Anindeep Kar et al.Download PDFPatent Trials and Appeals BoardSep 27, 201913949850 - (D) (P.T.A.B. Sep. 27, 2019) 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. 13/949,850 07/24/2013 Anindeep Kar 0076412-000152 5029 21839 7590 09/27/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER ROBINSON, KITO R ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 09/27/2019 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANINDEEP KAR, SURYA D. BHATTACHARYYA, KRISTOFER PEREZ and GREGORY WILLIAMSON ___________ Appeal 2018-006844 Application 13/949,850 Technology Center 3600 ____________ Before ST. JOHN COURTENAY III, LARRY HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–22, which constitute all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Mastercard International, Inc. App. Br. 2. Appeal 2018-006844 Application 13/949,850 2 STATEMENT OF THE CASE2 Disclosed embodiments of Appellants’ invention relate to “the authentication of payment transactions, specifically authenticating transactions based on geolocation of a mobile device and additional authentication data received from a cardholder.” Spec. ¶ 1. Illustrative Claim 1. A method for authenticating a user in a payment transaction using a computing device, comprising: storing, in a database of a processing server, a plurality of location data entries, wherein each location data entry includes data related to the location of a mobile device including (i) a geographic location of the related mobile device and (ii) at least one of a time and date at which the corresponding geographic location was identified; receiving, by a receiving device of the processing server, an authorization request for a payment transaction, from a merchant, wherein the authorization request includes at least an account identifier, a location identifier, and at least one of an authorization time and date; identifying, in the database of the processing server, a specific location data entry where the at least one of a time and date included in the specific location data entry is within a predetermined period of time of the at least one of the authorization time and date included in the received authorization request; when the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of-sale corresponding to the location identifier, 2 We herein refer to the Final Office Action, mailed September 1, 2017 (“Final Act.”); Appeal Brief, filed Jan. 26, 2018 (“App. Br.”); Examiner’s Answer, mailed April 19, 2018 (“Ans.”); and the Reply Brief, filed June 19, 2018 (“Reply Br.”). Appeal 2018-006844 Application 13/949,850 3 transmitting, by a transmitting device of the processing server, a request to a computing device associated with the account identifier for action by a user of the computing device to prove an identity of the user; receiving, by the receiving device of the processing server, data conveying the action taken by the user of the computing device to prove the identity of the user; authenticating, by a processing device of the processing server, the user based on the received data conveying the action taken by the user to prove the identity of the user and authentication information associated with a payment account corresponding to the account identifier; and upon authenticating the user, transmitting, by the transmitting device of the processing server, the authorization request to an issuer associated with the payment account for authorization of the financial transaction. App. Br. 29–30. Claims Appendix (Emphasis added regarding limitations disputed under 35 U.S.C. § 103). Rejections A. Claims 1–22 are rejected under 35 U.S.C. § 101 as being directed to a judicial exception, without significantly more. Final Act. 8. B. Claims 1–5, 9, 10, 12–16, and 20–22 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Delia et al. (US 2010/0153451 A1; pub. June 17, 2010 (“Delia”)) and Kirkland et al. (US 2004/0254868 A1; pub. Dec. 16, 2004; (“Kirkland”)). Final Act. 10. 3 3 Although dependent claim 11 was included in the list of rejected claims 1–22 in the Final Office Action Summary page, we find no detailed statement of rejection to review under 35 U.S.C. § 103 for claim 11 in the Final Action, mailed Sept. 1, 2017. Nor does the Examiner indicate in the record that claim 11 is allowable or “objected to.” Therefore, the status of a possible rejection under 35 U.S.C. § 103 for claim 11 is unclear on appeal. Appeal 2018-006844 Application 13/949,850 4 C. Claims 6 and 17 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Delia, Kirkland, and Vasudevan et al. (US 2013/0227431 A1, pub. Aug. 29, 2013 (“Vasudevan”). Final Act. 15. D. Claims 7, 8, 18, and 19 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Delia, Kirkland, and Liu et al. (US 2014/0344155 A1, pub. Nov. 20, 2014 (“Liu”). Final Act. 15. Issues on Appeal 1. Did the Examiner err in rejecting claims 1–22 under 35 U.S.C. § 101 as being directed to a judicial exception, without significantly more? 2. Did the Examiner err in rejecting claims 1–10 and 12–22 under 35 U.S.C. § 103 as being obvious over the cited combinations of prior art? ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejections, and the Examiner’s responses to Appellants’ arguments. For at least the reasons discussed below, we are not persuaded the Examiner erred. In our analysis below, we highlight and address specific findings and arguments for emphasis. Accordingly, the Board has no adverse decision under 35 U.S.C. § 103 establishing a prima facie case under 35 U.S.C. § 132(a) to review, and therefore we have no jurisdiction under 35 U.S.C. § 6(b) as to claim 11 regarding a possible rejection under 35 U.S.C. § 103. Accordingly, claim 11 is not before us on appeal regarding any rejection under 35 U.S.C. §103. We do, however, include claim 11 under our analysis of the Examiner’s rejection under 35 U.S.C. § 101. Appeal 2018-006844 Application 13/949,850 5 Principles of Law — 35 U.S.C. § 101 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 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.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). 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.” (emphasis omitted)); 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, 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” Appeal 2018-006844 Application 13/949,850 6 (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); 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 Supreme 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 Supreme 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. (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- eligible application.” Alice, 573 U.S. at 221 (citation 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). Appeal 2018-006844 Application 13/949,850 7 “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Subject Matter Eligibility — 2019 Revised Guidance The USPTO recently published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This new guidance is applied in this Opinion. Under the 2019 Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people);4 and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5, 6 See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses 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. See 2019 Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so 4 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter “Step 2A, prong 1”). 5 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter “Step 2A, prong 2”). 6 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2018-006844 Application 13/949,850 8 integrated, then the claim is not directed to a judicial exception and is patent eligible under 35 U.S.C. § 101. Id. Only if a claim: (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. See 2019 Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18. For example, we look 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, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.7 See 2019 Revised Guidance, 84 Fed. Reg. at 56. Because there is no single definition of an “abstract idea” under Alice step 1, the PTO has recently synthesized, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the “abstract idea” exception includes the following three groupings: 1. Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; 2. Mental processes— concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and 3. Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions 7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-006844 Application 13/949,850 9 (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See 2019 Revised Guidance, 84 Fed. Reg. at 52. According to the 2019 Revised Guidance, “[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not “directed to” a judicial exception (abstract idea), and thus are patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53. For example, limitations that are indicative of integration into a practical application include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). Appeal 2018-006844 Application 13/949,850 10 In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP 2106.05(h). See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). 2019 Revised Guidance, Step 2A, Prong One 8 The Judicial Exception Under the 2019 Revised Guidance, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and (c) certain methods of organizing human activities. In the table below, we identify in italics the specific claim limitations that we conclude recite an abstract idea. We additionally identify in bold the additional (non-abstract) claim limitations that are generic computer components: 8 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-006844 Application 13/949,850 11 TABLE 1 Independent Claim 1 Revised 2019 Guidance [a] A method for authenticating a user in a payment transaction using a computing device comprising: A process (method) is a statutory subject matter class. See 35 U.S.C. § 101 (“Whoever 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, subject to the conditions and requirements of this title.”). [b] storing, in a database of a processing server, a plurality of location data entries . . . ; Storing information is insignificant extra-solution activity. 2019 Revised Guidance; see also MPEP § 2106.05(g). [c] receiving, by a receiving device of the processing server, an authorization request for a payment transaction . . . ; Abstract idea, i.e., “receiving” a payment authorization request is a method of organizing human activity – commercial interactions. See 2019 Rev. Guid. 52. [d] identifying, in the database of the processing server, a specific location data entry . . . ; Abstract idea, i.e., “identifying” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [e] when the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of-sale corresponding to Abstract idea, i.e., “transmitting” a request to prove the identity of the user is a method of organizing human activity – commercial interactions. See 2019 Rev. Guid. 52. Appeal 2018-006844 Application 13/949,850 12 Independent Claim 1 Revised 2019 Guidance the location identifier, transmitting, by a transmitting device of the processing server, a request to a computing device associated with the account identifier for action by a user of the computing device to prove an identity of the user; [f] receiving, by the receiving device of the processing server, data conveying the action taken by the user of the computing device to prove the identity of the user; Abstract idea, i.e., “receiving” data to prove the identity of the user is a method of organizing human activity – commercial interactions. See 2019 Rev. Guid. 52. [g] authenticating, by a processing device of the processing server, the user based on the received data conveying the action taken by the user to prove the identity of the user and authentication information associated with a payment account corresponding to the account identifier; Abstract idea, i.e., “authenticating” is a method of organizing human activity – commercial interactions. See 2019 Rev. Guid. 52. [h] upon authenticating the user, transmitting, by the transmitting device of the processing server, the authorization request to an issuer associated with the payment account for authorization of the financial transaction. Insignificant post-solution activity. See 2019 Revised Guidance; see also MPEP § 2106.05(g). We conclude claim 1 recites an abstract idea, i.e., a method of organizing human activity, including fundamental economic principles or practices, specifically including commercial interactions such as sales Appeal 2018-006844 Application 13/949,850 13 activities, e.g., authenticating payment transactions. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Moreover, we conclude that all of the “storing,” “receiving,” “identifying,” “authenticating” and “transmitting” steps of claim 1 recite steps which collectively authenticate a user in a payment transaction between the user and a merchant. See Claim 1. The intended purpose is the prevention of unnecessary denials of authorization of a cardholder, in the event the cardholder’s mobile device is not physically present with the cardholder at the transaction location, or in situations in which the perpetrator of the fraud is in possession of the mobile device. See e.g., Spec. ¶ 3. Thus, we conclude the aforementioned limitations of claim 1 recite an abstract idea — methods of organizing human activities, including fundamental economic practices, specifically including the subcategories of commercial interactions and sales activities. See 2019 Rev. Guidance 52. The non-abstract additional limitations recited in claim 1 are the user and the merchant (who are persons), and the additional limitations of generic computer elements: “a database of a processing server,” “a mobile device,” “a receiving device of the processing server,” “a transmitting device of the processing server,” and “a computing device.” See 2019 Revised Guidance, 84 Fed. Reg. at 52. We note remaining independent claim 12 also recites similar language of commensurate scope that we conclude also falls into the abstract idea category of organizing human activities, specifically including the subcategories of sales activities and commercial interactions. Id. Appeal 2018-006844 Application 13/949,850 14 Because we conclude all claims on appeal recite an abstract idea, as identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong Two. 2019 Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Pursuant to the 2019 Revised Guidance, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55. We have identified supra the additional non-abstract elements recited in independent claim 1 as the generic “database of a processing server,” “mobile device,” “receiving device of the processing server,” “transmitting device of the processing server,” and “computing device.” Under MPEP § 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”), Appellants contend the claims provide a technological improvement over the prior art, similar to that found by the court in McRO. See App. Br. 9. We find Appellants’ arguments based upon McRO unavailing because we conclude Appellants’ claims on appeal are unlike the subject claim(s) considered by the court in McRO.9 The patent at issue in McRO describes that prior character animation and lip synchronization were accomplished by human animators, with the assistance of a computer, which involved the use of a so-called “keyframe” approach in which animators set appropriate parameters, i.e., morph weights, 9 Appellants are referring to McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal 2018-006844 Application 13/949,850 15 at certain important times, i.e., in order to produce accurate and realistic lip synchronization and facial expressions. McRO, 837 F.3d at 1305. Animators knew what phoneme a character pronounced at a given time from a time-aligned phonetic transcription (a “timed transcript”). Id. In accordance with the prior technique, animators, using a computer, thus, manually determined the appropriate morph weight sets for each keyframe based on the phoneme timings in the timed transcript. Id. See also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO): The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. Id. at 1313. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in a mathematical technique with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here. And those claims also avoided being “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it. SAP, 898 F.3d at 1167 (emphasis added). In contrast to the claimed invention in McRO that improved how a physical display operated to produce better quality images (id.), claim 1 merely uses generic computer components to perform the recited steps that result in the final step of “transmitting, by the transmitting device of the processing server, the authorization request to an issuer associated with the payment account for authorization of the financial transaction.” Thus, Appeal 2018-006844 Application 13/949,850 16 Appellants’ claims on appeal do not improve the operation of a physical display, as was the case in McRO, nor the operation of any other computer component, such as the generic computer components recited in claim 1. See SAP, 898 F.3d at 1167. In further support, Appellants contend the claims on appeal meet the standard in Visual Memory LLC v. NVIDIA Corporation, 867 F.3d 1253, 1260, 1262 (Fed. Cir. 2017). See App. Br. 10. We reproduce the subject claim in Visual Memory below: 1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising: a main memory connected to said bus; and a cache connected to said bus; wherein a programmable operational characteristic of said system determines a type of data stored by said cache. U.S. Patent No. 5,953,740, col. 6, ll. 28–37. The Federal Circuit determined that Visual Memory’s claims were directed to an improved computer memory system, and “not to the abstract idea of categorical data storage.” Visual Memory, 867 F.3d at 1259. According to the Federal Circuit, Visual Memory’s claims were directed to a technological improvement, i.e., an enhanced computer memory system because: (1) the claimed “programmable operational characteristics” were configurable based upon the type of processor, instead of “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a Appeal 2018-006844 Application 13/949,850 17 tool”; and, (2) Visual Memory’s “specification discusses the advantages offered by the technological improvement.” Id. at 1259-60. As such, the Federal Circuit concluded that Visual Memory’s claims were not directed to an abstract idea under Alice, step one. Id. In contrast to the claim at issue in Visual Memory, Appellants’ claims recite an improved method of authenticating a payment transaction when the mobile device is not proximate to the user at the transaction location (or in situations in which the perpetrator of the fraud is in possession of the mobile device), such that unnecessary denials of authorization for a cardholder involved in a genuine transaction are avoided. See Spec. ¶ 3. Thus, the focus of Appellants’ claims is on an improved commercial interaction (i.e., abstract idea), as detailed above in Table One. However, an improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent-ineligible). We conclude Appellants’ claims merely obtain and process user mobile phone geographic location information using the additional elements of generic computer hardware, including “a database of a processing server,” “a mobile device,” “a receiving device of the processing server,” “a transmitting device of the processing server,” and “a computing device.” (claim 1). For example, we find these generic devices described in Appellants’ Specification, at paragraphs 16, 22, 24, 25, and 51. McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)) provides guidance applicable here: “[t]he abstract idea exception prevents patenting a result where ‘it matters not by what process Appeal 2018-006844 Application 13/949,850 18 or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). MPEP § 2106.05(b) Particular Machine MPEP § 2106.05(c) Particular Transformation Appellants advance no arguments applying the Bilski machine-or- transformation test to any method claims on appeal. Appellants have not established that any of the recited generic computer components are “particular” machines under MPEP § 2106.05(b). Nor have Appellants established that any of the claims on appeal convert an article to a different state or thing under MPEP § 2106.05(c). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). MPEP § 2106.05(e) “Other Meaningful Limitations.” Appellants advance no arguments in the Appeal Brief pertaining to any specific claim limitations that purportedly provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. As emphasized above, we conclude Appellants’ additional elements are merely generic computer components. Nor do the claims present any other issues as set forth in the 2019 Revised Guidance regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Rather, we conclude the claims on appeal merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Id. Appeal 2018-006844 Application 13/949,850 19 Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)– (h)), we conclude claims 1–22 do not integrate the judicial exception into a practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept – Step 2B Under the 2019 Revised Guidance, only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then look to whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) On April 19, 2018, the PTO issued the Memorandum titled: “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memorandum”).10 The Berkheimer Memorandum provided specific requirements for an Examiner to support, with evidence, any finding that claim elements (or a combination of elements) are well-understood, routine, or conventional. In reviewing the Reply Brief, we note Appellants advance arguments based upon the change in the law effected by Berkheimer (Reply Br. 6–7): “Here, the Examiner makes the unsupported assertion that the claims contain 10 Available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF. Appeal 2018-006844 Application 13/949,850 20 elements that ‘are well-understood, routine, and conventional,’ see Examiner's Answer at 9, which directly opposes the Subject Matter Eligibility Memo's guidance.” However, in reviewing the record, we note the Examiner does point to evidence in support of a Berkheimer finding. See Ans. 10–11: “The processing server is a generic computer (see para. 0027 of appellant’s specification) that performs the receiving, processing and transmitting functionality which is well-understood, routine and conventional functionality of a generic computer.” Paragraph 27 of Appellants’ Specification describes: FIG. 2 illustrates an embodiment of the processing server 110 of the system 100. It will be apparent to persons having skill in the relevant art that the embodiment of the processing server 116 illustrated in FIG. 2 is provided as illustration only and may not be exhaustive to all possible configurations of the processing server 110 suitable for performing the functions as discussed herein. For example, the computer system 600 illustrated in FIG. 6 and discussed in more detail below may be a suitable configuration of the processing server 110. (emphasis added). Appellants’ Berkheimer arguments in the Reply Brief (6–7) are not persuasive because Appellants fail to traverse the Examiner’s specific findings in the Answer (10–11). See also Spec. ¶ 61: “Various embodiments of the present disclosure are described in terms of this example computer system 600. After reading this description, it will become apparent to a person skilled in the relevant art how to implement the present disclosure using other computer systems and/or computer architectures.” (emphasis added). Appeal 2018-006844 Application 13/949,850 21 Further regarding the use of the generic (known, conventional) recited “computing device,” “database of a processing server,” “mobile device,” “receiving device of the processing server,” and “transmitting device of the processing server” (claim 1), the Supreme Court has held “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. 208, 223. Our reviewing court provides additional guidance: See e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter”), and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “‘well-understood, routine conventional activit[ies]”’ by either requiring conventional computer activities or routine data-gathering steps (alteration in original, internal citation omitted)). This guidance is applicable here. Given the extensive description of the use of generic computer elements in the Specification (e.g., ¶¶ 16, 22, 24, 25, and 51), we agree with the Examiner that without more, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. See Final Act. 9. Accordingly, on the record before us, we are not persuaded that claims 1–22 add a specific limitation, beyond the judicial exception, that is Appeal 2018-006844 Application 13/949,850 22 more than what was “well-understood, routine, and conventional” in the field (see MPEP § 2106.05(d)). In light of the foregoing, we conclude, under the 2019 Revised Guidance, that each of Appellants’ claims 1–22, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept. Accordingly, for the reasons discussed above, we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims 1–22.11 Rejection B of Independent Claim 1 under 35 U.S.C. § 10312 Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Delia and Kirkland, collectively teach or suggest the disputed limitations: identifying, in the database of the processing server, a specific location data entry where the at least one of a time and date included in the specific location data entry is within a predetermined period of time of the at least one of the authorization time and date included in the received authorization request; when the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of-sale corresponding to the location identifier, within the meaning of representative claim 1? See supra n.8 (“we give the 11 To the extent that Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv). 12 In the event of further prosecution, we note and leave to the consideration of the Examiner a 112(b) indefiniteness rejection for the claim element “a computing device” that is introduced twice in both independent claims 1 and 12. It is unclear which “computing device” is being referred to. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2018-006844 Application 13/949,850 23 claim limitations the broadest reasonable interpretation consistent with the Specification. See Morris, 127 F.3d at 1048). Disputed Limitations of Representative Independent Claim 1 under Section 103 Rejection B First Disputed Limitation The Examiner finds Kirkland teaches or suggests the first disputed limitation “identifying, in the database of the processing server, a specific location data entry where the at least one of a time and date included in the specific location data entry is within a predetermined period of time of the at least one of the authorization time and date included in the received authorization request.” Final Act. 11. Appellants contend the Examiner’s citations to Kirkland paragraph 18 “says nothing about identifying a specific location data entry (from those saved in a database), let alone that the identified specific location data entry includes a at least one of a time and date that is within a predetermined period of time of a time and/or date included in a received authorization request, as expressly recited in claim 1.” App. Br. 22. Appellants further contend Kirkland’s “transaction information” does not teach or suggest “mobile device locations at certain times and/or dates.” App. Br. 22–23, citing Kirkland, par. 80. Appellants specifically contend Kirkland does not teach “identifying a specific ‘location data entry’” as recited in claim 1. App. Br. 23. The Examiner further explains Kirkland’s mobile device returns a current location of the mobile device and compares it to the location of the request for authorization. Ans. 12, citing Kirkland, pars. 18, 56, 80. If these locations are the not the same, Kirkland teaches comparing transaction Appeal 2018-006844 Application 13/949,850 24 information in the authorization request to records of transaction information to determine if a similar transaction was previously made. Ans. 12–13. Based upon a preponderance of the evidence, we agree with the Examiner’s findings that Kirkland’s evaluation of prior transactional information to authorize the current transaction teaches or at least suggests the disputed limitation. Second Disputed Limitation The Examiner finds Kirkland teaches or suggests the second disputed limitation “when the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of- sale corresponding to the location identifier, transmitting, by a transmitting device of the processing server, a request to a computing device associated with the account identifier for action by a user of the computing device to prove an identity of the user.” Final Act. 12, citing Kirkland pars. 83, 86, and 89. Appellants further contend: Contrary to independent claim 1, which retrieves geolocation information that is stored in a database upon receiving an authorization request and identifying a specific location data entry, Kirkland, upon receiving an authorization request, sends a request to a mobile device in order to receive its current location. See, e.g., paragraphs [0085], [0086]. Contrary to the assertions made by the Examiner, document, particular these cited portions, does not disclose or suggest that geolocation information, stored in an identified specific location data entry, is used to determine if a mobile device is not present at a point of sale, as in the present claims. Rather, in stark contrast, after the authorization request is received, Kirkland sends a request to the mobile device to request its current location and then compares the received current location with the transaction location. This is not equivalent to the recited feature of "when Appeal 2018-006844 Application 13/949,850 25 the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of-sale corresponding to the location identifier, transmitting ... a request to a computing device." App. Br. 25. Claim Construction As an initial matter of claim construction, we focus our analysis on the conditional limitation: when the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of-sale corresponding to the location identifier, transmitting, by a transmitting device of the processing server, a request to a computing device associated with the account identifier for action by a user of the computing device to prove an identity of the user; Claim 1 (emphasis added). We note that conditional steps employed in a method claim need not be found in the prior art if, under the broadest reasonable interpretation, the method need not invoke those steps. See Ex parte Schulhauser, No. 2013- 007847, 2016 WL 6277792 at *4 (PTAB April 28, 2016) (precedential) (holding “[t]he Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim . . . .”; see also Ex parte Katz, No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI Jan. 27, 2011).13 13 See also Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course Appeal 2018-006844 Application 13/949,850 26 Applying this reasoning here, we conclude the condition precedent (“when the geographic location included in the specific location data entry is indicative of the mobile device being not present at a point-of-sale corresponding to the location identifier”) of method claim 1 is not positively recited as actually occurring, under a broad but reasonable interpretation. Assuming arguendo that our reviewing court may decide to give the contested conditional step of claim 1 patentable weight, we reach the merits of the obviousness rejection, infra. The Examiner finds Kirkland’s identifier information is used to lookup an associated location of the merchant in a location database; Kirkland’s location information is used to authorize a transaction and also historical transaction information is checked in authorizing a transaction. See Ans. 14–15, citing Kirkland pars. 56, 83, 89, 80. We find these teachings collectively at least suggest the disputed limitation. “‘[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also MPEP § 2123. This reasoning is applicable here. Therefore, we find a preponderance of the evidence supports the Examiner’s ultimate legal conclusion of obviousness for Rejection B of independent claim 1. See Ans. 11–16. true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). Appeal 2018-006844 Application 13/949,850 27 Accordingly, we sustain the Examiner’s Rejection B of representative independent claim 1. Grouped claims 2–5, 9, 10, 12–16, and 20–22, also rejected under Rejection B (and not argued separately) fall with representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s Rejection B under § 103 of claims 1–5, 9, 10, 12–16, and 20–22. Rejection C of Dependent Claims 6 and 17 and Rejection D of Dependent Claims 7, 8, 18 and 19 Appellants advances no separate, substantive arguments for dependent claims 6–8 and 17–19. Although Appellants urge these claims each fail to disclose or suggest the disputed recitations of the base claims (App. Br. 27), we find no deficiencies with the Examiner’s Rejection B under §103 of claims 1–5, 9, 10, 12–16, and 20–22, for the reasons discussed supra. Accordingly, we sustain the Examiner’s Rejection C of dependent claims 6 and 17, and Rejection D of dependent claims 7, 8, 18, and 19. DECISION We affirm the Examiner’s decision rejecting claims 1–22 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1–10 and 12–22 under 35 U.S.C. § 103.14 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. § 41.50(f). AFFIRMED 14 See supra n.3 regarding dependent claim 11. Copy with citationCopy as parenthetical citation