Nayler, Jeff et al.

Patent Trials and Appeals Board

Oct 8, 2019

14090503 - (D) (P.T.A.B. Oct. 8, 2019)

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.
14/090,503 11/26/2013 Jeff Nayler 12-2916 5234
107681 7590 10/08/2019
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
10/08/2019 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 JEFF NAYLER, RICHARD PALMER and
MICHAEL CAMACHO1
_____________

Appeal 2018-008195
Application 14/090,503
Technology Center 3600
______________

Before ROBERT E. NAPPI, JASON V. MORGAN, and
JOYCE CRAIG, Administrative Patent Judges.

NAPPI, 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 through 3, 5 through 13, and 15 through 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The invention is directed to a system for managing customer self-
service terminals that includes a management terminal with a display

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as NCR Corporation.
App. Br. 2.
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indicating that assistance is needed at a particular customer terminal.
Abstract. Claim 1 is illustrative of the invention and is reproduced below:
1. A system for managing customer self-service terminals, the
system comprising:
a plurality of customer self-service terminals;
one or more mobile management devices each
containing at least one hardware processor and a display,
and each hardware processor configured to directly
communicate with each of the plurality of customer self-
service terminals over a wireless network, each customer
self-service terminal operated by a unique customer,
display representative images of each of the customer
self-service terminals, and display an indication in one of
the representative images that assistance is needed at a
particular corresponding customer terminal of the
plurality of customer self-service terminals, wherein the
indication is a length of time that a particular customer
has been conducting a self-service transaction, wherein
the particular corresponding customer terminal is
operated by the particular customer for conducting the
self-service transaction and each of remaining ones of
remaining customer self-service terminals operated by
other customers conducting other self-service
transactions, and each of the mobile management devices
configured to remotely control functions of particular
corresponding customer terminal when providing
assistance to the particular customer.
App. Br. 14 (Claims Appendix).

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REJECTION AT ISSUE
The Examiner has rejected claims 1 through 3, 5 through 13, and 15
through 21 under 35 U.S.C. § 101 for being directed to patent-ineligible
subject matter. Final Act. 3–6.2

PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. 66, 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See id. 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. Kappos, 561 U.S. 593, 611

2 Throughout this Opinion, we refer to the Appeal Brief, filed April 27,
2018 (“App. Br.”), the Reply Brief, filed August 13, 2018 (“Reply Br.”), the
Examiner’s Answer, mailed June 12, 2018 (“Answer”), and the Final Office
Action, mailed November 28, 2017 (“Final Act.”).
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(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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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 (1853))); 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 that 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. at 191 (citing Benson and Flook); see, e.g., id. at 187 (“It
is now commonplace that an application of a law of nature or mathematical
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formula to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn 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 (citation 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.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we
first look to whether the claim is directed to a judicial exception because:
(1) the claim recites a judicial exception, 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) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h) (9th ed. 2018).
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:
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(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.
See Memorandum.

ANALYSIS
Abstract Idea.
The Examiner concludes that the claims are not patent eligible as they
are directed to a judicial exception without reciting significantly more. Final
Act. 4–6. Specifically, the Examiner provides an analysis of Appellant’s
claims, finding that they recite limitations directed to a fundamental
economic practice and collecting information, organizing it and displaying
the results (a mental process). Final Act. 4–5. Further, the Examiner
concludes that the claims, in addition to the abstract idea, merely recite
generic components of terminals, such as automated teller machines, ticket
vending machines airline checking terminals and tablet computers. Final
Act. 6 (citing paras. 4, 11, and 12 of Appellant’s Specification). The
Examiner states:
the elements involved in the recited process undertake their roles in
performance of their activities according to their generic
functionalities which are well-understood, routine and conventional.
The elements together execute in routinely and conventionally
accepted coordinated manners and interact with their partner elements
to achieve an overall outcome which, similarly, is merely the
combined and coordinated execution of generic computer
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functionalities which are well-understood, routine and conventional
activities previously known.
Final Act. 6
Appellant argues the Examiner’s rejection is in error as the claims
recite an improvement in technology or computer based device capabilities.
App. Br. 8–10. Appellant argues that the claims are similar to those at issue
in Visual Memory LLC v. NVIDIA Co. 867 F.3d 1253 (Fed. Cir. 2017),
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) and Core Wireless Licensing S.A.R.L. v. LG Electronics Inc., 880 F.3d
1356 (Fed. Cir. 2018) where the “claims were deemed non-abstract because
they provided feature function to the computers that did not exist.” App. Br.
10; Reply Br. 2–3. Appellant asserts the functionality of the claims is
directed to an interface as is unambiguous from the Specification. Reply Br.
2. Further, Appellant states:
[T]the claims are not directed to the result (remote assistance);
rather, the claims are specifically directed to processing and
processing context that allows for identifying a customer
terminal and a length of wait for said customer for assistance
through displaying of a limited and specific data and remote
control functions for providing customer assistance. In fact, the
vast majority of all the claim language is directed to the process
for how and when assistance is provided and not the effect of
remote assistance.
App. Br. 11. (citing to MCRO). Appellant also asserts that the claims are
similar to those at issue in Enfish, LLC v Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016) as they “recite a specific means or method for identifying,
displaying, and performing remote customer assistance on a network of
terminals and devices.” App. Br. 11. Appellant differentiates their claims
from those at issue in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
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1350 (Fed. Cir. 2016) as the claims recite an improvement in computers as
tools. App. Br. 11
The Examiner determined that the claims recite steps relating to
managing interpersonal activities (similar to those found abstract in
buySAFE v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)) and steps of
collecting information, analyzing it delivering it to users (similar to those
found abstract in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016) and Affinity Labs of Texas, LLC v. Amazon.com Inc., 838
F.3d 1266 (Fed. Cir. 2016)). Answer 4; Final Act. 5. Further, in response to
Appellant’s arguments, the Examiner states that the claims are not rejected
because they recite the use of generic computer technology, but because they
recite an abstract idea and the use of generic computer technology to
perform functions of an abstract idea does not amount to significantly more
than the abstract idea. Answer 7.
We concur with the Examiner that representative claim 1 recites
limitations directed to both managing interpersonal activities, which is a
certain method of organizing human activities, and collecting/gathering
information and analyzing it, which is a mental process because it can be
performed in the human mind or practicably with pen and paper.
Claim 1 recites a system for managing self-service terminals with
customers wherein management devices are configured to remotely control
functions when providing assistance to a particular customer. Appellant’s
Specification identifies that the invention is to provide human interaction in
providing assistance for certain transactions at customer self-service
terminals. See Specification 2. Thus, the Specification supports the
Examiner’s finding that representative claim 1 recites managing activities of
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the customer and the person providing assistance, which is a method of
organizing human activity and, thus, an abstract idea.
Additionally, claim 1 recites “display representative images of each of
the customer self-service terminals, and display an indication in one of the
representative images that assistance is needed at a particular corresponding
customer terminal of the plurality of customer self-service terminals,
wherein the indication is a length of time that a particular customer has been
conducting a self-service transaction”, these limitations are merely steps of
gathering and displaying information (length of time a customer has been
conducting a transaction). Accordingly, like the data collection and analysis
in Electric Power Group, claim 1 recites a mental process, which is one of
the categories of subject matter deemed abstract under the Memorandum.
Electric Power Group, LLC, v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (“[W]e have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category”); id. at 1353
(“[W]e have treated collected information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.”). Thus, we concur with the Examiner that
representative claim 1 recites a mental process, which is an abstract idea.
Practical Application of the Abstract Idea
Similarly we are not persuaded of error by Appellant’s arguments
discussed above equating the claims to those at issue in McRO, Core
Wireless Licensing and Enfish, asserting that the claims recite an
improvement to the function of a computer. Initially, we note that, contrary
to Appellant’s argument, claim 1 does not directly recite an interface, rather
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it merely recites that information is displayed on a mobile management
terminal that communicates with the self-service terminals and can remotely
control the self-service terminal. In other words, the claim does not recite
any interaction with the user of the mobile management terminal or the
mobile terminal, just the display of data and that one terminal may remotely
control the other.
Contrary to Appellant’s argument on page 11 of the Appel Brief, the
claim language is not directed to “the process for how and when assistance is
provided.” Nor does representative claim 1 recite any specific manner of
displaying the data or functionality of an interface. Rather, the claim just
recites displaying data, images of customer service terminals and an
indication of the length of time that a customer has been conducting a self-
service transaction, and that one device can control the other. The claim
does not recite the functionality of how this information is used in the
system. Further, the claim does not recite how the remote control functions
are effectuated. 3
The claim’s recitation of displaying data is unlike the claimed user
interface in Core Wireless Licensing S.A.R.L. v. LG Electronics Inc., 880
F.3d 1356 (Fed. Cir. 2018). In Core Wireless the court held that claims
which recited an interface were patent eligible as the claims recited specific
limitations of the interface such as: an application summary that can be
reached through a menu, the data being in a list and being selectable to
launch an application, and additional limitations directed to the actual user
interface displayed and how it functions. Core Wireless, 880 F.3d at 1363.

3 We note as discussed infra, the use of a device to remotely control a
terminal is a well-known function of computers.
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The court found that the claims were directed to an improved user interface
and not the abstract concept of an index as the claim “limitations disclose a
specific manner of displaying a limited set of information to the user, rather
than using conventional user interface methods to display a generic index on
a computer.” Id.; see also Trading Tech v. CQG, Inc., 675 Fed. Appx. 1001
(Fed. Cir. 2017) (holding that a user interface with a prescribed functionality
directly related the interfaces structure that is addressed to and resolves a
problem in the art is the patent eligible). Here there are no limitations
directed to how the user interacts with the displayed data or how the
management device remotely controls the customer terminal.
Further, the claims are unlike those at issue in McRO and Enfish. In
McRO the court reviewed claims which use “a combined order of specific
rules that renders information into a specific format that is then used and
applied to create desired results: a sequence of synchronized, animated
characters” McRO, 837 F.3d at 1315. The court found that the claims did
not “simply use a computer as a tool to automate conventional activity,” but
instead used the computer to “perform a distinct process” that is carried out
in a different way than the prior non-computer method to improve the
technology of (3-D animation techniques). See id. at 1314–16. Here, the
claims merely recite displaying data and the existence of a remote control
function but do not address applying specific rules to achieve a desired
result. Rather, they merely use the computers as a tool to display collected
data and remotely control a terminal. In Enfish the invention was directed to
data structure which included a very specifically defined means for
configuring a logical data table that required a four-step algorithm to render
the table self-referential. Enfish, 822 F.3d at 1336. Further, the Enfish court
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found “the plain focus of the claims is on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.” Id. Appellant’s claims are not directed to any
improvement in the function of the computer, rather just the use of the
computer to display data and remote control of a terminal.
Thus, Appellant’s arguments have not persuaded us the Examiner
erred in determining that claim 1 is not directed to an improvement in
technology or computer based device capabilities. Therefore, because the
abstract idea is not integrated into a practical application, we conclude that
the claim is directed to the judicial exception.

Significantly More than the Abstract Idea
The Examiner finds that the additional claimed elements (a terminal,
mobile management device with processor and display) are generic
computer components and do not amount to significantly more than the
abstract idea. Final Act. 5–6 (citing paras. 4, 11, and 12 of Appellant’s
Specification); Answer 7–8 (citing paras. 15 and 16 of Appellant’s
Specification). The Examiner finds that the elements and the claimed
processes they undertake are well-understood, routine and conventional and
as such do not offer significantly more than the abstract idea. Final Act 6.
Appellant argues:
claim l recites “significantly more.” In particular, the
improvements recited by claim 1 address problems that arise
with existing computing processing associated with providing
customer assistance during a transaction at a self-service
terminal. As claimed, the method includes a specific set of
processing performed for which the Examiner has been unable
to recite any art rejections.
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App. Br 12. Further, Appellant argues the Examiner has not provided the
evidence as is required by Berkheimer4 to show that the claim elements are a
combination well understood, routine and conventional elements.
We are not persuaded of error by these arguments. Our reviewing
court has stated, “within the overall step two analysis, ‘whether a claim
element or combination of elements is well-under-stood, routine and
conventional to a skilled artisan in the relevant field is a question of fact’
that ‘must be proven by clear and convincing evidence.’” Chargepoint Inc
c. SEMAConnect Inc 920 F.3d 759, 773 (Fed Cir. 2019) (citing Berkheimer
v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)). The USPTO
Memorandum of April 19, 20185, identifies that this inquiry is to the
additional elements of the claim. As discussed above, the additional
elements of the claim merely recite:
1) A “plurality of customer service terminals,” “each of which is
operated by a unique customer.” Appellant’s specification
identifies these terminals as well-known terminals such as
automated teller machines, vending machines, retail store self-
service check out terminals or the like. See paras. 2, 11, and 12.
2) “[O] ne or more mobile management devices each containing a
processor and a display,” “configured to communicate with each of
the plurality of customer self-service terminals over a wireless

4 Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018).
5 Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF (Apr. 19, 2018) (“USPTO Berkheimer
Memorandum”).
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network” and configured to remotely control functions of
particular corresponding terminal.” Appellant’s Specification
identifies these devices generically as tablet devices (i.e., known
devices), and that the communication is known protocol such a
Bluetooth. Specification paras. 11 and 14. Further, we note with
respect to the remotely controlling the terminals, Appellant’s
Specification states “[t]echnologies for carrying out a remote
interaction are well known.” Specification paras. 16. Additionally
we note functions such communicating between computers in a
network have been held to be well-understood, routine and
conventional. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (computer receives and sends information
over a network).
We further note that the claim recites displaying an indication of
length of time a customer has been at a terminal, i.e., the claim recites
displaying data concerning time not an affirmative step of measuring time.
Thus, a showing that measuring time is well known is not necessary,
nonetheless, we consider it well known to monitor a length of time a person
is performing a task, e.g., chess clock, shot clock (basketball), call timer on a
phone. Thus, Appellant’s arguments have not persuaded us the Examiner
erred in concluding representative claim 1 does not recite significantly more
than the abstract idea.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that the claims are directed to an abstract idea
(both managing interpersonal activities and mental processes). Further,
Appellant’s arguments have not persuaded us that the Examiner erred in
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finding that the claims are not: directed to an improvement in the
functioning of the computer or to other technology or other technical field;
directed to a particular machine; directed to performing or affecting a
transformation of an article to a different state or thing; directed to using a
judicial exception in some meaningful way beyond linking the exception to a
particular technological environment such that the claim as a whole is more
than a drafting effort to monopolize the judicial exception.
Accordingly, we sustain the Examiner’s rejection of representative
claim 1 and claims 2, 3, 5 through 13, and 15 through 21, grouped with
claim 1, under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.

DECISION
The Examiner’s decision rejecting claims 1 through 3, 5 through 13,
and 15 through 21 is affirmed.

Claims
Rejected
Basis Affirmed Reversed
1–3, 5–13, 15–21 § 101 1–3, 5–13,
15–21

Outcome 1–3, 5–13,
15–21

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED