Br.”).
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b. providing a payment card, wherein the payment card
has a substrate and wherein the payment card is not a bankcard,
not having been issued by a card- issuing bank and wherein
having by the payment card on the substrate an identification
that references the unique customer identifier in the database
server;
c. receiving by the database server over a global
computer network from merchants merchant point of sale
originated payment transaction request records using the
payment card, wherein the payment transaction request records
having the unique customer identifier from the payment card;
d. mapping by the database server the unique customer
identifier in the payment transaction request record received
from the merchant to the card-issuing bank's bankcard data pre-
stored in the database server and substituting the unique
customer identifier with the bankcard data from the card-issuing
bank to create an original payment transaction request record
and sending the original payment transaction request record for
routing to a card-issuing bank for payment processing, thereby
for merchants be able to process bankcard payment transactions
without receiving bankcard data and thus avoid security risk
inherent in safeguarding others’ bankcard data.
Appeal Br. 47–48.
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–5.

OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
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Appellant appeals the Examiner’s rejection of claims 1–20 as
ineligible subject matter under § 101. Appeal Br. 10–29; Reply Br. 3–25.
Appellant argues claims 1–20 as a group with respect to the § 101 rejection.
Appeal Br. 16. We, thus, select independent claim 11 as exemplary of the
group. See 37 C.F.R. § 41.37(c)(1)(iv).
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 has held that § 101 includes implicit
exceptions—laws of nature, natural phenomena, and abstract ideas—which
are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In January 2019, the Office issued the 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”),
which addresses the manner in which § 101 case law is to be applied by the
Office. In October 2019, the Office issued an update to explain further the
manner in which the Guidance should be implemented. See October 2019
Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019);
October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“October 2019 Update”). The Board is required
to adhere to these guidance documents as a matter of Office policy.
Guidance 51. The Guidance sets forth a four-part analysis for determining
whether a claim is eligible subject matter under § 101; the four parts are
labeled Step 1, Step 2A Prong 1, Step 2A Prong 2, and Step 2B. Id. 53–56.

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Guidance Step 1
First, under “Step 1,” we consider whether the claimed subject matter
falls within the four statutory categories set forth in § 101, namely
“[p]rocess, machine, manufacture, or composition of matter.” Guidance 53–
54; see 35 U.S.C. § 101. Appellant’s independent claim 1 recites a system
(i.e., a “machine”) and independent claim 11 recites a method (i.e., a
“process”). As such, the claims are directed to a statutory class of invention
within § 101 and we proceed to the next step.
Guidance Step 2A Prong 1 (Alice/Mayo–Step 1) (Judicial Exceptions)
Second, under “Step 2A Prong 1,” we evaluate “whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” Guidance 54; see Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216–17 (2014).
The Examiner determines that claim 11 recites and is directed to a
judicial exception—specifically, an abstract idea. Final Act. 3–4.
According to the Examiner, “claim 11 is directed to . . . facilitating bankcard
payment transactions to merchants using existing bankcard and bank
accounts of a customer.” Id. at 3. As a result, the Examiner determines that
such payment transaction steps may be categorized as “business
interaction/sale activity that falls within the enumerated group of ‘certain
methods of organizing human activity.’” Ans. 7. The Examiner further
determines claim 11 is “directed to [a] fundamental economic practice.”
Final Act. 13. Both commercial interactions and fundamental economic
practices are groupings of abstract ideas identified by the Guidance as
“certain methods of organizing human activity.” Guidance 52.
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Appellant argues that “[u]nder Alice, an Abstract Subject Matter
(ASM) has been defined as those matters that are for ‘hedging risk’ as in
Bilski and for ‘intermediated settlement’ as in Alice” and claim 11 is not
abstract because it “is neither hedging risk, nor directed to intermediated
settlement.” Appeal Br. 15; Reply Br. 12. Appellant further argues that
“Alice has defined ‘fundamental economic practice’ as a practice that uses
‘building block of human ingenuity’ and a practice that has long been
prevalent in our system of commerce” and “the claimed subject matter, in
any shape and form, does not claim building blocks of human ingenuity, as
had been identified above and are not a ‘fundamental economic practice long
used in commerce.’” Appeal Br. 16; Reply Br. 13.
We are not persuaded of reversible Examiner error. Rather, we agree
with the Examiner’s determination that claim 11 recites an abstract idea.
Apart from additional elements discussed separately below, limitations b, c,
and d of claim 11, under a broadest reasonable interpretation, recite steps
focused on “commercial or business or transactional activities/interactions,”
(Ans. 7) or on a fundamental economic activity, or both. According to the
Guidance, certain methods of organizing human activity that qualify as
abstract ideas may include claims that relate to “fundamental economic
principles or practices” and “commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations).” Guidance
52.
Specifically, limitation b recites providing a non-bank payment card
with a substrate that references a unique customer identifier in a database
server and limitation c recites “receiving by the database server over a global
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computer network merchant point of sale originated payment transaction
request records using the payment card, wherein the payment transaction
request records having the unique customer identifier from the payment
card.” Apart from the additional limitations of the payment card with a
substrate (the database server and the global computer network) limitations b
and c recite a long-standing commercial practice and fundamental economic
practice of “facilitating bankcard payment transactions to merchants using
existing bankcard and bank accounts of a customer.” Final Act. 3; cf.
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–
79 (Fed. Cir. 2017) (holding that concept of “local processing of payments
for remotely purchased goods” is “a fundamental economic practice”
(citation omitted)). Limitations b and c also involve commercial activity and
behavior, as these limitations recite providing a payment card for purchase
of retail items and receiving merchant point of sale originated payment
transaction request records that use the payment card. Guidance 52; October
2019 Update 5–6. Accordingly, we agree with the Examiner that limitations
b and c recite certain methods of organizing human activity consistent with
the Guidance.
Limitation d recites “mapping . . . the unique customer identifier in
the payment transaction request record received from the merchant to the
card-issuing bank’s bankcard data” and “substituting the unique customer
identifier with the bankcard data from the card-issuing bank to create an
original payment transaction request record and sending the original
payment transaction request record for routing to a card-issuing bank for
payment processing.” Apart from the additional limitations of the database
server, limitation d recites a long-standing commercial practice and
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fundamental economic practice of mapping a unique customer identifier to
bankcard data. Final Act. 3; cf. Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012) (finding abstract the concept of an automated clearing
house that manages transactions between financial institutions and
merchants.); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011) (finding abstract a method for verifying the validity of
a credit card transaction “comprising the steps of: a) obtaining information
about other transactions . . . identified with the [] credit card transaction; b)
constructing a map of credit card numbers based upon the other transactions
and; c) utilizing the map of credit card numbers to determine if the credit
card transaction is valid.” (alteration in original)).
We also determine clam 11 recites a mental process because the claim
recites steps that can be practically carried out by humans without the use of
a computer. Id. In particular, limitation a recites “providing . . . a database
server that stores pre-existing bankcard data of customers from bankcards
issued from card-issuing banks with at least one or more pre-stored bankcard
data of the customer” and “referencing the customer bankcard data in the
database server by a unique customer identifier.” Apart from the additional
limitation of the database server, which is generic hardware as discussed
below, a person can perform practically the functions of “providing . . . pre-
existing bankcard data of customers from bankcards issued from card-
issuing banks with at least one or more pre-stored bankcard data of the
customer” and “referencing the customer bankcard data . . . by a unique
customer identifier” by reviewing and compiling the information mentally or
by using pen and paper. Guidance 52.
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We further determine that the additional recited step in limitation a of
storing the pre-existing bankcard data amounts to data collection that is part
of the mental process. As our reviewing court has held, even if an analysis
requires one to access and gather data from a database or to utilize a pen and
paper in the analysis, such analysis may still be an abstract mental process.
See, e.g., CyberSource, 654 F.3d at 1372 (“[E]ven if some physical steps are
required to obtain information from the database . . . such data-gathering
steps cannot alone confer patentability.”); see also SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1165, 1167–68 (Fed. Cir. 2018) (claims
reciting “[a] method for providing statistical analysis” were determined to be
“directed to an abstract idea;” noting that “even if a process of collecting and
analyzing information is limited to particular content or a particular source,
that limitation does not make the collection and analysis other than
abstract”).
In addition, we find limitation d, like the claimed steps in
Cybersource discussed above, also recites a mental process. Similar to
Cybersource, limitation d’s mapping of data could be performed practically
in the human mind, or by a human using a pen and paper. For example, a
person could perform mapping of a unique customer identifier to bankcard
data and then manually substitute the unique customer identifier with the
bankcard data to create an original payment transaction request record.
Moreover, the limitation’s scope is not limited to any particular mapping
algorithm, and no algorithms are disclosed in Appellant’s Specification.
Rather, the broad scope of limitation d extends to essentially any mapping of
a unique customer identifier received from a merchant to bankcard data.
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We note that whether claim 11 recites plural abstract ideas versus one
abstract idea does not affect the inquiry of whether the claim is directed to
patent-eligible subject matter. As our reviewing court has held, combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were
directed to a combination of abstract ideas).
Thus, we agree with the Examiner that claim 11 recites at least one
abstract idea under the Guidance, and we discern no error in that part of the
Examiner’s rejection.
Guidance Step 2A Prong 2 (Practical Application)
Having determined that claim 11 recites an abstract idea, we proceed
to “Step 2A Prong 2” of the Guidance, which requires that we evaluate
whether “the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” Guidance 54. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Id.; see Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012). The Guidance
specifies that this evaluation is conducted by first “[i]dentifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s),” and then “evaluating those additional elements individually
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and in combination to determine whether they integrate the exception into a
practical application.” Guidance 54–55.
The Examiner finds claim 11 recites additional elements including “a
database server, a merchant point of sale and a global computer network.”
Ans. 7. The Examiner determines the additional elements do not integrate
the exception into a practical application because the additional elements are
generic computer components “recited at a high level of generality” and
“[a]ccordingly, these additional elements do not integrate the abstract idea
into a practical application because they do not impose any meaningful
limits on practicing the abstract idea.” Id.
Appellant argues that claim 11 is integrated into a practical
application because “the claimed subject matter is necessarily rooted in a
system of security for a payment card system using computer technology
and computer networks to overcome a problem[,] specifically security of
payment transactions using bankcards, where bankcard data is hacked from
merchant systems.” Appeal Br. 21. Appellant further argues “[t]he database
servers all have CPUs, memory, display, communication interfaces, and
peripherals both for input of data and output of data and a display screen and
thus is a digital machine.” Id. at 25.
We determine that the additional limitations identified by the
Examiner are insufficient to integrate the recited judicial exception into a
practical application. Each of these limitations merely recites the use of
generic computer technology to implement the otherwise abstract process on
a computer server, to store customer bankcard data, and to transmit and
receive transaction data. Appellant’s invention, fairly categorized as
facilitating secure payment transactions to merchants by using a payment
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card that does not identify the customer, is focused on improving merchant
sales transactions. Spec. 3. Thus, the purported improvement identified by
Appellant is not an improvement to technology. Instead, any improvement
provided by these steps improves the abstract idea itself. It is well-
established, however, that improvements in the abstract idea are insufficient
to confer eligibility on an otherwise ineligible claim. SAP Am. Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018); Customedia Techs.,
LLC v. Dish Network Corp., 951 F.3d 1359, 1363–65 (Fed. Cir. 2020).
Furthermore, the Specification does not provide additional details that
would distinguish the claimed additional limitations from a generic
implementation. See Ans. 10 (“Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network, and database technology”); Final Act. 3 (citing Spec. 6).
We agree with the Examiner that there is no indication that the components
used in the invention are anything other than general purpose computer
components. See Fig. 1D, Spec. 7 (“[G]ateway 23 is a computer system that
routs the data for payment authorization to the bank card authorization
network 21 . . . . The bankcard authorization network 21 is computer
systems that process data from an existing bankcard 31.”). Thus, rather than
improving computer technology, claim 11 uses the generic computer
components as tools to implement the improved abstract idea. Using generic
computer components as tools to perform an abstract idea does not integrate
the judicial exception into a practical application or otherwise confer patent-
eligibility. Guidance 55.

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Additionally, none of the remaining indicia of integration identified
by the Guidance are present in the claim. Guidance 55; see MPEP
§ 2106.05(a)–(c), (e)–(h). For example, the claim does not recite a particular
machine and, instead, generically recites a database server, a global
computer network, and other generic computer components. Ans. 7. Nor
does the claim recite the “[t]ransformation and reduction of an article ‘to a
different state or thing.’” Bilski, 561 U.S. 593, 604 (2010); MPEP
§ 2106.05(c). The claimed additional elements do not transform an article,
i.e., some type of tangible or physical object, but instead transform an
intangible concept, i.e., information, from one form to another. That is,
claim 11 simply collects and manipulates data, thereby “sending the original
payment transaction request record for routing to a card-issuing bank for
payment processing.” See MPEP § 2106.05(c); see also Gottschalk v.
Benson, 409 U.S. 63, 71–72 (1972) (holding that a computer based
algorithm that merely transforms data from one form to another is not
patent-eligible). As such, claim 11 has no other meaningful limitations (see
MPEP § 2106.05(e)), and merely recites instructions to execute an abstract
idea on generic computer hardware (see MPEP § 2106.05(f)).
In summary, the additional elements of claim 11 are not applied in
any meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, i.e., generic computer
components, such that the claim as a whole is more than a drafting effort
designed to monopolize the judicial exception. We, therefore, determine
claim 11 is not directed to a specific asserted improvement in computer-
related technology or otherwise integrated into a practical application and
thus is directed to a judicial exception.
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Guidance Step 2B (Alice/Mayo, Step 2) (Inventive Concept)
Finally, having concluded that claim 11 is “directed to” an abstract
idea, we turn to whether the claims provide an “inventive concept,” i.e.,
whether the additional elements, individually and as an ordered combination,
amount to “significantly more” than the exceptions themselves. Guidance
56. To determine whether the claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance 56.
The Examiner determines that the “claim does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements are simply a generic recitation of
a processor performing its generic computer functions.” Final Act. 3 (citing
Spec. 6). Additionally, the Examiner determines that “[v]iewing the
limitations as an ordered combination does not add anything further than
looking at the limitations individually.” Ans. 8.
Appellant argues that “assuming for the moment, for the sake of the
argument, that someone, without any logic that could be fathomed by any
rational person, would characterize the claims as directed to a fundamental
economic practice, the claims, when elements are considered individually
. . . do have ‘something significantly more.’” Appeal Br. 18; Reply Br. 15.
We agree with the Examiner, however, that the additional elements
are conventional “computer components performing well-understood,
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routine, conventional activities.” Final Act. 3–4. As discussed above, the
only “additional elements” identified by the Examiner in claim 11 beyond
the recited abstract idea are “a database server, a merchant point of sale and
a global computer network,” and these elements are merely used in a
conventional manner for performing each step of the claimed abstract
process for facilitating bankcard payment transactions. Ans. 7. As the
Examiner notes, claim 11 uses “generic computer components claimed to
perform their basic functions.” Id. at 5. We also agree with the Examiner’s
finding that, according to Appellant’s Specification, “the additional elements
are simply a generic recitation of a processor performing its generic
computer functions.” Final Act. 3 (citing Spec. 6). We, therefore, agree
with the Examiner’s determination that the “claim does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception.” Id. The recited hardware adds nothing more than
well-understood, routine, conventional activities, specified at a high level of
generality, to the abstract mental process. See MPEP § 2106.05(d)(II)(ii).
Appellant next argues that the additional limitations of claim 11, “as
an ordered combination of the elements do teach ‘something significantly
more.’” Appeal Br. 19.
We are not persuaded. Appellant provides no evidence from the
Specification to support any assertion that the claimed combination of
additional elements is non-conventional. Mere conclusory statements
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Appellant’s claims and
Specification describe an abstract idea implemented by generic hardware.
There is no evidence in the record to support the argument that Appellant’s
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claimed method is provided with any non-conventional and non-generic
arrangement of known, conventional components. Likewise, there is no
combination of elements recited in Appellant’s claim 11 that contain any
“inventive concept” or add anything “significantly more” to transform the
abstract concept into a patent-eligible application. Alice, 573 U.S. 208 at
221.
In summary, we conclude that claim 11 does not set forth an inventive
concept because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception, whether the claim
elements are considered individually or as an ordered combination.
Accordingly, we are not persuaded that claim 11 recites patent-
eligible subject matter. Nor has Appellant proffered sufficient evidence or
argument to persuade us that any of the limitations in the remaining claims
provide a meaningful limitation that transform the claims into a patent-
eligible application.
CONCLUSION
In Summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–20 101 Patent eligibility 1–20

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