The Toronto-Dominion Bank

Patent Trials and Appeals Board

Dec 2, 2020

2020003669 (P.T.A.B. Dec. 2, 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.
15/286,345 10/05/2016 Garima AGGARWAL 22822/00654 3930
168733 7590 12/02/2020
CPST Intellectual Property Inc.
181 Bay Street, Suite 2425
Toronto, ONTARIO M5J 2T3
CANADA
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
ip@cpstip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARIMA AGGARWAL, HISHAM IBRAHIM SALAMA,
RAKESH THOMAS JETHWA, PAUL MON-WAH CHAN, JOHN JONG
SUK LEE, DEAN C. N. TSERETOPOULOS, and
AMBER ROSE COSSITT
____________

Appeal 2020-003669
Application 15/286,345
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JAMES P. CALVE, and
BRUCE T. WIEDER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
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 The Toronto-
Dominion Bank. Appeal Br. 3.
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THE INVENTION
Appellant claims a system and method for controlling access to
content related to a plurality items associated with a product or service to be
displayed on an electronic display. (Spec. ¶ 19, Title).
Claim 1 is representative of the subject matter on appeal.
1. A computing device for displaying
content on an electronic display, the
device comprising a processor coupled to a
memory, a communications module, and the
electronic
display, the memory storing computer
executable instructions that when executed by the
processor
cause the processor to:
receive via the communications module data
representing a plurality of items, each of the
plurality of items being associated with at
least one of a product and service;
request and receive via the communications
module financial health data associated with a
purchasing entity;
determine a subset of items from the
plurality of items based on affordability of
respective
ones of the subset of items relative to the
financial health data; and
display at least one of the plurality of items
on the electronic display, wherein at least one of
the subset of items is excluded from being
displayed or is displayed in a different manner than
others of the plurality of items displayed.

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THE REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
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 . . . then
ask, “[w]hat else is there in the claims before us?”
. . . To answer that question . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an
element or combination of elements that is
“sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon
the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
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considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to the abstract
idea of transaction authorization based on the financial health of the user.
(Final Act. 2). The Examiner finds that the additional element (the
computing device) is recited at a high-level of generality and basically
comprises generic computer components that do not impose any meaningful
limit on practicing the abstract idea. (Id. at 5).
The Specification states that the invention relates to electronic
payment systems that enable consumers to pay for products and services
without accessing, handling or sending physical currency or physical
instruments representing funds. (¶ 2). Electronic payment systems facilitate
the searching and locating of products and services as well as the spending
of funds by making the payment process shorter and more convenient for a
consumer. The Specification further discloses that avoiding or limiting
access to products and services displayed on an electronic device that are
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unaffordable for a consumer allows a consumer to better maintain a budget.
(¶ 19). As such it is clear that the invention relates to a process to be used in
making a transaction or sales activity, which is a fundamental economic
practice that is a certain method of organizing human activity. Guidance, 84
Fed. Reg. at 52.
Consistent with this disclosure, claim 1 of the application recites a
processor that is caused to “receive . . . data representing a plurality of items
. . . associated with at least one of a product and service,” “request . . .
financial health data associated with a purchasing entity,” “determine a
subset of items . . . based on affordability of the respective ones of the subset
of items relative to the financial health data,” and “display at least one of the
plurality of items.” As such, claim 1 recites steps related to sales activity.
We thus agree with the Examiner’s findings that the claims are
directed to a method of organizing human activity in the form of a
fundamental economic practice. It follows from prior Supreme Court cases,
and Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the claims
at issue here are directed to an abstract idea. Controlling the behavior of
persons concerning displaying items is a method of organizing human
behavior, which is not patentable subject matter. See Alice, 573 U.S. at 218–
219.
Also, we find the steps performed by the computing device of claim 1
of receiving data, analyzing data, and displaying data constitute “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.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765
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F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas). Thus, we find
that the claims recite the abstract ideas of a method of organizing human
activity and in the alternative, a mental process.
Turning to the second prong of the “directed to test,” claim 1 requires
a “computing device.” The recitation of the words “computing device” does
not impose “a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention affects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
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at 55.2
In this regard, the recitation of a computing device does not affect an
improvement in the functioning of a computing device or other technology,
does not recite a particular machine or manufacture that is integral to the
claims, and does not transform or reduce a particular article to a different
state or thing. Id. Thus, claim 1 is directed to judicial exceptions that are
not integrated into a practical application and thus claim 1 is directed to
“abstract ideas.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (quoting Mayo Collaborative Servs, Inc., 566 U.S. at 72–73).
The introduction of a computing device or computer into the claims
does not alter the analysis at Alice step two.
[T]he 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

2 “A claim that integrates a judicial exception into a practical application
will 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.” Guidance,
84 Fed. Reg. at 54.
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deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-
emption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of “additional featur[e]” that
provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 1 does] more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computing device at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result and display data amounts to electronic data query and
retrieval—one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. See Elec. Power Grp., 830 F.3d at 1354;
see 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.”). 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
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particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computing device of
Appellant’s claim 1 adds nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/display 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) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the computing device. As we stated above, claim 1 does not affect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. In this regard, the Specification discloses that the computing
device may be one or more computer systems configured to process and
store information and execute software instructions to perform the processes
disclosed in the embodiments and may be a smart phone, a tablet, a laptop
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computer or a desktop computer. (Spec. ¶¶ 25, 75). Thus, claim 1 at issue
amounts to nothing significantly more than instructions to apply the abstract
ideas recited in the claim 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 226.
We have reviewed all the arguments (Appeal Br. 5–12; Reply Br. 1–
4) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that it is unclear how a method directed to displaying
content can be deemed to be organizing human activities. (Appeal Br. 10).
As we discussed above, the method performed by the computing device of
claim 1 involves sales activity because it is related to selling products and
services on the Internet. Specifically, claim 1 recites a method by which a
buyer is presented only those products and services that are deemed
affordable and as such relates to the human activity of conducting a sale.
This is clearly a method to conduct sales of products and services and is
sales activity which is a method of organizing human activity. Guidance, 84
Fed. Reg. at 52. This is so even though claim 1 does not recite the
completion of a transaction because the activity that is recited in claim 1 is
definitely sales activity done in the process of conducting a transaction.
In any case, as we determined above, claim 1 also recites a mental
process and therefore even if claim 1 did not recite a method of organizing
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human activities, it would nevertheless recite a judicial exception on that
basis.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 1 recites a practical application because the
determination that is made based on data affects the way items are displayed
on an electronic display which controls the manner in which a user interacts
with a device (Appeal Br. 6–7). In making a determination of whether the
abstract ideas recited in claim 1 are integrated into a practical application,
we look at whether the additional element reflects an improvement to the
functioning of a computer or other technical field; affects a particular
treatment or prophylaxis for a disease or medical condition; recites a
particular machine; transforms or reduces a particular article to a different
state or thing; or applies the additional element in some meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. Guidance, 84 Fed. Reg. at 55. As such, this
analysis focuses on the “additional elements.” Claim 1 recites the additional
element of a computing device. Appellant argues that claim 1 recites subject
matter that improves the functioning of a computer by providing enhanced
features to improve the usability of the device. However, Appellant does not
explain how the computing device itself is improved. Although the process
of finding products to buy has been improved perhaps by only displaying
products and services that are within a buyer’s budget, the actual computing
device is not improved. In fact, as noted above, the Specification discloses
that the computing device can be any general purpose computer such as a
laptop, tablet etc. performing conventional computer functions, therefore
Appellant’s own Specification specifically discloses that the computing
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device itself is not improved (Spec. ¶ 75). In addition, the Specification
further discloses that the display of the computing device can be
implemented at the server side only such that the client computing device is
either unaware or otherwise not responsible for how or when the page is
modified. (Spec. ¶ 80). This provides further evidence that the computing
device itself is not improved.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 1 recites an improved user interface and as
such recites specific improvements over prior systems. To the extent
Appellant maintains that the limitations of claim 1 necessarily amount to
“significantly more” than an abstract idea because the claimed apparatus is
allegedly patentable over the prior art, Appellant misapprehends the
controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or nonobviousness, 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, 573 U.S. at 217. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Appellant argues that Example 37 of the Guidance demonstrates that
claim 1 integrates the judicial exception into a practical application. (Appeal
Br. 11). Specifically, Appellant argues the additional claim elements
integrate the abstract idea into a practical application because the method
affects the manner in which items are displayed on an electronic display.
(Appeal Br. 12). This argument is not persuasive. As we explained above,
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the determination of which items to display based on financial health data is,
at its core, a sales activity and therefore part of the judicial exception. That
the display is performed by a computer device does not remove it from the
abstract realm.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the Examiner’s rejection of the remaining
claims because Appellant has not argued the separate eligibility of these
claims.

CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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)(1)(iv).
AFFIRMED