Ex Parte ANDERSSONDownload PDFPatent Trials and Appeals BoardJun 21, 201913242459 - (D) (P.T.A.B. Jun. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/242,459 09/23/2011 23908 7590 06/25/2019 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 FIRST NAMED INVENTOR Jonas ANDERSSON 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 ATTORNEY DOCKET NO. CONFIRMATION NO. AWAPP0117US 4748 EXAMINER SHERR, MARIA CRISTI OWEN ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONAS ANDERSSON 1 Appeal2018-001964 Application 13/242,459 Technology Center 3600 Before MARC S. HOFF, JAMES R. HUGHES, and BETH Z. SHAW, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's Final decision rejecting claims 1--4, 6, 7, 9, and 10. Claims 5, 8, and 11 have been withdrawn. See Final Act. 1-2. 2 We have jurisdiction under 35 U.S.C. § 6(b ). 1 Precise Biometrics AB ("Appellant") is the applicant as provided in 37 C.F .R. § 1.46 and is identified as the real party in interest as the real party in interest. Appeal Br. 2. 2 We refer to Appellant's Specification ("Spec.") filed Sept. 23, 2011 (claiming benefit ofSE 1051185-5, filed Nov. 10, 2010); Appeal Brief ("Appeal Br.") filed May 30, 2017; and Reply Brief ("Reply Br.") filed Dec. 11, 2017. We also refer to the Examiner's Final Office Action ("Final Act.") mailed Nov. 29, 2016; and Answer ("Ans.") mailed Oct. 10, 2017. Appeal2018-001964 Application 13/242,459 We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION. Appellant's Invention The invention "generally relates to a processing device, a[ n] identity provider server, and methods and computer programs therefore" for "provid[ing] a secure payment mechanism solution for Internet shopping and the like." Spec. 1:4--5; see Spec 1:33-34; 2: 1-3:28; and Abstract. Representative Claim Independent claims 1 and 6, reproduced below, further illustrate the invention: 1. A processing device of a user, comprising: a user interface; a processor connected to the user interface; a biometric reader connected to the processor; and a communication circuit connected to the processor and configured to establish a connection to the Internet, wherein, the processor is configured to: acquire biometric data from the user by operation of the biometric reader, transmit a claim to a payment server of a payment actor different from the user, the payment server being external and remote from the processing device of the user and having a payment processor, from the processing device of the user to the payment server, via the connection to the Internet, that a payment should be executed, receive, from the payment server to the processing device of the user, an authentication request form from the payment server via the connection to the Internet, forward the authentication request form together with identification data including a representation of the 2 Appeal2018-001964 Application 13/242,459 biometric data to an identity provider (IdP) different from the user via an IdP server of the IdP provider, the IdP server being external and remote from the processing device of the user and the payment server and having an IdP processor, from the processing device of the user to the IdP server via the connection to the Internet, receive, from the IdP server to the processing device of the user, an authentication reply form from the IdP server via the connection to the Internet, and forward the authentication reply form to the payment server, from the processing device of the user to the payment server via the connection to the Internet to authenticate the user to the payment actor. Appeal Br. 26 (Claim App.). 6. A method for a secure payment mechanism of a processing device of a user having a user interface, a processor connected to the user interface, a biometric reader connected to the processor, and a communication circuit connected to the processor and configured to establish a connection to the Internet, the method comprising: acquiring a biometric sample from the user via the biometric reader; transmitting a claim to a payment server of a payment actor different from the user, the payment server being external and remote from the processing device of the user and having a payment processor indicating intention to make a particular payment from the processing device of the user to the payment server via the connection to the internet; receiving, from the payment server to the processing device of the user, an authentication request form from the payment server via the connection to the internet; sending the request form, together with user identification and a representation of the biometric sample to an identity provider (IdP) different from the user via an IdP server of the IdP provider, the IdP server being external and remote from the processing device of the user and the payment server 3 Appeal2018-001964 Application 13/242,459 and having an IdP processor, to which the user is previously registered from the processing device of the user to the IdP server via the connection to the internet; receiving, from the IdP server to the processing device of the user, an authentication reply form from the IdP server via the connection to the internet, if there is a match at the IdP server between the biometric sample and a registered biometric template; and sending the authentication reply form to the payment server from the processing device of the user to the payment server via the connection to the internet to authenticate the user to the payment actor. Appeal Br. 27-28 (Claim App.). Rejections on Appeal3 1. The Examiner rejects claims 6, 7, 9, and 10 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See Final Act. 5- 8. 2. The Examiner rejects claims 1--4, 6, 7, 9, and 10 under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. See Final Act. 8-9. 3. The Examiner rejects claims 1--4, 6, 7, 9, and 10 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Siegal et al. (US 7,502,761 B2; issued Mar. 10, 2009) ("Siegal") and Kranzley et al. (US 7,983,987 B2; 3 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 103 and 112, e.g., to rename§ 112's subsections. Because Application 13/242,459 has an effective filing date earlier than the AIA's effective date for applications, this decision refers to the pre AIA versions of§§ 103 and 112. 4 Appeal2018-001964 Application 13/242,459 issued July 19, 2011 (filed Jan. 30, 2003)) ("Kranzley"). See Final Act. 9- 11. ISSUES Based upon our review of the record, Appellant's contentions, and the Examiner's findings and conclusions, the issues before us follow: 1. Did the Examiner err in finding Appellant's claims were directed to patent-ineligible subject matter, without significantly more, under 35 U.S.C. § 101? 2. Did the Examiner err in finding Appellant's claims were indefinite under 35 U.S.C. § 112, second paragraph? 3. Did the Examiner err in determining that the combination of Siegal and Kranzley would have collectively taught or suggested a processor configured to: transmit a claim to a payment server of a payment actor different from the user, the payment server being external and remote from the processing device of the user and having a payment processor, from the processing device of the user to the payment server, via the connection to the Internet, that a payment should be executed, receive, from the payment server to the processing device of the user, an authentication request form from the payment server via the connection to the Internet within the meaning of Appellant's claim 1 and the commensurate limitations of claims 6 and 9? 5 Appeal2018-001964 Application 13/242,459 ANALYSIS Subject Matter Eligibility-35 U.S.C. § 101 Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quoting Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217. Assuming that a claim nominally falls within one of the statutory categories of machine, manufacture, process, or composition of matter, the first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract idea. 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. Kappas, 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, but are not limited to, 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 6 Appeal2018-001964 Application 13/242,459 formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981) ); "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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; 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."). The Supreme Court continued by qualifying its findings, indicating that a claim "seeking patent protection for that formula in the abstract .... is not accorded the protection of our patent laws,[] and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step of the Alice and Mayo framework where the elements of the claims are considered "individually and 'as an ordered combination' to determine whether the additional 7 Appeal2018-001964 Application 13/242,459 elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79). This second step is described as "a search for an 'inventive concept'-i.e., an element or combination of elements that is ' ... significantly more than ... the [ineligible concept] itself."' Id. at 217-218 ( quoting Mayo, 566 U.S. at 72-73). "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]."' Alice, 573 U.S. at 221 ( 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. The Court acknowledged in Mayo that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The USPTO recently published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance"). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people) (hereinafter "Step 2A, prong 1 "); and 8 Appeal2018-001964 Application 13/242,459 (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) (hereinafter "Step 2A, prong 2"). See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55. 4 A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent eligible under 35 U.S.C. § 101. Id. Only if a claim: (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. See 2019 Revised Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 106.05(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. 5 See 2019 Revised Guidance, 84 Fed. Reg. 56. 4 All references to the MPEP are to the Ninth Edition, Revision 08-2017 (rev. Jan. 2018). 5 Items (3) and ( 4) are collectively referred to as "Step 2B" hereinafter and in the 2019 Revised Guidance. 9 Appeal2018-001964 Application 13/242,459 Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1 Turning to the first step of the eligibility analysis, "the first step in the Alice inquiry ... asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). The Examiner rejects claims 6, 7, 9, and 10 as a group based on claim 6 (see Final Act. 5-8) and concludes claim 6 is directed to patent-ineligible subject because claim 6 "is directed to the abstract idea [ ofJ checking an identification in order to make a payment." Final Act. 6. The Examiner also concludes that claim 6 includes an additional element-the processing device-that "merely automates an algorithm via basic computer functions, and therefore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception." Final Act. 7. See Final Act 5-8; Ans. 8-10. Here, in rejecting the claims (in particular claim 6) under 35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework, consistent with the guidance set forth in the USPTO' s "2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at the time the rejection was made, i.e., on Nov. 29, 2016. 10 Appeal2018-001964 Application 13/242,459 Appellant contends that the Examiner erred in rejecting the claims as being directed to patent ineligible subject matter. See Appeal Br. 10-19; Reply Br. 2--4. Specifically, Appellant contends, with respect to the first step of the Alice analysis, that the Examiner did not present a prima facie rejection under the prevailing guidance and the Examiner improperly over- simplified the claim. See Appeal Br. 10-13; Reply Br. 4. Appellant further contends the instant claims recite an improvement to technology. See Appeal Br. 18; Reply Br. 2-3. For the reasons discussed below, we conclude Appellant's claim 6 (as well as claims 7, 9, and 10) recite abstract ideas, these abstract ideas are not integrated into a practical application, nor do they include an inventive concept. In view of the 2019 Revised Guidance, we clarify and expand the Examiner's reasoning as follows. We begin our analysis by broadly but reasonably construing Appellant's claim 6 (see Appeal Br. 27-28 (Claim App.)). Claim 6 recites "[a] method for a secure payment mechanism of a processing device of a user." That is, a payment method utilizing a secure payment device. The device ("processing device of a user") includes additional structural elements-"a user interface, a processor connected to the user interface, a biometric reader connected to the processor, and a communication circuit connected to the processor and configured to establish a connection to the Internet." The method also recites "acquiring a biometric sample from the user via the biometric reader." To wit, obtaining biometric data utilizing a sensor. Further, the method recites "transmitting a claim to a payment server;" i.e., sending payment information to the payment server ,where the 11 Appeal2018-001964 Application 13/242,459 payment server is operated by "a payment actor different from the user," the payment server is "external and remote" from the user processing device, and the server includes "a payment processor" that "indicat[ es] [an] intention to make a particular payment from the processing device of the user to the payment server via the connection to the internet." The method additionally recites "receiving, from the payment server to the processing device of the user, an authentication request form from the payment server via the connection to the internet." In other words, the method calls for sending data (an authentication request form) from the payment server to the user's processing device, which receives the data, via the Internet. Further, the method delineates sending data to an identity provider (IdP) server of an identity provider-the claim expressly recites "sending the request form," as well as "user identification and a representation of the biometric sample" to "an IdP server" of "an identity provider (IdP)"-where the identity provider is "different from the user," where "the IdP server" is "external and remote from" the user's processing device and the IdP server has "an IdP processor." This limitation also recites that the user "previously registered" with IdP processor ( of the identity provider), via the IdP server, from the user's processing device. Claim 6 also recites "receiving, from the IdP server to the processing device of the user, an authentication reply form from the IdP server via the connection to the internet, if there is a match at the IdP server between the biometric sample and a registered biometric template." In other words, receiving data (an authentication reply form) from the IdP server at the user's processing device when the users biometric data matches data in a 12 Appeal2018-001964 Application 13/242,459 template. Finally, the claim recites "sending the authentication reply form to the payment server from the processing device of the user to the payment server via the connection to the internet to authenticate the user to the payment actor," i.e., authenticating the user to the payment processor by sending the authentication reply form from the user's processing device to the payment server (via the Internet). In summary, claim 6 recites a computer implemented process for providing a payment and authenticating a user to facilitate payment processing utilizing biometric information. Hereinafter, we refer to this process as the "payment and authentication process." We find that claim 6 recites a "computer implemented method" (supra }-the payment and authentication process. A process is a statutory category of invention (subject matter) (USPTO's Step 1). Utilizing our interpretation of claim 1 (supra), we next analyze whether the claim is directed to an abstract idea (USPTO's Step 2A). Here, Appellant's claims generally, and independent claim 6 in particular ( as summarized, supra), recite a process for making a payment and authenticating a user by exchanging information. This is consistent with how Appellant describes the claimed invention. See Appeal Br. 4--5 ( citing Figs. 2-3); see also Spec. 2:1-3:28; 5:6-8 ("The basic idea of the invention is to provide a communication sequence between the user, the payment actor and the IdP for secure and easy handling of the payment."). Performing data analysis----determining a match between a user's biometric data and a template ( where the template includes information previously registered by a user}-as well as the steps of acquiring biometric data and exchanging related information among various entities, recites 13 Appeal2018-001964 Application 13/242,459 processes and analysis related to performing financial transactions-i.e., making a payment and authenticating a user by exchanging information. Appellant's contentions (supra) focus on the purported technological improvements or advances provided by the recited payment and authentication process. Claim 6, however, recites no substantive limitations on what biometric data is acquired, exchanged, and compared in the comparison ( matching) process, nor how the matching occurs, nor how the information is exchanged amongst the entities (the formatting or protocol for the data exchanges). The limitations are entirely functional in nature-for example, claim 6 recites "sending the request form, together with user identification and a representation of the biometric sample to an identity provider." See Appeal Br. 27-28 (Claim App.). The claim does not delineate any specific technological improvements. Processes involving authenticating a user, financial transactions (making a payment), and related exchanges of information are part and parcel of providing a secure payment sequence. See Spec. 5:6-8. Nowhere does Appellant point to specific claim limitations that distinguish over this abstract fundamental economic practice. Performing authentication (analyzing information) and facilitating payment, along with the related exchanges of information, is an abstract concept that is not patent eligible. See Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (The claims involve verifying (authenticating) payment information, as well as "financial transactions ... and data collection related to such transactions." "Accordingly, the Asserted Claims are directed to an abstract idea under Alice step one."); Smartflash LLC v. Apple LLC, 680 Fed. Appx. 977, 982- 83 (Fed. Cir. 2017) ( controlling access based on verification of payment 14 Appeal2018-001964 Application 13/242,459 information); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352-54 (Fed. Cir. 2014) (Claims reciting sending and receiving communications over a computer network to facilitate online commercial transactions are directed to "contractual relations, which are intangible entities" and "constitute[] a fundamental economic practice long prevalent in our system of commerce."); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370-73 (Fed. Cir. 2011) (A claim focused on verifying credit card transaction information is "an abstract idea and is not patent-eligible under § 101."). Additionally, "[a]s many cases make clear, even if a process of collecting and analyzing information is limited to particular content or a particular source, that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (quotations omitted); see also, Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ( characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas); Content Extraction & Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (Summarizing precedent in which "claims directed to the performance of certain financial transactions" involve abstract ideas and holding that claims drawn to the abstract concept of 15 Appeal2018-001964 Application 13/242,459 financial transaction-related "data collection, recognition, and storage is undisputedly well-known.") Appellant's claim 6 recites a judicial exception (US PTO' s Step 2A, Prong 1; see 2019 Revised Guidance). Specifically, claim 1 recites a computer implemented payment and authentication process as discussed supra. The payment and authentication process consists of information acquisition ( collection), information exchange, and information analysis that together recite fundamental economic practices. Included in the groupings of abstract ideas recognized in the 2019 Revised Guidance are "[ c ]ertain methods of organizing human activity," which include "fundamental economic ... practices." 2019 Revised Guidance, 84 Fed. Reg. 52. Eligibility Analysis-Revised Guidance Step 2A, Prong 2 Appellant's claim 6 also recites additional elements beyond the abstract payment and authentication process (the judicial exception) (supra). These elements include, the "processing device of a user," which includes "a user interface, a processor connected to the user interface, a biometric reader connected to the processor, and a communication circuit connected to the processor and configured to establish a connection to the Internet;" as well as, the "payment server" and "IdP server." See Appeal Br. 27-28 (Claim App.). We evaluate these additional elements to determine whether the additional elements integrate the payment and authentication process (the judicial exception) into a practical application of the exception (USPTO's Step 2A, Prong 2; see 2019 Revised Guidance). Appellant contends the claim 6 recites an improvement to technology and address "problems in the prior art technology"-specifically "the claimed invention addresses ... problems with transaction security" (Reply 16 Appeal2018-001964 Application 13/242,459 Br. 3). See Appeal Br. 18; Reply Br. 2-3. In other words, Appellant contends the Specification and claims describe a technological improvement that amounts to more than simply utilizing a computer as a tool to accomplish the payment and authentication process. Appellant's contentions correspond to the reasoning in MPEP § 2106.05(a), where additional elements integrate the judicial exception into a practical application. We, however, find Appellant's contentions unavailing. The additional elements in Appellant's claims (in particular claim 6), or the combination of the additional elements, do not apply or use the payment and authentication process (the judicial exception) in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception. See Alice, 573 U.S. at 221-24 (citing Mayo, 566 U.S. at 78-85). Rather, Appellant's claims recite computers (including the processing device (that further includes the user interface, the processor, the biometric reader, and the communication circuit) and servers (the payment server and IdP server)) that are utilized as tools to carry out the payment and authentication process (the abstract idea). Utilizing a computer as a tool to perform the abstract idea does not impose a meaningful limit on the abstract idea. See MPEP § 2106.05(±); see also Alice, 573 U.S. at 223 (Finding "if [the] recitation of a computer amounts to a mere instruction to implement an abstract idea on a computer that addition cannot impart patent eligibility.") (quotations and citations omitted). Appellant's claims can be distinguished from patent-eligible claims such as those in McRO, Enfzsh, BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and DDR Holdings, 17 Appeal2018-001964 Application 13/242,459 LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) that are directed to "a specific means or method that improves the relevant technology" (McRO, 837 F.3d at 1314), or "a specific improvement to the way computers operate" (Enfish, 822 F.3d at 1336), solving a technology-based problem (BASCOM, 827 F.3d at 1349-52), or a method "rooted in computer technology in order to overcome a problem specifically arising in the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257). Contrary to Appellant's arguments, claim 6 is not a technological improvement or an improvement in a technology. Appellant's claim 6 does not "improve the functioning of the computer itself' or "any other technology or technical field." Alice, 573 U.S. at 225. Nor, does it provide a technological solution to a technological problem. See DDR Holdings, 773 F.3d at 1257; see also MPEP § 2106.05(a). Appellant fails to sufficiently and persuasively explain how the instant claims are directed to an improvement in the way computers operate, nor has Appellant identified any technical advance or improvement or specialized computer components. See Appeal Br. 18; Reply Br. 2-3. Claim 6 recites utilizing the processing device ( further including the user interface, the processor, the biometric reader, and the communication circuit), collecting data using the biometric reader, transmitting or exchanging information amongst the processing device and servers, and IdP server performing analysis ( determining a match between the biometric data (sample) and a registered biometric template). As discussed supra, nothing in claim 6 describes the technology that accomplishes the recited functionality (the collection of biometric data, the equipment or protocols for transmitting information amongst the elements, or the algorithms utilized for matching). In other words, only the abstract idea recited in claim 6 is 18 Appeal2018-001964 Application 13/242,459 potentially new ( although we make no determination as to novelty or obviousness), rather than the manner in which the recited additional elements (the computers) operate. See Intellectual Ventures, 792 F.3d at 1370 (Holding that "merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible."); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016)). In summary, "the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools." Elec. Power Grp., 830 F.3d at 1354; see also MPEP § 2106.05([) (instructing Examiners to consider "[w]hether the claim invokes computers or other machinery merely as a tool to perform an existing process" in determining whether the claim recites mere instructions to apply the exception) (cited in 2019 Revised Guidance, 84 Fed. Reg. 55, n.30). Thus, we conclude the claims are directed to an abstract idea that is not integrated into a practical application. Step 2B Analysis-"Significantly More" Having concluded Appellant's claims are directed to an abstract idea under the 2019 Revised Guidance Step 2A analysis, we next address whether the claims add significantly more to the alleged abstract idea. As directed by our reviewing court, we search for an "'inventive concept' sufficient to 'transform the nature of the claim into a patent-eligible application."' McRO, 837 F.3d at 1312 (quoting Alice, 573 U.S. at 217). 19 Appeal2018-001964 Application 13/242,459 Under the second step of the Mayo/Alice framework, we "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 Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353). An "inventive concept" requires more than "well-understood, routine, conventional activity already engaged in" by the relevant industry. Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80); see Content Extraction, 776 F.3d at 1347--48. The "inventive concept" "must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer." BASCOM, 827 F.3d at 1349 (citation omitted). But a "non-conventional and non-generic arrangement of known, conventional pieces" may provide an "inventive concept" satisfying Mayo/Alice Step 2. Id. at 1350. Here, the Examiner rejects claims 6, 7, 9, and 10 as being directed to patent-ineligible subject matter (supra), and concludes that: The processing device in this claim merely automates an algorithm via basic computer functions, and therefore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim amounts to significantly more than the abstract idea itself. Final Act. 6-7; see Ans. 8-10. The Examiner explains that, [t]aking the claim elements separately, the functions performed by the machine at each step of the process are purely conventional. Acquiring data, transmitting data, and receiving data --- one of the most basic functions of a computer. All of 20 Appeal2018-001964 Application 13/242,459 these computer functions are well-understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. Final Act. 7; see Ans. 8-10. Appellant, on the other hand, contends that the Examiner's rejection is inadequate and does not consider the claim elements as a whole. See Appeal Br. 14--16; see also Reply Br. 2--4. Appellant also contends that: the claim is further limited to a processing device including a processor and a biometric reader connected to the processor, a communication device and a user interface that acquires the biometric sample, transmits a claim to the payment server, transmits the request form to the IdP provider, receives the authentication reply form and transmits to the payment server. The programmed CPU acts in concert with the recited features of the processing device to enable the mobile device to enable the processing device to determine and communicate authentication information through interaction with remote payment and IdP servers. The meaningful limitations placed upon the application of the claimed operations show that the claim is not directed to performing operations on a computer alone. Rather, the combination of elements impose meaningful limits in that the operations are applied to improve an existing technology (secure payment) by improving authentication of payment system users by acquiring a biometric sample from the user via the biometric reader and using that information in the authentication process. All of these features, especially when viewed in combination, amount to significantly more than the judicial exception[.] Appeal Br. 18-19. Appellant fails to persuade us of error in the Examiner's rejection with respect to the second Alice step. We agree with the Examiner that Appellant's claim 6 (and also claims 7, 9, and 10) does not evince an "inventive concept" that is significantly more than the abstract idea itself. In 21 Appeal2018-001964 Application 13/242,459 particular, Appellant fails to explain persuasively how the additional elements (above) add specific limitations beyond the judicial exception that are not well-understood, routine, and conventional in the field. As previously discussed, claim 6 merely recites additional non- abstract elements-specifically the processing device and servers-to perform the payment and authentication process (the abstract idea). Appellant's Specification describes the additional elements-the processing device (further including the user interface, the processor, the biometric reader, and the communication circuit), the payment server and IdP server-as conventional (generic) computers performing traditional computer functions-to collecting data (using the biometric reader), transmit or exchanging information ( amongst the processing device and servers), and perform analysis (using the IdP server to determine a match between the biometric data and a registered biometric template). See, e.g., Spec. 4:34-- 5:3 ("a processing device, e.g.[,] a personal computer or a mobile phone, connected to the Internet," "a biometric sensor, e.g.[,] a fingerprint reader"), and Spec. 7:3-7 ("[T]he payment server, the processing device of the user and the IdP server" "each comprise a processing device including a processor, memory and communication means for communicating with the Internet, and software causing the processing device to perform the functions the entity is configured to do."). Accordingly, Appellant's Specification itself describes the additional elements as being well-understood, routine, and conventional. Such conventional computer processes operating on conventional computer hardware "do not alone transform an otherwise abstract idea into patent- 22 Appeal2018-001964 Application 13/242,459 eligible subject matter." FairWarning, 839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256). For at least the reasons above, we are not persuaded of Examiner error in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the Examiner's rejection under § 101 of independent claim 6, independent claim 9, and dependent 7 and 10, which depend from claims 6 and 9 (respectively) and which were not separately argued with specificity. The Indefiniteness Rejection of Claims 1--4, 6, 7, 9, and 10 The Examiner rejects claims 1--4, 6, 7, 9, and 10 as being indefinite. See Final Act. 8-9; Ans. 10. Specifically, the Examiner finds claim 1 (as well as independent claims 6 and 9) recites "a processing device of a user" "comprising ... the processing device of the user" including "two such recitations in the claims" that render "unclear the scope of the claim." Final Act. 8 ( quotations omitted) ( quoting claim 1 ); see Ans. 10. The Examiner further finds that claim 1 (as well as independent claims 6 and 9) is "directed to a 'processing device of a user,"' but "further describe[ s] limitations taking place at a 'payment server' and at an 'IdP server' which are separate devices, thereby rendering unclear the scope of the claim." Final Act. 9 ( quoting claim 1 ); Ans. 10. Appellant contends: The claims are clear that the processing device of a user comprises a user interface, a processor, a biometric, and a communication circuit. That the processor ( comprised [within] the processing device of the user) is configured to perform functions that in expression reference the processing device of the user does not mean that the processing device of the user [itself] comprises the processing device of the user. For example, the claim reciting that the processor transmits a signal to a payment server that is "external and remote from the 23 Appeal2018-001964 Application 13/242,459 processing device of the user" does not mean that the processing device of the user comprises the processing device of the user; it simply means the processor transmits a signal to a payment server that is external and remote from the processing device of the user. Appeal Br. 20. Appellant further contends that claim 1 does not recite "'limitations taking place at a payment server and at a ldP server' as the Office Action submits." Instead, "[a]ll the claim language says is that the processor is configured to transmit a claim 'to a payment server,"' and "later recites that the processor is configured to forward certain information 'via an ldP server.' There is nothing indefinite or vague about these features." Appeal Br. 21. The essence of the requirement under 35 U.S.C. § 112, second paragraph, is that the language of the claims must make clear what subject matter the claims encompass-i.e., "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)); see In re Packard, 751 F.3d 1307, 1310-14 (Fed. Cir. 2014). "[W]e apply the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains words or phrases whose meaning is unclear.' Put differently, 'claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite- terms. "' In re McAward, Appeal 2015-006416, 2017 WL 3669566, *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d at 1310, 1313-14) (citations omitted). 24 Appeal2018-001964 Application 13/242,459 We find the language of claim 1 ( and independent claims 6 and 9), when properly construed (see our discussions of claim 6 and claim 1, supra), would be understood by those skilled in the art, and the language is not unclear. The Examiner apparently misconstrues the claim language and does not explain why the disputed language would be unclear to one of ordinary skill in the art. In light of our findings and Appellant's arguments, we find the Examiner fails to sufficiently explain why one of ordinary skill in the art would not understand what is claimed by Appellant. Therefore, we do not sustain the Examiner's indefiniteness rejection of claims 1--4, 6, 7, 9, and 10. Obviousness Rejection of Claims 1--4, 6, 7, 9, and 10 Appellant argues independent claims 1, 6, and 9, and dependent claims 2--4, 7, and 10, together as a group with respect to the 35 U.S.C. § 103 rejection. See Appeal Br. 21-24. We select independent claim 1 as representative of Appellant's arguments with respect to claims 1--4, 6, 7, 9, and 10. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner rejects independent claim 1 as being obvious in view of Siegal and Kranzley. See Final Act. 9-11; Ans. 10-12. The Examiner finds that Siegal describes the processing device of Appellant's claim 1 with the exception that Siegal does not describe the functionality of the processing device "forwarding the authentication reply form to the payment server ... via the connection to the Internet." Final Act. 10; see Final Act. 9; Ans. 10- 12. The Examiner relies on Kranzley to teach "forwarding the authentication reply form to the payment server, from the processing device of the user to the payment server via the connection to the Internet." Final Act. 11 (citing Kranzley col. 13, 11. 7-27); see Ans. 10-12. 25 Appeal2018-001964 Application 13/242,459 Appellant contends that the combination of Siegal and Kranzley does not teach the disputed features of claim 1. See Appeal Br. 21-24; Reply Br. 4--7. Specifically, Appellant contends, inter alia, that the combination of the combination of Siegal and Kranzley does not teach the disputed limitation as recited by independent claim 1 of a processor configured to: transmit a claim to a payment server ... external and remote from the processing device of the user and having a payment processor, from the processing device of the user to the payment server, via the connection to the Internet ... [and] receive, from the payment server to the processing device of the user, an authentication request form from the payment server via the connection to the Internet Appeal Br. 26 (Claim App.). See Appeal Br. 22-24; Reply Br. 4--7. Appellant further contends that Siegal does not describe sending a request (to make a payment) from a user device (online terminal). Instead Siegal describes sending a request "from the OSP web server 112 and not the processor of Online Terminal 102" and "the OSB web server 112 communicates with payment management component 128 in order to submit purchase-related information to the payment management component." Appeal Br. 23 (citing Siegal, col. 5, 11. 49-57). "Accordingly, [Siegal's] online terminal 102 never receives an authentication request form from the payment management module." Appeal Br. 23. Appellant also contends that Kranzley describes a user processor creating a credential collection page (authentication (request) form) and sending the form to an authentication processor. Kranzley does not describe an authentication form received by the user processor from the authentication processor ( server of the identity provider-IdP server) and, therefore, the user processor cannot forward a reply (the authentication reply form). See Appeal Br. 23-24; Reply Br. 4--7. 26 Appeal2018-001964 Application 13/242,459 We agree with Appellant that the Examiner-cited portions of Siegal (col. 4, 11. 10-53; col. 5, 1. 40-col. 6, 1. 31; col. 9, 11. 1-32; col. 10, 11. 13-17 (see Final Act. 9-11; Ans. 10-12)) in combination with the Examiner-cited portions ofKranzley (col. 13, 11. 5-28 (see Final Act. 10-11; Ans. 12)) do not teach or suggest the processing device of the user communicating with a payment server-much less receiving an authentication request form from the payment server (by the processing device of the user) or the user processing device sending the authentication reply form to the payment server. See Appeal Br. 22-24; Reply Br. 4--7. Consequently, we are constrained by the record before us and Appellant's contentions persuade us the Examiner erred in concluding that Siegal and Kranzley render obvious Appellant's claim 1. Accordingly, we do not sustain the Examiner's rejection of representative claim 1, independent claims 6 and 9 that include limitations of commensurate scope, and dependent claims 2--4, 7, and 10 that depend from claims 1, 6 and 9, respectively. NEW GROUNDS OF REJECTION Under the provisions of 3 7 C.F .R. § 41. 50(b ), we enter the following new grounds of rejection. The Examiner rejects claims 6, 7, 9, and 10 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Although the overall thrust of our analysis affirming the § 101 rejection is the same as the Examiner's reasoning, we have provided additional explanations not provided by the Examiner. Accordingly, in the interests of giving Appellant 27 Appeal2018-001964 Application 13/242,459 a full and fair opportunity to respond, we designate our affirmance under § 101 as a new ground of rejection. The Examiner did not include pending claims 1--4 in the § 101 rejection (above). We reject claims 1--4 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter for the same reasons as claims 6, 7, 9, and 10 (supra). Independent claim 1 (and dependent claims 2--4) recites a "processing device" including various (previously identified) physical components-the user interface, the processor, the biometric reader, and the communication circuit-where the processing device performs certain delineated functions. For example, the processing device "acquire[s]" biometric data, "transmit[ s ]" data to the payment server, and receives data from the servers (the payment server and the IdP server). See claim 1 (Appeal Br. 26 (Claim App.)) and our claim construction of claim 6 (supra). Claim 1 simply recites various components and a processor (in the processing device) performing functions, i.e., limitations delineating how the processor is configured. See id. Accordingly, the scope of independent claim 1 is substantially the same as claim 6, and our previous analysis applies equally to this "device" (machine) claim. See In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) (citing State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1372 (Fed. Cir.1998)) ("[F]or the purposes of a§ 101 analysis, it is of little relevance whether claim 1 is directed to a 'machine' or a 'process."'); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999) (abrogated on other grounds by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)) ("[W]e consider the scope of§ 101 to be the same regardless of the form-machine or process-in which a particular claim is drafted."). 28 Appeal2018-001964 Application 13/242,459 Therefore, we conclude Independent claim 1 and dependent claims 2--4 are directed to patent-ineligible subject matter under 35 U.S.C. § 101 for the same reasons as claim 6 (above). CONCLUSIONS Appellant has not shown that the Examiner erred in rejecting claims 6, 7, 9, and 10 under 35 U.S.C. § 101. Appellant has shown that the Examiner erred in rejecting claims 1--4, 6, 7, 9, and 10 under 35 U.S.C. § 112, second paragraph. Appellant has shown that the Examiner erred in rejecting claims 1--4, 6, 7, 9, and 10 under 35 U.S.C. § 103(a). We enter new grounds of rejections for claims 1--4, 6, 7, 9, and 10 under the provisions of 3 7 C.F .R. § 41. 50(b ). DECISION We reverse the Examiner's rejection of claims 1--4, but affirm the Examiner's rejection of claims 6, 7, 9, and 10. All pending claims 1--4, 6, 7, 9, and 10 are rejected under 35 U.S.C. § 101 due to our newly entered grounds of rejection under the provisions of 37 C.F.R. § 4I.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: 29 Appeal2018-001964 Application 13/242,459 ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv); 37 C.F.R. § 41.50(±). AFFIRMED-IN-PART NEW GROUNDS OF REJECTION 30 Copy with citationCopy as parenthetical citation