Rickey D. Burks et al.Download PDFPatent Trials and Appeals BoardMay 8, 20202018007171 (P.T.A.B. May. 8, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/824,478 08/12/2015 Rickey D. Burks US-1026.04 | 59197.21136 7302 122328 7590 05/08/2020 BakerHostetler / USAA 1050 Connecticut Avenue, N.W., Suite 1100 Washington, DC 20036 EXAMINER SUBRAMANIAN, NARAYANSWAMY ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 05/08/2020 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICKEY D. BURKS, CHARLES LEE OAKES III, BRADLY J. BILLMAN, MATTHEW C. REEDY, ANTHONY G. CASTIGLIONE, JESS W. GINGRICH, and WILSON SAMUEL ________________ Appeal 2018-007171 Application 14/824,478 Technology Center 3600 ____________ Before DENISE M. POTHIER, JASON J. CHUNG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 4, 7, 8, 11‒17, 20, 22‒24, and 27‒36, which are all the claims pending in this application. Claims 3, 5, 6, 9, 10, 18, 19, 21, 25, and 26 are canceled. See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as United Services Automobile Association (USAA). Appeal Br. 2. Appeal 2018-007171 Application 14/824,478 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to financial management modules that provide automated teller machine (ATM) functionality. Spec. 1:5‒7. In one embodiment, Appellant describes a system receiving a user-initiated request for a transaction and identifying a device to perform the transaction. Spec. 5:8‒14. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method of utilizing a currency-management system that comprises a plurality of currency dispensers, the method comprising: receiving, by a computer system and from an electronic device associated with a member, a request for an interaction with a currency dispenser; determining, by the computer system, an expected travel route for the member; determining, by the computer system, conditions of the plurality of currency dispensers; based at least on the request received from the electronic device associated with the member, the conditions of the plurality of currency dispensers, and the expected travel route for the member, identifying, by the computer system, at least one currency dispenser among the plurality of currency dispensers to perform the interaction; sending, to the electronic device associated with the member, information that identifies the at least one currency dispenser; and receiving, from the electronic device associated with the member, a selection of a selected currency dispenser based on identification of the at least one currency dispenser. Appeal 2018-007171 Application 14/824,478 3 The Examiner’s Rejection Claims 1, 2, 4, 7, 8, 11‒17, 20, 22‒24, and 27‒36 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2‒12. ANALYSIS Principles of Law – Section 101 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 U.S. 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. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part 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 Appeal 2018-007171 Application 14/824,478 4 mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 (1853))); 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 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 products and not as an attempt to patent a mathematical formula.”). Having said that, the 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. (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.”). 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 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to Appeal 2018-007171 Application 14/824,478 5 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. Principles of Law – USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1. Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). 3 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and Appeal 2018-007171 Application 14/824,478 6 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, 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 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. See Revised Guidance. Claim 1 recites “[a] method of utilizing a currency-management system that comprises a plurality of currency dispensers.” Appellant does not argue the Examiner erred in concluding claim 1 falls within the four statutory categories of patentable subject matter. We agree with the Examiner’s conclusion because claim 1 falls within the process category. (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2018-007171 Application 14/824,478 7 Revised Guidance Step 2A, Prong 1 Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claims recite 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). See Revised Guidance. The Examiner concludes claim 1 is directed to utilizing a currency management system. Ans. 3. The Examiner concludes utilizing a currency management system is a combination of the abstract ideas of data recognition and storage, obtaining and comparing intangible data, and collecting and comparing known information. Id.; see also Final Act. 3‒4. Appellant argues the claims do not recite an abstract idea because the claims improve the functioning of techniques for utilizing currency dispensers, which are specialized hardware. See Appeal Br. 17‒19. Claim 1 recites “[a] method of utilizing a currency-management system that comprises a plurality of currency dispensers.” This method includes “receiving . . . a request for an interaction with a currency dispenser;” “determining . . . an expected travel route for the member;” “determining . . . conditions of the plurality of currency dispensers;” “based at least on the request . . ., the conditions of the plurality of currency dispensers, and the expected travel route for the member, identifying . . . at least one currency dispenser among the plurality of currency dispensers to perform the interaction;” “sending . . . information that identifies the at least one currency dispenser;” and “receiving . . . a selection of a selected currency dispenser based on identification of the at least one currency dispenser.” Appeal 2018-007171 Application 14/824,478 8 Thus, under the broadest reasonable interpretation, claim 1 recites identifying at least one candidate currency dispenser based on various criteria, and allowing a user to select from among the candidate dispensers. We agree with the Examiner that at a high level, these steps collectively recite utilizing a currency management system. We conclude that claim 1, therefore, recites business relations or advertising, marketing, or sales activities, which are forms of commercial or legal interactions that fall within the certain method of organizing human activity category of abstract ideas set forth in the Revised Guidance. We also note that certain steps of the claimed method, under its broadest reasonable interpretation, recite concepts that are performed in the human mind, including observations, evaluations, and judgments. In particular, the “receiving” limitations recite obtaining various information related to utilizing a currency management system and the “determining” limitations recite performing evaluations and judgments based on the received information. Accordingly, we conclude claim 1 also recites concepts performed in the human mind, which fall within the mental processes category of abstract ideas identified in the Revised Guidance. Revised Guidance Step 2A, Prong 2 Under Step 2A, Prong 2 of the Revised Guidance, we next determine whether the claims recite additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). The “additional elements” recited in claim 1 include “a currency- management system,” “a plurality of currency dispensers,” “a computer system,” and “an electronic device.” None of these additional elements Appeal 2018-007171 Application 14/824,478 9 constitute “additional elements that integrate the exception into a practical application.” See id. To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the judicial exception with a particular machine (see MPEP § 2106.05(b)), affect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)). See Revised Guidance. Appellant argues claim 1 recites a technological improvement and, therefore, is not directed to an abstract idea. See Appeal Br. 17‒20. In particular, Appellant argues automated teller machines, and the use thereof, is an antiquated process that is improved by the claimed method, which identifies currency dispensers on a user’s travel route and provides an indication of currency dispenser condition. Id. at 18‒19. Appellant argues the claims involve specialized hardware, in particular currency dispensers. Id. Appellant argues the claims are equivalent to claims found patent eligible by courts in various cases. See id. at 19 (citing Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018)), 20 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)), 20‒21 (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)), 23‒24 (Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017))). Appeal 2018-007171 Application 14/824,478 10 Appellant has not persuaded us of Examiner error. The nature of claim 1 as a whole is not to define a specific technological improvement, which may constitute integrating the claims into a practical application. Instead, claim 1 merely recites the steps necessary to perform the abstract idea itself. Our reviewing court has “made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of claim 1 is on the business practice of identifying currency dispensers “and the recited generic computer elements ‘are invoked merely as a tool.’” Id. (citing Enfish, 822 F.3d 1327); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). Specifically, the claimed “currency-management system,” “plurality of currency dispensers,” “computer system,” and “electronic device” are used to achieve the claimed results and are not focused on “a specific means or method that improves the relevant technology.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant’s Specification confirms the generic, conventional nature of the claimed systems, dispensers, and devices. See Spec. 4:13‒5:6, 15:1‒16:19, 19:10‒15. Appellant’s arguments equating the claims to claims found patent eligible by courts in other cases is unpersuasive. In each of those cases, the courts identified particular technological improvements recited in the claims. For example, in Finjan, the claims “employ[ed] a new kind of file that enables a computer security system to do things it could not do before.” Finjan, 879 F.3d at 1305. This approach allowed the system to accumulate Appeal 2018-007171 Application 14/824,478 11 and utilize newly-available, behavior-based information about potential threats, an improvement to computer security. Id. Similarly, the claims in DDR Holdings did more than merely address a problem unique to the Internet. Instead, the claims addressed this problem in a manner that was “not merely the routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. In particular, rather than the expected behavior of simply sending the website visitor to a third-party website, the claimed invention behaved in a manner different than expected by sending a website visitor to a hybrid web page presenting information from a third-party with the look and feel of the host website. Id. at 1258‒59. By contrast, Appellant’s claims use the recited additional elements as generic, conventional components upon which their improved business method operates. For these reasons, Appellant has not persuaded us of Examiner error with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore, conclude the judicial exception is not integrated into a practical application under the Revised Guidance. Revised Guidance Step 2B Under Step 2B of the Revised Guidance, we next determine whether the claims recite an “inventive concept” that “must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than “computer functions [that] are ‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting Mayo, 566 U.S. at 73). Appeal 2018-007171 Application 14/824,478 12 Appellant argues claim 1 recites significantly more than merely describing and applying the abstract idea. See Appeal Br. 21‒23. In particular, Appellant argues the ordered combination recited in the claims inventively improve antiquated ATM use processes. Id. at 22. According to Appellant, receiving a request from a would-be ATM user, determining currency dispenser conditions, determining a user travel route, identifying appropriate currency dispensers, and providing this information to a user is an inventive ordered combination in comparison to simpler techniques such as locating an ATM. Id. Appellant has not persuaded us of Examiner error. The Examiner notes that the claims in BASCOM focuses on a specific improvement in filtering technology that involved providing individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. Ans. 8. Appellant’s claims, on the other hand, focus on a business solution using generic computers, as discussed above. Appellant has not persuasively identified an ordered combination of limitations that amounts to something significantly more than the recited abstract ideas themselves. Appellant also argues that the claims carve out a specific technique which does not preclude non-infringing use of the entire abstract idea and, therefore, are patent eligible. See Appeal Br. 24‒25. Appellant has not persuaded us of Examiner error. Preemption is the concern that drives the exclusionary principle of judicial exceptions to patent-eligible subject matter. Alice, 573 U.S. at 210. However, preemption is not a separate test of patent eligibility, but is inherently addressed within the Alice framework. See Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Appeal 2018-007171 Application 14/824,478 13 Cir. 2015) (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”). For these reasons, we agree with the Examiner that the claims do not recite an “inventive concept” sufficient to transform the claims from an abstract idea to a patent eligible application. We, therefore, sustain the patent-ineligible subject matter rejection of claim 1. We also sustain the rejection of independent claim 22, which Appellant argues is patent eligible for substantially the same reasons. See Appeal Br. 5‒30. We also sustain the rejection of dependent claims 2, 4, 7, 8, and 11‒17, 20, 23, 24, and 27–36 for which Appellant relies on substantially the same arguments. See id. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 2, 4, 7, 8, 11‒17, 20, 22‒24, 27‒36 101 Eligibility 1, 2, 4, 7, 8, 11‒17, 20, 22‒24, 27‒36 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. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation