GLOBAL PAYMENTS INC.Download PDFPatent Trials and Appeals BoardMar 31, 202014222129 - (D) (P.T.A.B. Mar. 31, 2020) 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. 14/222,129 03/21/2014 Dean A. DECRISTOFORO 052664-0258 5611 22428 7590 03/31/2020 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER WEISBERGER, RICHARD C ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DEAN A. DECRISTOFORO ________________ Appeal 2018-008086 Application 14/222,129 Technology Center 3600 ________________ Before JASON J. CHUNG, JOYCE CRAIG, and STEPHEN E. BELISLE, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1–34. An Oral Hearing was held on March 10, 2020. A transcript of the hearing will be made of record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The invention relates to facilitating transactions for making funds readily available. Spec. ¶ 1. Claims 1 and 7 are illustrative of the invention and are reproduced below: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Global Payments Inc. is the real party in interest. Appeal Br. 4. Appeal 2018-008086 Application 14/222,129 2 1. A system for making a patron’s funds available to the patron at a gaming establishment, the system comprising: a handheld device including a card data receiver and a display, the handheld device being configured to process patron information, thereby allowing the patron to select at least one of a plurality of transactions; at least one input device coupled to or formed in the handheld device, the at least one input device being configured to capture an electronic endorsement from the patron and to generate an image therefrom; an output device coupled to or formed in the handheld device, the output device being configured to create a negotiable instrument for a transaction selected by the patron, wherein the transaction culminates in making the patron’s funds available to the patron, wherein the card data receiver is configured to acquire data from a card having an EMV chip, wherein the handheld device provides access to unique identifiable data of the patron, wherein the display comprises a touch screen including at least one touch screen button configured to be touched by the patron to signify selection of an option indicated by text for the at least one touch screen button, and wherein the handheld device includes a keypad or a digital image of a keypad. Appeal Br. 57 (Claims Appendix) (emphases added). 7. A method for making funds available for entertainment, the method comprising: reading or receiving card or account information by a handheld mobile device within an entertainment area, the handheld mobile device including a card data receiver configured to acquire data from a card having an EMV chip, and a printer; allowing a customer to select a transaction at the handheld mobile device and generating an order authorizing the transaction when the customer selects the transaction; retrieving the order and information verifying an identity of the customer on the handheld mobile device; displaying an option to the customer, when the identity of Appeal 2018-008086 Application 14/222,129 3 the customer is verified, on a display of the handheld mobile device that allows the customer to select, at the customer’s option, after the identity of the customer is verified, (1) an electronic endorsement from the customer and placement of the electronic endorsement in an electronic image or (2) a printout of a hard copy of an electronic image, which represents a negotiable instrument and which, at the customer’s election, may be printed for presentment for cash, casino chips, a ticket in, ticket out (“TITO”) slip, whether printed from a gaming device or a cage or any equivalent thereof; wherein the display includes a customer input device and the customer input device asks the customer to select (1) or (2) and receives the customer’s selection of (1) or (2) as input, wherein the display comprises a touch screen including at least one touch screen button configured to be touched by the customer to signify selection of an option indicated by text for the at least one touch screen button; wherein the handheld mobile device includes a keypad or a digital image of a keypad; wherein if the customer chooses the hard copy, the handheld mobile device is configured to print or issue an instruction to the printer to print the hard copy, and wherein if the customer chooses the electronic endorsement, the display is configured to ask the customer if the transaction is acceptable and to initial the display with a stylus or finger such that after the customer makes the electronic endorsement, the handheld mobile device is configured to insert the endorsement on the display into the electronic image, and the handheld mobile device is further configured to transfer the electronic image to an image repository. Id. at 58–59 (Claims Appendix) (emphases added). REJECTIONS2 Claims 1–34 stand rejected under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act. 2–4. 2 The rejection under 35 U.S.C. § 112 has been overcome. Final Act. 11. Appeal 2018-008086 Application 14/222,129 4 Claims 1–34 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of DeCristoforo (US 8,140,434 B2; issued Mar. 20, 2012), Calman (US 2012/0265679 A1; published Oct. 18, 2012), McKelvey (US 2012/0095867 A1; published Apr. 19, 2012), and Iversen (US 2013/0304593 A1; provisional application No. 61/415,454 filed Nov. 19, 2010). Final Act. 5–12. ANALYSIS I. Claims 1–34 Rejected Under 35 U.S.C. § 101 A. Principles of Law 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, Appeal 2018-008086 Application 14/222,129 5 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 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 waterproof 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- Appeal 2018-008086 Application 14/222,129 6 eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to 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. B. 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”).3 “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. 3 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 “Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). Appeal 2018-008086 Application 14/222,129 7 Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4 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. C. The Examiner’s Conclusions and Appellant’s Arguments The Examiner concludes the present claims recite certain methods of organizing human activity. Final Act. 4, 6; Ans. 4, 9–10. The Examiner also determines the present claims do not amount to significantly more than an abstract idea itself because the abstract idea is implemented on additional elements that are well-understood, routine, and conventional. Final Act. 4– 6; Ans. 5 (citing Alice, 573 U.S. at 225–26). Appellant argues the present claims do not recite an abstract idea because they include a distinct hardware/software combination that readily creates a negotiable instrument. Appeal Br. 20, 26, 28, 30, 32, 34, 36–38; 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (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. Appeal 2018-008086 Application 14/222,129 8 Reply Br. 23. Appellant argues that the present claims recite an unconventional solution to a technical problem by making funds available for gaming to solve a cash availability problem faced in gaming establishments such as casinos. Appeal Br. 21–22, 24–39 (citing Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016); Spec. ¶¶ 3, 15, 41, 44, 48); Reply Br. 24–34. Appellant argues the present claims do not preempt any abstract idea. Appeal Br. 20; Reply Br. 24. Appellant argues the present claims recite a non-conventional and non-generic arrangement of known, conventional elements, which results in an inventive concept. Appeal Br. 22, 25, 27, 29–32, 34, 36, 38–39 (citing BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); Reply Br. 26–34. Appellant argues that the Examiner fails to provide factual evidence to support the determination that the present claims represent a well-understood, routine, or conventional activity. Reply Br. 20, 26. We disagree with Appellant. C. Discussion 1. Step 2A, Prong 1 Patent eligibility under 35 U.S.C. § 101 is a question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). We conclude the emphasized portions of claims 1 and 7,5 reproduced above (see supra at 1–3), recite commercial interactions including sales activities or business relations because claims 1 and 7 require 5 Claims 1 and 7, reproduced above with emphases, recite similar features as claims 4, 10, 15, 18, 23, 26, 33, and 34. Appellant does not argue the dependent claims separately with particularity. Appeal Br. 39–40. We, therefore, group claims 1–34 together and refer to those claims as the “present claims.” Appeal 2018-008086 Application 14/222,129 9 making funds available for gaming by providing a handheld device that allows for a negotiable instrument to be generated, as acknowledged by Appellant (see Appeal Br. 22). According to the 2019 Revised Guidance, commercial interactions including sales activities or business relations fall into the category of certain methods of organizing human activity. See 2019 Revised Guidance. Moreover, those certain methods of organizing human activity are a type of an abstract idea. See id. We, therefore, disagree with Appellant’s argument that the present claims do not recite an abstract idea because they include a distinct hardware/software combination that readily creates a negotiable instrument. Appeal Br. 20, 26, 28, 30, 32, 34, 36–38; Reply Br. 23. We agree with the Examiner’s conclusion that the present claims recite certain methods of organizing human activity. Final Act. 4, 6; Ans. 4, 9–10. Because the present claims recite commercial interactions, including sales activities or business relations that fall into the category of certain methods of organizing human activity (i.e., an abstract idea), we proceed to prong 2. 2. Step 2A, Prong 2 The present claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. In particular, we disagree with Appellant’s argument that, similar to Amdocs, the present claims recite an unconventional solution to a technical problem by making funds available for gaming to solve a cash availability problem faced in gaming establishments such as casinos. Appeal Br. 21–22, 24–39 (citing Amdocs, 841 F.3d at 1288; Spec. ¶¶ 3, 15, 41, 44, 48); Reply Br. 24–34. Appellant does not identify persuasively how the Specification sets Appeal 2018-008086 Application 14/222,129 10 forth an improvement in technology. The Update, addresses how we consider any evidence that is presented to us. The Update states: the evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular change treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole “integrates [the] judicial exception into a practical application [that] 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.” Update, 11 (emphases added). The Update further states: [d]uring examination, the examiner should analyze the “improvements” consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement. Generally, examiners are not expected to make a qualitative judgment on the merits of the asserted improvement. If the examiner concludes the disclosed invention does not improve technology, the burden shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology. Any such evidence submitted under 37 C.F.R. § 1.132 must establish what the specification would convey to one of ordinary skill in the art and cannot be used to supplement the specification. For example, in response to a rejection under 35 U.S.C. § 101, an applicant could submit a declaration under § 1.132 providing testimony on how one of ordinary skill in the art would interpret the disclosed invention as improving technology and the underlying factual basis for that conclusion. Id. at 13 (emphasis added). We disagree with Appellant’s argument that the present claims recite an unconventional solution to a technical problem by making funds available Appeal 2018-008086 Application 14/222,129 11 for gaming to solve a cash availability problem faced in gaming establishments such as casinos. Appeal Br. 21–22, 24–39 (citing Amdocs 841 F.3d at 1288; Spec. ¶¶ 3, 15, 41, 44, 48); Reply Br. 24–34. In this case, the Examiner concludes that the present claims do not recite an improvement to technology. Final Act. 4; Ans. 12–14. Consequently, we focus on any evidence Appellant cites as discussed in the Update. The paragraphs relied upon by Appellant merely discuss making funds available for gaming designed to solve a cash availability problem faced in gaming establishments such as casinos. Spec. ¶¶ 3, 15, 41, 44, 48 (cited at Appeal Br. 21–22, 24–39). This alleged unconventional solution to a technical problem is a solution in making funds available quickly in a casino or gaming environment, which falls within the category of an abstract idea, as discussed supra, not an unconventional solution to a technical problem. We are not persuaded Appellant’s citation to Amdocs demonstrates the present claims recite a technical solution. Appeal Br. 21–22, 24– 39. The subject claim considered by the Amdocs court related to distributed architecture that led to load distribution, which was an advantage over the prior art because it made it easier to keep up with record flows, allow for smaller databases, and minimize impact on network and system resources. Amdocs, 841 F.3d at 1303. Additionally, the court construed the claim limitation “enhance” to mean “to apply a number of field enhancements in a distrusted fashion.” Id. at 1292, 1300. In contrast to the claims of Amdocs, the present claims do not pertain to field enhancement in a distributed network. Instead, the present claims recite an abstract idea as discussed supra, in § D.1. or at best, improving an abstract idea—not a technological Appeal 2018-008086 Application 14/222,129 12 improvement. The Specification indicates the additional elements (i.e., “handheld device,” “card data receiver,” “display,” “input device,” “output device,” “EMV chip,” “touch screen,” “touch screen button,” “keypad” “stylus,” “image repository,” “handheld mobile device,” “gaming device,” “cage,” “customer input device,” “printer,” “interface unit,” and “Automated Clearing House”) recited in the present claims are merely generic computer components used to implement the abstract idea. Spec. ¶¶ 14–28. Further, the generic computer components, individually or in combination, do not integrate the judicial exception into a practical application. Additionally, “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Appellant’s argument that the present claims do not preempt any abstract idea does not persuade us that the claims are eligible. Appeal Br. 20; Reply Br. 24. Although preemption may denote patent ineligibility, its absence does not demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-ineligible concept, preemption concerns “are fully addressed and made moot” by an analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Appellant does not make any other arguments pertaining to step 2A, prong 2. Because the present claims recite an abstract idea that is not Appeal 2018-008086 Application 14/222,129 13 integrated into a practical application, we proceed to Step 2B. 3. Step 2B We agree with the Examiner’s determination that the abstract idea is implemented with additional elements that are well-understood, routine, and conventional. Final Act. 4–6; Ans. 5 (citing Alice, 573 U.S. at 225–26); see also USPTO Commissioner for Patents Memorandum dated Apr. 9, 2018, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision” (Berkheimer v. HP, Inc.) (explaining that citing relevant cases is one way to support this finding). The Specification supports the Examiner’s determination in this regard because it explains that “handheld device,” “card data receiver,” “display,” “input device,” “output device,” “EMV chip,” “touch screen,” “touch screen button,” “keypad” “stylus,” “image repository,” “handheld mobile device,” “gaming device,” “cage,” “customer input device,” “printer,” “interface unit,” and “Automated Clearing House” recited in the present claims are generic computer components. Spec. ¶¶ 14–28. Appellant’s Specification indicates these additional elements were well-understood, routine, and conventional components because it describes them at a high level of generality and in a manner that indicates that they are sufficiently well- known. Id. Moreover, the additional elements recited in the present claims, analyzed individually or in combination, do not result in the claims, as a whole, amounting to significantly more than the judicial exception. We, therefore, disagree with Appellant’s argument that the Examiner fails to provide factual evidence to support the determination that the present claims represent a well-understood, routine, conventional activity. Reply Br. 20, 26. We also disagree with Appellant’s argument that the present claims recite a non-conventional and non-generic arrangement of known, Appeal 2018-008086 Application 14/222,129 14 conventional elements, which results in an inventive concept. Appeal Br. 22, 25, 27, 29–32, 34, 36, 38–39 (citing BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); Reply Br. 26–34. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed. Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the claims before us?’” (Emphasis added, brackets in original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception and sufficient to ensure the claim as a whole amounts to significantly more than the judicial exception itself. Alice, 573 U.S. at 218– 19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in Alice “only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine and conventional,” (emphasis added)). In BASCOM, the claims were directed to “a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location.” BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user” that “gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server.” Id. at 1350. Thus, when considered as an ordered combination, the Appeal 2018-008086 Application 14/222,129 15 court concluded the claims provided “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Id. Here, the present claims recite an abstract idea using additional elements that are generic computer components as discussed supra, in §§ I.D.1. and I.D.2. or at best, improving an abstract idea—not an inventive concept for the reasons discussed in § I.D.2. Accordingly, Appellant’s assertion fails to identify error in the Examiner's findings. Independent claims 4, 10, 15, 18, 23, 26, 33, and 34 recite similar features as independent claims 1 and 7. Appellant does not argue the dependent claims separately with particularity, but asserts the § 101 rejection of those claims should be withdrawn for at least the same reasons as argued for the independent claims. Appeal Br. 39–40. Accordingly, we sustain the Examiner’s rejection of: (1) independent claims 1, 4, 7, 10, 15, 18, 23, 26, 33, and 34; and (2) dependent claims 2, 3, 5, 6, 8, 9, 11–14, 16, 17, 19–22, 24, 25, and 27–32 under 35 U.S.C. § 101. II. Claims 1–34 Rejected Under 35 U.S.C. § 103 A. Claims 1–9 and 15–22 The Examiner finds DeCristoforo teaches receiving an electronic signature from a patron and printing receipts or checks to create a negotiable instrument for the patron at a gaming environment. Final Act. 5–6 (citing DeCristoforo, 2:10–41); Ans. 10 (citing DeCristoforo, 2:45–47). The Examiner finds Calman teaches executing ATM transactions at a handheld mobile device. Final Act. 6 (citing Calman, Abstract, ¶ 39). The Examiner finds McKelvey teaches receiving a credit card swipe and an electronic signature from a customer to execute a financial transaction at a handheld mobile device. Ans. 11, 16 (citing McKelvey, Fig. 15). The Examiner finds Iversen teaches EMV smartcards are equivalent to bank cards. Final Act. 6 Appeal 2018-008086 Application 14/222,129 16 (citing Iversen ¶¶ 1, 17). The Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time of the invention (“PHOSITA”) to combine DeCristoforo, Calman, McKelvey, and Iversen as the advantages of mobility are common to all financial transactions. Final Act. 6; Ans. 15–17. Appellant argues DeCristoforo fails to teach a “handheld device” as recited in claim 1. Appeal Br. 41, 48, 50; Reply Br. 6. Appellant argues Calman fails to generate a negotiable instrument and achieve carrying out a transaction at a handheld device. Appeal Br. 41–42, 44–45, 48–50; Reply Br. 6–7. Appellant argues there is no reason a skilled artisan would look to McKelvey so as to make a patron’s own funds available to that patron. Appeal Br. 42, 45. McKelvey fails to teach employing a read head device to allow a customer to select “(1) an electronic endorsement from the customer and placement of the electronic endorsement in an electronic image, or (2) a printout of a hard copy of an electronic image, which represents a negotiable instrument” as recited in claim 18 (and similarly recited in claim 15). Appeal Br. 48–50. Appellant argues Iversen fails to teach EMV smartcards that are bank cards. Appeal Br. 42–43. Appellant argues the Examiner’s rationale relies on impermissible6 hindsight and falls short of the requisite “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Appeal Br. 43, 45–46, 50; Reply Br. 4–5. Appellant argues Calman’s system requires a user to go up to an ATM to initiate a transaction, but omitting the ATM in Calman would render Calman unsuitable for its intended purpose. Reply Br. 7, 11–12. We disagree with 6 Although Appellant repeatedly refers to this as merely “hindsight” throughout the Briefs, we construe Appellant to mean “impermissible hindsight.” Appeal 2018-008086 Application 14/222,129 17 Appellant. As for the first five arguments above, one cannot show nonobviousness “by attacking references individually” where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In this case, the Examiner relies on DeCristoforo to teach receiving an electronic signature from a patron and printing receipts or checks to create a negotiable instrument at a gaming environment. Final Act. 5–6 (citing DeCristoforo, 2:10–41); Ans. 10 (citing DeCristoforo, 2:45–47). Calman teaches executing ATM transactions at a handheld mobile device. Calman, Abstract, ¶ 39 (cited at Final Act. 6). McKelvey teaches receiving a credit card swipe and an electronic signature from a customer to execute a financial transaction at a handheld mobile device. McKelvey, Fig. 15 (cited at Ans. 11, 16). Iversen teaches EMV smartcards are equivalent to bank cards. Iversen ¶¶ 1, 17 (cited at Final Act. 6). As for Appellant’s hindsight argument (Appeal Br. 43, 45–46, 50; Reply Br. 4–5), in reviewing the record here, we find Appellant has not identified any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of application filing. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the Examiner relies on various passages from DeCristoforo, Calman, McKelvey, and Iversen to support their underlying factual findings that lead to a conclusion that a PHOSITA would have combined those references. Final Act. 6; Ans. 15–17. Therefore, we find Appellant’s hindsight argument unpersuasive. Moreover, Appellant has not provided persuasive evidence that combining the respective teachings of the references (as concluded by the Appeal 2018-008086 Application 14/222,129 18 Examiner —Final Act. 6; Ans. 15–17) would have been “uniquely challenging or difficult for one of ordinary skill in the art,” or that such a combination would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant provided any objective evidence of secondary considerations, which, as our reviewing court explains, “operate[] as a beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We disagree with Appellant’s argument that omitting the ATM in Calman would render Calman unsuitable for its intended purpose. Reply Br. 7, 11–12. Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art, and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Accordingly, constrained by the current record, we sustain the Appeal 2018-008086 Application 14/222,129 19 Examiner’s rejection for: (1) independent claims 1, 4, 7, 15, 18;7 and (2) dependent claims 2, 3, 5, 6, 8, 9, 16, 17, 19–22 under 35 U.S.C. § 103. B. Claims 23–25 and 30–32 The Examiner finds Calman teaches a handheld mobile device is voice-activatable as required by claims 23 and 30. Ans. 12 (citing Calman, Brief Summary). Appellant argues none of the cited references teach a handheld mobile device is voice-activatable. Appeal Br. 51; Reply Br. 13, 31. We agree with Appellant. The cited portions of Calman relied upon by the Examiner fail to teach a handheld mobile device is voice-activatable as required by claims 23 and 30. Ans. 12 (citing Calman, Brief Summary). Accordingly, we do not sustain the Examiner’s rejection for: (1) independent claim 23; and (2) dependent claims 24, 25, and 30–32 under 35 U.S.C. § 103. C. Claims 10–14, 26–29, 33, and 34 Appellant argues the Examiner fails to support a conclusion that the claim would have been obvious to one of ordinary skill in the art because the Examiner fails to articulate any of findings (1)–(5) as required by MPEP § 2143(I)(F). Reply Br. 9–10, 14–18.8 We agree with Appellant. 7 Claims 7 and 15 are method claims and recite conditional limitations. In the event of further prosecution, the Examiner may want to consider whether claims 7 and 15 invoke Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential). 8 Although Appellant argues this for the first time in the Reply Brief, this argument is timely because the Examiner makes the “market forces” conclusion for the first time in the Answer. Comp. Final Act. (lacking an explanation for limitations and a rationale to combine references for independent claims 10, 26, 33, and 34) with Ans. 18, 20. Appeal 2018-008086 Application 14/222,129 20 The Examiner concludes a person having ordinary skill in the art would have combined DeCristoforo, Calman, McKelvey, and Iversen as set forth in the MPEP “Known Work in One Field of Endeavor May Prompt Variations of it for Use in Either the Same Field or a Different One Based on Design Incentives or Other Market Forces if the Variations Are Predictable to One of Ordinary Skill in the Art.” Ans. 18, 20. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). MPEP § 2143(I)(F) requires that when a rejection is based on a market forces rationale, Office personnel must resolve the Graham factual inquiries. MPEP § 2143(I)(F). Then, Office personnel must articulate the following: (1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product); (2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product); Appeal 2018-008086 Application 14/222,129 21 (3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art; (4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and (5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness. Id. In this case, the Examiner does not articulate any factors. Instead, the Examiner gives a conclusory motivation by copying and pasting the heading in MPEP § 2143(I)(F). Ans. 18, 20. At best, the Examiner leaves us to speculate as to how or why one of ordinary skill in the art would modify the combination of DeCristoforo, Calman, McKelvey, and Iversen to meet the limitations recited in claim 10, 26, 33, and 34. Ans. 18, 20. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding and reasoning. See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). As such, based on the record before us, we find that the Examiner (i) improperly relies upon the combination of DeCristoforo, Calman, McKelvey, and Iversen to teach or suggest the limitations as set forth in claims 10, 26, 33, and 34; and thus, (ii) has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for claims 10, 26, 33, and 34, resulting in a failure to establish a prima facie Appeal 2018-008086 Application 14/222,129 22 case of obviousness. Accordingly, we do not sustain the Examiner’s rejection for: (1) independent claims 10, 26, 33, and 34; and (2) dependent claims 11–14 and 27–29 under 35 U.S.C. § 103. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–34 101 Eligibility 1–34 1–34 103 DeCristoforo, Calman, McKelvey, Iversen 1–9, 15–22 10–14, 23– 34 Overall Outcome 1–34 Copy with citationCopy as parenthetical citation