Nathaniel Christopher. Herwig

Patent Trials and Appeals Board

Jul 19, 2019

12847435 - (D) (P.T.A.B. Jul. 19, 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.
12/847,435 07/30/2010 Nathaniel Christopher Herwig 10-313 3920
107681 7590 07/19/2019
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHANIEL CHRISTOPHER HERWIG
____________

Appeal 2017-011195
Application 12/847,4351
Technology Center 3600
____________

Before JASON J. CHUNG, CARL L. SILVERMAN, and SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–28. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies NCR Corporation as the real party in interest. App. Br. 2.
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BACKGROUND
The Claimed Invention
The invention relates to “generating a virtual customer session” at a point of
sale, in which the customer’s computing device interacts with the point of sale
device, including displaying transaction information in real time. Spec. ¶¶ 2–3.
Claims 1, 11, and 20 are independent. Claim 1, reproduced below, is
representative of the invention and the subject matter in dispute:
1. In a point of sale terminal, a computer implemented
method for communicating with a customer using a portable
computing device, the method implemented as executable instructions
residing in a non-transitory computer-readable storage medium for
execution on the point of sale terminal, the method comprising:
starting, on the point of sale terminal, a purchase transaction for
the customer where one or more items are presented to the point of
sale terminal for identification and purchase;
determining, by the point of sale terminal, the presence of the
portable computing device;
establishing, by the point of sale terminal, wireless
communications with the portable computing device, wherein
establishing further includes establishing the wireless
communications as a customer session for the purchase transaction
between the point of sale terminal and the portable computing device;
receiving, by the point of sale terminal and from the portable
computing device a token that identifies the portable computing
device and the customer;
authenticating, by the point of sale terminal, the token and the
identity of the portable computing device and the customer;
receiving, by the point of sale terminal and from the portable
computing device a request, initiated by the customer, to transmit
transaction information being displayed on a customer display of the
point of sale terminal to the portable computing device where the
transaction information includes information that identifies each item
presented for purchase;
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transferring, by the point of sale terminal, complete electronic
control of where the transaction information is being displayed during
the customer session to the portable computing device and
dynamically switching back and forth between displaying that
transaction information on the portable computing device and the
point of sale terminal in response to selectable options presented on
the portable computing device being activated on the portable
computing device during the customer session; and
transmitting, by the point of sale terminal and in response to the
request, the transaction information being displayed on the customer
display and additional information about the transaction that is not
part of the transaction information displayed on the customer display
where the information is transmitted in real-time as the one or more
items are presented for purchase.
App. Br. 18–19 (Claims Appendix) (emphases added).
The Rejection on Appeal
Claims 1–28 are rejected under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Final Act. 4–12.
DISCUSSION
The Examiner determined that the claims constitute ineligible subject matter
because they recite “managing [an] electronic financial transaction” which, the
Examiner reasoned, is a “fundamental economic practice,” and the claims do not
recite additional elements that amount to significantly more. Ans. 4–5 (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”)). Appellant argues the Examiner erred and that the claims are patent-
eligible because they are directed to an improvement in computing, and in
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particular, provide for security and improved processing in a computing device at a
point of sale. Reply Br. 3.
After the Briefs were filed and Answer mailed in this case, the USPTO
published revised guidance on the application of § 101. 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 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”)2; and
(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”).

2 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
in this case.
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After considering Appellant’s arguments in light of the Guidance and
corresponding case law, we are persuaded the Examiner erred in rejecting the
claims as patent ineligible.
We begin with claim 1.3 First, we agree with the Examiner’s determination
that claim 1 recites an abstract idea, and specifically, a fundamental economic
practice, which is one of the certain methods of organizing human activity
identified as abstract under the Guidance. See Guidance at Section III (describing
Step 2A, Prong One). Claim 1 recites a method including “starting . . . a purchase
transaction,” “determining” the presence of a portable computing device,
“authenticating” the device, and “transmitting . . . transaction information” to the
portable device. App. Br. 19–20. These steps describe the fundamental economic
practice of a financial transaction on a portable device at a point of sale. The first
step in a financial transaction at a point of sale is to start the purchase transaction,
which corresponds to the first step recited in claim 1. The next step is to determine
a computing device (in this case, a portable device) to use for processing or
displaying the transaction, and the final step is to transmit the relevant purchase
information to the computing device, also as recited in the claim. Accordingly, we
conclude that the claim recites an abstract idea as identified by the Guidance, and
specifically, a fundamental economic practice, which is one of the certain methods
of organizing human activity identified as abstract under the Guidance.
Proceeding to Guidance Step 2A, Prong Two, however, we determine that
claim 1 recites additional elements that integrate the judicial exception into a
practical application. Specifically, claim 1 recites “establishing” a wireless session

3 Appellant groups for argument claims 1, 11, and 20, all of which recite
limitations commensurate in scope, and we choose claim 1 as representative. 37
C.F.R. § 41.37(c)(iv).
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at the customer’s portable device for the purchase transaction, “receiving” an
authentication token from the customer’s portable device, “transferring, by the
point of sale terminal, complete electronic control of where the transaction
information is being displayed during the customer session to the portable
computing device[,] and dynamically switching back and forth” between the point
of sale terminal and portable device, all in “real time.” App. Br. 19–20 (emphasis
added). As Appellant argues, these steps involve not merely conducting a financial
transaction, but establishing an “improved way of communicating with the
customer” at a point of sale transaction. Spec. ¶ 4; App. Br. 16–18. The practical
application is a virtual computing session that is authenticated and secure enough
to process and/or display the customer’s financial transaction on the customer’s
portable device at the point of sale. Abstract, Spec. ¶ 4. The customer, therefore,
can monitor the transaction information in real time on the customer’s own device,
and the recited authentication process provides improved security in the virtual
session. Spec. ¶ 6.
Thus, like the claims in McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1312 (Fed. Cir. 2016), Appellant’s claims are integrated into a
practical application, namely, an improved point of sale processing using a virtual
computing session. See McRO, 837 F.3d at 1302–03, 1307–08, 1314–15 (reciting
patent-eligible claims directed to a “specific . . . improvement in computer
animation” for “achieving automated lip-synchronization,” using “unconventional
rules that relate[d] sub-sequences of phonemes, timings, and morph weight sets”).
Accordingly, we conclude that claim 1 is directed to patent-eligible subject
matter, as are independent claims 11 and 20 argued therewith. The remaining
claims are dependent. We, therefore, do not sustain the Examiner’s rejection of
claims 1–28 under 35 U.S.C. § 101.
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DECISION

We reverse the Examiner’s decision rejecting claims 1–28 under 35 U.S.C.
§ 101.
REVERSED