Ex Parte Patnaik et al

Patent Trials and Appeals Board

May 13, 2019

13755103 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/755, 103
107681 7590
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
01/31/2013
05/15/2019
FIRST NAMED INVENTOR
Priyamvada Patnaik
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.
12-1904 ( l 592.205US 1) 2027
EXAMINER
AN,IGTAI
ART UNIT PAPER NUMBER
4142
NOTIFICATION DATE DELIVERY MODE
05/15/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRIY AMV ADA P ATNAIK and
RUSSELL PRUITT HERRINGTON, Jr. 1
Appeal2018-003357
Application 13/755,103
Technology Center 3600
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 8, 10-13, 15, 19, and 21, all the
pending claims in the present application (see Claims Appendix). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to techniques for transaction
quantity control (see Abstract).
1 Appellants name NCR Corporation as the real party in interest (App. Br. 2).
Appeal2018-003357
Application 13/755,103
Claim 1 is illustrative:
1. A processor-implemented method for transaction quality
control, the method programmed in memory and/or a non-transitory
computer-readable storage medium as executable instructions that
executes on one or more hardware processors of a physical device
configured to execute the method, comprising:
detecting, on the device, an item listed in a transaction having a
quantity value greater than 1, wherein the transaction is associated
with a consumer buying multiple items from an enterprise;
defining, on the device, the item and the quantity value as a
container object;
identifying, on the device, a price adjustment for the item; and
dynamically splitting and cloning, on the device and during the
transaction, the container object into one or more cloned container
objects based on properties that define when the item is to be split on
two or more independent line entries, on the device and during the
transaction, and using the container object and the one or more cloned
container objects for outputting two or more independent line entries
for the item of the transaction, each independent line entry represented
by the container object or a particular one of the one or more cloned
container objects, and wherein at least one line entry applying all or a
portion of the price adjustment and at least one other line entry having
no price adjustment, and wherein each line entry and its supporting
details presented for inspection during the transaction on a display of
the device, and each line entry having a specific quantity and different
prices based on whether the price adjustment was applied or not
applied thereby providing transaction quality control, and dynamically
presenting changes made for the transaction on the display for
viewing in real time by the consumer and a cashier during the
transaction.
Appellants appeal the following rejection:
Claims 1, 8, 10-13, 15, 19, and 21 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter (Final Act. 3-10).
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Application 13/755,103
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
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. E.g., Alice Corp. v. CLS Bankint'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 the 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
in petitioners' application explain the basic concept of hedging, or protecting
against risk."). For example, 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,
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Application 13/755,103
594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
69 (1972)).
Recently, the USPTO published revised guidance on the application
of§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under the
Revised Guidance "Step 2A," the office first looks 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 MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51-52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance "Step 2B") look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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. 84 Fed. Reg. at 56.
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Appeal2018-003357
Application 13/755,103
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong 1
With respect to independent method claims 1 and 15, and similarly,
system claim 19, the Examiner determines that the claims are directed to the
abstract idea of "identifying discount items and splitting line item and
applying [a] discount" (Final Act. 5), which the Examiner concludes, and we
agree, is "a fundamental economic practice" (id.) e.g., detecting an item
listed in a transaction ... identifying a price adjustment ... and splitting
transaction into two or more independent line entries (see claim 1 ), which is
akin to certain methods of organizing human activity.
The Specification discloses:
Techniques for transaction quantity control are provided. A
transaction having multiple purchases for a same item type and having
an adjustment in price is identified. An analysis on an adjustment
condition results in dynamic splitting a line entry for the item into
multiple sets, each set reflect a different aspect of the adjustment
condition and a quantity identifier; and the sets together completely
representing the adjustment condition.
Abstract.
Claim 1 recites at least the following limitations: (1) "detecting ... an
item listed in a transaction," (2) "defining ... a container object" (3)
"identifying ... a price adjustment," (4) "dynamically splitting and cloning
... the container object," and (5) "dynamically presenting changes." These
limitations, under their broadest reasonable interpretation, recite
fundamental economic practice related to at least sales activities or
behaviors because the limitations all recite operations that would ordinarily
take place in a commercial environment. Alice, 573 U.S. at 219-20
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( concluding that use of a third party to mediate settlement risk is a
"fundamental economic practice" and thus an abstract idea); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378-79 (Fed.
Cir. 2017) (holding that concept of "local processing of payments for
remotely purchased goods" is a "fundamental economic practice, which
Alice made clear is, without more, outside the patent system."); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015)
( concluding that claimed concept of "offer-based price optimization" is an
abstract idea "similar to other 'fundamental economic concepts' found to be
abstract ideas by the Supreme Court and this court.").
Appellants do not directly challenge the Examiner's determination
that the claims are directed to an abstract idea, but instead make arguments
more directly related to integrating the judicial exception into a practical
application and whether specific limitations are not well-understood, routine,
conventional activity in the field. Such arguments will be addressed below.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 is directed to an abstract idea, which we conclude is
certain methods of organizing human activity, e.g., a fundamental economic
principle.
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Step 2A-Prong 2 (integration into Practical Application) i
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)).
We discern no additional element ( or combination of elements)
recited in Appellants' representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54--55 ("Prong 2"). For example, Appellants' claimed additional elements
( e.g., "a physical device," "hardware processors," and "a display") do not:
(1) improve the functioning of a computer or other technology; (2) are not
applied with any particular machine ( except for a generic computer); (3) do
not effect a transformation of a particular article to a different state; and (4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a}-(c), (e}-(h).
Appellants contend that the claims "improves the capabilities
associated with conventional display processing by extending and enhancing
such existing capabilities" (App. Br. 9) and "improve the technological
processes associated with transaction processing" (id.) and thus are
analogous to the claims in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27-32.
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Application 13/755,103
(Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016) (id.).
In response, the Examiner concludes, and we agree, that "[t]he current
claims at issue do not make improvement on conventional display
processing ... [and] does not make the technological improvement in
transaction processing ... [i]t is [merely] a business implementation using
computers as tools" (Ans. 3--4).
In Enfzsh, for example, the Federal Circuit relied on the distinction
made in Alice between computer functionality improvements and uses of
existing computers as tools in aid of processes focused on "abstract ideas."
See Enfzsh, 822 F.3d at 1335-36 ("[T]he first step in the Alice inquiry in this
case asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities (i.e., the self-referential table for a
computer database) or, instead, on a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool."); see also Alice,
273 U.S. at 216.
However, the present case is different from Enfzsh because the focus
of the claims are not on an improvement in computers or upon an innovative
way to use computers or other devices, but is focused on an independently
abstract idea that uses generic and routine equipment as tools; that abstract
idea is represented in the steps of identifying items, splitting line items, and
applying discounts. That is, the arguably innovative technique of the
appealed claims is inextricably a part of the abstract idea akin to certain
methods of organizing human activity. Moreover, nothing in the claims,
understood in light of the Specification, requires anything other than an off-
the-shelf, conventional computer used for detecting, defining, identifying
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and outputting various information/data; anything other than an off-the-
shelf, conventional display used for displaying changes to the data.
Therefore, unlike in Enfzsh, the claims are directed not to improvement in
computer capabilities, but to the results of applying an abstract idea.
Also, in McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a "technological improvement over
the existing, manual 3-D animation techniques" through the "use of limited
rules specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313 ( citations
omitted). In contrast, here, Appellants have not identified any analogous
improvement attributable to the claimed invention. Although providing
techniques for transaction quantity control may improve a business process,
it does not achieve an improved technological result. We see no parallel
between the limiting rules described in McRO and the results-based rules
recited in Appellants' claims.
Regarding Appellants' contention that "the claims as presented are not
preemptive of transaction processing technologies" (App. Br. 9), we note
that although pre-emption "might tend to impede innovation more than it
would tend to promote it, 'thereby thwarting the primary object of the patent
laws"' (Alice, 573 U.S. at 217 ( citing Mayo, 566 U.S. at 77)), "the absence
of complete preemption does not demonstrate patent eligibility" (Ariosa
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Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Moreover, because we find the claimed subject matter covers patent-
ineligible subject matter, the pre-emption concern is necessarily addressed.
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, [] preemption concerns are fully
addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application.
Alice/May~tep 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any "inventive concept" or adds anything
"significantly more" to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an "inventive concept" under Alice step 2 can be evaluated based
on 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 Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellants contend "that the lack of art rejections demonstrates
novelty and demonstrates processing that necessarily has to be
unconventional" (App. Br. 10). However, a finding of novelty or non-
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obviousness does not require the conclusion that the claimed subject matter
is patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or nonobviousness, but, rather, is a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.'" Alice, 573 U.S. at 216. "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).
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. 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.").
Furthermore, we find no element or combination of elements recited
in Appellants' claim 1 that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept into a patent-
eligible application. As we explained above, the claim language and
Specification indicate that the claimed limitations are performed using a
conventional computer and processor.
Because Appellants' independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not "well-
understood, routine, and conventional," we sustain the Examiner's rejection
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of the claims 1, 8, 10-13, 15, 19, and 21 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter in light of Alice, its' progeny, and
the Revised Guidance.
DECISION
We affirm the Examiner's§ 101 rejection of claims 1, 8, 10-13, 15,
19, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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