Ex Parte LYONS et al

Patent Trial and Appeal Board

Mar 28, 2019

14679293 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/679,293 04/06/2015
125578 7590 04/01/2019
MASTERCARD
C/0 Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22314
FIRST NAMED INVENTOR
Garry LYONS
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.
0076412-000422 3966
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ADIPDOC 1@BIPC.com
charles. wieland@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRY LYONS, ORAN CUMMINS, and DONGHAO HUANG
Appeal2018-001780
Application 14/679,293
Technology Center 3600
Before JOHN A. JEFFERY, BARBARA A. PARVIS, and BETH Z. SHAW,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants' invention provides virtual currency micropayments in a
financial transaction system by using a universal virtual currency to
minimize processing fees and times while facilitating micropayments. Spec.
,r 1. Upon receiving a consumer's request to exchange currency, the
1 Appellants identify the real party in interest as Mastercard International
Incorporated. App. Br. 2.
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invention ( 1) identifies the relevant exchange rules stored in a database,
(2) calculates an amount of virtual currency and associated real currency
based on these rules, and (3) notifies the consumer of this conversion. See
Abstract; Spec. ,r,r 1, 71-80; Fig. 10. Claim 1 is illustrative:
1. A system for facilitating currency exchanging using a universal
virtual currency, comprising:
a database configured to store a plurality of currency exchange rules,
wherein each currency exchange rule is associated with at least a virtual
currency and one or more real currencies;
a receiving device configured to receive a transaction request for a
currency exchange from a consumer, wherein the transaction request
includes at least an amount of a first real currency and indicates a second
real currency; a processor configured to
identify a first currency exchange rule stored in the database where
the associated one or more real currencies includes at least the first real
currency,
identify a second currency exchange rule stored in the database where
the associated one or more real currencies includes at least the second real
currency, calculate a virtual currency amount based on the identified first
currency exchange rule and the amount of the first real currency included in
the received transaction request, and
calculate an amount of the second real currency based on the
identified second currency exchange rule and the calculated virtual currency
amount; and
a transmitting device configured to transmit at least the calculated
amount of the second real currency.
THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Ans. 3-6. 2
2 Throughout this opinion, we refer to (1) the Appeal Brief filed June 16,
2017 ("App. Br."); (2) the Examiner's Answer mailed October 11, 2017
("Ans."); and (3) the Reply Brief filed December 8, 2017 ("Reply Br.").
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CONTENTIONS
The Examiner determines that the claims are directed to an abstract
idea, namely organizing human activities, with respect to the recited
functions for (1) storing currency exchange rules; (2) receiving a transaction
request from a consumer; (3) identifying the recited currency exchange
rules; (4) calculating amounts of virtual and real currency, and (5)
transmitting the calculated amount of real currency. Ans. 3-10.
The Examiner adds that the claims do not include elements that add
significantly more than the abstract idea, but merely recite conventional
generic computer functions. Id. 5---6, 10-13. Based on these determinations,
the Examiner concludes that the claims are ineligible under§ 101. Id. 3-10.
Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 6-15; Reply Br. 2-8. According to Appellants, the
Examiner not only fails to articulate clearly the alleged abstract idea, but the
Examiner also fails to explain why the claims are directed to an abstract idea
and mischaracterizes Appellants' claims. App. Br. 7-13. Appellants further
contend that the recited limitations also add significantly more to the
purported abstract idea to render the claims eligible. See App. Br. 13-15;
Reply Br. 8. Appellants add that the Examiner also did not identify any
elements of the dependent claims, let alone explain why those elements are
ineligible and, therefore, the Examiner failed to establish a prima facie case
of ineligibility for those claims. App. Br. 15.
ISSUE
Under§ 101, has the Examiner erred in rejecting claims 1-20, as
directed to ineligible subject matter? This issue turns on whether the claims
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are directed to an abstract idea and, if so, whether recited elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); 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 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 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."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks and citation
omitted). "A claim that recites an abstract idea must include 'additional
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features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( 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.
In January 2019, the USPTO published revised guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("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, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)).
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, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
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ANALYSIS
Claims 1 and 11: Alice/Mayo Step One
Independent claim 1 recites a system for facilitating currency
exchanging using a universal virtual currency comprising four principal
elements: (1) a database; (2) a receiving device; (3) an exchange rule
identifier; (4) a currency amount calculator; and (5) a transmitting device,
where elements (3) and ( 4) are recited to be "of a processor."
The database is configured to store currency exchange rules that are
each associated with at least a virtual currency and one or more real
currencies. The receiving device is configured to receive a transaction
request for a currency exchange from a consumer, where the request
includes a first real currency amount and indicates a second real currency.
The exchange rule identifier is configured to identify first and second
currency exchange rules that are associated with real currencies including
the first and second real currencies, respectively.
The recited currency amount calculator is configured to calculate (I)
a virtual currency amount, and (2) a second real currency amount, where
the virtual currency amount is based on (a) the identified first exchange rule,
and (b) the first real currency amount in the received request. Moreover,
the second real currency amount is based on (1) the identified currency
exchange rule, and (2) the calculated virtual currency amount. Lastly, the
recited transmitting device is configured to transmit at least the calculated
amount of the second real currency. 3
3 Unless otherwise indicated, we italicize or quote text associated with
various recited limitations for emphasis and clarity.
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As the Specification explains, the invention provides virtual currency
micropayments in a financial transaction system by using a universal virtual
currency to minimize processing fees and times while facilitating
micropayments. Spec. ,r 1. According to the Specification, exchanging real
currency using a universal virtual currency may provide consumers with
better control over exchange rate fluctuations as well as a more stable
centralized currency to or from which other currencies can be freely
exchanged. Id. ,r 71.
To achieve these ends, upon receiving a consumer's request to
exchange currency, the invention (1) identifies the relevant exchange rules
stored in a database, (2) calculates an amount of virtual currency and
associated real currency based on these rules, and (3) notifies the consumer
of this conversion. See Spec. ,r,r 71-80; Fig. 10.
Turning to claim 1, we first note that the claim recites a system and,
therefore, falls within the machine category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether (1) the claim recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely organizing human activities, with respect to the recited
functions for (1) storing currency exchange rules; (2) receiving a transaction
request from a consumer; (3) identifying the recited currency exchange
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rules; ( 4) calculating amounts of virtual and real currency, and
(5) transmitting the calculated amount of real currency. Ans. 4, 7. To
determine whether a claim recites an abstract idea, we ( 1) identify the
claim's specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts4; (b) certain methods of
organizing human activity5; or ( c) mental processes. 6
Here, apart from the recited (1) database; (2) receiving device;
(3) processor's exchange rule identifier and currency amount calculator;
and (4) transmitting device, every limitation of claim 1 recites fundamental
economic practices and commercial interactions by exchanging currency
according to predefined rules upon request. Because these monetary
conversions in connection with financial transactions are fundamental
economic practices and commercial interactions, they fit squarely within the
human activity organization category of the agency's guidelines. See
Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of organizing
4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include 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). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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human activity, including fundamental economic practices and commercial
interactions).
In addition to falling in the methods organizing human activity
category as noted above, certain recited limitations also fall in the mental
processes category of the agency's guidelines as well. See Guidance, 84
Fed. Reg. at 52 (listing exemplary mental processes including observations,
evaluations, and judgments). That is, apart from their storage in a database,
identifying the recited currency exchange rules can be performed entirely
mentally by merely remembering those rules or thinking about them. We
reach a similar conclusion regarding the recited calculation of virtual and
real currency amounts----calculations that can be performed entirely
mentally or with pen and paper. Cf Benson, 409 U.S. at 67 (noting that
converting binary coded decimal numerals to pure binary numerals could be
done mentally). Therefore, in addition to organizing human activity, the
recited identification and calculation functions, apart from their performance
by a processor, also fall within the mental processes category of the agency's
guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including observations, evaluations, and judgments); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011).
Furthermore, the recited calculation functions also fall within the
mathematical concepts category of the agency's guidelines at least to the
extent that the recited rules on which the calculations are based specify
particular mathematical ratios or relationships between one currency amount
and another consistent with a given exchange rate. See Spec. ,r 75 (noting an
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exemplary exchange rate of 1 U.S. dollar as worth 100 units of universal
virtual currency (UVC)); see also Guidance, 84 Fed. Reg. at 52.
Although the claim recites an abstract idea based on these methods of
organizing human activity, mental processes, and mathematical concepts, we
nevertheless must still determine whether the abstract idea is integrated into
a practical application, namely whether the claim applies, relies on, or uses
the abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54--55. To this
end, we (1) identify whether there are any additional recited elements
beyond the abstract idea, and (2) evaluate those elements individually and
collectively to determine whether they integrate the exception into a
practical application. See id.
Here, the recited (1) database; (2) receiving device; (3) the
processor's exchange rule identifier and currency amount calculator; and (4)
transmitting device are the only recited elements beyond the abstract idea,
but those additional elements do not integrate the abstract idea into a
practical application when reading claim 1 as a whole. First, we are not
persuaded that the claimed invention improves the computer or its
components' functionality or efficiency, or otherwise changes the way those
devices function, at least in the sense contemplated by the Federal Circuit in
Enfzsh LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016),
despite Appellants' arguments to the contrary (Reply Br. 5, 8). The claimed
self-referential table in Enfish was a specific type of data structure designed
to improve the way a computer stores and retrieves data in memory. Enfish,
822 F.3d at 1339. To the extent Appellants contend that the claimed
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invention uses such a data structure to improve a computer's functionality or
efficiency, or otherwise change the way that device functions (see Reply Br.
8), there is no persuasive evidence on this record to substantiate such a
contention.
Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) (App. Br. 12) is likewise unavailing. There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented ( 1) product information
from the third party, and (2) visual "look and feel" elements from the host
website. DDR, 773 F.3d at 1258-59. Given this particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellants' claimed
invention, in essence, organizes human activity by exchanging currency
according to predefined rules upon request. Despite Appellants' arguments
to the contrary (App. Br. 7-13; Reply Br. 2-7), the claimed invention here is
not necessarily rooted in computer technology in the sense contemplated by
DDR where the claimed invention solved a challenge particular to the
Internet. Although Appellants' invention uses various computer-based
components, including (1) a database; (2) receiving device; (3) the
processor's exchange rule identifier and currency amount calculator; and (4)
transmitting device, the claimed invention does not solve a challenge
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particular to the computer or the network used to implement this
functionality.
Appellants' reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 8-9, 12-13; Reply
Br. 5---6) is unavailing. There, the claimed process used a combined order of
specific rules that rendered information in a specific format that was applied
to create a sequence of synchronized, animated characters. McRO, 837 F.3d
at 1315. Notably, the recited process automatically animated characters
using particular information and techniques-an improvement over manual
three-dimensional animation techniques that was not directed to an abstract
idea. Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to exchange
currency according to predefined rules upon request-a generic computer
implementation that is not only directed to fundamental human activity
organization and mental processes, but also does not improve a display
mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Appellants' reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 12; Reply
Br. 7) is unavailing. There, the court held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution-namely a "one-size-fits-all" filter at an Internet Service Provider
(ISP}--more dynamic and efficient via individualized filtering at the ISP.
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BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution
improved the computer system's performance and, therefore, was patent-
eligible. See id.
But unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
here uses generic computing components to implement an abstract idea as
noted previously.
Appellants' reliance on the decision in Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Reply Br. 7) is unavailing.
There, the court held that a claim directed to using accounting information
with which a network accounting record is correlated to enhance the record
was held eligible because the claim involved an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases). Although the court recognized that this solution used
generic components, the recited enhancing function necessarily required
these generic components to operate in an unconventional manner to achieve
an improvement in computer functionality. Id. at 1300--01. Notably, the
recited enhancement in Amdocs depended on not only the network's
distributed architecture, but also on the network devices and "gatherers"
working together in a distributed environment. Id. at 1301. In reaching its
eligibility conclusion, the court noted the patent's emphasis on the
drawbacks of previous systems where all network information flowed to one
location making it very difficult to keep up with massive record flows from
network devices and requiring huge databases. Id. at 1300. The court also
noted similar network-based drawbacks that were overcome by similar
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unconventional distributed solutions in other patents at issue. See id. at
1305---06.
That is not the case here. Although the claimed invention uses
conventional computing components that receive, process, and transmit data,
there is no persuasive evidence on this record to show that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality as in Amdocs.
Although the claimed invention requires computer components, it is
the incorporation of those components-not a claimed rule-that
purportedly improves the existing process. Cf Fair Warning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). In short, the
claimed invention does not focus on improving computers as tools, but
rather certain independently abstract ideas that use computers as tools. see
also Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d
1314, 1324--25 (Fed. Cir. 2016) (noting that components such an "interface,"
"network," and "database" are generic computer components that do not
satisfy the inventive concept requirement); see also Guidance, 84 Fed. Reg.
at 55 (citing MPEP § 2106.05(±)).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
idea on a computer; (2) include instructions to implement the abstract idea
on a computer; or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)). Therefore,
the recited additional elements, namely the recited (1) database;
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(2) receiving device; (3) the processor's exchange rule identifier and
currency amount calculator; and (4) transmitting device, do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
We further note that the recited transmitting device not only uses
generic computing components to perform the abstract idea as noted above,
but its function of transmitting the calculated amount of the second real
currency is also insignificant post-solution activity that merely outputs the
results of the calculation to some unspecified destination. See Parker v.
Flook, 437 U.S. 584, 590 (1978) (insignificant post-solution activity held
insufficient to impart patentability); see also CyberSource, 654 F.3d at 1371
(discussing Flook). Accord Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(g)).
Lastly, we find unavailing Appellants' contention that the claimed
invention does not preempt using the alleged abstract idea in all fields. See
App. Br. 11-13; Reply Br. 6-7. Where, as here, the claims cover a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Alice framework. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In conclusion, although the claimed invention may be beneficial by
using a universal virtual currency to minimize processing fees and times
when facilitating micropayments, a claim for a useful or beneficial abstract
idea is still an abstract idea. See Ariosa, 788 F.3d at 1379-80.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
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Claims 1 and 11: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1 's additional recited elements,
namely the recited (1) database; (2) receiving device; (3) the processor's
exchange rule identifier and currency amount calculator; and ( 4)
transmitting device----considered individually and as an ordered
combination----do not provide an inventive concept such that these additional
elements amount to significantly more than the abstract idea. See Alice, 573
U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the
claimed invention merely uses generic computing components to implement
the recited abstract idea.
To the extent that Appellants contend that the recited limitations,
including the additional elements' particular recited functionality, add
significantly more to the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 13-15; Reply Br. 8), these limitations are
not additional elements beyond the abstract idea, but rather are directed to
the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or
(2) simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Rather, the ( 1) database; (2) receiving device; (3) the processor's
exchange rule identifier and currency amount calculator; and ( 4)
transmitting device are the additional recited elements whose generic
computing functionality is well-understood, routine, and conventional.
Accord Ans. 5, 10-11 (finding that the claims' additional recited computer-
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based elements provide routine computer functionality to implement the
abstract idea). Appellants' arguments in this regard (see App. Br. 13-15;
Reply Br. 8) are, therefore, unpersuasive.
In conclusion, we do not find that the additional recited elements-
considered individually and as an ordered combination-add significantly
more to the abstract idea to provide an inventive concept under Alice/Mayo
step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting claim 1,
and claim 11 not argued separately with particularity.
Dependent Claims
We are, however, persuaded of error in the Examiner's ineligibility
rejection of dependent claims 2-10 and 12-20. In the rejection, the
Examiner's sole basis for rejecting the dependent claims on page 6 of the
Answer is quoted below:
The dependent claim(s) when analyzed and each taken as a
whole are held to be patent ineligible under 35 U.S.C. 101
because the additional recited limitation(s) fail(s) to establish
that the claim( s) is/ are not directed to an abstract idea.
Not only is this statement general and conclusory, it fails to identify
any limitations in the dependent claims, let alone explain why the claims are
directed to an abstract idea in light of their additional limitations to establish
a prima facie case of eligibility under § 101 as Appellants indicate. See
App. Br. 15 (noting this deficiency).
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Application 14/679,293
Notably, in responding to Appellants' arguments in this regard, the
Examiner simply repeats the above conclusory statement with no further
explanation or analysis. See Ans. 13.
The prima facie case is a procedural tool of patent examination,
allocating the respective burdens between the Examiner and an applicant. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). First, the Examiner bears
the initial burden of presenting a prima facie case ofunpatentability. Id.
(citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). If the
Examiner meets that burden, the burden then shifts to the applicant to rebut
the prima facie case with evidence or argument. Oetiker, 977 F.2d at 1445.
Then, patentability is determined on the totality of the record by a
preponderance of evidence with due consideration of persuasiveness of
argument. Id.
As noted in MPEP § 2106. 07, the initial burden of establishing a
prima facie case of ineligibility is on the Examiner to explain clearly and
specifically why claims are ineligible, so that the applicant has sufficient
notice and can respond effectively. That did not happen here with respect to
the dependent claims.
To the extent that the Examiner finds that the additional limitations do
not add significantly more to the abstract idea to provide an inventive
concept under Alice/Mayo step two, we cannot say on this record, nor will
we speculate in that regard here in the first instance on appeal. What we can
say, however, is that the Examiner's gloss on the dependent claims'
additional limitations falls short of establishing a prima facie case of
ineligibility on this record.
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Application 14/679,293
Accordingly, because the Examiner failed to establish a prima facie
case of ineligibility for dependent claims 2-10 and 12-20, we are
constrained by this record to reverse the Examiner's rejection of those
claims.
CONCLUSION
Under § 101, the Examiner did not err in rejecting claims 1 and 11,
but erred in rejecting claims 2-10 and 12-20.
DECISION
We affirm-in-part the Examiner's decision to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
20