Global Payments Inc.Download PDFPatent Trials and Appeals BoardMay 15, 202014528592 - (D) (P.T.A.B. May. 15, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/528,592 10/30/2014 Dean A. DECRISTOFORO 052664-0273 4188 22428 7590 05/15/2020 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER POE, KEVIN T ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 05/15/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DEAN A. DECRISTOFORO ____________ Appeal 2019-002652 Application 14/528,592 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–6, 8–11, and 13–32, which are all of the pending claims. The Appellant’s representative appeared for Oral Argument on May 4, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Global Payments Inc. Appeal Br. 4. Appeal 2019-002652 Application 14/528,592 2 CLAIMED SUBJECT MATTER The Appellant states that their invention “provide[s] an improved way to obtain funds for gaming activities.” Spec. ¶ 5. Claims 1, 8, 13, 18, 27, and 29 are the independent claims. Claim 1 (Appeal Br. 45 (Claims App.)) is illustrative of the subject matter on appeal and is reproduced below (with added bracketing for reference): 1. A method for making funds available for gaming, the method comprising: [(a)] reading customer information of a customer from a card at a terminal; [(b)] allowing the customer to select a quasi-cash transaction at the terminal and generating an order authorizing the quasi-cash transaction when the customer selects the quasi- cash transaction; [(c)] retrieving the order and information for verifying an identity of the customer at a station; [(d)] receiving an electronic signature from the customer at the station; [(e)] placing the electronic signature on an image that includes a bank account number, a transit routing number and a place to specify who the quasi-cash transaction is being paid to, [(f)] displaying an option to the customer on a display included at the station that allows the customer to select, at the customer’s option, after the identity of the customer is verified, (1) an electronic endorsement from the customer and placement of the electronic endorsement in an electronic image or (2) cancelling of the quasi-cash transaction, [(g)] wherein the display includes a customer input device and the customer input device asks the customer to select (1) or (2) and receives the customer's selection of (1) or (2) as input, and [(h)] wherein the electronic signature is stored separately from transaction data of the quasi-cash transaction. Appeal 2019-002652 Application 14/528,592 3 THE REJECTION2 Claims 1–6, 8–11, and 13–22 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. OPINION 35 U.S.C. § 101 Framework A. Section 101 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 U.S. 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. E.g., Alice Corp. 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 Court’s two-part 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). 2 The Examiner withdraws the rejection of claims 1–6, 8–11, and 13–32 under 35 U.S.C. § 103. Appeal 2019-002652 Application 14/528,592 4 Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof 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 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 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the Appeal 2019-002652 Application 14/528,592 5 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 omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO Section 101 Guidance In January 2019, after the Examiner’s Answer was mailed and before the Appellant’s Reply Brief was filed, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1. The 2019 Revised Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. 84 Fed. Reg. at 50.4 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). 4 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51 Appeal 2019-002652 Application 14/528,592 6 Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). Thus, the Appellant’s arguments related to prior guidance (see, e.g., Appeal Br. 33–42 (arguing the rejection fails to satisfy guidelines’ criteria) will not be considered. 5 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2019-002652 Application 14/528,592 7 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. Failure to Follow USPTO Guidelines We first address the Appellant’s contention that “[t]he Examiner’s Answer does not follow the updated procedures provided in the January 2019 Guidance. The rejection of the claims under 35 U.S.C. § 101 should be reversed at least for that reason alone.” Reply Br. 3 (citing the 2019 Revised Guidance). We disagree. As we stated above, the 2019 Revised Guidance was issued in January 2019, after the Examiner’s Answer was mailed on December 14, 2018. The USPTO makes clear that any guidance issued “does not constitute substantive rulemaking and does not have the force and effect of law.” 2019 Revised Guidance, 84 Fed. Reg. at 51; see also May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27381, 27382 (May 6, 2016). In particular, the 2019 Revised Guidance “does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO,” and although USPTO personnel are “expected to follow the guidance,” failure to do so “is not, in itself, a proper basis for either an appeal or a petition.” 84 Fed. Reg. at 51, 81 Fed. Reg. at 27382. Here, the Examiner applies the Supreme Court’s two-step framework, described in Mayo and Alice, and considers Office guidelines (in effect at the time) in that application. See Final Act. 4–9; Ans. 4–12. Specifically, the Examiner notifies the Appellant that “the claims are directed to making funds available for gaming,” which is an abstract idea of a certain method of Appeal 2019-002652 Application 14/528,592 8 organizing human activity of “inter/intrapersonal activities” and “fundamental economic practices.” Final Act. 6. The Examiner further considers the elements individually and as an ordered combination and notifies the Appellant that “[w]hen viewed individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea.” Id. at 9; see also id. at 7–8 (providing reasons for this determination). Thus, the Examiner has notified the Appellant of the reasons for the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). We also disagree with the Appellant’s contention that the Examiner fails to “consider each claim separately based on the particular elements recited therein” (Appeal Br. 33; see also Reply Br. 5, 8–13) and “has failed to address the eligibility of any dependent claim, and for that reason the rejection of each of these claims under Section 101 is improper for each of these claims” (Appeal Br. 42; see also Reply Br. 14). There is no specific requirement that each claim be examined individually by the Examiner in determining that the claims are directed to an abstract idea. See Alice, 573 U.S. 208 at 217–21 (addressing the claims together). The Examiner includes the other claims in the heading of the rejection (Final Act. 4) and addresses all of the claims together (see id. at 5–9; see also Ans. 4–10). We note that independent claim 8 recites a system with elements performing the same functions as recited in claim 1. Claims 13 and 27 recite methods performing some, but not all, of the functions recited in claim 1. Claims 27 and 29 recite systems with elements performing the same functions recited in claimed 13 and 27, respectively. Thus, by addressing claim 1, the Examiner Appeal 2019-002652 Application 14/528,592 9 addresses every element claimed in all of the independent claims. The Examiner further addresses the dependent claims in the Answer, determining that they do not impart patent eligibility to the abstract idea of the independent claims. The dependent claims rather further narrow the abstract idea and the narrower scope does not change the outcome of the two part Mayo test. Narrowing the scope of the claims is not enough to impart eligibility as it is still interpreted as an abstract idea, a narrower abstract idea. Therefore none of the dependent claims alone or as on ordered combination add limitations that qualify as significantly more than the abstract idea. Ans. 11–12. There is no indication that the Appellant was not put on notice of the Examiner’s rejection regarding claims 2–6, 8–11, and 13–32. Claims 1–6, 8–11, 13–22, 27, and 29 The Appellant groups the independent claims together (see Appeal Br. 30–35), presents the same arguments for each independent claim (see id. at 35–42), and depends on those argument for dependent claims 2–6, 9–11, 14–17, and 19–22 (see id. at 42). We thus group these claims together and select claim 1 as representative of this group, with claims 2–6, 8–11, 13–22, 27, and 29 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Step One of the Mayo/Alice Framework Under the first step of the Mayo/Alice framework, the Examiner determines that independent claim 1 is “directed to making funds available for gaming,” which is similar to concepts of “[a]nonymous loan shopping” and “collecting information, analyzing it, and displaying certain results of the collection and analysis,” i.e., “[a]n idea of itself” or a mental process, Appeal 2019-002652 Application 14/528,592 10 “[a]rbritation . . . and creating contractual relationships,” i.e., “certain methods of organizing human activity, which are concepts relating to inter/intrapersonal activities, such as managing relationships/transactions, legal obligations, and sales activities,” and “mitigating settlement risk,” i.e., a fundamental economic practice. Final Act. 7; see also Ans. 8. When viewed through the lens of the 2019 Revised Guidance, the Examiner’s analysis depicts the claimed subject matter as “[c]ertain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk)” under Prong One of Revised Step 2A. 84 Fed. Reg. at 52. The Examiner further determines that the elements of the claim do not recite an improvement to technology (Ans. 8), that the “components are recited at a high level of generality” (id. at 9), and “the claim[’]s[] invocation of the computer merely amounts to the limiting of the use of the abstract idea to a particular technological environment.” Final Act. 8–9. When viewed through the lens of the 2019 Revised Guidance, Prong Two of Revised Step 2A, the Examiner’s determinations indicate that the claim’s additional elements do not integrate the judicial exception into a practical application because they “merely use[] a computer as a tool to perform an abstract idea” and “do[] no more than generally link the use of the judicial exception to a particular technological environment or field of use.” 84 Fed. Reg. at 52. The Appellant contends that claim 1’s “techniques allow a negotiable instrument to be made. See para. [0012] of the specification as filed” (Appeal Br. 33) and characterizes the claim as “allow[ing] secure and convenient transactions that yield a negotiable instrument (see para. [0012] Appeal 2019-002652 Application 14/528,592 11 of the specification as filed)” (Reply Br. 4). The Appellant further contends that claim 1 “provide[s] a solution to achieve a desired result, by making funds available for gaming in a secure manner and using specific techniques, including identity verification and an electronic signature.” Appeal Br. 33; see also Reply Br. 5. Applying the 2019 Revised Guidance, the Appellant argues that claim 1 “integrate[s] a judicial exception into a practical application” because it “includes elements that ‘impose a meaningful limit’ on any concept that might reasonably be characterized as a judicial exception.” Reply Br. 7–8 (citing 84 Fed. Reg. at 53). For at least the following reasons, we disagree. Reciting a Judicial Exception We first determine to what claim 1 is directed. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claim is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification, including the claim language, that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. The Specification provides for “A SYSTEM AND METHOD FOR MAKING FUNDS AVAILABLE FOR GAMING.” Spec., Title (emphases omitted). In the “BACKGROUND” section, the Specification discusses that Appeal 2019-002652 Application 14/528,592 12 “[g]aming establishments, such as casinos, typically provide customers a number of options for obtaining funds for gaming activities.” Id. ¶ 2. A typical option can be an automated teller machine (“ATM”) that allows a customer to directly withdraw cash or request a cash advance by using a credit card or ATM card and entering a personal identification number (“PIN”). Id. The Specification lists a number of issued U.S. patents and patent publications providing other options for providing funding. Id. ¶ 3. The Specification discusses that these existing options have “various disadvantages. For example, some of the arrangements may not comply with applicable policies and/or rules of credit card companies or other organizations involved in governing such transactions.” Id. ¶ 4. To address these issues, the invention “provide[s] an improved way to obtain funds for gaming activities.” Id. ¶ 5. The advantages of the invention include: (1) “the funds received by an individual may (depending on the issuing bank) not count against an individual’s daily ATM limit or their cash advance limit”; (2) “certain additional charges/fees/interest (such as a higher interest rate for cash advances) may be avoided”; and (3) “[b]ecause an endorsement is obtained in electronic or hard copy form at the customer’s option, the system and method complies with wire transfer money order (a subset of quasi-cash) requirements for a signature in accordance with credit/ debit card company policies/rules.” Id. ¶ 23. Consistent with the disclosure, claim 1 recites “[a] method for making funds available for gaming, the method comprising:” the steps of: (1) receiving and gathering customer information and selections, i.e., (a) reading customer information of a customer from a card at a terminal; Appeal 2019-002652 Application 14/528,592 13 (b) allowing the customer to select a quasi-cash transaction at the terminal, (c) retrieving the order and information . . . (d) receiving an electronic signature from the customer at the station; (g) wherein the display . . . receives the customer’s selection of (1) or (2) as input; (2) creating data based on received information, i.e., (b) generating an order authorizing the quasi-cash transaction when the customer selects the quasi-cash transaction; (3) entering or inserting data into a record, i.e., (e) placing the electronic signature on an image that includes data of a bank account number, a transit routing number, and a place to specify who the quasi-cash transaction is being paid to; (4) displaying data, i.e., (f) displaying an option to the customer on a display included at the station,” the display of information that allows and asks the customer to select, at the customer’s option, after the identity of the customer is verified, (1) an electronic endorsement from the customer and placement of the electronic endorsement in an electronic image or (2) cancelling of the quasi- cash transaction; (g) wherein the display includes a customer input device and the customer input device asks the customer to select (1) or (2); and (4) storing data, i.e., (h) wherein the electronic signature is stored separately from transaction data of the quasi-cash transaction. See Appeal Br. 45 (Claims App.). The limitations are recited functionally without any implementation details, and without specifying what component performs the functions as recited in limitations (a) through (e) and (h). We note that although limitation (c) recites retrieving data “for verifying an Appeal 2019-002652 Application 14/528,592 14 identity of the customer at a station” and limitation (f) recites allowing the customer to select an option “after the identity of the customer is verified,” no step(s) or details for verifying the customer are recited. When considered collectively and under the broadest reasonable interpretation, the limitations of claim 1 recite a method for allowing secure and convenient payment transactions in a gaming environment.6 This is an abstract idea of a “[c]ertain method[] of organizing human activity— fundamental economic principles or practices (including hedging, insurance, mitigating risk).” 2019 Revised Guidance, 84 Fed. Reg. at 52. This is consistent with the Examiner’s and the Appellant’s characterizations. The courts have held similar concepts to be abstract. For example, our reviewing courts have held abstract the concepts of collecting and analyzing information for the purpose of preventing improper access in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016), verifying the validity of a credit card transaction over the Internet in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011), “crediting a merchant’s account as early as possible while electronically processing a check” in Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1166 (Fed. Cir. 2019), cert. denied sub nom. SOLUTRAN, INC. v. ELAVON, INC., ET AL., No. 19-1017, 2020 WL 1325880 (U.S. Mar. 23, 2020), “securely processing a credit card transaction with a payment server” in Innovation Scis., LLC v. Amazon.com, Inc., 778 F. App'x 859, 863 (Fed. 6 We note that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. at 1241. Appeal 2019-002652 Application 14/528,592 15 Cir. 2019), “[v]erifying financial documents to reduce transactional fraud” in Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, No. 2019-1018, 2020 WL 1814311, at *5 (Fed. Cir. Apr. 10, 2020), and “the basic concept of hedging, or protecting against risk” in Bilski v. Kappos, 561 U.S. 593, 611–612 (2010). As such, we disagree with the Appellant’s contentions that the abstract idea recited in claim 1 is not one of the categories listed in the 2019 Revised Guidance. See Reply Br. 6. Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, in determining whether the claim is directed to this abstract idea, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. Integration into a Practical Application Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg. at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] 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,” i.e., “integrates a judicial exception into a practical application.” Here, the only additional elements recited in claim 1 beyond the abstract idea are, as correctly identified by the Examiner, the “terminal, quasi-cash transaction, electronic signature, image, display, [and] electronic endorsement.” The elements of a quasi-cash transaction, electronic signature, image, and electronic endorsement are essentially electronic versions of standard cash, signatures, images, and endorsements. For example, the Specification discusses that “[a] quasi-cash transaction is a transaction where the customer is buying an item (e.g., a negotiable instrument) that can directly be converted into cash.” Spec. ¶ 12. An image Appeal 2019-002652 Application 14/528,592 16 is a generic computer image. See id. ¶ 18. An electronic signature and endorsement comprise handwritten signature or initials onto a signature pad connected to a computer. See id. ¶¶ 14, 18, 23. As such, these elements are standard financial elements of a negotiable instrument and endorsement in the field of electronic transactions. The elements of a terminal, station, display, and input device are described in the Specification as generic computer components. For example, the Specification discusses that the terminal is a kiosk terminal with a card insertion slot, a touch screen display, and a keypad (id. ¶ 12), and is “connected to one or more servers 40 via one or more networks” (id. ¶ 21). The station can be “a cashier station or cage” that has “one or more personal computers”, each with a display and printer and “connected to a signature pad 23, which has its own display.” Id. ¶ 14. Further, the arrangement of components depicted in Figure 1, and described in the Specification, “is only one example of one suitable arrangement and many modifications and variations are possible.” Id. ¶ 21. We disagree with the Appellant that the Examiner “simply concatenates various nouns, specifically, ‘terminal, quasi-cash transaction, electronic signature, image, display, electronic endorsement,’ and asserts that these terms are elements that perform generic computer functions.” Appeal Br. 31. Rather, the Examiner correctly identifies the elements comprising the abstract idea, i.e., “the steps of reading, allowing, retrieving, receiving, placing, and displaying” (Final Act. 6) and separately identifies the additional elements beyond the abstract idea, i.e., “the additional elements of: terminal, quasi-cash transaction, electronic signature, image, display, electronic endorsement” (id. at 7), as outlined in the 2019 Revised Guidance (see 84 Fed. Reg. at 54–55). Appeal 2019-002652 Application 14/528,592 17 We find no indication in the Specification, nor does the Appellant direct us to any indication, that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Here, the Appellant contends that “the claims should be found to recite elements that achieve an improvement to another technology” in that “the claims allow for a cardholder’s signature to be stored separately from transaction data and for carrying out a quasi-cash transaction to allow a patron access to the patron’s funds at a gaming establishment, as described above (see paras. [0018] and [0023] of the specification as filed).” Reply Br. 5 (citing 2019 Revised Guidance, 84 Fed. Reg. at 55). However, the Appellant does not provide reasoning or evidence, and we do not see from the claim, how storing certain data separately from other data improves the claimed technology. See Innovation Scis. 778 F. App’x at 863 (“The fact that communication is ‘switched’ from a website hosted on one server to a website hosted on another server with better security does not mean the invention is directed to ‘a specific improvement in the capabilities of computing devices.’ Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018).”). The Appellant argues that storing the data separately keeps data confidential and “may be utilized in the event that there is a chargeback or other activity requiring dispute resolution.” Appeal 2019-002652 Application 14/528,592 18 Reply Br. 4. The Appellant’s argument, put simply, is that storing the electronic signature and transaction data separately reduces potential fraudulent misuse of the signature while allowing authorized use. However, reducing fraud and keeping information secure are issues that pre-date the Internet. See, e.g., FairWarning, 839 F.3d at 1094–95. We note that the claim does not recite a step for verifying identification. Cf. Appeal Br. 33 (arguing that the claim makes funds available in a secure manner by “using specific techniques, including identify verification”). Further, the solution does not comprise the computer components operating in unconventional manners. Rather, the claim does not recite what component stores the data or where the data are stored. The Appellant does not contend to have improved the technical capture of an electronic signature or the technical way of storing that data. The Appellant does not, and cannot, claim to have invented the use of the terminal, station, display, or input device. The “focus” of the claim is not “on the specific asserted improvement in computer capabilities” (Enfish, 822 F.3d at 1335), but rather on using the components as tools to implement the abstract idea in the particular field of electronic transactions. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court and [the Federal Circuit] have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.”). Cf. Reply Br. 4–5 (emphasizing quasi-cash transactions and use of an electronic signature). Any improvement in “allow[ing] a patron at an entertainment establishment such as a casino to readily obtain funds” (Reply Br. 4) lies in the abstract idea itself, not to any technological improvement. The location Appeal 2019-002652 Application 14/528,592 19 of storing the data does not detract from the conclusion that claim 1 is directed to allowing secure and convenient payment transactions in a gaming environment, which is an abstract idea. See Solutran, 931 F.3d at 1168. Thus, we are not persuaded of error in the Examiner’s determination that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework Under the second step in the Alice framework (corresponding to Step 2B of the 2019 Revised Guidance), we find supported the Examiner’s determination that claim 1’s limitations, taken individually or as an ordered combination, do not amount to significantly more than the judicial. See Final Act. 7–9; Ans. 8–11. We agree. The Appellant contends that the “tangible features” of claim 1 of the terminal reading customer information, the interface allowing a customer to select a quasi-cash transaction and generating an order, a station retrieving the order and information, and a display with a customer input device in which a customer’s electronic signature is stored separately from transaction data “are not confined to well-understood, routine or conventional elements” (Appeal Br. 32) because “not all computing implementations even have quasi-cash transaction options, for example” (id. at 36, 38, 39, 40, 41, 42). The Appellant also argues that the Examiner, in the Final Action, “does not include a detailed analysis of actual claim language, as noted above, or provide explicit support for conclusions of routine and conventional aspects as prescribed by the Berkheimer memorandum dated April 19, 2018.” Id. at 33 (citing USPTO Memorandum on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Appeal 2019-002652 Application 14/528,592 20 Decision (Berkheimer v. HP, Inc.) (April 19, 2018) (“Berkheimer Memo”); see also id. at 32, 34–42; Reply Br. 6. To the extent the Appellant argues that claim 1 recites elements that amount to significantly more than the abstract idea because having quasi- cash transaction options is not well-understood, routine, or conventional over prior art (see Appeal Br. 36, 38–42), an abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 78. “Ground-breaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). The Appellant’s argument that the Examiner fails to provide adequate support in accordance with the Berkheimer Memo is also not persuasive of error. Alice is clear, as described above, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ Appeal 2019-002652 Application 14/528,592 21 sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself”) (emphasis added). In other words, the inventive concept under step two of the Mayo/Alice framework cannot be the abstract idea itself: “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (Berkheimer II); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”) (citation omitted). Here, the claimed steps of reading customer information, allowing a customer to select a quasi-cash transaction and generating an order, retrieving the order and information, and storing a customer’s electronic signature separately from transaction data are part of the abstract idea itself; they are not additional elements to be considered when determining whether claim 1 includes additional elements or a combination of elements that is sufficient to amount to significantly more than the judicial exception. The Examiner determines, and we agree, that the only claim elements beyond the abstract idea are the terminal, quasi-cash transaction, electronic signature, image, display, and electronic endorsement. See Final Act. 5; Ans. 5–6. As discussed above, the transaction, signature, image, and endorsement are electronic versions of standard cash, signatures, images, and endorsements that the Specification discusses as being known. See Appeal 2019-002652 Application 14/528,592 22 supra; Spec. ¶¶ 12, 18, 19. And the Specification indisputably shows the claimed hardware or computer elements of a terminal, station, display, and input devices were conventional at the time of filing. See supra; Spec. ¶¶ 2, 12, 14, 15, 21. The Appellant does not provide any supported reasoning or explanation that the functions are not well-understood, routine, and conventional. That the transaction may be quasi-cash, i.e., “a transaction where the customer is buying an item (e.g., a negotiable instrument) that can directly be converted into cash” (Spec. ¶ 12), simply limits the abstract idea to a quasi-cash environment. The Appellant cannot reasonably maintain that there is a genuine issue of material fact regarding whether operation of the claimed hardware or computer elements is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components, or that the claimed invention is implemented using other than generic hardware or computer components to perform the generic computer functions as discussed above. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer II, 890 F.3d at 1373 (Moore, J., concurring) (citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well-understood, routine and conventional database Appeal 2019-002652 Application 14/528,592 23 structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). Here, as discussed above, the elements other than the abstract idea are the terminal, station, display, and input device, which are recited at a high level of generality and are used in their ordinary and conventional capacities to receive and gather data, generate data based on received data, enter data into a record, displaying data, and store data. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending, monitoring, analyzing, selecting, and presenting information does not transform the abstract process into a patent-eligible invention); Content Extraction & Trans. LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (collecting data, recognizing data, and storing recognized data was well-known); Solutran, 931 F. 3d at 1166–69 (electronic check processing by recording data, presenting check into a digital format, and verifying accuracy of information stored against check was common, and use of scanner and computer and routine data gathering steps of receiving data were insufficient to constitute an inventive concept). Thus, we are not persuaded of error in the Examiner’s determination that the limitations of claim 1 do not transform the claim into significantly more than the abstract idea. For at least the reasons above, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claim 1 and of claims 2–6, 8–11, 13–22, 27, and 29, which fall with claim 1. Claims 23–26, 28, and 30–32 For each of claims 23–26, 28, and 30–32, the Appellant argues that the rejection under 35 U.S.C. § 101 is in error because the prior art does not Appeal 2019-002652 Application 14/528,592 24 disclose certain features of the claims and thus, “the Examiner has failed to demonstrate that the above-noted features represent well-known, routine or conventional elements.” Appeal Br. 42–43. However, as discussed above with reference to claim 1, an abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 78. Further, as also discussed above, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer II, 890 F.3d at 1373. The Appellant merely states that the failure of the prior art to disclose the limitations show that the Examiner fails to demonstrate that the features are well-understood, routine, or conventional. The Appellant does not present evidence, reasoning, or argument that non-abstract features of the dependent claims are not well- understood, routine, or conventional, or why the Examiner erred in determining that these claims lack an inventive concept. See BSG Tech., 899 F.3d at 1291. The location of the terminal and station and the timing of endorsement do not detract from the claims being directed to allowing secure and convenient payment transactions in a gaming environment, which is an abstract idea, and are insufficient to constitute an inventive concept. See Solutran, 931 F.3d at 1168–69. For at least the reasons above, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims 23–26, 28, and 30–32. Appeal 2019-002652 Application 14/528,592 25 CONCLUSION The Examiner’s decision to reject claims 1–6, 8–11, and 13–32 under 35 U.S.C. § 101 is sustained. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–11, 13–32 101 Eligibility 1–6, 8–11, 13–32 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED Copy with citationCopy as parenthetical citation