Comenity LLC

Patent Trials and Appeals Board

Dec 23, 2020

2020005605 (P.T.A.B. Dec. 23, 2020)

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.
15/164,740 05/25/2016 Richard Barber AINSWORTH III ADS-007 5537
45588 7590 12/23/2020
ALLIANCE DATA C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
WONG, ERIC TAK WAI
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/23/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BARBER AINSWORTH III,
TODD ARMSTRONG,
JOSEPH HASH, and
JOSHUA SNYDER-HILL

Appeal 2020-005605
Application 15/164,740
Technology Center 3600

Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–11, 13–18, 20, and 21. 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 Comenity LLC.
Appeal Br. 1.
Appeal 2020-005605
Application 15/164,740

2
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a clienteling credit suggestion
confidence system. Claim 1, reproduced below, is illustrative of the claimed
subject matter (emphasis added):
1. A method for clienteling credit suggestion
confidence, the method comprising:
receiving, at a computer system of a credit account
provider and from a mobile device utilized by an associate,
identification information about a client;
receiving, at the computer system of the credit account
provider and from the mobile device utilized by the associate, a
minimum credit account amount from the client,
the minimum credit account amount being a
minimum credit limit requirement above which the client
would apply for a new credit account and below which the
client would not apply for the new credit account;
utilizing, at the computer system of the credit account
provider, the identification information and the minimum credit
account amount to prescreen the client for a client credit
account;
generating, at the computer system of the credit account
provider, a result of the prescreen for the client credit account;
providing, from the computer system of the credit account
provider and to the mobile device utilized by the associate, a
confidential signal based on a result of the prescreen for the
client credit account; and
displaying, upon receipt of the confidential signal and on
the display of the mobile device utilized by the associate, a visual
indication of an action to be taken by the associate,
the action comprising:
the associate suggesting the client apply for the new
credit account from the credit account provider, or
the associate refraining from suggesting the client
apply for the new credit account from the credit account
provider.
Appeal Br. 21 (Claims Appendix).
Appeal 2020-005605
Application 15/164,740

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Walker US 5,970,478 Oct. 19, 1999
Beirne US 2009/0287556 A1 Nov. 19, 2009
Blackhurst US 2011/0191157 A1 Aug. 4, 2011
Rasband US 2014/0257926 A1 Sept. 11, 2014
White, Martha C., “Retail workers confess using the hard sell to pitch
credit cards,”, Oct. 25, 2010
REJECTIONS
Claims 1–3, 5–11, 13–18, 20, and 21 are rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
Claims 1–3, 5, 9–11, and 13–18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Beirne, Rasband, and Walker.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Beirne, Rasband, Walker, and White.
Claims 7, 8, 20, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beirne, Rasband, Walker, and Blackhurst.
OPINION
The rejection of claims 1–3, 5–11, 13–18, 20, and 21 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter.
The Appellant argued these claims as a group. See Appeal Br. 9–12.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 3, 5–11, 13–18, 20, and 21 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2020-005605
Application 15/164,740

4
Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53
(Jan. 7, 2019). See also id. at 53–54 (“[C]onsider[] whether the claimed
subject matter falls within the four statutory categories of patentable subject
matter identified by 35 U.S.C. 101 . . . .”).
Appeal 2020-005605
Application 15/164,740

5
The Examiner determined that claim 1 is directed to, inter alia,
“customer credit pre-screening.” Final Act. 2. See also id. at 4 (“the claim
encompasses performing a credit prescreen by a human analog”).
Appellant argues that the claim is not directed to an abstract idea
because “the claimed features provide[] a specific, close-ended solution that
allows the perspective customer to provide input about accepting or
declining an offer for a credit account before the credit account provider
needs to perform any costly customer prescreening, or the like.” Appeal Br.
9–10. See also id. at 10:
Moreover, by having the perspective customer provide
their initial minimum credit limit requirement, the specific
solution further allows a perspective customer to control offers
that are so often merely a broadcasted annoyance. Instead, by
implementing the claimed features, the perspective customer will
be receiving an offer that includes at least one features that they
have specifically defined. This will result in less “spam” that is
often just cast broadly about in the abstract way (emails, letters,
asks by cashiers to each and every customer at the time of
checkout, and the like) that credit account offerers presently used
in attempts to obtain new credit card holders.
Accordingly, there is a dispute over what claim 1 is directed to.
Specifically, is claim 1 directed to “customer credit pre-screening” (Final
Act. 2) or, for example, a way to reduce spam (Appeal Br. 10)?
Appeal 2020-005605
Application 15/164,740

6
Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the specification6 at the time of filing.
Claim 1 calls for a “method” comprising six steps. The first, fourth
and fifth steps employ a “computer system of a credit account provider and
from a mobile device utilized by an associate,” the second and third steps
employ just the “the computer system of the credit account provider,” and
the last step uses a “display of the mobile device utilized by the associate.”

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 2019 Revised 101 Guidance, 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .” (emphasis added)).

6 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual
limitations, it is important to read the claims ‘in light of the specification.’”
Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1387
(Fed. Cir. 2017) (Linn, J., dissenting in part and concurring in part) (citing,
e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)).

Appeal 2020-005605
Application 15/164,740

7
The first step calls for “receiving” a first type of information; that is,
“identification information about a client.”
The second step calls for “receiving” a second type of information;
that is, “a minimum credit account amount from the client, the minimum
credit account amount being a minimum credit limit requirement above
which the client would apply for a new credit account and below which the
client would not apply for the new credit account.”
The third step calls for “utilizing” the first and second types of
information “to prescreen the client for a client credit account.”
The fourth step calls for “generating” “a result of the prescreen for the
client credit account.”
The fifth step calls for “providing” “a confidential signal based on a
result of the prescreen for the client credit account.” The “confidential
signal” reasonably broadly covers any known manner of expressing it, such
as by hand.
The sixth step calls for “displaying, upon receipt of the confidential
signal” “a visual indication of an action to be taken by the associate, the
action comprising: the associate suggesting the client apply for the new
credit account from the credit account provider, or the associate refraining
from suggesting the client apply for the new credit account from the credit
account provider.” The “visual indication” reasonably broadly covers any
expression, such as a graphic.
Putting it all together, the claim is reasonably broadly construed to
cover utilizing certain credit information to prescreen a client for a credit
account and suggesting the client apply for a new credit account based on
the result of the prescreen.
Appeal 2020-005605
Application 15/164,740

8
Given the method as claimed as reasonably broadly construed and in
light of the Specification’s description of the invention as concerning
improving a clientelling relationship (para. 11), based on the record before
us, we reasonably broadly construe claim 1 as being directed to a scheme for
prescreening a client for a credit account and suggesting the client apply for
a new credit account based on the result of the prescreen.
Furthermore, the steps for carrying out the scheme for prescreening a
client for a credit account and suggesting the client apply for a new credit
account based on the result of the prescreen does not ask the “computer
system of a credit account provider and from a mobile device utilized by an
associate” and the “display of the mobile device utilized by the associate” to
go beyond their common functions. While invoking a computer to perform
certain steps can be patentably significant (see Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), and Ancora Technologies, Inc. v.
HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018)), here the instant record
does not sufficiently support the view that the recited steps have a
non-conventional effect on said devices. To the contrary, the record
supports viewing the claimed subject matter as amounting to implementing
the scheme for prescreening a client for a credit account and suggesting the
client apply for a new credit account based on the result of the prescreen as
claimed on a generic computer. See Spec., para. 8:
Terms such as “selecting”, “outputting”, “inputting”,
“providing”, “receiving”, “utilizing”, “obtaining”, “updating”,
“accessing”, “changing”, “correlating”, “prescreening”,
“developing”, “presenting” or the like, often refer to the actions
and processes of an electronic computing device/system, such as
a desktop computer, notebook computer, tablet, mobile phone,
and electronic personal display, among others.
Appeal 2020-005605
Application 15/164,740

9
Cf. Alice, 573 U.S. at 225–26 (“Instead, the claims at issue amount to
‘nothing significantly more’ than an instruction to apply the abstract idea of
intermediated settlement using some unspecified, generic computer.”).
Accordingly, we reasonably broadly construe claim 1 as being
directed to a scheme for prescreening a client for a credit account and
suggesting the client apply for a new credit account based on the result of
the prescreen via a generic computer system.
The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a type of commercial interaction, more particularly prescreening a
client for a credit account and suggesting the client apply for a new credit
account based on the result of the prescreen. Prescreening for a credit
account is a fundamental economic practice that falls within the enumerated
“Certain methods of organizing human activity” grouping of abstract ideas
set forth in the 2019 Revised 101 Guidance.9 Accordingly, we are

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two-prong inquiry.

8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea . . . .” Id. at 54.

9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
Appeal 2020-005605
Application 15/164,740

10
unpersuaded by Appellant’s argument that “the claim is eligible because it
does not recite a judicial exception of ‘certain methods of organizing human
activity.’” Appeal Br. 10.
Improvement in the Functioning of a Computer10 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to is
similar to our own.

determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject
matter grouping “(b)”:
(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).
Id. at 52.

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 54.
One consideration, implicated here, that is “indicative that an additional
element (or combination of elements) may have integrated the exception into
a practical application” (id. at 55) is if “[a]n additional element reflects an
Appeal 2020-005605
Application 15/164,740

11
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
Appellant’s only technical-improvement related argument is that the
claimed process “will result in less ‘spam.’” Appeal Br. 10. The difficulty
with this argument is that it is not reflected in the claim language. The claim
does not necessarily result in less spam. Accordingly, this argument is
unpersuasive as to error in the Examiner’s determination under Alice step
one because it is not commensurate in scope with what is claimed. “Many
of appellant’s arguments fail from the outset because, . . . they are not based
on limitations appearing in the claims . . . .” In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellant also argues that
the claims provide specific features that provide a specific
solution to problems in conventional credit account applications.
In a conventional model, every customer (or a random sampling
of customers) is asked to apply for a credit account. Such shotgun
methods for trying to obtain a new credit account holder includes
significant drawbacks such as time wasted, unnecessary costs per
application for every customer, and the like.
In contrast, by implementing the specific claimed features
of “receiving, at the computer system of the credit account
provider and from the mobile device utilized by the associate, a
minimum credit account amount from the client, the minimum
credit account amount being a minimum credit limit requirement
above which the client would apply for a new credit account and
below which the client would not apply for the new credit
account”, the features provide one specific solution, out of any

improvement in the functioning of a computer, or an improvement to other
technology or technical field” (id. at 55).
Appeal 2020-005605
Application 15/164,740

12
possible number of solutions, to the presently existing “shotgun”
application methodology.
Appeal Br. 11.
This argument is unpersuasive in showing the claimed process yields
a technical improvement. That the process is less of a “shotgun” approach
does not give us any insight into the technical details necessary to cause the
process claimed to overcome a “shotgun” approach that prior art methods
employed.
We have carefully reviewed the Specification to gain insight about
whether any of the claimed elements are improved but have been unable to
find any. Rather than being directed to any specific asserted improvement in
computer capabilities, the record supports the view that the claimed subject
matter is directed to prescreening a client for a credit account and suggesting
the client apply for a new credit account based on the result of the prescreen
using a generic computer as a tool.11 See Spec., para. 8, mentioned earlier.
The claim provides no additional structural details12 that would distinguish a

11 See the 2019 Revised 101 Guidance at 55:

The courts have also identified examples in which a judicial
exception has not been integrated into a practical application:
• An additional element merely recites the words “apply it”
(or an equivalent) with the judicial exception, or merely
includes instructions to implement an abstract idea on a
computer, or merely uses a computer as a tool to perform
an abstract idea.
12 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
Appeal 2020-005605
Application 15/164,740

13
“computer system of a credit account provider and from a mobile device
utilized by an associate” and a “display of the mobile device utilized by the
associate” from those that were well known at the time the application was
filed.
Also, claim 1 calls upon said devices to perform only basic functions
– i.e., “receiving,” “receiving,” “utilizing,” “generating,” “providing,” and
“displaying.” The Specification attributes no special meaning to any of
these terms. In our view, consistent with the Specification (see para. 8),
these are common processing functions that one of ordinary skill in the art at
the time of the invention would have known generic processors were capable
of performing and would have associated with generic processors. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, 134 S. Ct. at 2359 [573
U.S. at 225] (quoting Mayo, 132 S.Ct. at 1294 [566 U.S. 66, 79
(2012)]) (alterations in original). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 [573 U.S. at 225] (quoting Mayo, 132
S.Ct. at 1294 [566 U.S. at 79]) (alterations in original); see also
buySAFE[, Inc. v. Google, Inc.], 765 F.3d [1350,] 1355 [(Fed.
Cir. 2014)] (“That a computer receives and sends the information

to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
Appeal 2020-005605
Application 15/164,740

14
over a network—with no further specification—is not even
arguably inventive.”).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration into a practical application.
We have considered all of Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
they are unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?13
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 221 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)).
In that regard, the Examiner determined inter alia that the
Here, the involvement of the generic computer products does not
amount to significantly more than the abstract idea because the
mere recitation of a generic computer cannot transform a
patent-eligible abstract idea into a patent-eligible invention. The

13 This corresponds to Step 2B of the 2019 Revised 101 Guidance (see
p. 56).

[I]f a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate
the additional elements individually and in 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).
Appeal 2020-005605
Application 15/164,740

15
claims do not include additional elements that a re sufficient to a
mount to significantly more than the judicial exception because
the additional elements when considered both individually and
as an ordered combination do not amount to significantly more
than the abstract idea.
Final Act. 6. We agree for the reasons discussed.
We addressed this matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora, 908 F.3d at 1347 (“We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.”). Such an argument can also challenge a determination
under step two of the Alice framework. See buySAFE, 765 F.3d at 1354–55.
“[R]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework].” 2019 Revised 101 Guidance at 53; see also id.
n.17.
Be that as it may, we are unpersuaded that claim 1 presents an element
or combination of elements indicative of a specific asserted improvement in
computer capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the securing an electronic document, an abstract idea
itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to the system as a result of
performing the recited steps.
Appeal 2020-005605
Application 15/164,740

16
We cited the Specification in our discussion as intrinsic evidence that
the claimed devices are conventional. In doing so, we have followed
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881
F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert W. Bahr,
Deputy Commissioner for Patent Examination Policy, April 19, 2018 (the
“Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56
requires that summary judgment be denied. In Berkheimer, there
was such a genuine dispute for claims 4–7, but not for claims 1–
3 and 9. . . .
. . . .
. . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Appeal 2020-005605
Application 15/164,740

17
Berkheimer v. HP Inc., 890 F.3d 1369, 1371, 1373 (Fed. Cir. 2018) (Order,
On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring);
see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d
1354, 1368 (Fed. Cir. 2018) (Reyna, J., dissenting) (“A factual allegation or
dispute should not automatically take the determination out of the court’s
hands; rather, there needs to be justification for why additional evidence
must be considered—the default being a legal determination.”). Here, the
Specification indisputably shows the claimed devices were conventional at
the time of filing. Accordingly, no genuine issue of material fact exists as to
the well-understood, routine, or conventional nature of the devices as
claimed.
No arguments having been presented, we conclude that no error has
been committed in the determination under Alice step two that claim 1 does
not include an element or combination of elements circumscribing the
patent-ineligible concept it is directed to so as to transform the concept into
an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2, 3, 5–11, 13–18, 20,
and 21 which stand or fall with claim 1, are directed to an abstract idea and
do not present an “inventive concept,” we sustain the Examiner’s conclusion
that they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656
F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Appeal 2020-005605
Application 15/164,740

18
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).

The rejection of claims 1–3, 5, 9–11, and 13–18 under 35 U.S.C. § 103(a) as
being unpatentable over Beirne, Rasband, and Walker.
The claims require receiving
a minimum credit account amount from the client,
the minimum credit account amount being a minimum
credit limit requirement above which the client would apply for
a new credit account and below which the client would not apply
for the new credit account.
Claim 1. Each independent claim includes similar limitations.
The Examiner finds said limitation disclosed at column 5, lines 39–51
of Walker (Final Act. 9), reproduced below:
The process starts when a customer contacts a bank agent
in step Sl. The customer provides customer information in step
S2. Preferably, this customer information includes an account
identifier that uniquely specifies a particular credit card account.
The customer selects the new credit card parameters that he
wants to have in step S3. These parameters include, for example,
the interest rate, credit limit and monthly minimum payment.
This information is entered by the bank agent into the agent
terminal 30 in step S4. The credit card parameters and the
customer information are then transmitted to the central
controller 20 in step S5. Alternatively, the information can be
entered by the customer directly into a suitable terminal.
Appeal 2020-005605
Application 15/164,740

19
This passage does not disclose “a new credit account.” We agree with
Appellant that
Walker does not refer to a “new account” but instead to “new
account parameters”. Specifically, in respect to the cited Step
16, at Column 8 lines 22-26, Walker teaches, “After the price
information is transmitted to the customer in step S14, the
customer decides whether the price is acceptable in step S15. If
he accepts the price for modifying his account, the system can
process the sale by charging the customer’s credit card, in step
Sl6.” (Underline Emphasis Added)
Appeal Br. 17.
Accordingly, column 5, lines 39–51 of Walker does not disclose said
claim limitation as alleged. As a result, a prima facie case of obviousness
has not been made out n the first instance and the rejection is not sustained.

The rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable
over Beirne, Rasband, Walker, and White.
The rejection of claims 7, 8, 20, and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Beirne, Rasband, Walker, and Blackhurst.
Claims 6, 7, and 8, and claims 20 and 21, depend from independent
claims 1 and 16, respectively. The Examiner does not rely on the additional
references (White and Blackhurst) in any way that would cure the deficiency
in the rejection of independent claims 1, 9, and 16 discussed above. Thus,
the rejections of these claims are not sustained for the reasons given above
for not sustaining the rejection of independent claims 1 and 16 from which
these claims depend.
Appeal 2020-005605
Application 15/164,740

20
CONCLUSION
The decision of the Examiner to reject claims 1–3, 5–11, 13–18, 20,
and 21 is affirmed.
More specifically:
The rejection of claims 1–3, 5–11, 13–18, 20, and 21 under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter is affirmed.
The rejection of claims 1–3, 5, 9–11, and 13–18 under 35 U.S.C.
§ 103(a) as being unpatentable over Beirne, Rasband, and Walker is
reversed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Beirne, Rasband, Walker, and White is reversed.
The rejection of claims 7, 8, 20, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Beirne, Rasband, Walker, and Blackhurst is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1-3, 5–11,
13–18, 20,
21
101 Eligibility 1–3, 5–11,
13–18, 20,
21

1–3, 5, 9–
11, 13–18
103 Beirne, Rasband,
Walker
1–3, 5, 9–
11, 13–18
6 103 Beirne, Rasband,
Walker, White
6
7, 8, 20, 21 103 Beirne, Rasband,
Walker, Blackhurst
7, 8, 20, 21
Overall
Outcome
1–3, 5–11,
13–18, 20,
21

Appeal 2020-005605
Application 15/164,740

21
TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED