Ex Parte Borucki

Patent Trials and Appeals Board

Jan 31, 2019

12924841 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/924,841
107681 7590
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
10/06/2010
02/04/2019
FIRST NAMED INVENTOR
Robert Thomas Borucki
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.
10-415 (1592.141US1) 4334
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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 ROBERT THOMAS BORUCKI
Appeal 2018-001010
Application 12/924,841
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 11, 12, 16, and 17. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appeal Brief identifies NCR Corporation as the real party in interest
(App. Br. 2).
2 Claims 18-20 have been allowed, and claims 1-10 and 13-15 have been
cancelled (Final Act. 1; After-Final Arndt. 2, 3 (dated Feb. 14, 2017); and
Adv. Act. 1-2 (dated Feb. 28, 2017)).
Appeal 2018-001010
Application 12/924,841
STATEMENT OF THE CASE
Appellant's invention is directed to a method "for automated
profile-based transaction processing with an enterprise" by establishing one
or more cloud-based transaction profiles defining a customer's options and
settings for completing transactions with the enterprise (Spec. ,r,r 4--5).
When the customer accesses a self-service device of the enterprise to
perform a transaction, "the cloud-based service is automatically contacted
and the transaction is automatically completed on behalf of the customer at
the self-service device using a particular one of the customer's transaction
profiles" (Abstract).
Independent claim 11, reproduced below, is exemplary of the subject
matter on appeal.
11. A processor-implemented method programmed in
a non-transitory processor-readable medium and to execute on
one or more processors configured to execute the method,
compnsmg:
identifying a customer interacting with a self-service
device via a customer identifier;
requesting, via a network, a transaction profile for a
transaction commencing with the customer on the self-service
device, the transaction profile requested of a cloud-transaction
processing service located remotely over the network, the
customer identifier also supplied to the cloud-transaction
processing service, wherein requesting further includes
providing an interface type to the cloud-transaction processing
service, the customer identifier and the interface type used by
the cloud-transaction processing service to locate the
transaction profile;
receiving the transaction profile from the cloud-
transaction processing service, wherein receiving further
includes acquiring the transaction profile from the cloud-
transaction processing service as an executable script; and
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Application 12/924,841
automatically completing the transaction on the self-
service device for the customer by processing settings and
options defined as preferences within the transaction profile and
at least some of the preferences providing information for
automatically answering-questions on behalf of the customer
that are being asked by a cloud interface for the cloud-
transaction processing service during the transaction that the
customer is engaged in at the self-service device, and wherein
automatically completing the transaction further includes
processing the transaction profile as multiple profiles arranged
hierarchically with at least one of the multiple profiles
providing a global profile processed to partially populate values
for the transaction defined in other ones of the multiple profiles,
wherein automatically completing further includes executing
the executable script to interact with an interface of the self-
service device, the script when executed providing the settings
and the options to the interface to automatically complete the
transaction on behalf of the customer.
REJECTION
The Examiner rejected claims 11, 12, 16, and 17 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
ANALYSIS
In rejecting claims 11, 12, 16, and 17 under 35 U.S.C. § 101, the
Examiner determines the claims "are directed to the abstract idea of
executing a transaction profile, which [is] ... a method of organizing human
activities" (Final Act. 4). The Examiner also finds the claims do not recite
significantly more than the abstract idea because "[t]here is no indication
that the [ claimed] combination of elements improves the functioning of a
computer or improves any other technology" (Final Act. 4--5).
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Application 12/924,841
Appellant argues claims 11, 12, 16, and 1 7 are not directed to the
abstract idea asserted by the Examiner, but rather to an improved
technological process for self-service device transaction processing (Reply
Br. 2-3; App. Br. 12-13). Appellant asserts claim 11 recites
"unconventional processing steps that confine the claim to a particular useful
application" that improves the transactional capabilities of self-service
devices (App. Br. 10; Reply Br. 2).
To determine whether subject matter is patentable under§ 101, the
Supreme Court has set forth a two part test "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts" (Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)). The first step in that analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts," such as an abstract idea (id.). The Court
acknowledged in Mayo that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas" (Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012)). We, therefore, look to whether the claims focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that is the abstract idea and merely invoke
generic processes and machinery (see Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016)). If the claims are not directed to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
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Application 12/924,841
elements 'transform the nature of the claim' into a patent-eligible
application" (Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78)).
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings: (I) mathematical concepts; (2) mental processes;
and (3) certain methods of organizing human activity, such as a fundamental
economic practice and commercial interactions (including sales activities
and behaviors, and business relations). See 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019 ("PTO
§ 101 Memorandum")), effective January 7, 2019.
The PTO § 101 Memorandum further instructs "[ c ]laims that do not
recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas," except in rare
circumstances (see PTO§ 101 Memorandum, 84 Fed. Reg. at 53). Even if
the claims recite any one of these three groupings of abstract ideas, these
claims are still not "directed to" a judicial exception (abstract idea), and,
thus, are patent-eligible "if the claim as a whole integrates the recited
judicial exception into a practical application of that Liudicial] exception"
(id.). "[I]ntegration into a practical application" requires an additional
element or a combination of additional elements in the claim to apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the exception (see PTO § 101 Memorandum, 84
Fed. Reg. at 53-55; see also MANUAL OF PATENT EXAMINING PROCEDURE
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Application 12/924,841
(MPEP) § 2106.0S(a}-(c) and (e) (9th Ed., Rev. 08.2017, Jan. 2018)
(limitations indicative of "integration into a practical application") and
MPEP § 2106.05(f)-----(h) (limitations not indicative of "integration into a
practical application")).
Having reviewed the evidence, we agree with the Examiner only in
part. Particularly, we agree with the Examiner independent claim 11 as a
whole recites a judicial exception of a method of organizing human activity
by facilitating sales and other commercial transactions at self-service
devices (e.g., drive-through and airline check-in kiosks) (see Spec. ,r,r 1--4;
Title). Thus, claim 11 recites subject matter that falls within the three types
of abstract ideas identified by the PTO § 101 Memorandum.
Under the PTO § 101 Memorandum guidance, however, we disagree
with the Examiner's finding that the claims are directed to the abstract idea
(see Final Act. 4 ). Rather, we agree with Appellant the claims integrate the
judicial exception (abstract idea) into a practical application (App. Br. 10,
12; Reply Br. 2). Particularly, claim 11 recites a combination of additional
elements including requesting and receiving a client's transaction profile
from a cloud-transaction processing service, and automatically completing
the client's transaction on the self-service device/kiosk by executing the
profile's executable script on the self-service device. The claim's additional
elements integrate the method of organizing human activity into a practical
application.
Our conclusion is supported by claim 11 and Appellant's
Specification, which confirm an improved functionality of self-service
devices. The improved functionality is realized by retrieving, from a remote
cloud processing service, over a network, and executing the transaction
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Application 12/924,841
profile on the self-service device in real time, i.e., when the client starts an
interaction with the self-service device. Particularly, Appellant's
Specification describes a "[transaction profile's] script [that] engages an
Application Programming Interface (API) of the self-service device and runs
through its questions and functions providing the appropriate responses
using the settings and options of the [client's] transaction profile" (Spec.
,r 42). The executed transaction profile script "provides the settings and
options to the [ self-service device] interface to automatically complete the
transaction on behalf of the customer" (Spec. ,r 42). Thus, Appellant's claim
11 integrates the performance of commercial transactions into a process
rooted in computer and network technologies. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014) (holding patent-
eligible a claim that "address[ es] a business challenge (retaining website
visitors)" by enabling visitors "to purchase products from the third-party
merchant without actually entering that merchant's website," the claim
providing a "solution ... necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks"). Appellant's technique for automated profile-based transaction
processing obviates a delay and inconvenience of manual self-service tasks
at kiosk interfaces (see Spec. ,r,r 17-18). Thus, Appellant's invention
improves customer experience by reducing the annoyance of having to
manually enter personal information and answer questions for every
interaction with a self-service device (see Spec. ,r,r 3, 17, 44).
Because claim 11 integrates the judicial exception into a practical
application, we find claim 11 and its dependent claims 12, 16, and 17 are not
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Application 12/924,841
directed to a judicial exception (abstract idea) and are patent-eligible under
§ 101. 3
DECISION
The Examiner's decision rejecting claims 11, 12, 16, and 17 under
35 U.S.C. § 101 is reversed.
REVERSED
3 In the event of any further prosecution, the Examiner may want to
consider an obviousness rejection under 35 U.S.C. § I03(a) and perform an
additional prior art search in the art of self-service devices, such as ATMs
(Automatic Teller Machines). For example, it may have been known to the
skilled artisan at the time of Appellant's invention that ATM transactions
could be performed using executable scripts having client-specific
information, the scripts received from a processing device remote from the
ATM. See, for example, Duncan (US 2004/0148337 Al, published July 29,
2004 ), which discloses transaction processing at an ATM having a script
engine 18 executing scripts (see Duncan ,r,r 30, 38 and claim 17) (see
reference attached to this Opinion). A client's ATM banking transaction
(see Duncan ,r,r 38-39) is processed using an executable script with a client's
banking details (i1i123, 38, 39), the script being received from an agent
infrastructure 16 ("Once the message is received from the script engine 18 at
the agent system 16, it is processed and a response is returned to the script
engine 18. This response includes the results data that is needed to provide
the user with the banking information requested" ( emphases omitted), see
,r,r 33, 35, 37, 39). Additionally, "an agent script file" (i-f 31) in the agent
infrastructure 16 "could be provided at a remote location" (i1i131-32).
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