TARGET BRANDS, INC.

Patent Trials and Appeals Board

Feb 25, 2020

14324535 - (D) (P.T.A.B. Feb. 25, 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.
14/324,535 07/07/2014 Robert W. ASH 201401232 7224
70829 7590 02/25/2020
TARGET BRANDS, INC.
1000 NICOLLET MALL
TPS-3165
MINNEAPOLIS, MN 55403
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/25/2020 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):
USPTO.MAIL@TARGET.COM
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. ASH
Appeal 2019-002131
Application 14/324,535
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CRAWFORD, 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 1–10 and 12–21. 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 Target Brands, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a financial transaction approval system and
method. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of processing a retail sales transaction, the method
comprising:
processing a plurality of items for purchase using a point-
of-sale terminal that is part of a transaction approval system at a
point of sale in a retail store, wherein:
processing the plurality of items for purchase
includes using the transaction approval system to determine
associated price information for each item included in the
plurality of items for purchase based on identifiers associated
with the plurality of items for purchase,
processing the plurality of items for purchase begins
when information regarding an identifier of a first one of the
plurality of items for purchase is entered into the point-of-sale
terminal, and
processing the plurality of items for purchase ends
when information regarding the identifiers associated with the
plurality of items for purchase has been entered into the point-of-
sale terminal and all the associated price information for each
item included in the plurality of items for purchase has been
determined;
after processing the plurality of items for purchase begins
and before processing the plurality of items for purchase ends,
providing an offer, via the transaction approval system, to
electronically receive from a consumer at least one of an
identification of a financial account that will be used by the
consumer to pay for the plurality of items for purchase and
approval from the consumer to charge the total cost to the
financial account;
after processing the plurality of items for purchase ends,
determining the total cost of the plurality of items for purchase
using the point-of-sale terminal; and
if the consumer did not provide one or more of
identification of the financial account and approval to charge to
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the financial account in response to the offer before the total cost
is determined, then, after determining the total cost of the
plurality of items for purchase, using the transaction approval
system to electronically prompt the consumer for and to
electronically receive from the consumer at least one of the
identification of the financial account that will be used by the
consumer to pay for the plurality of items for purchase and
approval from the consumer to charge the total cost to the
financial account.
REJECTIONS
The Examiner rejects claims 1–10 and 12–21 under 35 U.S.C. § 101
as directed to ineligible subject matter.
The Examiner rejects claims 1–10 and 12–21 under
35 U.S.C. § 103(a) as unpatentable over Millikan (US 2002/0170782 A1,
published Nov. 21, 2002) and “D.C. AREA SAFEWAY STORES LOOK
FOR INCREASE IN SALES VOLUME AND REVENUE WITH CARDS,”
Card News, Vol. 6, No. 25, Dec. 30, 1991 (“Card News”).
OPINION
Rejection under 35 U.S.C. § 101
Principles of Law
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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
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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
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 (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; 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 Supreme Court also indicated that a claim “seeking patent
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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. (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
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
The PTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the Guidance, 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
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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.
Claims 1–5, 7–10, and 12–21
The Examiner determines the claims are “directed to a system and
method for financial transaction approval.” Final Act. 6; see also Answer 4
(“directed to methods and systems processing a retail sales transaction
further comprising prompting for and receiving identification of a financial
account and/or approval information from a consumer” and “the collection
of information to generate a request for proposal and a subsequent response
to a request for proposal, to facilitate shopping for a service provider using a
graphic user interface over a network”). The Examiner finds the
“transaction approval system” and “point of sale terminal,” are “routine,
conventional, and well-understood” computer elements, that that “the
generically-recited computer elements (e.g., the elements that can potentially
include ‘significantly more’ than the underlying abstract idea) perform
functions that would be routine, conventional, and well-understood to one of
ordinary skill in the computer art.” Final Act. 8–9. In addition, the
Examiner identifies four limitations of claim 1 that are “considered to be at
least a part of the abstract idea.” Id. at 6.
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The Appellant argues claim 1 on behalf of all pending claims, except
claim 6. Appeal Br. 16. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The claim “relates to a method of processing a retail sales transaction
including processing a plurality of items for purchase,” “providing an offer,
via the transaction approval system, to electronically receive from a
consumer at least one of an identification of a financial account that will be
used by the consumer to pay for the plurality of items for purchase and
approval from the consumer to charge the total cost to the financial
account,” and “determining the total cost of the plurality of items.” Spec. ¶
3. In other words, the claim gathers price information for items being
purchased, totals the prices, and asks for payment information. The
Appellant suggests the claim is directed to “conduc[t]ing a point of sale
transaction.” Appeal Br. 20.
Claim 1 recites “processing a plurality of items for purchase,” which
limitation itself includes three “processing” limitations, which recite that the
method operates “to determine associated price information for each item,”
starting with the first item and ending with the last item. The Specification
does not describe how price information for each item is “determined,” but
describes that “the product codes of the purchases are entered into point-of-
sale terminal.” Spec. ¶ 18 (cited at Appeal Br. 6). This is essentially a data-
gathering step that looks up the price of each scanned item using the entered
product code.
Between the first and last item scanned, the claimed method recites
“providing an offer, via the transaction approval system, to electronically
receive from a consumer at least one of an identification of a financial
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account that will be used by the consumer to pay for the plurality of items
for purchase and approval from the consumer to charge the total cost to the
financial account.” The Specification describes that this step operates by
“display[ing] a message giving the consumer an option to initiate the
financial transaction.” Spec. ¶ 19 (cited at Appeal Br. 6). This is a request
to gather information by displaying a message.
After scanning is complete, the method determines the “total cost” of
the items scanned for purchase. How the total cost is determined is not
described in the Specification, but we assume it involves a mathematical
summation of looked-up prices. See Spec. ¶ 24 (cited at Appeal Br. 7).
Applying Prong One of Revised Step 2A of the Guidance, claim 1
gathers information, totals a cost, and seeks information to complete a
purchase transaction. As such, claim 1 recites the judicial exception of the
fundamental economic practice of processing a retail transaction, which is a
method of organizing human activity. Guidance at 52; see also MPEP
§§ 2106.04(a)(2)(I)(A), 2106.04(a)(2)(II)(A–B).
Under Prong Two of Revised Step 2A of the Guidance, we evaluate
whether the judicial exception is integrated into a practical application.
Guidance at 54. This step involves “[i]dentifying whether there are any
additional elements recited in the claim beyond the judicial exception(s),”
and “evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.”
Id. at 54–55.
Claim 1 recites a first “processing” limitation, including three
“processing” sub-limitations, which amount to no more than data gathering,
and which do not receive patentable weight in the analysis, because they
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involve only “insignificant extra-solution activity.” Id. at 55; see also MPEP
§ 2106.05(g). Claim 1 next recites a limitation for “providing an offer, via
the transaction approval system, to electronically receive from a consumer at
least one of an identification of a financial account,” either “after processing
the plurality of items for purchase begins and before processing the plurality
of items for purchase ends,” or “after determining the total cost of the
plurality of items for purchase” (if the consumer did not provide one or more
of identification of the financial account and approval before the total cost is
determined). As we noted above, these steps involve displaying a message.
The remaining step in the method is “determining the total cost of the
plurality of items for purchase using the point-of-sale terminal.”
In examining claim 1 for “additional elements” beyond the abstract
idea of gathering information, totaling a cost, and seeking information to
complete a purchase transaction, (excluding the portions of the claim that are
insignificant extra-solution activity), we are left with only two additional
elements: “using a point-of-sale terminal,” and “using the transaction
approval system.” This is consistent with the Examiner’s findings. See
Final Act. 8–9. In claim 1, the “transaction approval system” requests
financial information and approval from the customer by displaying a
message. The “point-of-sale terminal” determines a total cost.
These additional elements do not improve the underlying computers
through the acts of displaying messages and calculating totals, because any
computer can be used to display messages, or compute numeric totals. See
Spec. ¶¶ 12–14. In addition, the method is directed to “approving and
confirming financial card transactions” (id. ¶ 11), and as such the claimed
method does not improve another technology. MPEP § 2106.05(a); see also
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Guidance at 54. Because a particular computer is not required, the claim
also does not define or rely on a “particular machine.” MPEP § 2106.05(b).
Further, the method does not transform matter. Id. § 2106.05(c). Instead,
the claim gathers information, totals a cost, and seeks approval to complete a
retail purchase transaction. As such, the method has no other meaningful
limitations (id. § 2106.05(e)), and thus merely recites instructions to execute
the abstract idea on a computer (id. § 2106.05(f)).
Thus, under Prong Two, the method does not integrate the judicial
exception into a “practical application.” As such, claim 1 is directed to an
abstract idea.
Proceeding to Step 2B of the Guidance, we evaluate whether the claim
provides an inventive concept. Guidance at 56. We “evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).” Id.
The additional elements, of a “point-of-sale terminal” that totals
numeric values, and a “transaction approval system” that displays messages,
perform operations that any conventional computer system can accomplish.
See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can
be achieved by any general purpose computer without special
programming.”).
Therefore, we conclude that claim 1 recites an abstract idea and does
not provide an inventive concept.
Appellant’s Arguments as to Claims 1–5, 7–10, and 12–21
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Citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), the Appellant argues claim 1 is “drawn to ‘a specific implementation
of a solution,’ that is the specifically ordered method steps identified in
claim 1, ‘to a problem,’ that is the speed at which a retail sales transaction is
performed ‘using a point-of-sale terminal that is part of a transaction
approval system at a point of sale in a retail store.’” Appeal Br. 19.
We are unpersuaded by the Appellant’s argument. Unlike the claims
here, the claims in Enfish recited a “specific improvement to the way
computers operate,” i.e., an improved database configuration that permitted
faster and more efficient searching. Enfish, 822 F.3d at 1330-33, 1336. The
Federal Circuit has explained that the claims in Enfish “did more than allow
computers to perform familiar tasks with greater speed and efficiency” and
“actually permitted users to launch and construct databases in a new way.”
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018).
The Federal Circuit has also explained that the claims in Enfish “focused on
an improvement to computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity.” Secured Mail
Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017).
In contrast, here, prompting a consumer for financial account
information and approval, while items are being processed, may improve the
business process involved, but does not have an effect on the manner, or
speed, with which the “system” displays information or the “terminal”
calculates numeric totals.
We are not persuaded by the Appellant’s argument that “the specific
transaction approval system recited therein [is] not a generic computer.”
Appeal Br. 19.
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All one is able to discern about the “transaction approval system,”
recited in claim 1, is that it is a “system.” The Specification is of little help
in understanding the bounds of this claim term, because it merely describes
one example embodiment: “Figure 1 illustrates one embodiment of a
transaction approval system 10 including a cash register or point-of-sale
terminal 12, a financial transaction terminal 14, and a stylus 16.” Spec. ¶ 12.
Even if we were to import this example into the claim language, it means,
for example, that the claimed method could be performed entirely on a
point-of-sale terminal, since it may be a component of the “transaction
approval system.” All one can discern from the Specification about the
claimed “point-of-sale terminal” is that it “includes a keyboard 30, a
scanner 32, a monitor 34, and a printer 36,” and alternatively, “includes a
radio frequency identification (RFID) device.” Id. ¶ 14. These exemplary
descriptions in the Specification do not define the devices beyond attributes
that they share with a general-purpose computer.
The Appellant argues claim 1 is not an abstract idea because it “does
not seek to ‘tie-up’ the entire abstract idea.” Appeal Br. 21; see also id.
at 23–24. We are unpersuaded, because, “[w]hile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” 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) (“[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.”). And, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
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this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
We are also unpersuaded by the Appellant’s arguments that the
“offer” and “prompt” portions of claim 1 each “takes the claim scope
significantly beyond the identified abstract ideas,” basically because they
“differ from general prior art or any abstract idea therein as well as from any
prior art cited.” Appeal Br. 22–23. Even unconventional abstract ideas are
still unpatentable. See SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016,
1018 (Fed. Cir. 2018). “What is needed is an inventive concept in the non-
abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018). The cited portions of the claim are part of the
abstract idea of gathering information, totaling a cost, and seeking approval
to complete a purchase transaction, which are part of a commercial
transaction, and thus an abstract method of organizing human activity. In
other words, the “specifically recited details [that] take claim 1 well beyond
any general abstract idea,” according to the Appellant (Appeal Br. 23–24)
are part of the abstract idea itself.
The Appellant has thus not demonstrated error in the Examiner’s
rejection of claim 1. For this reason, we sustain the rejection of 1–5, 7–10,
and 12–21 under 35 U.S.C. § 101.
Claim 6
The Appellant argues:
claim 6 recites additional particulars of the transaction approval
system stating that the transaction approval system includes “a
financial transaction terminal in electrical communication with
the point-of-sale terminal” and having “a financial transaction
terminal display facing in a different direction than a point-of-
sale terminal display” (Appendix X, p. 43, 1. 6–9). This
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additional recitation of the specific hardware used to perform the
claimed method take claim 6 beyond any general abstract idea,
with even more claim particulars being drawn to use or the
specifically recited hardware.
Appeal Br. 25. The Appellant further asserts that using the “financial
transaction terminal” to display the claimed “offer” and “prompt,” while
“simultaneously visually indicating” additional information, adds
“significantly more” than the identified abstract idea of claim 1. Id. at 25–
26.
We are unpersuaded by the Appellant’s arguments.
The Specification describes that “Financial transaction terminal 14 is
a financial transaction card reader in communication with at least one
financial institution network.” Spec. ¶ 15. Also, “Financial transaction
terminal 14 additionally includes a user interface, monitor, or touch
screen 48 on a top surface 45 of financial transaction terminal 14.” Id. ¶ 17.
The Appellant’s argument is essentially that, because messages are
displayed on a “card reader” device with display, connected to a network,
the act of gathering information, totaling a cost, and seeking approval to
complete a purchase transaction is not an abstract commercial transaction.
In the context of claim 6, merely displaying messages on a device,
capable of receiving input via a “card reader,” is not significantly more than
the abstract idea. The communicating of this information, for example,
could be communicated verbally by a human speaking, or through posted
signs. See Credit Acceptance, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our
prior cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.”); see also Bancorp Services, L.L.C. v. Sun Life Assurance Co.
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of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
“employed only for its most basic function . . . does not impose meaningful
limits on the scope of those claims.”). The Appellant’s identified
improvements are improvements to the abstract idea, not improvements to a
technology or computer functionality.
For these reasons, we sustain the rejection of claim 6 under
35 U.S.C. § 101.

Rejection under 35 U.S.C. § 103(a)
The method concludes with a conditional step, which depends on “if
the consumer did not provide one or more of identification of the financial
account and approval.” In the condition that the consumer did not provide
the information requested in the displayed message, the system “prompt[s]”
the consumer for the same information. In the condition that the consumer
did provide the identification and approval, the last recited step is not
performed.
Conditional steps employed in a method claim need not be found in
the prior art if, under the broadest reasonable construction, the method need
not invoke the steps. Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792, at *3-6 (PTAB April 28, 2016) (concluding the broadest
reasonable interpretation of a claim encompassed situations in which
conditional method steps “need not be reached”) (precedential). The final-
recited step involves displaying a message to ask to gather information,
similar to the corresponding step during processing of items. Spec. ¶ 28.

Independent Claim 1 and Dependent Claims 2–5, 12, 13, and 21
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The Appellant argues:
Millikan teaches away from “providing an offer . . . to
electronically receive from a consumer at least one of an
identification of a financial account . . . and approval from the
consumer to charge the total cost to the financial account” “after
processing the plurality of items for purchase begins and before
processing the plurality of items for purchase ends” . . . as it
would unnecessarily interrupt the consumer’s processing of the
items for purchase (i.e., it would cause the consumer to stop
processing the plurality of items for purchase to address the offer
and then return to processing the plurality of items for purchase),
thereby, delaying or undesirably lengthening the checkout
process, which is against the very purpose of Millikan to save
checkout time.
Appeal Br. 30.
We are unpersuaded by the argument, because we discern no
discussion in Millikan that discourages asking for a payment account while
processing items. Appellant has not identified where Millikan actually
criticizes, discredits, or otherwise discourages the Appellant’s argued
limitations. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.”) (citing Fulton).
The Appellant’s contention that interrupting scanning would cause
“delaying or undesirably lengthening the checkout process” is merely
attorney argument, without supporting evidence. In this regard, a consumer
could conclude that interrupting the processing of items could lead to an
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overall shorter checkout process, if it saves processing time after processing,
because the system had more time to process the payment information.
For the same reasons, we are unpersuaded by the Appellant’s
argument, directed to Card News, that “a method step for providing a card
during item processing in a clerk-assisted checkout does not lend itself to
inclusion in the self-checkout method of Millikan since, as described above,
it would undesirably delay the process of Millikan.” Appeal Br. 30.
We are also unpersuaded by the Appellant’s argument that the
combination of Millikan and Card News “fails to teach an additional second
such option/prompt as recited in claim 1” (the last limitation which begins
with “if”). Appeal Br. 31–32. The argument fails because it is directed to a
conditional step for which the Examiner, under the broadest reasonable
construction, is not required to demonstrate is disclosed or suggested in the
art. See Ex parte Schulhauser, 2016 WL 6277792 at *3-6.
For these reasons, we sustain the rejection of claims 1–5, 12, 13,
and 21 as obvious.

Dependent Claim 6
Claim 6 recites, in part, “the financial transaction terminal having a
financial transaction terminal display facing in a different direction than a
point-of-sale terminal display of the point-of-sale terminal.”
The Examiner finds this limitation is disclosed at paragraphs 48 and
51 of Millikan. Final Act. 12.
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The Appellant argues the “combination of references cited in the
rejection of claim 6 fails to teach” the display-facing feature of claim 6.
Appeal Br. 33.
Although Millikan discloses that the “particular form of the
security/assistance pole 40 is readily adaptable to the particular
configuration of the self-checkout stations 1, the convenience store’s floor
plan, and logistical common sense” (Millikan ¶ 48), we do not discern in the
cited paragraphs any statement about the direction a display faces. The
Examiner does not respond to this argument. See Answer 5–7.
We thus agree with the Appellant, because the Examiner has not
demonstrated that the claim language is disclosed in, or suggested by, the
cited prior art. For this reason, we do not sustain the obviousness rejection
of claim 6.
Independent Claim 14 and Dependent Claims 16–18
The Appellant advances arguments that are essentially the same as the
arguments raised in claim 1, as to alleged teaching away, and failure to
disclose all the conditional steps. Appeal Br. 35–36. We find them
unpersuasive for the same reasons as for claim 1. Therefore, we sustain the
rejection of claims 14 and 16–18 as obvious.
Dependent Claim 15
Claim 15 recites:
wherein presenting the consumer the opportunity to provide the
final approval to charge the total price for all of the plurality of
goods to the financial account is preformed simultaneously with
using the financial transaction terminal to visually indicate to the
consumer that the total price has not yet been determined.
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Claim 15 thus displays information at the same time it displays a
message asking for final approval. The information displayed is recited as
being “that the total price has not yet been determined.” This information
has no effect on the claimed process, however, and as such is essentially
printed matter, merely displayed for the consumer. Our reviewing court has
held that nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art. In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). King
Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he
relevant question is whether ‘there exists any new and unobvious functional
relationship between the printed matter and the substrate.’”) (citations
omitted). We thus construe the claim to mean simultaneously displaying
two different instances of data.
The Appellant argues Millikan fails to disclose “‘simultaneously’
presenting the consumer the opportunity to provide the final approval to
charge the total price while visually indicating ‘to the consumer that the total
price has not yet been determined’ as recited.” Appeal Br. 37.
The Examiner cites paragraphs 43, 50, and 51 of Millikan, which
describe “touch screen display 12.” However, the ability to display
information simultaneously with this display is better demonstrated at
paragraphs 68–69. Millikan discloses “touch screen display 12 may then
displays a series of prompts,” and “may display a virtual ‘help key’ 51 . . .
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the touch screen display 12 displays the help key 51 during some or all of
the various stages of the checkout process.” Millikan ¶¶ 68–69.
We thus sustain the rejection of claim 15 as obvious.

Independent Claim 19
The Appellant’s arguments, related to disclosing both opportunities to
provide a final approval, and simultaneous display of information,
essentially repeat the arguments directed to claims 1 and 15. Appeal Br. 37–
38. We find them unpersuasive for the same reasons as claims 1 and 15.
Therefore, we sustain the rejection of claim 19 as obvious.

Dependent Claim 20
Claim 20 recites language substantially identical to that of dependent
claim 15, and the arguments advanced essentially repeat the arguments of
claim 15. Appeal Br. 38–39. We are unpersuaded, for the same reasons as
for claim 15. Therefore, we sustain the rejection of claim 20 as obvious.

CONCLUSION
The Examiner’s decision to reject claims 1–10 and 12–21 is
AFFIRMED.
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21
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–21 101 Eligibility 1–10, 12–21
1–10, 12–21 103(a) Millikan, Card
News
1–5, 7–10,
12–21
6
Overall
Outcome
1–10, 12–21

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.
§ 1.136(a)(1)(iv).
AFFIRMED