Ex Parte VaradarajanDownload PDFPatent Trial and Appeal BoardJun 28, 201713048096 (P.T.A.B. Jun. 28, 2017) Copy Citation 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. 13/048,096 03/15/2011 Rammohan Varadarajan WILY-03087U S1 8045 105234 7590 Vierra Magen / CA Inc 575 Market Street Suite 3750 San Francisco, CA 94105 06/30/2017 EXAMINER KANERVO, VIRPI H ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 06/30/2017 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): patents @ vierramagen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAMMOHAN VARADARAJAN Appeal 2016-001209 Application 13/048,0961 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. FETTING, and CYNTHIA L. MURPHY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rammohan Varadarajan (“Appellant”) seeks our review under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION. 1 The Appellant identifies CA, Inc. as the real party in interest. App. Br. 2. Appeal 2016-001209 Application 13/048,096 THE INVENTION Claim 11, reproduced below, is illustrative of the subject matter on appeal. 11. A method for conducting an automatic teller machine (ATM) transaction with a provider system and an ATM including an ATM interface, the method comprising: inputting transaction information into a mobile user device including a device interface; wherein the transaction information includes a transaction amount; establishing a connection between the mobile user device interface and the ATM interface; inputting the transaction information into the ATM via the connection established between the mobile user device interface and the ATM interface. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Coutts US 2005/0037735 A1 Feb. 17,2005 Labrou US 2006/0206709 A1 Sept. 14,2006 The following rejections are before us for review: 1. Claims 1—20 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. 2. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Coutts and Labrou. ISSUE Did the Examiner err in rejecting claims 1—20 are rejected under 2 Appeal 2016-001209 Application 13/048,096 35 U.S.C. § 101 as being directed to judicially-excepted subject matter? Did the Examiner err in rejecting claims 1—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Coutts and Labrou? ANALYSIS The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. Alice Corp. Pty. Ltd. v. CLSBanklntT, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. “We must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). Step two 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.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)) (emphasis added). The Examiner determined that “[t]he claims 1-20, as a whole, do not amount to significantly more than the abstract idea of conducting automatic teller machine (ATM) transactions without the use of an ATM card, but using a mobile user device.” Ans. 3. Setting aside the problematic question of whether conducting automatic teller machine (ATM) transactions using a mobile user device rather than an ATM card is an abstract idea, it is not what the claims are directed to. 3 Appeal 2016-001209 Application 13/048,096 A plain reading of illustrative claim 11 shows that it reasonably broadly covers establishing a connection between a mobile user device with an interface and an ATM interface whereby a certain type of information that was inputted into the mobile user device is inputted into the ATM. Said certain type of information is “transaction information including] a transaction amount” (claim 11) but that is reasonably characterized as printed matter (cf In re Distefano, 808 F.3d 845 (Fed. Cir. 2015)) and as such is patentably inconsequential. It is evident, therefore, that claim 11 is not specifically directed to the scenario of a mobile user device being used in the absence of an ATM card. To the contrary, the broad scope of claim 11 encompasses using both a mobile user device and an ATM card. The step 1 analysis of the Alice framework has not reached a correct determination of what the claims are directed to. The Examiner’s determination that “[t]he claims 1-20, as a whole, [are directed to] conducting automatic teller machine (ATM) transactions without the use of an ATM card, but using a mobile user device” (Ans. 3 (emphasis added)) is not commensurate in scope with what is claimed. The record does not support such a determination. This is not the heart of the invention as claimed. Cf. Intellectual Ventures ILLC v. Erie Indemnity Company, 850 F.3d 1315, 1328 (Fed. Cir. 2017)(“the heart of the claimed invention lies in creating and using an index to search for and retrieve data ... an abstract concept.”) The reasoning used to determine that the claimed subject matter is judicially-excepted from patent eligibility under § 101 is therefore inadequate. Having determined that the threshold determination under step one of the Alice framework is inadequate, we need not move to the second step. 4 Appeal 2016-001209 Application 13/048,096 The rejection is not sustained. We make no comment on the patent eligibility of the claims were the claims to be properly construed and consistent therewith a determination made under Alice step 1 that the claims are directed to, for example, conducting an ATM transaction using a mobile device. The rejection of claims 1—20 under 35 U.S.C. § 103(a) as being unpatentable over Coutts and Labrou. We agree with the Appellant (App. Br. 8) that the Examiner’s finding that paragraph 76 of Labrou “teaches authorization to an ATM” (Final Act. 4) is not supported by the evidence. There is no mention of an ATM in that passage. Labrou was relied on as evidence that the prior art discloses “transaction information includ[ing] a transaction amount” (claim 11). See Final Act. 3. And the Appellant has frequently argued that the cited prior art fails to disclose said transaction information. See, e.g., App. Br. 6 (“Coutts ‘personalization data ’ is not ‘transaction information ’ which ‘includes a transaction amount’ as required by the amended claims 1 and 11.”). Nevertheless, as we have indicated above, “transaction information includ[ing] a transaction amount” (claim 11) is a type of information that is reasonably characterized as printed matter (cf Distefano, 808 F.3d 845 (Fed. Cir. 2015)) and as such is patentably inconsequential. Accordingly, notwithstanding Labrou has not been shown to disclose “transaction information includ[ing] a transaction amount” (claim 11) with respect to an ATM, given that the claim limitation “transaction information includ[ing] a transaction amount” (claim 11) is patentably inconsequential, the rejection is not in error for Labrou failing to disclose it. 5 Appeal 2016-001209 Application 13/048,096 We recognize that this reasoning departs from that of the Examiner. Accordingly, although we affirm the rejection, we denominate the affirmed rejection as a new ground of rejection. We additionally observe that Figure 1 (and associated disclosure at para. 30) of Coutts shows a mobile user device (14) operably connected to an ATM (16), both of which are known to have interfaces, and showing information flowing between them. On its face, said disclosure would lead one of ordinary skill in the art to establish a connection between a mobile user device with an interface and an ATM interface whereby a certain type of information that was inputted into the mobile user device is inputted into the ATM as representative claim 11 has been reasonably broadly construed. See earlier discussion regarding the § 101 rejection. Accordingly, the argument that “Coutts fails to disclose ‘receiving transaction information from the ATM interface’” (App. Br. 10) is unpersuasive as to error in the rejection. Furthermore, given that mobile user devices and ATMs with input interfaces were known computer-enabled machines and that establishing a connection between computer-enabled machines to transmit/receive information between them was known, it would have been obvious to one of ordinary skill in the art to establish a connection between a mobile user device with an interface and an ATM interface whereby a certain type of information that was inputted into the mobile user device is inputted into the ATM as representative claim 11 has been reasonably broadly construed. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 6 Appeal 2016-001209 Application 13/048,096 CONCLUSIONS The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter is reversed. The rejection of claims 1—20 under 35 U.S.C. § 103(a) as being unpatentable over Coutts and Labrou is affirmed but denominated as a new ground of rejection. DECISION The decision of the Examiner to reject claims 1—20 is affirmed, but the affirmed rejection under § 103 is denominated as a new ground of rejection. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . 7 Appeal 2016-001209 Application 13/048,096 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Should the Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation