Kimberly Dunwoody

Patent Trials and Appeals Board

Apr 1, 2020

12723345 - (D) (P.T.A.B. Apr. 1, 2020)

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.
12/723,345 03/12/2010 Kimberly Dunwoody 90945-781090 (016000US) 5033
20350 7590 04/01/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GEORGALAS, ANNE MARIE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIMBERLY DUNWOODY
____________

Appeal 2018-007486
Application 12/723,345
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5, 8, 9, 17, 18, 22, 24, 25, and 28–35. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Apr. 13, 2018) and Reply Brief (“Reply Br.,” filed July 18, 2018), and
the Examiner’s Answer (“Ans.,” mailed June 8, 2018), and Final Office
Action (“Final Act.,” mailed Nov. 17, 2017). Appellant identifies
WESTERN UNION COMPANY as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s invention relates to financial transfers that restrict how the
funds of the transfer are used. Spec. ¶ 1. Claims 1 and 17 are the
independent claims on appeal. Claim 1, reproduced below with bracketed
notations added, is illustrative of the claimed subject matter:
1. A method of restricting the disbursement of funds in a
funds transfer over a network including the Internet, the method
comprising:
[(a)] receiving, at a funds transfer facilitator, a funds
transfer request from a first user, the first user having an
obligation to pay a provider for a good or service, wherein the
funds transfer request includes information about the first user’s
payment obligation;
[(b)] providing, by the funds transfer facilitator, the funds
transfer request to a second user, the second user being an
individual different from the first user, wherein the funds transfer
request informs the second user of the first user’s payment
obligation and requests that the second user provide funds for the
payment obligation;
[(c)] receiving, at the funds transfer facilitator, an
authorization from the second user to fund the payment
obligation to the provider on behalf of the first user;
[(d)] receiving, at the funds transfer facilitator, one or
more restrictions from the second user, wherein the one or more
restrictions restrict the use of the funds solely for payment of the
payment obligation, and wherein the one or more restrictions
further restrict the first user’s ability to exchange the good or
service for a return of the funds to the first user, wherein the one
or more restrictions are transmitted from the second user to the
funds transfer facilitator before the authorization, and wherein
the authorization does not include the one or more restrictions;
[(e)] executing, by the funds transfer facilitator, a funds
transfer from the second user directly to the provider without the
funds being accessible by the first user, wherein each of the
above steps is performed via a processor; and
[(f)] after the execution of the funds transfer:
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[(1)] receiving, by the funds transfer
facilitator, data from a provider computer server
indicating a transaction request by the first user to
exchange or return the good or service for a value;
[(2)] comparing the transaction request data
to a plurality of transaction restrictions stored in a
database of the funds transfer facilitator; and
[(3)] in response to the transaction request
data matching a transaction restriction stored in a
database of the funds transfer facilitator, executing
a second funds transfer directing that the funds be
transferred from the provider back to the second
user.

REJECTIONS
Claims 1–5, 8, 9, 17, 18, 22, 24, 25, and 28–35 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claim 33 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
Claims 1–5, 8, 9, 17, 18, 22, 24, 25, and 28–35 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
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
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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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. 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).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “a funds transfer facilitator that
sends a funds transfer request to a second user on behalf of a first user who
wants to purchase a good or service from a service provider[,] and receiving
a reply from the second user that comprises an authorization and a separate
restriction on the funds.” Final Act. 10–11. The Examiner determined that
the claims place restrictions on the user of provided funds and
performcertain tasks when an activity falls outside of the restricted use. Id.
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at 12. And the Examiner found that the claimed subject matter is similar to
other concepts that the courts have identified as abstract ideas, such as
collecting and analyzing information to detect misuse, and notifying the user
when misuse is detected. Id. The Examiner further found that the claim
recites a fundamental economic practice, which is a method of organizing
certain human activities and, thus, an abstract idea. Id. The Examiner
further concluded that claim 1 does not include additional elements that are
significantly more than the judicial exception. Id.
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. See
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) (the “Revised Guidance”). That guidance
revised the USPTO’s examination procedure with respect to the first step of
the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter
that [are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. 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.2

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf), clarifying the Revised
Guidance in response to comments solicited from the public.
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Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A, Prong
One)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54; see also id. at 52 (identifying the three groupings). If so,
we next consider whether the claim includes additional elements, beyond the
judicial exception, that “integrate the [judicial] exception into a practical
application,” i.e., that 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”). Id. at 54–55. Only if the claim
(1) recites a judicial exception, and (2) does not integrate that exception into
a practical application do we conclude that the claim is “directed to” the
judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s argument that the Examiner’s
characterization of claims 1 and 17 is at a level of abstraction that is too
high, fails to consider all the limitations of the claim, and is otherwise overly
broad. Reply Br. 2–3. 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
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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
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 the claims focus on an abstract idea, and
not on any improvement to technology and/or a technical field.
Here, Appellant’s Specification is titled “FRAUD PREVENTION
USING CUSTOMER AND AGENT FACING DEVICES,” and describes
that the invention “relates generally to financial transfers” and, “[m]ore
specifically, . . . to financial transfers utilizing a method to restrict how the
funds of a money transfer are used.” Spec. ¶ 1. The Specification explains
that money transfers are a common way to transfer funds between persons
and/or entities, and often are used to help a person or entity in paying a bill
for a good and/or service. Id. ¶ 2. However, a problem with money
transfers is that “the transferor of the money has minimal assurance that the
transferred funds will be used to pay the bill or purchase a good and/or
service for which the money transfer was specified.” Id. Typically, the
transferor must rely on an assurance from the transferee that the funds will
be used for their intended purpose. Id. But assurances do not prevent a
transferee from using the funds elsewhere. See id. Accordingly, “there is a
need to provide a way for a money transfer process to be performed that
would provide a transferor with assurance that the transferred funds will be
used for their intended purpose.” Id.
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Consistent with this disclosure, claim 1 recites a method of restricting
the disbursement of funds in a funds transfer comprising the following steps:
[(a)] receiving, at a funds transfer facilitator, a funds
transfer request from a first user, the first user having an
obligation to pay a provider for a good or service, wherein the
funds transfer request includes information about the first user’s
payment obligation;
[(b)] providing, by the funds transfer facilitator, the funds
transfer request to a second user, the second user being an
individual different from the first user, wherein the funds transfer
request informs the second user of the first user’s payment
obligation and requests that the second user provide funds for the
payment obligation;
[(c)] receiving, at the funds transfer facilitator, an
authorization from the second user to fund the payment
obligation to the provider on behalf of the first user;
[(d)] receiving, at the funds transfer facilitator, one or
more restrictions from the second user, wherein the one or more
restrictions restrict the use of the funds solely for payment of the
payment obligation, and wherein the one or more restrictions
further restrict the first user’s ability to exchange the good or
service for a return of the funds to the first user, wherein the one
or more restrictions are transmitted from the second user to the
funds transfer facilitator before the authorization, and wherein
the authorization does not include the one or more restrictions;
[(e)] executing, by the funds transfer facilitator, a funds
transfer from the second user directly to the provider without the
funds being accessible by the first user . . . ; and
[(f)] after the execution of the funds transfer
[(1)] receiving, by the funds transfer facilitator,
data from a provider . . . indicating a transaction request
by the first user to exchange or return the good or service
for a value;
[(2)] comparing the transaction request data to a
plurality of transaction restrictions . . . of the funds transfer
facilitator; and
[(3)] in response to the transaction request data
matching a transaction restriction . . . of the funds transfer
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facilitator, executing a second funds transfer directing that
the funds be transferred from the provider back to the
second user.
Claim 17 recites similar language. These limitations, when given their
broadest reasonable interpretation, recite a method of restricting the
disbursement of funds in a funds transfer, which is a commercial interaction
and a method of managing personal behavior or interactions between people
(including following rules or instructions), which are certain methods of
organizing human activity, i.e., an abstract idea. See Revised Guidance,
84 Fed. Reg. at 52.
The Federal Circuit has held similar concepts to be abstract. For
example, in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094
(Fed. Cir. 2016), the Federal Circuit held that collecting and analyzing
information to detect misuse and notifying a user when misuse is detected is
an abstract idea. See also Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of
collecting, displaying, and manipulating data); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas).
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong Two)
Having concluded that claims 1 and 17 recite a judicial exception, i.e.,
an abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
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practical application (Step 2A, Prong Two). See Revised Guidance,
84 Fed. Reg. at 54.
Beyond the abstract idea, claim 1 additionally recites: “network”
(preamble); “Internet” (preamble); processor (limitation (e)); “computer
server” (limitation (f)(1)); and “database” (limitation (f)(2)). Claim 17
additionally recites a “network,” “Internet,” “communication device,”
“funds transfer system,” “communication interface,” “processor,” “computer
server,” and “database.” However, Appellant’s Specification describes these
elements at a high degree of generality, i.e., as generic computer
components. See, e.g., Spec. ¶¶ 38–40, 43–46, 63, 69. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
Appellant asserts that the claims are directed to a “technical point of
novelty corresponding to post-transaction monitoring of a third-party
provider computer server following a restricted-use transaction between
users, as well as executing an automatic rollback transfer from the third
party provider server.” Appeal Br. 5 (emphasis omitted). Specifically,
Appellant’s claimed invention recites a “restricted-use transfer,” in which a
funds transfer is directed to a third-party provider to fulfill an obligation of
the receiver for a good or service, instead of to the receiver. Id. at 5–6.
Appellant contends that a third-party provider computer server, such as a
merchant server, receives the funds transfer. Id. at 6. Pointing to limitations
(f)(1) and (f)(3), as recited in claim 1, and similarly recited in claim 17,
Appellant concludes that claims 1 and 17 “recite steps involving post-
transfer monitoring of the subsequent transactions occurring at the third-
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party provider server, and collaboration between the third-party provider
server and the funds transfer facilitator that performed the transfer.” Id.
After receiving an indication that the receiver requests a subsequent
transaction with the third-party to exchange or return the good or service,
“the funds transfer facilitator then executes a second rollback transfer which
directs the funds from the first transfer to be transferred back to the initial
sender.” Id. Appellant contends that “[t]hese techniques improve the
efficacy and security of restricted-use funds transfers between remote users,
by performing post-transfer monitoring on third-party provider servers in
order to detect when a receiver in a funds transfer attempts to return or
exchange the good or service received via the restricted-use transfer.” Id.
Executing a funds transfer from a sender that provides funds for a
good or service to a third-party provider on behalf of a recipient, and
executing a second funds transfer directing the funds for the good or service
from the provider back to the sender when the recipient a transaction request
to exchange or return the good or service, may well improve a process for
performing the commercial interaction (i.e., the abstract idea). However, we
are not persuaded that any of the features Appellant describes indicates an
additional element or combination of elements beyond the abstract idea that
integrate the exception into a practical application, such as an improvement
in computer functionality or an improvement to other technology or
technical field.
Appellant further argues that
the recited techniques require specialized software to perform
post-transfer monitoring at the third-party provider server, the
detection of subsequent transaction requests at the third-party
provider server that violate previous restricted-use transfers, and
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the notification to the funds transfer facilitator [that] triggers the
execution of a second (rollback) transfer without any express
transfer request from either the sender or the receiver of the
initial funds transfer. These features constitute technical
improvements and technical points of novelty that provide
significant advantages over manual transaction processing
and/or conventional restricted-use processing techniques.
Appeal Br. 6–7. Yet, to the extent that Appellant suggests that its claimed
invention recites a technological advance relating to monitoring transaction
data and detecting violations of previous restricted-use transfers, its claims
do not recite any such improvement. Rather, claims 1 and 17 recite the
broad concept of “receiving . . . data . . . indicating a transaction request[,]”
“comparing the transaction request data to a plurality of transaction
restrictions[,]” and “in response to the transaction request data matching a
[stored] transaction restriction . . . executing a second funds transfer.” Put
differently, the claims lack the specificity required to transform a claim from
one claiming only a result to one claiming a more than conceptual way to
achieve it. See Intellectual Ventures I, 850 F.3d at 1342 (“[T]he claim
language here provides only a result-oriented solution with insufficient detail
for how a computer accomplishes it. Our law demands more.”); see also
SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App’x
950, 955 (Fed. Cir. 2014) (comparing new and stored information and using
rules to identify medical options) (nonprecedential).
Appellant additionally argues that the claims solve the “problem of
enforcing restrictions on the use of transferred funds for remote computer-
based funds transfers.” Reply Br. 3. In particular, Appellant contends that
the advent of computer networks made “pre-technology solutions to
restricted-use problems . . . no longer application (e.g., physically visiting
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the store with the transferee), [such that] a technology based solution was
required.” Id. According to Appellant, the claims provide a technology-
based solution recited in the claims that includes post-transfer monitoring of
third-party provider server to trigger a second funds transfer (a rollback). Id.
As an initial matter, we are not persuaded that prior art methods for
restricting use of funds had no applicability for computer-based funds
transfers. For example, similar to the example provided by the Appellant in
which a transferor physically visits the store with the transferee, the
transferor could virtually visit the store with the transferee, such as by sitting
with the transferee at a computer with a computer network connection.
Additionally, as before the advent of computer networks, the transferor
could send funds directly to the third-party provider.
Further, Appellant does not provide any technological improvement
conferred by any post-transfer monitoring. Although technology may be
used when performing the claimed functionality, use of technology does not
indicate an improvement in technology. Appellant contends that the post-
transfer monitoring of third-party provider server data to trigger a second
funds transfer (or rollback) is a technological solution to a problem rooted in
technology. Reply Br. 3. But this post-transfer monitoring solution touted
by Appellant requires no more than analyzing information of particular
content (i.e., post-transfer transaction data) from a particular source (i.e.,
third-party provider server) to detect whether a condition is met (i.e., the
transaction request data matches the transaction restriction). As many cases
have made clear, “even if a process of collecting and analyzing information
is ‘limited to particular content or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract.” SAP Am., Inc. v.
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Investpic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citing Elec. Power
Grp., 830 F.3d at 1355), cert. denied, 139 S. Ct. 2747 (2019), reh’g denied,
140 S. Ct. 27 (2019).
We also are not persuaded of Examiner error by Appellant’s argument
regarding preemption. See Appeal Br. 9. Although the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.”).
Here, Appellant’s claimed invention recites a commercial objective it
desires to achieve (i.e., executing a second funds transfer in response to
transaction request data matching a stored transaction restriction). However,
Appellant’s claims lack a technological means for achieving that goal.
Instead, claims 1 and 17 describe an improvement in wholly abstract ideas
involving the collection and analysis of information, followed by performing
a second funds transfer based upon the results of the collection and analysis.
See Elec. Power Grp., 830 F.3d at 1354 (contrasting claims that focus on an
improvement in computers as tools with claims that focus on abstract ideas
that use computers as tools).
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Appellant does not persuade us that any additional element or
combination of additional elements recited in claim 1 or 17 improves
computer functionality, technology, and/or a technical field to the claimed
invention, or that otherwise integrates the abstract idea into a “practical
application,” as that phrase is used in the 2019 Revised Guidance.3 We
conclude, for the reasons outlined above, that claims 1 and 17 recite a certain
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claims do no more than generally link the
abstract idea to a particular technological environment (e.g., involving a
funds transfer facilitator, a provider computer server, processor, and
database). Therefore, the additional elements do not integrate the abstract
idea into a practical application. Accordingly, we are not persuaded that the
Examiner erred in determining that claims 1 and 17 are directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claims 1 and 17 are 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 claims 1 and 17 include additional elements or a
combination of elements that provides an “inventive concept,” i.e., whether

3 The Revised Guidance references MPEP § 2106.05(a)–(c) and (e) 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. Revised Guidance, 84 Fed. Reg. 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.
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the additional elements amount to “significantly more” than the judicial
exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56.
As described above, claim 1 recites the following additional elements
beyond the abstract idea: “at least one vehicle computer”; “one or more
sensors selected from the group consisting of acceleration sensor, braking
sensor, cornering sensor, proximity to other cars sensor, and global
positioning system”; “at least one first computer”; “a database” (limitation
(c)); and “a network” (limitation (d)). And claim 17 additionally recites a
“network,” “Internet,” “communication device,” “funds transfer system,”
“communication interface,” “processor,” “computer server,” and “database.”
However, Appellant’s Specification describes these elements at a high
degree of generality, i.e., as generic computer components. See, e.g., Spec.
¶¶ 38–40, 43–46, 63, 69.
Appellant argues that the claims are directed to a “technical point of
novelty — not an abstract idea.” Appeal Br. 7; see also Reply Br. 2–3
(arguing that the Examiner’s analysis ignores features that were determined
to be novel and nonobvious over the prior art of record). Yet, to the extent
that Appellant maintains that the claims are patent eligible because they are
not taught by the prior art, Appellant also misapprehends the controlling
precedent. Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent eligible. A novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Appellant argues that for the combination of limitations (f)(1)
(“receiving . . . data from a provider computer server . . .”) and (f)(3) (“in
response to the transaction request data matching a transaction restriction
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. . . , executing a second funds transfer”), as recited in claim 1 and similarly
recited in claim 17, the Examiner failed to submit evidence that these
features alone or in combination were well-understood, routine, and/or
conventional at the time of the invention. Reply Br. 4. Yet, as set forth
above, the features to which Appellant refers relate to the abstract idea itself
and, thus, cannot supply an inventive concept under step two of the
Mayo/Alice framework. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018) (“[i]t 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”) (internal citation omitted); see also Berkheimer v.
HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (holding that claims lacked
an inventive concept where they amount to no more than performing the
abstract idea with conventional computer components), cert. denied, 2020
WL 129532 (U.S. Jan. 13, 2020).
Appellant cannot reasonably contend, nor does Appellant, that the
evidence of record adequately indicates that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., receiving, providing, comparing, and
matching information. See BSG Tech., 899 F.3d at 1290–91 (“If a claim’s
only ‘inventive concept’ is the application of an abstract idea using
conventional and well-understood techniques, the claim has not been
transformed into a patent-eligible application of an abstract idea.”); see also
Berkheimer, 881 F.3d at 1370 (holding claims lacked an inventive concept
because they “amount to no more than performing the abstract idea of
parsing and comparing data with conventional computer components”).
Appeal 2018-007486
Application 12/723,345

18
Here, Appellant has not identified any additional elements recited in
claims 1 and 17 that, individually or in combination, provide significantly
more than the abstract idea. We are not persuaded, on the present record,
that the Examiner erred in rejecting independent claims 1 and 17 under
35 U.S.C. § 101. Therefore we sustain the Examiner’s rejection of
independent claims 1 and 17 under 35 U.S.C. § 101. We also sustain the
Examiner’s rejection of dependent claims 2–5, 8, 9, 18, 22, 24, 25, and 28–
33, which Appellant does not argue separately.
We also are not persuaded by Appellant’s additional arguments for
dependent claims 34 and 35. Appeal Br. 8–9. Specifically, Appellant
asserts that dependent claim 34 further recites that the transfer request
received includes a digital image captured by a camera within a mobile
device of the first user, and claim 35 further recites that the funds transfer
request received includes Universal Product Code (UPC) data captured by a
product scanner within the mobile device of the first user. Id. Appellant
summarily asserts that “based on these additional technical features,
dependent claims 34 and 35 are directed to further technical points of
novelty — not abstract ideas.” Id. at 9. Yet, Appellant does not persuade us
that these additional elements, considered alone and as an ordered
combination, integrate the abstract idea into a practical application or supply
an inventive concept. See DDR Holdings, 773 F.3d at 1256 (reiterating the
principle that generic computer limitations are insufficient to confer patent
eligibility).
Therefore, we also sustain the rejection under 35 U.S.C. § 101 of
dependent claims 34 and 35.
Appeal 2018-007486
Application 12/723,345

19
Written Description
Appellant does not dispute the rejection of claim 33 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. See Appeal Br. 2. Therefore, we summarily sustain the
rejection.
Indefiniteness
Appellant does not dispute the rejection of claims 1–5, 8, 9, 17, 18,
22, 24, 25, and 28–35 under 35 U.S.C. § 112, second paragraph, as
indefinite. See Appeal Br. 2. Therefore, we summarily sustain the rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§  Basis Affirmed Reversed
1–5, 8, 9, 17,
18, 22, 24, 25,
28–35
101  Eligibility
1–5, 8, 9, 17,
18, 22, 24,
25, 28–35

33 112(a)  Written Description 33
1–5, 8, 9, 17,
18, 22, 24, 25,
28–35
112(b) Indefiniteness
1–5, 8, 9, 17,
18, 22, 24,
25, 28–35

Overall
Outcome
1–5, 8, 9, 17,
18, 22, 24,
25, 28–35

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)(1)(iv).

AFFIRMED