Insperity Services, L.P.

Patent Trials and Appeals Board

Jan 25, 2021

2019005396 (P.T.A.B. Jan. 25, 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.
14/493,701 09/23/2014 Mark Breuer 2174.000200 8327
23720 7590 01/25/2021
WILLIAMS MORGAN, P.C.
6464 SAVOY
SUITE 600
HOUSTON, TX 77036
EXAMINER
KANAAN, TONY P
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
Docketing@wmalaw.com
jjohn@wmalaw.com
nnolan@wmalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK BREUER, MICHELLE HAROLD, and
JOHN F. TANGREDI
Appeal 2019-005396
Application 14/493,701
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–11, and 13, which are all claims
pending in the application. Appellant has canceled claims 12 and 14–20.
See Appeal Br. 23 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as INSPERITY
SERVICES, L.P. Appeal Br. 2.
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STATEMENT OF THE CASE2
The claims are directed to a method, apparatus, and system for
automated funding. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate to automated funding, and, more
particularly, automatically funding an expense payment infrastructure in
response to a request.” Spec. ¶ 2.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method for performing an automated
transaction, comprising:
receiving a request for funding from a remote device over
a communications network;
performing a request processing in response to said
request, said request processing comprises:
routing said request to an approval unit,
determining by said approval unit that said funding
is authorized, and
determining that sufficient amount of funds are
available for providing said funding, and
performing at least one of providing said funding or
denying said funding based upon said request processing;
the request processing further comprising:

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 228, 2018); Reply Brief (“Reply Br.,” filed July 8, 2019); Examiner’s
Answer (“Ans.,” mailed May 6, 2019); Final Office Action (“Final Act.,”
mailed Mar. 7, 2018); and the original Specification (“Spec.,” filed
Sept. 23, 2014) (claiming benefit of US 61/883,939, filed Sept. 27, 2013).
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performing a rejection processing in
response to said denying said funding, wherein
said rejection processing comprises:
receiving a rejection message;
determining whether said rejection
message is a contingent rejection;
issuing a denial of the request in
response to a determination that said
rejection message is not a contingent
rejection; and
providing at least one contingency
parameter to prompt a modification of said
request in response a determination that
said rejection message is a contingent
rejection.
Related Application
This application is related to copending Application Serial No.
14/494,042, Appeal No. 2019-004217, in which we affirmed the Examiner’s
rejections in a Decision mailed contemporaneously with this Decision.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Grant, IV (“Grant”) US 2009/0099965 A1 Apr. 16, 2009
Joseph et al. (“Joseph”) US 2010/0017316 A1 Jan. 21, 2010
Hussein et al. (“Hussein”) US 2014/0058855 A1 Feb. 27, 2014
Green et al. ("Green") US 2014/0074709 A1 Mar. 13, 2014
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REJECTIONS
R1. Claims 1–11 and 13 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 4; Ans. 4–6.
R2. Claims 1–4 and 6–11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Hussein, Joseph, and Grant.
Final Act. 8.
R3. Claims 5 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Hussein, Joseph, Grant, and Green.
Final Act. 13.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 4–17; Reply Br. 2–12)
and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
patent-ineligible subject matter Rejection R1 of claims 1–11 and 13 on the
basis of representative claim 1; and we decide the appeal of obviousness
Rejection R2 of claims 1–4 and 6–11 on the basis of representative claim 1.
Remaining claims 5 and 13 in Rejection R3, not argued separately,
stand or fall with the respective independent claim from which they depend.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. 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).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to eligibility Rejection R1 of claims 1–11 and 13 for the specific reasons
discussed below.
However, we disagree with Appellant’s arguments with respect to
obviousness Rejections R2 and R3 of claims 1–5, 6–11, and 13 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
1. § 101 Rejection R1 of Claims 1-11 and 13
Issue 1
Appellant argues (Appeal Br. 9–17; Reply Br. 8-13) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
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Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, has Appellant persuasively argued that
claim 1 is patent eligible under § 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof 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))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
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receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). Whereas a claim limitation to a process that “can be performed in
the human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.5
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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 Supreme Court also indicated that a claim “seeking patent

5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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
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 (citation 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.
B. USPTO Revised Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.6 The Manual of

6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/
content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal
public comments, the Office issued further guidance on October 17, 2019,
clarifying the Revised Guidance. USPTO, October 2019 Update: Subject
Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are,
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Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).7
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 human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One,” referred
to herein as “Step 2A(i)”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two,”
referred to herein as “Step 2A(ii)”).8
MPEP § 2106.04(a)) and § 2106.04(d).
Under this guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-

as a matter of internal agency management, expected to follow the
guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
7 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
8 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, 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, using one or more of the
considerations introduced in subsection I supra, and discussed in more detail
in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and
2106.05(e) through (h).” MPEP § 2106.04(d)II.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,10 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; 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.11
MPEP § 2106.05(d).
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the

9 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the MPEP for analyzing the claim should be followed. See MPEP
§ 2106.04(a)(3) (“Tentative Abstract Ideas”).
10 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).
11 Items (3) and (4) correspond 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) and continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See MPEP §§ 2106.05(d)(I)(2); 2106.07(a).
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
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Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the “claims are directed towards a
business process of ‘automating the authorization process of an expense
reports’. Such business process is an idea of itself because it is an idea that
can be done via pen and paper.” Ans. 4.12 The Examiner further concluded
“the claimed invention is directed to the abstract idea of automating the
authorization process of an expense reports without significantly more. The
claim is a ‘Method of Organizing Human Activity’ relating to a
‘Fundamental Economic Practice’.” Ans. 5.13

12 Although the Examiner restates Rejection R1 in the Answer using the
Revised Guidance, we note “an idea of itself” is no longer a recognized
category of abstract idea under the Revised Guidance.
13 We note the Examiner did not identify specific claim limitations deemed
to be abstract as required by the Revised Guidance in either the Final Action
or Examiner’s Answer, as pointed out by Appellant. See Reply Br. 10
(“Nowhere does the Examiner identify any specific limitation that the
Examiner believes recites an abstract idea. Instead, the Examiner improperly
recites that ‘the claimed invention is directed to the abstract idea of
automating the authorization process of an expense reports.”).
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We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 1 recites
an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
“the disclosed embodiments relate to automated funding, and, more
particularly, automatically funding an expense payment infrastructure in
response to a request.” Spec. ¶ 2.
Appellant’s Abstract describes the invention as:
Embodiments herein provide for performing an
automated transaction. A request for funding is received. A
request processing is performed in response to said request. The
request processing comprises routing said request to a[n]
approval unit, determining by said approval unit that said
funding is authorized, and determining that sufficient amount of
funds are available for providing said funding. The funding is
either approved or denied said funding based upon said request
processing.
Spec. 34 (Abstract).
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:
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TABLE I
Independent Claim 1 Revised Guidance
A method for performing an
automated transaction,
comprising:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101. See 35
U.S.C. § 101 (“Whoever invents or
discovers any new and useful process,
machine, manufacture, or composition of
matter, or any new and useful improvement
thereof, may obtain a patent therefor,
subject to the conditions and requirements
of this title.”).
[L1] receiving a request for
funding from a remote
device

[L1a] over a
communications network;
Receiving a request for funding is an
abstract idea, i.e., a certain method of
organizing human activity including
commercial interactions in the form of
business relations. See MPEP
2106.04(a)(2)(II)(B); see also Revised
Guidance 52.
As claimed, a communications network
represents generic computer components
and functionality. See Spec. ¶ 41 (“The
communications network 220 may comprise
the Internet, an intranet, a cloud computing
network, a peer-to-peer network, a closed
communication network system, and/or the
like. The communication network 220
provides for communications links between
the remote unit 210 and the program
manager 140 and the user entity 150.”).
performing a request
processing in response to
said request, said request
processing comprises:
[L2a] routing said request to

Transmitting information (“routing” a
request) is insignificant extra-solution
activity. Revised Guidance 55, n.31; see
also MPEP § 2106.05(g); see buySAFE,
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Independent Claim 1 Revised Guidance

[L2b] an approval unit,
Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (computer receives and
sends information over a network).

As claimed and described, an approval unit
is implemented by generic computer
components and techniques. See generally,
Spec. (only discussing the approval unit in
functional terms, without elaboration on
particular hardware or software
implementations).14
[L3] determining by said
approval unit that said
funding is authorized, and
Determining is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See MPEP
§ 2106.04(a)(2)(III)(A).
[L4] determining that
sufficient amount of funds
are available for providing
said funding, and
Determining is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See MPEP
§ 2106.04(a)(2)(III)(A).
performing at least one of
[L5a] providing said
funding or
[L5b] denying said funding
based upon said request
processing;
the request processing
further comprising:

Providing or denying funding is an abstract
idea, i.e., certain methods of organizing
human activity including commercial
interactions in the form of business
relations. See MPEP 2106.04(a)(2)(II)(B).
Alternatively, providing or denying funding
is an abstract idea, i.e., certain methods of
organizing human activity in the form of a

14 We note the “Summary of Claimed Subject Matter” (Corrected Appeal
Br. 2–4) appears to be deficient by not identifying support for recited
hardware/functional elements, e.g., “approval unit,” but instead only
describes the independent claims in a narrative fashion.
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Independent Claim 1 Revised Guidance
fundamental economic practice. See MPEP
§ 2106.04(a)(2)(II)(A).
performing a rejection
processing in response to
said denying said funding,
wherein said rejection
processing comprises:
[L6] receiving a rejection
message;

Receiving a rejection message, i.e., data
gathering, is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea to
render the claimed invention patent-
eligible. See MPEP § 2106.05(g); Revised
Guidance 55, n.31; see In re Bilski, 545
F.3d 943, 962 (Fed. Cir. 2008) (en banc),
aff’d on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of the machine
or transformation in the claimed process
must not merely be insignificant extra-
solution activity”)
[L7] determining whether
said rejection message is a
contingent rejection;
Determining is an abstract idea, i.e., an
observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See MPEP
§ 2106.04(a)(2)(III)(A).
[L8] issuing a denial of the
request in response to a
determination that said
rejection message is not a
contingent rejection; and
Issuing a denial of a funding request is an
abstract idea, i.e., certain methods of
organizing human activity including
commercial interactions in the form of
business relations. See MPEP
2106.04(a)(2)(II)(B).
[L9] providing at least one
contingency parameter to
prompt a modification of
said request in response a
determination that said
See Step 2A(ii) (“Practical Application”)
analysis, infra.
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Independent Claim 1 Revised Guidance
rejection message is a
contingent rejection.
Appeal Br. 19 (Claims App.).
Under the broadest reasonable interpretation standard,15 we conclude
limitations L1 through L8 recite steps or functions that would ordinarily be
carried out when funding a payment in response to a request, whether
initiated person-to-person, on paper, or using a computer. In particular, we
determine limitations L1, L3–L5, L7, and L8 recite various abstract ideas, as
identified in TABLE 1, above.
We determine that claim 1, overall, recites a certain method of
organizing human activity in the form of a commercial interaction that may
also be performed by pen and paper.16 This type of activity, i.e., funding a
payment in response to a request, as recited in each of limitations L1 through
L8, for example, and aside from any computer-related aspects, includes
longstanding conduct that existed well before the advent of computers and

15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
16 Alternatively, as noted in TABLE 1, the claims may be considered as
reciting a fundamental economic practice, but that alternate determination
does not alter our ultimate conclusion that claim 1 recites an abstract idea.
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the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“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.”).
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for performing an automated transaction recites a judicial exception,
however, we determine this to be the case for a different reason than the
narrower interpretation articulated by the Examiner, cited above. We
conclude claim 1, under our Revised Guidance, recites a judicial exception
of funding a payment in response to a request, i.e., a certain method of
organizing human activity in the form of a commercial interaction, and thus
recites an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we 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.
As to the specific limitations, we find limitations L1, L3–L5, L7,
and 8 recite various abstract ideas, and limitations L1a and L2b recite
generic computer functions and components.
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Limitation L6 (“receiving a rejection message”) recites insignificant
data gathering. See MPEP § 2106.05(g). Data gathering, as performed by
the steps or function in Appellant’s claims, is a classic example of
insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S.
593 (2010).
We also find limitation L2a (“routing said request”) recites
insignificant post solution activity. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . .
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92).
Moreover, on this record, we are of the view that Appellant’s claims
do not operate the recited generic computer components L1a (“a
communications network”) and L2b (“an approval unit”) in an
unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
However, in addition to the abstract steps and the extra- and post-
solution activity recited by the limitations identified above, claim 1 further
recites limitation L9, i.e., “providing at least one contingency parameter to
prompt a modification of said request in response a determination that said
rejection message is a contingent rejection.”
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For the reasons discussed below, we conclude limitation L9 integrates
the abstract idea into a practical application as determined under at least one
of the MPEP sections cited above.17
Appellant’s Specification discloses: “The request processing step
may also include a conditional approval based upon one or more
contingencies that must be satisfied. A further review action may be
performed in order to determine whether the contingency bas been satisfied
prior to providing a full approval.” Spec. ¶ 62. The Specification further
discloses:
[0074] Upon a determination that the rejection message is a
contingent rejection (block 920), information associated with
the contingency is provided to the requestor for changing and/or
updating the request (block 930). This information may be used
by the requestor to modify or updating the original request in
order to satisfy the contingency and gain approval. For
example, if a determination is made that the request exceeds a
predetermined threshold, or did not meet a required threshold or
event or rule, a contingent rejection may be made to allow the
requestor to modify the original request to conform to the rules,
thresholds, and/or required event test for further evaluation.
[0075] Upon providing the contingency information to the
requestor, a determination is made whether a modified request
is received (block 950). Upon a determination that the modified
request has not been received within a predetermined period of
time, a denial of the request may be issued (block 970). Upon a
determination that the modified request is received, the
modified request is sent for an approval process (as described in
block 820 of Figure 8) (block 960). In this manner, a request is
either approved, rejected, or conditionally rejected, affording

17 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field,” and
§ 2106.05(e) “Other Meaningful Limitations.”
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the requestor an opportunity to make modifications to conform
to one or more contingencies in order to obtain approval of the
request for funding.
Spec. ¶¶ 74–75.
Appellant argues:
Those funding requests that have been contingently denied
cause an automated reply back to the sender that may indicate a
counter-request to change one or more aspects of the original
request, e.g., the amount requested, the timing of funding, the
project to which the funding should be directed, etc., which
provides a more efficient mechanism for automated expense
management, thereby providing an improvement of existing
expense management technology, similar in nature to Enfish.
The automated nature of the counter-request to the requestor to
change one or more aspects of the original request, as set forth
in Appellant's claims, is particularly effective in efficiently
managing and speeding the approval process. The requestor
need not generate wholly new requests, but can systematically
revise his/her original or subsequent requests to quickly arrive
at an acceptable funding request that may be satisfied in real-
time. More particularly, Applicant has claimed a specific
methodology that allows the funding requests to be classified as
contingent or non-contingent requests. Contingent requests may
be handled in an automated manner by asking that a modified
request be submitted, after which an approval may be provided,
which allows for real time or near real time funding. On the
other hand, if a funding request is classified as non-contingent,
then real time or near real time funding is determined to not be
possible and the request is denied. Appellant's claims are
directed to filtering of electronic requests for funding to identify
those requests that may be accomplished in real time or near
real time.
Appeal Br. 11–12 (emphasis added).
We find Appellant’s argument persuasive that carrying out the step in
limitation L9 of “providing at least one contingency parameter to prompt a
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modification of said request in response a determination that said rejection
message is a contingent rejection” provides improvements to the underlying
technology or technical field, namely, automated funding systems. See
MPEP § 2106.05(a) or, alternatively, § 2106.05(e) “Other Meaningful
Limitations.”
With respect to these other meaningful limitations, we find guidance
in MPEP § 2106.05(e), which summarizes and relies upon the Supreme
Court’s holding in Diehr, cited supra, and our reviewing court’s holdings in
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed.
Cir. 2011) (decision on remand from the Supreme Court, which had vacated
the lower court’s prior holding of ineligibility in view of Bilski v. Kappos).
Accordingly, we conclude, when the claim is considered as a whole,
the recited judicial exception is integrated into a practical application as
determined under either MPEP sections 2106.06(a) or 2106.05(e) cited
above, such that the claim is patent-eligible. Because the claims are directed
to a patent-eligible concept, this concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claim 1, and grouped claims 2–11 and 13,
which stand therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1–4 and 6–11
Issue 2
Appellant argues (Appeal Br. 6–9; Reply Br. 4–8) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
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combination of Hussein, Joseph, and Grant is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for performing an automated transaction” wherein a
step of rejection processing includes, inter alia, the steps of (a) “receiving a
rejection message;” (b) “determining whether said rejection message is a
contingent rejection;” (c) “issuing a denial of the request in response to a
determination that said rejection message is not a contingent rejection;” and
(d) “providing at least one contingency parameter to prompt a modification
of said request in response a determination that said rejection message is a
contingent rejection,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
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than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Analysis
While the Examiner relies upon the combination of Hussein, Joseph,
and Grant to teach or suggest all the limitations of claim 1, the Examiner
particularly finds limitation (a) (“receiving a rejection message”) is taught
by Joseph Figure 3, element 340 and paragraph 65; limitation
(b) (“determining whether said rejection message is a contingent rejection”)
is taught by Joseph Figure 3, element 335 and paragraph 65; limitation
(c) (“issuing a denial of the request” is taught by Joseph Figure 5, element
530 and paragraph 69; and limitation (d) (“providing at least one
contingency parameter”) is taught by Joseph Figure 3, elements 310 and
340, and paragraphs 26 and 65. Final Act. 8–9.
Limitation (a) - receiving a rejection message
Joseph Figure 3, relied upon by the Examiner, is reproduced below:

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“FIG. 3 is a representative process flow diagram showing the pre-trip
authorization process, in accordance with one embodiment of the present
invention.” Joseph ¶ 9.
Paragraph 65 of Joseph discloses, in pertinent part, “[t]he approver
reviews the cost estimates (step 330) and either approves or rejects the pre-
trip authorization request. If the pre-trip authorization request is rejected,
ERM 147 notifies user 105 (step 340).” The Examiner interprets this
notification of rejection as teaching or suggesting “receiving a rejection
message.”
Limitation (b) - determining whether said rejection message is contingent
Figure 3 of Joseph is provided above, and paragraph 65 discloses, in
pertinent part, “[i]n one embodiment, if items in the cost estimate are
adjusted to comply with business rules, the adjusted cost estimate is
automatically approved (step 335) and ERM 147 notifies (e.g.[,] by sending
an email message) user 105 of the adjustments made to the cost estimates.”
The Examiner interprets this adjustment of the cost estimate required for
authorization as teaching or suggesting “determining whether said rejection
message is a contingent rejection.”
Limitation (c) - issuing a denial of the request
Paragraph 69 of Joseph discloses, in pertinent part, “[i]f the expense
report is not approved (step 520), the approver clicks a different button and
[Expense Report Module] ERM 147 notifies the employee that the expense
report is rejected (step 530).”
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Joseph Figure 5, relied upon by the Examiner, is reproduced below:

“FIG. 5 is a representative process flow diagram showing the expense
report approval process, in accordance with one embodiment of the present
invention.” Joseph ¶ 11.
The Examiner interprets the rejection message in step 530 of Figure 5
and the accompanying description in paragraph 69 of Joseph as teaching or
suggesting “issuing a denial of the request.”
Limitation (d) - providing at least one contingency parameter
Paragraph 26 of Joseph discloses, in pertinent part, “[u]ser 105 may
perform tasks such as requesting, retrieving, receiving, updating, analyzing,
entering and/or modifying data.” The Examiner further relies upon
paragraph 65 of Joseph, and provides the following interpretation, “where
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the user is notified that the cost estimates have been rejected and that the
user must obtain a new cost estimate[,] where the examiner interprets the
cost estimate as a contingent parameter that is user updated/modified.”
Final Act. 9 (emphasis added). Thus, the Examiner interprets the recited
contingent parameter as reading on the user modified cost estimate of
Joseph.
In response to the Examiner’s findings above regarding limitations (a)
through (d), Appellant contends:
Appellant’s claims operate in the alternative depending on
whether the received rejection message is a contingent rejection
or not. If the received rejection message is a contingent
rejection, then a contingent parameter is provided to prompt a
modification of the request. On the other hand, if the received
rejection message is not a contingent rejection, then the request
is denied.
Appeal Br. 6–7. Appellant further argues:
Appellant’s claims require the alternative operations to be
performed on the same message — the rejection message. In
the rejection based on Joseph, however, the Examiner identifies
operations involving two separate and distinct messages, not the
same message, as required by Appellant’s claims. The first
message identified in Joseph is “NOTIFY USER 105 THAT
COST ESTIMATES ARE REJECTED 340” and is sent to the
user 105 in response to a pre-trip authorization request. The
second message identified in Joseph is “ERM 147 SENDS
NOTICE TO EMPLOYEE OF EXPENSE REPORT
REJECTION 530.” Joseph does not teach or suggest the
alternative operations on the same rejection message claimed by
Appellant.
Appeal Br. 7.
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Claim Construction under Schulhauser
Notwithstanding Appellant’s arguments above, under the broadest
reasonable interpretation of claim 1, we conclude the conditional limitations
of “the request processing further comprising: [performing, receiving,
determining, and issuing a denial steps, and the step of providing at least one
contingency parameter],” may never occur. See Ex parte Schulhauser,
Appeal No. 2013-007847, at *9 (PTAB, April 28, 2016) (precedential)
(holding “[t]he Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim (e.g.,
instances in which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met.”); see also Ex
parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4–5 (BPAI
Jan. 27, 2011) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir.2004)).18
The conditional limitations we conclude are at issue here are
“determining by said approval unit that said funding is authorized, and
determining that sufficient amount of funds are available for providing said

18 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21
(Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
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funding, and performing at least one of providing said funding or denying
said funding based upon said request processing.” Claim 1.
Here, we apply the precedential guidance of Schulhauser. Therefore,
under the condition where the funding is authorized and provided, the
Examiner need not present evidence establishing the obviousness of the
conditional “denying said funding” step, and “performing a rejection
processing in response to said denying said funding” step of claim 1,
because these steps are not required to be performed under a broadest
reasonable interpretation of the claim, e.g., instances when the funding is
authorized, and not denied.
Therefore, we find Appellant’s argument that Joseph fails to teach or
suggest the conditional disputed limitations of claim 1 unavailing, because it
is not commensurate with the broadest reasonable interpretation of claim 1.
See In re Schulhauser, Appeal 2013-007847, at *9. Accordingly, we sustain
the Examiner’s rejection of claim 1, and grouped claims 2–4 and 6–11, that
are not argued separately.
3. § 103 Rejection R3 of Claims 5 and 13
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R4 of claims 5 and 13 under § 103 (see Appeal
Br. 9), we sustain the Examiner’s rejection of these claims. Arguments not
made are waived.19

19 Appellant merely argues, “Green does nothing to overcome the
shortcomings found in the combination of Hussein, Joseph and Grant, as
discussed above, and thus, claims 5 and 13 are distinguished over the art for
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–13) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
Appellant has persuaded us that the Examiner erred in rejecting claims 1–11
and 13 as being patent ineligible under 35 U.S.C. § 101, and we do not
sustain the rejection.
(2) Appellant has not persuaded us that the Examiner erred with
respect to obviousness Rejections R2 and R3 of claims 1–11 and 13 under
35 U.S.C. § 103 over the cited prior art combinations of record, and we
sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).

the same reasons discussed above with respect to claims 1 and 11.” Appeal
Br.9.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–11, 13 101 Eligibility 1–11, 13
1–4, 6–11 103 Hussein, Joseph,
Grant
1–4, 6–11
5, 13 103 Hussein, Joseph,
Grant, Green
5, 13
Overall
Outcome
1–11, 13
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED