Joseph Bradley. Nolan

Patent Trials and Appeals Board

Sep 18, 2019

13027624 - (D) (P.T.A.B. Sep. 18, 2019)

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.
13/027,624 02/15/2011 Joseph Bradley Nolan 72167.000733 7170
131244 7590 09/18/2019
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania Avenue, NW
Suite 800
Washington, DC 20037
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
09/18/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH BRADLEY NOLAN
____________

Appeal 2018-0013761
Application 13/027,6242
Technology Center 3600
____________

Before BRADLEY B. BAYAT, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4, 7–11, 13–15, 17, and 21–23. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 27, 2017) and Reply Brief (“Reply Br.,” filed Nov. 21, 2017), and the
Examiner’s Answer (“Ans.,” mailed Oct. 5, 2017) and Final Office Action
(“Final Act.,” mailed Feb. 22, 2017).
2 Appellant identifies “JPMorgan Chase Bank, N.A. and its parents and
subsidiary companies” as the real parties in interest. App. Br. 1.
Appeal 2018-001376
Application 13/027,624

2
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to providing
financial services, such as at financial institution branch offices and through
devices such as financial services kiosks.” Spec. ¶ 2.
Claims 1, 8, and 9, reproduced below with bracketed notations added,
are the independent claims on appeal, and are representative of the claimed
subject matter:
1. A computer implemented method, comprising:
[(a)] providing a portable electronic device, at a branch
office of a financial institution, for usage by customers of the
financial institution, that is configured to interact with the
financial institution and to perform one or more financial
services kiosk functions that serve to conduct banking
transactions with the financial institution, wherein the one or
more financial services kiosk functions performed by the
portable electronic device to conduct banking transactions
comprise: deposits, withdrawals, currency exchanges, and
account transfers;
[(b)] receiving, by at least one computer processor, a
request, generated by the portable electronic device, from a
customer, to log in to the portable electronic device;
[(c)] configuring, by the at least one computer processor,
following the log-in, a home-screen display of the portable
electronic device based upon one or more predetermined
configuration settings comprising colors, themes, images,
applications, and widgets;
[(d)] receiving, by the at least one computer processor, a
selection of an option from the portable electronic device,
wherein the option is selected from a set of at least two options
presented to the customer on the display and the selected option
is to conduct a banking transaction with the financial institution;
[(e)] establishing a video messaging link between the
portable electronic device and at least one of a second portable
electronic device and a computing device when an additional
selected option associated with customer assistance is received,
Appeal 2018-001376
Application 13/027,624

3
wherein the portable electronic device comprises a digital
imaging device with audio and video capabilities to provide an
electronic video image of the customer;
[(f)] interacting with the customer through the video
messaging link, wherein the interaction comprises real-time
video communication between the customer using the digital
imaging device of the portable electronic device and a customer
service representative using the at least one of the second
portable electronic device and the computing device;
[(g)] executing, by the at least one computer processor, an
action associated with the selected option; and
[(h)] receiving, by the at least one computer processor, a
request to log out of the portable electronic device.

8. A computer implemented method, comprising:
[(a)] providing, via an interface of a financial services
kiosk, a computer game through one or more webpages
associated with a social networking site, wherein the social
networking site has a relationship with a financial institution and
the financial institution is associated with the game;
[(b)] receiving, by a computer processor, an access
request to the game from a customer of the financial institution;
[(c)] verifying, by the computer processor, the access
request;
[(d)] providing, by the computer processor, access to the
game and data related to the game;
[(e)] receiving interaction related to the game at a
financial services kiosk or branch of the financial institution,
wherein the interaction comprises at least establishing a video
messaging link between the financial services kiosk and a
computing device, wherein the financial services kiosk
comprises a digital imaging device with audio and video
capabilities to provide an electronic video image of the customer;
and
[(f)] processing, by the computer processor, the
interaction and updating the game based on the interaction.
9. A computer implemented method, comprising:
Appeal 2018-001376
Application 13/027,624

4
[(a)] detecting a physical or electronic presence of a
customer, by a financial services kiosk, based on a proximity of
the customer to the financial services kiosk, wherein the presence
is detected by one or more radio-frequency sensors and the
detection is conducted prior to any interaction by the customer
with the financial services kiosk;
[(b)] actuating, by a computer processor, functionality of
the financial services kiosk based upon the detected presence;
[(c)] confirming an identity of the customer;
[(d)] personalizing, by the computer processor, an
environment associated with the financial services kiosk based
on the identity of the customer and a profile associated with the
customer;
[(e)] establishing a video messaging link between the
financial services kiosk and at least one of a portable electronic
device and a computing device when the customer selects an
option associated with customer assistance, wherein the financial
services kiosk device comprises a digital imaging device with
audio and video capabilities to provide an electronic video image
of the customer; and
[(f)] interacting with the customer through the video
messaging link, wherein the interaction comprises real-time
video communication between the customer using the digital
imaging device of the financial services kiosk and a customer
service representative using the at least one of the portable
electronic device and the computing device.

REJECTION
Claims 1–4, 7–11, 13–15, 17, and 21–23 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
Appeal 2018-001376
Application 13/027,624

5
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. (citation omitted). If
the claims are not directed to a patent-ineligible concept, e.g., an abstract
idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step
where the elements of the claims are considered “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. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive
concept’ — i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the USPTO published revised guidance for use by USPTO personnel
in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
Appeal 2018-001376
Application 13/027,624

6
84 Fed. Reg. 50 (Jan. 7, 2019) (the “Revised Guidance”).3 That guidance
revised the USPTO’s examination procedure with respect to the first step of
the Mayo/Alice framework such that a claim will generally be considered
directed to an abstract idea if (1) the claim recites subject matter falling
within one of the following groupings of abstract ideas: (a) mathematical
concepts; (b) certain methods of organizing human activity, e.g., a
fundamental economic principle or practice, a commercial or legal
interaction; and (c) mental processes (“Step 2A, Prong One”), and (2) the
claim does not integrate the abstract idea into a practical application, i.e.,
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception (“Step 2A,
Prong Two”). See Revised Guidance 52–55. The Revised Guidance
references MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§§ 2106.05(a)–(c) and (e)–(h) in describing the considerations that are
indicative that an additional element or combination of elements integrates
the judicial exception, e.g., the abstract idea, into a practical application. Id.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Only if the claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application do we then look to

3 The Revised Guidance, by its terms, applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7, 2019.
Id. at 50.

Appeal 2018-001376
Application 13/027,624

7
whether the claim “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56. With the legal principles
outlined above, and the Revised Guidance in mind, we turn to the
Examiner’s § 101 rejection.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to conducting financial services with
a financial institution — a concept that the Examiner reasoned is
substantially similar to other concepts that the courts have found abstract,
and is a certain method of organizing human activities, i.e., an abstract idea.
See Final Act. 3–6. The Examiner also determined that the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception. See id.
The Examiner, in our view, set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. And we find that, in doing so, the
Examiner established a prima facie case of patent-ineligibility. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries
its procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for the rejection, “together with such information
and references as may be useful in judging the propriety of continuing . . .
prosecution”). Appellant’s arguments to the contrary are unpersuasive. See
App. Br. 7–8.
Appeal 2018-001376
Application 13/027,624

8
Independent Claim 1 and Dependent Claims 2–4, 7, 22, and 23
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
We are not persuaded here that the Examiner erred in determining that
claim 1 is directed to an abstract idea by failing to consider all of the claim
elements or overgeneralizing the claims. App. Br. 6–7. The Federal Circuit
has explained that “the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the [S]pecification, 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)). The inquiry asks whether the focus of the claims 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 describes that the invention relates “to providing
financial services, such as at financial institution branch offices and through
devices such as financial services kiosks.” Spec. ¶ 2. In the Background
section, the Specification describes that traditional Automated Teller
Machines (“ATMs”) have a limited selection of options for tasks and
transactions to perform. Id. ¶ 3. Because of this limited selection,
customers may have to go to a branch office with limited business hours and
wait in line to complete a transaction that cannot be completed at an ATM.
Id. ¶ 4. The Background also provides that some current ATMs provide a
level of personalization of options presented to the customer upon log-in.
Appeal 2018-001376
Application 13/027,624

9
Id. ¶ 3. The claimed invention is ostensibly intended to address “[t]hese and
other deficiencies.” Spec. ¶ 5.
Consistent with this disclosure, claim 1 recites the following steps:
“receiving . . . a selection of an option . . ., wherein the option is selected
from a set of at least two options presented to the customer . . . and the
selected option is to conduct a banking transaction with the financial
institution” (step (d)); “interacting with the customer . . . , wherein the
interaction comprises . . . communication between the customer . . . and a
customer service representative” (step (f)); and “executing . . . an action
associated with the selected option” (step (g)). These limitations, when
given their broadest reasonable interpretation, recite a commercial
interaction, i.e., a method of organizing human activity and, therefore, an
abstract idea. See Revised Guidance 52.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites “additional elements that integrate the exception into a practical
application” (Step 2A, Prong Two). Revised Guidance 54; see also
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c),
(e)–(h).
Beyond the abstract idea, claim 1 additionally recites
providing a portable electronic device, at a branch office
of a financial institution, for usage by customers of the financial
institution, that is configured to interact with the financial
institution and to perform one or more financial services kiosk
functions that serve to conduct banking transactions with the
financial institution, wherein the one or more financial services
kiosk functions performed by the portable electronic device to
conduct banking transactions comprise: deposits, withdrawals,
currency exchanges, and account transfers
Appeal 2018-001376
Application 13/027,624

10
(step (a)); “receiving, by at least one computer processor, a request,
generated by the portable electronic device, from a customer, to log in to the
portable electronic device” (step (b)); “configuring, by the at least one
computer processor, following the log-in, a home-screen display of the
portable electronic device based upon one or more predetermined
configuration settings comprising colors, themes, images, applications, and
widgets” (step (c));
establishing a video messaging link between the portable
electronic device and at least one of a second portable
electronic device and a computing device when an additional
selected option associated with customer assistance is received,
wherein the portable electronic device comprises a digital
imaging device with audio and video capabilities to provide an
electronic video image of the customer
(step (e)); and “receiving, by the at least one computer processor, a request
to log out of the portable electronic device” (step (h)).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that these additional elements implement the abstract
idea with a specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. Instead, these elements are described in the
Specification at a high level of generality, i.e., as generic computer
components. See, e.g., Spec. ¶¶ 6, 24, 27, 29, 35, 44–48, 50, and 100–113.
And “after Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”
Appeal 2018-001376
Application 13/027,624

11
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance. See Revised Guidance 55.
For example, each of steps (a)–(c), (e), and (h) is written as results-
based limitations without technological details for how to achieve the
desired results. See Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law demands
more” than claim language that “provides only a result-oriented solution,
with insufficient detail for how a computer accomplishes it”). Appellant’s
Specification also fails to provide any such technological details for each of
these steps.
Specifically, Appellant identifies step 202 of Figure 2 and paragraph
50 of the Specification as describing step (a) of claim 1; step 204 of Figure 2
and paragraph 51 of the Specification for step (b) of claim 1; step 206 of
Figure 2 and paragraph 52 for step (c) of claim 1; steps 210 and 212 of
Figure 2 and paragraph 56 for step (e) of claim 1; and step 218 of Figure 2
and paragraph 61 for step (h) of claim 1. App. Br. 1–2.
Step 202 of Figure 2 is a first step of a process for interfacing with a
financial institution using a portable electronic device, which begins with a
customer approaching the device. See Spec. ¶ 12, Fig. 2. The portable
Appeal 2018-001376
Application 13/027,624

12
electronic device is configured to serve as an ATM or a device for
conducting with the financial institution. Id. ¶ 50. Exemplary portable
devices include a tablet, tablet PC, laptop, and netbook located at a branch
office of a financial institution or at a retailer or merchant. Id.
Alternatively, the device is the customer’s own portable electronic device,
such as a cell phone, PDA, smart phone, tablet, netbook, or laptop. Id. Step
(a) of claim 1 recites providing a portable device configured to interact with
the financial institution and to perform financial kiosk functions. Paragraph
50 does not detail how to configure the portable electronic device to achieve
the desired functionality.
Step 204 of Figure 2 shows that the customer next logs into the
device/account. Id. at Fig. 2. “Various methods may be used to authenticate
the customer and allow them to access the device.” Id. ¶ 51. For example,
the customer can present a designated device (such as by swiping a card),
enter a password into an alphanumeric entry device, or provide biometrics.
Id. Not only does the Specification provide no details regarding
authentication or the log in process, but step (b) does not recite a step of
logging into the device or authentication. Instead, step (b) recites receiving
a request to log in to the portable electronic device. The Specification does
not describe a manner for receiving the request that improves technology.
Step 206 of Figure 2 indicates that the home screen and menu are
displayed to the customer. Id. at Fig. 2. Paragraph 52 of the Specification
describes that the home screen is personalized for the customer based on
options selected by the customer, such as “colors, themes, images,
applications, and/or widgets” selected by the customer. Exemplary
applications include news and stock price applications. Id. ¶ 52. Paragraph
Appeal 2018-001376
Application 13/027,624

13
52 describes a desired result (i.e., personalizing a home screen for a user
based on configuration settings selected by the customer), but does not
describe any means for accomplishing this goal that improves technology.
As these portions of the Specification make clear, the claimed
invention seeks to improve an abstract idea (i.e., a commercial interaction)
by applying it in a particular technological environment using generic
computers (e.g., a portable electronic device communicating via a video
messaging link, as set forth in steps (a), (b), (e), and (h)), and adding
insignificant extra-solution activity (e.g., applying predetermined
configuration settings set by the customer to a home screen display, as set
forth in step (c)). For example, logging in and logging out of a portable
device would be necessary steps for the claimed technological environment
in which a portable electronic device is provided at a branch office of a
financial institution for usage by its customers. Yet, limiting the use of the
abstract idea “to a particular technological environment” does not make the
abstract idea patent-eligible, nor does adding extra-solution activity. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014); see
also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[O]ur precedent is clear that merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.”).
Therefore, we are not persuaded that the Examiner erred at Step 2A,
Prong 2 in determining that the additional elements do not integrate the
recited abstract idea into a practical application.
Appeal 2018-001376
Application 13/027,624

14
Inventive Concept: Step Two of the Mayo/Alice Framework
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework —
whether claim 1 recites additional elements that provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the judicial exception itself).
Citing the Federal Circuit’s holding, in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016),
Appellant asserts that an inventive concept can be found in the
unconventional combination of elements. App. Br. 9. Appellant argues that,
like the claims in BASCOM, “claim 1 requires a combination of at least a
first and second portable electronic device (or a computer device) in a video
messaging link in the context of conducting a transaction at a financial
institution using the first portable electronic device,” which is “atypical of
conducting such a transaction.” Id. Appellant contends that claim 1
“address[es] a problem in the field of financial services.” Id. (citing Spec.
¶¶ 3–4).
Yet, in BASCOM, the Federal Circuit held that the second step of the
Mayo/Alice framework was satisfied because the claimed invention
“represents a ‘software-based invention[ ] that improve[s] the performance
of the computer system itself.”’ BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, where the patent “claimed a technical solution to a
problem unique to the Internet,” the patent in BASCOM claimed a
“technology-based solution . . . to filter content on the Internet that
overcomes existing problems with other Internet filtering systems . . .
Appeal 2018-001376
Application 13/027,624

15
making it more dynamic and efficient”) (internal citations omitted). Here,
Appellant does not identify, and we do not find, how the additional elements
identified by Appellant, considered alone or as an ordered combination,
provide a technical improvement, as opposed to an improvement in a
commercial interaction that is realized by applying the abstract idea in a
particular technological environment. To the contrary, Appellant
acknowledges that the claimed invention seeks to improve the abstract idea
itself. See App. Br. 9 (“the interactions of the various claim elements all
result in an improvement in conducting a transaction”).
To the extent Appellant argues that claim 1 includes an additional
element or a combination of elements that is not well-understood, routine,
and conventional, because the claim is allegedly novel, Appellant
misapprehends the law. See id. (asserting the use of portable electronic
devices in a video message link to conduct a transaction at a financial
institution is atypical). Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent-eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation
omitted). “Groundbreaking, 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). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Appeal 2018-001376
Application 13/027,624

16
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘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.”).
Appellant further argues that claim 1, like the claims in DDR
Holdings, “clearly solve[s] a technical problem by adding a specific
limitation other tha[n] what is well-understood, routine and conventional in
the field, or adding unconventional steps that confine the claim to a
particular useful application.” App. Br. 10. In particular, Appellant
contends that step (e) of claim 1 “is clearly unconventional [by] solving a
problem that exists in the computer realm”; that the steps require a computer
system; and that step (h) is another example of the steps requiring a
computer system. Id.
Yet, in DDR Holdings, the claims were not held to be patent eligible
based upon recitation of a computer system or a solving any problem that
exists in the computer realm. Instead, the Federal Circuit found that the
claimed solution was “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR Holdings, 773 F.3d at 1257. In particular, the claims at issue
“address[ed] the problem of retaining website visitors that, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
instantly transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. The claimed solution in DDR
Holdings “overr[ode] the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink” to yield a desired result —
Appeal 2018-001376
Application 13/027,624

17
namely, directing a visitor to a hybrid web page instead of the third-party
website. Id. at 1258–59.
Here, in contrast, limitations (c) (i.e., configuring a home-screen
display) and (e) (i.e., establishing a video message link) recite desired
functionality without specifying how the desired functionality is achieved.
Appellant cannot reasonably contend that there is a genuine issue of material
fact regarding whether the performance of steps (c) and (e), alone or in
combination, is well-understood, routine, or conventional where, as here,
there is no indication in the Specification that the steps are implemented
using other than generic computer components to perform generic computer
operations.
For example, paragraph 56 of the Specification provides that “various
programs or applications” may be used together with generic computers
(e.g., a front-facing camera) to conduct wireless conversations. Likewise,
paragraph 52 recites the desired functionality and the types of information
the customer could select for inclusion on the home-screen, without
describing how to achieve the desired functionality or otherwise suggesting
an unconventional manner for configuring a home-screen display based on
predetermined configuration settings.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 1 and its dependent claims, which are not
separately argued.

Appeal 2018-001376
Application 13/027,624

18
Independent Claims 8 and 9, and Dependent Claims 10, 11, 13–15, 17, and
21
We decline Appellant’s invitation to find error in the Examiner’s
decision not to address the patent-eligibility of each of the independent
claims separately. See App. Br. 4–6. There is no dispute that Examiners are
instructed to evaluate the patent-eligibility of each claim individually. But,
consideration of each claim individually does not require a separate written
analysis for each individual claim. Moreover, we agree with the Examiner
that the pending claims are all directed to the same abstract idea, albeit at
differing levels of specificity. Cf. Content Extraction & Transmission LLC
v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining
that when all claims are directed to the same abstract idea, “addressing each
claim of the asserted patents [is] unnecessary.”).
For example, claim 8 recites “receiving interaction related to the
game” (step (e)); and “processing . . . the interaction and updating the game
based on the interaction” (step (f)). These limitations, when given their
broadest reasonable interpretation, recite a commercial interaction, i.e., a
method of organizing human activity and, therefore, an abstract idea. See
Revised Guidance 52.
Beyond the abstract idea, claim 8 additionally recites “providing, via
an interface of a financial services kiosk, a computer game through one or
more webpages associated with a social networking site, wherein the social
networking site has a relationship with a financial institution and the
financial institution is associated with the game” (step (a)); “receiving, by a
computer processor, an access request to the game from a customer of the
financial institution” (step (b)); “verifying, by the computer processor, the
access request” (step (c)); “providing, by the computer processor, access to
Appeal 2018-001376
Application 13/027,624

19
the game and data related to the game” (step (d)); that the step of receiving
interaction (step (e)) occurs
at a financial services kiosk or branch of the financial
institution, wherein the interaction comprises at least
establishing a video messaging link between the financial
services kiosk and a computing device, wherein the financial
services kiosk comprises a digital imaging device with audio
and video capabilities to provide an electronic video image of
the customer;
and that the step of processing the interaction (step (f)) is performed by a
“computer processor.”
Each of the additional elements is written as results-based limitations
without technological details for how to achieve the desired results. We find
no indication in the Specification, nor does Appellant direct us to any such
indication, that these additional elements implement the abstract idea with a
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. Instead, these elements are described in the Specification at a
high level of generality, i.e., as generic computer components. See, e.g.,
Spec. ¶¶ 21, 35–38, 76–85, Fig. 4. We also find no indication in the
Specification that the claimed invention effects a transformation or reduction
of a particular article to a different state or thing. Nor do we find anything
of record, short of attorney argument, that attributes an improvement in
technology and/or a technical field to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
Appeal 2018-001376
Application 13/027,624

20
“practical application,” as that phrase is used in the 2019 Revised Guidance.
See Revised Guidance 55.
Instead, the claimed invention seeks to improve an abstract idea (i.e.,
a commercial interaction) by applying it in a particular technological
environment using generic computers operating in their ordinary capacity
(e.g., a financial service kiosk having a digital imaging device with audio
and video capabilities, wherein the kiosk provides a computer game through
one or more webpages associated with a social networking site that has a
relationship with a financial institution), as set forth in steps (a)–(e).
Belying Appellant’s argument that the Examiner erred in not
addressing the independent claims individually, Appellant argues that
independent claim 8 is patent eligible for the same or similar reasons set
forth with respect to independent claim 1. App. Br. 8, n.1. We do not find
these arguments persuasive for the same or similar reasons set forth above
with respect to claim 1.
Appellant additionally argues with respect to step 2 of the Alice/Mayo
framework that claim 8 improves the conducting of a transaction by adding
an interactive game. App. Br. 9; see also Spec. ¶ 80 (“The game may be of
any type.”). But an improvement to a commercial interaction is an
improvement to the abstract idea itself, not an improvement to technology or
computer capabilities. See Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm”). Appellant does not persuaded us that the additional
Appeal 2018-001376
Application 13/027,624

21
elements recited in claim 8 amount to significantly more than the judicial
exception itself.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 8 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 8.
Similarly, independent claim 9 recites “interacting with the customer .
. . , wherein the interaction comprises . . . communication between the
customer . . . and a customer service representative” (step (f)). Step (f) of
claim 9, when given its broadest reasonable interpretation, recites a
commercial interaction, i.e., a method of organizing human activity and,
therefore, an abstract idea. See Revised Guidance 52.
Beyond the abstract idea, claim 9 additionally recites “detecting a
physical or electronic presence of a customer, by a financial services kiosk,
based on a proximity of the customer to the financial services kiosk, wherein
the presence is detected by one or more radio-frequency sensors and the
detection is conducted prior to any interaction” (step (a)); “actuating, by a
computer processor, functionality of the financial services kiosk based upon
the detected presence” (step (b)), “confirming an identity of the customer”
(step (c)); “personalizing, by the computer processor, an environment
associated with the financial services kiosk based on the identity of the
customer and a profile associated with the customer” (step (d));
establishing a video messaging link between the financial
services kiosk and at least one of a portable electronic device
and a computing device when the customer selects an option
associated with customer assistance, wherein the financial
services kiosk device comprises a digital imaging device with
audio and video capabilities to provide an electronic video
image of the customer
Appeal 2018-001376
Application 13/027,624

22
(step (e)); and that the interacting of step (f) occurs “through the video
messaging link” between the customer using “digital imaging device of [a]
financial services kiosk” and the customer service representative using “at
least one of the portable electronic device and the computing device.”
Each of the additional elements is written as results-based limitations
without technological details for how to achieve the desired results. We find
no indication in the Specification, nor does Appellant direct us to any such
indication, that these additional elements implement the abstract idea with a
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. Instead, these elements are described in the Specification at a
high level of generality, i.e., as generic computer components. See, e.g.,
Spec. ¶¶ 21, 35–38, 88–93. We also find no indication in the Specification
that the claimed invention effects a transformation or reduction of a
particular article to a different state or thing. Nor do we find anything of
record, short of attorney argument, that attributes an improvement in
technology and/or a technical field to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is used in the 2019 Revised Guidance.
See Revised Guidance 55.
Instead, the claimed invention seeks to improve an abstract idea (i.e.,
a commercial interaction) by applying it in a particular technological
environment using generic computers (e.g., a kiosk, digital imaging device,
radio-frequency sensors, video messaging link, portable electronic device
and/or computing device), and adding insignificant extra-solution activity
Appeal 2018-001376
Application 13/027,624

23
(e.g., personalizing an environment associated with the financial kiosk, as
set forth in step (d)).
Appellant argues that independent claim 9 is patent eligible for the
same or similar reasons set forth with respect to independent claim 1. App.
Br. 8, n.1. We do not find these arguments persuasive for the same or
similar reasons set forth above with respect to claim 1.
Appellant additionally argues that claim 9 recites significantly more
than the abstract idea because the kiosk detects a customer’s presence and
then actuates the financial services kiosk (i.e., limitations (a) and (b)). Id.
at 9; see also id. at 10 (arguing that limitation (a) “is not an abstract element
and does not exist outside of the realm of computers”). Yet, limitations (a)
and (b) do not recite how to achieve the desired functionality. Appellant
does not direct our attention to, and we do not see, where the Specification
describes any unconventional manner for detecting a customer’s presence
and actuating a kiosk. To the contrary, the Specification suggests that the
functionality is achieved through the use of routine technology operating in
its ordinary capacity. See, e.g., Spec. ¶¶ 88–90. Accordingly, we are not
persuaded that additional limitations (a) and (b) transform the nature of the
claim into a patent eligible application.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 9 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 9 and its dependent claims, which are not
separately argued.

Appeal 2018-001376
Application 13/027,624

24
DECISION
The Examiner’s rejection of claims 1–4, 7–11, 13–15, 17, and 21–23
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)(1)(iv).

AFFIRMED