Visa International Service Association

Patent Trials and Appeals Board

Jun 1, 2020

13829110 - (D) (P.T.A.B. Jun. 1, 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.
13/829,110 03/14/2013 Roshin Joseph 079900-0867400-207US02 1052
66945 7590 06/01/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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 ROSHIN JOSEPH
____________

Appeal 2019-005909
Application 13/829,110
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
AMEE A. SHAH, Administrative Patent Judges.

MOHANTY, 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 1–4, 6–14, and 16–22. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
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 Visa International
Service Association. (Appeal Br. 3.)
Appeal 2019-005909
Application 13/829,110

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to systems and methods for
analyzing transaction data to determine an order of priority for reviewing the
transactions (Spec., para. 6). Claim 1, reproduced below with the italics
added, is representative of the subject matter on appeal.

1. A method comprising:
receiving, by a server computer over a network, first
transaction data for a first transaction from a first client device;
analyzing, by the server computer, the first transaction
data to determine if the first transaction is fraudulent, not
fraudulent, or indeterminate using a first fraud score determined
for the first transaction;
determining, by the server computer, that the first
transaction is indeterminate based on the first fraud score;
storing, by the server computer, the first transaction data
in a queue of transactions to be reviewed, the queue stored in a
memory of the server computer;
after receiving the first transaction data, receiving, by the
server computer over the network, second transaction data for a
second transaction from a second client device;
analyzing, by the server computer, the second transaction
data to determine if the second transaction is fraudulent, not
fraudulent, or indeterminate using a second fraud score
determined for the second transaction, wherein the second fraud
score indicates that the second transaction is associated with a
lower likelihood of fraud than that of the first transaction
indicated by the first fraud score;
determining, by the server computer, that the second
transaction is indeterminate based on the second fraud score;
storing, by the server computer, the second transaction
data in the queue of transactions to be reviewed, the first
transaction data appearing before the second transaction data in
the queue in the memory of the server computer;
accessing, by the server computer, a database including
priority rules;
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determining, by the server computer, a first duration for
which the first transaction data has been stored in the queue of
transactions to be reviewed and a second duration for which the
second transaction data has been stored in the queue of
transactions to be reviewed;
determining, by the server computer, whether the first
transaction data and the second transaction data qualify for
automatic approval by determining whether the first duration
and the second duration exceed a threshold duration based on one
or more priority rules in the database;
analyzing, by the server computer, the first transaction
data and the second transaction data to determine which of the
first and second transactions has higher priority based on one or
more of the priority rules in the database, wherein the analyzing
of the first and second transaction data includes identifying a first
time associated with a first time sensitivity for review of the first
transaction and identifying a second time associated with a
second time sensitivity for review of the second transaction, and
wherein the one or more of the priority rules assign priority
independent of the first fraud score and the second fraud score;
determining, by the server computer, that the second
transaction data has higher priority than the first transaction
data based on the second time being before the first time;
reordering, by the server computer, the first transaction
data and the second transaction data in the queue in the memory
so that the second transaction data for the second transaction
associated with the lower likelihood of fraud indicated by the
second fraud score is provided for review for potential fraud
before the first transaction data is provided for review for
potential fraud;
transmitting, by the server computer over the network, the
second transaction data to a reviewing computer for review; and
after transmitting the second transaction data,
transmitting, by the server computer over the network, the first
transaction data to a reviewing computer for review.

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Application 13/829,110

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THE REJECTION
The following rejection is before us for review:
Claims 1–4, 6–14, and 16–22 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 10–14; Reply
Br. 2–7). The Appellant argues further that the claim is “significantly more”
than the alleged abstract idea (Appeal Br. 17–19; Reply Br. 10–12).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 19–22; Ans. 3–20).
We agree with the Examiner. 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 long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (internal citation omitted) (citing Benson and Flook); see,
e.g., id. at 187 (“It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.”).
The PTO published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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 (see
MPEP § 2106.05(d)); or
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(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 Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 6 states that the invention generally
relates to systems and methods for analyzing transaction data to determine
an order of priority for reviewing the transactions. Here, the Examiner has
determined that claim 1 sets forth determining if fraud is indeterminately
likely for transactions and ordering a queue for review of transactions based
on priority review, and that this is a certain method of organizing human
activities of a standard practice of businesses reprioritizing tasks and an
abstract concept (Ans. 5, 6). We substantially agree with the Examiner. We
determine that the claim sets forth the subject matter in italics above which
describes the concept of reordering transaction data for review based on
predetermined hierarchal priorities, and is a certain method of organizing
human activity in being a fundamental economic practice, i.e., a judicial
exception. A method, like the claimed method, “a process that employs
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mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.” See Digitech Image Techs,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
where collecting information, analyzing it, and displaying results from
certain results of the collection and analysis was held to be an abstract idea.
We next determine whether claim 1 recites additional elements in the claim
to integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h)
(9th ed. Rev. 08.2017 (Jan. 2018)).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in claim 1, the additional elements beyond the abstract
idea are the recited server computer, first and second client devices,
network, database, memory, and reviewing computer. These are described
in the Specification as generic computer components. See Spec. ¶¶ 35–43,
89–90. The claimed limitations of receiving, analyzing, determining,
storing, accessing, reordering, and transmitting “do not purport to improve
the functioning of the computer itself,” do not improve the technology of the
technical field, and do not require a “particular machine.” Rather, they are
performed using generic computer components. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
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state. The recited steps in the claim fail to provide meaningful limitations to
limit the judicial exception. In this case, the claim merely uses the claimed
computer elements as a tool to perform the abstract idea. 84 Fed. Reg. at 55.
Thus, the claimed elements have not been shown to integrate the
judicial exception into a practical application as set forth in the Revised
Guidance which references MPEP §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we determine
that claim 1 does not contain an inventive concept sufficient to “transform”
the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
paragraphs 36–42 for example describes using conventional computer
components such as personal computer, merchant processor, web server, and
communications network in a conventional manner. The claim specifically
includes recitations for a server computer to implement the method but the
computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claimed generic computer
components which are used to implement the claimed method are well
understood, routine, or conventional in the field. Here, the claim has not
been shown to be “significantly more” than the abstract idea.
The Appellant at page 13 of the Appeal Brief and page 3 of the Reply
Brief has also cited to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016) to show that the claim is not abstract, but the claims in that case
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were not similar in scope to those here and were, in contrast, directed to a
self-referential data table.
The Appellant at page 12 of the Reply Brief has also cited to McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), but
the claims in that case are distinguished from this case in being directed to
rules for lip sync and facial expression animation.
For these above reasons the rejection of claim 1 is sustained.
The Appellant has provided separate arguments for claims 21 and 22
at pages 19 and 20 of the Appeal Brief. The Appellant addresses primarily
the limitation of claim 22 in these arguments, but we have considered both
claims 21 and 22 in view of these arguments. The cited claim limitations in
each claim are drawn to various steps of “transmitting” and “receiving”
information in the method. Here, the claimed steps of “transmitting” and
“receiving” information are generic computer operations and fail to show
integration into a practical application for the same reasons given above, nor
are they “significantly more” than the abstract concept identified above. For
these reasons, the rejection of claims 21 and 22 is sustained as well.
The Appellant has provided the same arguments for the remaining
claims, and the rejection of these claims is sustained for the same reasons
given above.

CONCLUSION
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–4, 6–14, and 16–22 under 35 U.S.C. § 101.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–14,
16–22
101 Eligibility 1–4, 6–14,
16–22

TIME PERIOD FOR RESPONSE
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) (2018).

AFFIRMED