Jim Papadakos et al.

Patent Trials and Appeals Board

Jul 17, 2019

14635593 - (D) (P.T.A.B. Jul. 17, 2019)

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.
14/635,593 03/02/2015 Jim Papadakos CITI-0755 7969
13708 7590 07/17/2019
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
07/17/2019 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 JIM PAPADAKOS and GURINDER BIR SINGH
____________

Appeal 2017-011191
Application 14/635,5931
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, NORMAN H. BEAMER, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–18, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Citibank, N.A. as the real party in interest. Br. 1.
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BACKGROUND
The Claimed Invention
The invention relates to credit card use at a self-service financial
transaction terminal (such as an automated teller machine, or “ATM”), and
specifically, to credit card authentication at such terminals. Abstract;
Spec. ¶¶ 1–4. Claims 1 and 10 are independent. Claim 1, reproduced
below, is illustrative of the invention and the subject matter in dispute:
1. An apparatus, comprising:
an automated teller machine having a processor coupled
to memory and being communicatively coupled via an
automated teller machine network to an automated teller
machine host server processor, the automated teller machine
processor being specially programmed to:
receive a cardholder credit card number read from a
cardholder credit card by a card reader communicatively
coupled to the automated teller machine processor;
generate via an interface of the automated teller machine
a query regarding selection of a type of transaction without first
generating via the interface a request for a cardholder identifier
associated with the cardholder credit card number in response
to receiving the cardholder credit card number from the card
reader; and
process a transaction comprising a cardholder payment
on a credit card account without generating via the interface the
request for the cardholder identifier associated with the
cardholder credit card number when a selection via the
interface of the cardholder credit card account payment
transaction is identified by the automated teller machine
processor.
Br. (Claims Appendix)2 (emphasis added).

2 The Claims Appendix is not paginated.
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The Rejections on Appeal
Claims 1–18 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 4–8.
Claims 1–18 are rejected under 35 U.S.C. § 103 as being unpatentable
over Chau et al. (US 2013/0110656 A1; pub. May 2, 2013) (“Chau”), Rae et
al. (US 2008/0306837 A1; pub. Dec. 11, 2008) (“Rae”), and Mateen et al.
(US 2014/0074632 A1; pub. Mar. 13, 2014) (“Mateen”). Final Act. 8–24.
DISCUSSION
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(iv). For the reasons discussed below, we are not
persuaded the Examiner has erred.
Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims constitute ineligible subject
matter because they recite the “fundamental economic practice” of
“processing a transaction using a credit card,” and do not recite
“significantly more.” Final Act. 5–6 (citing Alice Corp. v. CLS Bank lnt’l,
573 U.S. 208, 217 (2014) (describing two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”)). The Examiner also found that the claims “do not provide
improvements to another technology or technical field,” but rather, simply
recite steps that “are done by the generically recited computer/processor and
donation system.” Final Act. 6.
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Appellants argue that the Examiner erred by “mischaracteri[zing] the
claim language” and merely reaching “stock boilerplate conclusions
completely devoid of any specific evidence, analysis or reasoned logic.” Br.
8. Appellants assert that the claimed invention is a “technical improvement”
analogous to the inventions in Bascom and Enfish, and that Appellants’
claims do not preempt the idea of “processing a transaction using a credit
card.” Br. 7–15 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016); Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
After the Brief3 was filed and Answer mailed in this case, the USPTO
published “Revised Subject Matter Eligibility Guidance” synthesizing case
law and providing agency instruction on the application of § 101. See
USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a 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”)4; and

3 No Reply Brief was filed to rebut the Examiner’s factual findings and legal
conclusions in the Answer.

4 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue here, as Appellants’ claims recite systems
(machines) and methods (processes).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Step 2A,
Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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 id. at 56 (collectively “Step 2B”).
We begin our de novo review with Appellants’ claim 1. We agree
with the Examiner’s determination that claim 1 recites an abstract idea,
namely, a fundamental economic practice. See Guidance at Section III
(describing Step 2A, Prong One). Claim 1 recites a fundamental economic
practice because the recited “automated teller machine [i.e., ATM]” is
programmed to perform the following steps, all of which are fundamental to
payment on a credit card account at an ATM machine: (1) “receive a
cardholder credit card number,” (2) “generate . . . a query regarding
selection of a type of transaction” without first requiring an identifier (such
as a PIN), and (3) “process a transaction comprising a cardholder payment
on [the] credit card account.” Br. (Claims Appendix). The first step in
making a payment on a credit card account is to enter the card number,
which is recited in the first step above. The next step is for the user to
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identify that the transaction is for a payment to the credit card account,
which is recited in step two, above. Finally, the last step is to process the
user’s payment to the credit card account, which is recited in the last step
above.
Accordingly, we agree with the Examiner’s determination that, like
the claims to hedging in Bilski and the claims to mitigating settlement risk in
Alice, claim 1 recites a fundamental economic practice, which is one of the
certain methods of organizing human activity deemed to be an abstract idea
under the Guidance. See Final Act. 5–6 (citing Bilski v. Kappos, 561 U.S.
593 (2010); Alice, 573 U.S. 208).
We next proceed to Step 2A, Prong 2 of the Guidelines. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellants argue that claim 1 is patent-
eligible because it constitutes an improvement to technology, specifically
because the invention recites “PIN-less ATM cardholder payments on credit
card accounts.” Br. 12. Improving the functioning of a computer can reflect
integration of an idea into a “practical application.” Guidelines Sect. III.
Appellants argue that, like the claims in Enfish and Bascom, Appellants’
invention “integrates specifically identified multiple dimensions in order to
solve specific computer processor and data storage problems.” Br. 12–15.
We, however, disagree.
Appellants do not explain, and we do not discern, how the claimed
invention is sufficiently analogous to the claims in any of the foregoing
cases.5 See, e.g., Bascom, 827 F.3d at 1350 (“harness[ing a] technical

5 Appellants’ entire argument regarding the § 101 rejection consists of little
more than a rote recitation of the holdings of several cases. Br. 4–5.
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feature of network technology in a filtering system” to customize content
filtering); Enfish, 822 F.3d at 1330–33, 1336 (“self-referential database”
which permitted faster searching for data). The claims in Bascom and Enfish
recited a “specific . . . improvement to the way computers operated,” see,
e.g., Enfish, 822 F.3d at 1330–33, but Appellants’ claim 1 recites a credit
card transaction that merely uses a generic processor. See e.g., Spec. ¶ 7
(“Embodiments of the invention employ computer hardware and software,
including, without limitation, one or more processors coupled to memory
and non-transitory computer-readable storage media with one or more
executable programs stored thereon which instruct the processors to perform
the ATM credit card account payments described herein.”).
Appellants also do not direct us to any evidence that any of the
claimed “processing” steps correspond to unconventional rules, transform or
reduce an element to a different state or thing, or otherwise integrate the idea
into a practical application. Rather, claim 1 recites a series of steps in which
a transaction request is “received,” “selected,” and “processed.” Br. (Claims
App.). Reciting a result-oriented solution that lacks any details as to how the
computer performed the modifications is the equivalent of the words “apply
it.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1341–42 (Fed. Cir. 2015) (citing Elec. Power Grp., LLC, v. Alstrom S.A.,
830 F.3d 1350, 1356 (Fed. Cir. 2016) (cautioning against claims “so result
focused, so functional, as to effectively cover any solution to an identified
problem”)); see also CyberSource v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (mere data gathering does not make a claim patent-
eligible). The data gathering and “processing” steps in claim 1 do not add
meaningfully to the recited fundamental economic practice.
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Similarly, we are unpersuaded by Appellants’ argument that claim 1
“do[es] not conceivably carry a risk of preempting [the field of] processing a
transaction using a credit card.” Br. 15. Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert,
denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). Where, as here, “a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework . . . preemption concerns are fully addressed and
made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
Finally, under Step 2B of the Guidance we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Appellants argue that the claim 1 limitation of a “PIN-less”
transaction (i.e., a transaction without a “cardholder identifier associated
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with the cardholder credit card number) constitutes an additional limitation
that is not routine or conventional. Br. 12–13. We disagree. As disclosed in
Appellants’ Specification, a “PIN associated with a credit card is not
currently required in a typical credit card transaction with a merchant.”
Spec. ¶ 4. Accordingly, we agree with the Examiner’s finding that simply
“adopting the long time practice of merchants to accept payments without
requiring” a PIN in an ATM is well understood, routine, and conventional.
Ans. 8–9. As the Examiner finds:
It is quite evident that a bank whose ATM is being used to accept
a payment from a card holder, would not be concerned about the
identity of the party making the payment. Accepting a payment
from a party other than the actual card holder has no adverse
effect on the bank and therefore, requiring an identifier from the
party making a payment would provide no benefit to the bank.
Conversely, not requiring an identifier from a party making a
payment to the account of a card holder would not be detrimental
to the bank.

Id.
Further, the elements of the invention that implement the PIN-less
ATM transaction are generic computing elements performing their
conventional functions. Spec. ¶¶ 36–38 (describing “understood” basic
computing components such as a microprocessor, WAN, RAM, optical
media, C programming language, servers, and displays).
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. Appellants do not argue
claims 2–18 separately from claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)). We,
therefore, sustain the rejection of claims 1–18 under 35 U.S.C. § 101.
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Rejection Under 35 U.S.C. § 103
Appellants argue that the Examiner erred in concluding that claim 1 is
obvious, because “nothing in Chau, Rae and Mateen [teach] PIN-less ATM
cardholder payment on a credit card account,” as recited in claim 1 (i.e.,
“process a transaction . . . without generating via the interface the request for
the cardholder identifier”). Br. 17. Specifically, Appellants argue that Chau
discloses a system with a “PIN pad,” Rae discloses a “merchant” system
requiring “authenticating,” and Mateen discloses a “credit card cash
advance” rather than a payment system. Br. 16–17.
We, however, are unpersuaded by Appellants’ argument because it
does not address the Examiner’s combination of references. In re Keller,
642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references”). The Examiner relies on the combined
teachings of Chau’s ATM point of sale payment system, Rae’s PIN-less
ATM transactions, and Mateen’s cash access machine. Ans. 16–22.
Appellants do not identify the alleged error in the Examiner’s combination,
and we discern none.
Further, the Examiner has provided “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Ans. 22; Final Act. 9;
see also Rae ¶ 8; Mateen ¶ 34. Appellants do not point to any evidence of
record that the resulting arrangements of the cited references were “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex,
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Inc., 550 U.S. 398, 418–19 (2007)). The Examiner’s findings are reasonable
because the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. We are
persuaded the claimed subject matter exemplifies the principle, “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1, as well as claims 2–18 that were argued as a group with claim 1.
DECISION
We affirm the Examiner’s decision rejecting claims 1–18.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED