Ex Parte NONAKA

Patent Trial and Appeal Board

Feb 26, 2019

13070058 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/070,058 03/23/2011
24041 7590 02/28/2019
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
FIRST NAMED INVENTOR
Nobuyuki NONAKA
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.
113.018.NPUSOl 1267
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUYUKI NONAKA
Appeal2017-009202
Application 13/070,058 1
Technology Center 3600
Before LARRY J. HUME, NORMAN H. BEAMER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-10, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Universal
Entertainment Corp. App. Br. 2.
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Application 13/070,058
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention relate to a
settlement system. Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A settlement system, comprising:
a handheld-type mobile user terminal device including an
input portion and an output portion and a non-contact IC card,
as well as an application configured to cause the user handheld-
type mobile user terminal device to communicate with a
wagering-type gaming machine and, upon authentication, serve
as a negotiable-value providing device;
the wagering-type gaming machine including: a value-
addition mechanism configured to receive game media and
including a non-contact IC card reader and validator capable of
authenticating a currency bill and at least one of a coin, a token,
or an electronically readable ticket or the non-contact IC card,
and an award payout mechanism by which game media,
currency, other game media, or another award may be
dispensed from the wagering-type gaming machine; and
a server, wherein
the handheld-type mobile user terminal device is
configured to directly electronically communicate with the
2 Our Decision relies upon Appellant's Appeal Brief ("Br.," filed
Dec. 29, 2016); Examiner's Answer ("Ans.," mailed Apr. 4, 2017); Final
Office Action ("Final Act.," mailed Aug. 1, 2016); and the original
Specification ("Spec.," filed Mar. 23, 2011). We note Appellant did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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wagering-type gaming machine via the application, the non-
contact IC card, and non-contact IC card reader, and the server,
and wherein, after initial registration of a user into the
settlement system:
the handheld-type mobile user terminal device transmits
a first data communication signal to the wagering-type gaming
machine via the non-contact IC card and the non-contact IC
card reader, the first data communication signal comprising a
provision demand message including user identification
information specifying at least one of a user and the handheld-
type mobile user terminal device, and information demanding
provision of a negotiable-value;
the wagering-type gaming machine transmits a second
data communication signal to the server demanding permission
to provide the negotiable-value upon receipt of the first data
communication signal; and
the server stores user deposit information after being
associated with the user identification information, and
transmits a third data communication signal to the wagering-
type gaming machine notifying that an amount of a user deposit
is insufficient when the amount of the user deposit is less than
the negotiable-value when the second data communication
signal is received from the wagering-type gaming machine, the
wagering-type gaming machine transmits an eighth data
communication signal to the handheld-type mobile user
terminal device, the eighth data communication signal
comprising a deposit supply demand message including
information demanding supply of a deposit upon receipt of the
third data communication signal, the server transmitting a fifth
data communication signal comprising a transfer request
message including information requesting transfer of a
predetermined amount from an account of the user upon receipt
of a fourth data communication signal from the handheld-type
mobile user terminal, the fourth data communication signal
comprising a transfer demand message including information
demanding transfer of the predetermined amount or more and
being transmitted from the handheld-type mobile user terminal
to the server, and wherein
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the handheld-type mobile user terminal device prompts
input of a user confirmation to execute a transfer of a deposit
supply upon receipt of the eight data communication signal
from the wagering-type gaming machine, and then upon input
of the input user confirmation, transmits the fourth data
communication signal to the server to request the transfer of the
deposit supply,
the server transmits a ninth data communication signal to
the wagering-type gaming machine, the ninth data
communication signal comprising a provision instructing
message including information instructing provision of the
negotiable-value upon receipt of a sixth data communication
signal, the sixth data communication signal comprising a
transfer completion message including information indicating
transfer of the predetermined amount or more, and
the wagering-type gaming machine receives the ninth
data communication signal and executes provision of the
negotiable-value.
Rejection on Appeal
Claims 1-10 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2.
CLAIM GROUPING
Based on Appellant's arguments (Br. 9-34) and our discretion under
37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible subject
matter Rejection RI of claims 1-10 on the basis of illustrative claim 1.
ISSUE
Appellant argues (Br. 9-34) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
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Under the US PTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, did the Examiner err in concluding
claim 1 is directed to a judicial exception, i.e., an abstract idea, without
significantly more, and thus is patent-ineligible under§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
We first note "[w]hether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo." SiRF Tech., Inc. v. Int 'l
Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.3
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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
3 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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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
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, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[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."). Having
said that, 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
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
However, the Federal Circuit has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1353-54 (Fed.
Cir. 2016) ( collecting cases). At the same time, "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Abstract ideas may include, but
are not limited to, fundamental economic practices, methods of organizing
human activities, and mathematical formulas or relationships. Alice 134 S.
Ct. at 2355-57. Under this guidance, we must therefore ensure at step one
that we articulate what the claims are directed to with enough specificity to
ensure the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully
in construing this exclusionary principle lest it swallow all of patent law.").
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 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.
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B. USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07 /pdf/
2018-28282.pdf).
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 interactions such as a fundamental
economic practice, or mental processes); 4 and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-
( c), (e }-(h)). 5
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. 6
4 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
5 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
6 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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See Guidance.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity -
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); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance. 7
7 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
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However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 8
cited in the Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
8 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017].
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(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 9 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (US PTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 10 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
9 See, e.g., Diehr, 450 U.S. at 187.
10 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
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whether the additional elements amount to significantly more than the
exception itself). 11
Under the Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Guidance, III.B. 12
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
11 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
12 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s ).
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05( d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ).
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
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However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner generally determined "[t]he series of steps [in the
claims] describe the concept of transferring funds," which is "well
established and long prevalent in our history of commerce. Thus, the claim
is directed to a fundamental economic practice similar to what has been
found abstract by the courts ( e.g., hedging in Bilski, mitigating settlement
risk in Alice)." Final Act. 3--4.
The concept of transferring funds may also be viewed as a
certain methods of organizing human activity as it relates to
transactions between people similar to what has been identified
by the courts as abstract idea as in hedging in Bilski, mitigating
settlement risk in Alice and creating contractual relationship in
buySAFE. Thus, the claim 1 is directed to an abstract idea.
Final Act. 4. The Examiner further concludes "claim 1 is directed to the
abstract idea of transferring funds as supported by the claimed limitations as
explained above. Thus, the abstract idea is well connected to the claimed
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limitations and is not an overgeneralization and meet the office guidance and
Alice framework." Ans. 6-7.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. However, in view of the revised
Guidance, we reevaluate whether an abstract idea is recited by claim 1. We
conduct our review for abstractness and for patent-eligibility de novo.
We agree with the Examiner that claim 1 recites an abstract idea, i.e.,
a method of organizing human activity, in particular, the concept of
transferring funds. Ans. 4. Specifically, we conclude at least the following
limitation of claim 1 may be considered as directed to the abstract idea under
the Guidance:
the server transmits a ninth data communication signal to
the wagering-type gaming machine, the ninth data
communication signal comprising a provision instructing
message including information instructing provision of the
negotiable-value upon receipt of a sixth data communication
signal, the sixth data communication signal comprising a
transfer completion message including information indicating
transfer of the predetermined amount or more[.]
Claim 1.
We find this limitation is a process that, under its broadest reasonable
interpretation, covers performance of the long-standing practice of funds
transfer, albeit by the recitation of generic computer components.
Therefore, we find this type of activity, i.e., funds authorization and
transfer, includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper or, for example, by a personal cash transaction. See CyberSource
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Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). 13
Our reviewing court has previously held that abstract ideas include the
concepts of collecting data, e.g., funds balance data, recognizing certain data
within the collected data set, and storing the data in memory. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1347 (Fed. Cir. 2014). Additionally, the collection of information and
analysis of information (e.g., recognizing certain data within the dataset) are
also abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category"). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Also, collecting and comparing known information has been determined to
be an abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea
of collecting and comparing known information"). Also, more recently, our
13 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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reviewing court has also concluded that acts of parsing, comparing, storing,
and editing data are abstract ideas. Berkheimer, 881 F.3d at 1366. 14
Moreover, the Specification provides evidence as to what the claimed
invention is directed. In this case, the Specification discloses that the
invention "relates to a settlement system." Spec. ,r 2. 15
14 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241.
15 The Abstract further describes:
The present invention is provides a novel electronic
settlement technique which is capable of supplying a deposit so
as to continue the play of a game after a deposit available in a
game facility has been consumed. A negotiable-value providing
device is transmits to a user terminal device a deposit supply
demand message demanding supply of a premises deposit upon
receipt of a transfer demand message. A user terminal device is
transmits a transfer demand message to a management server
upon receipt of the deposit supply demand message. Upon
receipt of the deposit supply demand message, the management
server is transmits to a financial institute system a transfer
request message requesting a predetermined transfer of a
predetermined amount of money from a user bank account.
Upon receipt of a transfer completion message, a premises
server is transmits a provision instructing message instructing
provision of a negotiable-value to the negotiable-value
providing device. The negotiable-value providing device having
received the provision instructing message executes provision
of the negotiable-value.
Spec. 51.
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Thus, under Step 2A (i), we conclude claim 1 recites the abstract idea
of funds settlement and transfer, a method of organizing human behavior, as
discussed above.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
On this record, we are of the view that Appellant's claims do not
operate the recited generic computer components in an unconventional
manner to achieve an improvement in computer functionality. See MPEP
§ 2106.0S(a).
However, Appellant argues, and we agree:
[C]laim 1 recites a specific combination of elements that
comprises far more than mere general purpose computer
elements "recited at a high level of generality" as asserted by
the Examiner, which perform very specific operations
therebetween and which ... were heretofore unknown and
comprise an improvement in the art of wagering-type gaming
machines and wagering-type games. Hence, in addition to
comprising far more than a mere abstract idea of transferring
funds, such claim comprises an improvement in the art of
wagering-type gaming machines, recites an "inventive
concept," does not comprise any longstanding, well-known, or
fundamental concept or idea as asset forth in Alice, and does not
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purport to preempt or monopolize the building blocks of human
ingenuity. That is, the subject matter of claim 1 does not
purport to encompass the broad abstract idea of transferring
funds between computers in general, and does not purport to
preempt such practice. As set forth by the Court in Alice,
"[A]pplication[s] of such concepts to a new and useful end we
have said remain eligible for patent protection ...
[a]ccordingly, 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."
Accordingly, the assertion that the specific combination of
elements of, for example, claim 1, is no more than an abstract
idea, is improper and unsupported.
Br. 22. See also Spec. ,r 7. 16
In particular, we find that the previously-unaddressed limitation "the
handheld-type mobile user terminal device prompts input of a user
confirmation to execute a transfer of a deposit supply upon receipt of the
eight data communication signal from the wagering-type gaming machine,
and then upon input of the input user confirmation, transmits the fourth data
communication signal to the server to request the transfer of the deposit
supply," when the claim is considered as a whole, including the various
recited interactions between the recited hardware components in response to
transmission of a number of recited communication signals, integrates the
previously identified abstract idea of funds transfer into a practical
application. Even though we find this limitation does not improve the
underlying computer system functionality, e.g., improved processor or
16 "An object of the present invention is to provide a novel electronic
settlement technology which is capable of supplying a deposit immediately
so as to able to continue the play of a game even after an available deposit in
game facility has been consumed." Spec. ,r 7.
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Application 13/070,058
memory performance, in agreement with Appellant, we find it does improve
the underlying wagering-type gaming machines technology. See MPEP
§ 2106.05( a) ("Improvements to the Functioning of a Computer or To Any
Other Technology or Technical Field)"emphasis added).
Accordingly, we conclude the recited judicial exception is integrated
into a practical application as determined under one or more of the MPEP
sections cited above, such that the claim is not directed to the judicial
exception, and is thus patent-eligible under our governing case law and the
Guidance, thus ending the patent-eligibility inquiry. 17
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's conclusion that the claims
are drawn to patent-ineligible subject matter, such that we do not sustain the
§ 101 rejection of claim 1, and grouped claims 2-10, which stand therewith.
See Claim Grouping, supra.
CONCLUSION
The Examiner erred with respect to the patent-ineligible subject
matter rejection of claims 1-10 under 35 U.S.C. § 101, and we do not
sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-10.
17 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant's other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on "a
single dispositive issue").
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Application 13/070,058
REVERSED
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