13938176 - (D) (P.T.A.B. Apr. 29, 2020)

VISA INTERNATIONAL SERVICE ASSOCIATION

Patent Trials and Appeals BoardApr 29, 2020

13938176 - (D) (P.T.A.B. Apr. 29, 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. 13/938,176 07/09/2013 Abhinav Shrivastava 79900-911579(136US02) 5228 66945 7590 04/29/2020 KILPATRICK TOWNSEND & STOCKTON LLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER ALLADIN, AMBREEN A ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 04/29/2020 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ABHINAV SHRIVASTAVA1 ____________ Appeal 2019-005477 Application 13/938,176 Technology Center 3600 ____________ Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Visa International Service Association as the real party-in-interest. App. Br. 2. Appeal 2019-005477 Application 13/938,176 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–17, 24, 26–31, and 33 as unpatentable under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. Claims 1–17, 24, 26–31, and 33 stand further rejected as unpatentable under 35 U.S.C. § 112, second paragraph as being indefinite. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s invention is directed to a method, system, and apparatus for an electronic wallet. Abstract. The system may include a wallet-in- proxy (“WIP”) that generates a proxy payment identifier associated with the electronic wallet for conducting a transaction. Id. The electronic wallet further includes a payment identifier used to authenticate the transaction upon receiving an authentication request. Id. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A processor-implemented proxy wallet transaction method, comprising: receiving, by a server computer, a card authorization request comprising a proxy payment identifier from an acquirer server for a transaction, the proxy payment identifier received by the acquirer server from a point of sale terminal via a merchant server, after a physical proxy device comprising the proxy Appeal 2019-005477 Application 13/938,176 3 payment identifier interacts with the point of sale terminal, wherein the proxy payment identifier was generated in response to a request of a user of an electronic wallet; after receiving the card authorization request, determining, by the server computer, that the proxy payment identifier is associated with the electronic wallet; after determining that the proxy payment identifier is associated with the electronic wallet, obtaining, by the server computer, proxy payment preferences stored with the electronic wallet; after obtaining the proxy payment preferences, determining, by the server computer, that the card authorization request satisfies the proxy payment preferences; after determining that the card authorization request satisfies the proxy payment preferences, providing, by the server computer, an interface to a user device operated by the user to make a selection of one of a plurality of payment identifiers in the electronic wallet to pay for the transaction; after providing the interface to the user device, receiving, by the server computer, the selected payment identifier from the user device; and after receiving the selected payment identifier, processing, by the server computer, the transaction using the selected payment identifier associated with the electronic wallet by replacing the proxy payment identifier in the card authorization request with the selected payment identifier, forwarding the card authorization request including the selected payment identifier to an issuer server of the selected payment identifier, and receiving an authorization response from the issuer server, wherein the server computer is programmed with a timeout timer and will decline the card authorization request if the selection of one of the plurality of payment identifiers in the Appeal 2019-005477 Application 13/938,176 4 electronic wallet is not received by the server computer within a predetermined amount of time. App. Br. 20–21. ISSUES AND ANALYSIS We agree with, and expressly adopt, the Examiner’s findings, reasoning, and conclusion that the claims are directed to nonstatutory subject matter. We do not adopt the Examiner’s findings, reason, and conclusion with respect to the rejections under 35 U.S.C. § 112, second paragraph. We address below the arguments raised by Appellant. A. Rejection under 35 U.S.C. § 101 Issue Appellant argues that the Examiner erred in finding the claims are unpatentable as being directed to an abstract idea and therefore to nonstatutory subject matter. App. Br. 13. Analysis The Examiner finds that the claims are directed to a series of steps for conducting proxy wallet transactions, wherein the steps recite various fundamental economic practices and commercial interactions, which fall under the abstract idea category of certain methods of organizing human activity. Ans. 21. The Examiner finds that the “claims do not provide improvements to another technology or technical field, [or] improvements to the functioning of the computer itself.” Id. at 22. Rather, the Examiner finds that: Appeal 2019-005477 Application 13/938,176 5 The [S]pecification’s scant references to improvement center on improving processing efficiency by reducing redundant information exchange or by including a minimum of information required to process the purchase transaction (for instance by using session IDs), which is not improving the functioning of a computer but rather the amount of data that needs to be processed. Id. The Examiner determines that “[e]ven in ordered combination, the claims do not appear to reflect any improvement in technology.” Id. The Examiner finds that the additional elements recited in the claims “are mere instructions to apply an exception because they do not do more than merely invoke computers or machinery as a tool in its ordinary capacity for receiving, comparing and processing data.” Ans. 23. The Examiner finds that the claim limitations add insignificant extra-solution activity to the judicial exception in the form of: (1) mere data gathering (obtaining transaction information); (2) collecting, analyzing, and displaying information; (3) selecting a particular data source (proxy wallet transactions); (4) identifying the type of data to be manipulated (proxy payment information); and (5) outputting data. Id. Finally, the Examiner finds that the Specification describes the process being performed by generic computers using generic computer functions that are well-understood, routine and conventional. Id. at 24. Accordingly, the Examiner concludes “[t]he claim does not provide an inventive concept significantly more than the abstract idea.” Id. at 25. Appellant argues that the Examiner has not clearly identified “a single abstract idea” and that “[t]he Examiner’s attempt to combine multiple different abstract ideas … is improper.” App. Br. 13–14. Appellant argues that the claims are not directed to “a method of organizing human activity” Appeal 2019-005477 Application 13/938,176 6 as identified by the Examiner, because the claims allow a user to interact with an electronic payment system in a specific way, e.g., by selecting a payment identifier during a transaction. Id. at 15. Appellant further argues that the claims are not abstract because the claimed process solves the technical problem of using a digital wallet in a physical point-of-sale transaction with existing infrastructure. Id. at 14. Appellant contends that, even if, arguendo, the claims are directed to an abstract idea, the abstract idea is “clearly integrated into a practical application.” App. Br. 16. Appellant argues that the “use of ‘proxy payment preferences,’ an ‘interface’ for allowing a user to select a payment identifier during a transaction, and … a ‘timer’ that will automatically decline a transaction if a response is not received by the user” integrate the idea into the practical application of processing a payment using a digital wallet function during a transaction. Id. Finally, Appellant argues that “[t]he Examiner has provided no evidence to suggest that the combination of steps is conventional” and that “it is not ‘well-understood routine and conventional in the field’ to perform the steps recited in independent claim 1.” App. Br. 17–18 (emphasis in original). We are not persuaded by Appellant’s arguments. In performing an analysis of patentability under Section 101, we follow the framework set forth by the Supreme Court in Mayo Collaborative Servc’s v. Prometheus Labs., Inc., 566 U.S. 66 (2012). We are also mindful of, and guided by, the United States Patent and Trademark Office’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50–57 (January 7, 2019) (the Appeal 2019-005477 Application 13/938,176 7 “2019 Guidance”). Appellant’s claim 1 recites: “A processor-implemented proxy wallet transaction method, comprising….” Following the first step of the Mayo analysis, we find that the claim is directed to a process, or method, and therefore falls into one of the broad statutory categories of patent-eligible subject matter under 35 U.S.C. § 101. In the next step of the Mayo analysis, we determine whether the claim at issue is directed to a nonstatutory, patent-ineligible concept, i.e., a law of nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S. at 70– 71. If the claim is so directed, we next consider the elements of the claim both individually and “as an ordered combination” to determine whether additional elements “transform the nature of the claim” into a patent-eligible application. Id. at 78–79; see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the Supreme Court considered this second step as determining whether the claim recites an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Mayo, 566 U.S. at 72–73. More specifically, in this second step of the Mayo analysis, we look to whether the claim recites one of the judicially-created exceptions to Section 101, i.e., an abstract idea, a law of nature, or a natural phenomenon. See 2019 Guidance 54 (Step 2A, Prong 1). If we determine that the claim recites a judicial exception, we then determine whether the limitations of the claim reciting the judicial exception are integrated into a practical application. Id. (Step 2A, Prong 2). Appeal 2019-005477 Application 13/938,176 8 Finally, if we determine that the claim is directed to a judicially- created exception to Section 101, we evaluate the claim under the next step of the Mayo analysis, considering the elements of each claim both individually and “as an ordered combination” to determine whether additional elements “transform the nature of the claim” into a patent-eligible application. Mayo, 566 U.S. at 78–79; 2019 Guidance at 56 (Step 2B). Claim 1 recites the steps of: (1) receiving a card authorization request from a point-of-sale terminal after a physical proxy device interacts with the point-of-sale terminal; (2) determining a proxy payment identifier associated with an electronic wallet; (3) obtaining proxy payment preferences stored with the electronic wallet; (4) determining that the card authorization request satisfies the proxy payment preferences; (5) providing an interface on a user device for selecting a payment identifier; (6) receiving the selected payment identifier; (7) processing the transaction; (8) declining the authorization request if the payment identifier is not received within a predetermined time. App. Br. 20–21. We agree with the Examiner that the claims recite more than one abstract idea falling under the category of “certain methods of organizing human activity.” Final Act. 15. The Examiner’s identification of multiple abstract ideas recited by the claims is not improper, as “[a]dding one abstract idea […] to another abstract idea […] does not render the claim non- abstract.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). Generally, the claims recite various steps for performing a retail transaction using a proxy identifier backed by existing payment options. Credit-based retail transactions are contractual relations that constitute “a Appeal 2019-005477 Application 13/938,176 9 fundamental economic practice long prevalent in our system of commerce.” buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014). Accordingly, we agree that the Examiner’s examples of abstract ideas are similar to those recited in the instant claims. In addition to the examples cited by the Examiner, the claims are similar to those in Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1369–1372 (Fed. Cir. 2017). In Smart Systems, our reviewing court found that the claims recited various steps including acquiring identification data from a bankcard, funding a transaction from one of multiple balances associated with that bankcard, and denying a transaction if the bankcard is invalid. Id. at 1371–1372. The court determined that: Taken together, the Asserted Claims are directed to the formation of financial transactions in a particular field … and data collection related to such transactions. The Asserted Claims are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes. Rather, the claims are directed to the collection, storage, and recognition of data. Id. at 1372. Similar to Smart Systems, the claims are not directed to a new type of virtual wallet, point-of-sale terminal, or database, nor do the claims provide a method for processing data that improves existing technological processes. See id. Rather, the claims recite the steps of collecting, storing, and recognizing data, which fall under the abstract idea category of mental processes. Id. Having identified the abstract ideas recited by the claims, we determine whether the limitations of the claims reciting the judicial exception are integrated into a practical application. Appellant contends Appeal 2019-005477 Application 13/938,176 10 “[t]he claims recite an improved method for processing a payment using a digital wallet function during a transaction, and any alleged abstract idea is clearly integrated into a ‘practical application.’” App. Br. 16. We disagree. As explained in Smart Systems: The […] Claims are not directed to specific rules that improve a technological process. Again, the claims recite the collection of financial data from third parties, the storing of that financial data, linking proffered credit cards to the financial data, and allowing access … based on the financial data. The claims are not directed to a combined order of specific rules that improve any technological process, but rather invoke […] computers in the collection and arrangement of data. Smart Systems, 873 F.3d at 1372–1373. Similarly, Appellant’s claims are directed to functions with financial data, such as receiving a “card authorization request,” determining a “proxy payment identifier,” determining “proxy payment preferences,” and receiving an “authorization response,” which are implemented on a generic computer using generic software. The 2019 Guidance explains that “[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.” 2019 Guidance at 53. Appellant cites Example 42 of the USPTO’s patent eligibility guidance in support of their argument. App. Br. 16. Appellant does not provide a detailed explanation or comparison with respect to Example 42, and we do not agree that the Example supports eligibility. See id. Rather, we find that the claims recite no more than the abstract ideas, as implemented on a generic computer using Appeal 2019-005477 Application 13/938,176 11 generic software. As such, we find that the claims do not impose meaningful limits upon the abstract ideas recited in the claims, and are therefore directed to a judicial exception. For the same reasons, we find that, considering the elements of each claim both individually and “as an ordered combination,” the claims recite no additional elements that “transform the nature of the claim” into a patent eligible application. Mayo, 566 U.S. at 78–79; 2019 Guidance at 56 (Step 2B). More specifically, we agree with the Examiner that the claims simply append to the judicial exception well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality. The additional elements of claim 1 recite generic computer components and systems used to implement the abstract idea. See Ans. 24; see also Spec. ¶¶ 101, 416–417, 421–424, 508–528, Figures 2A, 4A–I, 23, 26, 28A–D, 30, 32, 34, 62A–B, 64A–B, 69, 72. For example, the Specification describes the method performed by the WIP controller using general-purpose computers, networks, and servers. Spec. ¶¶ 508–528. That is insufficient to render claims reciting an abstract idea patent eligible. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016). We therefore conclude the claims are directed to nonstatutory subject matter, and we affirm the Examiner’s rejection of the claims. Appeal 2019-005477 Application 13/938,176 12 B. Rejections under 35 U.S.C. § 112, second paragraph2 Issue 1 Appellant argues that the Examiner erred in determining that the claimed limitation of “satisfies the proxy payment preferences” is indefinite. App. Br. 9. Analysis The Examiner finds that the claims include a variable element by reciting the “card authorization request satisfies the proxy payment preferences.” Final Act. 5. The Examiner finds that “‘satisfies’ could be any number of steps or be any sort of standard and does not specify how the request is satisfied, thus said claim limitation fails to establish any limitations upon the ‘proxy payment preferences.’” Id. at 5–6. The Examiner concludes that “[t]he scope of the claim is therefore unclear as to the metes and bounds of the claim as different individuals may interpret the claim limitations with different bounds.” Ans. 19. Appellant argues “that one of ordinary skill in the art would know what does and what does not satisfy ‘proxy payment preferences.’” App. Br. 9. Appellant contends that paragraph [0265] of the Specification explains, “a consumer may configure parameters to restrict the wallet transactions,” for example by transaction amount, time range, number of transactions, or merchant identification. Id. Appellant argues that if an authorization 2 The Examiner withdrew the rejections under 35 U.S.C. § 112, second paragraph for reciting “optional claim limitations.” Ans. 18. Appeal 2019-005477 Application 13/938,176 13 request falls within the configured parameters, the request satisfies the proxy payment preferences. Id. We are persuaded by Appellant’s argument. “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, 35 U.S.C. § 112 demands no more.” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)(internal citations omitted). We agree with Appellant that the one skilled in the art would have understood the claims to require comparing an authorization request to existing parameters to confirm whether the request falls within the parameters. Accordingly, we do not sustain the Examiner’s rejection of claims 1, 9, 17, and 24 as indefinite for reciting the “satisfies” limitation. Issue 2 Appellant argues that the Examiner erred in determining that the means-plus-function limitations of claim 9 are indefinite. App. Br. 8. Analysis The Examiner finds claim 9 recites claim limitations invoking 35 U.S.C. § 112, sixth paragraph, i.e., means-plus-function limitations. Final Act. 4. The Examiner determines “the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite.” Id. Appeal 2019-005477 Application 13/938,176 14 Appellant responds, pointing to the Specification as expressly defining the corresponding structure and acts, for example in Figures 1A, 69, 70 and paragraphs [0101]–[0106], [0472]–[0483]. Id. at 4–5, 8. We are persuaded by Appellant’s argument. “[W]hen a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (2015). The algorithm may be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015). We find that the plain language of the claims, as well as the Specification, provide sufficient algorithms as corresponding structures for supporting the “means for” limitations. For example, the plain meaning of the claim recites algorithms in prose with respect to the functions of “receiving a card authorization request” and “processing the transaction.” See App. Br. 22. The Specification further discloses numerous examples of flow charts (Figures 69 and 70) and software code (paragraphs [0475], [0476], [0477], and [0479]) as supporting algorithms for the claimed functions. Accordingly, we do not sustain the Examiner’s rejection of claim 9 and its dependent claims. Issue 3 Appellant argues that the Examiner erred in determining that claims 5 and 13, reciting “restricted usage,” are indefinite. App. Br. 12. Appeal 2019-005477 Application 13/938,176 15 Analysis The Examiner finds that the claim limitation “‘wherein the proxy payment preferences include restricted usage to purchase a product category’ … is not completely clear.” Final Act. 7. The Examiner determines that “[t]here is no indication that the preferences would ‘purchase a product category’ or what that would even actually mean.” Id. at 8. Appellant argues that “the objected to phrase would be understood by the person of ordinary skill in the art that the proxy payment preferences include restricting usage with regard[] to purchasing items within a particular product category.” App. Br. 12. We are persuaded by Appellant’s argument. The definiteness “requirement is not a demand for unreasonable precision.… Rather, how much clarity is required necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). The claims recite restricting the proxy payment preference by product category with reasonable precision. Accordingly, we do not sustain the Examiner’s rejection of claims 5 and 13. CONCLUSION The rejection of claims 1–17, 24, 26–31, and 33 as unpatentable under 35 U.S.C. § 101, is affirmed. The rejection of claims 1–17, 24, 26–31, and 33 as unpatentable under 35 U.S.C. § 112, second paragraph is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). Appeal 2019-005477 Application 13/938,176 16 AFFIRMED Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–17, 24, 26– 31, 33 101 Nonstatutory subject matter 1–17, 24, 26–31, 33 1–17, 24, 26– 31, 33 112, 2nd paragraph Indefinite 1–17, 24, 26–31, 33 Overall Outcome 1–17, 24, 26–31, 33