Rickey D. Burks et al.

Patent Trials and Appeals Board

May 8, 2020

2018007171 (P.T.A.B. May. 8, 2020)

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.
14/824,478 08/12/2015 Rickey D. Burks US-1026.04 | 59197.21136 7302
122328 7590 05/08/2020
BakerHostetler / USAA
1050 Connecticut Avenue, N.W., Suite 1100
Washington, DC 20036
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICKEY D. BURKS, CHARLES LEE OAKES III,
BRADLY J. BILLMAN, MATTHEW C. REEDY,
ANTHONY G. CASTIGLIONE, JESS W. GINGRICH,
and WILSON SAMUEL
________________

Appeal 2018-007171
Application 14/824,478
Technology Center 3600
____________

Before DENISE M. POTHIER, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 7, 8, 11‒17, 20, 22‒24, and 27‒36, which are all
the claims pending in this application. Claims 3, 5, 6, 9, 10, 18, 19, 21, 25,
and 26 are canceled. See Appeal Br. 2. 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 United
Services Automobile Association (USAA). Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to financial management modules that
provide automated teller machine (ATM) functionality. Spec. 1:5‒7. In one
embodiment, Appellant describes a system receiving a user-initiated request
for a transaction and identifying a device to perform the transaction.
Spec. 5:8‒14. Claim 1 is illustrative of the appealed subject matter and reads
as follows:
1. A method of utilizing a currency-management system
that comprises a plurality of currency dispensers, the method
comprising:
receiving, by a computer system and from an electronic
device associated with a member, a request for an interaction
with a currency dispenser;
determining, by the computer system, an expected travel
route for the member;
determining, by the computer system, conditions of the
plurality of currency dispensers;
based at least on the request received from the electronic
device associated with the member, the conditions of the
plurality of currency dispensers, and the expected travel route
for the member, identifying, by the computer system, at least
one currency dispenser among the plurality of currency
dispensers to perform the interaction;
sending, to the electronic device associated with the
member, information that identifies the at least one currency
dispenser; and
receiving, from the electronic device associated with the
member, a selection of a selected currency dispenser based on
identification of the at least one currency dispenser.

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The Examiner’s Rejection
Claims 1, 2, 4, 7, 8, 11‒17, 20, 22‒24, and 27‒36 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2‒12.
ANALYSIS
Principles of Law – Section 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. 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 (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
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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
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 187; 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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical 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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
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ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (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.
Principles of Law – USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
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2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 1 recites “[a] method
of utilizing a currency-management system that comprises a plurality of
currency dispensers.” Appellant does not argue the Examiner erred in
concluding claim 1 falls within the four statutory categories of patentable
subject matter. We agree with the Examiner’s conclusion because claim 1
falls within the process category.

(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, 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). See Revised Guidance.
The Examiner concludes claim 1 is directed to utilizing a currency
management system. Ans. 3. The Examiner concludes utilizing a currency
management system is a combination of the abstract ideas of data
recognition and storage, obtaining and comparing intangible data, and
collecting and comparing known information. Id.; see also Final Act. 3‒4.
Appellant argues the claims do not recite an abstract idea because the
claims improve the functioning of techniques for utilizing currency
dispensers, which are specialized hardware. See Appeal Br. 17‒19.
Claim 1 recites “[a] method of utilizing a currency-management
system that comprises a plurality of currency dispensers.” This method
includes “receiving . . . a request for an interaction with a currency
dispenser;” “determining . . . an expected travel route for the member;”
“determining . . . conditions of the plurality of currency dispensers;” “based
at least on the request . . ., the conditions of the plurality of currency
dispensers, and the expected travel route for the member, identifying . . . at
least one currency dispenser among the plurality of currency dispensers to
perform the interaction;” “sending . . . information that identifies the at least
one currency dispenser;” and “receiving . . . a selection of a selected
currency dispenser based on identification of the at least one currency
dispenser.”
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Thus, under the broadest reasonable interpretation, claim 1 recites
identifying at least one candidate currency dispenser based on various
criteria, and allowing a user to select from among the candidate dispensers.
We agree with the Examiner that at a high level, these steps collectively
recite utilizing a currency management system. We conclude that claim 1,
therefore, recites business relations or advertising, marketing, or sales
activities, which are forms of commercial or legal interactions that fall
within the certain method of organizing human activity category of abstract
ideas set forth in the Revised Guidance.
We also note that certain steps of the claimed method, under its
broadest reasonable interpretation, recite concepts that are performed in the
human mind, including observations, evaluations, and judgments. In
particular, the “receiving” limitations recite obtaining various information
related to utilizing a currency management system and the “determining”
limitations recite performing evaluations and judgments based on the
received information. Accordingly, we conclude claim 1 also recites
concepts performed in the human mind, which fall within the mental
processes category of abstract ideas identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 1 include “a currency-
management system,” “a plurality of currency dispensers,” “a computer
system,” and “an electronic device.” None of these additional elements
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constitute “additional elements that integrate the exception into a practical
application.” See id.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See Revised Guidance.
Appellant argues claim 1 recites a technological improvement and,
therefore, is not directed to an abstract idea. See Appeal Br. 17‒20. In
particular, Appellant argues automated teller machines, and the use thereof,
is an antiquated process that is improved by the claimed method, which
identifies currency dispensers on a user’s travel route and provides an
indication of currency dispenser condition. Id. at 18‒19. Appellant argues
the claims involve specialized hardware, in particular currency dispensers.
Id. Appellant argues the claims are equivalent to claims found patent eligible
by courts in various cases. See id. at 19 (citing Finjan, Inc. v. Blue Coat
Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018)), 20 (citing Core Wireless
Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)),
20‒21 (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)), 23‒24 (Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed.
Cir. 2017))).
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Appellant has not persuaded us of Examiner error. The nature of claim
1 as a whole is not to define a specific technological improvement, which
may constitute integrating the claims into a practical application. Instead,
claim 1 merely recites the steps necessary to perform the abstract idea itself.
Our reviewing court has “made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in Credit
Acceptance, the focus of claim 1 is on the business practice of identifying
currency dispensers “and the recited generic computer elements ‘are invoked
merely as a tool.’” Id. (citing Enfish, 822 F.3d 1327); see also Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting
cases).
Specifically, the claimed “currency-management system,” “plurality
of currency dispensers,” “computer system,” and “electronic device” are
used to achieve the claimed results and are not focused on “a specific means
or method that improves the relevant technology.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant’s
Specification confirms the generic, conventional nature of the claimed
systems, dispensers, and devices. See Spec. 4:13‒5:6, 15:1‒16:19, 19:10‒15.
Appellant’s arguments equating the claims to claims found patent
eligible by courts in other cases is unpersuasive. In each of those cases, the
courts identified particular technological improvements recited in the claims.
For example, in Finjan, the claims “employ[ed] a new kind of file that
enables a computer security system to do things it could not do before.”
Finjan, 879 F.3d at 1305. This approach allowed the system to accumulate
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and utilize newly-available, behavior-based information about potential
threats, an improvement to computer security. Id. Similarly, the claims in
DDR Holdings did more than merely address a problem unique to the
Internet. Instead, the claims addressed this problem in a manner that was
“not merely the routine or conventional use of the Internet.” DDR Holdings,
773 F.3d at 1259. In particular, rather than the expected behavior of simply
sending the website visitor to a third-party website, the claimed invention
behaved in a manner different than expected by sending a website visitor to
a hybrid web page presenting information from a third-party with the look
and feel of the host website. Id. at 1258‒59. By contrast, Appellant’s claims
use the recited additional elements as generic, conventional components
upon which their improved business method operates.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
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Appellant argues claim 1 recites significantly more than merely
describing and applying the abstract idea. See Appeal Br. 21‒23. In
particular, Appellant argues the ordered combination recited in the claims
inventively improve antiquated ATM use processes. Id. at 22. According to
Appellant, receiving a request from a would-be ATM user, determining
currency dispenser conditions, determining a user travel route, identifying
appropriate currency dispensers, and providing this information to a user is
an inventive ordered combination in comparison to simpler techniques such
as locating an ATM. Id.
Appellant has not persuaded us of Examiner error. The Examiner
notes that the claims in BASCOM focuses on a specific improvement in
filtering technology that involved providing individually customizable
filtering at the remote ISP server by taking advantage of the technical
capability of certain communication networks. Ans. 8. Appellant’s claims,
on the other hand, focus on a business solution using generic computers, as
discussed above. Appellant has not persuasively identified an ordered
combination of limitations that amounts to something significantly more
than the recited abstract ideas themselves.
Appellant also argues that the claims carve out a specific technique
which does not preclude non-infringing use of the entire abstract idea and,
therefore, are patent eligible. See Appeal Br. 24‒25. Appellant has not
persuaded us of Examiner error. Preemption is the concern that drives the
exclusionary principle of judicial exceptions to patent-eligible subject
matter. Alice, 573 U.S. at 210. However, preemption is not a separate test of
patent eligibility, but is inherently addressed within the Alice framework.
See Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
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Cir. 2015) (“While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility.”).
For these reasons, we agree with the Examiner that the claims do not
recite an “inventive concept” sufficient to transform the claims from an
abstract idea to a patent eligible application. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 1. We also sustain the
rejection of independent claim 22, which Appellant argues is patent eligible
for substantially the same reasons. See Appeal Br. 5‒30. We also sustain the
rejection of dependent claims 2, 4, 7, 8, and 11‒17, 20, 23, 24, and 27–36 for
which Appellant relies on substantially the same arguments. See id.

DECISION SUMMARY
In summary:
Claims Rejected 35
U.S.C. §
Basis Affirmed Reversed
1, 2, 4, 7, 8, 11‒17,
20, 22‒24, 27‒36
101 Eligibility 1, 2, 4, 7, 8, 11‒17,
20, 22‒24, 27‒36

TIME PERIOD FOR RESPONSE
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.
§ 41.50(f).

AFFIRMED