Ex Parte Goldman et al

Patent Trials and Appeals Board

Jun 21, 2019

13848763 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/848,763 03/22/2013
131313 7590 06/25/2019
JPMorgan Chase / Goodwin Procter
901 New York A venue, NW
Washington, DC 20001
FIRST NAMED INVENTOR
Dmitry Goldman
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.
]72167.020217 1809
EXAMINER
LIU,IJUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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):
patentdc@goodwinlaw.com
lrogers@goodwinlaw.com
aalpha-kpetewama@goodwinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DMITRY GOLDMAN,
WALTER GERO,
JOHN HENDERSON,
KENNETH CHANG,
ROBERT BUCKO,
FRANK KIRBY,
ADRIENNE PUTTAGIO,
MEDHAT KAMAL,
and JINLIN DING
Appeal2018-001495
Application 13/848,763 1
Technology Center 3600
Before ANTON W. PETTING, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. (Appeal Br. 2).
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Application 13/848,763
STATEMENT OF THE CASE2
Dmitry Goldman, Walter Gero, John Henderson, Kenneth Chang,
Robert Bucko, Frank Kirby, Adrienne Puttagio, Medhat Kamal, and Jinlin
Ding (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of
claims 12, 15-22, 50, 56-59, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented an automated banking machine that is
dynamically updated from a host system. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 12, which is reproduced below (bracketed matter and some
paragraphing added).
12. A method of
operating an Automated Tell er Machine (ATM) in order
to display customized information on an ATM display,
the customized information including account transaction
options,
the method comprising:
[ 1] storing,
and
in at least one computer memory of the ATM,
business rules and user profiles for ATM users;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed May 22, 2017) and Reply Brief ("Reply Br.," filed November 29,
2017), and the Examiner's Answer ("Ans.," mailed October 2, 2017), and
Final Action ("Final Act.," mailed December 22, 2016).
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[2] accessing the at least one computer memory of the A TM
using at least one computer processor and executing
instructions to perform steps including:
[3] detecting an ATM card associated with a user at the
ATM·
'
[ 4] responsive to the detecting,
sending a message requesting a user profile of the
user associated with the A TM card over the
Internet from a host computing system;
[5] receiving the user profile including account types and
rights associated with the A TM card over the network
from the host computing system over the Internet;
[ 6] storing the received user profile in the computer
memory of the A TM;
[7] retrieving the stored business rules from the computer
memory of the A TM;
[8] customizing information for the user based on the
user profile and the business rules,
and
wherein the customized information includes
account transaction options available to the user
determined by applying the business rules to the
user profile,
wherein the business rules require exclusion of
account transaction options unavailable to the user;
[9] displaying the customized information including the
account transaction options available to the user on the
ATM display and excluding the account transaction
options unavailable to the user.
Claims 12, 15-22, 50, 56-59 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
STEP 12
Claim 12, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, ... then ask, "[ w ]hat else
is there in the claims before us? To answer that question, ...
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept'"-i.e., 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 Corp. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
("Revised Guidance").
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566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions ( a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims "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 judicial exception." Revsised Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 12 recites storing and retrieving rules, detecting a card,
requesting, receiving, and storing a profile, and customizing and displaying
data. Detecting a card is no more than receiving a signal that represents a
card's presence. No further technological details are recited. Customizing
data is the combination of data analysis and modification. Thus, claim 12
recites receiving, analyzing, modifying, and displaying data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 12 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes 6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions or managing personal behavior or relationships or
interactions between people. Like those concepts, claim 12 recites the
concept of editing disseminated content. Specifically, claim 12 recites
operations that would ordinarily take place in advising one to customize
content for dissemination by applying rules and user information. The
advice to customize content for dissemination by applying rules and user
information involves customizing content, which is an economic act, in the
doing so for bank services as claimed, and doing so using rules and
information, which is an act ordinarily performed in the stream of
commerce. For example, claim 12 recites "displaying the customized
information," which is an activity that would take place whenever one is
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Tel. Co. v. Radio Corp.
of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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providing information for banking services as claimed. Similarly, claim 1
recites "customizing information for the user based on the user profile and
the business rules" which is also a characteristic of interacting with
customers.
The Examiner determines the claims to be directed to series of steps
of receive data and store data. Final Act. 4.
The preamble to claim 12 recites that it is a method of operating an
Automated Teller Machine (ATM) in order to display customized
information on an ATM display, the customized information including
account transaction options. The steps in claim 12 result in displaying the
customized information including the account transaction options available
to the user on the ATM display absent any technological mechanism other
than a conventional computer for doing so.
As to the specific limitations, limitation 2 recites a generic processor
executing instructions. Limitations 1, 3-7, and 9 recite insignificant
receiving, storing, and display of user and account data and screen content,
which advise one to apply generic functions to get to these results.
Limitation 8 is the only step associated with actually performing what the
claim produces and recites performing data customization, which is simply
rearranging data. The limitations thus recite advice for customizing content
for dissemination by applying rules and user information. To advocate
customizing content for dissemination by applying rules and user
information is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 2 describes the invention as relating to
an automated banking machine that is dynamically updated from a host
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system. Thus, all this intrinsic evidence shows that claim 12 is directed to
updating content for display within the context of a banking machine, i.e.
editing disseminated content. This is consistent with the Examiner's
determination.
This, in tum, is an example of commercial or legal interactions or
managing personal behavior or relationships or interactions between people
as a certain method of organizing human activity, because dissemination of
content is the primary manner of coordinating activities among businesses
and its members, and editing of such content is the way to particularize the
message within the content. The concept of editing disseminated content as
advised to be done by customizing content for dissemination by applying
rules and user information is an idea of how such editing might occur. The
steps recited in claim 12 are a part of how this idea might occur.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Affinity Labs of Tex., LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (2016) (tailoring content);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (2015) (tailoring content).
From this we conclude that at least to this degree, claim 12 is directed
to editing disseminated content by customizing content for dissemination by
applying rules and user information.
STEP 2A Prong 2
The next issue is whether claim 12 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
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some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[A]pplication[s]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the " 'buildin[g]
block[ s]' " of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted) (alterations in original).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it' " is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea " 'to a particular technological environment.' "
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted) (alterations in original).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 3, and 5-7 are data gathering and
storage steps. Limitations describing the nature of the data do not alter this.
Step 2 is a generic process execution step. Step 4 is insignificant data
transmission. Step 9 is insignificant post solution display activity. Step 8
recites generic computer processing expressed in terms of results desired by
any and all possible means and so present no more than conceptual advice.
All purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellants' claim 12 simply recites the concept of
editing disseminated content by customizing content for dissemination by
applying rules and user information as performed by a generic computer.
This is no more than conceptual advice on the parameters for this concept
and the generic computer processes necessary to process those parameters,
and do not recite any particular implementation.
Claim 12 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 16+ pages of Specification do not bulge
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with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of editing
disseminated content by customizing content for dissemination by applying
rules and user information under different scenarios. They do not describe
any particular improvement in the manner a computer functions. Instead,
claim 12 at issue amounts to nothing significantly more than an instruction
to apply editing disseminated content by customizing content for
dissemination by applying rules and user information using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225-26.
8 The Specification describes generic processors within the context of
banking machines. Spec. para. 50.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. 2019 Guidance at 55.
We conclude that claim 12 is directed to achieving the result of
editing disseminated content by advising one to customizing content for
dissemination by applying rules and user information as distinguished from
a technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions or managing personal behavior
or relationships or interactions between people, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 12 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and displaying data amounts to electronic data query and
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retrieval----one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also 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,' ... those functions can be achieved by any
general purpose computer without special programming"). None of these
activities are used in some unconventional manner nor do any produce some
unexpected result. Appellants do not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, "even
if a process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
and analysis other than abstract." SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellants' claim 12 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-display is equally generic and conventional. See Ultramercial,
772 F.3d at 715 (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
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processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional.
We conclude that claim 12 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 12 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by editing
disseminated content by advising one to customizing content for
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dissemination by applying rules and user information, without significantly
more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-7 and Answer 2-13 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 3--4. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were "directed to a specific improvement to the
way computers operate" rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate and make more accurate the process of customizing
content, our reviewing court has held that speed and accuracy increases
stemming from the ordinary capabilities of a general purpose computer
"do[] not materially alter the patent eligibility of the claimed subject
matter." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims are more
analogous to those in FairWarning, wherein claims reciting "a few
possible rules to analyze the audit log data" were found directed to an
abstract idea because they asked "the same questions (though perhaps
phrased with different words) that humans in analogous situations
detecting fraud have asked for decades." 839 F.3d at 1094, 1095.
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Appellants also attempt to analogize the claims to those involved in
McRO. Reply Br. 4--5. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, "[i]t [ was] the
incorporation of the claimed rules, not the use of the computer, that
improved the existing technolog[y] process,"' because the prior process
performed by humans "was driven by subjective determinations rather
than specific, limited mathematical rules." 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making marketing promotion decisions in a new
environment. Appellants have not argued that the claimed processes of
selecting accounts apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed.
The claims in McRO were not directed ... to "a specific
asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type." We explained that
"the claimed improvement [was] allowing computers to
produce 'accurate and realistic lip synchronization and facial
expressions in animated characters' that previously could only
be produced by human animators." The claimed rules in McRO
transformed a traditionally subjective process performed by
human artists into a mathematically automated process
executed on computers.
FairWarning, 839 F.3d at 1094 (internal citations omitted) (differentiating
the claims at issue from those in McRO).
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We are not persuaded by Appellants' argument that the decision in
Trading Techs. Int 'l, Inc. v. CQG, Inc., 675 F. App'x 1001 (2017) held that
the claim in that case "solve problems of prior graphical user interface
devices ... in the context of computerized trading[] relating to speed,
accuracy, and usability." Reply Br. 5. First, Trading Technologies was non-
precedential. Second, and more critically, the facts in Trading Technologies
are those in which the invention did affect the underlying technology of the
computer in the manner of dynamic user interface run time animation, and
not simply using the computer for generic data reads, analysis, and
transmission. No such underlying technology improvement is present in the
instant claims. More critically, in a related Trading Technologies case, the
interface was held to improve the user and not the computer. "The claims
are focused on providing information to traders in a way that helps them
process information more quickly, not on improving computers or
technology." Trading Techs. Int 'l, Inc. v. !BG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019). The instant claims similarly are focused on providing
information to customers in a way that helps them process information more
quickly, not on improving computers or technology
We are not persuaded by Appellants' argument that
Appellant disputes that the components identified are
generic and further disputes that the steps of detecting a card,
sending a message requesting a user profile, and receiving the
user profile including account types and rights, even in their
overgeneralized form presented by the Examiner, are steps
typically performed by a generic computer.
As previously pointed out, an ATM is a well-known
example of a special purpose computer and it would be
ludicrous to consider an ATM to be a "generic" computer. An
ATM is provided with specialized functionality, such as
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detection capabilities for detecting an ATM card, as well us
printing capabilities, deposit capabilities and other features not
common to "generic" computers. Furthermore, as argued
throughout the prosecution, and as seemingly agreed by the
Examiner due to the withdrawal of art rejections, the steps
claimed are not currently known and thus are not typically
performed.
Reply Br. 7. Although Appellants dispute that a processor and memory are
generic, Appellants provide no evidence or analysis to support that
conclusion. Although an ATM is a particular machine, it is a highly generic
particular machine as evidenced by its ubiquity. The claims recite an A TM
only for its intended purpose.
And although the claims alter the content of what is displayed on an
ATM screen, this is not an improvement in actual operation of the ATM.
"In this case, the claims are directed not to an improvement in cellular
telephones but simply to the use of cellular telephones as tools in the aid of a
process focused on an abstract idea. That is not enough to constitute
patentable subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1262 (Fed. Cir. 2016). Similarly, here the claims are
directed not to an improvement in ATMs but simply to the use of ATMs as
tools in the aid of a process focused on an abstract idea of modifying content
for display.
Again, the claims recite no steps that affect the otherwise
conventional operation of ATMs and do not even alter the ATM operation
based on the displayed content. As to the novelty of the claims, "a claim for
a new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty." Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
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Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 7-8. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, 772 F.3d at 715-16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were "directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at
715-16). Nevertheless, those claims were patent ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
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Application 13/848,763
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
receiving, analyzing, modifying, and displaying data. This is precisely the
type of Internet activity found ineligible in Ultramercial.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in Diamond v. Diehr, 450 U.S. 175 (1981).
Reply Br. 7-8. But,
we must read Diehr in light of Alice, which emphasized that
Diehr does not stand for the general proposition that a claim
implemented on a computer elevates an otherwise ineligible
claim into a patent-eligible improvement. Alice, 134 S. Ct. at
2358. Rather, Diehr involved "a 'well-known' mathematical
equation . . . used . . . in a process designed to solve a
technological problem in 'conventional industry practice."'
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Diehr solved a technological problem in the conventional industry practice
of molding tires. Here Appellants argue only that the invention directs
content for display from some different data source. Displaying content is
not a "conventional technological industry practice" (id.), but rather it is
making content available to be apprehended.
We are not persuaded by Appellants' argument that "[t]he present
claims are directed to a very specific method for customizing a user interface
allowing a customer to interact with an ATM." Reply Br. 10-11. The
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Appeal2018-001495
Application 13/848,763
method is specific only in the sense it is specified with words. As we
determine supra, the claim is no more than conceptual advice to customize
content for dissemination by applying rules and user information. The
recited way of customizing the interface is "customizing information for the
user based on the user profile and the business rules." Claim 12. As the
recited implementation for such customizing is "customizing" the claim
recites only a result to be obtained by any and all possible means and recites
no technological implementation details.
The remaining arguments are variations on those we discuss supra.
CONCLUSIONS OF LAW
The rejection of claims 12, 15-22, 50, 56-59 under 35 U.S.C. § 101
as directed to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 12, 15-22, 50, 56-59 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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