Lorraine Meere et al.

Patent Trials and Appeals Board

Sep 30, 2019

14195773 - (D) (P.T.A.B. Sep. 30, 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.
14/195,773 03/03/2014 Lorraine Meere 521921 (P17756US1) 9775
77970 7590 09/30/2019
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1661 Page Mill Road
Suite A
Palo Alto, CA 94304
EXAMINER
IWARERE, OLUSEYE
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORRAINE MEERE and GLENN D. EPIS
Appeal 2017-009894
Application 14/195,773
Technology Center 3600
Before BETH Z. SHAW, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Apple Inc., appeals from
the Examiner’s decision to reject claims 1–16 and 18–22. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple Inc.
App. Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to processing payments for an online
marketplace. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving, from a user device and at an authentication
server of an online marketplace, an enrollment request, wherein
the enrollment request identifies a user account with the online
marketplace, the user account existing prior to the enrollment
request;
in response to the enrollment request, generating a unique
serial number and associating the unique serial number with the
user account;
transmitting the unique serial number to the user device
for identifying the user account;
receiving, from a point of sale terminal, transaction data
including the unique serial number and a fund value, wherein the
unique serial number was provided to the point of sale terminal
via a machine readable code generated by the user device, the
user device having first determined a current location of the
client device, and then generated the machine readable code in a
specified format based on the current location; and
identifying the user account based on the unique serial
number and incrementing an available fund amount of the user
account based on the fund value.
App. Br. 27 (Claims Appendix).
REJECTIONS
Claims 1–16 and 18–22 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more. Final Act. 3–4.
Claims 1, 3, 6, 18, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wong (US 2010/0138344 A1, published June 3,
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2010), Sahuguet (US 2009/0303036 A1, published Dec. 10, 2009), and
Messina (US 2005/0131829 A1, published June 16, 2005). Final Act. 6–8.
Claims 7, 8, 10, and 12–16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wong, Sahuguet, Messina, and Garcia (US
2009/0177578 A1, published July 9, 2009). Final Act. 8– 11.
Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wong, Sahuguet, Messina, and Cooley (US 2012/0158581 A1,
published June 21, 2012). Final Act. 11–12.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wong, Sahuguet, Messina, and Ali (US 2014/0067677 A1, published
Mar. 6, 2014). Final Act. 12–13.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wong, Sahuguet, Messina, and Nair (US 5,466,920, issued Nov. 14,
1995). Final Act. 13.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wong, Sahuguet, Messina, Garcia, and Krishnan (US 2011/0244826
A1, published Oct. 6, 2011). Final Act. 14.
Claims 4, 5, 19, and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Wong, Sahuguet, Messina, and Apple Passbook. Final
Act. 15–16.

REJECTION UNDER 35 U.S.C. § 101
Legal Standard
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
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instructs us to “[f]irst . . . determine whether the claims at issue are directed
to [a] . . . patent-ineligible concept[]” (id. at 217), and, in this case, the
inquiry centers on whether the claims are directed to an abstract idea. If the
initial threshold is met, we then move to the second step, in which we
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as 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.’” Alice, 573 U.S. at 217–18 (quoting
Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (Guidance, Step 2A, prong 1); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, 2018))
(Guidance, Step 2A, prong 2).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Guidance (Step 2B).
Examiner’s Findings and Conclusion
Applying the first step of the Alice inquiry, the Examiner determines
the claims are directed to an abstract idea of “adding value to an account as
evidenced by the purpose and end result of the claims.” Final Act. 3. At
Alice step 2, the Examiner determines the claims do not recite elements
sufficient to amount to significantly more than the abstract idea because:
The additional hardware elements or combination of hardware
elements in the claims other than the abstract idea per se amounts
to no more than: mere instructions to implement the idea on a
computer, and recitation of generic computer structure that
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry. Viewed as a whole, these
additional claim elements do not provide meaningful limitations
to transform the abstract idea into a patent eligible application of
the abstract idea such that the claim(s) amounts to significantly
more than the abstract idea itself.
Final Act. 4.
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Appellant’s Contentions
Appellant presents several arguments in favor of eligibility. First,
Appellant argues the rejection oversimplifies claim 1 in the abstract idea
determination. App. Br. 16–17. Appellant further argues claim 1 does not
preempt all systems of “adding value to an account,” and therefore cannot be
properly found abstract. App. Br. 17–18. Citing Amdocs (Isr.) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), Appellant further
contends claim 1 is not abstract because it solves a technological problem
with a technological solution limited to a particular technological
environment. App. Br. 19–20.
Under Alice step 2, Appellant asserts claim 1 recites significantly
more than the abstract idea because it is “an improvement to generating bar
codes in the specific format required by the POS terminal based on the
location.” App. Br. 24. Appellant further asserts that
when considered as an ordered combination, [claim 1] recite[s]
a specific method and system which utilizes the location of the
user device, along with a unique serial number associated with
the user account to generate a bar code specific to the POS
terminal in order to process transaction requirements of the
POS terminal.
App. Br. 24.
Guidance, Step 2A, Prong One2
The Judicial Exception
Applying the Guidance, we are not persuaded of Examiner error. The
Guidance instructs us first to determine whether any judicial exception to

2 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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patent eligibility is recited in the claim. The guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices, fundamental economic principles or practices, commercial or legal
interactions, and managing personal behavior or relationships or interactions
between people, and (3) mental processes. We focus here on the second
grouping—certain methods of organizing human activity such as
fundamental economic practices and commercial interactions.
Claim 1 recites the following limitations: (1) “receiving . . . at . . . an
online marketplace, an enrollment request, wherein the enrollment request
identifies a user account with the online marketplace, the user account
existing prior to the enrollment request,” (2) “in response to the enrollment
request, generating a unique serial number and associating the unique serial
number with the user account,” (3) “transmitting the unique serial number to
the user . . . for identifying the user account,” (4) “receiving . . . transaction
data including the unique serial number and a fund value,” and
(5) “identifying the user account based on the unique serial number and
incrementing an available fund amount of the user account based on the fund
value.” App. Br. 27 (Claims Appendix).
These limitations, under their broadest reasonable interpretation,
recite a commercial interaction and fundamental economic practice of
adding value to a customer account—which are certain methods of
organizing human activity under the Guidance. These limitations each
encompass operations that would typically be part of such an account
replenishment transaction and process. For example, limitation (1) recites
the customary practice of requesting enrollment in a promotion offered by a
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business, and limitation (2) recites assigning a unique identifier to the
account for purposes of the promotion. Similarly, limitation (2) recites that
these identifiers are stored, which is consistent with the notion of keeping a
record of what a particular barcode or UPC value represents. Limitation (3)
recites the familiar practice of providing account details to a user so they can
identify their account. Limitations (4) and (5), which recite receiving
transaction data including the unique serial number and a fund value, reflects
the typical practice of the customer providing their account information and
funds to add to their account, and the account being updated accordingly to
reflect the added funds.
Appellant asserts that claim 1 is similar to the eligible claim in McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)
because it “does not preempt all systems and methods of ‘adding value to an
account.’” App. Br. 17. However, Appellant’s argument essentially is that
because the claims are very specific, there is no risk of preemption.
However, this argument is not persuasive because our reviewing court has
held that lack of preemption is not dispositive of the abstract idea inquiry.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”).
Appellant also argues claim 1 provides a technological solution
similar to the claim in Amdocs. App. Br. 19–20. The claims found eligible
in Amdocs were found eligible because the “claim entails an unconventional
technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases).” Amdocs, 841 F.3d at 1300 (Fed. Cir. 2016). Here, the
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problems purported to be addressed by Appellant’s claims relate to the
“managerial and financial costs” such as inefficient use of shelf space and
complicated inventory tracking imposed by using physical gift cards to add
value to a user account. Spec. ¶ 3. We agree with the Examiner that these
problems are not technological problems, but instead are business problems.
Ans. 11–12. We view the claimed subject matter as being more similar to
claims at issue in other court decisions concerning similar commercial
practices implementing automated technology. See, e.g., Smart Sys.
Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir.
2017) (claims which “involve acquiring identification data from a bankcard,
using the data to verify the validity of the bankcard, and denying access to a
transit system if the bankcard is invalid” are abstract); see also Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed.
Cir. 2017) (holding that concept of “local processing of payments for
remotely purchased goods” is a “fundamental economic practice, which
Alice made clear is, without more, outside the patent system”). Accordingly,
we conclude the claims recite a judicial exception of fundamental economic
practice and a commercial interaction.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See Guidance (citing MPEP § 2106.05(a)–(c), (e)–(h)). Under
the Guidance, limitations that are indicative of “integration into a practical
application” include:
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1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception — see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely including instructions to implement an
abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea – see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
Appellant’s claim 1 recites various computer hardware limitations.
These include (1) “a user device,” (2) “an authentication server of an online
marketplace,” and (3) “point of sale terminal.” We do not find these generic
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devices sufficient to integrate the judicial exception into a practical
application.
The claimed “user device” is described as a conventional mobile
phone. Spec. ¶ 15 (“the user 102 can present an iPhone as the mobile
device”). The “authentication server” is mentioned only twice in the
Specification, with no details about its structure or operations. Spec. ¶ 27.
The “point of sale terminal” is also described generically, with the only
detail about its structure being that it is capable of scanning a barcode.
These generic computer components are included in the claim as “tool[s] to
perform an abstract idea.” MPEP § 2106.05(f). As such, we do not find the
computer hardware limitations are sufficient to integrate the judicial
exception into a practical application.
Claim 1 recites further limitations which relate to determining the use
of a machine readable code and a user’s location to determine the format of
the code. Specifically, claim 1 recites: (a) “wherein the unique serial
number was provided to the point of sale terminal via a machine readable
code generated by the user device,” and (b) “the user device having first
determined a current location of the client device, and then generated the
machine readable code in a specified format based on the current location.”
App. Br. 27 (Claims Appendix).
We conclude that these further limitations are insufficient to integrate
the recited judicial exception of adding value to a customer account into a
practical application. These additional elements recite the use of a machine
readable code to provide a unique serial number to a point of sale terminal.
The use of a machine readable code to provide information to a point of sale
terminal does not improve the functioning of a computer or any
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improvement to any other technology or technological field. MPEP
§ 2106.05(a). Rather, it merely amounts to the use of the point of sale
terminal, the client device, and the machine readable code as tools to
implement the abstract idea. MPEP § 2106.05(f). The location
determination function of the client device is not described in detail, but
instead at a high level of generality. See Spec. ¶ 25 (“mobile device 104 can
determine location data based on GPS signals and latitude and longitude
coordinates”). Nor do these limitations demonstrate the abstract idea is
applied with the use of a particular machine, as the point of sale terminal and
the mobile device are conventional hardware devices. MPEP § 2106.05(b)
(“[A] general purpose computer that applies a judicial exception, such as an
abstract idea, by use of conventional computer functions does not qualify as
a particular machine.”).
These additional limitations also are not fairly considered to be
“effect[ing] a transformation or reduction of a particular article to a different
state or thing” (MPEP § 2106.05(c)), as these limitations merely recite
transferring information and not modifying any physical items. Thus, the
additional elements recited in claim 1 are not sufficient to integrate the
recited abstract idea into a practical application. Accordingly, we conclude
claim 1 is directed to a judicial exception.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
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at a high level of generality, to the judicial exception. See Guidance. We
agree with the Examiner that the claim does not add specific limitations
beyond what is well-understood, routine, and conventional.
Appellant argues the steps of claim 1 amount to significantly more
than the abstract idea “by generating a machine-readable code in a format
that is readable by the POS terminal.” Reply Br. 7. However, we addressed
this argument in connection with Step 2A, prong 2 above, and we reiterate
that to the extent the location-specific format of the code provides an
improvement, it constitutes an improvement to the account replenishment
process (i.e., the abstract idea) itself, and not to the underlying technology.
We note that Appellant does not challenge the evidentiary basis of the
Examiner’s finding in step 2B of the Guidance (Alice step 2). We find the
Examiner’s determination well-supported in this record. See, e.g.,
Spec. ¶¶ 19–25 (describing rendering of barcode and location determination
using conventional hardware at high level of generality). Accordingly, we
do not discern in claim 1 any specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional,” and instead
agree with the Examiner that the claims do not provide an inventive concept
sufficient to transform the judicial exception into patent-eligible subject
matter.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the Guidance, we sustain the
rejection of claim 1 under 35 U.S.C. § 101. Appellant does not present
arguments pertaining to any other claim. Accordingly, we treat claim 1 as
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representative, and we sustain the rejection of the pending claims under
35 U.S.C. § 101.

REJECTIONS UNDER 35 U.S.C. § 103(a)
In rejecting claim 1 under § 103, the Examiner relies on the combined
teaching of Wong, Sahuguet, and Messina to teach the limitation:
receiving, from a point of sale terminal, transaction data
including the unique serial number and a fund value, wherein
the unique serial number was provided to the point of sale
terminal via a machine readable code generated by the user
device, the user device having first determined a current
location of the client device, and then generated the machine
readable code in a specified format based on the current
location.
Final Act. 6–7 (citing Wong ¶¶ 20–21, 33; Sahuguet ¶ 4; Messina ¶¶ 32–35)
(emphasis omitted). More specifically, the Examiner finds that “Wong
teaches information to generate a barcode, and Sahuguet was brought to
teach generating location information” and that “Messina was brought in to
teach determining the format.” Ans. 3 (emphasis omitted).
Appellant argues the Examiner errs because the teachings of the cited
references, even when combined, do not teach “the user device having first
determined a current location of the client device, and then generated the
machine readable code in a specific format based on the current location.”
App. Br. 9–11; Reply Br. 4–5. Appellant asserts the barcodes taught by
Sahuguet are not displayed on a mobile device, but instead are displayed on
physical landmarks and scanned by mobile devices to determine locations.
App. Br. 10. Appellant further argues Messina does not teach barcode
formats based on a current location of a device, but instead teaches
determining a format for a barcode on a driver’s license based on the
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jurisdiction from which the license was issued. App. Br. 11. We agree with
Appellant.
The Examiner finds that because it was generally known that different
jurisdictions could use different barcode formats, it would have been
obvious to use a mobile device to generate a barcode based on its current
location. We disagree because there is no suggestion in the cited portions of
the prior art of record of a mobile device generating a barcode specific to its
current location. Sahuguet, which the Examiner relies on as teaching
barcodes encoded with location information, does not suggest that the
location information encoded into the barcode should be based on the
location of a mobile device. Rather, the location information associated with
Sahuguet’s barcode is the location of a physical landmark. See Sahuguet ¶ 4
(“This document discusses systems and techniques by which information
representing a geographic location may be encoded in a machine-readable
representation, and that representation may be printed and displayed at the
geographic location.”). In fact, Sahuguet discourages the use of a mobile
device to determine a specific location. Sahuguet ¶ 3 (“[P]eople [may] have
privacy concerns with GPS technology, and may not wish to carry a device
that may permit precise tracking without their consent.”). As such, we agree
with Appellant that the cited portions of the prior art of record do not teach
or suggest “the user device having first determined a current location of the
client device, and then generated the machine readable code in a specific
format based on the current location.” Because we find Appellant’s
arguments persuasive of Examiner error, on this record, we do not sustain
the rejection of claim 1 under 35 U.S.C. § 103(a), as well as of independent
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claims 7 and 12 which recite similar limitations, and the remaining claims
which dependent variously therefrom.

DECISION
We affirm the Examiner’s rejection of claims 1–16 and 18–22 under
35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1–16 and 18–22 under
35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner’s decision to reject the claims. See
37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–16, 18–22 § 101 1–16, 18–22 None
1–16, 18–22 § 103 None 1–16, 18–22
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED