Nobuyuki Nonaka

Patent Trials and Appeals Board

Oct 27, 2020

2020003215 (P.T.A.B. Oct. 27, 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.
13/384,118 02/08/2012 Nobuyuki Nonaka 112.028.PCUS01 7882
24041 7590 10/27/2020
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/27/2020 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NOBUYUKI NONAKA1
____________

Appeal 2020-003215
Application 13/384,118
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 Universal Entertainment Corporation
as the real party-in-interest. App. Br. 2.

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 26–31 as unpatentable under 35 U.S.C.
§ 112 first paragraph (pre-AIA) as lacking written descriptive support.
Claims 26–31 also stand rejected as unpatentable under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to a deposit-amount
managing device that enables a user without a bank account to make
payments, send remittances, and receive deposits. Abstr.

REPRESENTATIVE CLAIM
Claim 26 is representative of the claimed subject matter and recites:
26. A deposit amount managing device electronically
communicatively connected with at least one of a user terminal
device, an automatic teller machine, a financial institution system
having a predetermined bank account, and a money exchanging
server via a computer network, the deposit amount managing
device comprising:
a non-transitory memory; and,
a central processing unit (CPU) coupled to the non-
transitory memory and configured to read instructions from the
non-transitory memory to cause the deposit amount managing
device to perform operations comprising:
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in a user registration process, receiving a user
registration request message from the user terminal device via
the computer network;
in response to the received user registration request
message, transmitting user interface data to the user terminal
device via the computer network such that the user terminal
device displays a user interface allowing a user to input user
registration information;
storing the input user registration information in the
non-transitory memory when the user registration information is
communicated from the user terminal device via the computer
network; and
subsequent to the user registration process:
performing an authentication process to determine
whether a user is a registered user based on a comparison of the
input user registration information and input user information;
as a result of a request from the registered user, creating
an electronic user deposit pertaining to a separate deposit amount
of the registered user m a user definable second currency; and,
as a result of a transaction and in response to an
authenticated request received from the user terminal via the
computer network, sending or receiving electronic funds from or
to the electronic user deposit amount data storage unit of the
registered user, decreasing or increasing the deposit amount of
the electronic user deposit data storage unit of the registered user,
generating and transmitting an account transfer request message
to the financial institution system via the computer network to
cause the financial institution system to execute a value
balancing process between the predetermined bank account of
the financial institution system and an account of the deposit
account managing device, and transmitting information
pertaining to completion of the transaction to the user terminal
via the computer network, wherein,
when an authenticated request to increase or decrease the
registered user deposit amount is made in a currency type that is
different from any of the user definable first and second currency
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types of the electronic user deposit amount data storage unit,
converting the currency type to a currency type of one of the user
definable first and second currency types of the electronic
deposit amount data storage unit based on exchange rate data
obtained from the money exchange server, and wherein,
when the registered user specifies that a deposit is to be
made in a first currency type, and the deposit amount of the first
currency type stored in the deposit amount data storage unit
exceeds a predetermined amount, automatically selecting a
second currency type in which the deposit is to be made, which
second currency type is different from the first currency type, and
depositing a portion of the deposit in the automatically selected
second currency type in the deposit amount data storage unit.
App. Br. 43–44.

ISSUES AND ANALYSIS
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims are directed to non-statutory subject matter. However, we decline to
adopt the Examiner’s findings, reasoning, and conclusion that the claims on
appeal are unpatentable under 35 U.S.C. § 112, first paragraph. We address
below the arguments raised by Appellant.

A. Rejection of the claims under 35 U.S.C. § 101
Issue
Appellant argues that the Examiner erred in finding the claims are
directed to an abstract idea, and therefore, patent-ineligible subject matter.
App. Br. 29.
Analysis
The Examiner finds that the functions recited in the claims describe
the concept of managing money received from a user without a bank
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account, which the Examiner finds corresponds to concepts identified as
abstract ideas by the courts. Final Act. 6–9. Specifically, the Examiner
finds that the claims recite a fundamental economic practice, which is a
certain method of organizing human activity, previously identified as an
abstract idea. Id. at 8–9; see also Alice Corp. Pty. Ltd. v. CLS Bank Int’l.,
573 U.S. 208, 218 (2014) (citing Bilski v. Kappos, 561 U.S. 593, 611
(2014)).
The Examiner further finds that the recited abstract idea is not
integrated into a practical application because the claims do not recite an
improvement to the functioning of a computer or other technology. Final
Act. 9. The Examiner further finds that the claim limitations do not apply
the judicial exception in some other meaningful way. Id. Specifically, the
Examiner finds that the recited computer functions and components are
claimed and described at a high level of generality and are functions any
general-purpose computer performs such that they amount to no more than
mere instructions to apply the abstract idea to a particular technological
environment. Id. at 9–10. The Examiner therefore concludes that these
additional elements do not amount to significantly more than the judicial
exception (i.e., the abstract idea). Id. at 10.
Appellant argues that the claims “improve the functionality of an
electronic device, e.g., a portable phone,” and are therefore not directed to an
abstract idea. App. Br. 31–32. Appellant argues that the claimed subject
matter “is necessarily rooted in computer technology—the deposit amount
managing device communicates with user terminals and devices via a
computer network, e.g., the Internet.” Id. at 33.
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Appellant further argues that the claims effectively integrate the
alleged abstract idea into a practical application. App. Br. 35–38.
Specifically Appellant argues that the claimed subject matter allows users
with limited banking access, e.g., rural residents, international travelers, and
migrant workers, to access various banking functions without a bank. Id. at
37. Additionally, Appellant argues that the claimed subject matter allows
users to store funds and make payments without carrying large amounts of
physical currency. Id. at 37–38. Finally, Appellant argues that the claims
amount to significantly more than the judicial exception, and do not tie up
the use of the abstract idea. Id. at 41–42.
The Examiner responds that Appellant’s claimed invention does not
solve a technological issue, but rather addresses a business problem. Ans.
12. The Examiner finds that limiting the claims to a specific electronic
device merely limits the claims to a specific technological environment, and
thus is not sufficient to provide a practical assurance that the process is more
than a drafting effort designed to monopolize the abstract idea itself. Id. at
11–12 (citing Alice Corp., 573 U.S. at 223–224).
We have considered, but are not persuaded by, Appellant’s arguments.
In performing an analysis of patentability under 35 U.S.C. § 101, we follow
the framework set forth by the Supreme Court in Mayo Collaborative
Services v. Prometheus Laboratories, 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
(January 7, 2019) (the “2019 Guidance”).
Appellant’s independent claim 26 recites: “A deposit amount
managing device … comprising: …” Following the first step of the Mayo
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analysis we find that the claim is directed to a machine and therefore falls
into one of the broad statutory categories of patent-eligible subject matter
under 35 U.S.C. § 101.2 Specifically, claim 26 is a so-called “Beauregard
claim.” A Beauregard claim—named after In re Beauregard, 53 F.3d 1583
(Fed. Cir. 1995)—is a claim to a computer readable medium (e.g., a disk,
hard drive, or other data storage device) containing program instructions for
a computer to perform a particular process. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (2011).
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 35
U.S.C. § 101, i.e., an abstract idea, a law of nature, or a natural phenomenon.

2 Appellant does not argue the claims separately. Accordingly, we consider
claim 26 as representative of the claims at issue.
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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). 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 56
(Step 2B).
“In cases involving software innovations, th[e] inquiry often turns on
whether the claims focus on ‘the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue
Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2018)).
Claim 26 recites the functions of: (1) receiving a user registration
request; (2) transmitting user interface data; (3) storing input user
registration information; (4) performing an authentication process; (5)
creating an electronic user deposit-amount data storage unit; (6) sending or
receiving electronic funds; (7) converting currency based on exchange rate
data; and (8) automatically selecting a currency type for deposits exceeding
a predetermined amount. App. Br. 43–44. Each of these functions deals
with the manipulation and/or storage of information in a generic computer
processor, e.g., a central processing unit. See App. Br. 43.
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Appellant’s Specification discloses that a primary purpose of the
claimed device is to allow “a general user having no bank account … to
easily make payment, send remittance, receive prize money of a lottery, a
sportsbook, or the like through a network at low costs by using a portable
phone or the like.” Spec. ¶ 6. The Specification further discloses that the
plurality of separate storage units acts, “as if the cash is separately stored in
different wallets or pockets.” Id. ¶ 10. Appellant contends that the
transformation of a portable phone into an electronic wallet “improves the
functionality of an electronic device” and is thus “a specific improvement to
the way computers operate,” rather than an abstract idea. App. Br. 31–32.
We disagree. Generally, the claims recite various functions for
opening electronic accounts and then using the electronic accounts to
manage deposits and withdrawals in various currencies. Our reviewing
court has considered similar claims to be abstract, where the “‘claims [are]
directed to the mere formation and manipulation of economic relations’
through ‘financial transactions.’” Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017). In Smart Systems, our
reviewing court found that the claims recited various steps including
acquiring identification data from a physical 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. Our reviewing
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
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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 do not recite a new type of
device, computer network, or database, nor do the claims provide a method
for processing data that improves existing technological processes. See id.
Rather, the claims recite creating user accounts for processing financial
transactions and data collection related to such transactions. Id.
Having determined that the claims recite abstract ideas, we next
determine whether the limitations of the claims reciting the judicial
exception are integrated into a practical application. The Guidance provides
additional context for this analysis, stating 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
contends the claims “effectively integrate the alleged abstract idea of,
‘managing money received from a general user who has no bank account so
as to allow even the general users to do payment, send remittance, etc.’ into
a practical application that imposes a meaningful limit on the alleged
abstract idea.” App. Br. 33. 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.
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873 F.3d at 1372–1373.
Similarly, Appellant’s claims are directed to the collection and
arrangement of financial data, including user registration information,
authentication, user deposit information, sending and receiving electronic
funds, and performing electronic currency exchange, which are implemented
on a generic computer using generic software. With respect to Appellant’s
argument that the claims improve the function of a portable phone, we find
that “the claims are directed not to an improvement in cellular telephones
but simply to the use of cellular telephones as tools in the aid of a process
focused on an abstract idea.” Affinity Labs of Texas, LLC v. DirectTV, LLC,
838 F.3d 1253, 1262 (Fed. Cir. 2016).
Appellant points to McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), as supporting the patent eligibility of
the claims on appeal. See App. Br. 34. We do not find this argument
persuasive. In McRO, the Federal Circuit stated that the claimed invention, a
method of producing accurate and realistic lip synchronization and facial
expressions in animated characters,
goes beyond merely “organizing [existing] information into a
new form” or carrying out a fundamental economic practice. The
claimed process uses a combined order of specific rules that
renders information into a specific format that is then used and
applied to create desired results: a sequence of synchronized,
animated characters.

McRO, 837 F.3d at 1315 (alteration in original) (citations omitted). In
contrast, Appellant’s claimed method recites a device for carrying out a
fundamental economic practice. We are consequently not persuaded that the
holding of McRO necessarily determines that the claims are integrated into a
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practical application. More importantly, we find that the claim does not
imposes a meaningful limit on the judicial exception; rather the claim is the
judicial exception, executed on a generic processor.
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). Specifically, we agree with the Examiner that the claims simply
append to the judicial exception well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality. See Final Act. 10–11. Reciting generic computer components
such as a non-transitory memory, central processing unit, user terminal,
computer network, and contactless integrated circuit (IC) card does not make
an otherwise ineligible claim patent-eligible. See Affinity Labs, 838 F.3d
1253.
We therefore conclude the claims are directed to nonstatutory subject
matter, and we affirm the Examiner’s rejection of the claims.

B. Rejection of the claims under 35 U.S.C. § 112, first paragraph
Issue 1
Appellant argues the Examiner erred in finding that Appellant’s
Specification fails to provide written descriptive support for the claim term
“user definable first and second currency types of electronic user deposit
amount data storage unit.” App. Br. 9.
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Analysis
The Examiner finds that “there is no description in the form of [steps]
or drawings for how the user defines the currency types of the electronic
user deposit amount data storage units.” Final Act. 3. The Examiner finds
that the disclosure does not explain how the inventor intended the function
to be performed. Ans. 4. The Examiner further finds that Appellant’s cited
paragraphs and Figures 3–5 do not show how a user defines first and second
currency types in user deposit-amount data storage units. Id. at 6. The
Examiner thus concludes that the Specification does not meet the written
description requirement for claims 26–28. Id.
Appellant argues that the Specification provides written support for a
user interface that allows a user to define first and second currency types
associated with separate storages. App. Br. 9. Specifically, Appellant cites
paragraphs 0011, 0046–0048, and 0052 for supporting a user registration
process including the steps of designating separate storage based on
currency type information. Id. at 10–11.3
Appellant’s arguments are persuasive. We agree with the Examiner
that the Specification does not expressly describe a user interface for
specifically setting a user definable currency for each separate storage, nor a
registration process that includes the specific step of setting a user-definable
currency for each separate storage. However, “[t]he written description
requirement does not require the applicant to describe exactly the subject

3 Appellant includes the Specification paragraphs as images in the Appeal
Brief. The images are unacceptably illegible and unnecessarily duplicative
of the citations. We discourage Appellant from using this practice.
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matter claimed, instead the description must clearly allow persons of
ordinary skill in the art to recognize that he or she invented what is claimed.
Union Oil Co. of California v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed.
Cir. 2000).
The Specification describes a user interface (¶ 0052) and the functions
of setting currencies and changing set currencies (¶¶ 0046–0048) according
to user wishes (¶ 0011). Specifically, Paragraph 0011 describes separate
storages for managing deposit amounts in “a currency the user wishes,” i.e.,
a user-definable currency. Spec. ¶ 11. Paragraph 0046 describes user
deposit-amount storage unit 280 including three separate storages 281–283.
Id. ¶ 46. The Specification discloses that:
a currency type (US dollars, Euro, RMB) is set for each of the
separate storages 281 to 283. When an amount is added to the
deposit amount of any one of the separate storages 281 to 283,
that amount is added in the currency type being set, by the
deposit amount managing unit 230 and the money exchange
processing unit 240.

Id. ¶ 47. The Specification discloses that currencies set to separate storages
may be the same or different, and “the set currency may be changeable at
any time as needed.” Id. ¶ 48. Accordingly, the Specification describes the
function of setting a currency for each separate storage. The Specification
further describes a user registration unit, which provides a user interface for
inputting user information and generating deposit storage unit 280 with
separate storages 281–282. Id. ¶ 52. Because the Specification describes a
user interface for inputting user information, and further describes setting or
changing currencies for the separate storages according to user wishes, we
find that the Specification describes the invention in sufficient detail that one
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skilled in the art can conclude that the inventor invented the claimed
invention as of the filing date. See Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (One shows possession “by such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention”).
Issue 2
Appellant argues the Examiner erred in finding that Appellant’s
Specification fails to provide written descriptive support for the claimed
functions of the “contactless integrated circuit (‘IC’).” App. Br. 18–21.

Analysis
The Examiner finds that “the algorithm or [procedure] for performing
the claim [] functions” of the contactless IC in claims 29–31, “are not
explained at all or are not explained in sufficient detail.” Final Act. 4. The
Examiner finds that the Specification does not support using an IC card to
withdraw a user-predefined amount of money from a separate storage area.
Ans. 8–9.
Appellant argues that the Specification describes a “One Touch
Withdrawal of Money” process in paragraphs 0080–0087 and Figure 8.
App. Br. 18–19. Specifically, Appellant argues that paragraph 0082
describes a process of bringing a user device with a contactless IC card
within communications range of an automated teller machine, authenticating
the user device, and automatically withdrawing a user-predefined amount of
money from a separate storage. Id.
Appellant’s arguments are persuasive. The Specification describes a
process in which the user withdraws cash by bringing a user terminal device
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having a contactless IC card within the range of an automated teller
machine. Spec. ¶ 82. The automated teller machine transmits a message to
the contactless IC card to activate an application on the user device. Id. The
application then transmits a predetermined amount of money and the
predetermined separate storage to the automated teller machine. Id. The
automated teller device then connects with the deposit-amount managing
device to authenticate the user information and withdraw cash from a
designated account in the indicated currency. Id. ¶¶ 84–85. Although the
Specification describes the limitations of claims 29–31 in words rather than
an algorithm, we find that the Specification describes the invention in
sufficient detail that one skilled in the art can conclude that the inventor
invented the claimed invention as of the filing date. See Lockwood, 107
F.3d at 1572.

CONCLUSION
The rejection of claims 26–31 as unpatentable under 35 U.S.C. § 101,
is affirmed.
The rejections of claims 26–31 as unpatentable under 35 U.S.C.
§ 112, first paragraph are 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)(iv).

AFFIRMED
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
26–31 101 Subject Matter
Eligibility
26–31
26–28 112, first paragraph Written Description 26–28
29–31 112, first paragraph Written Description 29–31
Overall
Outcome
26–31