NCR Corporation

Patent Trials and Appeals Board

Nov 24, 2021

2021003754 (P.T.A.B. Nov. 24, 2021)

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.
14/927,707 10/30/2015 VLADYSLAV HRYBOK 15-1268 8208
107681 7590 11/24/2021
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
11/24/2021 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 VLADYSLAV HRYBOK

Appeal 2021-003754
Application 14/927,707
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, JAMES P. CALVE, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–13, and 15–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as NCR
Corporation. Appeal Br. 2.
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BACKGROUND
The Specification describes methods and systems for addressing
problems associated with retailers storing credit card numbers for the
purpose of issuing a subsequent refund. Spec. ¶ 2. The problem is
addressed “by a financial institution issuing at least one identifier associated
with an account of a credit card number and useable only for crediting the
account” such that a retailer can store the identifier, rather than the credit
card number, for use when issuing a refund. Id.

CLAIMED SUBJECT MATTER
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites, with bracketing added:
1. A method, comprising:
[(a)] receiving, for a purchase transaction, electronic data
representing a credit card number associated with an account, the
account being configured to accept withdrawals and credits by a
retailer associated with the purchase transaction, via the credit
card number;
[(b)] receiving electronic data representing a deposit-only
credit card number associated with the account, the account
being configured to accept only credits via the deposit-only
credit card number;
[(c)] storing, in a database associated with a retailer
transaction processing system, electronic data representing the
deposit-only credit card number but not the credit card number,
for retrieval for a subsequent crediting to the account associated
with the purchase transaction; and
[(d)] associating the deposit only credit card number with
a transaction identifier of the purchase transaction, wherein the
transaction identifier is uniquely associated with the retailer
associated with the purchase transaction, and wherein the
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transaction identifier is usable for crediting to the account, and is
not usable to make purchases or withdrawals from the account.
Appeal Br. 17.
REJECTION2
The Examiner rejects claims 1, 4–13, and 15–20 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
DISCUSSION
Appellant argues the pending claims as a group. Appeal Br. 8–11.
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Legal Framework
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are

2 The Examiner has withdrawn the rejection under 35 U.S.C. § 103.
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directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (citation omitted) (alteration in
original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to

3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
Step 2A, we next evaluate the additional elements, individually and in
combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself. If so, the
claim is patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
2019 Revised Guidance, Step 2A, Prong One
With respect to claim 1, the Examiner finds that the claim recites an
abstract idea including a method of organizing human behavior in the form
of a commercial interaction as represented by the storing (limitation (c)) and
associating (limitation (d)) steps of the claim. Final Act. 6. The Examiner
further explains that the claim limitations “involve electronic data associated
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with credit cards used for a purchase transaction” and are thus “related
to/part of commercial interactions (i.e., marketing or sales activities or
behaviors and business relationships).” Ans. 11.
We agree with the Examiner that claim 1, when given its broadest
reasonable interpretation consistent with the Specification, recites a method
of organizing human activity. The claim provides a process by which a
deposit-only credit card number is associated with a purchase transaction.
The claimed steps (a)–(d) recite steps for receiving, storing, and associating
data related to a credit card used during a purchase transaction. We agree
with the Examiner that these are steps in a commercial interaction, which is
a method of organizing human activity.4 This determination is consistent
with the Specification, which describes that retailers face a security risk by
storing credit card information for the purposes of issuing refunds after a
transaction and seeks to solve this problem by having retailers store a
deposit-only number associated with a credit card for use during a
subsequent refund transaction. Spec. ¶ 2.
Further, our reviewing court has found claims to be directed to
abstract ideas when they recite similar subject matter including receiving,
analyzing, manipulating, and storing data. See, e.g., Univ. of Fla. Research
Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019)
(claims “directed to the abstract idea of ‘collecting, analyzing, manipulating,
and displaying data”’); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract

4 Whereas the Examiner included only limitations (c) and (d) in this
determination, we determine that each of the steps (a)–(d) recite steps in the
commercial interaction.
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ideas’ includes ‘collecting information, including when limited to particular
content”’ as well as analyzing and presenting information); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data,
2) recognizing certain data within the collected data set, and 3) storing that
recognized data”); Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F.
App’x 882, 886–87 (Fed. Cir. 2019) (obtaining information, analyzing the
information, and presenting customized information based on the analyzed
information determined to be directed to an abstract idea); Cyberfone Sys.,
LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014)
(claims directed to organizing, storing, and transmitting information
determined to be directed to an abstract idea); Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (analyzing
data sets).
Appellant argues that the claims do not recite an abstract idea because
“the independent claims are not directed to the actual sales transaction
itself.” Appeal Br. 8. We are not persuaded. Appellant appears to limit the
scope of commercial interactions to claim limitations that cover actual
purchases. However, we consider the claimed steps to be part of a
commercial interaction between a customer, a retailer, and a financial
institution providing the credit card and deposit-only identifier, which are
related to sales activities, regardless of whether the steps involve an actual
purchase or refund.
Based on the foregoing, we conclude that claim 1 recites a method of
organizing human activity, which is identified in the 2019 Revised Guidance
as a category of abstract ideas.
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2019 Revised Guidance, Step 2A, Prong Two
The next issue is whether claim 1 not only recites, but is also directed
to, the recited abstract idea or is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
whether the abstract idea is integrated into a practical application.
We agree with the Examiner’s determination that the claim does not
recite additional limitations that integrate the abstract idea into a practical
application. Final Act. 7–9. The only additional element we find in claim 1
is the “database associated with a retailer transaction processing system.”
This element is recited at a high-level of generality such that it amounts only
to an instruction to apply the recited abstract idea using basic computer
components. This is consistent with the Specification, which only generally
describes the use of “a database on a server” in conjunction with a terminal.
See Spec. ¶¶ 19, 24. The Specification does not describe the database with
any specificity other than by describing that it “can be stored on a server
owned or operated by the retailer, or stored on a centralized or cloud-based
server accessible by the retailer.” Id. ¶ 23. Regarding the terminal used, the
Specification describes that this may be any “computer, tablet, or smart
phone.” Id. ¶ 24. We do not see how the claim here includes any non-
generic arrangement of computer components or otherwise describes a
technical improvement implemented using those components that would
indicate integration of the abstract idea into a practical application.
Appellant argues that the storing and associating steps of the claim
represent practical applications. Appeal Br. 9–10. Yet as discussed above,
these limitations are part of the abstract idea recited in the claim and do not
include any additional elements. Appellant also argues that “[t]he database
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is a real, tangible element that provides several advantages for a vendor.”
Id. at 9. As explained above, the database is recited at a high-level of
generality and only provides an instruction to use the recited abstract idea in
a generic computing environment.
We are also not persuaded by Appellant’s argument that the claims
are eligible “for a similar rational as the claims discussed in [] McRO v.
Bandai Namco Games.” Appeal Br. 10; McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016). We fail to see
any similarity in the claims here with those at issue in McRO. Broadly
speaking, the claims in McRO were found to not be abstract because they
focused on a specific asserted improvement in computer animation. Here,
Appellant argues that “the present claims are directed to an improvement in
the operation of the computer at the task of issuing refunds.” Appeal Br. 10.
But Appellant does not persuasively explain how the claims here represent
any technical improvement in the operation of a computer. As discussed
above, claim 1 merely provides steps for receiving, manipulating, and
storing data without any implementation details for accomplishing such
tasks. Further, the Specification does not provide any technical details
indicating that the claimed method is implemented in any way that represent
a technical improvement.
Based on the foregoing, we determine that claim 1 does not recite
additional limitations that integrate the abstract idea into a practical
application. Thus, we find that the claim is directed to the abstract idea
identified above.
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2019 Revised Guidance, Step 2B
Next, we address whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. We agree with the Examiner that
the additional elements claimed, when considered individually or as an
ordered combination, do not amount to significantly more and only include
“well-understood, routine, and conventional elements that amount too no
more than implementing the abstract idea with a computerized system.” See
Final Act. 9–10.
When considered separately, the operation performed at each step of
claim 1 is expressed only in terms of its results, without any technical
implementation details. For example, data representing a credit card number
is received in step (a); data representing a deposit-only credit card number is
received at step (b); data is stored in step (c); and the deposit-only credit
card number is associated with a transaction identifier at step (d). Each step
merely recites generic computer processing expressed in terms of the results
desired. And when viewed as a whole, the claim recites a series of steps for
associating a deposit-only card number with a transaction identifier without
any particular technical details or implementation.
We also agree with the Examiner that the claim does not include any
elements that are not well-understood, routine, and conventional. As
discussed, the Specification discloses that the invention is implemented in a
generic computing environment involving a generic database. Further, the
functions provided in the claims are generic, routine, conventional computer
activities that are performed only for their conventional uses. See Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
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also In re Katz Interactive Call Processing Patent Litig., 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.”).
Regarding step 2B, Appellant argues that the Examiner does not
adequately explain why the additional elements claimed “do not result in the
claim amounting to significantly more than the exception.” Reply Br. 4.
We disagree for the reasons discussed. Appellant also argues that because
the Examiner withdrew the obviousness rejection and has not cited any new
art, the evidence “weighs toward finding that the claims are not reciting an
abstract idea using generic computer components, and certainly do not recite
well-understood, routine, or conventional activity in the relevant field.” Id.
at 5. Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent eligible. Although the step 2B analysis may be termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice
Corp., 573 U.S. at 217–18 (citation omitted). “Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
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determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”).
Accordingly, we determine that claim 1 does not provide an inventive
concept because the additional elements claimed do not provide significantly
more than the recited judicial exception.
Based on the foregoing, we determine that claim 1 is directed to a
judicial exception without significantly more. We reach the same
determination with respect to the remaining claims 4–13 and 15–20, which
fall with claim 1.
CONCLUSION
We AFFIRM the rejection of claims 1, 4–13, and 15–20.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–13, 15–20 101 Eligibility 1, 4–13, 15–20

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).

AFFIRMED