Alexander A. Liu et al.

Patent Trials and Appeals Board

Aug 19, 2019

12342887 - (D) (P.T.A.B. Aug. 19, 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.
12/342,887 12/23/2008 Alexander A. Liu 21652-00050 3497
75564 7590 08/19/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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 ALEXANDER A. LIU and RONALD C. HYNES1
____________

Appeal 2018-006550
Application 12/342,887
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, DAVID C. McKONE,
and CARL L. SILVERMAN, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5, 8, 10–16, 19–25, and 27–30, which constitute all the
claims pending in this application. Final Act. 2; App. Br. 7.2 Claims 6, 7, 9,
17, 18, 26, and 31 are cancelled. Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is MasterCard International Incorporated. App.
Br. 1.
2 In this Decision, we refer to the August 25, 2017, Final Action, the
February 5, 2018, Appeal Brief, the April 6, 2018, Examiner’s Answer, and
the June 6, 2018, Reply Brief.
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THE INVENTION
Appellants’ invention is directed to “paying bills using a transaction
card account and, more particularly, to network-based systems and methods
for paying a bill using a prepaid transaction card account or a debit card
account.” Spec. ¶ 1. Figure 1 is reproduced below:

Figure 1 is a schematic diagram of a prior art system for paying bills using a
prepaid transaction card. Id. ¶¶ 4, 13. When Bill Payment Outsourcer
(BPO) 14 receives bill pay data, it communicates with issuer/issuer
processor 16 (e.g., consumer’s issuer bank) via integration protocol 22,
which determines and reports that the consumer’s account has sufficient
funds to pay the bill. Id. ¶ 29. According to the Specification, an integration
protocol must be set up for each issuer/issuer processor that BPO 14
contracts with, and “such an integration protocol may cost upwards of
$50,000 (U.S.) and takes at least three months to establish.” Id. ¶ 3.
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Figure 5 is reproduced below:

Figure 5 is a schematic diagram of a multi-party system for paying a bill
using a prepaid transaction card. Id. ¶ 16. In Figure 5, the data flow is
similar to that of Figure 1. However, before transmitting an authorization
message and bill pay data, acquirer/acquirer processor 306 converts the
authorization and bill pay data into a format acceptable to interchange
network 308. Id. ¶ 50. Similarly, when interchange network 308 receives
the authorization and bill pay data, it converts these data into a format
acceptable to issuer/issuer processor 310. Id. According to the
Specification,
the system described herein uses an existing interchange
network to communicate between a bill payment outsourcer and
an issuer bank by treating the bill payment outsourcers as a
merchant. As such, the above-described system and method
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decrease upfront costs for the issuer bank wishing to offer bill
pay to its customers, as compared to system having an
integration protocol between the bill payment outsourcer and
the issuer bank.
Id. ¶ 57.
Claim 1, reproduced below, is illustrative of the invention:
1. A computer-based method for paying a bill using a
pre-paid transaction card account, said method performed using
an interchange computer coupled to a memory, said method
comprising:
updating an available balance of the pre-paid transaction
card account based upon funds provided to the pre-
paid transaction card account;
receiving (i) bill pay data submitted by a consumer for
processing by a bill payment outsourcer, the bill
payment outsourcer being separate from the
interchange computer, the bill pay data including
data representing the bill to be paid to a biller and
the pre-paid transaction card account associated
with the consumer to be used for paying the bill,
and (ii) an authorization message at the
interchange computer for storage within the
memory, wherein the authorization message
requests an approval message confirming that the
pre-paid transaction card account includes
sufficient funds to pay the submitted bill, and
wherein the authorization message is generated by
the bill payment outsourcer;
comparing, by the interchange computer, the bill pay data
and the authorization message to at least one
message format of a plurality of message formats,
wherein each message format of the plurality of
message formats is associated with one or more of
a plurality of issuers;
formatting, by the interchange computer, the bill pay data
and the authorization message for transmission to
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an issuer associated with the prepaid transaction
card, further including i) determining that the bill
pay data and the authorization message are in a
first message format, wherein the first message
format is incompatible with the issuer, ii)
determining a second message format compatible
with the issuer, and iii) automatically converting
the bill pay data and the authorization message at
the interchange computer into the second message
format;
transmitting the converted bill pay data and authorization
message from the interchange computer to the
issuer;
receiving, by the interchange computer, the approval
message from the issuer after determining the pre-
paid transaction card account has sufficient funds
to pay the bill;
transmitting the approval message from the interchange
computer to the bill payment outsourcer; and
causing, by transmission of the approval message by the
interchange computer, the bill payment outsourcer
to automatically submit the bill pay data to the
biller via a remote payment system.

THE REJECTIONS
Claims 1–5, 8, 10–16, 19–25, and 27–30 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2–
14.
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Claims 1–5, 8, 10–16, 19–25, and 27–30 stand rejected under
35 U.S.C. § 112 ¶ 23 as being indefinite. Id. at 14–15.

SECTION 101 REJECTION
I. Principles of Law
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 Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. 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 Supreme Court’s two-step framework, described in Alice
and Mayo. See id. 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.”
Id. 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

3 The Examiner rejects the claims under either 35 U.S.C. § 112 ¶ 2 (pre-
AIA) or 35 U.S.C. § 112(b) (post-AIA). Final Act. 14. Because the
Application was filed before September 16, 2012, the effective date of the
AIA (Public Law 112-29 § 4(c), 125 Stat. 284), we apply pre-AIA § 112 ¶ 2.
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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, 67–68 (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 183 n.7 (quoting Corning v. Burden, 56
U.S. 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 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.”). The
Supreme 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. (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
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-
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eligible application.” Alice, 573 U.S. at 221. “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 on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).4 Under that
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 activities such as a fundamental economic practice, or mental
processes); 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

4 We note that the Guidance was not available to the Examiner and
Appellants during the prosecution of the instant Application.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

II. The Examiner’s Rejection
Focusing on claim 1, the Examiner finds that claim 1 recites steps for
collecting, processing, storing, and displaying information that are similar to
the concepts identified as abstract ideas in cases such as Dealertrack, Inc. v.
Huber, 674 F.3d 1315 (Fed. Cir. 2012), Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011), Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), and others.
Final Act. 4–6. The Examiner finds that
the instant claims are related to a fundamental economic
practice as to performance of financial transactions as abstract,
they are also related to certain methods of organizing human
activity as relating to managing transactions as abstract and as
to the abstract concept of comparing data and organizing
information as to the idea itself.
Id. at 16.
The Examiner further finds:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the claims do not provide improvements to another
technology or technical field, improvements to the functioning
of the computer itself, and do not provide meaningful
limitations to the abstract idea to a particular technological
environment.
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Id. at 6. Rather, the Examiner finds, “[t]he claims are directed to an abstract
idea with additional generic computer elements that do not add meaningful
limitations to the abstract idea because they require no more than a generic
computer to perform generic computer functions that are well-understood,
routine, and conventional activities previously known in the industry.” Id.
Additionally, the Examiner identifies several instances in the Specification
that he finds show that the recited computer components are used in well-
understood, routine, and conventional manners. Id. at 6–7.
Appellants argue that the claims are eligible improvements to
computer-related technology, similar to that in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). App. Br. 13–16.
Alternatively, Appellants contend that the claims recite a patent eligible
inventive concept, similar to the claims in BASCOM Global Internet
Services, Inc. v AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Id. at
17–19.

III. Judicial Exception (Step 2A, Prong 15)
Viewing the Examiner’s rejection through the lens of the Guidance,
we first consider whether the claim recites a judicial exception. Guidance,
84 Fed. Reg. at 51. The PTO has synthesized the key concepts identified by

5 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue here, as Appellants’ claims recite systems
(machines), methods (processes), and non-transitory, computer-readable
media (articles of manufacture).
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the courts as abstract ideas into three primary subject-matter groupings:
mathematical concepts, certain methods of organizing human activities (e.g.,
a fundamental economic practice), and mental processes. Id. at 52. As
explained below, claim 1 recites a certain method of organizing human
activity (a fundamental economic practice), which is a concept identified by
the Guidance as an abstract idea. Id.
As noted above, the Examiner finds,
the instant claims are related to a fundamental economic
practice as to performance of financial transactions as abstract,
they are also related to certain methods of organizing human
activity as relating to managing transactions as abstract and as
to the abstract concept of comparing data and organizing
information as to the idea itself.
Final Act. 16. Claim 1, for example, recites (1) updating an available
balance of a prepaid transaction card account; (2) submitting bill pay data
(including bill and account information) and an authorization message to a
bill payment outsourcer; (3) comparing the format of the bill pay data and
authorization message to one of a plurality of message formats;
(4) formatting the bill pay data and authorization message for transmission
to an issuer associated with the prepaid transaction card; (5) transmitting the
converted bill pay data and authorization message to the issuer; (6) receiving
an approval message from the issuer; (7) transmitting the approval message
to the bill payment outsourcer; and (8) causing the bill payment outsourcer
to submit the bill pay data to a biller. We agree with the Examiner that
claim 1 recites a method of performing financial transactions, i.e.,
facilitating the payment of bills using prepaid transaction cards. The
Specification acknowledges that this is a typical service provided by banks.
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Spec. ¶¶ 2–3. We find that this is a fundamental economic practice, one of
the certain methods of organizing human activity listed in the Guidance.
We also agree with the Examiner that claim 1 is similar to methods of
performing financial transactions determined to be ineligible. For example,
the Federal Circuit determined that claims reciting processing information
through a clearinghouse (receiving credit applications and selectively
forwarding them to remote funding sources) were “directed to an abstract
idea preemptive of a fundamental concept or idea that would foreclose
innovation in this area.” Dealertrack, 674 F.3d at 1333. Similarly, the
Supreme Court has found “the concept of hedging risk and the application of
that concept to energy markets” (Bilski v. Kappos, 561 U.S. 593, 609–11
(2010)) and a “method of exchanging financial obligations between two
parties using a third-party intermediary to mitigate settlement risk” (Alice,
573 U.S. at 219–20) to be ineligible fundamental economic practices. See
also Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1054
(Fed. Cir. 2017) (concept of “processing an application for financing a
purchase” determined to be abstract); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1354–55 (Fed. Cir. 2014) (“The claims are squarely about
creating a contractual relationship—a ‘transaction performance guaranty’—
that is beyond question of ancient lineage.”).
Accordingly, we find that claim 1 recites an abstract idea, namely a
certain method of organizing human activity (a fundamental economic
practice).

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IV. “Directed to” the Judicial Exception (Step 2A, Prong 2)
Because the claims recite an abstract idea, we now proceed to
determine whether the recited judicial exception is integrated into a practical
application. See Guidance, 84 Fed. Reg. at 51. Specifically, we look to
“whether the claim recites additional elements that integrate the exception
into a practical application of that exception.” Id. at 54. Limitations that are
indicative of integration into a practical application include additional
elements that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field. Id. at 55. When a claim
recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to” the judicial exception. Id. at
51.
The Examiner finds: “The additional element(s) or combination of
elements in the claim(s) other than the abstract idea per se amount(s) 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.” Final Act. 6. As
noted above, the Examiner finds, “[t]he claims are directed to an abstract
idea with additional generic computer elements that do not add meaningful
limitations to the abstract idea because they require no more than a generic
computer to perform generic computer functions that are well-understood,
routine, and conventional activities previously known in the industry.” Id.
Appellants contend that their claims are directed to improvements to
computer architecture and are eligible under Enfish. App. Br. 13–16. In
Enfish, the Federal Circuit determined that claims to a self-referential table
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for a computer database were not directed to an abstract idea because “they
are directed to a specific improvement to the way computers operate,
embodied in the self-referential table.” 822 F.3d at 1336. The court
determined that “the self-referential table recited in the claims on appeal is a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory.” Id. at 1339. In reaching its decision,
the court credited description in the specification teaching that the self-
referential table functions differently than conventional database structures
and “achieves other benefits over conventional databases, such as increased
flexibility, faster search times, and smaller memory requirements.” Id. at
1337.
Appellants, pointing to Figure 5 (reproduced above), argue that “the
present application illustrates a novel system architecture that is directed to
the functional intercession of an interchange network that improves the
functionality of the system as a whole.” App. Br. 14. Appellants argue that
the claimed architecture (allegedly shown in Figure 5) is “plainly different”
from the conventional system described in the Specification (shown in
Figure 1). Id. According to Appellants, the invention solves the problem of
“using an expensive (e.g., typically $50,000, as described in the
specification) and resource-intensive (e.g., three months or longer)
integration protocol 22 that must be established between the BPO and the
issuer in advance” by eliminating the need for an integration protocol
between each BPO computer and issuer computer. Id. at 14–15 (citing
Spec. ¶¶ 3–6, 28–29). Appellants also tout “an increased flexibility to allow
virtually any BPO to conduct bill payment transactions with virtually any
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particular issuer, but without requiring that a separate integration protocol be
established between the individual parties.” Id. at 15.
The Examiner acknowledges that “the structure is different between
[Figure 1 and Figure 5], as constructed in the figures, the change is adding
the acquirer and interchange computer activities in between the BPO and the
issuer to have the funds flow through these additional entities instead of
going from the issuer to the RPPS.” Ans. 29. Nevertheless, the Examiner
finds, the claims “[do] not recite clearly hardware that would represent the
claimed specific structure,” and “there is no mention of the integration
protocol or infrastructure conflicts that are allegedly solved by the instant
invention,” and concludes:
Without an actual claiming of the hardware that would
potentially result in a particular solution to a problem or a
particular way to achieve a desired outcome defined by the
claimed invention or would correspond to an actual teaching in
the specification in a manner that demonstrates the
improvement, the argued for integration protocol
“improvement” is not a particular solution that can be
connected to the claims.
Id. at 31.
We agree with the Examiner. The claims do not recite, and the
Specification does not describe, any details as to the automatic conversion of
bill pay data and authorization messages or the integration protocols on
which they allegedly improve. See Dealertrack, 674 F.3d at 1333 (“[T]he
’427 Patent ‘does not specify how the computer hardware and database are
specially programmed to perform the steps claimed in the patent.’ The
claims are silent as to how a computer aids the method, the extent to which a
computer aids the method, or the significance of a computer to the
performance of the method.” (internal citation omitted)). Rather, conversion
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is described and claimed as a generic function performed by generic
computer equipment. See, e.g., Spec. ¶ 50. Upon consideration of the claim
language and the Specification’s description, Appellants’ invention appears
to be directed to no more than a rearrangement of generic computer
components with a generic computer performing a general (but undescribed)
conversion function replacing a generic computer performing a specialized
(but undescribed) conversion function. Appellants’ arguments do not
persuade us that claim 1 is directed to an improvement in the way computers
or computer architectures function.
The Examiner’s view also is consistent with the caselaw. For
example, in Credit Acceptance Corp., the Federal Circuit determined that
“[t]he invention’s ‘communication between previously unconnected
systems—the dealer’s inventory database, a user credit information input
terminal, and creditor underwriting servers,’ . . . does not amount to an
improvement in computer technology.” 859 F.3d at 1055 (internal citation
omitted). The Federal Circuit considered this to be using generic computers
to automate a previously manual processing of loan applications and
distinguished it from the improvements to computers claimed in Enfish and
McRO. Id. See also Alice, 573 U.S. at 226 (“Nearly every computer will
include a ‘communications controller’ and ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims. As a result, none of the hardware recited by
the system claims ‘offers a meaningful limitation beyond generally linking
‘the use of the [method] to a particular technological environment,’ that is,
implementation via computers.’” (internal citations omitted)); Electric
Power Group, 830 F.3d at 1354 (Distinguishing Enfish and concluding that
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“[t]he advance [the claims] purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular ass[ure]dly inventive technology for performing those
functions.”).
The Guidance also discusses other ways that the additional elements
can integrate the judicial exception into a practical application—e.g., a
particular machine or manufacture, a particular transformation, and a
particular treatment of a disease. See Guidance, 84 Fed. Reg. at 55. Claim 1
also lacks such features.
In sum, claim 1 merely recites computers that function as tools to
carry out the abstract idea. Nothing in the claim changes the way a
computer or computer architecture operates, and the claim does not improve
the function of the computers themselves. Accordingly, claim 1 does not
integrate the recited abstract idea into a practical application.

V. Inventive Concept (Step 2B)
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate
our conclusions about the additional elements discussed in the previous step.
Id.
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The Examiner finds that the additional elements or combination of
elements in claim 1 constitute “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.” Final Act. 6. In particular, the Examiner finds:
The disclosed RPPS system is recited to be known and the term
includes not only the system described but any other remote
payment and presentment system. (See Applicant Specification
paragraphs 4, 21–22) The computers used are not disclosed to
be specialized, use a computer program embodied on a
computer readable medium on a variety of generic devices
using a flexible application designed to run on various
environments (See Applicant Specification at least paragraphs
8–11, 19, 26, 36–47 and 57–59).
Id. at 7. We agree that the Specification describes the components of the
invention as conventional. See, e.g., Spec. ¶¶ 4 (“The remote payment and
presentment system (RPPS) may include, by way of example, a system
known as the Remote Payment and Presentment Service (RPPS®).”),
22 (“[T]he systems and processes described herein are not limited to using
the RPPS® system but may utilize any remote payment and presentment
system (RPPS).”), 26 (memory using “Structured Query Language (SQL),”
“Windows® environment,” “UNIX® server environment”), 31 (“typical
payment card system”), 57 (“[T]he system described herein uses an existing
interchange network to communicate between a bill payment outsourcer and
an issuer bank by treating the bill payment outsourcers as a merchant.”).
Appellants reiterate their argument for Step 2A, Prong 1, and contend
that “FIG. 5 of the present application clearly depicts a non-conventional
and nongeneric structural arrangement of system elements in comparison
with the conventional arrangement of system elements depicted in FIG. 1.”
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App. Br. 17. Appellants liken their claims to those determined to be eligible
in BASCOM. Id. Specifically, Appellants argue that “the record indicates
that it was not conventionally known to perform, at the interchange
network, message formatting substitutions between BPOs and issuers using
incompatible formats,” that
[b]y requiring the intercession of the interchange network
between the BPO and the issuer, the present claims provide an
inventive concept of a centralized, universal message format
‘translator’ between BPOs and issuers that would be unable to
perform financial transactions together without first
establishing an individual integration protocol between the
particular BPO and issuer,
and that “[a]ccording to this inventive concept, the need for individual
integration protocols is eliminated.” Id. at 18. According to Appellants,
“the intervention of the interchange network computer replaces the
conventional integration protocols that have been required between every
respective BPO and issuer pair,” and “[t]he multi-stage
authentication/approval process of the present claims represents a significant
improvement over the conventional system.” Id. at 19.
In BASCOM, the Federal Circuit addressed the eligibility of claims to
filtering content on the Internet, and found that “the limitations of the
claims, taken individually, recite generic computer, network and Internet
components, none of which is inventive by itself.” 827 F.3d at 1349.
Nevertheless, the Federal Circuit held the claims eligible because of the
“non-conventional and non-generic arrangement” of these known,
conventional components, specifically, “the installation of a filtering tool at
a specific location, remote from the end-users, with customizable filtering
features specific to each end user,” which “gives the filtering tool both the
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benefits of a filter on a local computer and the benefits of a filter on the ISP
server.” Id. at 1349–50.
The Examiner finds that “Appellant is effectively arguing that using
middleware to format substitutions of message elements is unconventional
and that this is not an integration protocol, despite arguing that formatting
and connectivity is an integration protocol.” Ans. 32. According to the
Examiner, Appellants argue that their invention implements a two-stage
authentication process and two-stage approval process between a BPO and
an issuer. Id. The Examiner, however, finds that the claims do not recite
such a two-stage process between diverse hardware systems. Id. From this
finding, the Examiner concludes that the claims do not recite an
improvement to the functioning of a computer. Id. at 33. In reply,
Appellants argue that “[a]ll of the pending claims require a specific message
format substitution functionality at the interchange network, and there is no
evidence on the record of a prior art system that provided such functionality
to the interchange network.” Reply 11.
We agree with the Examiner. Claim 1 recites determining that the bill
pay data and authorization message are in a first message format and
converting such data to a second message format at an interchange
computer. However, as noted above, neither the claims nor the Specification
include any detailed description of the message format conversion,
interchange computer, or the admittedly conventional integration protocols.
Contrary to Appellants’ arguments, the Specification describes the
interchange network as an existing and conventional component performing
a generic conversion. Spec. ¶ 57. Thus, we agree with the Examiner that
claim 1 recites no more than replacing a generic integration protocol with
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generic middleware performing a conventional data format conversion. This
is not the type of improvement to a computer or computer architecture
determined to be eligible in BASCOM. Rather, “[t]he use and arrangement
of conventional and generic computer components recited in the claims—
such as a database, user terminal, and server—do not transform the claim, as
a whole, into ‘significantly more’ than a claim to the abstract idea itself.”
Credit Acceptance Corp., 859 F.3d at 1056; accord Alice, 573 U.S. at 226
(“[N]one of the hardware recited by the system claims ‘offers a meaningful
limitation beyond generally linking ‘the use of the [method] to a particular
technological environment,’ that is, implementation via computers.’”
(internal citation omitted, brackets in Alice)); Dealertrack, 674 F.3d at 1333
(“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render the claim patent
eligible.”).
On this record, the limitations of claim 1, considered individually and
in combination, do not provide an inventive concept.

VI. Claims 2–5, 8, 10–16, 19–25, and 27–30
The Examiner rejects independent claims 14, 25, and 30 for the same
reasons as given for claim 1. Final Act. 7. Appellants argue the independent
claims as a group, although Appellants’ arguments focus more particularly
on the limitations of claim 25, a system claim. App. Br. 11–19; Reply 6–13.
We fully considered Appellants’ arguments as explained above for claim 1.
Our analysis is equally applicable to claims 14, 25, and 30, which are
directed to the functionality recited in claim 1 implemented on generic
computer equipment and memory. For the same reasons, claims 14, 25, and
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30 recite the same abstract idea as does claim 1, claims 14, 25, and 30 do not
integrate the abstract idea into a practical application, and claims 14, 25, and
30 do not provide an inventive concept.
The Examiner finds that dependent claims 2–5, 8, 10–13, 15, 16, 19–
24, and 27–29 recite the same abstract idea as claims 1, 14, 25, and 30, and
simply add processing and messaging (e.g., transmitting and receiving bill
pay data and approval messages, applying a debit entry, receiving and
scheduling recurring bill payments, tracking payments and reward points)
using the same generic components, or add more specificity as to the entities
using the generic components (e.g., issuing bank). Final Act. 7–13.
According to the Examiner, “[t]he dependent claims are further utilizing
generic systemization to perform generic computer functions that are well-
understood, routine and conventional activities amount to no more than
implementing the abstract idea with a computerized system and are directed
to an abstract idea without significantly more.” Id. at 13–14. Appellants do
not argue the dependent claims separately. We agree with the Examiner and
find that the dependent claims recite the same abstract idea as do the
independent claims, that the dependent claims do not integrate the abstract
idea into a practical application, and that the dependent claims do not
provide an inventive concept.

VII. Conclusion
We sustain the rejection of claims 1–5, 8, 10–16, 19–25, and 27–30
under 35 U.S.C. § 101.

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SECTION 112(B) REJECTION
The Examiner rejects the claims as indefinite for allegedly omitting
two “essential steps.” Final Act. 14–15. Although the Examiner treats all
the pending claims together, we discuss claim 1 (reproduced above) as
illustrative of the issues.
The preamble of claim 1 recites “[a] computer-based method for
paying a bill using a pre-paid transaction card account, said method
performed using an interchange computer coupled to a memory.”
Independent claims 14, 25, and 30 have similar preamble recitations.
Claim 1 further recites, inter alia, “receiving, by the interchange computer,
the approval message from the issuer after determining the pre-paid
transaction card account has sufficient funds to pay the bill,” and “causing,
by transmission of the approval message by the interchange computer, the
bill payment outsourcer to automatically submit the bill pay data to the biller
via a remote payment system.” Claims 14, 25, and 30 recite structure for
performing functions similar to these two steps.
As to the first of these two limitations, the Examiner finds that it
implies an unrecited conditional limitation (determining that a prepaid card
account has sufficient funds to pay a bill) without any recitation of what
happens if that condition is not met. Final Act. 15. Along with the finding
that the unrecited limitation is conditional, the Examiner finds that
everything after the “receiving . . . the approval message” step is optional.
As an initial matter, whether a limitation is optional is not an issue of
indefiniteness. Rather, it goes to the breadth of the claim. In any case, the
limitations following the “receiving . . . the approval message” step are not
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optional limitations. As explained in the Manual of Patent Examining
Procedure,
The broadest reasonable interpretation of a method (or process)
claim having contingent limitations requires only those steps
that must be performed and does not include steps that are not
required to be performed because the condition(s) precedent are
not met. For example, assume a method claim requires step A
if a first condition happens and step B if a second condition
happens. If the claimed invention may be practiced without
either the first or second condition happening, then neither step
A or B is required by the broadest reasonable interpretation of
the claim. If the claimed invention requires the first condition
to occur, then the broadest reasonable interpretation of the
claim requires step A. If the claimed invention requires both
the first and second conditions to occur, then the broadest
reasonable interpretation of the claim requires both steps A and
B.
MPEP § 2111.04(II) (9th ed., rev. 08.2017, Jan. 2018). Claim 1 can be
practiced without the alleged second condition (the pre-paid transaction card
account does not have sufficient funds to pay the bill) happening. Only the
first condition (“the pre-paid transaction card account has sufficient funds to
pay the bill”) is required by the plain language of claim 1. Thus, the
“receiving . . . the approval message” step does not imply an unrecited
determining step nor make the following steps optional.
Moreover, claims 14 and 25 are apparatus claims and claim 30 is a
claim to an article of manufacture.
The broadest reasonable interpretation of a system claim having
structure that performs a function, which only needs to occur if
a condition precedent is met, still requires structure for
performing the function should the condition occur. This
interpretation of the system claim differs from the method claim
because the structure (i.e., a processor programmed to perform
an algorithm for carrying out the recited function should the
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recited condition be met) is present in the system regardless of
whether the condition is met and the function is actually
performed.
Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016)
(precedential), slip op. at 14. Each of claims 14, 25, and 30 recites structure
for transmitting or receiving an approval message when a pre-paid
transaction card account has sufficient funds to pay a bill. For this
additional reason, claims 14, 25, and 30 do not recite optional limitations.
As to the second of these two limitations, the Examiner finds that the
preamble is a limitation, that actual bill payment is a requirement of the
claim, and that it is not clear whether the “causing” limitation calls for actual
bill payment. Final Act. 14–15 (“In order to receive the approval message,
the pre-paid transaction card account not only has to have sufficient funds to
pay the bill, but the bill has to actually be paid.”). Appellants argue that the
recitation of bill payment in the preamble of claim 1 is a statement of
intended use, or intended result, rather than a limitation of the claim.
App. Br. 9–10. According to Appellants, in the context in which the claims
are applied, “[i]n almost all cases, the actual transfer of funds does not occur
until well after the transaction has been ‘consummated.’” Id. at 10.
We agree with Appellants. “In general, a preamble is construed as a
limitation if it recites essential structure or steps, or if it is necessary to give
life, meaning, and vitality to the claim.” Symantec Corp. v. Computer
Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation
marks and citations omitted). In contrast, “[a] preamble is not limiting,
however, where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention.” Id. (internal quotation marks and citations omitted). The
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Federal Circuit has given us several “guideposts” to determine whether a
preamble is limiting, including “reliance on the preamble in the prosecution
history, or in situations where it is necessary to provide antecedent basis for
the body of the claim.” Id. The Examiner finds that, in each independent
claim, “the claim preamble has the import that the claim as a whole suggests
for it, the import here being that the claimed method results in ‘paying a bill’
which is not fulfilled by Independent Claim 1.” Ans. 20. Nevertheless, the
Examiner does not identify any guideposts that suggest that the preambles
are limiting. Paying a bill does not provide antecedent basis for a recitation
in the body of claim 1. The Examiner does not find that paying a bill is
relied upon in the prosecution history to overcome a rejection. We do not
see any other reason paying a bill should be construed as limiting.
Accordingly, we conclude that it is not, and that claim 1 is not missing such
an essential limitation. For the same reasons, claims 14, 25, and 30 do not
lack an essential limitation.
The Examiner does not find additional reasons that dependent claims
4, 5, 8, 10–13, 15, 16, 19–24, and 27–29 are indefinite.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
5, 8, 10–16, 19–25, and 27–30 under 35 U.S.C. § 112(b).

DECISION
We affirm the Examiner’s decision to reject claims 1–5, 8, 10–16, 19–
25, and 27–30 under 35 U.S.C. § 101.
We reverse the Examiner’s decision to reject claims 1–5, 8, 10–16,
19–25, and 27–30 under 35 U.S.C. § 112(b).
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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