Matt Dill et al.

Patent Trials and Appeals Board

Aug 2, 2019

12477360 - (D) (P.T.A.B. Aug. 2, 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.
12/477,360 06/03/2009 Matt Dill 90945-759346 (011020US) 7265
20350 7590 08/02/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
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 MATT DILL, REBECCA MANN, PAUL BLAIR,
JACQUES GILBERT, MIKE MICHELSEN, and MICHAEL HAFER1
____________________

Appeal 2018-003147
Application 12/477,360
Technology Center 3600
____________________

Before JAMES R. HUGHES, JOYCE CRAIG, and JASON M. REPKO,
Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
This is a Decision on Appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 2, 4–7, 9–13, 15–18, 22–27, and 29–39, which are all
claims pending in the Application. Appellants have canceled claims 3, 8,
14, 19–21, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is The Western Union
Company of Englewood, Colorado. App. Br. 2.
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STATEMENT OF THE CASE
The Invention
Appellants’ disclosed embodiments and claimed invention relate to
money transfers utilizing a unique receiver identifier. Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of supporting a money transfer transaction,
the method comprising:
receiving, at a mobile wallet application executing on a
mobile device of a recipient of a previously funded but not yet
completed money transfer transaction:
a Personal Identification Number (PIN) for a mobile
wallet of the recipient; and
a transaction identifier for the money transfer transaction;
verifying, by the mobile wallet application, the PIN with
the mobile wallet application;
in response to verifying the PIN, sending, by the mobile
wallet application, the transaction identifier from the mobile
device of the recipient to an application executing on a money
transfer facilitator system supporting the money transfer
transaction;
after sending the transaction identifier, receiving, by the
mobile wallet application executing on the mobile device of the
recipient, a recipient identifier from the money transfer
facilitator system, wherein the recipient identifier indicates the
recipient as one intended recipient of the money transfer
transaction;
validating, by the mobile wallet application, the recipient
identifier with the mobile wallet application; and
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in response to validating the recipient identifier, sending,
by the mobile wallet application, a payment request from the
mobile device of the recipient to the application of the money
transfer facilitator system to complete the money transfer
transaction, wherein the payment request indicates at least one
destination account for the money transfer transaction.
App. Br. 8 (Claims App’x).
Rejection on Appeal
Claims 1, 2, 4–7, 9–13, 15–18, 22–27, and 29–39 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2–
6.
PRINCIPLES OF LAW
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.2
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo

2 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the patent-eligibility
inquiry under § 101.
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and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
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protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance we must, therefore, ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. USPTO, 2019 Revised Patent Subject
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Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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);3 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4
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 are 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.5
See Revised Guidance.

3 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
4 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
5 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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ANALYSIS
Based on Appellants’ arguments (App. Br. 5–7) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1, 2, 4–7, 9–13, 15–18, 22–27,
and 29–39 on the basis of representative claim 1.
Step 1
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to a fundamental
economic practice, “transferring funds,” which is a certain method of
organizing human activity and an abstract idea. See Final Act. 2.
Appellants contend the Examiner erred because the claims
recite complex interactions of multiple systems (i.e., mobile
wallet applications, mobile communication networks, mobile
devices, and money transfer facilitator systems) exchanging
personal identification numbers, transaction identifiers,
recipient identifiers, payment requests, and other information to
conduct a funds transfer in an innovative manner which results
in greater security and convenience for all involved.
App. Br. 6.
We are not persuaded that the Examiner erred. Appellants’ argument
is conclusory in nature. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
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Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence).
Moreover, Appellants’ Specification describes that “[t]his invention
relates generally to financial transfers.” Spec. ¶ 2. The Specification further
describes that “the invention relates to financial transfers utilizing a unique
identifier to facilitate flexible payment options for the transaction.” Id.
Appellants’ claim 1 recites receiving information related to a funded,
but not yet completed, money transfer transaction; verifying a personal
identification number (PIN); sending a transaction identifier; receiving a
recipient identifier; validating the recipient identifier; and sending a payment
request that indicates a destination account for the money transfer
transaction. App. Br. 8 (Claims App’x). These steps would ordinarily occur
when transferring money, as the Examiner concluded. See Final Act. 2–3.
The recitations in claim 1 are similar to other “fundamental economic
practices” found to be abstract ideas by the Supreme Court and Federal
Circuit. See, e.g., Alice, 573 U.S. at 221 (intermediated settlement); Bilski,
561 U.S. at 611–12 (risk hedging); Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d 1364, 1371–72 (Fed. Cir. 2017) (“Taken together,
the Asserted Claims are directed to the formation of financial transactions in
a particular field . . . and data collection related to such transactions,” which
is “an abstract idea under Alice step one.”); Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (“[P]rocessing an
application for financing a purchase” is a fundamental economic practice
long prevalent in our system of commerce.); LendingTree, LLC v. Zillow,
Inc., 656 F. App’x. 991, 996 (Fed. Cir. 2016) (like the concept of risk
hedging in Bilski and intermediated settlement in Alice, “the concept of
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applying for loans and receiving offers is also long prevalent in our financial
system”); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324 (Fed. Cir. 2016) (finding claims directed to the “anonymous loan
shopping” to be abstract); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(summarizing precedent in which “claims directed to the performance of
certain financial transactions” involve abstract ideas and holding that claims
drawn to the abstract concept of financial transaction-related “data
collection, recognition, and storage is undisputedly well-known.”)
Accordingly, we conclude the claims recite a fundamental economic
practice, which is one of the certain methods of organizing human activity
identified in the Revised Guidance, and thus, an abstract idea constituting a
judicial exception to patentability. We will address Appellants’ argument
that claim 1 is “innovative” below, in Step 2B of the Analysis.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of the limitations of claim 1 recites abstract ideas as
identified in Step 2A(i), supra, and none of the limitations integrate the
fundamental economic practice into a practical application as determined
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under one or more of the MPEP sections cited above. The claim as a whole
merely uses instructions to implement the abstract idea on a computer or,
alternatively, merely uses a computer as a tool to perform the abstract idea.
Appellants argue that “the recitations of the claims are not executed
with generic computers, and are instead executed with particular machines.”
App. Br. 6. Appellants specifically point to the recited “mobile
communications network,” “mobile device,” and “money transfer facilitator
system,” which Appellants argue “are each particularly configured, as
specifically recited by the claims and as further detailed by the
[S]pecification, to perform particular functions as also recited by the claims
and detailed by the [S]pecification.” Id.
We disagree with Appellants. The mobile communications network is
described as communicatively coupled with a mobile device. Spec. ¶ 45.
Transactions and data are sent via the mobile communications network. Id.
The mobile device can execute an application. Id. The money transfer
facilitator system is communicatively coupled with the mobile
communications network. Id. The money transfer facilitator system can be
adapted to receive the transaction identifier from a mobile wallet application,
verify the transaction identifier, and send a recipient identifier to the mobile
wallet application via the mobile communications network. Id. In other
words, the money transfer facilitator system receives data, verifies it, and
sends data over a network. The Specification does not disclose any specific
algorithm that the mobile communications network, the mobile device, or
the money transfer facilitator system uses. See id. ¶ 90. Thus, Appellants’
Specification describes only a general purpose computer and generally refers
to a program on the computer that performs the functions of receiving,
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verifying, and sending, but it does not describe an algorithm by which those
functions are accomplished. See id. ¶¶ 63–64, 90. Accordingly, the
Specification fails to disclose the algorithms that transform the general
purpose processor to a special purpose computer programmed to perform the
recited functions of claim 1.
Thus, on this record, Appellants have not shown eligibility under the
guidance of Manual for Patent Examining Procedure section 2106.05(a)
(“Improvements to the Functioning of a Computer or to Any Other
Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful
Limitations”). Nor do Appellants advance any arguments in the Brief(s) that
are directed to the Bilski machine-or-transformation test, which would only
be applicable to the method (process) claims on appeal. See MPEP
§§ 2106.05(b) (Particular Machine), 2106.05(c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus, the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
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describe [the] abstract method” and, thus, transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea6; mere instructions to implement an
abstract idea on a computer7; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.8
The Examiner concluded that the additional elements “amount to no
more than: (i) mere instructions to implement the idea on a computer,
and/or (ii) 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.” Ans. 4.

6 Alice, 573 U.S. at 221–23.
7 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical principle
on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84–85).
8 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
transferring funds into a patent-eligible application of that abstract idea.
As evidence of the conventional nature of the recited “mobile
communications network,” “mobile device,” and “money transfer facilitator
system,” we refer to paragraph 45 of the Specification, discussed above. See
also Spec. ¶¶ 10, 13, 28, 63–64, 90–94, 106. We find the recited “mobile
wallet” and “mobile wallet application” are well-understood, routine, and
conventional because the “mobile wallet application” is an application
executed on a mobile device, and the “mobile wallet” is a portion or
component of the “mobile wallet application.” See Figs. 1, 9; Spec. ¶ 13.
The generic computers described in the Specification are well-
understood, routine, and conventional, at least because the Specification
describes the computers in a manner that indicates they are sufficiently well-
known that the Specification does not need to describe the particulars of
such additional elements to satisfy 35 U.S.C. § 112 ¶ 1(a). See Berkheimer
Memo9 § III.A.1; Spec. ¶¶ 12, 30, 127. Thus, because the Specification
describes the additional elements in general terms, without describing the
particulars, we conclude the claim limitations may be broadly but reasonably

9 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.), USPTO 3 (2018) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF) (explaining
that a specification that describes additional elements “in a manner that
indicates that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional).
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construed as reciting conventional computer components and techniques,
particularly in light of Appellants’ Specification, as quoted above.10
With respect to this step of the analysis, Appellants argue that “the
claims also include specific limitations other than what is well-understood,
routine, and conventional in the field which confine the claims to particular
useful applications . . . .” App. Br. 6. Appellants argue that “[t]he claims do
not stand rejected under §102 or §103, meaning that some portion of the
claims are novel and/or non-obvious over the prior art considered by the
Office.” Id.
We are not persuaded by Appellants’ arguments. The Supreme Court
emphasizes that “[t]he ‘novelty’ of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.” Diehr, 450 U.S. at 188–89. The Federal Circuit further
guides that “[e]ligibility and novelty are separate inquiries.” Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs, 838 F.3d at 1263 (holding that “[e]ven
assuming” that a particular claimed feature was novel does not “avoid the
problem of abstractness”).
We conclude that claim 1 merely recites various computer-based
elements along with no more than mere instructions to implement the
identified abstract idea using the computer-based elements.

10 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 2, 4–7, 9–13, 15–18, 22–27, and 29–39, not
argued separately, and which fall therewith.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 4–7, 9–13,
15–18, 22–27, and 29–39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED