Kimberly DunwoodyDownload PDFPatent Trials and Appeals BoardApr 1, 202012723345 - (D) (P.T.A.B. Apr. 1, 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. 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. Appeal 2018-007486 Application 12/723,345 2 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: Appeal 2018-007486 Application 12/723,345 3 [(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 Appeal 2018-007486 Application 12/723,345 4 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. Appeal 2018-007486 Application 12/723,345 5 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. Appeal 2018-007486 Application 12/723,345 6 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 Appeal 2018-007486 Application 12/723,345 7 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. Appeal 2018-007486 Application 12/723,345 8 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 Appeal 2018-007486 Application 12/723,345 9 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 Appeal 2018-007486 Application 12/723,345 10 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- Appeal 2018-007486 Application 12/723,345 11 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 Appeal 2018-007486 Application 12/723,345 12 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 Appeal 2018-007486 Application 12/723,345 13 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. Appeal 2018-007486 Application 12/723,345 14 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). Appeal 2018-007486 Application 12/723,345 15 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. Appeal 2018-007486 Application 12/723,345 16 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 Appeal 2018-007486 Application 12/723,345 17 . . . , 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 Copy with citationCopy as parenthetical citation