Anindeep Kar et al.

Patent Trials and Appeals Board

Sep 27, 2019

13949850 - (D) (P.T.A.B. Sep. 27, 2019)

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.
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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.”).
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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.
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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.
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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”
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(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).
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“[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).
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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.
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(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).
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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).
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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.
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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
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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.
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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).
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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,
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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
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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
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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.
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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.
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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).
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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
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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.
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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
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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
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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
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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.”).
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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.