Ex Parte Blair et al

Patent Trial and Appeal Board

Apr 16, 2018

10225410 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/225,410 08/20/2002
20350 7590 04/18/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Paul A. Blair
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
90945-647781 (003400US) 3266
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL A. BLAIR, KENNETH ALGIENE,
and MARK THOMPSON
Appeal2016-004770 1
Application 10/225,4102
Technology Center 3600
Before JEFFREY B. ROBERTSON, DANIELS. SONG, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 22-24, 26-30, and 32. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed
August 21, 2015) and the Examiner's Answer ("Ans.," mailed February
15, 2016), and Final Office Action ("Final Act.," mailed March 3, 2015).
2 Appellants identify "The W estem Union Company" as the real party in
interest (Br. 2).
Appeal2016-004770
Application 10/225,410
CLAIMED INVENTION
Appellants' claims "relate[] generally to financial transactions" (Spec.
i-f 2), and more particularly, "to systems and methods for sending and
receiving value using unmanned financial transaction kiosks" (id.).
Claims 24, 29, and 32 are the independent claims on appeal. Claim
32, reproduced below, is illustrative of the subject matter on appeal:
32. A method for receiving funds at a multi-purpose
kiosk, the method comprising:
(1) initiating, via the multi-purpose kiosk, a transaction
with a customer, wherein the multi-purpose kiosk comprises: a
communication arrangement comprising a speaker and a
microphone, configured to provide two-way communication
between a customer and a customer service representative, via a
communications network; and a value dispenser configured to
dispense value to the customer;
(2) receiving, by the multi-purpose kiosk, from the
customer, an indication that the customer is conducting a receive
funds operation to receive a value;
(3) placing, by the multi-purpose kiosk, the customer in
communication with the customer service representative via the
communication arrangement of the multipurpose kiosk;
( 4) providing, via the multi-purpose kiosk, by the
customer, information that identifies the customer to the
customer service representative;
( 5) providing, from the customer service representative via
the multi-purpose kiosk, to the user, a receiver personal identifier
number (PIN);
( 6) receiving, by a means for entering account information
of the multi-purpose kiosk, the receiver PIN from the customer;
(7) determining whether the customer has provided the
PIN·
'
(8) determining whether the value includes a coinage
amount;
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(9) when the value does not include a coinage amount
dispensing the value to the customer in paper currency;
( 10) based on a determination that the value does include
a coinage amount, and if the value dispenser is capable of
dispensing coinage:
(a) dispensing a first portion of the value to the
customer in paper currency; and
(b) dispensing a second portion of the value to the
customer in coinage; and
( 11) based on a determination that the value does include
a coinage amount, and if the value dispenser is not capable of
dispensing coinage:
(a) dispensing the first portion of the value to the
customer in paper currency;
(b) causing a plurality of options to be presented to
the customer on a display screen of the multi-purpose
kiosk, the plurality of options including:
(i) donating the coinage amount to a charity;
and
(ii) receiving a financial instrument for the
coinage amount;
( c) receiving a selection from the customer of one
of the plurality of options; and
( d) transferring the second portion of the value in
accordance with the selection from the customer.
REJECTION
Claims 22-24, 26-30, and 32 are rejected as being directed to patent
ineligible subject matter under the judicial exception to 35 U.S.C. § 101.
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ANALYSIS
Judicially excepted subject matter
Appellants argue independent claims 24, 29, and 32 as a group. See
Br. 6-8. We select independent claim 32 as representative. Claims 24 and
29 stand or fall with independent claim 32. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting independent claim 32 as being directed to judicially
excepted subject matter, the Examiner determines that the claim, considered
as a whole, is "directed towards the abstract idea of sending and receiving
value using unmanned financial transaction kiosks" (Final Act. 4; see also
Ans. 2). More particularly, the Examiner finds "[ s ]ending and receiving
value is a fundamental economic practice and a method of organizing human
activity by providing an opportunity for parties to enter into a specified
transaction" (Final Act. 4). The Examiner further finds independent claim
32 does not amount to significantly more than an abstract idea because
"[t ]he limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry" (id.; see also Ans. 2-3).
Appellants do not dispute the Examiner's determination that the
claims are directed to an abstract idea (see Br. 6-8). Instead, Appellants
argue that the claims are directed to patent-eligible subject matter "at least
because significantly more than the alleged abstract idea is present in these
claims" (id. at 6).
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted§ 101
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to include an implicit exception: "laws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In determining whether independent claim 32 falls within the
excluded category of abstract ideas, we are guided in our analysis by the
Supreme Court's two-step framework, described in Mayo and Alice. Id. at
2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296-97 (2012)). In accordance with that framework, we first must
determine whether the claim is "directed to" a patent-ineligible abstract idea.
If so, we then consider the elements of the claim - both individually and as
an ordered combination - to assess whether the additional elements
transform the nature of the claim into a patent-eligible application of the
abstract idea. Id. This is a search for an "inventive concept" - an element
or combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
Here, we agree with the Examiner that claim 3 2 is directed to
"sending and receiving value using unmanned financial transaction kiosks"
(Final Act. 4). We also agree with the Examiner that independent claim 32
is directed to a fundamental economic practice and method of organizing
human activity, which is similar to other claims our reviewing courts have
deemed abstract, such as Alice, 134 S. Ct. at 2356 (using a third party to
mitigate settlement risk), buySAFE, Inc. v. Google, Inc., 765 F. 3d 1350,
1355 (Fed. Cir. 2014) (guaranteeing transactions), CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (verifying
the validity of credit card transactions over the Internet), and Smart Systems
Innovation, Inc. v. Chicago Transit Authority, 873 F.3d 1364, 1371-72 (Fed.
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Cir. 2017) (forming and collecting data for financial transactions in a certain
field).
Turning to the second step of the framework, we find unpersuasive
Appellants' arguments "that [independent] claims 24, 29, and 32 include
'significantly more' than an abstract idea to which the claims are allegedly
directed" (see Br. 6-8).
Appellants first argue that the claims include "significantly more"
than an abstract idea because "[ e Jach of the claims improves at least three
other technical fields beyond sending and receiving value using unmanned
financial transaction kiosks (the alleged abstract idea): personal finance
management, security and cost reduction of financial institution procedures,
and improved charitable organization acquisitioning of funds" (id. at 6).
However, we agree with the Examiner that "the claims do not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment" (Final Act. 4). In this regard, we note that there is a
fundamental difference between computer functionality improvements, on
the one hand, and uses of existing computers as tools to perform a particular
task, on the other. Here, the alleged improvements that Appellants refer to,
e.g., "allowing a sender in a financial transaction to use different automated
transfer mechanisms based on their present needs or desires" (Br. 7),
"gain[ing] greater security in being able to automate methods and security
during such transactions" (id.), creating charitable donation opportunities
(id.), do not concern an improvement to computer capabilities, but instead
relate to improvements in marketing and customer service, that simply
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instructs the practitioner to implement the abstract idea on a generic
computer.
There is no inventive concept or technological advance here that
would support patent eligibility. Claim 32 is not focused on an improvement
to any of the components of the claimed "multi-purpose kiosk." Cf In re
TL! Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir.
2016) (The claims' focus "was not on an improved telephone unit or an
improved server."). And merely limiting the scope of the claims to a
particular technological environment or application, without more, does not
change the outcome. Alice, 134 S. Ct. at 2358.
Appellants next argue that the claims include "significantly more"
than an abstract idea because "[p]articular, non-generic, machines/computers
are necessary to implement the systems and methods of the claims" (Br. 7).
More particularly, Appellants argue that "unmanned kiosks are not off-the-
shelf computers," but instead, "and are highly customized equipment that
would need to be built to specification to properly implement the systems
and methods of these claims" (Br. 7-8). However, as the Examiner points
out, "the kiosk is recited at a high level of generality to simply perform the
generic transaction-kiosk functions of receiving, processing[,] and
transmitting information." (Ans. 3). There is no indication in the record that
any specialized computer hardware or other "inventive" computer
components are required by the "multi-purpose kiosk" of independent claim
32. To the contrary, Appellants' Specification discloses that "[a] computing
device, such as a central processor 101, controls many of the functions of the
kiosk" (Spec. i-f 29). Thus, independent claim 32 merely employs generic
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computer components to perform generic computer functions, which is not
enough to transform an abstract idea into a patent-eligible invention.
Also, considered as an ordered combination, we are unclear as to how
the claimed "multi-purpose kiosk" adds anything that is not already present
when the steps of the method are considered separately. Here, Appellants
argue "processing interactions with consumers so as to provide them with
the described options and receive their choices" and "handl[ing] a large bulk
of transactions unable to be handled by human operators during peak
financial transaction times" (Br. 7) establish that "[p]articular, non-generic,
machines/computers are necessary to implement the systems and methods of
the claims" (id.). However, Appellants do not adequately show how the
claimed steps are technically done such that they are not routine,
conventional functions of a generic computer. See Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
("Rather, the 'interactive interface' simply describes a generic web server
with attendant software, tasked with providing web pages to and
communicating with the user's computer."). Appellants have not established
that the claimed invention relates to a software-based invention that
improves the performance of the computer system itself. And it is well-
settled that "merely recit[ing] the abstract idea ... with the requirement to
perform it on a set of generic computer components ... would not contain
an inventive concept." See BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
We last are not persuaded by Appellants' argument that because the
"claims do not stand rejected under§ 102 or§ 103," the claims cannot be
"labeled a fundamental economic practice," and thus, something
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"significantly more than the alleged abstract idea is present in the claim"
(Br. 8). To the extent that Appellants argue that independent claim 32
necessarily contains an "inventive concept" because Appellants' claims
recite particular features which they alleged are not disclosed in the prior art
(id.), Appellants misapprehend the controlling precedent. Although the
second step in the Alice/ Mayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 32 and independent claims 24 and 29,
which fall with independent claim 32.
Appellants also address dependent claims 22, 23, 26-28, and 30
separately (see Br. 9). Appellants state "the Office Action makes no effort
to analyze these claims and state any grounds for why the recitations of these
claims do not amount to significantly more than the alleged abstract idea"
(id.).
Appellants' argument is not persuasive at least because Appellants
offer no arguments in support of the patent eligibility of the dependent
claims. As we find, however, that dependent claims 22, 23, 26-28, and 30
merely describe further characteristics of the underlying concept and lack
additional elements that would render the claims patent-eligible, we also
sustain the rejection of these dependent claims on the same basis as the
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independent claims from which they depend. In particular, the dependent
claims merely recite variations of presenting or receiving information related
to the abstract idea, which we discern sits squarely within, and does not alter
appreciably, the broader concept of "sending and receiving value using
unmanned financial transaction kiosks" (cf Ans. 2-3).
DECISION
The Examiner's rejection of claims 22-24, 26-30, and 32 under 35
U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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