Ex Parte Singhal

Patent Trial and Appeal Board

Nov 30, 2017

12928712 (P.T.A.B. Nov. 30, 2017)

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.
12/928,712 12/17/2010 Tara Chand Singhal 11195.37Div1 6876
103550 7590 11/30/2017
Tara Chand Sighal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
11/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte TARA CHAND SINGHAL
____________

Appeal 2016-004555
Application 12/928,7121
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MATTHEW S. MEYERS and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 2–10 and 12–19, 21, and 22.2 We have jurisdiction under
35 U.S.C. § 6(b).

1 Appellant Tara Chand Singhal is identified as the real party in interest.
Appeal Br. 4.

2 Appellant and Examiner both identify claims 2–10 and 12–22 as currently
pending, however, claim 20 is currently cancelled (see Appeal Br. 23).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellant states, the “present invention is directed to facilitating
private and secure financial transactions between a customer and an ATM of
a financial institution.” (Spec. 1).
Claim 21 reproduced below, is representative of the subject matter on
appeal.
21. A system for interfacing with an ATM of a financial institution by
a customer without use of a bankcard, comprising:
a. a portable wireless device of the customer and a central system with
pre-stored bankcard data of customers and the central system additionally
pre-stores customer portable wireless device data, the central system hosted
with a function to identify and verify customers connecting via the wireless
device and selectively access their bankcard data;
b. an automated teller machine (ATM) of the financial institution, the
central system pre-stores ATM terminal identifications and their
corresponding network addresses, the central system, the portable wireless
device, and the ATM communicate on a global computer network;
c. the wireless device of the customer reads an ATM terminal
identification from the ATM and wirelessly sends a data record with at least
the ATM terminal identification to the central system;
d. the central system compares the received ATM terminal
identification with the pre-stored ATM terminal identification to retrieve
terminal network address and sends a data record to the ATM to authorize
the customer to conduct financial transaction with the ATM, without the
customer having a bankcard and having entered a PIN in the ATM.

THE REJECTION
The following rejection is before us for review.
Claims 2–10 and 12–22 are rejected under 35 U.S.C. § 101.

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ANALYSIS
35 U.S.C. § 101 REJECTION
Claims 2–10 and 12–22 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 17–19
We affirm the rejection of claims 17–19 under 35 U.S.C. § 101.
Independent claim 17 recites in pertinent part a method comprising
the steps of:
a. pre-storing customer electronic addresses of
selected customers in a central system used for
managing ATMs of a financial institution and
using a wireless device of the customer to identify
and verify customer identity to the computer
systems managing the ATM;
b. suppressing printing of a paper transaction
record of a transaction by the customer with the
ATM incident to conducting a financial transaction
by the selected customers with the ATM; and
c. sending electronically the ATM transaction
record to the selected customer via a pre-stored
customer electronic address.
Appeal Br. 21.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
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patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., 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.”
Alice Corp. Pty. Ltd. v CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 17 result in sending electronically the ATM
transaction record to the selected customer via a pre-stored customer
electronic address. The Specification states:
The merchant retains the customer sensitive data of
name, card number and signature. This presents an additional
security risk in that; computer hackers and thieves may steal it.
Multiplicity of data records is kept with many merchants as a
record is created with each merchant each time a payment
transaction is conducted. Thus the customer sensitive data is
stored with many merchants in many paper and database
records. This significantly raises the probability of theft and
hacking from the merchant paper and computer records.
Specification 2:23–3:1. Thus, all this evidence shows that claim 17 is
directed to conducting a paperless financial transaction using a pre-stored
customer electronic address. It follows from prior Supreme Court cases, and
Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at
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issue here are directed to an abstract idea. Reducing the risk of fraud by a
financial institution is a fundamental economic practice because a financial
institution takes and holds confidential information in trust from the
customer. The patent-ineligible end of the 35 U.S.C. § 101 spectrum
includes fundamental economic practices. See Alice Corp., 134 S. Ct. at
2355–57.
As in Alice Corp., we need not labor to delimit the precise contours of
the “abstract ideas” category in this case. It is enough to recognize that there
is no meaningful distinction in the level of abstraction between the concept
of an intermediated settlement in Alice and conducting a paperless financial
transaction using a pre-stored customer electronic address to reduce the risk
of identity theft. Both are squarely within the realm of “abstract ideas” as
the Court has used that term. That the claims do not preempt all forms of the
abstraction or may be limited to ATM transactions, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360–61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp., 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice Corp., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval—some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite conducting a paperless financial transaction using a pre-stored
customer electronic address to reduce the risk of identity theft. The claims
do not, for example, purport to improve the functioning of the computer
itself. Nor do they effect an improvement in any other technology or
technical field. Instead, the claims at issue amount to nothing significantly
more than instructions to conduct a paperless financial transaction using a
pre-stored customer electronic address to reduce the risk of identity theft.
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Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp., 134 S. Ct. at 2360 (alterations in original).
Appellant argues,
Accordingly as has been detailed above, the claim does
not set forth or describe an abstract idea. Instead the claimed
method is necessarily rooted to computer technology to
overcome a problem specifically arising in interfacing with an
automated teller machine. The mobile device, the ATM
machine and bank server all have CPUs, memory, display,
communication interfaces and peripherals both for input of data
and output of data and a display screen and thus is a digital
machine.
(Appeal Br. 14).
We disagree with Appellant because claim 17 does not recite a
particular way of programming or designing the software to create a secure
system, but instead merely claim the resulting process. See McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
(“directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery”).
Claims 2–10, 12–16, 21, and 22
We do not sustain the rejection of claims 2–10, 12–16, 21, and 22
under 35 U.S.C. § 101. Independent claims 21 and 22 differ in scope from
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that of independent claim 17 in that they involve a non-generic process using
a myriad of various components configured to perform as an improved
system. The claimed inventory of device components and attendant
software is as follows:
Portable wireless device
Pre-stored bank card data and customer wireless device data
Central system
ATM
ATM terminal identifiers
Global computer network
Authorizing Data record.
We thus find that the subject matter of independent claims 21 and 22 recites
a combination which provides a different way of accessing a bank account
using an ATM terminal and attendant system without the need of using a
conventional bankcard. For example, the claims require device-to-device
data transmission protocol reciting, the wireless device of the customer reads
an ATM terminal identification from the ATM and wirelessly sends a data
record with at least the ATM terminal identification to the central system.
Concerning the subject matter of independent claims 21 and 22, we
find the dissent in Smart Systems Innovations, LLC v. Chicago Transit
Authority, --- F.3d ---, 2017 WL 4654964 at *14 (Fed. Cir. 2017) applies
here because similarly, both cards provide a different way of accessing
network data in that
the claimed combination of a white list with a bankcard reader
to regulate access to a transit system is not dependent on
component functionality and is not merely a generic computer
implementation of an idea or the linkage of an idea to a
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particular technological environment. To the contrary, the
claimed combination here is a different way of accessing a
transit system by using a conventional bankcard without the
need for immediate network connectivity and without the
latency previously considered an inherent limitation on the use
of ordinary bankcards for such purposes. Even if the bankcard
reader itself is considered similar to the scanner in Content
Extraction, nothing in Content Extraction parallels the
combination of a bankcard reader, a white list, and transit
system access control called for in the claims of the ’003 and
’617 patents.
Thus, we find that because independent claims 21 and 22 claim particular
way of programming or designing software to authorize a customer to
conduct financial transactions with the ATM, “without the customer having
a bankcard and having entered a PIN in the ATM,” the claims are patent
eligible. The question is whether the claims as a whole “focus on a specific
means or method that improves the relevant technology” or are “directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 17–19 under
35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 2–10, 12–16,
21, and 22 under 35 U.S.C. § 101.
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).
AFFIRMED-IN-PART