Ex Parte Rielly et alDownload PDFPatent Trial and Appeal BoardNov 27, 201712967695 (P.T.A.B. Nov. 27, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 72167.000735 1040 EXAMINER LIU, I JUNG ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 12/967,695 12/14/2010 7590 Hunton & Williams LLP/JPMorgan Chase Intellectual Property Department 2200 Pennsylvania Avenue, NW Suite 800 Washington, DC 20037 William RIELLY 11/27/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM RIELLY, LESLIE D. EHRLICH, RAVI ACHARYA, and DMITRY GOLDMAN Appeal 2016-001707 Application 12/967,695 Technology Center 3600 Before ANTON W. FETTING, BIBHU R. MOHANTY, and BRADLEY B. BAYAT, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 William Rielly, Leslie D. Ehrlich, Ravi Acharya, and Dmitry Goldman (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1, 2, 4, 5, 7—9, 18, 19, and 22—31, the only claims pending in the 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed March 27, 2015) and Reply Brief (“Reply Br.,” filed November 23, 2015), and the Examiner’s Answer (“Ans.,” mailed September 22, 2015), and Final Action (“Final Act.,” mailed November 13, 2014). Appeal 2016-001707 Application 12/967,695 application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a way of using an automated banking machine. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method of operating an Automated Teller Machine (ATM) comprising: receiving, by at least one computer processor, a communication from a portable electronic device associated with a user; logging the user into the ATM, without using a card, using information contained in the communication; identifying a home bank of the user wherein the home bank of the user is at least one bank or financial institution through which the user maintains at least one account or which provides financial services to the user; requesting, by the ATM, a user’s profile, wherein the profile comprises information about the home bank of the user and a set of at least one selected user preference; receiving the user’s profile at the ATM; storing the user’s profile; detecting a hardware event associated with one or more hardware portions of the ATM, wherein the hardware event is at least in part associated with an operational change of a hardware portion such that a specific function is unable to be performed by the ATM; and modifying or personalizing functions, by the at least one computer processor, presented to the user via the ATM based upon the user’s profile, the set of at least one selected user 2 Appeal 2016-001707 Application 12/967,695 preference, the detected hardware event, and on the home bank of the user. Claims 1, 2, 4, 5, 7—9, 18, 19, and 22—31 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. ISSUES The issues of eligible subject matter turn primarily on whether the claims are directed to more than abstract conceptual advice as to what results should be programmed into a conventional ATM. ANALYSIS The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, “[wjhat else is there in the claims before us?” [] To answer that question, [] consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” 3 Appeal 2016-001707 Application 12/967,695 Alice Corp. Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 73-79 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-concept. The Examiner finds the claims to be directed to performing a money transfer. Final Act. 2. While the Court in Alice made a direct finding as to what the claims were directed to, we find that this case’s claims themselves and the Specification provide enough information to inform one as to what they are directed to. The preamble to claim 1 recites that it is method of operating an automated teller machine (ATM). The steps in claim 1 results in some ATM function not being able to be performed. The Specification at paragraph 2 recites that the invention relates to an automated banking machine that is dynamically updated from a host system. This is not directly pertinent to the claims at issue. The Specification at paragraph 16 is more pertinent in describing a user profile being requested and the functions presented to the user being modified in response to the profile. Thus, all this evidence shows that claim 1 is directed to operating an ATM so that some function is not operable, i.e., narrowing options in financial transactions. It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are directed to an abstract idea. Like the risk hedging in Bilski, the concept of narrowing options in financial transactions is a fundamental informational practice long 4 Appeal 2016-001707 Application 12/967,695 prevalent in our system of commerce. The use of narrowing options in financial transactions is also a building block of the banking industries. Thus, narrowing options in financial transactions, like hedging, is an “abstract idea” beyond the scope of §101. See Alice, 134 S. Ct. at 2356. As in Alice, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of risk hedging in Bilski and the concept of narrowing options in financial transactions at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. See Alice, 134 S. Ct. at 2357. The remaining claims merely describe the parameters employed and message characteristics. We conclude that the claims at issue are directed to a patent-ineligible concept. The introduction of a computer into the claims does not alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply if” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional 5 Appeal 2016-001707 Application 12/967,695 feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 134 S. Ct. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to log in, identify data associated with a user, and control functions on a menu display amounts to electronic data query and retrieval— one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants’ method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants’ method claims simply recite the concept of narrowing options in financial transactions as performed by a generic computer. To be sure, the claims recite doing so by advising one to log in to an ATM with some device other than a card, request information about the customer, and react to how the customer is using the ATM to keep some function from being performed. But this is no more than abstract conceptual advice on the parameters for such ATM login 6 Appeal 2016-001707 Application 12/967,695 and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of displaying menus using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 134 S. Ct. at 2360. As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “wam[ed] ... against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Alice, 134 S. Ct. at 2360. The claim as drafted is so broad as to literally encompass a conventional ATM modified to accept a wireless token message instead of a card within its scope. Detecting a hardware event associated with one or more hardware portions of the ATM, wherein the hardware event is at least in part associated with an operational change of a hardware portion such that a specific function is unable to be performed by the ATM is the software in the ATM connecting the ATM keypad to the processor and interpreting the first menu choice as to which type of transaction is to be selected. Pressing a keyboard button creates a hardware event associated with the keyboard. 7 Appeal 2016-001707 Application 12/967,695 The key press hardware event that selects a transaction type is at least in part associated with an operational change of a keyboard and cash till hardware portion such that a specific function such as cash input or output is unable to be performed by the ATM for a transaction that would not require it. Modifying the functions presented to the user in response to the received parameters is the software that drive the menu display based on the initial transaction selection, which is predicated on the user profile that indicates the scope of available services, such as commercial or personal. No particular implementation or manner of such modifying is recited, so the conventional software that takes all of the recited parameters in prior to making the menu display is within the scope. There is not even a requirement that any of the modifications be perceptible and may be no more than a path leading to a function. We are not persuaded by Appellants’ argument that the alleged abstract idea is not recited by the claims. App. Br. 4. The Examiner’s finding that the claims are directed to money transfers is simply a finding that the claims are directed to ATM functions, among which are money transfers. As the claims recited some function being not able to be performed, the claims are clearly directed to ATM functions, which are financial operation functions. We are not persuaded by Appellants’ argument that the claims recite elements that are “significantly more” than the alleged abstract idea. App. Br. 5. Appellants contend that “the claimed embodiments solve a problem that is particular to ATM systems (preventing the display of functions unable to be performed) and necessarily rooted in computer technology to 8 Appeal 2016-001707 Application 12/967,695 overcome a problem specifically arising in the realm of ATM devices.” Id. First, there is nothing about preventing the display of functions unable to be performed unique to ATM’s. This is common sense, performed as a matter of routine by actual people performing duties by simply not offering to perform that which cannot be performed, and notoriously practiced for decades by menu navigational systems listing only pertinent possible choices for selection. Second, Appellants contend that the claim recites improvements in the ATM’s functioning by modifying particular functions based on a detected hardware event. Id. But the claims do not recite any particular implementation for such modification. The claims only recite the abstract idea to do so. As we also find supra, this advice is recited so broadly it reads on conventional ATM programming. The recital of hardware events is so broad as to encompass notoriously well-known hardware events such a keyboard activations that have long been used for system navigation. Thus, the claims encompass abstract conceptual advice to use known ATM technology in its ordinary manner. We are not persuaded by Appellants’ argument that the claims recite an inventive concept that is novel and non-obvious. App. Br. 6. As we find supra, this advice is recited so broadly it reads on conventional ATM programming. Whether analyzed individually or as an ordered combination, the claims recite conventional elements at a high level of generality and do not constitute an inventive concept. See In re TLI Commc ’ns LLC v. Automotive, L.L.C., 823 F.3d 607, 614—15 (Fed. Cir. 2016) (cataloguing cases finding ineligibility under Alice step two where the claims recited “well-understood, routine, conventional activities previously known to the 9 Appeal 2016-001707 Application 12/967,695 industry” (internal quotation marks, brackets, and citation omitted)). Without more, the representative claims fail to recite an inventive concept under Alice step two. The novelty of the algorithm does not determine whether the claim recites an inventive concept. Instead, the inventive concept must “transform” the patent ineligible algorithm into a “patent- eligible application” of the algorithm, and do so by more than merely implementing the algorithm on a generic computer. Alice, 134 S. Ct. at 2355. The asserted claims fail to do so here. We are not persuaded by Appellants’ argument that the claims do not preempt any abstract ideas. App. Br. 7. That the claims do not preempt all forms of the abstraction or may be limited to the abstract idea in the ATM setting do not make them any less abstract. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015). CONCLUSIONS OF LAW The rejection of claims 1, 2, 4, 5, 7—9, 18, 19, and 22—31 under 35 U.S.C. § 101 as directed to non-statutory subject matter is proper. DECISION The rejection of claims 1, 2, 4, 5, 7—9, 18, 19, and 22—31 is affirmed. 10 Appeal 2016-001707 Application 12/967,695 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 11 Copy with citationCopy as parenthetical citation