Ex Parte James

Patent Trials and Appeals Board

Jun 21, 2019

13767000 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/767,000 02/14/2013
26285 7590 06/25/2019
K&L GA TES LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
LaToya H. James
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.
120423 7508
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LA TOY A H. JAMES
Appeal 2018-005345
Application 13/767,000
Technology Center 3600
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and JASON M.
REPKO, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant's invention is a handheld electronic device used for banking
functions, including ( 1) writing checks; (2) confirming an account balance;
and (3) reviewing account activity in a ledger format. Among other things,
the device can ( 1) transmit new check data from the user's checking account
1 Appellant identifies the real party in interest as LaToya H. James. App. Br.
1.
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to a point-of-sale location, and (2) update account activity with transaction
data received from a remote bank computer server system via a mobile
telecommunications network. See generally Abstract. Claim 1 is
illustrative:
1. A programmed mobile computing device for personal
banking for a user, the programmed mobile computing device
compnsmg:
a touch screen interface;
at least one memory unit that stores data, the data
comprising user bank account data, wherein the user bank
account data comprises, for a personal checking account of the
user at a bank:
a routing number for the bank associated with the user's
personal bank checking account;
an account number for the user's personal bank checking
account;
account ledger data that comprises:
check data that comprises, for each check written from
the personal bank checking account over the time period, (i) a
check dollar amount, (ii) a date, and (iii) a payee; and
deposit data that comprises, for each deposit to the
personal bank checking account over the time period, (i) a
deposit dollar amount, and (ii) a date;
at least one processor in communication with the at least
one memory and the touch screen interface;
a mobile telecommunications transceiver in
communication with the at least one processor wherein the
mobile telecommunications transceiver is for sending and
receiving wireless communications via a mobile
telecommunications network; and
a local network transceiver in communication with the at
least one processor, wherein the local telecommunications
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transceiver is for sending and receiving wireless
communications via a local data network, and
wherein the at least one processor is programmed to:
display on the touch screen interface upon a request from
the user a current account dollar balance for the personal bank
checking account of the user, wherein the current account dollar
balance for the personal bank checking account is determined
by the at least one processor based on transaction data stored in
the at least one memory, wherein the transaction data comprises
check data and the deposit data for the personal banking
account;
transmit, via the local data network, data for a new check
written by the user from the personal bank checking account to
a point-of-sale payment system at a point-of-sale location upon
initiation of a point-of-sale check request by the user via the
touch screen interface, wherein the transmitted data for the new
check comprises (i) the routing number for the for the bank
associated with the user's personal bank checking account, (ii)
the account number for the user's personal bank checking
account, and (iii) the check dollar amount, and wherein the
wherein the routing number and the account number are not
displayed on the touch screen interface when the user inputs
data via the touch screen interface to issue the new check from
the user's personal bank checking account; and
update activity for the checking account with transaction
data received from a remote bank computer server system via
the mobile telecommunications network, wherein the remote
bank computer server system stores account data of the bank for
the personal bank checking account of the user, including the
transaction data for the personal banking account, to update the
check and deposit data stored in the at least one memory of the
device with the account data for the personal bank checking
account of the user stored at the remote bank computer server
system.
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THE REJECTIONS
The Examiner rejected claims 1-3 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 9-11. 2
The Examiner rejected claims 1-3 under 35 U.S.C. § 103 as
unpatentable over Cresswell (US 2003/0046229 Al; published Mar. 6,
2003), Monden (US 2008/0245854 Al; published Oct. 9, 2008), Thiele (US
8,332,329 Bl; issued Dec. 11, 2012), Stover (US 8,052,040 B2; issued Nov.
8, 2011), and Grigg et al. (US 2012/0197740 Al; published Aug. 2, 2012).
Final Act. 12-18.
THE INELIGIBILITY REJECTION
The Examiner determines that the claims are directed to an abstract
idea, namely transmitting information to conduct financial transactions,
including writing checks and maintaining an associated account ledger,
which is said to be a fundamental economic practice. Final Act. 9-1 O; Ans.
3-4. The Examiner adds that the claims do not include elements that add
significantly more than the abstract idea, but merely recite, among other
things, generic computer components. See id. 10-11.
Appellant argues that even if the claimed invention is directed to an
abstract idea as the Examiner indicates, the recited limitations add
significantly more to the purported abstract idea by, among other things,
reciting (1) a particular machine, and (2) limitations that are not well-
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 9, 2017 ("Final Act."); (2) the Appeal Brief filed November 13,
2017 ("App. Br."); (3) the Examiner's Answer mailed February 26, 2018
("Ans."); and (4) the Reply Brief filed April 26, 2018 ("Reply Br.").
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understood, routine, and conventional and that confine the claimed invention
to a particular application. App. Br. 9-14; Reply Br. 1-2.
ISSUE
Under 35 U.S.C. § 101, has the Examiner erred in rejecting claims 1-
3 as directed to ineligible subject matter? This issue turns on whether the
claims are directed to an abstract idea and, if so, whether recited elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
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. See, e.g., Alice Corp. Pty. Ltd. 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
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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
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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 (Gottschalkv. 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, 192
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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 176; 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."). That
said, the Supreme Court also indicated that a claim "seeking patent
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
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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 and citation
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.
In January 2019, the USPTO published revised guidance on the
application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under
that 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) (9th ed. Rev. 08.2017, Jan. 2018)).
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:
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(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claims 1-3: Alice/Mayo Step One
Representative independent claim 1 recites [a] programmed mobile
computing device for personal banking for a user, the programmed mobile
computing device comprising:
a touch screen interface;
at least one memory unit that stores data, the data comprising user
bank account data, wherein the user bank account data comprises, for a
personal checking account of the user at a bank:
a routing number for the bank associated with the user's personal
bank checking account;
an account number for the user's personal bank checking account;
account ledger data that comprises:
check data that comprises, for each check written from the personal
bank checking account over the time period, (i) a check dollar amount, (ii) a
date, and (iii) a payee;
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deposit data that comprises, for each deposit to the personal bank
checking account over the time period, (i) a deposit dollar amount, and (ii) a
date; and
withdrawal data pertaining to withdrawals from the personal
checking account;
at least one processor in communication with the at least one memory
and the touch screen interface;
a mobile telecommunications transceiver in communication with the
at least one processor, wherein the mobile telecommunications transceiver
is for sending and receiving wireless communications via a mobile
telecommunications network; and
a local network transceiver in communication with the at least one
processor, wherein the local telecommunications transceiver is for sending
and receiving wireless communications via a local data network, and
wherein the at least one processor is programmed to:
display on the touch screen interface upon a request from the user a
current account dollar balance for the personal bank checking account of
the user, wherein the current account dollar balance for the personal bank
checking account is determined by the at least one processor based on
transaction data stored in the at least one memory, wherein the transaction
data comprises check data and the deposit data for the personal banking
account;
transmit, via the local data network, data for a new check written by
the user from the personal bank checking account to a point-of-sale payment
system at a point-of-sale location upon initiation of a point-of-sale check
request by the user via the touch screen interface, wherein the transmitted
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data for the new check comprises (i) the routing number ... for the bank
associated with the user's personal bank checking account, (ii) the account
number for the user's personal bank checking account, and (iii) the check
dollar amount, and wherein the at least one processor is further
programmed to not display the routing number and the account number on
the touch screen interface when the user inputs data via the touch screen
interface to issue the new check from the user's personal bank checking
account wirelessly to the point-of-sale payment system at the point-of-sale
location via the local data network;
update the account ledger data for the checking account stored in the
memory with both:
remotely-received transaction data received from a remote bank
computer server system via the mobile telecommunications network, wherein
the remote bank computer server system stores account data of the bank for
the personal bank checking account of the user, including the transaction
data for the personal banking account, to update the check and deposit data
stored in the at least one memory of the device with the account data for the
personal bank checking account of the user stored at the remote bank
computer server system; and
locally received transaction data that is input through activation of an
icon on the touch screen interface, wherein activation of the icon by the user
permits the user to input transaction data for transactions on the personal
checking account via the touch screen interface, such that the at least one
processor updates the account ledger data stored in at least one memory
with the transaction data inputted via the touch screen interface, wherein the
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transaction data input via the comprises data for a transaction selected from
the group consisting of a withdrawal, a deposit, interest and a bankingfee.3
As the disclosure explains, Appellant's invention is a handheld
electronic banking device that enables a user to (1) write electronic checks
("e-checks") similar to conventional paper checks; (2) review current
account balances and checking ledger information; and (3) otherwise
manage a checking account. Spec. ,i 6. As shown in Figure 5, the device
includes, among other things, a touch screen display 232 and transceivers
206, 218 that respectively enable communications via a mobile network
(e.g., a cellular network) and a local area network via WiFi or Bluetooth
protocols. Id. ,i,i 7-9.
After the user selects the "write a check" icon 60 in Figure 6, a check
is displayed as shown in Figure 7 allowing the user to enter information by
clicking on various displayed fields to enter data associated with those
fields, such as date, dollar amount, etc. Id. ,i 11. The completed e-check can
then be sent to the payee wirelessly via a local data communications network
via Wi-Fi/Bluetooth transceiver 218. Id. ,i 14. In another mode, the check
data can be transmitted to the payee via the mobile communications network
using transceiver 206. Id. ,i 16.
The user can also view an account ledger. After selecting icon 64 in
Figure 6, a ledger such as that shown in Figure 8 is displayed showing data
for various account transactions, such as deposits, withdrawals, etc. Id. ,i,i
17-18. The user can input various transaction information by clicking on
icon 66 in Figure 6. Id. ,i 18.
3 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
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Turning to claim 1, we first note that the claim recites a device and,
therefore, falls within the machine category of35 U.S.C. § 101. However,
despite falling within this statutory category, we must still determine
whether the claim is directed to a judicial exception, namely an abstract idea.
See Alice, 573 U.S. at 217. To this end, we must determine whether the
claim (1) recites a judicial exception, and (2) fails to integrate the exception
into a practical application. See Guidance, 84 Fed. Reg. at 52-55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claims 1-3 are directed
to an abstract idea, namely transmitting information to conduct financial
transactions, including writing checks and maintaining an associated account
ledger, which is said to be a fundamental economic practice. Final Act. 9-
1 O; Ans. 3-4.
To determine whether a claim recites an abstract idea, we ( 1) identify
the claim's specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
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groupings, namely (a) mathematical concepts4; (b) certain methods of
organizing human activity5; or ( c) mental processes. 6
Here, apart from the recited (1) programmed mobile computing
device; (2) touch screen interface; (3) at least one memory unit that stores
data; (4) at least one processor in communication with the at least one
memory and the touch screen interface, where the processor is programmed
to perform various recited functions, including not display the routing and
account numbers on the touch screen interface when the user inputs data via
the touch screen interface to issue the new check from the user's personal
bank checking account wirelessly to the point-of-sale payment system; (5)
mobile telecommunications transceiver in communication with the at least
one processor, wherein the mobile telecommunications transceiver is for
sending and receiving wireless communications via a mobile
telecommunications network; ( 6) local network transceiver in
communication with the at least one processor, wherein the local
telecommunications transceiver is for sending and receiving wireless
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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communications via a local data network; (7) displaying a current account
dollar balance on the touch screen interface; (8) transmitting data for a new
check via the local data network; (9) receiving transaction data from a
remote bank computer server system via the mobile telecommunications
network; (10) permitting a user to input transaction data by activating an
icon on the touch screen interface; and ( 11) inputting transaction data via the
touch screen interface, all of claim l's recited limitations, which collectively
are directed to managing a checking account in connection with financial
transactions, fit squarely within at least one of the above categories of the
USPTO's guidelines.
First, storing data comprising [l J user bank account data ... ; [2 J a
routing number ... ; [3] an account number ... ; [and 4] account ledger
data comprising the recited check data, deposit data, and withdrawal data
involves at least personal interactions, including following rules or
instructions, at least to the extent that a person could receive and store this
information entirely mentally by merely reading pertinent records or other
associated information or writing this information down. Cf CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting
that limitation reciting obtaining information about transactions that have
used an Internet address identified with a credit card transaction can be
performed by a human who simply reads records of Internet credit card
transactions from a pre-existing database). Alternatively, a person could
receive that information via face-to-face, oral, or written communication
with another person with such knowledge, such as a colleague, and then
store that information either mentally or by writing it down. Cf id.
Therefore, the recited stored data limitation falls squarely within the mental
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processes and methods of organizing human activity categories of the
agency's guidelines and, therefore, recites an abstract idea. See Guidance,
84 Fed. Reg. at 52 (listing exemplary (1) mental processes including
observation and evaluation, and (2) methods of organizing human activity,
including personal interactions and following rules or instructions).
Second, display ... upon a request from the user a current account
dollar balance for the personal bank checking account of the user, wherein
the current account dollar balance for the personal bank checking account
is determined . .. based on transaction data ... , wherein the transaction
data comprises check data and the deposit data for the personal banking
account involves at least mental processes, fundamental economic practices,
and personal interactions, including following rules or instructions, at least
to the extent that a person could determine and display a user's checking
account balance by merely ( 1) thinking about associated financial
transactions involving that account; (2) calculating the account balance
based on those transactions either mentally or with pen and paper; and (3)
writing the balance down on a piece of paper. Cf Clarilogic, Inc. v.
FormFree Holdings Corp., 681 F. App'x 950 (Fed. Cir. 2018) (unpublished)
(holding ineligible claimed method for providing certified financial data
indicating financial risk about an individual where a computer generated a
report from the financial account data including real-time and historical
transaction and balance data as directed to the abstract idea of collecting
information, analyzing it, and displaying certain results of the collection and
analysis). Therefore, the recited current account balance display limitation
falls squarely within the mental processes and methods of organizing human
activity categories of the agency's guidelines and, therefore, recites an
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abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary (1)
mental processes including observation and evaluation, and (2) methods of
organizing human activity, including fundamental economic principles or
practices, personal interactions, and following rules or instructions).
Third, transmit[ting] ... data for a new check written by the user
from the personal bank checking account to a point-of-sale payment system
at a point-of-sale location upon initiation of a point-of-sale check request by
the user ... , wherein the transmitted data for the new check comprises (i)
the routing number . .. for the bank associated with the user's personal
bank checking account, (ii) the account number for the user's personal bank
checking account, and (iii) the check dollar amount involves at least
personal interactions, including fundamental economic practices and
following rules or instructions, at least to the extent that a person could
transmit that information via face-to-face or written communication with
another person with such knowledge, such as a colleague. Cf In re Salwan,
681 F. App'x 938, 939-41 (Fed. Cir. 2017) (unpublished) (holding ineligible
claims reciting, among other things, receiving medical records information
and transmitting reports where the claimed invention's objective was to
enable electronic communication of tasks that were otherwise done manually
using paper, phone, and facsimile machine); Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018) (noting that a nontechnical
human activity of passing a note to a person who is in a meeting or
conversation as illustrating the invention's focus, namely providing
information to a person without interfering with the person's primary
activity); LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 993-94, 996
(Fed. Cir. 2016) (unpublished) (holding ineligible claims reciting, among
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other things, (1) receiving selection criteria from lending institutions and
credit data from a computer user, and (2) forwarding the credit data to
selected lending institutions as directed to an abstract idea); Smartflash LLC
v. Apple Inc., 680 F. App'x 977, 979-84 (Fed. Cir. 2017) (unpublished)
(holding ineligible recited terminal that retrieved and accessing protected
multimedia content by, among other things, validating payment as directed
to abstract idea of conditioning and controlling access to data based on
payment-a fundamental economic practice); Inventor Holdings, LLC v.
Bed Bath & Beyond, 876 F.3d 1372, 1374, 1378-80 (Fed. Cir. 2017)
(holding ineligible claim reciting that the conditional steps of (1) receiving
payment for a remote order, and (2) transmitting data to a remote seller that
payment was received were performed only if a code received at a point-of-
sale system related to a remote order as directed to an abstract idea).
Therefore, the recited new check data transmission limitation falls squarely
within the methods of organizing human activity category of the agency's
guidelines and, therefore, recites an abstract idea. See Guidance, 84 Fed.
Reg. at 52 (listing exemplary (1) mental processes including observation and
evaluation, and (2) methods of organizing human activity, including
fundamental economic principles or practices, personal interactions, and
following rules or instructions).
Fourth, the limitation reciting not display[ing] the routing number and
the account number ... when the user inputs data ... to issue the new check
from the user's personal bank checking account ... to the point-of-sale
payment system at the point-of-sale location ... involves at least mental
processes, fundamental economic practices, and personal interactions,
including following rules or instructions, at least to the extent that a person
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could merely decide to not display the routing and account numbers when
inputting data to, among other things, enhance the account holder's security
and privacy by simply hiding or masking this information from public view
or otherwise omitting this information. Not only could this function be
performed entirely mentally or with pen and paper, but it also involves
organizing human activity, at least to the extent that it involves a
fundamental economic practice including enhancing security and privacy
associated with commercial and financial transactions by omitting certain
information associated with transacting parties. Cf Mortgage Grader Inc. v.
First Choice Loan Services, Inc., 811 F.3d 1314, 1318, 1324 (Fed. Cir.
2016) (holding ineligible claims enabling borrowers to shop for loan
packages anonymously using a computer); CyberSource, 654 F.3d at 1372
(noting that a recited step that utilized a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address); Prism Techs.
LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1016-18 (Fed. Cir. 2017)
(unpublished) (holding ineligible claims directed to the abstract process of
(1) receiving identity data from a device with a request for access to
resources; (2) confirming authenticity of the identity data associated with
that device; (3) determining whether the identified device is authorized to
access the requested resources; and ( 4) if authorized, permitting access to the
requested resources). Therefore, not displaying the routing and account
numbers as claimed falls squarely within the mental processes and methods
of organizing human activity categories of the agency's guidelines and,
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therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing
exemplary (1) mental processes including observation and evaluation, and
(2) methods of organizing human activity, including personal interactions
and following rules or instructions and fundamental economic practices).
Lastly, updat[ing] the account ledger data for the checking account . .
. with both: [l] remotely-received transaction data received from a remote
bank ... , wherein the remote bank . .. stores account data of the bank for
the personal bank checking account of the user, including the transaction
data for the personal banking account, to update the check and deposit data
... with the account data for the personal bank checking account of the user
... at the remote bank . .. ; and [2 J locally received transaction data that is
input [by the user] ... for transactions on the personal checking account . ..
, such that the account ledger data . .. [is updated] . .. with the [inputted]
transaction data ... , wherein the transaction data input ... comprises data
for a transaction selected from the group consisting of a withdrawal, a
deposit, interest and a banking fee involves at least mental processes,
fundamental economic practices, and personal interactions, including
following rules or instructions, at least to the extent that a person could
receive this transaction data ( 1) remotely from a bank either via face-to-face,
oral, or written communication with another person associated with the
bank, and (2) locally by either writing it down, or receiving it from another
person with such knowledge, such as a colleague, via face-to-face, oral, or
written communication, and then update the ledger data accordingly either
entirely mentally or by pen and paper. Cf Salwan, 681 F. App'x at 939-41
(holding ineligible claims reciting, among other things, receiving medical
records information and transmitting reports where the claimed invention's
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objective was to enable electronic communication of tasks that were
otherwise done manually using paper, phone, and facsimile machine);
Interval Licensing, 896 F.3d at 1344 (noting that a nontechnical human
activity of passing a note to a person who is in a meeting or conversation as
illustrating the invention's focus, namely providing information to a person
without interfering with the person's primary activity); LendingTree, 656 F.
App'x at 993-94, 996 (holding ineligible claims reciting, among other
things, (1) receiving selection criteria from lending institutions and credit
data from a computer user, and (2) forwarding the credit data to selected
lending institutions as directed to an abstract idea); Smartjlash, 680 F. App'x
at 979-84 (holding ineligible recited terminal that retrieved and accessing
protected multimedia content by, among other things, validating payment as
directed to abstract idea of conditioning and controlling access to data based
on payment-a fundamental economic practice); Inventor Holdings, 87 6
F.3d at 1378-80 (holding ineligible claim reciting that the conditional steps
of (1) receiving payment for a remote order, and (2) transmitting data to a
remote seller that payment was received were performed only if a code
received at a point-of-sale system related to a remote order as directed to an
abstract idea); CyberSource, 654 F.3d at 1372 (noting that a recited step that
utilized a map of credit card numbers to determine the validity of a credit
card transaction could be performed entirely mentally by merely using
logical reasoning to identify a likely instance of fraud by merely observing
that numerous transactions using different credit cards all originated from
the same IP address). Therefore, the recited ledger data update limitation
falls squarely within the mental processes and methods of organizing human
activity categories of the agency's guidelines and, therefore, recites an
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abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary (1)
mental processes including observation and evaluation, and (2) methods of
organizing human activity, including fundamental economic principles or
practices, personal interactions, and following rules or instructions).
Although the claim recites an abstract idea based on these methods of
organizing human activity and mental processes, we nevertheless must still
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See Guidance, 84 Fed. Reg. at 54-55. To this end, we (1) identify whether
there are any additional recited elements beyond the abstract idea, and (2)
evaluate those elements individually and collectively to determine whether
they integrate the exception into a practical application. See id.
Here, the recited (1) programmed mobile computing device; (2) touch
screen interface; (3) at least one memory unit that stores data; (4) at least
one processor in communication with the at least one memory and the touch
screen interface, where the processor is programmed to perform various
recited functions, including not display the routing and account numbers on
the touch screen interface when the user inputs data via the touch screen
interface to issue the new check from the user's personal bank checking
account wirelessly to the point-of-sale payment system; (5) mobile
telecommunications transceiver in communication with the at least one
processor, wherein the mobile telecommunications transceiver is for sending
and receiving wireless communications via a mobile telecommunications
network; ( 6) local network transceiver in communication with the at least
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one processor, wherein the local telecommunications transceiver is for
sending and receiving wireless communications via a local data network; (7)
displaying a current account dollar balance on the touch screen interface; (8)
transmitting data for a new check via the local data network; (9) receiving
transaction data from a remote bank computer server system via the mobile
telecommunications network; (10) permitting a user to input transaction data
by activating an icon on the touch screen interface; and (11) inputting
transaction data via the touch screen interface, are the only recited elements
beyond the abstract idea, but these additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves a computer
or its components' functionality or efficiency, or otherwise changes the way
those devices function, at least in the sense contemplated by the Federal
Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
App. Br. 10-16; Reply Br. 2-3), we disagree. Even assuming, without
deciding, that the claimed invention can manage a checking account in
connection with financial transactions faster than doing so manually, any
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speed increase comes from the capabilities of the generic computer
components-not the recited process itself. See Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir.
2012) ("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.")); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir. 2017) (unpublished)
("Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have 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.").
Like the claims in Fair Warning, the focus of claim 1 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted).
As with the ineligible claimed invention in BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1284-91 (Fed. Cir. 2018), the claimed
invention does not improve a computer's functionality or that of its
associated components, but rather the benefits flow from performing the
abstract idea in conjunction with those generic computer components. See
BSG, 899 F .3d at 1288 ("While the presentation of summary comparison
usage information to users improves the quality of the information added to
the database, an improvement in the information stored by a database is not
equivalent to an improvement in the database's functionality.").
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Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented (1) product information
from the third party, and (2) visual "look and feel" elements from the host
website. DDR, 773 F.3d at 1258-59. Given this particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellant's claimed
invention, in essence, is directed to managing a checking account in
connection with financial transactions-albeit using computer-based
components to achieve that end. The claimed invention here is not
necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge particular to the
Internet. Although Appellant's invention uses various computer-based
components noted previously, the claimed invention does not solve a
challenge particular to the computing components used to implement this
functionality.
We also find unavailing Appellant's contention that the claimed
invention is eligible because it is tied to a particular machine by reciting a
programmed mobile computing device including ( 1) a mobile
telecommunications transceiver; (2) a local network transceiver; and (3) a
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touch screen interface. App. Br. 10-13; Reply Br. 1. To be sure, the
machine-or-transformation test, although not the only test, can nevertheless
provide a "useful clue" to patent eligibility in the Alice/Mayo framework.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(quoting Bilski v. Kappas, 561 U.S. 593, 594 (2010)). Under the machine-
or-transformation test, a claimed process is patent-eligible if: (1) it is tied to
a particular machine or apparatus, or (2) it transforms a particular article into
a different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008),
aff'd sub nom. Bilski, 561 U.S. at 593. As such satisfying either prong of the
machine-or-transformation test may integrate an abstract idea into a practical
application. See Guidance, 84 Fed. Reg. at 55 nn.27-28 ( citing MPEP
§§ 2106.05(b)-(c)).
It is well settled, however, that whether a recited device is a tangible
system or, in 35 U.S.C. § 101 terms, a "machine," is not dispositive.
ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019)
(quoting In re TL! Commc'ns, 823 F.3d 607, 611 (Fed. Cir. 2016) ("[N]ot
every claim that recites concrete, tangible components escapes the reach of
the abstract-idea inquiry."). For a machine to impose a meaningful limit on
the claimed invention, it must play a significant part in permitting a claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly. Versata
Dev. Grp. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see
also MPEP § 2106.05(b)(II) (citing Versata). The latter role is the case here,
for the recited programmed mobile computing device, with its touch screen
interface and transceivers, is merely an obvious mechanism that achieves the
recited solution more quickly, namely managing a checking account in
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connection with financial transactions faster than by using manual methods.
That is, despite the computing device's components that are used to achieve
this end, the focus of the claim is nonetheless directed to solving a business
problem-not a technical problem-by managing a checking account in
connection with financial transactions, albeit using computer- and network-
based components to achieve that end. Cf ChargePoint, 920 F.3d at 772-73
(holding ineligible claim reciting a network-controlled charge transfer
system for electric vehicles comprising, among other things, a
communication device configured to connect a controller to a mobile
wireless communication device for communication between the electric
vehicle operator and the controller); see also id. at 772 (noting that the lack
of an indication that (1) the disclosed invention was intended to improve the
recited components, including the communications devices, or (2) that the
inventors viewed the combination of those components as their invention).
That Appellant's claimed invention includes a touch screen interface
and transceivers that enable wireless communication does not change our
conclusion. Cf West View Research, LLC v. Audi AG, 685 F. App'x 923,
925-26 (Fed. Cir. 2017) (unpublished) (holding ineligible claims reciting a
computerized apparatus capable of interactive information exchange with a
human user via, among other things, a touch-screen input and display
device, and that enabled wirelessly transmitting results to a portable
electronic device as directed to the abstract idea of ( 1) receiving or
collecting data queries; (2) analyzing the query; (3) retrieving and
processing the information constituting a response to the initial data query;
and (4) generating a visual or audio response to the initial data query);
ChargePoint, 920 F.3d at 766-71 (holding ineligible claims reciting, among
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other things, a transceiver to transmit requests to a remote server and receive
communications from a remote server via a data control unit connected to
the server through a wide area network as directed to the abstract idea of
communication over a network for interacting with a device, applied to the
context of electric vehicle charging stations); Maxon, LLC v. Funai Corp.,
726 F. App'x 797, 797-800 (Fed. Cir. 2018) (unpublished) (holding
ineligible claims reciting audio-video device capable of sharing services
with other devices within a personal network comprising a computer-
readable medium, input/output logic, processor, and a transceiver as directed
to the abstract idea of decentralized delivery controlled by the owner of
plural devices); Smartjlash, 680 F. App'x at 979-84 (holding ineligible
recited handheld multimedia terminal comprising wireless and user
interfaces, memory, display, and a processor that retrieved and accessed
protected multimedia content by, among other things, validating payment as
directed to abstract idea of conditioning and controlling access to data based
on payment-a fundamental economic practice); Automated Tracking
Solutions, LLC v. Coca-Cola Co., 723 F. App'x 989, 991-95 (Fed. Cir.
2018) (holding claims reciting (1) a transponder; (2) a reader configured to
receive data from the transponder via a radio frequency signal, and (3) a
processor configured to receive the transponder data from the reader and
generate detection information based on the received data as directed to the
abstract idea of collecting data, analyzing it, and determining results based
on that analysis); Internet Patents Corp. v. Active Network, Inc., 790 F .3d
1343, 1343-49 (Fed. Cir. 2015) (holding ineligible claims reciting providing
an intelligent user interface to an online application comprising ( 1)
furnishing plural hyperlinked icons on a displayed web page, and (2)
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displaying a dynamically generated online application form set responsive to
activating an icon as directed to the abstract idea of retaining information in
navigating online forms); ChargePoint, 920 F.3d at 772-73 (noting that
communication over a network for device interaction is a "building block of
the modem economy").
Appellant's reliance on SiRF Technology, Inc. v. International Trade
Commission, 601 F.3d 1319 (Fed. Cir. 2010) (App. Br. 12; Reply Br. 2) is
unavailing. There, the claimed invention involved calculating a GPS'
absolute position and signal reception time by, among other things,
providing "pseudoranges" that estimated the range of the received to plural
GPS satellites, and using these pseudoranges as part of that computation.
SiRF, 601 F.3d at 1331. In reaching its eligibility conclusion, the court
emphasized that the recited GPS receiver was essential to the claimed
invention, and that generating pseudoranges or determining the GPS
receiver's position would be impossible without the receiver. Id. at 1332.
Therefore, the GPS receiver placed a meaningful limit on the claims' scope
by playing a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for
achieving a solution more quickly as by using a computer to perform
calculations. Id. at 1332-33.
Unlike the GPS receiver in SiRF, the recited programmed mobile
computing device, including its touch screen interface and transceivers, does
not place a meaningful limit on the claims' scope, but rather functions solely
as an obvious mechanism for achieving a solution more quickly, namely
managing a checking account in connection with financial transactions faster
than by using manual methods. See Versata; see also MPEP §
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2106.05(b)(II) (citing Versata). To the extent Appellant contends otherwise
(App. Br. 12; Reply Br. 2), we disagree. Moreover, Appellant's reliance on
the Board decisions on pages 12 and 13 of the Appeal Brief are likewise
unavailing, for not only do the facts in those cases differ from those at issue
here, as non-precedential decisions, those cases are not binding on this panel
in any event. See PTAB Standard Operating Procedure 2 (Rev. 10) ("SOP
2") § I(B), available at https://www.uspto.gov/patent-application-
process/paten t-trial-and-appeal-board/resources.
To the extent that Appellant contends that the claimed invention is
patent-eligible because it does not preempt all ways of managing a checking
account in connection with financial transactions, but rather is directed to a
particular way to do so using the recited programmed mobile computing
device (see App. Br. 14-15), we find such an argument unavailing. Where,
as here, the claims cover a patent-ineligible concept, preemption concerns
"are fully addressed and made moot" by an analysis under the Alice/Mayo
framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
In conclusion, although the recited functions may be beneficial by
managing a checking account in connection with financial transactions by
using a programmed mobile computing device, a claim for a useful or
beneficial abstract idea is still an abstract idea. See id. at 1379-80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
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Claims 1-3: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim l's additional recited elements,
namely the the recited (1) programmed mobile computing device; (2) touch
screen interface; (3) at least one memory unit that stores data; (4) at least
one processor in communication with the at least one memory and the touch
screen interface, where the processor is programmed to perform various
recited functions, including not display the routing and account numbers on
the touch screen interface when the user inputs data via the touch screen
interface to issue the new check from the user's personal bank checking
account wirelessly to the point-of-sale payment system; (5) mobile
telecommunications transceiver in communication with the at least one
processor, wherein the mobile telecommunications transceiver is for sending
and receiving wireless communications via a mobile telecommunications
network; ( 6) local network transceiver in communication with the at least
one processor, wherein the local telecommunications transceiver is for
sending and receiving wireless communications via a local data network; (7)
displaying a current account dollar balance on the touch screen interface; (8)
transmitting data for a new check via the local data network; (9) receiving
transaction data from a remote bank computer server system via the mobile
telecommunications network; (10) permitting a user to input transaction data
by activating an icon on the touch screen interface; and ( 11) inputting
transaction data via the touch screen interface-considered individually and
as an ordered combination-do not provide an inventive concept such that
these additional elements amount to significantly more than the abstract
idea. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As
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noted above, the claimed invention merely uses generic computing
components to implement the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 20-22; Reply Br. 7-10), these limitations
are not additional elements beyond the abstract idea, but rather are directed
to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the the recited (1) programmed mobile computing device; (2)
touch screen interface; (3) at least one memory unit that stores data; (4) at
least one processor in communication with the at least one memory and the
touch screen interface, where the processor is programmed to perform
various recited functions, including not display the routing and account
numbers on the touch screen interface when the user inputs data via the
touch screen interface to issue the new check from the user's personal bank
checking account wirelessly to the point-of-sale payment system; (5) mobile
telecommunications transceiver in communication with the at least one
processor, wherein the mobile telecommunications transceiver is for sending
and receiving wireless communications via a mobile telecommunications
network; ( 6) local network transceiver in communication with the at least
one processor, wherein the local telecommunications transceiver is for
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sending and receiving wireless communications via a local data network; (7)
displaying a current account dollar balance on the touch screen interface; (8)
transmitting data for a new check via the local data network; (9) receiving
transaction data from a remote bank computer server system via the mobile
telecommunications network; (10) permitting a user to input transaction data
by activating an icon on the touch screen interface; and (11) inputting
transaction data via the touch screen interface, are the only additional recited
elements whose generic computing functionality is well-understood, routine,
and conventional. See Intellectual Ventures, 792 F.3d at 1368 (noting that a
recited user profile (i.e., a profile keyed to a user identity), database, and
communication medium are generic computer elements); Mortgage Grader,
811 F.3d at 1324-25 (noting that components such an "interface,"
"network," and "database" are generic computer components that do not
satisfy the inventive concept requirement); buySAFE v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends
the information over a network-with no further specification-is not even
arguably inventive."). Accord Spec. ,-J,-J 23, 28-31 (describing generic
computer components used to implement the invention); Final Act. 11; Ans.
7-8 ( concluding that the claims' generically recited computer components
do not add significantly more than the abstract idea).
That the Examiner did not reject the claims as anticipated over prior
art as Appellant indicates (Reply Br. 2) is not dispositive to patent
eligibility-a separate statutory inquiry. See Return Mail, Inc. v. U.S. Postal
Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). Although the second step in
the Alice/Mayo test is a search for an "inventive concept," the analysis is not
directed to novelty or nonobviousness, but rather searches for elements
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sufficient to ensure that the claimed invention is directed to more than a
patent ineligible concept, such as an abstract idea. See Alice, 573 U.S. at
217-18. "Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter."); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not tum on the novelty of using a user-downloadable
application for the particular purpose recited in the claims).
In conclusion, the additional recited elements-considered
individually and as an ordered combination-do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 and claims 2 and 3 not argued separately with particularity.
THE OBVIOUSNESS REJECTION
Regarding claim 1, the Examiner finds that Cresswell discloses a
programmed mobile computing device for personal banking with many
recited elements including, among other things, (1) a touch screen interface,
mobile telecommunications and local network transceivers; (2) a memory
unit that stores the recited user bank account data; and (3) a processor that
can (a) display a current account dollar balance on the interface upon user
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request, and (b) update account ledger data with remotely-received
transaction data received from a remote bank computer server system. Final
Act. 12-14. Although the Examiner acknowledges that Cresswell does not
transmit data for a new check to a point-of-sale payment system via the local
data network upon request, the Examiner cites Thiele for teaching this
feature. Id. 14-15. The Examiner also acknowledges that Cresswell's
deposit data lacks a date, but cites Monden for teaching this feature. Id. 15-
16. In addition, the Examiner acknowledges that Cresswell, Thiele, and
Monden lack not displaying the routing and account numbers on the touch
screen interface when the user inputs data on the interface to issue a new
check, but cites Stover for teaching this feature. Id. 16-17. Lastly, the
Examiner cites Grigg for teaching inputting locally received transaction data
through activation of an icon on the interface to permit the user to input
transaction data such that the processor updates the account ledger data with
the inputted data. Id. 17-18. In light of these collective teachings, the
Examiner concludes that the claim would have been obvious. Final Act. 12-
18.
Appellant argues the Examiner's reliance on Stover is misplaced
because it pertains to paper checks-not an electronic device with a touch
screen or processor programmed to not display information on the interface
as claimed. App. Br. 16-17; Reply Br. 2-3. Appellant further contends that
the Examiner's reliance on Grigg is also misplaced because not only does
Grigg not input transaction data via a touch screen interface, Grigg pertains
to making payments-not reconciling a checking account reflecting
deposits, withdrawals, interest, or banking fees as claimed. App. Br. 17;
Reply Br. 3-4. Appellant adds the Examiner's reliance on Monden is
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improper because its figures relate to a power cord assembly-not a
checkbook ledger function. App. Br. 17-18; Reply Br. 2. Lastly, Appellant
contends that the Examiner's proposed combination is based on
impermissible reconstructive hindsight by suggesting that ordinarily skilled
artisans would do the opposite of what the references teach. App. Br. 18-19.
ISSUES
I. Under 35 U.S.C. § 103, has the Examiner erred in rejecting claim 1
by finding that Cresswell, Monden, Thiele, Stover, and Grigg collectively
would have taught or suggested (1) deposit data comprising a date; (2) a
processor programmed to not display routing and account numbers on a
touch screen interface when the user inputs data on the interface to issue a
new check; and (3) inputting locally received transaction data through
activation of an icon on the interface to permit the user to input transaction
data such that the processor updates the account ledger data with the
inputted data?
II. Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
ANALYSIS
We begin by noting that the Monden reference, entitled "Handheld
Electronic Personal Finance Money Manager and Spending Tracker,"
contains incorrect figures as both Appellant and the Examiner acknowledge.
See Ans. 11; App. Br. 17-18 (noting that Monden's figures show a power
cord assembly). Although the Examiner cites Monden's paragraph 56 that
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pertains to a "Checkbook Ledger" function in the rejection, Appellant
nonetheless challenges this reliance given the three figures mentioned in
Monden's paragraph 56, namely Figures 5, 10, and 11, that have nothing to
do with a checkbook ledger function. App. Br. 18. Although the Examiner
did not refer explicitly to Monden's incorrect published figures in the
rejection, on February 26, 2018, the Examiner nonetheless provided the
correct figures from Monden's underlying Application No. 11/784,234 filed
April 6, 2007 to clarify the record. See Ans. 11.
Despite this clarification, Appellant nonetheless contends that the
Examiner's reliance on Monden's correct figures is improper on appeal as
new evidence, nor is it clear to Appellant what provisions of Section 102
apply to these figures because they are ostensibly not part of a printed
publication or published application. See Reply Br. 2. These contentions
are unavailing. First, Appellant's procedural grievances regarding the
alleged impropriety of the Examiner's providing copies of Monden's correct
figures in connection with the Examiner's Answer are petitionable-not
appealable-matters and are, therefore, not before us. 7
Nevertheless, it is well settled that where, as here, a patent application
has been published, that application's entire disclosure-including its
drawings-is publicly available. See 3 7 C.F .R. § § 1.11 (a), l. l 4(ii)-(iii); see
also MPEP §§ 103(1)-(II). Therefore, Monden's correct drawings as
originally filed are publicly available despite Monden's incorrect published
7 See MPEP § 706.01 ("[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.");
see also MPEP § 1201 ("The Board will not ordinarily hear a question that
should be decided by the Director on petition .... ").
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drawings. To the extent that Appellant contends that Monden's originally
filed drawings were unavailable to the public when the Examiner cited
Monden in the rejection on which this appeal is based, there is no evidence
on this record to substantiate such a contention. Therefore, absent evidence
to the contrary, we presume that Monden's originally filed drawings were
available to the public when the Examiner cited the reference. That
Monden's front page refers to its underlying Application No. 11/784,234
filed April 6, 2007 only underscores its qualification as prior art at least
under § 102( e) based on that original disclosure-including its originally
filed drawings. See MPEP §§ 706.02([), 2127(1).
Turning to the rejection, we see no error in the Examiner's reliance on
the cited prior art for collectively at least suggesting the recited limitations.
First, even assuming, without deciding, that the check in Stover's Figure 5 is
made of paper as Appellant contends (App. Br. 16-17; Reply Br. 2-3)
despite Stover's references to computer displays in Figures 3 and 8 as the
Examiner indicates (Ans. 9), the Examiner does not rely solely on Stover for
the recited processor's touch-screen-based functionality for issuing a new
check to a point-of-sale payment system, but rather also Thiele in
combination with the other cited references. See Final Act. 15-17. That is,
not only does the Examiner rely on Cresswell for teaching a touch-screen
interface-a reliance that is undisputed-but the Examiner cites Thiele for
teaching the new check data transmission to a point-of-sale payment system,
where the data includes, among other things, routing and account numbers
associated with the user's checking account. See Final Act. 15. Although
the routing and account numbers are displayed in connection with the virtual
check shown in Thiele's Figure 3, we nonetheless see no reason why they
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cannot be hidden or masked via an encrypted code such as the bar code 40 in
Stover's Figure 2 as the Examiner proposes. Such an enhancement is not the
product of impermissible hindsight as Appellant contends (App. Br. 19), but
rather would enhance security by not displaying that sensitive information
on a virtual check in a manner similar to its paper counterpart in Stover-a
predictable result. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417
(2007) (noting that using prior art elements predictably according to their
established functions is an obvious improvement).
So even assuming, without deciding, that Stover's functionality is
limited to paper checks as Appellant contends, Appellant has still not shown
that adapting Stover's data masking technique for paper checks to a virtual
check such as that in Thiele would have been uniquely challenging or
otherwise beyond the level of ordinarily skilled artisans. See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
("Applying modem electronics to older mechanical devices has been
commonplace in recent years."). In short, the fact that Stover ostensibly
uses a paper check as Appellant contends is not dispositive here, particularly
in view of modem electronic updates to paper checks that are consistent with
similar electronic updates noted by the court in Leapfrog. In any event, the
Examiner's rejection is not based on Stover alone, but rather the cited prior
art collectively. See Ans. 2-5. Therefore, Appellant's arguments regarding
Stover's individual shortcomings in this regard (see App. Br. 15-17; Reply
Br. 18-19) do not show nonobviousness where, as here, the rejection is
based on the cited references' collective teachings. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Nor has Appellant shown that the
cited references criticize, discredit, or otherwise discourage investigation
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into the invention claimed as required for teaching away despite Appellant's
contentions to the contrary (see App. Br. 19). See Norgren Inc. v. Int'!
Trade Comm 'n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006).
Appellant's arguments regarding Grigg's alleged shortcomings (App.
Br. 17; Reply Br. 3-4) are likewise unavailing. As shown in Grigg's Figure
8, the graphical user interface (GUI) includes an icon-based update button
818 that enables the user to update a checking account balance regularly,
such as after every transaction. Grigg ,i 132. Despite Appellant's arguments
to the contrary (App. Br. 17; Reply Br. 3-4), nothing in the claim precludes
this icon-based activation that effectively inputs transaction data to update
the balance accordingly by, for example, selecting the button on the GUI
after a payment is made via check so that the balance reflects the associated
withdrawal from the account. That Grigg-like Cresswell-teaches using a
touchscreen in paragraphs 6 and 56 only further underscores the propriety of
the Examiner's findings in this regard.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2 and 3 not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1-3 under 35 U.S.C.
§§ 101 and 103.
DECISION
We affirm the Examiner's decision to reject claims 1-3.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
40