Greg Taylor et al.

Patent Trials and Appeals Board

Jan 3, 2020

13126810 - (D) (P.T.A.B. Jan. 3, 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.
13/126,810 06/24/2011 Greg Taylor 5973-001 6119
22429 7590 01/03/2020
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
Alexandria, VA 22314
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG TAYLOR and JOAN NELSON
Appeal 2018-000102
Application 13/126,810
Technology Center 3600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
JOHN R. KENNY, Administrative Patent Judges.

KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15 and 23–27. We have jurisdiction
under 35 U.S.C. § 6(b).

We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as THE NTF
GROUP PTY LTD. Appeal Br. 2.
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SPECIFICATION
Appellant’s Specification relates to a “transactional apparatus, and
particularly to [an] apparatus for providing user identification such as a
purchaser of goods or services at a Point of Sale (POS) with a reward, or
providing an identity transaction of a user in say a Post Office or retailer of
postal services.” Spec. 1.
ILLUSTRATIVE CLAIMS
Claims 1 and 27, reproduced below, are illustrative of the claimed
subject matter:
1. Apparatus for providing user identification associated
with a transaction at a Point of Sale (POS) device, comprising a
remote stand-alone device physically remote from the POS
device and not operatively connected to the POS device and
adapted to capture and derive, subsequent to the POS transaction,
transactional information data relating to a particular user based
on the captured transactional POS data, and wherein the stand-
alone device is visited by the user subsequent to a POS
transaction, the stand-alone device being completely functionally
separate from the POS device and adapted to receive information
from the user relating to the POS transaction and generate
customized rewards suitable to that particular user.
27. Transactional apparatus, comprising a kiosk remote
from a merchant's POS (point of sale) and which is not
operatively connected to the POS and completely functionally
separate from the POS, said kiosk being adapted both to capture
and derive, subsequent to a POS transaction, transactional data
relating to each of a variety of individual users of the POS and to
decode, parse, clean, transform, interpret, and use that data to
identify each individual user, so as to provide a reward for a
particular user based on the transactional data captured for that
user.
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REFERENCES
Name Reference Date
Korman US 6,318,536 B1 Nov. 20, 2001
Nicholson US 2004/0158493 A1 Aug. 12, 2004
Register US 2005/0234771 A1 Oct. 20, 2005
Woodward US 2010/0299197 A1 Nov. 25, 2010
REJECTIONS
Claims 1–15 and 23–27 stand rejected under 35 U.S.C. § 101 as
directed to patent ineligible subject matter. Non-Final Act. 3.
Claims 1–4, 7, 12–15, 23, 24, and 27 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Woodward. Non-Final Act. 6.
Claims 5, 8–11, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Woodward and Korman. Non-Final
Act. 10.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Woodward and Register. Non-Final
Act. 13.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Woodward and Nicholson. Non-Final Act. 14.
OPINION
I. Rejection Under 35 U.S.C. § 101
A. 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 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).
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In determining whether a claim falls within an exception, we are
guided by the Supreme Court’s two-step framework, described in Mayo and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding [of] rubber products” (Diamond v. Diehr, 450 U.S. 175,
191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187, 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook); 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.”) (Emphasis omitted).
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 (quoting Mayo, 566 U.S. at 72,
79) (internal quotation marks omitted). “A claim that recites an abstract idea
must include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Id. (alterations
in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic
computer implementation[] fail[s] to transform that abstract idea into a
patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of section 101. USPTO’s
January 7, 2019 Guidance, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“Guidance”); see also USPTO, October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/
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default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019)
(“Update”). Under that Guidance, we first look to whether the claim recites:
(1) (see Guidance Step 2A—Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human
activity such as commercial or legal interactions, or mental
processes); and
(2) (see Guidance Step 2A—Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Guidance Step 2B.
C. Arguments
Appellant argues that the Non-Final Action does not analyze whether
any pending claim is directed to a process, machine, manufacture, or
composition of matter and, therefore, the Examiner’s patent eligibility
rejection should be reversed. Appeal Br. 6. In addition, Appellant
substantively addresses the rejection of claim 1. Id. at 7–13. Further,
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Appellant asserts that the Examiner failed to perform a proper analysis for
claims 3, 4, 6–15, and 23–27. Id. at 13–14.
D. USPTO Guidance Step 1
Step 1 of the USPTO’s eligibility analysis asks whether a claim is to a
process, machine, manufacture, or composition of matter. MPEP § 2106. If
it is not, then the claim is patent ineligible. Id. Appellant argues that the
Examiner in the Non-Final Action did not address whether the claims
satisfied Step 1 and, thus, the patent eligibility rejection should be reversed.
Appeal Br. 6; Reply Br. 2–3. We are not persuaded by this argument. The
Examiner analyzed the claims under Steps 2A and 2B of the USPTO
Guidance as it stood when the Non-Final Action issued. Non-Final Action
3–5. Under that Guidance, the Examiner would only address Steps 2A and
2B if Step 1 is satisfied, which means the Examiner held that Step 1 of the
Guidance was satisfied. MPEP § 2106. Appellant does not appear to
dispute that holding. Appeal Br. 6. Accordingly, we are not persuaded by
Appellant that Examiner committed reversible error in the Non-Final Action
by not expressly addressing whether the pending claims satisfy Step 1 of the
Guidance.
In the Reply Brief, Appellant argues that the Examiner in the Answer
misidentified what the claims are directed to and, therefore, the patent
eligibility rejection should be reversed. Reply Br. 3. Appellant cites no
authority for such a reversal, and we see none. Id. The Manual of Patent
Examining Procedure, in fact, states that: “[i]t is not necessary to identify a
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single category into which a claim falls, so long as it is clear that the claim
falls into at least one category.” MPEP § 2106.03.
E. Claim 1
We agree with the Examiner that claim 1 does not recite eligible
subject matter for the reasons discussed below.
1. Alice Step One
a. USPTO Step 2A—Prong One
The Examiner determines that claim 1 is directed to capturing and
deriving, subsequent to a point of sale transaction, transactional information
data, receiving information from the user relating to the POS transaction and
generating customized rewards suitable to that particular user. Non-Final
Act. 3. Consistent with the Examiner’s findings, we determine that claim 1
recites fundamental economic practices and commercial interactions, which
are certain methods of organizing human activity identified in the Guidance
as constituting abstract ideas. Guidance 52 (identifying “fundamental
economic principles or practices” and “commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations)” as
among the certain methods of organizing human activity that are abstract
ideas).
First, although Appellant and the Examiner present opposing positions
regarding whether the claims in this case are directed to advertising, like the
claims in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)
(Appeal Br. 7; Ans. 4; Reply Br. 3–4), we need not resolve that dispute
because the holding of Ultramercial and related precedent are not limited to
advertising. Rather, advertising is merely one of the certain methods of
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organizing human activity that are recognized by precedent and in the
Guidance as abstract ideas. Guidance 52 n.13.
Second, claim 1 recites fundamental economic practices and
commercial interactions. The preamble of claim 1 recites: “Apparatus for
providing user identification associated with a transaction at a Point of Sale
(POS) device.” Providing a user identification associated with a transaction
at a point of sale device is commercial interaction. Claim 1 also recites:
“adapted to capture and derive, subsequent to the POS transaction,
transactional information data relating to a particular user based on the
captured transactional POS data.” This is also a commercial interaction.
Claim 1 further recites: “adapted to receive information from the user
relating to the POS transaction and generate customized rewards suitable to
that particular user,” which is also a commercial interaction. Guidance 52
n.13; see also Alice, 573 U.S. at 219–20 (concluding that use of a third party
to mediate settlement risk is a fundamental economic practice); Bilski, 561
U.S. at 611–12; Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876
F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding that concept of “local
processing of payments for remotely purchased goods” is a “fundamental
economic practice”); buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355
(Fed. Cir. 2014) (holding that concept of “creating a contractual
relationship—a ‘transaction performance guaranty’” is an abstract idea).
b. USPTO Step 2A—Prong Two
Prong Two of the Guidance instructs us to examine whether a claim
recites additional elements that integrate a judicial exception into a practical
application and to do so by evaluating the claim as a whole. Guidance 54.
One exemplary consideration is whether an additional element reflects an
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improvement in the functioning of a computer or an improvement to other
technology or a technical field. Id. at 55. Appellant argues that the
following recitation in claim 1 is directed to an improvement in technology:
“a remote stand-alone device physically remote from the POS device and not
operatively connected to the POS device” and “completely functionally
separate from the POS device.” Appeal Br. 11; Reply Br. 6–7 (emphasis
omitted). Appellant argues that the recited stand-alone device improves
security of the apparatus and improves processing speed. Appeal Br. 11;
Reply Br. 6–7 (emphasis omitted).
We are not persuaded by this argument. As the Examiner notes, a
remote stand-alone device is a generic computer configuration. The
Authoritative Dictionary of IEEE Standards Terms, 7th Ed. (2000) evidences
that fact by defining the term “stand-alone” as: “1) Pertaining to hardware or
software that is capable of performing its function without being connected
to other components; for example, a stand-alone word processing system”
and “(2) Pertaining to a system that is self-contained and not connected to
other systems or system components.” Ex. A, 1094.
Further, the Specification describes that it uses a standalone device to
solve economic and commercial issues, not technical issues. Spec. 2–3
(“[T]he cost of implementing these programs [without stand-alone devices]
can be significant. New hardware may be required at each checkout lane.”).
Further, Appellant offers no evidence indicating that any improved security
effects or processing effects (i) are of any significance and (ii) are not
merely known characteristics of stand-alone computers. “Given the ubiquity
of computers, wholly generic computer implementation is not generally the
sort of additional feature that provides any practical assurance that the
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process is more than a drafting effort designed to monopolize the abstract
idea itself.” Alice, 573 U.S. at 223–24 (citations omitted) (internal quotation
marks and alterations omitted).
The Guidance lists other indicia of integration (Guidance 55), but
none are present in claim 1. For example, the “[t]ransformation and
reduction of an article ‘to a different state or thing’ is the clue to the
patentability of a process claim that does not include particular machines.”
Bilski, 561 U.S. at 604 (alteration in original), quoted in MPEP § 2106.05(c).
Yet “not all transformations . . . infuse an otherwise ineligible claim with an
‘inventive concept.’” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014). Claim 1’s method does not transform a
physical object or substance. In this way, the claim is unlike the
transformations found in some eligible claims. See, e.g., Diehr, 450 U.S. at
184 (a process that transforms rubber).
Therefore, claim 1 does not integrate a judicial exception into a
practical application.
2. Alice Step Two/USPTO Step 2B
For Alice Step Two, Appellant presents the arguments addressed
above for Step 2A, Prong Two. As noted, we are not persuaded by these
arguments. See Update n. 21 (“many of the considerations evaluated in
revised Step 2A overlap with Step 2B and thus, are not reevaluated in Step
2B.”). We further note that, based on the record, the additional claim
elements, considered individually and as an ordered combination, are
routine, conventional, and well understood. See, e.g., Spec. 4:1–22. Thus,
we determine claim 1 does not have additional recitations that individually
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or as an ordered combination make it significantly more than its patent-
ineligible abstract idea.
Therefore, we sustain the patent-eligibility rejection of claim 1.
E. Claims 2–15, and 23–26
For claims 2–15, and 23–26, Appellant relies on the substantive
arguments it presents for claim 1, addressed above. Appeal Br. 13. In
addition, Appellant argues that the Examiner has not presented any analysis
under Steps 2A and 2B for claims 3, 4, 6–15, and 23–26 and, therefore, the
patent eligibility rejection of those claims should be reversed. Appeal Br.
13; Reply Br. 8. Appellant has not identified any limitation recited by
claims 3, 4, 6–15, and 23–26 that it contends would change the analysis of
patent eligibility that the Examiner presented for claim 1. Accordingly, we
are not persuaded that the patent eligibility rejection of claims 2–15 and 23–
26 was erroneous: we sustain this rejection.
F. Claim 27
For claim 27, Appellant relies on the substantive arguments it presents
for claim 1, addressed above. Appeal Br. 13. In addition, Appellant argues
that the Examiner failed to analyze the particular limitation in claim 27 of
“said kiosk being adapted . . . to decode, parse, clean, transform, interpret,
and use that data to identify each individual user.” Appeal Br. 14 (emphasis
omitted). Appellant argues that the Examiner has not explained why this
decoding limitation by itself or in combination with other elements does not
ensure that the claim amounts to significantly more than the identified
abstract ideas. Id. In the Answer, the Examiner does not address these
arguments by Appellant. Ans. 4–6. Further, in the Answer and the Non-
Final Action, the Examiner does not analyze the disputed decoding
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limitation with respect to patent eligibility. Non-Final Act. 3–5; Ans. 4–6.
Under the circumstances, we determine that the Examiner has not set forth a
prima facie case of patent ineligibility for claim 27, and we do not sustain
the patent eligibility rejection for this claim.2
II. Rejections Under 35 U.S.C. §§ 102(e) and 103(a)
A. Claims 1–4, 7, 12, 13, 23, and 24
Appellant argues that Woodward does not disclose “a remote stand-
alone device . . . not operatively connected to the POS device,” which is
“completely functionally separate from the POS device,” as recited by claim
1. Appeal Br. 15 (emphasis omitted).
The Examiner finds that Woodward discloses that kiosk 102 may be a
unitary stand-alone system. Ans. 6 (citing Woodward ¶ 29, Figs. 2–3). The
Examiner further finds that the flowchart of Woodward Figure 3 describes a
customer purchasing a product at a POS device and then taking the sales
receipt to kiosk 102 to scan the receipt and get a reward. Id. at 6–7 (citing
Woodward ¶ 42, Fig. 3). The Examiner determines that these descriptions
disclose the disputed limitations. Id.
Appellant argues that these descriptions do not disclose that kiosk 102
is not operatively connected to the POS device and is completely
functionally separate from the POS device. Appeal Br. 16. Appellant
quotes the disclosure in paragraph 29 of Woodward that “[i]n various
embodiments, the kiosk 102 is tailored to intercommunicate with a retailer’s

2 We make no determination whether this limitation by itself or in
combination with other elements transforms claim 27 into patent eligible
subject matter in light of the lack of substantive arguments before us on that
issue.
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POS system 106, either directly or via rebate processor.” Id. at 15 (emphasis
omitted). Appellant argues that “[b]ecause the kiosk of Woodward must be
tailored to intercommunicate with a retailer’s POS system either directly or
via a rebate processor, the kiosk cannot be considered as being ‘not
operatively connected to the POS device and... completely functionally
separate from the POS device.’” Reply Br. 10 (emphasis omitted).
We are not persuaded by this argument. Woodward discloses that in
some embodiments kiosk 102 is tailored to intercommunicate directly with a
retailer’s POS system 106. Woodward ¶ 29. Woodward, however, also
discloses an embodiment where the communication between kiosk 102 and
system 106 is performed manually: by having system 106 print out a receipt,
and having the customer take the receipt to kiosk 102. Woodward ¶ 42, Fig.
3 (steps 301–304). The latter embodiment discloses the disputed limitations.
Thus, we sustain the anticipation rejection of claims 1 and 2–4, 7, 12, 13, 23,
and 24, not separately argued. Appeal Br. 19.
B. Claim 14
Appellant argues that Woodward does not disclose the limitation of
“adapted to provide a verified user identification means.” Appeal Br. 19–20
(emphasis omitted). The Examiner finds that paragraph 49 and receipt
issuing process 600 in Figure 6 of Woodward Figure 6 disclose this
identification-means limitation. Non-Final Act. 8; Ans. 8. Appellant argues
that the cited disclosures merely describe data entry and not a verified user
identification means. Appeal Br. 20. Appellant asserts that in the cited
disclosures, the customer is the verifier, not the kiosk. Reply Br. 12. We are
not persuaded by this argument. In issuing process 600, the customer enters
product information, then the customer inserts the receipt into the kiosk
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before the rebate is issued. See Woodward Fig. 6 (steps 603–604, 607–608).
The kiosk’s checking for the receipt verifies that the user is eligible for the
rebate and thus verifies the user. Id. Thus, we sustain the anticipation
rejection of claim 14.
C. Claim 15
Appellant argues that Woodward does not disclose a “verified user
identification means” “comprising a bar-coded means,” as recited by claim
15. Appeal Br. 20–21. Appellant acknowledges that Woodward describes a
barcode related to a rebate, but argues that Woodward does not describe that
the rebate bar code is used to verify a user. Reply Br. 13. We are not
persuaded by this argument because Woodward discloses a machine
readable document that includes a bar code (Woodward ¶ 35) that is inserted
into the kiosk before a user can obtain a rebate (Woodward ¶¶ 35, 49). The
kiosk uses this barcode to verify that the user is entitled to a rebate.
Woodward ¶¶ 35, 49. Thus, the kiosk verifies the user with a bar code, and
we sustain the anticipation rejection of claim 15.
D. Claim 27
Appellant argues that Woodward does not disclose “said kiosk being
adapted both to capture and derive . . . transactional data . . . and to decode,
parse, clean, transform, interpret, and use that data to identify each
individual user . . . so as to provide a reward for a particular user based on
the transactional data captured for that user.” Appeal Br. 21–22 (emphasis
omitted). The Examiner explains that: Woodward’s system verifies a user’s
claim by accessing a database, the user enters information into the kiosk, the
customer inserts a receipt or information into a kiosk, and direct marketing is
presented to the customer. Non-Final Act. 9–10. The Examiner further
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notes that, in Woodward, when a user wants to collect on a rebate
immediately, the customer need only insert the machine readable document
in the kiosk. Ans. 9. The Examiner finds that, thus, the information in the
sale receipt is converted into usable data to reward the customer. Id. This,
however, does not explain how the disclosures in Woodward describe
decoding, parsing, cleaning, transforming, interpreting, and using the data on
the sale receipt.3 Because the rejection of claim 27 is for anticipation, the
cited disclosures must expressly or inherently describe this limitation, and
the Examiner has not explained how they do. Accordingly, we do not
sustain the anticipation rejection of claim 27.
E. Claims 5, 6, 8–11, 25, and 26
For the obviousness rejections of claims 5, 6, 8–11, 25, and 26,
Appellant relies on its arguments for the anticipation rejection of claim 1.
Appeal Br. 23–24. As set forth above, we are not persuaded by those
arguments. Thus, we sustain the obviousness rejections of claims 5, 6, 8–11,
25, and 26.
III. NEW GROUNDS OF REJECTION
We enter the new grounds of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). In particular, we reject claim 27 under both the first
and second paragraphs of 35 U.S.C. § 112.4

3 The issue of whether the cited disclosures would render obvious
claim 27 is not before us.
4 This Application was filed in 2011, so the pre-AIA version of
section 112 is applicable.
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A. Written Description Rejection
As described above, claim 27 recites the following decoding
limitation: “said kiosk being adapted to decode, parse, clean, transform,
interpret, and use . . . data to identify each individual user.” This decoding
limitation recites functions (i.e., decoding, parsing, cleaning, transforming,
interpreting, and using data) and a desired result (i.e., identifying each
individual user). The Specification, however, does not provide sufficient
written description support for the recited functions or their use to achieve
the recited result.
To satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph, the Specification must reasonably convey to an artisan of
ordinary skill that Appellant had possession of the claimed invention at the
time the application was filed. Vasudevan Software, Inc. v. MicroStrategy,
Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (citing Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Functional
claim language that merely describes an intended result and fails to support
the scope of the claimed invention is insufficient to show possession, even
when the claim recitations are found word-for-word in the Specification.
Vasudevan, 782 F.3d at 682 (“[t]he written description requirement is not
met if the specification merely describes a ‘desired result”’) (citing Ariad,
598 F.3d at 1349); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956,
968 (Fed. Cir. 2002) (“[t]he appearance of mere indistinct words in a
specification or a claim, even an original claim, does not necessarily satisfy”
the written description requirement). The Specification must explain, for
example, how Appellant intended to achieve the claimed function to satisfy
the written description requirement. Vasudevan, 782 F.3d at 683. While
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“[t]here is no rigid requirement that the disclosure contain ‘either examples
or an actual reduction to practice,”’ due to the written description
requirement, the Specification must set forth “an adequate description that
‘in a definite way identifies the claimed invention’ in sufficient detail such
that a person of ordinary skill would understand that the inventor had made
the invention at the time of filing.” Allergan, Inc. v. Sandoz Inc., 796 F.3d
1293, 1308 (Fed. Cir. 2015) (citing Ariad, 598 F.3d at 1352); see also
Examining Computer-Implemented Functional Claim Limitations for
Compliance with 35 U.S.C. 112, 84 F.R. 57, 61–62 (January 7, 2019) (“112
Guidance”).
Here, the Specification does not sufficiently support the recited
functions and or their use to achieve the recited result in the decoding
limitation of claim 27. Appellant identifies the following support in the
Specification for the decoding limitation: page 3, lines 14–15; page 4, lines
9–11; page 6, lines 8–15; pages 7–8 at items 1-6; page 10, lines 6–11 and
15–17, and page 11, lines 4–6. Appeal Br. 4 ns. 10–11. These cited
disclosures merely identify the recited functions and indicate that an
ordinarily skilled artisan can use conventional software to perform them.
See 112 Guidance 62 (“It is not enough that one skilled in the art could
theoretically write a program to achieve the claimed function.”). For
example, lines 8–12 of page 6 of the Specification indicates that appropriate
software can be used to perform the recited functions: “device 1 is an
information processing device at which transactional data is in a preferred
embodiment decoded, parsed, cleaned, transformed, integrated and utilised
for the estimation of analytic models (e.g. for prediction and classification)
using appropriate software, which again in a preferred embodiment is
Appeal 2018-000102
Application 13/126,810

19
customised for the particular application.” Specification 6 (emphases
added). The Specification, however, does not disclose what that appropriate
software is or how it would be customized to perform the recited functions.
Id. Similarly, item 6 on page 8 of the Specification states: “OCR software is
used to decode, from the text of the receipt: the specific items purchased,
their price, time and date of the transaction, retailer store (where the system
is deployed in a mall), total price paid, method of payment.” Specification 8
(emphasis added). The Specification does not disclose what OCR software
should be used or the type of decoding it would perform. Id.
Under these circumstances, we determine that the Specification
merely states the functions and desired result recited in the decoding
limitation, and does not demonstrate how the Applicant intended to achieve
the claimed functions and result. Further, the Specification does not
describe that claimed invention in sufficient detail such that an ordinarily
skilled artisan would understand that the inventor had made the invention at
the time of filing. Thus, we reject claim 27 under 35 U.S.C. § 112, first
paragraph for a lack of written description support.
B. Indefiniteness
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
“when it contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). Further, if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable . . . as
indefinite.” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Appeal 2018-000102
Application 13/126,810

20
Here, the scope of the functional recitation of the decoding limitation
of claim 27 is subject to two or more plausible claim constructions. The
recitation of decoding, parsing, cleaning, transforming, and interpreting has
more than one plausible construction. For example, “clean” has more than
one dictionary definition. Ex. B. And the Specification does not indicate
what definition or construction should apply to that term or to the other
recited functional terms. Spec., 3:14–15, 4: 9–11, 6:8–15, 7–8 at items 1–6;
10:6–11 and 15–17, 11:4–6. Thus, the scope of the claim 27 is unclear, and
we reject claim 27 for indefiniteness under 35 U.S.C. § 112, second
paragraph.
CONCLUSION
The Examiner’s rejections of claims 1–15 and 23–26 are affirmed.
The Examiner’s rejections of claim 27 are reversed. Pursuant to 37 C.F.R. §
41.50(b), we have entered new grounds of rejection for claim 27.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New
Grounds
1–15, 23–
27
101 Eligibility 1–15, 23–26 27
1–4, 7,
12–15,
23, 24, 27
102(e) Woodward 1–4, 7, 12–15,
23, 24
27
5, 8–11,
26
103(a) Woodward,
Korman
5, 8–11, 26
6 103(a) Woodward,
Register
6
25 103(a) Woodward,
Nicholson
25
27 112(a)(b) Written
Description,
27
Appeal 2018-000102
Application 13/126,810

21
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New
Grounds
Indefiniteness
Overall Outcome 1–15, 23–26 27 27
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)

Notice of References Cited
Application/Control No.
13/126,810
Applicant(s)/Patent Under Patent
Appeal No. 2018-000102
Examiner Art Unit
3681 Page 1 of 1
U.S. PATENT DOCUMENTS
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C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS
* Document NumberCountry Code-Number-Kind Code DateMM-YYYY Country Name CPC Classification
N
O
P
Q
R
S
T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
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*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. 20170303
The Authoritative Dictionary of IEEE Standards Terms, 7th Ed. (2000)
The American Heritage ® Dictionary of the English Language, Clean (6th ed. 2016), (accessed Dec. 23, 2019),
https://search.credoreference.com/content/entry/hmdictenglang/clean/0.

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clean (klēn) adj. clean•er, clean•est
from The American Heritage(R) Dictionary of the English Language
clean
1.
Free from dirt, stain, or impurities; unsoiled: a clean kitchen floor; clean clothes.
2.
a.
Free from foreign matter or pollution; unadulterated: clean air; clean drinking water.
b.
Not infected: a clean wound.
3.
a.
Producing relatively little pollution: a clean fuel; a cleaner, more efficient engine.
b.
Producing relatively little radioactive fallout or contamination: a clean nuclear bomb.
4.
Having no imperfections or blemishes; regular or even: a clean edge; a smooth, clean joint.
5.
a.
Not ornate or intricate; spare: “the clean lines and exquisite proportions of early modernism” (Judith Thurman).Architectural
DigestFebruary 199619960606 00001e5b
b.
Sharply defined; clear-cut: a clean outline against the sky.
6.
Free from clumsiness; deft; adroit: a clean throw.
7.
Devoid of restrictions or encumbrances: a clean bill of health.
8.
Thorough; complete: a clean getaway.
9.
Having few alterations or corrections; legible: clean manuscript.
10.
Blank: a clean page.
11.
a.
Morally pure; virtuous: led a clean life.
b.
Having no marks of discredit or offense: a clean voting record.
12.
Fit for all readers, listeners, or audiences; not ribald or obscene: a clean joke.
13.
Honest or fair: a clean fighter; a clean competition.
14.
Slang
a.
Not carrying concealed weapons or drugs.
b.
Innocent of a suspected crime.
15.
Informal
a.
Free from narcotics addiction.
b.
Showing no evidence of using banned or performance-enhancing substances: proven to be clean before the race.
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adv.
cleaner, cleanest
1.
So as to be unsoiled: wash the dishes clean.
2.
In a fair manner: played the game clean.
3.
In a clean or nonpolluting manner: a fuel that burns clean.
4.
Informal Entirely; wholly: clean forgot the appointment.
v. cleaned, clean•ing, cleans v.tr.
1.
To rid of dirt, rubbish, or impurities: clean a room; clean a suit.
2.
To get rid of (impurities or dirt, for example); remove: cleaned up the trash; cleaned off the stains.
3.
To prepare (fowl or other food) for cooking, as by removing the entrails or fat.
4.
To remove the contents from; empty: cleaned my plate.
5.
Sports To lift (a barbell) from the floor to the shoulders in one motion.
v.intr.
To undergo or perform an act of cleaning.
Phrasal Verbs: clean out
1.
To rid of dirt, rubbish, or impurities.
2.
To empty of contents or occupants.
3.
Informal To drive or force out: cleaned out the incompetent workers.
4.
Slang To deprive completely of money or material wealth: The robbery cleaned us out.
clean up
1.
To make clean or orderly.
2.
To make oneself clean, neat, or presentable.
3.
To dispose of; settle: cleaned up the unpaid bills.
4.
Slang To make a large profit, often in a short period of time: cleaned up during the bull market.
Idiom:
clean house Slang
To eliminate or discard what is undesirable: The scandal forced the company to clean house.
[Middle English clene, from Old English clǣne.]
clean'a•ble adj.
clean'ness n.
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