Scott Alan. Brozek et al.

Patent Trials and Appeals Board

Jul 22, 2019

14040269 - (D) (P.T.A.B. Jul. 22, 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.
14/040,269 09/27/2013 Scott Alan Brozek 21652-00313 4670
75564 7590 07/22/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07/22/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SCOTT ALAN BROZEK, TROCI M. TOMSON,
PHILIP ROWE, and CRISTIAN CATANESCU
____________________

Appeal 2018-005061
Application 14/040,269
Technology Center 3600
____________________

Before JUSTIN BUSCH, JENNIFER L. McKEOWN, and
JASON J. CHUNG, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1–21, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm.

CLAIMED SUBJECT MATTER
Appellants’ disclosure generally relates to methods and devices for
“denying a payment authorization request due to fraud, and more
specifically to denying a payment authorization request at a payment
network based on a previous indication by an issuer processor that a
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particular payment card associated with the payment authorization request is
associated with fraud.” Spec. ¶ 1. Claims 1, 10, and 19 are independent
claims, and claim 1 is reproduced below:
1. A computer-implemented method for denying a payment
authorization request associated with fraud, said method
implemented using a payment network computing device
coupled to a database, said method comprising:
receiving, by the payment network computing device, a
first payment authorization response from an issuer processor
that includes a first payment card identifier, wherein the first
payment authorization response is a response to a first payment
authorization request, wherein the payment network computing
device is associated with a payment network;
determining, by the payment network computing device,
that the first payment authorization response indicates that the
first payment card identifier is associated with fraud by
electronically detecting a fraud-indicating response code
included within the first payment authorization response by the
issuer processor;
storing, by the payment network computing device, an
indication in the database that the first payment card identifier is
associated with fraud, in response to electronically detecting the
fraud-indicating response code included within the first payment
authorization response;
receiving, by the payment network computing device, a
second payment authorization request, directly or indirectly,
from a merchant;
identifying, by the payment network computing device, a
second payment card identifier included in the second payment
authorization request by electronically detecting the second
payment card identifier included within the second payment
authorization request;
electronically matching the second payment card identifier
to the first payment card identifier stored within the database;
determining, by the payment network computing device,
that the second payment authorization request that includes the
second payment card identifier is associated with fraud based at
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least in part on the stored indication and the matching of the
second payment card identifier to the first payment card
identifier; and
transmitting, by the payment network computing device, a
second payment authorization response to the merchant, without
transmitting the second payment authorization request to the
issuer processor, wherein the second payment authorization
response includes a denial of the second payment authorization
request.
REJECTIONS
Claims 1–21 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 2–5.
ANALYSIS
The Examiner concludes claims 1–21 are directed to judicially
excepted subject matter. Final Act. 2–5; Ans. 3–11. Appellants argue the
§ 101 rejection of all claims as a group. See Appeal Br. 13–14; Reply Br. 4.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the United States Patent & Trademark
Office recently published revised guidance for evaluating subject matter
eligibility under 35 U.S.C. § 101, specifically with respect to applying the
Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at
the ‘focus of the claimed advance over the prior art’ to determine if the
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claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). The Guidance directs us to address this inquiry using the
following two prongs of analysis: (i) does the claim recite a judicial
exception (e.g., an abstract idea), and (ii) if so, is the judicial exception
integrated into a practical application. 84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under § 101. 84 Fed. Reg.
at 54–55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellants’ claims recite an abstract idea because
they recite mental processes. If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot be performed in the mind practically. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”). More
specifically, Appellants’ claims generally are directed to processing payment
authorization data to generate a list of card identifiers associated with fraud
and determining payment authorization requests are associated with fraud if
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they include card identifiers matching one of the card identifiers associated
with fraud.
This is consistent with how Appellants describe the claimed invention.
See, e.g., Spec. ¶¶ 1 (“denying a payment authorization request at a payment
network based on a previous indication by an issuer processor that a
particular payment card associated with the payment authorization request is
associated with fraud”), 2 (“Accordingly, a system for enabling a payment
processing network to decline payment authorization requests on behalf of
an issuer without requiring the issuer processor to continuously update a set
of negative listings would be beneficial.”), Fig. 8, Abstract. Consistent with
our Guidance and case law, we conclude that receiving and processing
payment authorization data to generate a list of card identifiers associated
with fraud and transmitting denial responses in response to payment
authorization requests that include card identifiers matching one of the card
identifiers associated with fraud is a mental process and, therefore, an
abstract idea. See 84 Fed. Reg. at 52; CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (determining claims
verifying the validity of a credit card transaction by obtaining information
about other transactions, creating a map of credit card numbers to
transactions, and using the map to determine whether the transaction is valid
were directed to an abstract idea because all of the claimed steps could “be
performed in the human mind, or by a human using a pen and paper”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016) (agreeing with district court’s characterization of claims
relating to analyzing data including user identifier data to detect fraud in a
computer environment as being “drawn to the concept of analyzing records
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of human activity to detect suspicious behavior” (quoting FairWarning IP,
LLC v. Iatric Sys., Inc., No. 8:14–CV–2685, 2015 WL 3883958, at *2 (M.D.
Fla. June 24, 2015)).
In addition to consisting predominantly of mental processes,
Appellants’ claims may also be characterized as being directed to receiving
and processing payment authorization data to generate a list of card
identifiers associated with fraud and transmitting denial responses in
response to payment authorization requests that include card identifiers
matching one of the card identifiers associated with fraud, which is a
commercial and legal interaction (i.e., sales activities) and, therefore, falls
within the certain method of organizing human activity category in our
Guidance. See 84 Fed. Reg. at 52; see also Alice, 573 U.S. at 219
(explaining that intermediated settlement was abstract because it was a
longstanding fundamental economic practice similar to hedging, which was
found ineligible in Bilski); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
721 (Fed. Cir. 2014) (holding that claims reciting showing an advertisement
before delivering content were directed to an abstract idea, stating a “rule
holding that claims are impermissibly abstract if they are directed to an
entrepreneurial objective, such as methods for increasing revenue,
minimizing economic risk, or structuring commercial transactions, rather
than a technological one, would comport with the guidance provided in both
Alice and Bilski”).
Each of the steps recited in claim 1, except for the two receiving steps
and the transmitting step, recite mental processes that are part of the abstract
idea of processing payment authorization data to generate a list of card
identifiers associated with fraud and determining payment authorization
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requests are associated with fraud if they include card identifiers matching
one of the card identifiers associated with fraud and the “payment network
computing device” performing each of the other recited steps. With respect
to the characterization of Appellants claims as being directed to receiving
and processing payment authorization data to generate a list of card
identifiers associated with fraud and transmitting denial responses in
response to payment authorization requests that include card identifiers
matching one of the card identifiers associated with fraud, each step recited
in claim 1 recite elements of the abstract idea. Although the receiving and
transmitting steps arguably could be considered mental processes and are
part of the commercial interaction, we treat the two receiving steps, the
transmitting step, and the “payment network computing device” as
additional elements that we analyze to determine whether they integrate the
abstract idea into a practical application or provide an inventive concept.
See 84 Fed. Reg. at 54–56.
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a practical application. 84 Fed. Reg. at
54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, the additional limitations recited beyond the judicial exception
itself fail to integrate the exception into a practical application. More
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particularly, the claims do not recite: (i) an improvement to the functionality
of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg.
at 55.
Rather, the additional elements simply add insignificant extra-solution
activity (i.e., receiving and transmitting data) and a generic payment network
computing device. The payment network computing device is a generic
computer component recited at a high level of generality. See, e.g., Spec.
¶¶ 55–60 (describing exemplary computing devices that may be used to
perform the claimed invention at a high level of generality, primarily
identifying the functions performed, the use of any generic processor (e.g.,
CPUs, microprocessors, microcontrollers, RISCs, ASICS, logic circuits),
and that the invention may be composed of any combination of software,
firmware, and hardware). The receiving and transmitting data functions are
generic computer functions that amount to mere insignificant extra-solution
activity. Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp.
2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed. Cir. 2012)
(explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Accordingly, the additional limitations recite insignificant extra-solution
activity and the use of generic computer components as tools to implement
the abstract idea. 84 See Fed. Reg. at 55; MPEP § 2106.05(f).
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Appellants assert the claims are not directed to an abstract idea.
Appeal Br. 6–9; Reply Br. 1–5. Specifically, Appellants argue the Examiner
oversimplified the claims because the claims provide a specific ordered
combination of rules that improves the “efficient electronic processing of a
payment transaction,” which Appellants assert is the relevant technology to
which the claims are directed. Appeal Br. 6–8 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Spec. ¶ 2);
Reply Br. 1–3.
Appellants argue the specific recited method claims more than just a
result or effect of denying a payment authorization request. Appeal Br. 8.
In particular, Appellants assert the recited method claims “streamlining the
fraud processing sequence to increase the speed of processing previously
rejected cards . . . reducing computing resources required to detect
fraudulent activity in payment transactions,” “reducing intersystem
communications,” and “reducing the load on an issuer processor computer
device by reducing the number of payment authorization request messages
that the issuer processor is required to process and by reducing the need to
maintain negative list databases over multiple computer systems maintained
by multiple entities.” Appeal Br. 7–8; see Reply Br. 4. More specifically,
Appellants argue that, similar to the claims in BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and
McRO, the claimed ordered combination of method steps improves the speed
of payment transaction processing and reduces computer resources used to
process payment transactions while obviating the need for an issuer
processor to provide negative listings (i.e., lists of credit cards issued by the
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issuer associated with fraud) to multiple payment networks. Appeal Br. 10–
11; Reply Br. 4–5; see also Appeal Br. 11–13 (arguing the claims are similar
to exemplary claims provided in the December 2016 Guidance issued by the
U.S. Patent & Trademark Office that were identified as eligible subject
matter because they recited a particular unconventional set of steps
amounting to significantly more than the abstract idea); Reply Br. 3 (same).
Appellants, however, neither claim nor describe any technological
improvement that streamlines the process, reduces communication, or
reduces how much processing is required. Rather, Appellants’ merely claim
a change to the business process flow by moving the creation of a “negative
listing” from an issuer processor to the payment network computing device.
This is evident from Appellants’ own characterizations of the claimed
improvements. See Appeal Br. 7 (arguing the claims improve the
“electronic processing of a payment transaction”); Spec. ¶¶ 2 (explaining
that prior art systems required an issuer to transmit negative listings to a
payment processing system such that it would be beneficial to have a system
“without requiring the issue processor to continuously update a set of
negative listings”), 61 (describing the improvement over known systems as
“reliev[ing] issuer processors of manually updating a listing of payment
cards associated with fraud and providing the listing to a payment network
on a continuous basis”).
On this record, the evidence does not support Appellants’ assertion
that the claims reduce the computing resources required, the intersystem
communications, and the load on the issue processor by eliminating the
issuer’s need to maintain a negative listing and reducing the number of
payment authorization requests the issuer needs to process. Although the
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issuer processor’s load may be reduced,1 the evidence suggests the claims
merely shift that load to the payment network computing device. Offloading
processing by having the payment network computing device create the list
is not similar to BASCOM’s claims, which provided more versatile filters
than the prior art solutions. The evidence indicates the prior art payment
network computing devices stored negative listings and declined certain
transactions based on those listings without contacting the issuer, at least
“[w]hen the issuer processor is offline or otherwise unresponsive to a
payment authorization request.” Spec. ¶ 2. Therefore, at least in some
instances, the prior art payment network computing devices transmitted
payment denial responses without contacting the issuer processor. In
Appellants’ claims, instead of (or in addition to) receiving the negative
listings from the issuer, the payment network computing device creates its
own negative listing.
The claims in McRO—unlike the claims here—recited a “specific . . .
improvement in computer animation” using “unconventional rules” that
related “sub-sequences of phonemes, timings, and morph weight sets” to
automatically animate lip synchronization and facial expressions for three-
dimensional characters that only human animators could previously
produce. McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. In McRO, “the
incorporation of the claimed rules” improved an existing technological
process. McRO, 837 F.3d at 1314.

1 The claims do not preclude the issuer from maintaining negative listings
and it is possible that the issuer may still maintain such listings for
circumstances in which other payment networks may not be configured to
create their own negative listings. Thus, the load on the processor may not
be reduced necessarily.
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Notably, the claimed solution in McRO automated an existing
animation method, but instead of simply using a computer to perform the
preexisting steps to determine an appropriate appearance of a face at a
particular point in time manually (and subjectively), the claims apply a set of
rules to a timed transcript that go beyond the preexisting manual process of
matching single phonemes from the transcript with a morph target. McRO,
837 F.3d at 1303–07; see McRO, 837 F.3d at 1314 (“The computer here is
employed to perform a distinct process to automate a task previously
performed by humans.”). The claims in McRO allegedly produced more
realistic and accurate animations. McRO, 837 F.3d at 1306–07. The court
determined the claims were “directed to a patentable, technological
improvement over the existing, manual 3–D animation techniques” because
they use “the limited rules in a process specifically designed to achieve an
improved technological result.” McRO, 837 F.3d at 1316.
In contrast, and as discussed above, Appellants’ claims recite a series
of mental steps performed by a payment network computer device on two
sets of received data and, after making a determination regarding the second
set of data, transmitting information indicating the results of the
determination. Unlike the claims in McRO, Appellants’ claimed series of
steps do not recite an improvement to the functioning of a computer or other
technology sufficient to provide an inventive concept because, in contrast to
McRO’s claims, Appellants’ claims simply implement mental processes on
generic computer components. Appellants’ have not demonstrated
persuasively the claims recite an improvement to the accuracy of the
negative lists or any other technology or technical field.
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Even accepting Appellants’ characterization of the claims as
“streamlining the fraud processing sequence” and improving the “efficient
electronic processing of a payment transaction,” Appeal Br. 6–8; Reply
Br. 4, we disagree that improving the efficiency of performing a business
process on a network is a technology or that streamlining the business
process constitutes an improvement to the functionality of a computer, other
technology, or a technical field. First, to the extent Appellants assert the fact
that the business process is performed electronically provides a
technological improvement, we disagree. As explained in OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015), “relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” See Alice, 573
U.S. at 224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept).
We also disagree that Appellants’ claims are similar to those
determined eligible in BASCOM. In BASCOM, the court found “the patent
describes how its particular arrangement of elements is a technical
improvement,” and, when construed in favor of BASCOM,2 the claims may
be read to improve an existing technological process. BASCOM, 827 F.3d at
1350. As discussed above, the claims do not improve an existing
technological process, but rather use existing technology to automate mental
steps that make up a business process to carry out a commercial interaction.
Additionally, unlike the arrangement of elements (i.e., installation of a

2 In BASCOM, BASCOM appealed the district court's granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
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filtering tool at a specific location) in BASCOM, see 827 F.3d at 1349–
50, Appellants’ claims do not recite a non-conventional and non-routine
arrangement of known elements.
Accordingly, Appellants’ claims do not improve an existing
technological process. See Enfish, 822 F.3d at 1335–36 (distinguishing
between claims wherein the focus of the claims is on an improvement in
computer capabilities and those that invoke a computer as a tool). The
claims simply automate a set of mental steps using a generic “payment
network computer device.” In other words, Appellants merely claim using
known technology to perform its known functions of receiving, processing,
and transmitting data. See Alice, 573 U.S. at 222 (using a computer to
perform known processes is not enough to supply an inventive concept).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72–73, 77–79 (2012)). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis,
we determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
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field, or simply appends well-understood, routine, conventional activities at
a high level of generality. 84 Fed. Reg. at 56.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional,”
(emphasis added)).
Appellants argue the fact that the claimed method can run on a
general-purpose computer or lacks specific physical components “does not
‘doom[] the claims.’” Appeal Br. 8 (quoting Enfish, 822 F.3d at 1339
(brackets in original)); see Reply Br 2. Appellants further assert the claims
recite significantly more than the abstract idea because the claims recite an
unconventional ordered combination, noting that there is no prior art
rejection of the claims. Appeal Br. 9–10 (citing BASCOM, 827 F.3d at
1350); Reply Br. 4.
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Appellants are correct that reciting conventional computer
components does not render the claims ineligible, but neither does reciting
such components provide an inventive concept sufficient to transform an
otherwise abstract idea into patent-eligible subject matter. See also
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components such as an
“interface,” “network,” and “database” fail to satisfy the inventive concept
requirement). Appellants’ claims, however, fail to recite specific limitations
(or a combination of limitations) that are not well-understood, routine, and
conventional. Rather, the only additional elements (i.e., the payment
network computing device, the receiving steps, and the transmitting step) are
generic computer components recited at a high level of generality
performing basic computer functions, none of which recite limitations
beyond what was well-understood, routine, and conventional in the art. See
Berkheimer Memo3 § III.A.1; Spec. ¶¶ 57–60.
Finally, Appellants contend the claims are not directed to an abstract
idea because they do not pre-empt all ways of detecting fraudulent
payments. Appeal Br. 13. We disagree that the lack of complete pre-
emption demonstrates patent eligibility in this case. The claims limit the

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 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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performance of the recited mental processes only by requiring that the steps
are performed by a generic computing device and by the ability to receive
and transmit the data analyzed by the claimed mental steps. Such
limitations, for the reasons discussed above, are insufficient to add
significantly more to the claims to render the abstract idea patent eligible.
Moreover, although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility. . . . Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015) (“And [the fact] that the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do[es] not
make them any less abstract.”).
For the above reasons, we are not persuaded the Examiner erred, and
we sustain the Examiner’s rejection of claims 1–21 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision to reject claims 1–21 under
35 U.S.C. § 101 as being directed to ineligible subject matter without
significantly more.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED