Benjamin T. Wallach

Patent Trials and Appeals Board

Nov 14, 2019

12437205 - (D) (P.T.A.B. Nov. 14, 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.
12/437,205 05/07/2009 Benjamin T. Wallach 15548.0189 7045
27890 7590 11/14/2019
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
hfox@steptoe.com
ipdocketing@steptoe.com
lfielding@steptoe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN T. WALLACH
Appeal 2018-004608
Application 12/437,205
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Benjamin T. Wallach,
appeals from the Examiner’s decision rejecting claims 1–37, which are all
claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Regions
Financial Corporation, the assignee of the above captioned application.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER2
The claims are directed to a method and system for transferring funds.
See Title. In particular, Appellant’s disclosed embodiments and claimed
“invention relate[] to a system and method of transferring funds from one
payment mechanism to another.” Spec. 1, ll. 7–8.
Claim 20, reproduced below, is representative of the subject matter on
appeal:
20. A method of transferring funds comprising:
providing a user or automated process with an option of
setting up an automatic fund transfer from a first payment
channel to a second payment channel;
providing a processor that receives an access parameter
from an input module from an entity authorized to provide the
access parameter;
the access parameter that locates specific
information at a first database, wherein the information is
stored electronically or magnetically on a medium
capable of holding data including an optical storage
medium, a magnetic storage medium, a temporary
electronic storage medium, or microcircuitry;
the access parameter associated with a second
payment channel and being received from an entity
including the owner of information or one or more
authorized surrogate, the authorized surrogate acting on
behalf of or at the behest of the owner of the information,

2 Our decision relies upon Appellant’s Appeal Brief (“Br.,” filed
Nov. 28, 2017); Examiner’s Answer (“Ans.,” mailed Feb. 1, 2018); Final
Office Action (“Final Act.,” mailed May 19, 2017); and the original
Specification (“Spec.,” filed May 7, 2009) (claiming benefit of
US 61/054,607, filed May 20, 2008). Appellant did not file a Reply Brief in
response to the factual findings and legal conclusions in the Examiner’s
Answer.
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and the access parameter configured to traverse a security
system guarding the information in the first database;
providing an implementation module that automatically
transfers funds; and transferring funds automatically from the
first payment channel to the second payment channel through
an implementation module that automatically transfers funds
through the communication module, the automatic transfer
through the communication module, reflecting the consent and
knowledge of the owner of the information, either directly or
indirectly through one or more authorized surrogate, the
authorized surrogate acting on behalf of or at the behest of the
owner of the information, the funds implemented to perform an
authorized function after the funds are transferred to the second
payment channel,
allowing new or existing online bill payments to be
converted to card transactions via single entry or mass
conversion and
providing an input module, wherein the input module
includes a device capable of storing an access parameter for
retrieval including a keyboard, mouse, wired transmission, or
wireless transmission, and wherein the input module includes a
device configured to receive the access parameter for retrieval
including a configured port, antenna, or scanner, and
providing a filter module that filters data based on
content by identifying which . . . funds or data are sensitive,
encrypting information associated with funds for safe transfer
and removing data that is irrelevant to the authorized function,
wherein the authorized function is to be performed after the
funds are transferred to the second payment channel set by the
user when security of funds is a concern.
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Rejections on Appeal3
R1. Claims 1–37 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 5.
R2. Claims 1, 20, and 28 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 8.4
R3. Claims 1, 20, and 28 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 10.
CLAIM GROUPING
Based on Appellant’s arguments (Br. 8–12) and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject
matter Rejection R1 of claims 1–37 on the basis of representative claim 20;
and we decide the appeal of written description and indefiniteness

3 We note the Examiner objects to claim 8 (“The system of claim 1 wherein
the user has an access parameter associated with a second payment
channel”) “under 37 CFR 1.75 as being a substantial duplicate thereof.”
Final Act. 5. This claim objection is not before us on Appeal, and we do not
further address this objection in our Decision.
4 We are unsure as to why the written description and indefiniteness
Rejections R2 and R3 under § 112 have not been applied by the Examiner to
all pending claims in the application because all dependent claims variously
and ultimately depend from rejected independent claims 1, 20, and 28. In the
event of further prosecution, we leave it to the Examiner to extend affirmed
Rejection R3 under 35 U.S.C. § 112, second paragraph, to all pending
claims. 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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Rejections R2 and R3 of claims 1, 20, and 28 on the basis of representative
claim 1.5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with particular arguments presented by Appellant with
respect to written description Rejection R2 of claims 1, 20, and 28.
However, we disagree with Appellant’s arguments with respect to
subject matter eligibility Rejection R1 of claims 1–37, and indefiniteness
Rejection R3 of claims 1, 20, and 28 and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer
in response to Appellant’s arguments. We highlight and address specific
findings and arguments regarding claim 20 for emphasis as follows.

5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. § 101 Rejection R1 of Claims 1–37
Issue 1
Appellant argues (Br. 8–11) the Examiner’s rejection of claim 20
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
in error. These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.6
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) (brackets in original) (citing 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

6 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 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 “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
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id.
at 187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
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Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);7 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).8
See Revised Guidance 52–53.
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:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.9
See Revised Guidance 56.

7 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
8 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
9 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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Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (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); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.10

10 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,11
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception

11 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment.
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.12 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).13 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in

12 See, e.g., Diehr, 450 U.S. at 187.
13 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir.
2014).
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combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).14
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.15

14 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
15 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine, or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo, 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
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Analysis
Step 1 – Statutory Category
Claim 20, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is “directed to the abstract idea
of transferring funds from a first payment channel to a second payment
channel” (Final Act. 5), and elaborated by determining “[t]he claims . . . are
similar to concepts found by the court to be abstract such as fundamental
economic practices of intermediated settlement and hedging (Alice and
Bilski).” Ans. 7.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
“[t]he invention relates to a system and method of transferring funds from
one payment mechanism to another.” Spec. 1, ll. 7–8. The Specification
provides further explanation:
A method of transferring funds can include providing a
user or automated process with an option of setting up an
automatic fund transfer from a first payment channel to a
second payment channel, providing an input module configured
to receive an access parameter from an entity authorized to
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provide the access parameter, providing an implementation
module configured to automatically transfer funds through the
card service, and transferring funds automatically from the first
payment channel to the second payment channel through an
implementation module configured to automatically transfer
funds through the card service.
Spec. 2, l. 29 – 3, l. 3.
Appellant’s Abstract describes the invention as “[a] system and
method of transferring funds includes a communication module configured
to provide a user or automated process with an option of setting up an
automatic fund transfer from a first payment channel to a second payment
channel.” Spec. 17 (Abstract).
In TABLE 1 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 represent generic
computer components and techniques:
TABLE 1
Independent Claim 20 Revised Guidance
A method of transferring funds
comprising:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101.
[1] providing a user or
automated process with an
option of setting up an
automatic fund transfer from a
first payment channel to a
second payment channel;
Providing an option for funds transfer
from a first payment channel to a second
payment channel is an abstract idea, i.e.,
“Certain methods of organizing human
activity . . . including . . . commercial
interactions” or, alternatively, it is a
fundamental economic practice. See
Revised Guidance 52.
[2] providing a processor that
receives an access parameter
from an input module from
A processor is a generic computer
component, and receiving an access
parameter, e.g., a password, can be
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Independent Claim 20 Revised Guidance
an entity authorized to
provide the access
parameter;
considered as extra-solution data
gathering, and also is considered to be
well-understood, routine and
conventionally used in computing.
[3] the access parameter that
locates specific information at
a first database, wherein the
information is stored
electronically or magnetically
on a medium capable of
holding data including an
optical storage medium, a
magnetic storage medium, a
temporary electronic storage
medium, or microcircuitry;
Storing data on a storage medium is a
generic computer function.
[4] the access parameter
associated with a second
payment channel and being
received from an entity
including the owner of
information or one or more
authorized surrogate,
the authorized surrogate acting
on behalf of or at the behest of
the owner of the information,
and the access parameter
configured to traverse a
security system guarding the
information in the first
database;
An access parameter, e.g., a password,
is well-understood, routine and
conventionally known in computing.
[5] providing an
implementation module that
automatically transfers funds;
and
The claimed implementation module
represents well-understood, routine, and
conventional computer elements and
techniques. For example, the
Specification describes that “the system
for transferring funds can include a
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Independent Claim 20 Revised Guidance
processor. The processor can direct or
coordinate one or more modules. The
system can include an implementation
module configured to transfer funds
independent of bill presentment. The
implementation module can include
software-coded instructions. The
implementation module can also
include hardware-coded instructions.”
Spec. p. 2, ll. 19–23.
[6] transferring funds
automatically from the first
payment channel to the second
payment channel through an
implementation module that
automatically transfers funds
through the communication
module, the automatic transfer
through the communication
module, reflecting the consent
and knowledge of the owner of
the information, either directly
or indirectly through one or
more authorized surrogate, the
authorized surrogate acting on
behalf of or at the behest of the
owner of the information, the
funds implemented to perform
an authorized function after the
funds are transferred to the
second payment channel,
Transferring funds from a first payment
channel to a second payment channel is
an abstract idea, i.e., “Certain methods
of organizing human activity . . .
including . . . commercial interactions”
or, alternatively, transferring funds is a
fundamental economic practice. See
Revised Guidance 52. See also Smart
Sys. Innovation, Inc. v. Chicago Transit
Auth., 873 F.3d 1364, 1371–72 (Fed.
Cir. 2017) (forming and collecting data
for financial transactions in a certain
field); Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372,
1378–79 (Fed. Cir. 2017) (“local
processing of payments for remotely
purchased goods”) (citation omitted),
and CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–
73 (Fed. Cir. 2011) (verifying the
validity of credit card transactions over
the Internet). Here, the claim involves
nothing more than transferring data,
i.e., funds data for payment processing,
without any particular inventive
technology — an abstract idea. See
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Independent Claim 20 Revised Guidance
Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016).
[7] allowing new or existing
online bill payments to be
converted to card transactions
via single entry or mass
conversion and
Converting one form of payment to
another form of payment is an abstract
idea that is otherwise well-understood,
routine, and conventional in financial
payment systems.
[8] providing an input
module, wherein the input
module includes a device
capable of storing an access
parameter for retrieval
including a keyboard, mouse,
wired transmission, or
wireless transmission, and
wherein the input module
includes a device configured
to receive the access
parameter for retrieval
including a configured port,
antenna, or scanner, and
These claimed elements represent
generic computer devices and functions
that are well-understood, routine, and
conventional.
[9] providing a filter module
that filters data based on
content by identifying which
[ ] funds or data are sensitive,
These claimed elements represent
generic computer devices and functions
that are well-understood, routine, and
conventional.
[10] encrypting information
associated with funds for safe
transfer and removing data
that is irrelevant to the
authorized function, wherein
the authorized function is to
be performed after the funds
are transferred to the second
payment channel set by the
user when security of funds is
a concern.
Encrypting data is an abstract idea that
uses mathematical formulas or
equations. Revised Guidance 52, n.12.
Additionally, encryption is well-
understood, routine, and conventionally
known in the computing arts,
particularly in the area of funds
transfer.
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Claims App.
McRO
In the Brief, Appellant argues the claims are similar to those held
patent-eligible in McRO. Br. 9 (“[In McRO, t]he Court reasoned that ‘the
claimed improvement here is allowing computers to produce accurate and
realistic lip synchronization and facial expressions in animated characters
that previously could only be produced by human animators’ . . . . [And t]he
same principles apply here. The claimed subject matter allows for example,
an automatic funds transfer from a first payment channel to a second
payment channel. . . .”) (generally citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
However, we note the claims in McRO recited a “specific . . .
improvement in computer animation” using “unconventional rules that
relate[d] sub-sequences of phonemes, timings, and morph weight sets.”
McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the
incorporation of the claimed rules, not the use of the computer,” improved
an existing technological process. Id. at 1314. Appellant does not, however,
identify how claim 20 improves an existing technological process. See
Alice, 573 U.S. at 223 (explaining that “the claims in Diehr were patent
eligible because they improved an existing technological process”). Rather,
claim 20 concerns “[a] method of transferring funds.” Br. 16. In addition,
Appellant does not direct us to any evidence that the claimed “transferring
funds automatically from the first payment channel to the second payment
channel through an implementation module that automatically transfers
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funds through the communication module” or other limitations of claim 20
correspond to unconventional rules.
Bancorp
Appellant further argues, “[a] computer is integral to this method.
This claimed feature cannot exist but for a computer programmed to filters
data based on content and encrypt information. Applicants respectfully
submit that in this case, just as in Bancorp Services, L.L.C. v. Sun Life Assur.
Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012), the computer is
integral to the claimed invention. This is in contrast to previous methods
susceptible that were not computer based and were susceptible to human
error.” Br. 9. We are not persuaded by Appellant’s reliance upon the
overall holding in Bancorp, which does not appear to support Appellant’s
contention.
We are not persuaded because, in Bancorp, the Federal Circuit held:
To salvage an otherwise patent-ineligible process, a
computer must be integral to the claimed invention, facilitating
the process in a way that a person making calculations or
computations could not. See SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1333 (Fed.Cir.2010) (“In order for the
addition of a machine to impose a meaningful limit on the
scope of a claim, it must play a significant part in permitting the
claimed method to be performed, rather than function solely as
an obvious mechanism for permitting a solution to be achieved
more quickly, i.e., through the utilization of a computer for
performing calculations.”). Thus, as we held in Fort Properties,
Inc. v. American Master Lease LLC, the limitation “using a
computer” in an otherwise abstract concept did not “ ‘play a
significant part in permitting the claimed method to be
performed,’ ” 671 F.3d 1317, 1323 (Fed.Cir.2012) (quoting
Dealertrack, 674 F.3d at 1333), and thus did not “impose
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meaningful limits on the claim’s scope,” id. (quoting
CyberSource, 654 F.3d at 1375). The computer required by
some of Bancorp’s claims is employed only for its most basic
function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.
See Benson, 409 U.S. at 67, 93 S.Ct. 253 (invalidating as
patent-ineligible claimed processes that “can be carried out in
existing computers long in use, no new machinery being
necessary,” and “can also be performed without a computer”).
We agree with the district court that for purposes of
§ 101 there is no material difference between the claims
invalidated in Bilski and those at issue here. Bancorp, 771
F.Supp.2d at 1066. In Bilski, the patent applicant “attempt[ed]
to patent the use of the abstract idea of hedging risk in the
energy market and then instruct[ed] the use of well-known
random analysis techniques to help establish some of the inputs
into the equation.” 130 S.Ct. at 3231. Here, Bancorp’s patents
“attempt to patent the use of the abstract idea of [managing a
stable value protected life insurance policy] and then instruct
the use of well-known [calculations] to help establish some of
the inputs into the equation.” Id. As in Bilski, the claims do not
effect a transformation, and the fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter. We discern no fault in the conclusion of the
district court, Bancorp, 771 F.Supp.2d at 1066, that the asserted
claims do not meet either prong of the machine-or-
transformation test—which, while “not the sole test for
deciding whether an invention is a patent-eligible ‘process,’ ”
remains “a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes
under § 101,” Bilski, 130 S.Ct. at 3227.
Bancorp Servs, 687 F.3d at 1277 (Fed. Cir. 2012).
Bascom
Appellant further relies upon the holding in BASCOM to confer
patentability.
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The claims are directed to significantly more than a
fundamental economic practice. They are directed to a specific
system and methods in the field of data processing and
computer networks with a particular combination of steps and
elements that permit filtering and encryption to take place. The
claimed systems and methods overcome a problem in an
inventive way by taking advantage of the technical capabilities
of servers and computer technology in the specific claimed
order and combination. See, e.g., BASCOM Global Internet
Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
(a filtering tool with customizable filtering features, was
deemed an inventive concept). . . .
As the Federal Circuit has held, even if elements of the
claim are known or generic, the specific combination or order
may provide an inventive concept.
Br. 10. We disagree with Appellant’s assertion.
We disagree because, in BASCOM, the claims were directed to the
inventive concept of providing customizable Internet-content filtering
which, under Step 2 of the Alice analysis, was found to transform the
abstract idea of filtering content into a patent-eligible invention. Although
the underlying idea of filtering Internet content was deemed too abstract,
under step 2 of the Alice analysis, the claims carved out a specific location
for the filtering system, namely a remote Internet service provider (ISP)
server, and required the filtering system to give users the ability to customize
filtering for their individual network accounts. BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
In response to Appellant’s reliance upon BASCOM, supra, there is no
evidence of record to substantiate the assertion that the claims recite non-
conventional and non-generic arrangement of known, conventional
elements, as in BASCOM. Moreover, we find no analogy between
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Appellant’s claimed method for transferring funds and the Internet content
filtering claims in BASCOM.
Under the broadest reasonable interpretation standard,16 we conclude
limitations [1] through [9] of claim 20 recite limitations that would, in one
form or another, occur when securely transferring funds. See Final Act. 6 et
seq. For example, limitation [1], “providing . . . an option of setting up an
automatic fund transfer from a first payment channel to a second payment
channel” and [6] “transferring funds” are abstract steps that generally occur
in funds transfer operations.
We determine that claim 20, overall, recites certain methods of
organizing human activity such as commercial interactions or, alternatively,
it recites a fundamental economic practice. This type of activity, i.e., funds
transfer, as recited overall in limitations [1] through [10], for example,
includes longstanding conduct that existed well before the advent of
computers and the Internet and, aside from the computer-related aspects,

16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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could be carried out by a human with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).17
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method of transferring funds recites a judicial exception. We conclude
claim 20, under our Revised Guidance, recites a judicial exception of funds
transfer, i.e., certain methods of organizing human activity in the form of
either commercial interactions or a fundamental economic practice, and thus
is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.

17 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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As to the specific limitations, we find limitation [2], “receiv[ing] an
access parameter from an input module from an entity authorized to provide
the access parameter” recites insignificant data gathering. See MPEP
§ 2106.05(g). Data gathering, as performed by this step or function in
Appellant’s claim 1, is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d sub nom., Bilski v. Kappos, 561 U.S. 593 (2010).
With respect to this step of the analysis, Appellant argues, “[t]hese
improvements enhance the functioning of the computer itself with the
claimed methods and systems that improve the computer software’s abilities
to both assess, integrate and improve the speed and accuracy of data flow.”
Br. 11. Further, “the claims are specific and detailed. They contain both
additional limitations and meaningful limitations, which together make clear
that the field of data processing is not being tied up. Rather, the claims are
directed to a specific system and a particular method that applies the claimed
computer system and methods.” Id.18
However, on this record, we are not persuaded that Appellant’s claims
operate the recited generic computer components (e.g., see limitations [3]–

18 Regarding preemption, “[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility. . . . Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract”).
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[5] and [8]–[10]) in an unconventional manner to achieve an improvement in
computer functionality. See MPEP § 2106.05(a).
We find each of the limitations of claim 20 either recite abstract ideas,
extra-solution activity, or generic computer elements and/or functionality as
discussed above, and none of the limitations integrate the judicial exception
of funds transfer into a practical application as determined under one or
more of the MPEP sections cited above.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., 830 F.3d at 1351 (“Though lengthy and numerous,
the claims do not go beyond requiring the collection, analysis, and display of
available information in a particular field, stating those functions in general
terms, without limiting them to technical means for performing the functions
that are arguably an advance over conventional computer and network
technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
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the Brief that are directed to the Bilski machine-or-transformation test, which
would only be applicable to the method (process) claims on appeal. See
MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs of Tx., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1258 (Fed. Cir. 2016).
In applying step two of the Alice analysis, we must “determine
whether the claims do significantly more than simply describe [the] . . .
abstract method” and thus transform the abstract idea into patentable subject
matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
We look to see whether there are any “additional features” in the claims that
constitute an “inventive concept,” thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. Alice, 573 U.S. at
221. Those “additional features” must be more than “well-understood,
routine, conventional activity.” Mayo, 566 U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
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non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea19; mere instructions to implement an
abstract idea on a computer20; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry.21
With respect to this step of the analysis, Appellant argues:
The claims are directed to significantly more than a
fundamental economic practice. They are directed to a specific
system and methods in the field of data processing and
computer networks with a particular combination of steps and
elements that permit filtering and encryption to take place. The
claimed systems and methods overcome a problem in an
inventive way by taking advantage of the technical capabilities
of servers and computer technology in the specific claimed
order and combination.
Br. 10.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
funds transfer into a patent-eligible application of that abstract idea, as
discussed above.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and

19 Alice, 573 U.S. at 221–23.
20 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
21 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “processor,”
“input module,” “medium capable of holding data,” “implementation
module,” “communication module,” “input device,” “device capable of
storing an access parameter,” “keyboard, mouse, wired transmission . . . or
wireless transmission,” “device configured to receive the access parameter
for retrieval including a configured port, antenna, or scanner,” and “filter
module” recited in the “method of transferring funds” of claim 20, the
Specification discloses, with respect to the “medium capable of holding
data”:
For example, the funds corresponding to funds to be
transferred can be stored electronically, magnetically, optically,
on paper, or through any medium capable of holding data. The
funds can be electronically stored using an optical storage
medium, a magnetic storage medium, a temporary electronic
storage medium such as random access memory (RAM),
microcircuitry, and other electronic media. Examples of
electronic media for storing funds are flash disk drives,
magnetic disk drives, optical disk drives, magnetic tapes, and
any surface into or upon which funds can be etched, or
soldered. The funds can also be stored optically, for example, in
holographic media. Non-electronic funds storage is a well
known form of storage and includes such traditional devices as
paper and human memory. It is not necessary for the funds to
be confined to one storage location.
Spec. 6, l. 25–7, l. 2. Further, concerning the access parameter, input device,
and input module:
Examples of access parameters that can traverse such security
are a password that can be alphanumeric, fingerprint data,
retinal data, biometric data such as DNA recognition, or any
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other funds capable of hindering unauthorized access to the
funds.
The access parameters can be introduced through an
input module. An input module can be anything capable of
receiving the access parameter from the owner of the funds or
the owner's authorized surrogate. An authorized surrogate can
be a natural person, organization, device, or document, for
example, a will. Examples of an input device are a keyboard,
mouse, wired transmission, wireless transmission, or any
medium capable of storing an access parameter for retrieval by
an input module. In some embodiments, the input module can
include properly configured ports, antennas, scanners, or other
device configured to receive the access parameter.
Spec. 8, ll. 11–21.
With respect to the “input module,” “filter module,” and
“communication module,” the Specification further describes their functions
as follows:
Input module 1210 is configured to receive access parameter
1100 and can then pass access parameters 1100 to access
module 1220. Access module 1220 can then use access
parameter 1100 to access first payment channel 1500. In this
example, collection module 1250 can retrieve the funds from
first payment channel 1500. If desired, filter module 1260 can
ensure that only certain funds is communicated to second
payment channel 1600 by and can be configured to separate the
unwanted funds and block the unwanted funds from being
transferred to second payment channel 1600. Communication
module 1230 can be configured to transfer the funds to second
payment channel 1600 and implementation module 1240 can
configure the funds to perform a function authorized by the
owner of the funds. Communication module 1230 can include
paper or electronic forms, natural persons or a computer
executing instructions and can be configured to communicated,
for example, by wired connection, wireless connection,
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verbally, or through written word. Communication module can
be configured to transfer funds independent of bill presentment.
Spec. 9, ll. 11–25.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as quoted above.22
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at

22 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–37, 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, we sustain the Examiner’s § 101 rejection of independent
claim 20, and grouped claims 1–19 and 21–37 which fall therewith. See
Claim Grouping, supra.
2. § 112, ¶ 1 Written Description Rejection R2 of Claims 1, 20, and 28
Issue 2
Appellant argues (Br. 11) the Examiner’s rejection of claim 1 (and
similarly for claims 20 and 28) under 35 U.S.C. § 112, first paragraph, as
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lacking written description support is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the recitation of “a filter module to
filter data based on content, including determining which funds or data are
sensitive, encrypting information associated with funds for safe transfer and
removing data that is irrelevant to the authorized function” lacks written
description support?
Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.; cf. U.S. v. Telectronics, Inc., 857 F.2d 778,
785 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably
skilled in the art could make or use the invention from the disclosures in the
patent coupled with information known in the art without undue
experimentation.”) (emphasis added).
Analysis
The Examiner found:
The claims recite a filter module to filter data based on
content, including determining which funds or data are
sensitive, encrypting information associated with funds for safe
transfer and removing data that is irrelevant to the authorized
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function. The specification provides no detail for regarding how
data is filtered based on content, determining which funds or
data are sensitive, encrypting information associated with funds
for safe transfer and removing data that is irrelevant to the
authorized function. The specification at 0051 merely
substantially mirrors the claim language and provides no
additional guidance as to how one may perform the recited
steps associated with the filter module.
Final Act. 8–9.
Appellant contends “there is a presumption that an adequate written
description of the claimed invention is present in the specification as filed,
MPEP 2163. Thus the examiner has the initial burden, after a thorough
reading and evaluation of the content of the application, of presenting
evidence or reasons why a person skilled in the art would not recognize that
the written description of the invention provides support for the claims.”
Br. 11.
We disagree with the Examiner’s findings, and further note it appears
that the Examiner has conflated the requirements for enablement with those
for written description support under 35 U.S.C. § 112, first paragraph, by
requiring detail as to how data is filtered based on content, determining
which funds or data are sensitive, etc. That is not the standard for written
description.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s finding that the
independent claims lack adequate written description support, such that we
do not sustain the written description rejection of claims 1, 20, and 28.
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3. § 112, ¶ 2 Rejection R3 of Claims 1, 20, and 28
Issue 3
In view of the lack of any substantive or separate arguments directed
to indefiniteness Rejection R3 of claims 1, 20, and 28 under § 112, second
paragraph, (see Br. 11–12), we sustain the Examiner’s rejection of these
claims. Arguments not made are waived.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–37 are patent-ineligible under 35 U.S.C. § 101, and we sustain the
rejection.
(2) The Examiner erred with respect to written description
Rejection R2 of claims 1, 20, and 28 under 35 U.S.C. § 112, first paragraph,
and we do not sustain the rejection.
(2) The Examiner did not err with respect to indefiniteness
Rejection R3 of claims 1, 20, and 28 under 35 U.S.C. § 112, second
paragraph, and we sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).

Appeal 2018-004608
Application 12/437,205

37
DECISION SUMMARY
We affirm the Examiner’s decision rejecting claims 1–37.
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–37 101 Subject Matter
Eligibility
1–37
1, 20, 28 112, ¶ 1 Written
Description
1, 20, 28
1, 20, 28 112, ¶ 2 Indefiniteness 1, 20, 28
Overall
Outcome
1–37
FINALITY AND RESPONSE
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