Ex Parte Rielly et al

Patent Trial and Appeal Board

Feb 22, 2019

13371813 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/371,813 02/13/2012
131244 7590 02/22/2019
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
William Rielly
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.
72167.000776 1505
EXAMINER
LIU,IJUNG
ART UNIT PAPER NUMBER
3697
MAIL DATE DELIVERY MODE
02/22/2019 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,
RA VI ACHARY A,
and DMITRY GOLDMAN
Appeal2017---006598
Application 13/371,813
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
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 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed August 9, 2016) and Reply Brief ("Reply Br.," filed February 28,
2017), and the Examiner's Answer ("Ans.," mailed January 13, 2017), and
Final Action ("Final Act.," mailed May 11, 2016).
Appeal2017-006598
Application 13/371,813
1-14, 16, and 17, 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 a way that transmits financial information to a
user based on a request received from the user via a personal device.
Specification para. 18.
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, comprising;
[ 1] detecting a login request, by a processor, from a customer,
at a first financial transaction device that is operated by a
first financial institution
and
wherein the first financial transaction device comprises a
user interface and memory;
[2] identifying, by the processor, a status of the customer that
comprises identifying that
the customer is associated with the first financial
institution
and
the customer conducted a previous transaction with a
second financial transaction device operated by a second
financial institution,
wherein the second financial institution is different than
the first financial institution;
[3] requesting a profile of the customer,
the profile being based upon the customer's association
with the first financial institution;
2
Appeal2017-006598
Application 13/371,813
[ 4] analyzing, by the processor, the profile of the customer;
[5] receiving a transaction request at the first financial
transaction device from the customer;
[6] creating a message, by the processor, for the customer,
comprising information regarding
and
one or more fees associated with using the second
financial transaction device
and
avoiding the one or more fees associated with conducting
one or more additional transactions with the second
financial transaction device,
wherein the message is based on the analysis of the
profile and the association of the customer with the first
financial institution
and
wherein the message further comprises information
regarding a location of one or more additional financial
transaction devices associated with the first financial
institution that are located within a predetermined
proximity of the second financial transaction device;
[7] transmitting, by the processor, the message to a portable
electronic device associated with the customer.
Claims 1-14, 16, and 17 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
3
Appeal2017-006598
Application 13/371,813
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
STEP 1i
Claim 1, as a method claim, recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it
is directed to a judicial exception without significantly more.
STEP2
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."
2 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
4
Appeal2017-006598
Application 13/371,813
Alice Corp., Pty. Ltd. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception. If the claims are directed to a
judicial exception, then finally determining whether the claims provide an
inventive concept because the additional elements recited in the claims
provide significantly more than the recited judicial exception.
STEP 2A Prong 1
Method claim 1 recites detecting login data, identifying customer status
data, requesting and analyzing customer profile data, receiving transaction
request data, and creating and transmitting a message when the customer
data meets recited criteria. Thus, claim 1 recites receiving, analyzing,
modifying, and transmitting data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only functional results to be achieved by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
5
Appeal2017-006598
Application 13/371,813
lacking practical application, viz. mathematical concepts 3, certain methods
of organizing human interactions4, including fundamental economic
practices and business activities, or mental processes. 5
The Examiner determines the claims to be directed to
collecting and comparing known information (i.e. the steps
identifying data, requesting data, analyzing data and receiving
data) for a method, which is similar to that have been identified
as abstract by the courts, such as comparing data to determine a
risk level (Perkin-Elmer), obtaining and comparing intangible
data ( Cybersource) and comparing new and stored information
and using rules to identify options.
Final Act. 3.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in creating and transmitting a message, perceptible
only to the human mind, and absent any technological mechanism other than
a conventional computer for doing so.
3 See e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018)
4 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed.
Cir. 2018)
5 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
6
Appeal2017-006598
Application 13/371,813
As to the specific limitations, limitations 1-5 and 7 recite insignificant
receiving, analyzing, modifying, and transmitting of customer and
transaction data, which advise one to apply generic functions to get to these
results. Limitation 6 is the only step associated with performing what the
claim produces and recites "creating a message," which is simply a generic
communication. To advocate "creating a message" is conceptual advice for
results to be obtained, and not technological operations.
Although the Specification at paragraph 2 recites that the invention
relates to an automated banking machine that is dynamically updated from a
host system, the claims in this application are directed to the more narrow
portion of the Specification which describes how "the host may be
available to a personal device having a transmitter and a receiver. The
host transmits financial information to the user based on a request received
from the user via the personal device." Specification paragraph 18. Thus,
all this intrinsic evidence shows that claim 1 is directed to informing a
customer with a message, i.e. communicating with a customer. This is
consistent with the Examiner's determination.
The concept of communicating with a customer is a fundamental
business practice long prevalent in our system of commerce. The use of
communicating with a customer is also a building block of ingenuity in sales
and marketing. Thus, communicating with a customer is an example of a
conceptual idea subject to the Supreme Court's "concern that patent law not
inhibit further discovery by improperly tying up the future use of these
building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations
omitted). Claim 1 recites the idea of performing various conceptual steps
7
Appeal2017-006598
Application 13/371,813
generically resulting in the communicating with a customer. As we
determined earlier, none of these steps recite specific technological
implementation details, but instead get to this result by advising one to
determine whether a customer is one who might benefit from knowing about
alternate ATM sites and informing him if so. Thus, claim 1 is directed to
communicating with a customer, which is a fundamental business practice.
This in tum is an example of commercial or legal interactions as a certain
method of organizing human interactions because communicating with a
customer is a commercial interaction. The concept of communicating with a
customer as advised to be done by determining whether a customer is one
who might benefit from knowing about alternate A TM sites and informing
him if so is an interaction designed to get a customer to further interact with
the business. The steps recited in claim 1 are part of this interaction.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (2016) (delivering customer selected
content); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1369 (2015) (tailoring content based on customer location).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, analyzing, modifying,
and transmitting data mimic human thought processes of observation,
evaluation, judgment, and opinion, perhaps with paper and pencil, where the
data interpretation is perceptible only in the human mind. See In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
8
Appeal2017-006598
Application 13/371,813
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, and transmission and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 1 is directed to the abstract idea of
receiving, analyzing, modifying, and transmitting data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, the claims are directed
to the abstract idea of communicating with a customer by advising one to
determine whether a customer is one who might benefit from knowing about
alternate ATM sites and informing him if so.
STEP 2A Prong 2
The next issue is whether the claims not only recite, but are more
precisely directed to this concept itself or whether they are instead directed
to some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 6
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law .... At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
6 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
9
Appeal2017-006598
Application 13/371,813
[]Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[A]pplication[s]" of
such concepts " 'to a new and useful end,' " we have said,
remain eligible for patent protection .... Accordingly, in
applying the § 101 exception, 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.
Alice, 573 U.S. at 217.
The introduction of a computer into the claims does not alter the
analysis because.
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
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Id. at 223-24.
"[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." Id. at 225. They do not.
10
Appeal2017-006598
Application 13/371,813
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1-5 are pure data gathering steps. Limitations
describing the nature of the data do not alter this. Step 7 is insignificant post
solution activity, such as storing, transmitting, or displaying the results.
Step 6 recites generic computer processing expressed in functional terms to
be performed by any and all possible means and so present no more than
abstract conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation, or in how the processing
technologically achieves those results.
Viewed as a whole, Appellants' method claims simply recite the
concept of communicating with a customer as performed by a generic
computer. To be sure, the claims recite doing so by advising one to
determine whether a customer is one who might benefit from knowing about
alternate ATM sites and informing him if so. But this is no more than
abstract conceptual advice on the parameters for communicating with a
customer, and the generic computer processes necessary to apply those
parameters, without reciting 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. The Specification spells out
11
Appeal2017-006598
Application 13/371,813
different generic equipment 7 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of data transmission under different scenarios. They
do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of communicating with a
customer by advising one to determine whether a customer is one who might
benefit from knowing about alternate ATM sites, and informing him if so
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
7 The Specification describes an ATM, kiosk, point of sale device at a
merchant, a self check-out device at a merchant, ticket issuing device at
subway or airport, gas pump or other similar kiosk type devices that
provides services via a card similar to an ATM. Spec. para. 35.
12
Appeal2017-006598
Application 13/371,813
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to advising one to determine
whether a customer is one who might benefit from knowing about alternate
A TM sites and informing him if so to achieve the functional result of
communicating with a customer as distinguished from a technological
improvement for achieving or applying that result. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether the claims provide an inventive concept
because the additional elements recited in the claims provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and transmitting data amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). None of
these activities are used in some unconventional manner nor do any produce
13
Appeal2017-006598
Application 13/371,813
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method claims add nothing that is not already present when the
steps are considered separately. The sequence of data reception-analysis-
modification-transmission is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(sequence of processing, routing, controlling, and monitoring). The ordering
of the steps is therefore ordinary and conventional.
We conclude that the claims do not provide an inventive concept
because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception.
14
Appeal2017-006598
Application 13/371,813
REMAINING CLAIMS
The remaining method claims merely describe process parameters.
We conclude that the method claims at issue are directed to a patent-
ineligible concept itself, and not to the practical application of that concept.
There are no structural claims. As a corollary, the claims are not directed to
any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of
communicating with a customer, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2---6 and Answer 2-9 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that
The Office maintains that the cited cases of PerkinElmer8,
Cybersource9, and Smartgene10 is proper as each allegedly
8 PerkinElmer, Inc. v. Intema Ltd., 496 Fed. Appx. 65 (Fed. Cir. 2012).
15
Appeal2017-006598
Application 13/371,813
"provides a proper analogy to the claims at issue." Answer, pp.
2-3. However, the Office has ignored the scope of the present
claims by focusing only on certain elements of the claims.
Further, the Office has ignored the claims of the cited cases
because none of the three cited cases provides a viable analogy
to the present claims as described by Appellant in its Appeal
Brief.
Reply Br. 1-2. As to whether the Examiner ignored the claim scope, we
determine the scope of what the claims are directed to supra based on
intrinsic evidence. Although the claims are in the context of a financial
transaction device transaction, the claims do not rely on the structure of the
ATM, but only on data perceptible only to the human mind concerning a
user and sending a message, again perceptible only to the human mind, to
the user. Limitations discemable only in the human mind have no patentable
weight. See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
PerkinElmer, although a medical claim, similarly analyzed data to
produce a result for communication. At least the result was not so abstract
there, as it conveyed the result of a scientific principle based on natural
properties. The location of some ATM is far more abstract, being some
arbitrary address text based on whoever street names are created.
Cybersource, is closer to the instant claims in being directed to
conveying information regarding financial products, in this case credit cards.
9 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011)
10 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 Fed. Appx.
950 (Fed. Cir. 2014)
16
Appeal2017-006598
Application 13/371,813
As with PerkinElmer, the claims analyzed data to produce a result for
communication. The nature of the data regarded validity, itself an abstract
concept whose meaning is discemable only to the human mind.
Smartgene held up Cybersource as stating that "this court held that
section 101 did not embrace a process defined simply as using a computer to
perform a series of mental steps that people, aware of each step, can and
regularly do perform in their heads." Smartgene, 555 Fed. Appx. 950 at
954. Although reciting medical claims, Smartgene similarly analyzed data
to produce a result for communication. As with the instant claims, the
Smartgene claims produced advisory data.
We are not persuaded by Appellants' argument that
The Office focuses in on only particular claim elements,
such as "analyzing a profile." Answer, p. 3. These elements
are focused on in a vacuum, divorced from the context of the
claim. In fact, the Office relies primarily upon this element
("analyzing profile") in its analysis of the claims and
comparison to the various cases it cites. In doing so, the
Office can hardly have considered the claim as a whole,
despite its position to the contrary. Indeed, the Office
discounts Appellant[ s'] arguments regarding the Office's
failure to consider the claims as a whole.
Reply Br. 2-3. As discussed, the claim as a whole recites detecting login
data, identifying customer status data, requesting and analyzing customer
profile data, receiving transaction request data, and creating and transmitting
a message when the customer data meets recited criteria. Thus, claim 1
recites receiving, analyzing, modifying, and transmitting data. None of the
limitations recite implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means.
17
Appeal2017-006598
Application 13/371,813
Claims involving data collection, analysis, and display are directed to an
abstract idea. See Elec. Power Grp. v. Alstom S.A., supra. As to the context,
"the Supreme Court and this court have repeatedly made clear that merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016).
We are not persuaded by Appellants' following argument:
To the extent that the claims may recite an abstract idea, the
claims recite significantly more. The claims recite physical
devices, that interact, transform data into a different state or
thing, and solve a technological problem. Each of these
recitations is sufficient to establish patentability of the subject
matter.
Reply Br. 3. Simply reciting devices used for their ordinary purpose does
not transform an abstract idea. "When claims like the Asserted Claims are
directed to an abstract idea and merely require generic computer
implementation, they do not move into section 101 eligibility territory."
Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1374 (Fed. Cir. 2017). Data transformation is part and parcel of what
every generic computer does. Indeed this defines the purpose of general
purpose computers.
We are not persuaded by Appellants' argument that "because a claim
may recite a generic computer or a generic device does not automatically
invalidate the claim under § 101. It is how such devices are used, arranged,
and what functions the devices perform that matter." Reply Br. 3. We agree
18
Appeal2017-006598
Application 13/371,813
with the principle, but it is inapplicable here. The claim does not recite the
use of an ATM per se, and recites the use of a financial transaction device
only for its conventional use as a transaction entry device. That the steps
happen to be performed by the same processor is of little consequence, as
there is no recited technological advantage, other than simply being present,
for the use of the same processor. The issue is whether meaningful
limitations are recited.
Nor does the claims' recitation of "present[ing] [offers] to
potential customers" and "gathering ... statistics generated
during said testing about how the potential customers
responded to the offers" provide a meaningful limitation on
the abstract idea. These processes are well understood, routine,
conventional data-gathering activities that do not make the
claims patent eligible. . .. Like the claims in Mayo, which
added only the routine steps of administering medication and
measuring metabolite levels for the purposes of determining
optimal dosage, here the addition of steps to test prices and
collect data based on customer reactions does not add any
meaningful limitations to the abstract idea.
OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363-1364
(Fed. Cir. 2015).
We are not persuaded by Appellants' argument that
regardless, of whether a generic computer and a generic device
(see Answer, p. 5) is recited, the claim defines the interaction
between these two different devices that is both novel and non-
obvious given the lack of prior art rejections. This interaction is
clearly beyond any human mental capability or pen and paper
solution. It is clear that the Office has clearly failed to consider
the elements in combination as required.
Reply Br. 4. The issue is eligibility of abstract subject matter, not novelty
or obviousness. "[A] claim for a new abstract idea is still an abstract idea.
19
Appeal2017-006598
Application 13/371,813
The search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty." Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d
1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellants' argument that
the claims recite specific, physical devices. Claim I recites, for
example, "a processor", "a first financial transaction device," "a
second financial transaction device," and "a portable electronic
device." Claim I further requires a "user interface." The Office ignores
these elements and fails to address how physical elements such as
these can be abstract or can be replaced by a human mental processes
or even pen and paper. The interaction of these physical devices is
recited. For example, the first financial transaction device, and the
portable electronic device interact through the transmitting of the
message from the first financial transaction device to the portable
electronic device.
Reply Br. 4. All of the steps are merely recited as being performed by
equipment. All of the steps could be done mentally in a different context.
Again, context does not alter the analysis. See supra. Data reception,
analysis, and transmission have been performed without equipment since the
dawn of recorded history, indeed the recordation of history requires it.
We are not persuaded by Appellants' argument that "the claims satisfy
the machine or transformation test." Id. This repeats the transformation
argument supra and is equally unpersuasive here.
We are not persuaded by Appellants' argument that "the claims address a
technological problem." Id. The claims address an information need, not a
technological problem. The claims do no more than inform a customer as to
a fee differential and an address where a financial transaction device may be
found.
20
Appeal2017-006598
Application 13/371,813
CONCLUSIONS OF LAW
The rejection of claims 1-14, 16, and 17 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 1-14, 16, and 17 under 35 U.S.C. § 101 is
affirmed.
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
21