Ex Parte Regep

Patent Trials and Appeals Board

Jun 6, 2019

13772428 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/772,428 02/21/2013 John Regep II
25764 7590 06/10/2019
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
456438.000016 8498
EXAMINER
HAMILTON, SARA CHANDLER
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN REGEP II
Appeal2018-002372
Application 13/772,428 1
Technology Center 3600
Before JEAN R. HOMERE, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 17, 18, and 21-24, all of the pending claims. Claims 1-16 are
withdrawn. App. Br. 11-15 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellant, the real party in interest is MoneyGram
International, Inc. App. Br. 3.
2 Our Decision refers to Appellant's Appeal Brief filed August 31, 2017
("App. Br."); Reply Brief filed January 3, 2018 ("Reply Br."); Examiner's
Answer mailed November 3, 2017 ("Ans."); Final Office Action mailed
December 1, 2016 ("Final Act."); and original Specification filed February
21,2013 ("Spec.").
Appeal2018-002372
Application 13/772,428
STATEMENT OF THE CASE
Appellant's invention is directed to "systems and methods for
purchasing and redeeming virtual traveler's checks." Spec. ,r,r 2, 5.
Independent claim 17, reproduced below, is exemplary of the subject matter
on appeal.
1 7. A system for managing the purchase and redemption
of virtual traveler's checks, the system comprising:
a server that communicates with a plurality of computers,
the plurality of computers including a purchase computer and a
redemption computer, the server operable to:
store, in a database, fraudulent customer identification
information;
receive, from the purchase computer, an electronic
purchase request, the electronic purchase request including
purchasing customer identification information, a request for one
or more virtual traveler's checks, each of the one or more virtual
traveler's checks having one of a predetermined set of fixed
denominations and a respective redemption delay period for each
of the one or more virtual traveler's checks;
record, in a database, the purchasing customer
identification information;
compare the purchasing customer identification
information to the stored fraudulent customer identification
information;
record, in a database, a check number for each of the one
or more virtual traveler's checks when the purchasing customer
identification information does not match the stored fraudulent
customer identification information;
associate the recorded check number for each of the one
or more virtual traveler's checks with the purchasing customer
identification information;
provide, to the purchase computer, a record including the
check number for each of the one or more virtual traveler's
checks;
receive, from the redemption computer, an electronic
redemption request including redeeming customer identification
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information and a request to redeem at least one of the one or
more virtual traveler's checks;
store, in a database, the redeeming customer identification
information;
compare the purchasing customer identification
information to the stored redeeming customer identification
information;
determine a time difference between a time associated
with the received electronic purchase request and a time
associated with the received electronic redemption request;
transmit, to the redemption computer, an electronic release
approval to release funds in an amount equal to the
denominations of the requested redemption of the at least one of
the one or more virtual traveler's checks when the stored
redeeming customer identification information matches the
purchasing customer identification information and the
respective redemption delay period for the at least one of the one
or more virtual traveler's check is greater than the time
difference; and
record, in a database, data representative of the electronic
release approval.
App. Br. 13-14 (Claims App.).
REJECTION
The Examiner rejected claims 17, 18, and 21-24 under 35 U.S.C.
§ 101 because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 4--8.
ANALYSIS
In support of the § 101 rejection of claims 17, 18, and 21-24, the
Examiner determines these claims are directed to "managing the purchase
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and redemption of virtual travelers checks" which is considered as "a
fundamental economic practice"-a certain "method of organizing human
activity (managing the purchase and redemption)." Final Act. 4--7; Ans. 3.
The Examiner also determines the claims fail to amount to "significantly
more" than the abstract idea or contain an "inventive concept" because (1)
the additional elements recited are generic computer components ( e.g.,
server, purchase computer, redemption computer, and database) used to
apply the abstract idea ("managing the purchase and redemption of virtual
travelers checks"); and (2) "there is no improvement to another technology
or technical field, no improvements to the functioning of a computer itself,
and no meaningful limitations beyond generally linking the use of an
abstract idea to a particular technical environment." Final Act. 7-8; Ans.
6-7.
Legal Framework
To determine whether claims are patent eligible under§ 101, we apply
the U.S. Supreme Court's two-step framework articulated in Alice Corp. v.
CLS Bankint'l, 573 U.S. 208 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 216-17. If so, we then proceed to the
second step to consider the elements of the claims "individually and 'as an
ordered combination"' to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Id. at 217 ( citation omitted). In other words, the second step is to "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
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than a patent upon the [ineligible concept] itself."' Id. at 217-218 ( alteration
in original).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit has adopted the common law, analogy-driven
approach (i.e., the "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and has instructed us "to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
cases were about, and which way they were decided." Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec.
Power Grp., 830 F.3d at 1353-54).
The Office sought to apply the Federal Circuit's common law
"analogous claim" test in the aftermath of Alice (see USPTO Memorandum,
July 2015 Update: Subject Matter Eligbility 3 (July 30, 2015), https://www.
uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf ("a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea")). But recently,
the Office concluded that having examiners seek analogous claims had since
become impractical and unpredictable in light of the growing body of
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Federal Circuit precedent. Thus, the Office recently published revised
guidance interpreting governing case law and establishing a framework to
govern all patent-eligibility analysis under Alice and § 101 effective as of
January 7, 2019. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50-57 (Jan. 7, 2019) ("Revised Guidance").
Revised Guidance
Under the Revised Guidance, we first look under Alice step 1 or "Step
2A" to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes, or [iii] certain methods of organizing
human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and
(2)Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure ("MPEP") §§ 2106.05(a}-(c), (e}-
(h)). 3
See Revised Guidance, 84 Fed. Reg. at 51-52, 55, Revised Step 2A, Prong
One (Abstract Idea) and Prong Two (Integration into A Practical
Application).
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 Revised
Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated,
3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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then the claim is not directed to a judicial exception and is patent eligible
under § 101. Id. "Integration into a practical application" requires an
additional element or a combination of additional elements in the claim to
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 exception. Id. at 53, 55.
For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP § 2106.05(a);
2) Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3) Effecting a transformation or reduction of a particular article to a
different state or thing-see MPEP § 2106.05(c); and
4) Applying or using the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a
particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the
exception-see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1) Adding the words "apply it" ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on a
computer, or merely uses a computer as a tool to perform an
abstract idea-see MPEP § 2106.05(±);
2) Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a particular
technological environment or field of use-see MPEP § 2106.05(h).
See Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
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whether the claim provides an "inventive concept" under Alice step 2 or
"Step 2B." See Revised Guidance at 56; Alice, 573 U.S. at 217-18. For
example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
2) 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 Revised Guidance, 84 Fed. Reg. at 56.
Alice/Mayo-Step 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Turning to the first step of the Alice inquiry, Appellant argues "the
claims are not directed to an abstract idea" because, according to Appellant,
( 1) "the threshold criterion as to whether claims are directed to an abstract
idea is whether the claims recite features addressing a problem in manner
that has not long existed in the art" (App. Br. 6 (footnote omitted) ( citing
Trading Techs., Int'!, Inc. v. CQG, Inc., 675 F. App'x. 1001, 1004 (Fed. Cir.
2017)); and (2) similar to the claims in Trading Techs., their claims "recite
features addressing a problem in the art in a manner that has not long
existed," i.e., "conventional form of payment 'are inherently subject to loss
or theft"' whereas Appellant's invention would make it difficult to redeem
"[the] lost or stolen virtual traveler's check." App. Br. 7.
Appellant's arguments are not persuasive. First, Appellant's
Specification and claims describe "systems [ shown in Figure 1] and methods
for purchasing and redeeming virtual traveler's checks." Spec. ,r,r 2, 5.
Appellant's Figure 1 is reproduced below:
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14
PURCHASE
LOCA7TON
12
PURCHASE
COMPUTER
IlvPUT
.PR1NTEIJ
22
20
SERI/ER
C041PU Tl::!?
· 24
18
RED6MP7TON
LOCATION
16
REDE"v!PTION
COMPUTER
IiVPUT
Figure 1 shows a system for managing the purchase and redemption
of virtual traveler's checks.
As shown in Figure 1, purchase computer 12 at purchase location 14
is used by a purchaser to make a purchase request for one or more virtual
traveler's checks of certain denomination. Server 20 receives the purchase
request and issues a check number for each of the one or more virtual
traveler's checks and associates the check numbers with the purchasing
customer identification information. Redemption computer ( e.g., bank) 16
at redemption location 18 is used to redeem the purchase request, including
redeeming ( 1) customer identification information and (2) at least one of the
one or more virtual traveler's checks. Server 20 then approves release of
funds at redemption computer 16 if the redeeming customer identification
information matches the purchasing customer identification information.
Abstract.
As correctly recognized by the Examiner, "managing the purchase and
redemption of virtual travelers checks" is descriptive of "a fundamental
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economic practice"-a certain "method of organizing human activity
(managing the purchase and redemption)" (Final Act. 4--7; Ans. 3), as set
forth in the Revised Guidance because "managing the purchase and
redemption of virtual travelers checks," according to Appellant's
Specification, is intended to facilitate commerce (payment or cash withdraw)
for travelers' convenience while avoiding the need of carrying various forms
of payment such as cash, checks, credit cards, or ATM cards. Spec. ,r,r 3--4;
Abstract. Such activities are squarely within the realm of abstract ideas, like
(1) the risk hedging in Bilski v. Kappas, 561 U.S. 593 (2010); (2) the
intermediated settlement in Alice, 573 U.S. at 219--22; (3) verifying credit
card transactions in CyberSource Corp., v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011); (4) guaranteeing transactions in buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing
products over the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F .3d 709
(Fed. Cir. 2014); (6) determining a price of a product offered to a purchasing
organization in Versata Development. Group., Inc. v. SAP America, Inc.,
793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for sale in OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015).
"[M]anaging the purchase and redemption of virtual travelers checks" is also
a building block of a market economy and, like risk hedging and
intermediated settlement, is an "abstract idea" beyond the scope of§ 101.
See Alice, 573 U.S. at 219--20.
Second, Appellant misapprehended the Federal Circuit's non-
precedential decision in Trading Techs. The "threshold criterion as to
whether claims are directed to an abstract idea" is not "whether the claims
recite features addressing a problem in manner that has not long existed in
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the art," as Appellant argues. App. Br. 6-7 (footnote omitted). Rather, as
the Federal Circuit panel interpreted Alice step 1 as asking "whether the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea." Enfish, 822 F.3d at 1335 ( citing Alice,
134 S. Ct at 2357). According to the panel, "the focus of the [Enfish 's]
claims is on the specific asserted improvement in computer capabilities (i.e.,
the self-referential table for a computer database)." Id. at 1335-36. Based
on the "plain focus of the claims," the panel reached the conclusion that
Enfzsh 's claims are directed to "a specific improvement to the way
computers operate, embodied in the self-referential table," i.e., "an
improvement of an existing technology [that] is bolstered by the
specification's teachings that the claimed invention achieves other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirement," and, as such, are more than a mere
abstract idea. Id. However, the Enfzsh panel also recognized that "in other
cases involving computer-related claims, there may be close calls about how
to characterize what the claims are directed to." In such cases, an analysis of
whether there are arguably concrete improvements in the recited computer
technology could take place under [Alice] step two." Id. at 1339.
Because the question of whether the claims are directed to "a specific
improvement to the way computers operate" or "concrete improvements in
the recited computer technology" could take place under Alice step 1 or
Alice step 2, the Revised Guidance requires us to address that question in the
context of Step 2A, Prong Two, i.e., whether the claims' additional elements
integrate the judicial exception (abstract idea) into a practical application.
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See MPEP §§ 2106.0S(a}-(c), (e}-(h)), which we address herein below,
including the Federal Circuit's decision in Trading Techs.
Nevertheless, under Step 2A, Prong One, we agree with the Examiner
the claims fall within judicial exceptions listed in the Revised Guidance.
Step 2A, Prong Two (Integration into a Practical Application)
Under Prong Two of the Revised Guidance, we must determine if the
claims (i.e., additional limitations beyond the judicial exception) integrate
the judicial exception into a practical application. However, we discern no
additional elements ( or combination of elements) recited in Appellant's
claim 1 (e.g., a processor and storage device) that integrate the judicial
exceptions into a practical application. See 2019 Revised Guidance, Revised
Step 2A, Prong Two. For example, Appellant's claimed additional elements
( e.g., input device, microprocessor, output device, and memory) recited in
claim 1 do not: ( 1) improve the functioning of a computer or other
technology; (2) are not applied with any particular machine ( except for a
generic computer); (3) do not effect a transformation of a particular article to
a different state; and ( 4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.0S(a}-(c), (e}-(h).
Appellant's reliance on Trading Techs., is misplaced. In Trading
Techs., the patents, U.S. Patent No. 6,772,132 ("'132 patent") and No.
6,766,304 ("'304 patent") describe "[a] method and system for reducing
the time it takes for a trader to place a trade when electronically trading on
an exchange, thus increasing the likelihood that the trader will have orders
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filled at desirable prices and quantities." '132 patent, Abstract; '304 patent,
Abstract. In particular, the Trading Techs., patents describe a trading system
in which a graphical user interface "display[ s] the market depth of a
commodity traded in a market, including a dynamic display for a plurality of
bids and for a plurality of asks in the market for the commodity and a static
display of prices corresponding to the plurality of bids and asks." '132
patent, 3: 11-16; '304 patent, 3: 15-20. "The claims require a specific,
structured graphical user interface paired with a prescribed functionality
directly related to the graphical user interface's structure that is addressed to
and resolves a specifically identified problem in the prior state of the art."
Trading Techs., 675 F.App'x. at 1004. As such, the panel found Trading
Techs. '"claimed subject matter is 'directed to a specific improvement to the
way computers operate,' (id.), for the claimed graphical user interface
method imparts a specific functionality to a trading system 'directed to a
specific implementation of a solution to a problem in the software arts."'
Id. at 1006.
In contrast to Trading Techs., Appellant's Specification and claims
describe nothing more than plain "systems and methods for purchasing and
redeeming virtual traveler's checks" intended to replace conventional
traveler's checks. Spec. ,r,r 2-3, 5. As correctly recognized by the
Examiner,
human operators (representatives at financial institutions) are
capable of addressing the problem without the aide [sic] of
technology. In fact, the machines (i.e., "server", "plurality of
computers including a purchase computer and a redemption
computer") as claimed are just a proxy/ stand-in for human
operators (e.g., representatives of financial institutions,
customer, merchant/ third party). Thus, the problem is not
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brought about by technology and does not require technology for
resolution. In the instant case, appellant's claimed invention does
not "improve the functioning of a known system" similar to the
"interface" improvements that occurred m Trading
Technologies.
Ans. 9-10.
In the Reply, Appellant further argues claim 17 's additional
limitations, i.e.,
an electronic release approval to release funds in an amount equal
to the denominations of the requested redemption of the at least
one of the one or more virtual traveler's checks when
... the respective redemption delay period for the at least one
of the one or more virtual traveler's check is greater than the
time difference
provide a solution to a problem with conventional forms of virtual traveler's
checks because "if a purchaser loses the virtual traveler's check before the
redemption period elapses, the server would not transmit a release of funds."
Reply Br. 3.
We disagree. The problem identified by Appellant is a business
problem, and the solution proposed by Appellant is a business solution
implemented with a general purpose computer, rather than a technological
solution to "a technological problem" as required by the Federal Circuit's
precedential decisions in (1) DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See MPEP § 2106.05(a). As
correctly recognized by the Examiner, "[a]ny alleged 'improvements' are to
the underlying business process not, the computer itself or its
operation/function." Ans. 10.
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Thus, under Step 2A, Prong Two, we determine the claims do not
integrate the judicial exception into a practical application under the Revised
Guidance
Alice/Mayo-Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
In the second step of the Alice inquiry, Appellant argues (1) the
Examiner "has not provided any analysis of the specific language of the
claims"; (2) similar to the claims in Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350, 1352 (Fed. Cir. 2016) "claim 17
recites specific features that differ from the routine and conventional"; and
(3) "claim 17 does not preempt all ways of 'managing the purchase and
redemption of virtual traveler's checks." App. Br. 8-9. In the Reply,
Appellant also argue the Examiner fails to "analyze the features of the
claims as an ordered combination." Reply Br. 4--5.
Appellant's arguments are not persuasive. As the McRO court
explicitly recognized, "the absence of complete preemption does not
demonstrate patent eligibility." See McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016) (quoting Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter"
under the Alice/ Mayo framework, "preemption concerns are fully addressed
and made moot." Ariosa, 788 F.3d at 1379.
Appellant's reliance on Bascom is also misplaced. For example, the
patent at issue in Bascom (U.S. Patent No. 5,987,606 ("Bascom '606
patent")), describes a particular arrangement of filtering software at a specif-
ic location, remote from the end-users, with customizable filtering features
specific to each end user. The filtering software enables individually
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customizable filtering at the remote ISP server by taking advantage of the
technical ability of the ISP server to identify individual accounts and
associate a request for Internet content with a specific individual account.
Bascom '606 patent, 4:35-38.
The Federal Circuit recognized that Bascom's installation of an
Internet content filter at a particular network location is "a technical
improvement over prior art ways of filtering such content" because such an
arrangement advantageously allows the Internet content filter to have "both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server" and "give[ s] users the ability to customize filtering for their
individual network accounts." Bascom, 827 F.3d at 1350, 1352. According
to the panel, Bascom's claims "do not preempt the use of the abstract idea of
filtering content on the Internet or on generic computer components
performing conventional activities." Id. at 1352. Instead, Bascom's claims
"carve out a specific location for the filtering system (a remote ISP server)
and require the filtering system to give users the ability to customize
filtering for their individual network accounts." Id. As such, "an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces." Id. at 1350.
In contrast to Bascom, Appellant's claims and Specification are
directed to "systems and methods for purchasing and redeeming virtual
traveler's checks" intended to replace conventional traveler's checks. Spec.
,r,r 2-3, 5. There is no evidence in the record to support the contention that
Appellant's claimed system is provided with any non-conventional and non-
generic arrangement of known, conventional components similar to Bascom.
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As recognized by the Revised Guidance, an "inventive concept" under
Alice step 2 can also be evaluated based on whether an additional element or
combination of elements:
(1) "add a specific limitation or combination of limitations
that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present (see MPEP § 2106.05(d)); or
(2) "simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present."
See Revised Guidance, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellant's claim 1 that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 217-218. For example, Appellant's
"calculating fraud risk associated with an insurance claim" is not rooted in
computer technology; nor does it provide any technical solution to a
technical problem. Instead, Appellant's invention simply uses generic
computer devices, shown, for example, in Figure 1, to manage "the purchase
and redemption of virtual traveler's checks." (Spec. ,r,r 2-5; Abstract).
However, the use of a generic computer device does not alone transform an
otherwise abstract idea into patent-eligible subject matter. As our reviewing
court has observed, "after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible." DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 222).
Moreover, Appellant has not shown any specific limitations in claim 1 7
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beyond the judicial exception that is not "well-understood, routine, and
conventional" in the field (see MPEP § 2106.05(d)).
Because Appellant's independent claim 1 7, when considered as a
whole, is directed to a patent-ineligible abstract idea that does not integrated
into a practical application under the first step of the Alice analysis or
contains an "inventive concept" under the second step of the Alice analysis,
we sustain the Examiner's rejection of claims 17, 18, and 21-24 under
35 U.S.C. § 101.
DECISION
The Examiner's decision rejecting claims 17, 18, and 21-24 under
35 U.S.C. § 101 is affirmed.
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
18