NCR Corporation

Patent Trials and Appeals BoardNov 24, 2021

2021003754 (P.T.A.B. Nov. 24, 2021)

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. 14/927,707 10/30/2015 VLADYSLAV HRYBOK 15-1268 8208 107681 7590 11/24/2021 NCR Corporation 864 Spring Street NW Atlanta, GA 30308 EXAMINER KANERVO, VIRPI H ART UNIT PAPER NUMBER 3619 NOTIFICATION DATE DELIVERY MODE 11/24/2021 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): PTOMail.Law@ncr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VLADYSLAV HRYBOK Appeal 2021-003754 Application 14/927,707 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, JAMES P. CALVE, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4–13, and 15–20. 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 NCR Corporation. Appeal Br. 2. Appeal 2021-003754 Application 14/927,707 2 BACKGROUND The Specification describes methods and systems for addressing problems associated with retailers storing credit card numbers for the purpose of issuing a subsequent refund. Spec. ¶ 2. The problem is addressed “by a financial institution issuing at least one identifier associated with an account of a credit card number and useable only for crediting the account” such that a retailer can store the identifier, rather than the credit card number, for use when issuing a refund. Id. CLAIMED SUBJECT MATTER Claims 1, 15, and 18 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites, with bracketing added: 1. A method, comprising: [(a)] receiving, for a purchase transaction, electronic data representing a credit card number associated with an account, the account being configured to accept withdrawals and credits by a retailer associated with the purchase transaction, via the credit card number; [(b)] receiving electronic data representing a deposit-only credit card number associated with the account, the account being configured to accept only credits via the deposit-only credit card number; [(c)] storing, in a database associated with a retailer transaction processing system, electronic data representing the deposit-only credit card number but not the credit card number, for retrieval for a subsequent crediting to the account associated with the purchase transaction; and [(d)] associating the deposit only credit card number with a transaction identifier of the purchase transaction, wherein the transaction identifier is uniquely associated with the retailer associated with the purchase transaction, and wherein the Appeal 2021-003754 Application 14/927,707 3 transaction identifier is usable for crediting to the account, and is not usable to make purchases or withdrawals from the account. Appeal Br. 17. REJECTION2 The Examiner rejects claims 1, 4–13, and 15–20 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. DISCUSSION Appellant argues the pending claims as a group. Appeal Br. 8–11. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Legal Framework Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are 2 The Examiner has withdrawn the rejection under 35 U.S.C. § 103. Appeal 2021-003754 Application 14/927,707 4 directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This 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.’” Id. at 217–18 (citation omitted) (alteration in original). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to 3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-003754 Application 14/927,707 5 whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the additional elements recited in the claim beyond the judicial exception, 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. Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself. If so, the claim is patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. 2019 Revised Guidance, Step 2A, Prong One With respect to claim 1, the Examiner finds that the claim recites an abstract idea including a method of organizing human behavior in the form of a commercial interaction as represented by the storing (limitation (c)) and associating (limitation (d)) steps of the claim. Final Act. 6. The Examiner further explains that the claim limitations “involve electronic data associated Appeal 2021-003754 Application 14/927,707 6 with credit cards used for a purchase transaction” and are thus “related to/part of commercial interactions (i.e., marketing or sales activities or behaviors and business relationships).” Ans. 11. We agree with the Examiner that claim 1, when given its broadest reasonable interpretation consistent with the Specification, recites a method of organizing human activity. The claim provides a process by which a deposit-only credit card number is associated with a purchase transaction. The claimed steps (a)–(d) recite steps for receiving, storing, and associating data related to a credit card used during a purchase transaction. We agree with the Examiner that these are steps in a commercial interaction, which is a method of organizing human activity.4 This determination is consistent with the Specification, which describes that retailers face a security risk by storing credit card information for the purposes of issuing refunds after a transaction and seeks to solve this problem by having retailers store a deposit-only number associated with a credit card for use during a subsequent refund transaction. Spec. ¶ 2. Further, our reviewing court has found claims to be directed to abstract ideas when they recite similar subject matter including receiving, analyzing, manipulating, and storing data. See, e.g., Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019) (claims “directed to the abstract idea of ‘collecting, analyzing, manipulating, and displaying data”’); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract 4 Whereas the Examiner included only limitations (c) and (d) in this determination, we determine that each of the steps (a)–(d) recite steps in the commercial interaction. Appeal 2021-003754 Application 14/927,707 7 ideas’ includes ‘collecting information, including when limited to particular content”’ as well as analyzing and presenting information); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data”); Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (obtaining information, analyzing the information, and presenting customized information based on the analyzed information determined to be directed to an abstract idea); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting information determined to be directed to an abstract idea); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (analyzing data sets). Appellant argues that the claims do not recite an abstract idea because “the independent claims are not directed to the actual sales transaction itself.” Appeal Br. 8. We are not persuaded. Appellant appears to limit the scope of commercial interactions to claim limitations that cover actual purchases. However, we consider the claimed steps to be part of a commercial interaction between a customer, a retailer, and a financial institution providing the credit card and deposit-only identifier, which are related to sales activities, regardless of whether the steps involve an actual purchase or refund. Based on the foregoing, we conclude that claim 1 recites a method of organizing human activity, which is identified in the 2019 Revised Guidance as a category of abstract ideas. Appeal 2021-003754 Application 14/927,707 8 2019 Revised Guidance, Step 2A, Prong Two The next issue is whether claim 1 not only recites, but is also directed to, the recited abstract idea or is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., whether the abstract idea is integrated into a practical application. We agree with the Examiner’s determination that the claim does not recite additional limitations that integrate the abstract idea into a practical application. Final Act. 7–9. The only additional element we find in claim 1 is the “database associated with a retailer transaction processing system.” This element is recited at a high-level of generality such that it amounts only to an instruction to apply the recited abstract idea using basic computer components. This is consistent with the Specification, which only generally describes the use of “a database on a server” in conjunction with a terminal. See Spec. ¶¶ 19, 24. The Specification does not describe the database with any specificity other than by describing that it “can be stored on a server owned or operated by the retailer, or stored on a centralized or cloud-based server accessible by the retailer.” Id. ¶ 23. Regarding the terminal used, the Specification describes that this may be any “computer, tablet, or smart phone.” Id. ¶ 24. We do not see how the claim here includes any non- generic arrangement of computer components or otherwise describes a technical improvement implemented using those components that would indicate integration of the abstract idea into a practical application. Appellant argues that the storing and associating steps of the claim represent practical applications. Appeal Br. 9–10. Yet as discussed above, these limitations are part of the abstract idea recited in the claim and do not include any additional elements. Appellant also argues that “[t]he database Appeal 2021-003754 Application 14/927,707 9 is a real, tangible element that provides several advantages for a vendor.” Id. at 9. As explained above, the database is recited at a high-level of generality and only provides an instruction to use the recited abstract idea in a generic computing environment. We are also not persuaded by Appellant’s argument that the claims are eligible “for a similar rational as the claims discussed in [] McRO v. Bandai Namco Games.” Appeal Br. 10; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016). We fail to see any similarity in the claims here with those at issue in McRO. Broadly speaking, the claims in McRO were found to not be abstract because they focused on a specific asserted improvement in computer animation. Here, Appellant argues that “the present claims are directed to an improvement in the operation of the computer at the task of issuing refunds.” Appeal Br. 10. But Appellant does not persuasively explain how the claims here represent any technical improvement in the operation of a computer. As discussed above, claim 1 merely provides steps for receiving, manipulating, and storing data without any implementation details for accomplishing such tasks. Further, the Specification does not provide any technical details indicating that the claimed method is implemented in any way that represent a technical improvement. Based on the foregoing, we determine that claim 1 does not recite additional limitations that integrate the abstract idea into a practical application. Thus, we find that the claim is directed to the abstract idea identified above. Appeal 2021-003754 Application 14/927,707 10 2019 Revised Guidance, Step 2B Next, we address whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. We agree with the Examiner that the additional elements claimed, when considered individually or as an ordered combination, do not amount to significantly more and only include “well-understood, routine, and conventional elements that amount too no more than implementing the abstract idea with a computerized system.” See Final Act. 9–10. When considered separately, the operation performed at each step of claim 1 is expressed only in terms of its results, without any technical implementation details. For example, data representing a credit card number is received in step (a); data representing a deposit-only credit card number is received at step (b); data is stored in step (c); and the deposit-only credit card number is associated with a transaction identifier at step (d). Each step merely recites generic computer processing expressed in terms of the results desired. And when viewed as a whole, the claim recites a series of steps for associating a deposit-only card number with a transaction identifier without any particular technical details or implementation. We also agree with the Examiner that the claim does not include any elements that are not well-understood, routine, and conventional. As discussed, the Specification discloses that the invention is implemented in a generic computing environment involving a generic database. Further, the functions provided in the claims are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See Appeal 2021-003754 Application 14/927,707 11 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.”). Regarding step 2B, Appellant argues that the Examiner does not adequately explain why the additional elements claimed “do not result in the claim amounting to significantly more than the exception.” Reply Br. 4. We disagree for the reasons discussed. Appellant also argues that because the Examiner withdrew the obviousness rejection and has not cited any new art, the evidence “weighs toward finding that the claims are not reciting an abstract idea using generic computer components, and certainly do not recite well-understood, routine, or conventional activity in the relevant field.” Id. at 5. Neither a finding of novelty nor a non-obviousness determination automatically leads to the conclusion that the claimed subject matter is patent eligible. Although the step 2B analysis may be termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non- obviousness, 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 Corp., 573 U.S. at 217–18 (citation omitted). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in Appeal 2021-003754 Application 14/927,707 12 determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). Accordingly, we determine that claim 1 does not provide an inventive concept because the additional elements claimed do not provide significantly more than the recited judicial exception. Based on the foregoing, we determine that claim 1 is directed to a judicial exception without significantly more. We reach the same determination with respect to the remaining claims 4–13 and 15–20, which fall with claim 1. CONCLUSION We AFFIRM the rejection of claims 1, 4–13, and 15–20. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 4–13, 15–20 101 Eligibility 1, 4–13, 15–20 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)(l)(iv). AFFIRMED