Capital One Servcies, LLC

Patent Trials and Appeals Board

Jul 29, 2020

2019005249 (P.T.A.B. Jul. 29, 2020)

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.
14/504,113 10/01/2014 Daniel LOOMIS 055288-0510804 3806
166197 7590 07/29/2020
Pillsbury Winthrop Shaw Pittman LLP (Capital One)
P.O. Box 10500
McLean, VA 22102
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL LOOMIS
Appeal 2019-005249
Application 14/504,113
Technology Center 3600
Before ERIC S. FRAHM, LINZY T. McCARTNEY, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, 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 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Capital One Services,
LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for processing
transactions using payment tokens. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for processing transactions on a financial data
system during a transaction between a financial account holder
and a merchant, comprising:
receiving, from a mobile payment device used by the
financial account holder, an identifier of the financial account
holder;
receiving, from a merchant computing system, an
identifier of the merchant;
generating, by one or more processors on the financial data
system, a payment token uniquely associated with the financial
account holder identifier and uniquely associated with the
merchant identifier;
communicating the payment token to the mobile payment
device without notifying the financial account holder;
receiving, from the mobile payment device, a payment
request including the payment token;
receiving, from the mobile payment device, a payee
identifier and a payor identifier associated with the payment
request;
decrypting, by the one or more processors on the financial
data system, the received payment token to determine the
financial account holder and the merchant identifier uniquely
associated with the received payment token;

REJECTIONS
Claims 1, 8, and 15 stand rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 3.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent ineligible subject matter. Final Act. 9.
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ANALYSIS
Rejection of Claims 1, 8, and 15 Under 35 U.S.C. § 112(a)
The Examiner rejected claims 1, 8, and 15 as failing to comply with
the written-description requirement of § 112 for two reasons.
First, the Examiner found that the originally filed Specification lacks
support for the limitation “mobile payment device.” Final Act. 4. According
to the Examiner, although the “mobile payment device” is described in
paragraphs 3–5 of the Specification as an element of the invention, “there is
no additional detail given as to what the applicant regards as the ‘mobile
payment device’ or what technology the ‘mobile payment device’ may or
may not include.” Id. The Examiner also explained that, while paragraph 26
of the Specification recites various elements that could be considered as a
“mobile device,” none of those elements is identified as a “mobile payment
device,” as recited in claims 1, 8, and 15. Id.
Appellant argues that the Examiner erred by requiring that the phrase
“mobile payment device” appear verbatim in the Specification outside of
paragraphs 3–5. Appeal Br. 10. Appellant also argues that the Specification
identifies that the “mobile device” in the Specification is a payment device.
Appellant points out that the Specification describes the devices of
paragraph 26 as able to “be used to purchase goods or services in a wireless
transaction. During a transaction, a user may make a secured payment with
wireless device 105.” Id. (citing Spec. ¶ 31).
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.”’ Vasudevan Software, Inc, v. MicroStrategy, Inc., 782 F.3d
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671, 682 (Fed. Cir. 2015) (citing Ariad Pharms., Inc, v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
We are persuaded the Specification conveys with reasonable clarity to
those skilled in the art that, as of the filing date, Appellant was in possession
of the claimed invention. Appellant’s Specification describes that wireless
device 105 may be a programmable financial account card configured to
interface with existing point-of-sale systems and configured to store and
provide financial card account card data for one or more financial account
cards of a consumers.” Spec. ¶ 26. The Specification further describes that
wireless device 105 can be used to purchase goods or services in a wireless
transaction. Spec. ¶ 31. In this light, Appellant’s Specification may be
reasonably interpreted as disclosing a mobile payment device.
Second, the Examiner found that the originally filed Specification
lacks support for the negative limitation “communicating the payment token
to the mobile payment device without notifying the financial account
holder,” as recited in claim 1 and similarly recited in claims 8 and 15. Final
Act. 4.
Appellant argues that Appellant’s Specification describes that
configuring the mobile payment device may occur, transparent to the user,
such that “from the consumer’s perspective, it may appear that the consumer
is using her wireless device 105 as an electronic wallet that is not configured
to use unique consumer-merchant payment tokens for transactions.” Appeal
Br. 11 (citing Spec. ¶ 48).
Appellant has persuaded us of Examiner error. As Appellant points
out, paragraph 48 of Appellant’s Specification describes that “enrollment
may take place without the consumer’s knowledge and, from the consumer’s
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perspective, it may appear that the consumer is using her wireless device 105
as an electronic wallet that is not configured to use unique consumer-
merchant payment tokens for transactions.” Spec. ¶ 48. We agree with the
Examiner that paragraph 48 is silent as to whether there is or is not
notification to the user when the payment token is communicated to the
mobile payment device. See Ans. 4. However, we find the disclosure that “it
may appear that the consumer is using her wireless device 105 as an
electronic wallet that is not configured to use unique consumer-merchant
payment tokens for transactions” conveys with reasonable clarity to those
skilled in the art that, as of the filing date, Appellant was in possession of the
claimed invention.
For these reasons, on the record before us, we are persuaded the
Examiner erred, and we reverse the written description rejection under
35 U.S.C. § 112(a) of claims 1, 8, and 15.

Rejection of Claims 1–20 Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 9–34. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1–20 as a
group. Appeal Br. 12. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–20 based on
representative claim 1.
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Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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.
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.” 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,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 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
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
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “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”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

2 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.p
df).
3 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.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, 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.
Prima Facie Case
Appellant argues that the Examiner failed to make a prima facie case
of subject matter ineligibility by overgeneralizing and ignoring certain claim
elements. Appeal Br. 21.
We disagree. The procedural burden of establishing a prima facie case
is carried when the rejection satisfies the requirements of 35 U.S.C. § 132. In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). “Section 132 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). That is, the Examiner must set
forth the rejection's statutory basis “in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” Jung, 637
F.3d at 1363.
This is not a case where the “rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Id. at 1362. Rather, the Examiner has provided a rationale that
identifies the abstract idea recited in the claim and why it is considered an
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exception. See Final Act. 5–9. And Appellant clearly identifies the abstract
idea identified by the Examiner. See, e.g., Appeal Br. 13.
Accordingly, we are not persuaded that the Examiner has failed to set
forth a prima facie case of patent ineligibility for representative claim 1.
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP §§
2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites an abstract fundamental
economic practice. Ans. 6; Final Act. 5. The Examiner determined that the
claims recite processing transactions through collecting and analyzing
information to detect misuse and notifying a user when misuse is detected.
Final Act. 6. The Examiner determined that processing transactions through
collecting and analyzing information to detect misuse and notifying a user
when misuse is a fundamental economic practice, which is a method of
organizing human activity, and thus an abstract idea. Final Act. 6; Ans. 6.
The Examiner identified the “receiving,” “generating,” “communicating,”
“decrypting,” “comparing,” and “authorizing” steps as part of the abstract
idea. Id. at 6–8.
Appellant argues that the Examiner erred because the cases related to
economic practices are not analogous, as the claims are directed to
improvements in tokenization, not just processing financial transactions.
Appeal Br. 25. In particular, Appellant argues that claim 1 focuses on a
particular method of tokenization that provides a technical improvement-
providing greater security over prior art systems. Id. at 27 (citing Spec.
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¶¶ 15–16). Appellant further argues that claim does not recite “a
fundamental economic practice” that is “long prevalent.” Id. at 26. Appellant
also argues that “Appellant’s claims have no non-computer analog,” and the
Examiner has not rejected the claims based on any prior art. Id.
Under the 2019 Revised Guidance, “fundamental economic principles
or practices,” which describe subject matter relating to the economy and
commerce, are considered a “certain method of organizing human activity.”
October 2019 Update at 5. According to the 2019 Revised Guidance,
“fundamental economic principles or practices” include hedging, insurance,
and mitigating risk. Id.; see, e.g., Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (“The idea that a
customer may pay for items ordered from a remote seller at a third-party’s
local establishment is the type of fundamental business practice that, when
implemented using generic computer technology, is not patent-eligible under
Alice”).
The term “fundamental” is not used in the sense of necessarily being
“old” or “well-known,” although being old or well-known may indicate that
the practice is “fundamental.” October 2019 Update at 5. As the Federal
Circuit explained in Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed.
Cir. 2012), the abstract idea exception to patent eligibility disallows the
patenting of “basic concept[s],” such as “processing information through a
clearinghouse,” because no entity is entitled to “wholly preempt” such
concepts. See also Alice, 134 S. Ct. at 2354.
We are not persuaded that the Examiner erred in determining that
claim 1 recites an abstract idea. The Examiner recognized the recited
tokenization as part of the recited abstract idea. Final Act. 6 (“processing
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transactions through collecting and analyzing information to detect misuse”).
The recited token is used for purposes related to the transaction, such as
generating, communicating, and decrypting the payment token, as recited in
claim 1. See Appeal Br. 36. Thus, these recitations support the Examiner’s
determination that that the operations of claim 1 represent steps for the
fundamental economic practice of processing transactions through collecting
and analyzing information to detect misuse and notifying a user when a
misuse is detected. See Final Act. 10.
According to Appellant, the recited steps also prevent fraud because a
different, particular token is “required to authorize a transaction” with each
merchant. Appeal Br. 18. Verifying a transaction to avoid fraud, however, is
a fundamental economic principle or practice. See, e.g., Bozeman Fin. LLC
v. Fed. Reserve Bank of Atlanta, 955 F.3d 971, 976 (Fed. Cir. 2020). In
Bozeman Financial, the Federal Circuit held that “[v]erifying financial
documents to reduce transactional fraud is a fundamental business practice
that, without more, is not eligible for patent protection.” Bozeman, 955 F.3d
971, 978.
Appellant’s “prior art” argument is also unavailing. The novelty of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the recited subject matter amounts to an
abstract idea. Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). Our
reviewing court guides that “[e]ligibility and novelty are separate inquiries.”
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming”
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that a particular claimed feature was novel does not “avoid the problem of
abstractness”).
Consistent with Appellant’s description of the claims (Spec. ¶¶ 3–5,
15–17), we determine that the limitations of claim 1 recite processing
financial transactions through collecting and analyzing information for fraud
detection, which is fairly characterized as a fundamental economic practice,
and which falls into the “certain methods of organizing human activity”
category of abstract ideas. See 84 Fed. Reg. at 52.
Because we agree with the Examiner that claim 1 recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 1 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements, along
with the limitations that recite a judicial exception, individually and in
combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 1, the additional elements include the
limitations “financial data system,” “mobile payment device,” “merchant
computing system,” and “one or more processors.”
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To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
The Examiner determined that none of the additional elements is
sufficient to amount to significantly more than the judicial exception
because “the claims do not include an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment.” Final Act. 6. The Examiner
determined that the claim limitations are performed by the generically
recited one or more processor and mobile payment device,” and that the
limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer.” Id.
We agree with the Examiner. Appellant’s Specification describes the
additional elements generically—“financial data system” (Spec. ¶¶ 20–22),
“mobile payment device” (Spec. ¶¶ 3–5), “merchant computing system”
(Spec. ¶¶ 47, 50, 54) and “processor” (Spec. ¶¶ 4, 42). Thus, we agree with
the Examiner that the limitations are merely instructions to implement the
abstract idea on a generic computer. “[M]erely requir[ing] generic computer
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implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 221 (citation omitted).
Appellant contends that claim 1 is directed to a technical
improvement, not an abstract idea. Appeal Br. 13. In particular, Appellant
argues that “the specification explains that security is increased and fraud is
reduced by ‘using a tokenization scheme’ with ‘payment tokens unique to a
financial account and a merchant providing goods or services.” Id. at 14
(citing Spec. ¶ 15). Appellant argues that Appellant uses merchant-specific
tokens with a mobile payment device, rather than traditional techniques that
limit tokenization schemes. Id. (citing Spec. ¶¶ 15–17).
Appellant argues that the claims here are like those in Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018).
Appeal Br. 13–15. Appellant further argues that the Examiner failed to
evaluate the claims in light of Appellant’s Specification, which describes
that “security is increased and fraud is reduced by ‘using a tokenization
scheme’ with ‘payment tokens unique to a financial account and a merchant
providing goods or services.’” Id. at 14 (citing Spec. ¶ 14).
In Core Wireless, the claims were directed to “an improved user
interface for electronic devices, particularly those with small screens.” Core
Wireless, 880 F.3d at 1363. The specification described that “prior art
interfaces had many deficits relating to the efficient functioning of the
computer, requiring a user ‘to scroll around and switch views many times to
find the right data/functionality,”’ and disclosed that the claimed invention
improved the “efficiency of using the electronic device by bringing together
‘a limited list of common functions and commonly accessed stored data,’
which can be accessed directly from the main menu.” Id. The specification
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also disclosed that “[t]he speed of a user’s navigation through various views
and windows” was improved because it “saves the user from navigating to
the required application, opening it up, and then navigating within that
application to enable the data of interest to be seen or a function of interest
to be activated”—disclosure that the Federal Circuit concluded “clearly
indicates that the claims are directed to an improvement in the functioning of
computers, particularly those with small screens.” Id.
We are not persuaded by Appellant’s arguments that Core Wireless is
applicable to the claims before us. For example, to the extent there is an
improvement in claim 1, the improvement is to the abstract idea and any
improvement is implemented by processing with conventional computer
equipment. Although Core Wireless Licensing is “directed to a particular
manner of summarizing and presenting information in electronic devices,”
resulting in an improved user interface, claim 1 does not recite an improved
user interface.
Appellant next argues that “Appellant’s claims are also similar to the
claims of Finjan.” Appeal Br. 16.
Appellant’s reliance on Finjan is misplaced, however. In Finjan, the
claims were directed to an improvement in computer functionality. Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018). The
Finjan claims employed “a new kind of file that enables a computer security
system to do things it could not do before,” namely, tailoring access for
different users and identifying threats before a file reaches a user's computer.
Finjan, 879 F.3d at 1305. Claim 1 before us, on the other hand, uses generic
computer components and generic computer functionality to perform a
transaction between a financial account holder and a merchant. Appellant
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has not persuaded us that claim 1 involves a new kind of file that enables a
computer security system to do things it could not do before, as in Finjan.
Appellant also argues that the Federal Circuit’s Enfish decision
supports the patent eligibility of the pending claims. Appeal Br. 17.
Appellant’s arguments based on Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1330 (Fed. Cir. 2016) are also unpersuasive. App. Br. 8–10. In
Enfish, our reviewing court held claims directed to a self-referential logical
model for a computer database patent-eligible under step one of Alice. The
disclosed technique enabled faster searching and more effective storage of
data than previous methods. Id. at 1333. The court found the claims directed
to “a specific improvement to the way computers operate, embodied in the
self-referential table” (id. at 1336), and explained that the claims are “not
simply directed to any form of storing tabular data, but instead are
specifically directed to a self-referential table for a computer database” that
functions differently than conventional databases. Id. at 1337.
Claim 1 is not related to the type of patent-eligible database claim
considered by the court in Enfish. Indeed, all claims on appeal are silent
regarding a database. Therefore, none of Appellant’s claims is directed to a
“self-referential table for a computer database” of the type considered in
Enfish. See 822 F.3d at 1336.
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in these cases. The
technical improvement that Appellant points out— using a tokenization
scheme to reduce fraud—is part of the abstract idea. Appellant has not
shown that any of the additional elements in the claim integrates the abstract
idea into a practical application. Claim 1 as a whole merely uses instructions
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to implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
More particularly, the claims do not recite (i) an improvement to the
functionality of a computer or other technology or technical field; (ii) a
“particular machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 1 recites an
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the additional elements in claim 1 “are
merely instructions to implement the abstract idea on a computer and require
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no more than a generic computer to perform generic computer functions that
are well-understood, routine and conventional activities previously known to
the industry.” Appeal Br. 6.
Appellant argues that claim 1 recites significantly more than the
abstract idea. Appeal Br. 28. Appellant argues that “an inventive element, an
inventive temporal arrangement, or an inventive spatial arrangement may all
result in a claim reciting ‘significantly more’ than an alleged abstract idea.”
Id. at 29 (citing Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016)). Appellant further argues that Bascom held
that “an inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces.” Id.
Appellant contends that using processors on the financial data system
to generate a payment token amounts to an unconventional spatial location.
Id. at 32. Appellant explains that, in claim 1, a “financial data system” both
generates “a payment token uniquely associated with the financial account
holder identifier and uniquely associated with the merchant identifier” and
authorizes “the payment request when the payee identifier matches the
financial account holder identifier uniquely associated with the payment
token and the payor identifier matches the merchant identifier uniquely
associated with the payment token.” Id. at 33. According to Appellant,
Appellant’s claims are thus “distinct from conventional techniques.” Id. at
30 (citing Mostafa Hashem Sherif, Protocols for Secure Electronic
Commerce, 564 (3d ed.) (2017) (“Sherif”)). Appellant argues that Sherif
describes conventional tokenization as requiring two intermediary roles—the
token service requestor and the token service provider—that Appellant’s
claims do not use. Appeal Br. 33. Appellant also argues that the elimination
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of intermediary roles “further increases safety by reducing vulnerability
points of the system.” Id. at 34.
We are not persuaded that the Examiner erred because claim 1 is
written at a high level of generalization and does not provide details as to
how or by what sub-processes a token is generated, communicated, or
decrypted. Nor has Appellant persuaded us that a token service requestor
and a token service provider could not both be part of the financial data
system, as recited in claim 1.
Appellant next contrasts the components used in claim 1 with those
described in a prior art reference, Ozvat et al. (US 2014/0040148 Al,
published Feb. 6, 2014) (“Ozvat”). Appeal Br. 32–33 (citing Ozvat, claim 1).
Appellant holds out Ozvat as an example of a “remote payment management
system” that “generat[es] a token for the payment transaction” used in
combination with a “payment processing entity” that approves the
transaction before the token is “output[] ... to the point of sale terminal
system.” Id.
We are not persuaded by Appellant’s arguments. Again, the novelty of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the recited subject matter amounts to an
abstract idea. Diehr, 450 U.S. at 188–89. Even if the additional element
“financial data system” both generates a payment token uniquely associated
with the financial account holder identifier and uniquely associated with the
merchant identifier and authorizes the payment request using the token,
Appellant has not persuaded us that those functions amount to more than
well-understood, routine, and conventional computer activity. See Spec.
¶¶ 20–22.
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Moreover, the claims here are distinguishable from those in Bascom.
In Bascom, the system claims were directed to a “‘content filtering system
for filtering content retrieved from an Internet computer network,”’ which
the court held were directed to an abstract idea. Bascom, 827 F.3d at 1348–
49. The court further held the claims included an inventive concept in the
ordered combination of system components, including a local client
computer and a remote ISP server connected to the client computer and
Internet computer network providing for “the installation of a filtering tool at
a specific location, remote from the end-users, with customizable filtering
features specific to each end user.” Id. at 1350. The claims at issue here do
not involve a similar or analogous arrangement or “ordered combination” of
components.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
generating data, communicating data, decrypting data, or comparing data.
See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(“That a computer receives and sends the information over a network—with
no further specification—is not even arguably inventive”); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that
receives data, extracts classification information from the received data, and
stores the digital images insufficient to add an inventive concept); Alice, 573
U.S. at 225–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the additional
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limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Berkheimer Memo4 § III.A.1; “financial
data system” (Spec. ¶¶ 20–22), “mobile payment device” (Spec. ¶¶ 3–5),
“merchant computing system” (Spec. ¶¶ 47, 50, 54) and “processor” (Spec.
¶¶ 4, 42).
We conclude claim 1 does not have an inventive concept because the
claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner's § 101 rejection of independent
claim 1 and grouped claims 2–20.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1, 8, and 15
under 35 U.S.C. § 112 (a). We affirm the Examiner’s decision rejecting
claims 1–20 under 35 U.S.C. § 101.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1–20 is
affirmed. See 37 C.F.R. § 41.50(a)(1).

4 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 8, 15 112(a) Written
Description
1, 8, 15
1–20 101 Eligibility 1–20
Overall
Outcome
1–20

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