Capital One Services, LLC

Patent Trials and Appeals Board

Mar 1, 2021

2020005720 (P.T.A.B. Mar. 1, 2021)

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.
16/395,818 04/26/2019 Abdelkader M'Hamed Benkreira 359025-100104 9736
160211 7590 03/01/2021
DLA Piper LLP (US) - C1
ATTN: Patent Group
11911 Freedom Drive
Suite 300
Reston, VA 20190
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/01/2021 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):
BostonIPDocketing@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABDELKADER M'HAMED BENKREIRA,
MICHAEL MOSSOBA, and JOSHUA EDWARDS
Appeal 2020-005720
Application 16/395,818
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES W. DEJMEK, 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 1–16 and 20. See Final Act. 1. Claims
17–19 have been cancelled. Id. at 2. 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 (2019). Appellant identifies Capital One Services, LLC as
the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to techniques
for virtual deposit of paper currency. Spec. ¶ 2. Claim 1, reproduced below,
is representative of the claimed subject matter:
1. A computer-implemented method for virtual deposit of paper
currency, comprising:
receiving, by a computer system comprising a processor,
an indication from a device of a virtual deposit of paper currency
to an account;
receiving, by the computer system, an image of the paper
currency from the device;
identifying, by the computer system, a value of the paper
currency from the image;
identifying, by the computer system, a distinguishing
feature of the paper currency from the image;
determining, by the computer system, whether a virtual-
deposit irregularity has occurred by comparing the distinguishing
feature with information stored in a database;
in response to determining whether the virtual-deposit
irregularity has occurred, crediting, by the computer system, the
account with at least a portion of the value of the paper currency;
providing, by the computer system to the device, a
notification of a time period for physical deposit of the paper
currency;
receiving, by the computer system, an indication that a
user is attempting to complete the virtual deposit by physically
depositing the paper currency;
determining, by the computer system, whether a
completion irregularity has occurred in response to the indication
that the user is attempting to complete the virtual deposit; and
providing, by the computer system to the device, a
notification regarding whether the virtual deposit was completed
by physically depositing the paper currency.
Appeal Br. 21 (Claims App.).
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REJECTION
Claims 1–16 and 20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act. 5.
ANALYSIS
Appellant argues that the Examiner’s rejection of independent claims
1, 12, and 16 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter is in error. 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 1–16 and
20 as a group. See, e.g., Appeal Br. 17. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–16 and 20 based
on representative claim 1.
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 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
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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 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
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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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, 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

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). 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”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
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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 (“Step 2A, Prong Two”).4
MPEP § 2106.04(a)) and § 2106.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 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 activity” in the field; 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.6
MPEP § 2106.05(d).
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See MPEP §§ 2106.03, 2106.06.

4 “Examiner evaluates integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)(II).
5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites certain methods of
organizing human activity. In particular, the Examiner determined that claim
1 recites a process of managing a financial transaction (i.e., virtual deposit)
by data comparison (comparing the distinguishing features with information
stored in a database), and then crediting the account with a portion of the
deposit value (mitigating risk before authentication). Ans. 4; Final Act. 6.
The Examiner determined that managing virtual deposits and mitigating risk
before crediting is a fundamental economic practice, and managing
interactions between accounts involve agreements in the form of contracts
and legal obligations. Ans. 4; Final Act. 6. Fundamental economic practices
and commercial or legal interactions are categories of certain methods of
organizing human activity, an abstract idea. See MPEP § 2106.04(a)(2)(II).
Consistent with Appellant’s description of the claims (see, e.g., Spec.
¶ 2), we find that the claim limitations are fairly characterized as a
fundamental economic practice, which falls into the “certain methods of
organizing human activity” category of abstract ideas. Id.; see Spec. ¶ 2
(“embodiments of the present disclosure relate to solutions that mitigate
risks to a financial institution of providing for virtual deposit of paper
currency”).
Appellant presents no persuasive arguments regarding the Examiner’s
determination that claim 1 recites an abstract idea. See Appeal Br. 9.
Accordingly, we are not persuaded that the Examiner erred.
In addition to the abstract ideas identified by the Examiner, we note
that at least the “determining” and “crediting” limitations, as recited in claim
1, can be performed by the human mind or with pen and paper. The 2019
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Revised Guidance explains that “mental processes” include acts that people
can perform in their minds or using pen and paper, even if the claim recites
that a generic computer component performs the acts. See MPEP
§ 2106.04(a)(2)(III)(C); see also Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.”).
Because we agree with the Examiner that the claim 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?
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 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. In
claim 1, the additional elements include the limitations “computer system,”
“processor,” and “device.”
To integrate the exception into a practical application, the additional
elements must, for example, improve the functioning of a computer or any
other technology or technical field (see MPEP § 2106.05(a)), apply the
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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)).
The Examiner determined that none of the additional elements is
sufficient to integrate the judicial exception into a practical application
because the additional computer elements “are all recited at a high level of
generality and are merely invoked as tools to perform the receiving,
identifying, and comparing the distinguishing features with the information
stored in a database.” Final Act. 7.
Appellant argues that claim 1 is directed to a practical application that
overcomes security and accessibility problems for cash deposits by
employing a technical and secure solution for accepting virtual deposits of
physical currency from remote locations. Appeal Br. 11. Appellant further
argues that “the claimed invention solves a specific problem in a
technological field and recites a specific improvement over prior art
systems.” Id. (citing Spec. ¶¶ 35, 52). Specifically, Appellant argues that
“tracking distinguishing marks may be uniquely valuable and may allow
banks to more easily determine whether a bill is the same bill that a bank has
received by deposit and to more easily detect counterfeit bills.” Id. at 13.
Appellant further argues that “[s]uch processes are not merely performed
using generic computer techniques; instead, the system facilitates the
capturing of physical currency in a secure, but convenient nature, such that
fraudulent parties cannot intercept and resubmit images of the same currency
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but normal every-day users can benefit from the functionality of depositing
currency from remote locations.” Id.
Appellant’s arguments are not persuasive at least because the novelty
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter. Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
Moreover, Appellant has not argued persuasively how the additional
elements (“computer system,” “processor,” and “device”) integrate the
abstract method of organizing human activity into a practical application.
None of Appellant’s arguments persuasively addresses how the additional
elements apply or use the judicial exception in some meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment.
Instead, Appellant points to a hypothetical claim in Example 37 of the
USPTO’s subject matter examples,7 arguing that “while some aspects of the
present claims recite a generic computer, the claims as a whole integrate the
alleged judicial exception into a practical application because, among other
things, the claimed system and methods aid customers in depositing

7 “2019 PEG Examples 37 through 42” issued January 7, 2019.
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currency when they cannot easily deposit funds into an account and must
travel to a physical office of the bank to make such a deposit.” Appeal
Br. 14.
Appellant, however, fails to explain persuasively how the claims in
Example 37 are like claim 1, when the claims in Example 37 pertain to the
automatic relocation of icons on a graphical user interface. See Ans. 12;
Reply Br. 3.
Appellant next argues that the additional limitations reflect an
improvement in the functioning of a computer, or an improvement to
another technology or technical field. Appeal Br. 15 (citing SRI Int’l, Inc. v.
Cisco Sys. Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019)). According to
Appellant, the claimed invention provides an improvement in the
technological process of depositing currency. Id.
Appellant, however, does not direct our attention to anything in the
Specification to indicate that the invention provides a technical
improvement. For example, Appellant does not claim using a specific
structure or process to identify hackers. Cf. SRI, 930 F.3d at 1303 (claim 1
recited an improvement to computer technology by “providing a network
defense system that monitors network traffic in real-time to automatically
detect large-scale attacks.”). Nor does the claim provide a non-abstract
improvement by employing a new way, a new kind of structure, or a new
arrangement of elements to enable a system to do something it could not do
before. Cf. Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143,
1150–51 (Fed. Cir. 2019) (claim was directed to “a non-abstract
improvement because it employ[ed] a new way of generating check data that
enable[d] the detection of persistent systematic errors in data transmissions
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that prior art systems were previously not equipped to detect.”); Finjan, Inc.
v. Blue Coat Syst., Inc., 879 F.3d 1299, 1304-05 (Fed. Cir. 2018) (claim was
directed to “a non-abstract improvement in computer functionality” because
it employed “a new kind of file that enable[d] a computer security system to
do things it could not do before”); BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (claim’s
particular design of a “non-conventional and non-generic arrangement of
known, conventional pieces” was a technical improvement). The claim also
does not specifically identify how a non-abstract improvement to the
computer’s functionality “is effectuated in an assertedly unexpected way.”
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1348-50 (Fed. Cir.
2018) (claim improved security by moving a software-verification structure
to a location not previously used for this purpose, thereby altering how the
security verification function is performed).
For the first time in the Reply Brief, Appellant argues that claim 1 is
analogous to the claims in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). Reply Br. 4. Appellant,
however, has waived this argument because it was presented for the first
time in the Reply Brief, without a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74
(BPAI 2010 (informative opinion) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.”).
Even if Appellant’s BASCOM argument were timely, however, it is
not persuasive. In BASCOM, the claims were directed to the inventive
concept of providing customizable Internet-content filtering which was
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found to transform the abstract idea of filtering content into a patent-eligible
invention. Although the underlying idea of filtering Internet content was
deemed abstract, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
the filtering system to give users the ability to customize filtering for their
individual network accounts. We find no analogy between Appellant’s
claimed method for virtual deposit of paper currency and the claims in
BASCOM.
Appellant further argues that claim 1 is analogous to the claims in
DDR Holdings v. Hotels.com, 773 F.3d 1245, 1258–59 (Fed. Cir. 2014).
Reply Br. 4. Appellant has also waived this untimely argument. See
37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d at
1473–74.
Even if Appellant’s DDR argument were timely, however, it is not
persuasive. We note that, although the Federal Circuit in DDR Holdings held
claims “necessarily rooted in computer technology” to be patent eligible, the
court issued a relevant warning:
[W]e caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
argued that its claims were “directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before.” But this
alone could not render its claims patent-eligible. In particular,
we found the claims to merely recite the abstract idea of
“offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.”
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DDR Holdings, 773 F.3d at 1258 (citations omitted).
Claim 1 does not recite an improvement for electronic devices.
Determining whether a virtual-deposit irregularity has occurred by
comparing a distinguishing feature with information stored in a database, for
example, as in claim 1, “does not improve the functioning of the computer,
make it operate more efficiently, or solve any technological problem.”
Trading Techs. II, 921 F.3d at 1384–85. Rather, the claim simply “includes
instructions to implement an abstract idea on a computer” and “does no
more than generally link the use of a judicial exception to a particular
technological environment or field of use.” MPEP § 2106.05(f), (h).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in these cases and
Example 37. Claim 1 as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Here, the additional limitation(s) do not
integrate the judicial exception into a practical application. 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.
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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, when viewed as a whole, claim 1 does
no more than generally link the use of the judicial exception to a particular
technological environment or field of use. Final Act. 8. Thus, the Examiner
determined that no inventive concept is found in the claims. Id.
Appellant argues that claim 1 is similar to hypothetical claim 2 in
Example 35 from the USPTO’s pre-2019 subject matter guidelines.8 Appeal
Br. 15. In claim 2 of Example 35, the claimed combination of additional
elements presented “a specific, discrete implementation of the abstract idea.”
Example 35. Claim 2 of Example 35 shows that the combination of
obtaining information from the mobile communication device, instead of the
ATM keypad, and using the image, instead of a PIN, to verify the

8 Subject Matter Eligibility Examples: Business Methods, USPTO, *9, (Dec.
2016) (“PEG Examples”).
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customer’s identity by matching identification information described a
process that differed from the routine and conventional sequence of events
normally conducted by ATM verification. Id. In claim 2, then, the additional
elements represented significantly more (i.e., provided an inventive concept)
because they were a practical implementation of the abstract idea of fraud
prevention that performed identity verification in a nonconventional and
non-generic way, even though the steps use well-known components (a
processor and mobile communication device). Id.
We are not persuaded by Appellant’s argument that the Examiner
erred. The cited example fails to show that Appellant’s claim 1 has
additional elements that are significantly more than the underlying abstract
idea. See Ans. 14. In particular, “the claimed combination of additional
elements [of example 35, claim 2,] presents a specific, discrete
implementation of the abstract idea.” PEG Examples, at *10 (citing
BASCOM, 827 F.3d 1341. That is, the steps of example 35, claim 2, “do not
represent merely gathering data for comparison or security purposes, but
instead set up a sequence of events that address unique problems associated
with bank cards and ATMs (e.g., the use of stolen or ‘skimmed’ bank cards
and/or customer information to perform unauthorized transactions).” Id.
Example 35, claim 2, in fact, recites a number of specific interactions
as part of the claimed “method of conducting a secure automated teller
transaction,” including “obtaining customer-specific information from a
bank card,” transmitting a random code “to a mobile communication device
that is registered to the customer associated with the bank card,” “reading,
by the automated teller machine, an image [that includes encrypted code
data] from the customer’s mobile communication device,” and “analyzing
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the decrypted code data . . . and the generated code to determine” if they
match. PEG Examples, at *7–8.
In contrast, Appellant’s claim 1 fails to recite such specific
interactions. For example, the recited “indication from a device of a virtual
deposit of paper currency to an account” and “image of the paper currency”
is merely received by a computer processor in claim 1. Similarly, “a
notification of a time period for physical deposit of the paper currency” and
“a notification regarding whether the virtual deposit was completed by
physically depositing the paper currency” is merely provided to a device.
Claim 1 does not, for example, “address unique problems associated with
bank cards and ATMs.” PEG Examples, at *10. Therefore, we are
unpersuaded that Example 35, claim 2, supports Appellant’s contention that
claim 1 recites a combination of conventional steps implemented in a unique
manner that is patentable. See Appeal Br. 15.
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,
looking up data in a database, comparing data, and sending 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).
Appeal 2020-005720
Application 16/395,818

18
Moreover, because the Specification describes the additional elements
in general terms, without describing the particulars, we conclude the claim
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 MPEP § 2106.05(d)(I)(2); Spec. ¶¶ 73–77.
We conclude that 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 2–16 and 20, not argued separately with
particularity.
DECISION
We affirm the Examiner’s decision rejecting claims 1–16 and 20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16, 20 101 Eligibility 1–16, 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