Ex Parte HOWE

Patent Trial and Appeal Board

Sep 20, 2018

14169802 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/169,802 01/31/2014
21839 7590 09/24/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Justin X. HOWE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0076412-000227 4100
EXAMINER
JACOB, WILLIAM J
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN X. HOWE
Appeal2017-006300
Application 14/169,802
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
JOHN D. HAMANN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1-3, 5-13, and 15-20. Claims 4 and 14 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We Affirm.
STATEMENT OF THE CASE
Introduction
Appellant's invention generally "relates to the forced posting of
clearing records, specifically the use of optimization to identify declined
1 According to Appellant, the real party in interest is MasterCard
International Incorporated, which is the assignee of the present application.
App. Br. 2.
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authorization requests for force post clearing based on fraud or chargeback
scores." Spec. ,r 1.
Exemplary Claim
1. A computer-implemented method for force posting
clearing transactions, comprising:
storing, in a memory device of a processing server, a
chargeback ratio associated with a merchant and a chargeback
threshold;
receiving, by a receiving device of the processing server,
a plurality of declined authorization requests from financial
card issuers, wherein each declined authorization request is
associated with a payment transaction involving the merchant
that was declined by a financial card issuer;
calculating, for each of the received declined
authorization requests involving the merchant, a fraud or
chargeback score by applying one or more fraud algorithms to
transaction data included in each of said respective received
declined authorization requests, wherein the calculated fraud or
charge back score represents a likelihood of the associated
payment transaction being fraudulent or charged back;
identifying, by a processing device, of the processing
server a subset of declined authorization requests within the
plurality of declined authorization requests where each declined
authorization request included in the subset is based on the
respective calculated fraud or chargeback score, wherein a total
number of declined authorization requests in the identified
subset is based on a correspondence between the chargeback
ratio associated with the merchant and the chargeback
threshold; and
submitting, by a transmitting device of the processing
server, a clearing record for each declined authorization request
in the identified subset to the financial card issuer.
2
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App. Br. 31, Claims Appendix.
Rejections2
A. Claims 1-3, 5-13, and 15-20 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. 3
Final Act. 4---6.
B. Claims 1-3, 5-13, and 15-20 are rejected under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor or a joint inventor regards
as the invention. Final Act. 6.
Issues on Appeal
Did the Examiner err in rejecting claims 1-3, 5-13, and 15-20 under
35 U.S.C. § 101, as being directed a judicial exception, without significantly
more?
Did the Examiner err in rejecting claims 1-3, 5-13, and 15-20 under
35 U.S.C. § 112(b) as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
2 The Examiner withdrew the 35 U.S.C. § 103 rejections. Ans. 10.
3 See MPEP § 706.03(a), form paragraph 7.05.015.
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Rejection A
Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work." In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Benson, 409 U.S.
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at 67). Moreover, if a method can be performed by human thought alone, or
by a human using pen and paper, it is merely an abstract idea and is not
patent-eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes that claims 1-3, 5-13, and 15-20 are directed to a judicial
exception, i.e., an abstract idea, because the claims are directed to a
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fundamental economic practice:
More particularly, the claims recite inventions directed to force
posting declined transactions based on the likelihood the
declined transaction is not fraudulent (e.g., will not be "charged
back"). The inventions are economic in nature, and reflect a
long standing commercial practice previously performed
manually, e.g., to prevent or mitigate losses falsely identified as
credit card fraud. As such, they recite an abstract idea under
Alice.
Final Act. 5 (emphasis added). 4 See also Final Act. 2.
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
the claims do not effect an improvement to another technology
or technical field; the claims do not amount to an improvement
to the functioning of a computer itself; and the claims do not
move beyond a general link of the use of an abstract idea to a
particular, albeit well-understood, routine and conventional
technological environment.
Final Act. 5 ( emphasis added). 5
The Examiner further notes that
[ u ]nder Alice, merely applying or executing the abstract idea on
one or more generic computer system[ s] ( e.g., a computer
4 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
5 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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system comprising a generic database; a generic element (NIC)
for providing website access, etc.; a generic element for
receiving user input; and a generic display on the computer, in
any of their forms) to carry out the abstract idea more
efficiently, fails to cure patent ineligibility.
Final Act. 5-6.
For the aforementioned reasons, the Examiner concludes that all
claims, 1-3, 5-13, and 15-20, on appeal are not patent-eligible under
35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellant cites to Enfish and DDR Holdings, 6
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and
contends: "In light of the above-discussed court decisions, Appellant
respectfully submits that an accurate summarization of the focus of the
claims is essential to correctly answering the inquiry under step [ 1] of
Alice." App. Br. 8. In support, Appellant urges:
the Examiner's characterization of Appellant's claims fails to
adequately encompass the subject matter to which Appellant's
claims are actually directed. For instance, one skilled in the art
reading the Examiner's characterization of Appellant's claimed
subject matter would have no understanding that such claims
offered a technical solution of calculating fraud or chargeback
scores by applying fraud algorithms to transaction data of
received declined authorization requests and identifying of
those certain authorization requests based on the calculation.
App. Br. 8-9 ( emphasis omitted).
6 We address DDR Holdings, infra.
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In response, the Examiner further explains the basis for the rejection:
With respect to § 101, the amended claims continue to
recite inventions (i.e. a business method or process (Claims 1,
3, 5-10) and a system or machine (Claims 11, 13, 15-20)[],
drawn to a fundamental economic principle and long standing
commercial practice. More particularly, the claims recite
inventions drawn towards receiving, and determining whether
to force post (i.e., re-submit or represent) declined credit card
transactions. This has long been an issue for credit card
companies, as not all rejected transactions are fraudulent or
otherwise properly rejected. Determining which
transactions to force post, by determining or calculating a
likelihood for fraud ( e.g., a chargeback score) and considering a
chargeback ratio threshold are likewise long standing practices
for merchants conducting credit card transactions. (See, e.g.,
https/chargeback.com/"What's a Chargeback Ratio", etc.).
Finally, such determinations have long been made using
algorithms by merchants, manually and via mental steps.
As such, the claims recite inventions directed towards an
abstract idea under Alice Corporation.
Ans. 5 (emphasis added).
Appellant responds in the Reply Brief, and cites in support:
(1) Intellectual Ventures I LLC v. J Crew Group, Inc., Case No. 6: 16-CV-
196-JRG, (E.D. Tex. 2016), (2) McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and (3) SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 F. App'x 950, 955 (Fed. Cir.
2014) (nonprecedential). Appellant additionally attempts to distinguish the
claims on appeal from the claims the court found patent-ineligible in
PerkinElmer, Inc. v. Intema Ltd., 496 F. App'x 65 (Fed. Cir. 2012). See
Reply Br. 2-7.
We note that the above cases, with the exception of McRO, are not
binding precedent on the USPTO. However, McRO was decided by the
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Federal Circuit on September 13, 2016. Appellant could have fully
addressed McRO in the Appeal Brief, filed on September 14, 2016, but did
not do so. Therefore, we find Appellant's citation to McRO is untimely,
because McRO is not an intervening authority.
Because Appellant: (1) did not raise McRO in the opening brief, and,
(2) good cause has not been shown why it should be considered, we will not
consider this argument. See 37 C.F.R. § 4I.41(b )(2); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.").
In the Appeal Brief, Appellant principally relies on Enfish in support
of the contention that the claims are not directed to an abstract idea, but are
rather directed to an improvement in computer functionality under step one:
Analogous to Enfzsh, Appellant respectfully submits that
the pending claims are not directed to an "abstract idea" or any
method of applying such an idea "using" a generic computer as
a tool. Instead, Appellant respectfully submits that the pending
claims are directed to a system and method that improves an
electronic transaction system by providing a mechanism for
calculating fraud or chargeback scores of authorization requests
that have already been declined (to indicate the likelihood that
respective payment transactions associated with the
authorization requests is fraudulent) and for determining for
which of those declined authorization requests a clearing record
is to be submitted.
App. Br. 10.
We note the claimed self-referential database table in Enfish was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339.
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Here, Appellant's claims 1-3, 5-13, and 15-20 are silent regarding
any mention of a database. Moreover, Appellant has not shown that any
features of the claims before us on appeal improve the way the recited
generic memory and processing server store and retrieve data, in a manner
analogous to that found by the court in Enfzsh. See independent claims 1 and
11.
Therefore, we are not persuaded that Appellant's claimed invention
improves the recited computer system or processor functionality or
efficiency, or otherwise changes the way the claimed generic computer
components function, at least in the sense contemplated by the Federal
Circuit in Enfzsh.
We note each of Appellant's independent claims 1 and 11 is directed
to, inter alia, gathering and processing data, for example:
receiving, by a receiving device of the processing server,
a plurality of declined authorization requests from financial
card issuers [ and]
calculating, for each of the received declined
authorization requests involving the merchant, a fraud or
chargeback score by applying one or more fraud algorithms to
transaction data included in each of said respective received
declined authorization requests, wherein the calculated fraud or
chargeback score represents a likelihood of the associated
payment transaction being fraudulent or charged back;
Claim 1.
Data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
aff'd on other grounds, 561 U.S. 593 (2010). Our reviewing court has
concluded that abstract ideas include the concepts of collecting data,
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recognizing certain data within the collected data set, and storing the data in
memory. Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations,
LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017)
( concluding "claims directed to the collection, storage, and recognition of
data are directed to an abstract idea"); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (the collection of information and
analysis of information are abstract ideas).
Moreover, but for the recitation of a generic processing server and
memory (independent claims 1 and 11), we are of the view that the recited
steps or acts, or functions could be performed as mental steps, or with the
aid of pen and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146-47 (Fed. Cir. 2016) ("While the Supreme Court has altered
the § 101 analysis since CyberSource in cases like Mayo and Alice, we
continue to 'treat[] analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category."' (brackets in original) ( quoting
Elec. Power Grp., 830 F.3d at 1354)); see also CyberSource, 654 F.3d at
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
"[M]erely selecting information, by content or source, for collection
[ and] analysis ... does nothing significant to differentiate a process from
ordinary mental processes .... " Elec. Power Grp., 830 F.3d at 1355. Data
gathering, such as receiving and analyzing ( or identifying data), by itself,
does not transform an otherwise-abstract process or system of information
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collection and analysis. See id. Therefore, we agree with the Examiner that
Appellant's claims are directed to "automating mental tasks, and receiving
or transmitting data over a network, e.g., using the Internet to gather data."
Ans. 7.
Appellant advances no further substantive arguments regarding Alice
Step 1. Therefore, on this record, we conclude Appellant's claims 1-3,
5-13, and 15-20 are directed to an abstract idea, which is similar to the
abstract ideas identified by our reviewing courts as discussed above, that
could additionally be performed as mental steps, albeit with the aid of pen
and paper.
Mayo/Alice Analysis-Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 3--4;
Ans. 2-3), we tum to the second part of the Alice/Mayo analysis. We
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellant addresses the purported inventive
concept of the claims. Appellant argues: "even if, arguendo, Appellant's
claims were found to be directed to an abstract idea, the claims recite an
inventive concept amounting to 'significantly more' than any abstract idea to
which Appellant's claims may be alleged to be directed." App. Br. 12.
In support, Appellant recites the language of claim 1 (App. Br. 13-14)
and urges that "Appellant's claims are similar to those at issue in DDR
Holdings." App. Br. 14--16.
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We do not find that Appellant's claims are similar to the claimed
solution the court held to be patent-eligible in DDR. In DDR, the Federal
Circuit applied the Supreme Court's Alice two-step framework, and upheld
the validity of DDR's patent on its web-page display technology. DDR, 773
F.3d at 1255.
Unlike Appellant's claims that are directed to a fundamental
economic practice (see Final Act. 5) and a mathematical algorithm (i.e.,
calculating a fraud or chargeback score by applying one or more fraud
algorithms - claims 1, 11 ), the claims in DDR are directed to neither: See
DDR at 1257: "Here, we note that the '399 patent's asserted claims do not
recite a mathematical algorithm. Nor do they recite a fundamental economic
or longstanding commercial practice. Although the claims address a
business challenge (retaining website visitors), it is a challenge particular to
the Internet." ( emphasis added).
The problem addressed by Appellant's claims is thus not similar or
otherwise analogous to the specific technical problem addressed by the
subject claims in DDR, which were directed to retaining a website visitor
when the visitor clicked on a third-party merchant's advertisement on the
host website. Instead of taking the visitor to the third-party merchant's
website (and thus losing the visitor to the third-party merchant), DDR's
claimed system generated a hybrid web page that: (1) displayed product
information from the third-party merchant, but also, (2) retained the host
website's "look and feel."
Here, Appellant's claims 1-3, 5-13, and 15-20 are not directed to a
website that retains the host website's "look and feel" while displaying
product information from the third-party merchant, as was the case in DDR,
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773 F.3d at 1257. Although Appellant's invention is directed to the result of
"submitting, by a transmitting device of the processing server, a clearing
record for each declined authorization request in the identified subset to the
financial card issuer" ( claim 1 ), we find the "clearing record" is at best
merely an improvement in the informational content (i.e., data) that is
intended to be viewed and evaluated by a person as a mental step.
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet. Therefore, we find Appellant's claimed invention does
not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as considered by the court in DDR. 773 F.3d at 1257. (Emphasis added.).
Further regarding the use of the recited generic "processor" ( claim 1 ),
the Supreme Court held "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 134 S. Ct. at 2358; see also Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea."). On this record, we are of the view that Appellant's claims
do not operate the recited generic computer components in an
unconventional manner to achieve an improvement in computer
functionality.
Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
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matter"); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
merely recite "'well-understood, routine conventional activities'" by either
requiring conventional computer activities or routine data-gathering steps)
(internal citation omitted). See also Elec. Power Grp., 830 F.3d at 1355
("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are 'insufficient to pass the test of an
inventive concept in the application' of an abstract idea." (quoting buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014)));
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer
element-a processor-and a series of generic computer 'components' that
merely restate their individual functions . . . . That is to say, they merely
describe the functions of the abstract idea itself, without particularity. This
is simply not enough under step two.").
Appellant further avers that claim 1 does not preempt the use of the
abstract idea because the claims are: "clearly tied to a technical, computer-
implemented system and provide[] a technical solution to a technical
problem created by that system." App. Br. 16 (emphasis omitted). In the
Reply Brief (9--10), Appellant urges:
the instant claims do not "tie-up" or pre-empt others from using
the alleged abstract idea of "force posting declined transactions
based on the likelihood the declined transaction is not
fraudulent." There are many ways in which transactions may be
force posted on a basis of fraudulence that are not encompassed
by the subject matter of the instant claims.
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Our reviewing court provides applicable guidance: "[ w ]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
Therefore, we are not persuaded by Appellant's argument regarding
the absence of complete preemption.
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Because we find Appellant has not established that claims 1-3, 5-13,
and 15-20 are directed to an improvement in the recited generic computer
system, we conclude that none of the claim limitations, viewed both
individually and as an ordered combination, amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellant's claims 1-3, 5-13, and 15-20, considered as a
whole, is directed to a patent-ineligible abstract idea (under step one), and
under step two, does not recite something "significantly more" to transform
the nature of the claim into a patent-eligible application.
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Accordingly, for the reasons discussed above, we sustain the
Examiner's Rejection A under 35 U.S.C. § 101 of claims 1-3, 5-13, and 15-
20, as being directed to a judicial exception, without significantly more. 7
Rejection B under 35 US.C. § l l 2(b)
Regarding claims 1-3, 5-13, and 15-20 the Examiner focuses on the
claim term "respective" and concludes "the phrase 'said respective received
declined [ authorization requests]' lacks [positive] antecedent basis." The
Examiner notes: "For the purposes of compact prosecution, this phrase will
be interpreted as 'said received declined ... ' omitting the term 'respective."'
Final Act. 6 ( emphasis added).
Appellant disagrees:
Appellant respectfully submits that independent claim 1
does not contain words or phrases that are unclear. Rather, it is
respectfully submitted that the recitation of "receiving ... a
plurality of declined authorization requests from financial card
issuers, wherein each declined authorization request is
associated with a payment transaction," while not verbatim,
provides clear antecedent basis for the later recitation of
"transaction data included in each of said respective received
declined authorization requests ... [. ]" Appellant further submits
that the scope of the claim would be easily ascertainable by a
skilled artisan.
App. Br. 19-20.
Our reviewing court guides: If there is not explicit antecedent basis
for a limitation in the claim, the scope of the claim may still be definite:
7 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
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"If the scope of a claim would be reasonably ascertainable by those skilled
in the art, then the claim is not indefinite." Energizer Holdings Inc. v. Int 'l
Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (quoting Bose
Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001)). Antecedent basis
can be present by implication. Slinifold Mfg. Co. v. Kinkead Indus., Inc.,
810 F.2d 1113, 1116 (Fed. Cir. 1987).
Applying the guidance of our reviewing court here, we note claim 1
recites in pertinent part: "receiving, by a receiving device of the processing
server, a plurality of declined authorization requests from financial card
issuers, wherein each declined authorization request is associated with a
payment transaction involving the merchant that was declined by a financial
card issuer." App. Br. 31, Claims Appendix ( emphasis added).
Because claim 1 recites "said respective received declined
authorization requests," we conclude, by implication, the antecedent basis
recited in independent claim 1 that would be reasonably ascertainable by
those skilled in the art is "a plurality of declined authorization requests from
financial card issuers .... " We note remaining independent claim 11 recites
similar language having commensurate scope.
Therefore, we reverse the Examiner's Rejection B of claims 1-3,
5-13, and 15-20, under 35 U.S.C. § 112(b), for essentially the same reasons
argued by Appellant in the App. Br. (19-20), as further discussed above.
18
Appeal2017-006300
Application 14/169, 802
CONCLUSIONS
The Examiner did not err in rejecting claims 1-3, 5-13, and 15-20
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner erred in rejecting claims 1-3, 5-13, and 15-20 under
35 U.S.C. § 112(b) as being indefinite.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-13, and
15-20 under 35 U.S.C. § 101.
We reverse Examiner's rejection of claims 1-3, 5-13, and 15-20
under 35 U.S.C. § 112(b ).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
19