The Government of the United States of America, as Represented by the Secretary, Department of HomelDownload PDFPatent Trials and Appeals BoardMay 1, 20202019005990 (P.T.A.B. May. 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. 14/487,598 09/16/2014 David Maher DHS-088 7564 15614 7590 05/01/2020 U.S. Department of Homeland Security, S&T/OGC Assistant General Counsel, Intellectual Property Mail Stop 0205 245 Murray Lane Washington, DC 20528 EXAMINER WHITAKER, ANDREW B ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 05/01/2020 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): Kelly.Hyndman@hq.dhs.gov Megan.Smith1@associates.hq.dhs.gov lavanya.ratnam@hq.dhs.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID MAHER Appeal 2019-005990 Application 14/487,598 Technology Center 3600 Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and NABEEL U. KHAN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–27. 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 the Government of the United States of America, as represented by the Secretary of Homeland Security. Appeal Br. 3. Appeal 2019-005990 Application 14/487,598 2 INTRODUCTION Appellant’s Specification describes the invention as relating to “collection and authentication of user supplied information in a mobile environment.” Spec. ¶ 2. As background, Appellant’s Specification describes: Travelers arriving from foreign countries provide information to customs officials to ensure compliance with the laws of the nation to which they are arriving. For example, a family returning to the United States provides the U.S. Customs and Border Protection (CBP) and its personnel with information used to ensure the family complies with United States (U.S.) laws. The information, while targeted to security and law enforcement topics, can vary greatly depending on the family’s situation. In the previous example, one adult parent or guardian may fill out a CPB form, 6059B on behalf of the other member of the family, e.g., for the children, as well as, other adults such as a spouse. U.S. Form 6059B is used to collect information from travelers arriving from abroad. Form 6059B, while familiar to some travelers, can pose issues to inexperience[d] travelers or travelers with uncommon situations. These problems typically manifest themselves when the traveler meets with a customs officer for a brief interview. For example, it is not uncommon for CBP personnel to note errors or omissions on Form 6059B as part of interviewing travelers arriving in the U.S. Trained CBP personnel can aid the traveler to resolve these issues, but it may delay other travelers or take CBP personnel away from other duties. In some cases, travelers undergo additional screening to resolve these issues. Secondary screening, which is more in-depth, is time consuming but it ensures compliance with the relevant laws. These situations increase the overall time it takes to properly screen groups of travelers. This can result in traveler delay and/or involve more CBP personnel to minimize wait times. Sources of delay include, but are not limited to, travelers failing to provide full and accurate information, providing misleading information, providing inconsistent information, and so on. Spec. ¶ 3 (emphasis added). Appeal 2019-005990 Application 14/487,598 3 Appellant’s Specification summarizes the invention as “systems, techniques, devices, methods, and approaches” that are used to “obtain, validate and vet information, such as customs information, in a mobile environment.” Spec. ¶ 5. CLAIMED SUBJECT MATTER Claims 1, 5, 6, 9, and 10 are illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): 1. A method comprising: [A]. receiving, by a database, information input via a mobile device, the information having been encapsulated by an intermediate to escort the information through a firewall to the database; responsive to vetting the information to determine if it meets one or more criteria, [B]. creating a record associated with a unique identifier, information that bio-identifies the user, or an indication of a determination that results from the vetting; [C]. generating an electronic receipt for communication to the mobile device, the electronic receipt including the unique identifier; and [D]. sending the receipt to the mobile device based on routing the electronic receipt through at least one intermediate that collects information from third parties for the mobile device, and that supports distributed validation of the information, wherein the validation is distributed between the mobile device and the at least one intermediate. 5. The method according to claim 1, wherein [E]. information comprises one or more of customs information associated with the user, customs information associated with a person in the user’s travel party, or information that is useable to bio-identify at least one of the user or a person in the user’s travel party. Appeal 2019-005990 Application 14/487,598 4 6. The method according to claim 5, wherein [F]. the electronic receipt comprises the unique identifier, an image of the user, and the user’s name. 9. The method according to claim 1, wherein [G]. vetting is not performed until a vehicle identified in the information is determined to have physically reached a territory to which the user has traveled. 10. The method of claim 9, further comprising [H]. performing a determination by querying a manifest to make the determination that the vehicle physically reached the territory. REFERENCES The Examiner relies on the following prior art: Name Reference Date Ortiz US 2014/0108263 A1 Apr. 17, 2014 Molloy US 2010/0051679 A1 Mar. 4, 2010 Goldberg US 2003/0085808 A1 May 8, 2003 Daniel US 9,396,595 B1 July 19, 2016 REJECTIONS2 A. The Examiner rejects claims 1–27 under 35 U.S.C. § 101 because “the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more” i.e., the 2 All citations to the “Final Act.” are to the Final Action mailed on March 12, 2018. Appeal 2019-005990 Application 14/487,598 5 claimed invention is directed to patent-ineligible subject matter. Final Act. 4–7. We select claims 1 and 15 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Except for arguments regarding the Examiner’s prima facie case, which we address below, Appellant does not otherwise separately argue claims 2–14 and 16–27. Except for our ultimate decision, we do not otherwise discuss the § 101 rejection of claims 2–14 and 16–27 further herein. B. The Examiner rejects claims 1–9, 11–15, and 17–25 under 35 U.S.C. § 103 as being unpatentable over Ortiz and Molloy. Final Act. 7–14. We select claims 1–3, 6, 13–15, 18, 24, and 25 as representative. Appellant does not separately argue claims 4, 5, 7–9, 11, 12, 17, and 19–23. Except for our ultimate decision, we do not discuss the § 103 rejection of claims 4, 5, 7–9, 11, 12, 17, and 19–23 further herein. C. The Examiner rejects claims 10, 16, and 27 under 35 U.S.C. § 103 as being unpatentable over Ortiz, Molloy, and Goldberg. Final Act. 14–18. D. The Examiner rejects claim 26 under 35 U.S.C. § 103 as being unpatentable over Ortiz, Molloy, and Daniel. Final Act. 18–19. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We concur with the conclusions reached by the Examiner. We highlight the following points. Appeal 2019-005990 Application 14/487,598 6 A. Section 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. However, the U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. Appeal 2019-005990 Application 14/487,598 7 252, 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 Court held that “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 Court also indicated that a claim “seeking patent 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.”). If the claim is “directed to” an abstract idea, we turn to the second part 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 (quotation marks 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. Appeal 2019-005990 Application 14/487,598 8 B. USPTO § 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1. Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4 2019 Revised Guidance, 84 Fed. Reg. at 52–55. 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2019-005990 Application 14/487,598 9 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, 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. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2 C.1. 2019 Revised Guidance Step 2A – Prong One Applying the Alice/Mayo analysis, the Examiner determines that claim 1 recites an abstract idea: The limitations of “responsive to vetting the information to determine if it meets one or more criteria, creating a record associated with a unique identifier, information that bio- identifies the user, or an indication of a determination that results from the vetting; generating an electronic receipt for communication to the mobile device, the electronic receipt including the unique identifier,” as drafted, is a process that, under its broadest reasonable interpretation, covers organizing human activities--fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) but for the recitation of generic computer components (Step 2A Prong 1). That is, other than reciting “electronic receipt,” and the “mobile device” nothing in the Appeal 2019-005990 Application 14/487,598 10 claim elements precludes the step from the methods of organizing human interactions grouping. For example, but for the “electronic receipt,” and the “mobile device” in the context of this claim encompasses the user manually creating a record responsive to vetting information. Similarly, the limitation of “receiving, by a database, information input via a mobile device, the information having been encapsulated by an intermediate to escort the information through a firewall to the database,” as drafted, is a process that, under its broadest reasonable interpretation, of simply receiving input by a database from a mobile device that has already been “encapsulated by an intermediate to escort the information through a firewall to the database.” This portion of the claim is simply extra-solution data gathering activities, despite Appellants arguments. Here, Appellants are arguing much more narrowly than actually claimed. Per the claim construction, and in light of the specification, the “encapsulation” has already occurred so the method step is simply receiving the information through a firewall to the database. Looking to the specification, there is no specific method of “encapsulating” simply that it is done in order for information to pass through a firewall. Similarly, the “sending the receipt to the mobile device based on routing the electronic receipt through at least one intermediate that collects information from third parties for the mobile device, and that supports distributed validation of the information, wherein the validation is distributed between the mobile device and the at least one intermediate” is simply [extra-solution] data gathering activities which, under broadest reasonable interpretation is simply the instruction of where to send the electronic receipt. If a claim limitation, under its broadest reasonable interpretation, covers organizing human activities, such as the instructions or rules for how to generate an electronic receipt responsive to the vetting of user information, but for the recitation of generic computer components, then it falls within the “organizing human activities” grouping of abstract ideas. Accordingly, the claim(s) recite(s) an abstract idea. Ans. 4–5 (emphasis added). Appeal 2019-005990 Application 14/487,598 11 C.2. 2019 Revised Guidance Step 2A – Prong Two Further applying the Alice/Mayo analysis, the Examiner determines claim 1 is directed to an abstract idea. This judicial exception is not integrated into a practical application (Step 2A Prong Two). In particular, the claim only recites the use of a database to receive information from a mobile device that has been previously encapsulated by an “intermediate;” a mobile device for receiving the generated receipt and the “intermediate” which routes the electronic receipt “that collects information from third parties for the mobile device, and that supports distributed validation of the information, wherein the validation is distributed between the mobile device and the at least one intermediate” which is simply the statement of the intended use or what the “intermediate” is capable of “support[ing].” The database, mobile device, and intermediate in the steps are recited at a high-level of generality such that it amounts [to] no more than mere instructions to apply the exception using a generic computer component. Specifically the claims amount to nothing more than an instruction to apply the abstract idea using a generic computer or invoking computers as tools by adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). The claims recitation of the “electronic receipt,” “firewall” and “mobile device” only generally [link] the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. Ans. 5–6 (emphasis added). C.3. 2019 Revised Guidance Step 2B Applying the Alice/Mayo analysis, the Examiner determines: Appeal 2019-005990 Application 14/487,598 12 The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). As discussed above with respect to integration of the abstract idea into a practical application (Step 2A Prong 2), the additional elements of using database, mobile device, and intermediate to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim(s) is/are not patent eligible. Ans. 6 (emphasis added). C.4. Claim 15 Applying the Alice/Mayo analysis, the Examiner determines that claim 15 recites the same abstract idea recited in claim 1, does not integrate the abstract idea into a practical application, and does not provide an inventive concept: The claim recites the additional limitations of “man-trap device,” which is configured to or via a non-human operated to permit the user to exit the customs area (mere instructions to apply. . .). The man-trap device appears to be functional generic computer components that perform the generic functions of querying data. The ability to permit a user to exit the customs area are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications (i.e. the query of whether or not the user is allowed to exit the area)is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 1 and 18, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Ans. 10 (emphasis added). Appeal 2019-005990 Application 14/487,598 13 D. Appellant’s § 101 Arguments & Board’s Analysis D.1. Prima Facie Case Appellant contends: The Examiner did not treat each claim individually and even goes so far as to tacitly admit that he did not do so. The Examiner’s grouping of claims result in confusion as to what is claimed and failing in his responsibility under § 101. As a result, a prima facie case under § 101 does not exist and the rejection should be reversed. . . . [The] failure to treat each and every claim independently makes the § 101 rejection untenable. This failure is even more egregious because it lumps different statutory classes together. For example, the Examiner groups a method (claim 1) with computer readable media including instructions (claims 18 and 20). . . . This results in the Examiner confusing what is claimed and to what statutory class the claims belong. . . . For example, while claim 1 recites “responsive to vetting” claim 18 does not recite “vetting” or any colorable variation thereof. . . . The Examiner now contends that claims 1, 18, and 27 recite “vets the input” which is incorrect as claim 1 does not “vet,” rather responsive to vetting it “creates a record.” . . . As a result, the Examiner failed to follow MPEP §707.07(g) (among other portions of the MPEP), which requires the Examiner to state every major rejection “with a full development of reasons rather than by a mere conclusion coupled with some stereotyped expression.” . . . The Examiner’s rejection of claims 1-27 under § 101 was wrong under the MPEP when he issued in the September 15, 2017 Action, wrong when he issued in the Final Office Action, and is even more wrong today in light of the Office's § 101 guidance. Appeal 2019-005990 Application 14/487,598 14 . . . The Examiner failed to establish the broadest reasonable interpretation (BRI) of the claims as a whole as required under MPEP 2106(II). This failure is evident throughout the § 101 rejection in the Final and Advisory Actions. . . . [The rejection] misses claim features, conflates elements between claims, and highlights the Examiner’s failure to establish a BRI. For example, Claim 1 does not recite a “receipt,” rather it recites an “electronic receipt” with a unique identifier. . . . [I]f page 5, item 13 [of the Final Office Action] is referencing claim 18, this claim does not recite “vetting” or a variant thereof. And, “received from a mobile device” makes little sense as claim 18 recites CRM “on” a mobile device. With respect to claim 27, nowhere does it recite a “receipt” or “electronic receipt.” The Examiner offers no explanation how claim 27, that does not recite an “electronic receipt,” can be abstract as being directed to an “electronic receipt.” . . . The Examiner even admits that he is not considering the whole claim (i.e. establishing a BRI for the claim), “[c]laims 1, 18, and 27 recite, in part, a method and on or more tangible computer- readable media. . .” That the Final Rejection omits the terms “electronic receipt,” and “encapsulation” to “escort the information through a firewall” shows the Examiner has failed to meet his responsibility under § 101. Aspects of claims 18 and 27 are also missed. As such, the pending rejection fails under § 101 and should be reversed. Appeal Br. 10–18 (Appellant’s emphasis and citations omitted; panel’s emphasis added), see also Reply Br. 2–8. Appeal 2019-005990 Application 14/487,598 15 Appellant’s argument is not persuasive. We conclude the Examiner is merely required to provide Appellant reasonable notice as to the basis of the § 101 rejection. The notice requirement is set forth by 35 U.S.C. § 132. [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant ... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). We further conclude the Examiner has met this requirement. See Final Act. 5–7; see also Ans. 3–11. D.2. 2019 Revised Guidance Step 2A, Prong 1 Appellant contends: [T]he Examiner does nothing to explain how the steps of claim 1, including generating an electronic receipt, and the CRM of claims 18 and 27 meet “organizing human activity” under Step 2A. . . . [A method of organizing human activity does not] cover, for example in the case of claim 1, “receiving, by a database, information input via a mobile device,” “information having been encapsulated . . .to escort the information through a firewall,” “creating a record associated with a unique identifier, information that bio-identifies the user, or an indication of a determination that results from the vetting” and “generating an electronic receipt . . . including the unique identifier” among other limitations. . . . Appeal 2019-005990 Application 14/487,598 16 [F]or example, claim 1 recites among other technical features (including features that have no equivalent outside of a computing environment): • “Encapsulated” information “to escort the information through a firewall”, • Creating record associated with “a unique identifier;” “information that bio-identifies the user;” or “an indication of a determination that results from the vetting.” • Generating an electronic receipt. All of these features clearly indicate that the claimed subject matter is not “directed to a judicial exception” and even if it were (solely for the sake of argument) it is integrated into a “practical application” as it implements certain technologies. . . . [The Examiner’s characterization of “receives an input, vets the input, creates a record of the vetted input, and outputs a receipt”] is far from what is claimed in for example claim 1, which recites technologies such a firewall, database, electronic receipt, mobile device in a particular combination. Accordingly, the Examiner has failed to conduct a proper analysis under Step 2A and instead intentionally over generalizes what is claimed. . . . [T]he Examiner’s rejection fails under the 2019 Guidance as none of the claims recite, “electronic record keeping of documentation required for traveling.” The Examiner offers no substantive explanation why he thinks the claim recites organizing human behavior including citing to specific portions of a particular claim. . . . Take for example, claim 1 that in-part recites information that is encapsulated to escort it “through a firewall to a database.” This has no analog outside of the context of technologies/devices. And, according to the 2019 Guidance makes it a “practical application”—although other parts of claim 1 do so as well. Likewise an electronic receipt does not have an analog outside Appeal 2019-005990 Application 14/487,598 17 of technologies/devices. See Core Wireless Licensing v. LG Electronics, Inc. The only way an “electronic receipt” and a “receipt” are akin to one another is to read-out the term “electronic.” The other claims all contain subject matter that lack analogs that encompass abstract concepts. Appeal Br. 18–24 (Appellant’s emphasis and citations omitted; panel’s emphasis added), see also Reply Br. 9–11. Independent claim 1 recites the following steps: [A] “receiving . . . information input . . . the information having been encapsulated by an intermediate to escort the information”; [B] “creating a record associated with a unique identifier, information that bio-identifies the user, or an indication of a determination that results from the vetting”; [C] “generating [a] receipt . . . the . . . receipt including the unique identifier”; and [D] “sending the receipt . . . based on routing the . . . receipt.” Consistent with the Examiner’s findings, the steps ([A]–[D]) recite a method including the steps of obtaining information (e.g., customs information), sending the obtained information to be validated (or validating the obtained information), vetting the obtained information, and receiving a receipt that confirms the obtained information has been validated and vetted. See Final Act. 5; see also Ans. 4–5. Such a method is a method of organizing human activity (e.g., validating and vetting customs information of an individual), which is one of the enumerated categories of abstract ideas in the 2019 Revised Guidance. Further, the aforementioned method is similar to the concept identified as an abstract idea in Voter Verified, Inc. v. Election Systems & Software LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018). In Voter Verified, the Appeal 2019-005990 Application 14/487,598 18 court held the claimed method of voting, verifying the vote, and submitting the vote for tabulation was a “fundamental activity that forms the basis of our democracy for hundreds of years” and characterized the aforementioned steps as “human cognitive actions.” Similar to Voter Verified, the method of validating and vetting customs information had previously been performed by humans, as described in Appellant’s Specification. See, e.g., Spec. ¶ 3 (“[t]ravelers arriving from foreign countries provide information to customs officials to ensure compliance with the laws of the nation to which they are arriving”). Thus, the method of claim 1 recites a method of organizing human activity, and, accordingly, recites a judicial exception – an abstract idea. See 2019 Revised Guidance at 52. Appellant’s argument that the Examiner failed to consider certain elements of the claims that recite technical features that cannot be considered an abstract idea is not persuasive. As the Examiner explained, the failure to reproduce the claim language does not mean that the Examiner failed to consider all the elements of claim 1. See Ans. 4. Further, we consider Appellant’s argument regarding Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) in evaluating Step 2A, Prong 2 of the 2019 Revised Guidance, as discussed below. D.3. 2019 Revised Guidance Step 2A, Prong 2 Having determined that claim 1 recites an abstract idea, we now turn to whether claim 1 is directed to that abstract idea, or instead integrates the judicial exception into a practical application. Appellant contends: As an initial matter, the Examiner failed to meet his burden under Step 2B because he has failed to consider the elements Appeal 2019-005990 Application 14/487,598 19 individual and in combination as a claim as required under MPEP § 2106.5. “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination. . .” The Examiner does not do this, rather he groups all the independent claims together and ignores that the claims contain different elements. Appellant disagrees with the Examiner’s general assertion that “the instant claims focus not on such an improvement to the computers as tools ...” This does not meet the requirement of Step II as laid out in MPEP § 2106.04(II). The Examiner’s comment emphasize he is considering each element separately not as a whole. Moreover, he failed to consider that the claims include technological improvements[.] . . . [T]he Examiner failed to address Appellant’s previous comments with regard to the question of “something more” that like Enfish, the claims recite an [sic] improvements that make the claimed subject matter operate in an improved manner. For example, by using an intermediary (which can handle some tasks in certain cases) to avoid multiple, if not millions of (untrusted mobile devices) directly interacting with for example a computing system implementing the storage media of claim 18. This is not just saying “apply it” to a problem, rather it is configuring the claimed subject matter in such a way that it can operate in a particular way that happens to be better than other approaches. For example, the use of encapsulation is preferable to uncontrolled access or other methods used to control access to a computing resource. This way the computing resource is not burdened by every mobile device that wishes to communicate with it, it only has to deal with communications that are encapsulated such that they can make it through a firewall. This is clearly better under § 101 than a resource, such as a server that takes “all comers” who send communications. Moreover, use of “encapsulation” permits the firewall to ensure safety (such as by rejecting information that is not encapsulated) while permitting encapsulated information to pass. The claims recite patentable subject matter which improve performance and avoid other Appeal 2019-005990 Application 14/487,598 20 approaches that are more resource intensive, such as by tying up communication bandwidth. This is far from simply saying “apply it.” For at least the foregoing reasons the pending § 101 rejection is improper and Applicant request reversal of the rejection. Appeal Br. 24–25 (Appellant’s emphasis and citations omitted; panel’s emphasis added); see also Reply Br. 11–12. Consistent with the Examiner’s findings, the recitation of “database,” “mobile device,” “firewall,” “electronic,” and “intermediate,” merely generally link the method of organizing human activity recited in claim 1 to a computer-implemented operating environment to perform the recited method of organizing human activity. See Final Act. 5; see Ans. 5–6. Further, we agree with the Examiner that “the information having been encapsulated by an intermediate to escort the information through a firewall,” as recited in claim 1, is merely extra-solution activity that does not provide significantly more than the abstract idea. See Final Act. 6; see also Ans. 5. Similarly, we also agree with the Examiner that “at least one intermediate that collects information from third parties for the mobile device, and that supports distributed validation of the information, wherein the validation is distributed between the mobile device and the at least one intermediate” is also merely extra-solution activity that does not provide significantly more than the abstract idea. See Ans. 5. Further, contrary to Appellant’s argument that claim 1 includes a technological improvement, we also agree with the Examiner that claim 1 does not improve the performance of the computer-implemented operating environment or other technology, but instead improves problems associated with implementing the underlying method of organizing human activity manually (e.g., delays in vetting travelers due to information that is Appeal 2019-005990 Application 14/487,598 21 incomplete, inaccurate, inconsistent, or misleading) by implementing the underlying method on a computer-implemented system. See Final Act. 6; see also Spec. ¶ 3. Similarly, we do not agree with Appellant’s argument that claim 1 is similar to the claims at issue in Core Wireless. Instead, we agree with the Examiner’s finding that, in Core Wireless, the claims were directed to an improved user interface for electronic devices that improved the efficiency of the electronic devices. See Core Wireless, 880 F.3d at 1363; see also Ans. 10–11. In contrast, as correctly found by the Examiner, claim 1 does not improve an underlying general-purpose computer. See Ans. 11. Instead, claim 1 merely recites a method of validating and vetting customs information that is generally linked to a computer-implemented operating environment (i.e., “database,” “mobile device,” “firewall,” “electronic,” and “intermediate”) that implements the method. See id. In light of the above, and consistent with the Examiner’s determinations, we conclude that claim 1 does not integrate the judicial exception into a practical application. We determine claim 1 does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Appeal 2019-005990 Application 14/487,598 22 See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that claim 1 is directed to a judicial exception, and does not integrate the judicial exception into a practical application. D.4. 2019 Revised Guidance Step 2B We agree with the Examiner’s finding that the recitation of “database,” “mobile device,” “firewall,” “electronic,” and “intermediate,” does not amount to anything more than mere instructions to apply the underlying method of organizing human activity using generic computer components. See Final Act. 6; see also Ans. 6. Evidence of the well- understood, routine, and conventional nature of the aforementioned elements can be found in Appellant’s Specification, which describes example systems and hardware for implementing the customs information collection, validation, vetting, and routing, and also identifies that the example systems and hardware can be combined, adjusted, and manipulated as contemplated by one of ordinary skill in the art. See, e.g., Spec. ¶¶ 19–97. Appellant argues that claim 1 includes technological improvements. See Appeal Br. 24–25; see also Reply Br. 11–12. This argument has been previously addressed with respect to Revised Guidance Step 2A, Prong 2. In light of the above, and consistent with the Examiner’s determinations, we determine that beyond the abstract idea, claim 1 does not recite: (vi) a specific limitation other than what is well-understood, routine, conventional activity in the field or adding unconventional steps that confine the claim to a particular useful application. See MPEP § 2106.05(d). E. Other § 101 Arguments Appellant also contends: The Examiner failed to address any of the claim [sic] individually Appeal 2019-005990 Application 14/487,598 23 other than the limitation of a “man-trap” (claims 15 and 25), which the Examiner gets wrong. . . . The Examiner also fails to ascertain a BRI for claims 15 and 25. . . . Rather than consult a reference to determine the meaning of “man-trap” the Examiner (wholly incorrectly) presumes it is “functional generic computer components that perform the generic functions of querying data.” Appeal Br. 13, 17 (emphasis added). Appellant’s argument is not persuasive. While Appellant argues the Examiner’s finding that the claimed “man-trap device” of claim 15 is significantly more than a generic computer component performing a generic function, Appellant fails to identify a definition of “man-trap device” either in the claims or Appellant’s Specification that distinguishes the claimed “man-trap device” from a generic computer component. F. Examiner’s § 103 Rejection Regarding independent claim 1, the Examiner found the combination of Ortiz and Molloy teaches or suggests all the limitations of claim 1: As per claim 1, Ortiz discloses a method comprising (method, Ortiz Abstract): a. receiving, by a database, information input via a mobile device, the information having been encapsulated by an intermediate to escort the information through a firewall to the database (firewalled, Ortiz ¶128; packet exchange, ¶138; suitably formatted cryptograms for secure communications packages, verifications, ¶141-¶142; secured database, ¶80); b. generating an electronic receipt for communication to the mobile device, the electronic receipt including the unique identifier (receipt on mobile device, Ortiz ¶161) and: c. sending the receipt to the mobile device based on routing the electronic receipt through at least one intermediate that collects Appeal 2019-005990 Application 14/487,598 24 information from third parties for the mobile device and that supports distributed validation of the information, wherein the validation is distributed between the mobile device and the at least one intermediate (Third party service provider system(s) 120, 122 “Partners”, comprising, e.g., communications and payment/transaction processing service provider system(s), provide telecommunications, transaction processing, and any other required/desired third-party service functions, Ortiz ¶103 and ¶127; third party server, ¶108; see also ¶233-¶234). Ortiz does not expressly disclose responsive to vetting the information to determine if it meets one or more criteria, creating a record associated with a unique identifier, information that bio- identifies the user, or an indication of a determination that results from the vetting. However, Molloy teaches responsive to vetting the information to determine if it meets one or more criteria, creating a record associated with a unique identifier, information that bio- identifies the user, or an indication of a determination that results from the vetting (receiving code from the government computer, Molloy ¶16; ¶33; codes change, ¶47, based upon answers, ¶49) (Examiner notes the codes changing from a government computer and being based upon answers as the equivalent to the unique code). At the time of the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to use Molloy’s method of providing codes for inspection of travelers in Ortiz’s virtualization and secure processing of data system to improve the system and method with reasonable expectation that this would result in a system which is able to more effectively process secure data. The motivation being that there is a need for improved border protections, improved customer service, more effective and efficient use of government resources, increased facility capacity, and future portability and adaptability (Molloy ¶11). In addition, the Examiner asserts that claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of Appeal 2019-005990 Application 14/487,598 25 claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses (See MPEP 2111.04). In the instant case, the recited “responsive to vetting the information to determine if it meets one or more criteria, creating a record associated with a unique identifier, information that bio- identifies the user, or an indication of a determination that results from the vetting; and generating an electronic receipt for communication to the mobile device, the electronic receipt including the unique identifier” is not a positive method step as it does not require any actual positive recited claim steps to be performed; nor does it modify any of the positively claimed method steps (if the determination of meeting the criteria is not met, the method steps would end). Final Act. 8–9 (emphasis added). The Examiner further found the combination of Ortiz and Molloy teaches or suggests all the limitations of claims 2, 3, 6, 13–15, 18, 24, and 25. See Final Act. 9–14. The Examiner also found the combination of Ortiz, Molloy, and Goldberg teaches or suggests all the limitations of claims 10, 16, and 27. See Final Act. 14–18. The Examiner further found the combination of Ortiz, Molloy, and Daniel teaches or suggests all the limitations of claim 26. See Final Act. 18–19. G. Appellant’s § 103 Arguments & Board’s Analysis G.1. Independent Claim 1 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. With respect to claim 1, while the Examiner is correct that Ortiz does not teach “responsive to vetting the information to determine if it meets one or more criteria” this is not the only element that Ortiz fails to teach. Take for example the feature of, “receiving information encapsulated by the intermediate to escort the information through a firewall,” the Examiner is incorrect that Ortiz teaches this feature either in the cited portions or anywhere else for that matter. The Examiner cited Ortiz Appeal 2019-005990 Application 14/487,598 26 paragraphs [0128], [0138], and [0141]-[0142] for these teachings. These passages of Ortiz do not teach “encapsulation” by an intermediate that passes the “encapsulated information” on to for example in the case of claim 1 a “database”, rather the very passages the Examiner cites teach away from encapsulation as they teach the use of an adjudication server 110 that provides a “secure session ID” so a mobile device 102 and a point of sale terminal 114 can establish a “secure session.” Put another way, the “secure session ID” of Ortiz is not from an intermediate to the communication, it is from adjudication server 110 that never receives the “encapsulated information” as part of the POS- mobile device communication. . . . In addition, Ortiz only teaches using a session ID, so the receiving computer can tell that received data is from a “known” originating/transmitting computer, i.e. the identity of the receiving/transmitting computers. Ortiz gives an example of this by explaining this can be accomplished by using “near field communication” (NFC) to establish a connection between two devices that are physically very near one another. This fails to teach information “encapsulation” information to ensure it can pass through a firewall. Rather, Ortiz teaches a session ID can be used to identify one computing device to another. . . . Thus, not only does Ortiz fail to teach “encapsulating” information it teaches away from encapsulation by including the session ID “in” the data packet. Additionally, the Examiner fails to explain how the “session ID” could be used to escort the information through a firewall as it (session ID) is the data it does not “encapsulate” the data. The Examiner did not cite Molloy for these features nor does Molloy actually correct this defect in Ortiz. Appeal Br. 25–27 (Appellant’s emphasis and citations omitted; panel’s emphasis added); see also Reply Br. 12–13. Appeal 2019-005990 Application 14/487,598 27 Appellant’s argument is not persuasive. As the Examiner correctly found, Ortiz discloses a system where a customer’s mobile communication device 102, 202 effects secure payment for a transaction with a merchant Point of Sale (POS) terminal 114. See Final Act. 8; see also Ortiz ¶¶ 134– 35. Ortiz further discloses that, after input of suitable account information, the customer’s mobile device 102, 202 transmits the customer’s selection to an adjudication server 110 for lookup into the customer’s securely stored purchaser financial data and other credentials. See Ortiz ¶¶ 136, 151. Using a secure cryptogram, the adjudication server 110 sends encrypted data or program code that provides a complete instruction set for the POS terminal 114 to clear the transaction with an issuing financial institution with a selected method of payment. See Ortiz ¶¶ 141, 151–52. Ortiz further discloses that the adjudication server 110 is a financial institution (FI) system comprising multiple servers including third-party service provider systems 120, 122. See Ortiz ¶ 103. Further, Ortiz discloses that the adjudication server 110 stores and secures application data in a firewalled environment. See Ortiz ¶ 128. In light of Ortiz’s disclosure of the adjudicating server encapsulating an instruction set within a secure cryptogram and transmitting the instruction set via a firewall to the mobile device 102, 202, we agree with the Examiner that Ortiz teaches or suggests “the information having been encapsulated by an intermediate to escort the information through a firewall.” See Ans. 12–13. Although Appellant argues that the claimed encapsulation is distinct from Ortiz’s secure cryptogram, neither claim 1, nor Appellant’s Specification defines Appeal 2019-005990 Application 14/487,598 28 encapsulation in such a manner that distinguishes the claimed encapsulation from Ortiz’s usage of a secure cryptogram.5 Appellant also raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. With respect to the Examiner’s arguments discussing “responsive to vetting,” the Examiner is wrong that this [is] “optional” and it shows the Examiner’s failure to comprehend the claims. What claim 1 recites is that the steps of creating, generating, and sending are done in response to “vetting.” This is to say that “responsive to vetting” is a temporal limitation that tells when the steps are performed, e.g., the steps occur in response vetting that checks the information to “determine if it meets one or more criteria.” This is not expressing optional language. “Responsive to” is distinguishable from “optional” or conditional language because the claim does not condition whether or not the subsequent steps are performed based on the existence or non-existence of the condition. Appeal Br. 27 (Appellant’s emphasis and citations omitted; panel’s emphasis added). We are not persuaded by this argument either. As correctly found by the Examiner, the Examiner examined claim 1 by giving all the limitations patentable weight (including the limitations that the Examiner characterized as optional) and found that the combination of Ortiz and Molloy taught or suggested each and every limitation of claim 1. See Ans. 6. Appellant further raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. 5 Although Appellant’s Specification describes an example of encapsulation as adding header information to a packet so that the packet is escorted through a firewall, disclosed features of Appellant’s Specification are not imported into the claim where the claim does not require them. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appeal 2019-005990 Application 14/487,598 29 The Examiner’s motivation to combine Ortiz with Molloy is flawed as the Examiner provides no reason why a POSITA knowing of both Ortiz and Molloy (presuming solely for the sake of argument this would be within the knowledge of a POSITA) would make the combination. . . . As can be seen, the Examiner’s asserted rational for the combination is a description of the benefits of the Molloy invention. Thus, not only does the Examiner’s “motivation” fail to point to Ortiz, the passage cited by the Examiner shows that a POSITA knowing of Molloy would not look beyond Molloy because Molloy’s invention solves all the “asserted problems.” Appeal Br. 29 (Appellant’s emphasis and citations omitted; panel’s emphasis added); see also Reply Br. 13–15. This argument is not persuasive either. We agree with the Examiner that Molloy discloses a motivation for the combination because Molloy expressly discloses that an advantage of incorporating features of the electronic kiosk system for processing incoming travelers having machine- readable travel documents as disclosed in Molloy is improved border protections, improved customer service, more effective and efficient use of government resources, increased facility capacity, and future portability and adaptability. See Final Act. 9 (citing Molloy ¶ 11); see also Ans. 16–17. In light of this, we conclude the rationale provided by the Examiner for combining Ortiz and Molloy is proper. G.2. Other Claims Appellant raises separate arguments in contending that the Examiner erred in rejecting claims 2, 3, 6, 10, 13–16, 18, and 24–27 under 35 U.S.C. § 103. See Appeal Br. 29–43. In the Examiner’s Answer, the Examiner responded to Appellant’s arguments. See Ans. 17–26. In Appellant’s Reply Brief, Appellant fails to rebut the Examiner’s findings in the Examiner’s Appeal 2019-005990 Application 14/487,598 30 Answer. See generally Reply Br. Accordingly, Appellant has not shown that the Examiner erred in rejecting claims 2, 3, 6, 10, 13–16, 18, and 24–27 under 35 U.S.C. § 103. CONCLUSION The Examiner has not erred in rejecting claims 1–27 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter. The Examiner has not erred in rejecting claims 1–27 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejection of claims 1–27 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is affirmed. The Examiner’s rejection of claims 1–27 as being unpatentable under 35 U.S.C. § 103 is affirmed. Appeal 2019-005990 Application 14/487,598 31 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–27 101 Eligibility 1–27 1–9, 11–15, 17–25 103 Ortiz, Molloy 1–9, 11– 15, 17–25 10, 16, 27 103 Ortiz, Molloy, Goldberg 10, 16, 27 26 103 Ortiz, Molloy, Daniel 26 Overall Outcome 1–27 TIME PERIOD FOR 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 Copy with citationCopy as parenthetical citation