David C. Reardon

Patent Trials and Appeals Board

Jul 30, 2020

14308825 - (D) (P.T.A.B. Jul. 30, 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.
14/308,825 06/19/2014 David C. Reardon Basic-3 1002
71741 7590 07/30/2020
DAVID REARDON
645 Autumn Oaks Dr
St. Peters, MO 63376
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
07/30/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID C. REARDON
________________

Appeal 2019-000103
Application 14/308,825
Technology Center 3600
____________

Before JASON J. CHUNG, MATTHEW J. McNEILL, and
SCOTT E. BAIN, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒20, which are all the claims pending in this application.
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 the
inventor, David C. Reardon. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to compensating users for their
electronic data using secured financial transactions. See Spec. ¶¶ 3‒8. In
particular, the application describes administering compensation
electronically to a first party following identification of the first party
according to search criteria supplied by a second party. Spec. ¶ 8. Claim 1 is
illustrative of the appealed subject matter and reads as follows:
1. A method of compensating users for user associated data
which comprises the steps of:
(a) storing in at least one memory user associated data for
a plurality of user accounts associated with a plurality of users,
wherein the user associated data comprises at least one of a
group of data types comprising:
(a) a receipt charge;
(b) a maximum charge;
(c) debits;
(d) credits;
( e) account balance;
(f) descriptive information regarding purchases
made;
(g) descriptive information regarding electronic
data received;
(h) information identifying at least one
communications address from the group of
communications addresses comprising: a phone number;
an email address; an account identifier; a communication
identifier for an electronic device associated with the
user; an instant messaging address; an internet account; a
postal address;
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(b) receiving at a processor in communication with the
memory selection criteria other than a communications address
from a first user;
(c) correlating a match between the selection criteria and
user associated data to identify at least one second user;
(d) crediting the second user account a first amount based
on a receipt charge associated with the second user account.
The Examiner’s Rejection
Claims 1‒20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 14‒17.
ANALYSIS
Principles of Law – Section 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
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.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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
step of the Alice and Mayo framework, where “we must examine the
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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.
Principles of Law – USPTO Section 101 Guidance
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 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).
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(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.
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.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See 2019 Revised Guidance. Claim 1 recites “[a]
method of compensating users for user associated data.” Appellant does not
argue the Examiner erred in concluding claim 1 falls within the four

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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statutory categories of patentable subject matter. We agree with the
Examiner’s conclusion because claim 1 falls within the process category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See 2019 Revised Guidance.
The Examiner determines claim 1 is directed to the abstract idea of
administering compensation electronically to a second party following
verification that the second party meets certain criteria predefined by the
first. Final Act. 15‒16. The Examiner determines compensation processing
is the organization and comparison of information to process a request for
completing a compensation request. Id. at 16. The Examiner determines the
claimed compensation processing is a mental process that could be
performed in the human mind or by a human using pen and paper. Id. at 16.
The Examiner also determines claim 1 is directed to financial
transaction processing where there is a matching up of a request with pre-
defined criteria for determination compensation to be credited in a
transaction. Ans. 4. The Examiner determines this is a fundamental
economic practice. Id.
Appellant argues the Examiner misconstrues the claims because the
claims do not recite a compensation request. Appeal Br. 9‒10. Appellant
argues the recipient of compensation in the claims never requests
compensation from the first user and the claimed exchange of compensation
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for data and communication access is not a commonly known, fundamental
economic practice that existed prior to computerized accounting systems. Id.
Under the broadest reasonable interpretation, we agree with the
Examiner that claim 1 recites administering compensation electronically to a
second party following verification that the second party meets certain
criteria predefined by the first. In particular, claim 1 recites “storing . . . user
associated data for a plurality of user accounts associated with a plurality of
users.” This step characterizes storing the data related to a second party that
is used to determine whether the second party meets certain criteria
predefined by the first party. Claim 1 further recites “receiving . . . selection
criteria other than a communications address from a first user.” This step
characterizes receiving the criteria to be used in the determination. Claim 1
further recites “correlating a match between the selection criteria and the
user associated data to identify at least one second user.” This step
characterizes performing the correlation to identify a second user that meets
the predefined criteria. Finally, claim 1 recites “crediting the second user
account a first amount based on a receipt charge associated with the second
user account.” This step characterizes administering compensation based on
the correlation. These steps, taken collectively, recite administering
compensation electronically to a second party following verification that the
second party meets certain criteria predefined by the first.
We further agree with the Examiner that this administration of
compensation is a mental process. The 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 2019 Revised Guidance, 84 Fed. Reg. at
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52 n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”); 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.”).
But for the recitation of “at least one memory” and “a processor in
communication with the memory,” the steps of claim 1 can be performed in
the human mind or by a human using pen and paper. In particular, the
“storing” step could be performed by a human remembering the claimed
information or writing the claimed information on paper. The “receiving”
step could also be performed by a human receiving information and
remembering the information or writing it on paper. The “correlating” step
involves evaluating or judging the gathered data and the “crediting” step
produces a result of the evaluation or judgment. These evaluations or
judgments may be performed in the human mind or by pen and paper. We
conclude that claim 1, therefore, recites concepts performed in the human
mind, which fall within the mental processes category of abstract ideas
identified in the Revised Guidance.
We also note that the “storing” and “receiving” steps involve data
gathering, which constitutes insignificant extra-solution activity. The Federal
Circuit has held that data gathering steps “cannot make an otherwise
nonstatutory claim statutory.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011). The Federal Circuit has also held that
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(1) presenting offers to potential customers and (2) gathering statistics
concerning customer responses were “conventional data-gathering activities
that d[id] not make the claims patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015). Consistent
with those decisions, the MPEP identifies “gathering data” as an example of
insignificant extra-solution activity. MPEP § 2106.05(g).
We also determine that claim 1 recites commercial or legal
interactions. In particular, claim 1 recites administering compensation
electronically to a user. As explained above, the “storing” and “receiving”
steps recite gathering data needed to administer compensation. The
“correlating” step determines whether to administer compensation and the
“crediting” step administers compensation. We conclude that claim 1,
therefore, also recites commercial or legal interactions, which fall within the
certain methods of organizing human activity category of abstract ideas
identified in the Revised Guidance.
Because we conclude that claim 1 recites an abstract idea, we next
turn to Revised Guidance Step 2A, Prong 2.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 1 include “at least one memory”
and “a processor in communication with the memory.” These additional
elements do not “integrate the exception into a practical application.” See id.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
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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.
Appellant argues claim 1 is directed to a Summa network, which
Appellant argues is a significant technical limitation that refers to a specific
data structure and transaction method that integrates a compensation part
and a message part into every transaction in a manner that makes completion
of the transaction contingent on pre-defined criteria established by all parties
in the Summa transactions. See Appeal Br. 8. According to Appellant, this
technical improvement improves computer efficiency through a novel
configuration of data and processing rules. See id. at 9. Appellant argues that
this technical improvement does not relate to a fundamental economic
practice because the claimed subject matter was specifically designed to
solve problems and inefficiencies in existing computer networks. See id. at
10‒11.
Appellant identifies two other ways the claims allegedly add
significant activity to the conventional sequence of events. See Reply
Br. 15‒16. First, Appellant argues the claims provide each user of a
computer account an opportunity to set a minimum receipt charge that must
be paid before user-associated data can be used by others. Id. at 16. Second,
Appellant argues the claims provide a mechanism to enforce collection of
compensation based on the receipt charge. Id.
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Appellant also argues claim 1 is not directed to an abstract idea
because there is no pre-Internet analog. See Appeal Br. 15‒17; Reply Br.
16‒17. In particular, Appellant argues there is no routine and conventional
sequence of events that is being modified by the present invention. See
Appeal Br. 15. Appellant argues the claimed sequence of events shows how
interactions with the Internet are manipulated to yield a desired result that
overrides the routine and conventional sequence of events. See id. at 17
(citing DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1258 (Fed. Cir.
2014)).
Appellant also argues the claims describe a particular solution to a
problem to be solved. See Appeal Br. 31. In particular, Appellant argues the
invention allows a user to set his or her price on the access and use of data
associated with the user’s account and allows searchers to set a price on how
much they are willing to pay to access user data. See id.
Appellant also argues the claims implement a concept in a tangible
way because the claims accomplish the exchange of financial credits, which
is evidenced by the tangible consumption of memory and energy in
implementing this process and system. See id. at 32. Appellant argues the
performance of these steps is observable and verifiable and effects a
transformation or reduction of a particular article to a different state or thing.
See id. at 32‒35.
Appellant has not persuaded us of Examiner error. In cases involving
software innovations, such as here, the inquiry as to whether the claims are
directed to an abstract idea “often turns on whether the claims focus on ‘the
specific asserted improvement in computer capabilities . . . or, instead, on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
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merely as a tool.”’ Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335–36 (Fed. Cir. 2016)). The nature of claim 1 as a whole is not to define
a specific technological improvement; instead, claim 1 merely recites the
steps necessary to perform the abstract idea itself. Our reviewing court has
“made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of
claim 1 is on the abstract idea itself “and the recited generic computer
elements ‘are invoked merely as a tool.’” Id. (citing Enfish, 822 F.3d 1327);
see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed.
Cir. 2015) (collecting cases).
Appellant’s argument that the claims are directed to a Summa network
and Summa transactions, which improve the functioning of a computer, is
unpersuasive. The claims do not recite a Summa network or Summa
transactions. The claims do recite limitations that have been defined in the
Specification to relate to Summa transactions (e.g., “receipt charge,” defined
in paragraph 13). However, these limitations merely relate to characteristics
of the data stored in the memory, which is insufficient to integrate the claims
to a particular application. “As many cases make clear, even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP, 898 F.3d at 1168 (citing Elec. Power Grp., LLC v.
Alstom SA, 830 F.3d 1350, 1353, 1355 (Fed. Cir. 2016)). While adding
Summa-related data to the memory may improve the information stored in
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the memory, an improvement to the information stored by a database is not
equivalent to an improvement in the database’s functionality. BSG Tech LLC
v. Buyseasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018).
Further, instead of improving the operation of a computer, the
limitations reciting Summa-related data merely tie the claims to a particular
technological environment. “[L]imit[ing] the abstract idea to a particular
environment . . . does not make the claims any less abstract for the step 1
analysis.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016). Our reviewing court has held that reciting a more detailed
database structure than a generic database structure constitutes providing a
generic environment in which to perform a claimed method, rather than an
improvement to computer technology. See BSG Tech, 899 F.3d at 1286‒87.
The other alleged technical improvements identified by Appellant,
including allowing users to set a receipt charge and providing a mechanism
to collect compensation, also do not demonstrate integrating the abstract idea
into a practical application. These are improvements to the abstract idea
itself, not improvements in networking or computer functionality. None of
the identified improvements “enables a computer . . . to do things it could
not do before.” Finjan, 879 F.3d at 1305 (emphasis added). Claims whose
focus is “not a physical-realm improvement but an improvement in wholly
abstract ideas,” are not eligible for patenting. SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018); see also Interval Licensing LLC
v. AOL, Inc., 896 F.3d 1335, 1346 (Fed. Cir. 2018) (“It is well-settled that
placing an abstract idea in the context of a computer does not ‘improve’ the
computer or convert the idea into a patent-eligible application of that idea.”).
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Moreover, our reviewing court has made it clear that mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. CyberSource,
654 F.3d at 1375 (“That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson[, 409 U.S. 63, 67 (1972)].”). The law is clear
that programming a computer to perform what would otherwise be an
abstract idea is not sufficient to impart patent eligibility. See Alice, 573 U.S.
at 224.
We also note that Appellant’s arguments regarding the alleged
technical improvement largely focus on the disclosure in the Specification,
rather than the claims. See, e.g., Appeal Br. 8‒12. However, improvements
described in a specification but not claimed do not support patent eligibility.
See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir.
2019); Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir. 2018);
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1338–39 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1331–32 (Fed. Cir. 2017).
In summary, administering compensation electronically to a second
party following verification that the second party meets certain criteria
predefined by the first, as in the claims, “does not improve the functioning of
the computer, make it operate more efficiently, or solve any technological
problem.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85
(Fed. Cir. 2019). Rather, the claim simply “includes instructions to
implement an abstract idea on a computer” and “does no more than
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generally link the use of a judicial exception to a particular technological
environment or field of use.” 2019 Revised Guidance, 84 Fed. Reg. at 55.
Notably, the only additional elements recited in claim 1 are “at least
one memory” and “a processor in communication with the memory.” These
additional elements are used to achieve the claimed results and are not
focused on “a specific means or method that improves the relevant
technology.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016). Appellant’s Specification confirms the generic,
conventional nature of the claimed computer components and financial
systems used in the claimed method and system. See, e.g., Spec. ¶¶ 61‒65,
68, 69, 74, 79, 81, 85‒87, 89, 90. Appellant’s Specification does not
highlight any particular characteristics of the memory or processors recited
in the claims. See id. The written description thus describes these
components in a manner that indicates the components and the functions
they perform were well known in the art. See Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that “a
patent need not teach, and preferably omits, what is well known in the art”);
see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331
(Fed. Cir. 2017) (“The claimed mobile interface is so lacking in
implementation details that it amounts to merely a generic component
(software, hardware, or firmware) that permits the performance of the
abstract idea, i.e., to retrieve the user-specific resources.”).
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
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Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues the claims recite significantly more than an abstract
idea. See Appeal Br. 26‒30. In so arguing, Appellant provides a “plain
language” description of “how the additional limitations and elements in
each dependent claim modify the independent claims and produce something
significantly more.” See id. at 26. However, Appellant’s arguments focus on
how the abstract idea allegedly improves the prior art systems and methods
related to the abstract idea itself, not how the recited additional elements
produce something significantly more than the recited abstract idea. For
example, Appellant argues claim 2 recites significantly more because in
claim 2, “[t]he compensation is credited to the second user account in
conjunction with delivering electronic content from the first user to the
second user’s communication address.” See id. at 27. This improvement
results from the abstract idea itself, and is not a recitation of an additional
element that provides significantly more than the abstract idea.
Appellant also argues the Examiner erred in finding the additional
elements are well understood, routine, and conventional. See Reply Br.
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23‒24. In particular, Appellant argues that the Examiner admits the claims
are novel and non-obvious and, therefore, cannot be well understood,
routine, and conventional activities of the industry. See id.
Appellant has not persuaded us of Examiner error. The Examiner
finds the additional elements recited in the claims recite well understood,
routine, and conventional activities of the industry. See Final Act. 16; Ans.
13‒15. In so finding, the Examiner relies on disclosures in the Specification.
See Ans. 14 (citing Spec. ¶¶ 22, 46, 50‒54, 63).
Appellant’s argument regarding the novelty and non-obviousness of
the claims is unpersuasive because although the second step of the Alice
framework is termed a search for an “‘inventive concept,”’ the analysis is
not an evaluation of novelty or non-obviousness. Instead, the “inventive
concept” analysis searches for “an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.”’ Alice Corp., 134 S.
Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304. Further,
Appellant’s argument focuses on the novelty or non-obviousness of the
abstract idea itself, rather than the additional elements recited in the claims.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2B of the Revised Guidance. We, therefore, conclude
claim 1 does not recite significantly more than the judicial exception under
the Revised Guidance.
For these reasons, we sustain the rejection of independent claim 1. We
also sustain the rejection of independent claim 11 and dependent claims
Appeal 2019-000103
Application 14/308,825

19

2‒10 and 12‒20, for which Appellant offers no separate argument. See
Appeal Br. 7‒40; Reply Br. 2‒30.

DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1‒20 101 Eligibility 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.
§ 41.50(f).

AFFIRMED