Ex Parte Rielly et alDownload PDFPatent Trial and Appeal BoardNov 27, 201712873403 (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. 72167.000723 5253 EXAMINER LIU, I JUNG ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 12/873,403 09/01/2010 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 2016-001574 Application 12/873,403 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 35U.S.C. § 134 of a final rejection of claims 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed April 20, 2015) and Reply Brief (“Reply Br.,” filed November 23, 2015), and the Examiner’s Answer (“Ans.,” mailed October 1, 2015), and Final Action (“Final Act.,” mailed November 21, 2014). Appeal 2016-001574 Application 12/873,403 34 and 39-47, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented an automated banking machine that is dynamically updated from a host system. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 34, which is reproduced below (bracketed matter and some paragraphing added). 34. An Automated Teller Machine (ATM) comprising: [1] a display; [2] a log-in device to receive interaction from a user comprising a log-on action without using a card; [3] a host for identifying a home bank of the user based on the log-in action 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, wherein the host further identifies and transmits a user’s profile wherein the user’s profile comprises information about the home bank of the user and a set of at least one user selected preference; [4] an interface communicatively coupled to the display, the interface 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 2 Appeal 2016-001574 Application 12/873,403 such that a specific function is unable to be performed by the ATM; [5] a server communicatively coupled to the display and the interface, the server controlling the functions presented to the user on the display by modifying the functions presented to the user in response to the received user’s profile, the home bank of the user, the detected hardware event, and one or more business rules that are executed against the received user’s profile and wherein the functions presented relate to conducting financial transactions at the ATM; and [6] a memory coupled to the server, the memory having contents comprising the received user’s profile. Claims 34 and 39-47 stand rejected under 35U.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. 3 Appeal 2016-001574 Application 12/873,403 ANALYSIS As a matter of claim construction, claim 34 recites an Automated Teller Machine (ATM) comprising: .... Thus, the claim is to a single machine, i.e., an ATM. The server in limitation 4 is therefore not a separate device, but is within the single machine. 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, “[w]hat else is there in the claims before us?” [] To answer that question, [] consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. 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-ineligible concept. The Examiner finds the claims to be directed to controlling functions presented to the user on the display. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception 4 Appeal 2016-001574 Application 12/873,403 because ATM as recited is a generic computer component that performs functions (i.e., receives data and transmits data) that are well-understood, routine, and conventional activities previously known to the industry. The claim also recites an ATM, which do not add meaningful limitations to the idea of controlling functions presented to the user on the display beyond generally linking the system to a particular technological environment, that is, implementation via computer. The claim does not amount to significantly more than underlying abstract idea of controlling functions presented to the user on the display. Ans. 2—3. 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 34 recites that it is an automated teller machine (ATM). The processing performed by the ATM in claim 34 results in modifying the display of which functions are presented. The Specification at paragraph 2 recites that the invention relates to an automated banking machine that is dynamically updated from a host system. Thus, all this evidence shows that claim 34 is directed to dynamically changing an ATM display, i.e., displaying menus. It follows from prior Supreme Court cases, 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 concept of hedging risk in Bilski, the concept of displaying menus is a fundamental informational practice long prevalent in our system of commerce. The use of displaying menus is also a building 5 Appeal 2016-001574 Application 12/873,403 block of the service industries. Thus, displaying menus, 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 displaying menus 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 it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the 6 Appeal 2016-001574 Application 12/873,403 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 displaying menus as performed by a generic computer. 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. 7 Appeal 2016-001574 Application 12/873,403 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. At first glance, the fact that the claims are recited as being automated teller machines would suggest the claims are directed to a machine more specialized than a generic computer. But the claims are directed to generic ATM’s. Using an ATM to display menus is done only for its generic intended purpose. See In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 612—613 (Fed. Cir. 2016) (Using a generic telephone for its intended purpose was a well-established “basic concept” sufficient to fall under Alice step 1.) As the Examiner finds, claim 34 is no more than conceptual advice to have some software referred to as a server within a conventional ATM control its display. Absent any implementation details, the claim is a wish list on how the display should result. The claim as drafted is so broad as to literally encompass a conventional ATM within its scope. The display is the ATM screen, the log in device to receive interaction from a user comprising a log-on action without using a card is the ATM keyboard. Typing in a PIN is a log-on action without using a card. The host for identifying a home bank of the user based on the log-in action wherein the home bank of the user is at least one bank or financial 8 Appeal 2016-001574 Application 12/873,403 institution through which the user maintains at least one account or which provides financial services to the user is the account look-up portion of ATM software that interprets the account number entered to identify such a bank at which the account is maintained. The interface communicatively coupled to the display, the interface 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 keypad to the display 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. 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. The server communicatively coupled to the display and the interface, the server controlling the functions presented to the user on the display by 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. 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. And as we find supra, the 9 Appeal 2016-001574 Application 12/873,403 server as such is software within the ATM as the entire claim is a single ATM device. The memory is simply the ATM memory. We are not persuaded by Appellants’ argument that the Office has not established a prima facie case of unpatentability. App. Br. 2—3. As we find supra, the claims are no more than abstract conceptual advice on results to be achieved by some unrecited implementation within a conventional ATM. We are not persuaded by Appellants’ argument that the claims recite elements that are “significantly more” than the alleged abstract idea. App. Br. 3—5. 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. We are not persuaded by Appellants’ argument that the claims recite an inventive concept that is novel and non-obvious. App. Br. 5. 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, 823 F.3d at 614—15 (cataloguing cases finding ineligibility under Alice step two where the claims recited “well-understood, routine, conventional activities previously known to the industry” (internal quotation marks, brackets, and citation omitted)). Without more, the representative claims fail to recite an 10 Appeal 2016-001574 Application 12/873,403 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. 5—6. 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). Appellants contend that the claims contain sufficient meaningful elements that any judicial exception is in no way entirely preempted. Id. “Adding one abstract idea ... to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017). CONCLUSIONS OF LAW The rejection of claims 34 and 39-47 under 35U.S.C. § 101 as directed to non-statutory subject matter is proper. DECISION The rejection of claims 34 and 39-47 is affirmed. 11 Appeal 2016-001574 Application 12/873,403 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 12 Copy with citationCopy as parenthetical citation