Ex Parte Varadarajan

Patent Trial and Appeal Board

Jun 28, 2017

13048096 (P.T.A.B. Jun. 28, 2017)

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
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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.
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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.
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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.
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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).
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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. . . .
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(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)
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