Kapur, Shashi et al.

Patent Trials and Appeals Board

Apr 29, 2020

12547783 - (D) (P.T.A.B. Apr. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/547,783 08/26/2009 Shashi Kapur A258 1030.1 5906
118311 7590 04/29/2020
Toering Patents PLLC
P.O. Box 1419
Leesburg, VA 20177
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/29/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
admin@toeringpatents.com
rick@toeringpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHASHI KAPUR and GARY PALMER
____________

Appeal 2019-000129
Application 12/547,783
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s decision to reject claims 1–5, 8–15, and 18–20, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We note related appeal 2014-008275, decided on March 1, 2017.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “MTS
Holdings, Inc.[,] . . . a wholly owned subsidiary of MasterCard International
Incorporated.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant states that its “invention relates to processing recurring
payment transactions using an Interactive Voice Response system combined
with a Hardware Security Module to prompt for, retrieve, and encrypt a
Personal Identification Number for secure payment transactions.” Spec. ¶ 2.
Claims 1 and 11 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below (with added bracketing
for reference):
1. A method of authenticating a recurring payment transaction
using a debit card of a payor, wherein the recurring payment
transaction includes a plurality of recurring payments,
comprising:
[(a)] receiving account information for the recurring
payment transaction, by one or more processors of an adaptive
payment server, the account information comprising a debit card
number of the debit card of the payor, a payment date, and an
identification of a communication device of the payor;
for each individual payment in the plurality of recurring
payments in the recurring payment transaction:
[(b)] initiating, by the adaptive payment server, a
communication to the identified communication device of
the payor on or before the payment date of the individual
payment in the plurality of recurring payments;
[(c)] communicating, by the adaptive payment
server to the communication device of the payor, at least a
portion of the account information, an indication that the
individual payment in the plurality of recurring payments
is to be made on or before the payment date, and a request
to the payor to provide a personal identification number
(PIN) over the communication device of the payor to
authenticate the individual payment in the plurality of
recurring payments;
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[(d)] receiving, by the adaptive payment server from
the communication device of the payor, the PIN, wherein
the PIN authenticates only the individual payment in the
plurality of recurring payments;
[(e)] determining, by the adaptive payment server,
whether to initiate payment of the individual payment in
the plurality of recurring payments using the PIN received
from the communication device of the payor; and
[(f)] causing payment of the individual payment in
the plurality of recurring payments via the debit card of the
payor by initiating, by the adaptive payment server,
payment of the individual payment in the plurality of
recurring payments over a debit network based on the
determination.
Appeal Br. 29–30 (Claims App.).

REJECTION
Claims 1–5, 8–15, and 18–20 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.

OPINION
35 U.S.C. § 101 Framework
A. 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.
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Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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
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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 (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.
B. 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”).3 “All USPTO personnel are, as a matter of

3 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
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. 84 Fed. Reg. at 50.4
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”). Thus, the
Appellant’s arguments related to prior guidance (see, e.g., Appeal Br. 8–12
(arguing the claim is not like the court cases cited by the Examiner) will not
be considered.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56. .
Independent claim 1
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that independent “[c]laim 1 recites a series of steps which are
directed to the abstract idea of authenticating and processing a recurring
payment transaction,” which “is well-established and long prevalent in our
history of commerce and hence the claim is directed to a fundamental
economic practice and is directed to an abstract idea.” Non-Final Act. 3.
When viewed through the lens of the 2019 Revised Guidance, the
Examiner’s analysis depicts the claimed subject matter as a “[c]ertain
method[] of organizing human activity—fundamental economic principles
or practices (including hedging, insurance, mitigating risk)” under
Prong One of Revised Step 2A. 84 Fed. Reg. at 52.
The Appellant contends that “claim 1 is directed toward a recurring
payment transaction using a debit card and includes features that
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authenticate each individual payment in a plurality of recurring payments in
the recurring payment transaction.” Appeal Br. 9, 10, 11. We note that this
is not dissimilar to the Examiner’s characterization, but describes the claim
at a different level of abstraction. The Appellant further argues “Claim 1
Recites Features that Improve and Provide Additional Functionality to Debit
Networks.” Id. at 18 (emphases omitted). When viewed through the lens of
the 2019 Revised Guidance, the Appellant is contending that under Step 2A,
Prong 2, the elements of the claim integrate the abstract idea into a practical
application because the combination of the elements “reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field.” 84 Fed. Reg. at 55. For at least the following
reasons, we disagree.
Reciting a Judicial Exception
We first determine to what the claim is directed. The Federal Circuit
has explained that “the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claim is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, including the claim language, that
claim 1 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
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The Specification provides for “SYSTEM AND METHOD OF
RECURRING PAYMENT TRANSACTIONS.” Spec., Title (emphases
omitted). In the “FIELD OF THE INVENTION” section, the Specification
provides that the “invention relates to processing recurring payment
transactions using an Interactive Voice Response system combined with a
Hardware Security Module to prompt for, retrieve, and encrypt a Personal
Identification Number for secure payment transactions.” Id. ¶ 2. In the
“BACKGROUND OF THE INVENTION” section, the Specification discusses that
problems with “existing PIN [Personal Identification Number] – based
authentication systems” (id. ¶ 6) include: (1) “requir[ing] retailers, including
brick-and-mortar retailers, to purchase such hardware” (id.); (2) that
“electronic retailers (Etailers) may not take advantage of PIN-based
authentication because of the security risk associated with malware or
spyware on the consumer’s personal computer that may capture the PIN
and/or the risk of transmitting a PIN over the Internet” (id.); (3) that
“purchases made over the phone may not be desirable because a cardholder
may not wish disclose a PIN to an operator” (id.); (4) that “details stored on
biller computers may not be secured and could be compromised. For
example, giving a biller account information so that the biller may charge or
otherwise regularly process payments may be risky” (id. ¶ 7); and (5) that “a
payor often forgets about their recurring bills or doesn’t proactively confirm
amounts to be billed and can experience overdraft charges from their bank or
refused payments, or otherwise loses control of recurring payment
transactions” (id.). To address these issues, the invention provides for
“various systems and methods [that] may facilitate secure payment
transactions by receiving first identification information . . . . in one
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communication channel and the second identification information may be
prompted for and received on another communication channel.” Id. ¶ 9.
Thus, “even when the security of the first identification information is
compromised, the payment transaction remains secure because the PIN, for
example, is not communicated with the first identification information.” Id.
Corresponding to the disclosure, claim 1 recites “[a] method of
authenticating a recurring payment transaction using a debit card of a payor,
wherein the recurring payment transaction includes a plurality of recurring
payments, comprising:” the steps of: (1) transmitting information, i.e.,
limitations (a) and (d) of receiving account information and the PIN for each
individual payment, limitation (b) of initiating communication for each
individual payment, and limitation (c) of communicating a portion of
account information for each individual payment; (2) analyzing information,
i.e., limitation (e) of determining whether to initiate payment for each
individual payment; and (3) performing an action based on the analysis, i.e.,
limitation (f) of causing payment for each individual payment based on the
determination. See Appeal Br. 29–30 (Claims App.). The limitations are
performed by an “adaptive payment server” that is described in the
Specification as a generic computer server (see Spec. ¶¶ 23, 35, Fig. 1) and
recited functionally without any implementation details. For example, the
steps of initiating a communication, communicating, determining whether to
cause payment, and causing payment are recited without details on how,
technologically or by what algorithm, the functions are performed. The
Specification discusses that receiving account information may comprise
retrieving the information a database (see id. ¶ 75) and that determining
whether to initiate payment may include comparing received approval
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information with stored approval information to check for a match (id. ¶ 78).
The Specification does not discuss further details on how initiating a
communication, communicating the information, and causing payment are
performed. See id. ¶¶76, 77, 79.
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a method for authenticating
and processing a recurring payment transaction by transmitting and
analyzing data and causing payment based on the analysis.6 This is an
abstract idea of a “[c]ertain method[] of organizing human activity—
fundamental economic principles or practices (including hedging, insurance,
mitigating risk).” 2019 Revised Guidance, 84 Fed. Reg. at 52. This is
consistent with the Examiner’s and the Appellant’s characterization.
The courts have held similar concepts to be abstract. For example, the
our reviewing courts have held abstract the concepts of collecting and
analyzing information for the purpose of preventing improper access in
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016), verifying the validity of a credit card transaction over the Internet in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011), “[v]erifying financial documents to reduce transactional fraud” in
Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, No. 2019-1018, 2020
WL 1814311, at *5 (Fed. Cir. Apr. 10, 2020), “the formation of financial
transactions in a particular field . . . and data collection related to such

6 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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transactions” in Smart Systems Innovations, LLC v. Chicago Transit
Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017), and “the basic concept of
hedging, or protecting against risk” in Bilski v. Kappos, 561 U.S. 593,
611–612 (2010). As such, we disagree that the Appellant’s contentions that
the abstract idea recited in claim 1 is not similar to those in the cases cited
by the Examiner (see Appeal Br. 8–12) and is not a “fundamental economic
or conventional business practice” (see id. at 16–18).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Here, the only additional elements recited in
claim 1 beyond the abstract idea are “one or more processors of an adaptive
payment server,” “a communication device of the payor,” and “a debit
network”— elements that, as the Examiner observes (see Non-Final Act. 4;
Ans. 4), are described in the Specification as generic computer components.
For example, the Specification discusses that adaptive payment server 120
may include an adaptive webserver, modules, and a processor configured to
perform the claimed functions, i.e., a generic computing server. Spec.
¶¶ 23, 35, Fig. 1. The Specification further provides generic computer
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examples of communication device 102 including “a personal computer,
portable computer, personal digital assistant (PDA), workstation, web-
enabled mobile telephone, WAP device, web-to-voice device, or other
device. In other words, communication device 102 may include a data (or
Internet) function configured to communicate data via network 110.” Id.
¶ 29. The debit network is a generic, known debit network “such as, for
example, NYCE, PULSE, STAR, INTERLINK, and others.” Id. ¶ 101.
Further “[i]mplementations of the invention may be made in hardware,
firmware, software, or any suitable combination thereof.” Id. ¶ 121.
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
Here, the Appellant contends “Claim 1 Recites Features that Improve
and Provide Additional Functionality to Debit Networks.” Appeal Br. 18
(emphases omitted); see also id. at 19. Specifically, the Appellant contends
that the claim addresses the problem of “recurring payment transactions
using debit cards [that] were not permitted because debit networks required
authentication of the individual payment at the time of payment, whereas
conventional recurring payment transactions permitted a single authorization
for all of the recurring payments in the recurring payment transaction.” Id.
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at 18. The claim overcomes this problem by “seek[ing] and acquir[ing] a
personal identification number, or PIN, for each individual payment in the
recurring payment transaction to provide the necessary authorization at the
time of each individual payment as required by the debit network,” features
that “provide additional functionality not previously provided by
conventional recurring payment transactions or previously permitted by
debit networks.” Id.
However, the Appellant does not provide reasoning or evidence, and
we do not see from the claim, how the limitations claim a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257. The problems of loss of control on recurring payment
transactions and fraudulent use of payment cards existed prior to the Internet
and are business and personal finance concerns. See FairWarning, 839 F.3d
at 1094–95 (determining whether user accesses were authorized or
fraudulent incorporated “the same questions (though perhaps phrased with
different words) that humans in analogous situations detecting fraud have
asked for decades, if not centuries”). Although here, the transactions are
over a debit network, there is not a problem rooted in technology arising out
of computer networks, but rather one of what the debit network requires to
authorize payment, i.e., “provid[ing] the necessary authorization at the time
of each individual payment as required by the debit network.” Appeal
Br. 18.
Further, the purported solution requires the use of a server, device,
and network operating in their ordinary and conventional capacities. See
supra; see also Alice, 573 U.S. at 224–26. The Appellant does not, and
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cannot, claim to have invented the use of the server, device, and debit
network. The “focus” of the claim is not “on the specific asserted
improvement in computer capabilities” (Enfish, 822 F.3d at 1335) or on the
debit card or network itself (see Smart Systems, 873 F.3d at 1372), but rather
on using the server, device, and network as tools to implement the abstract
idea in the particular field of recurring payments with debit cards. See
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016) (“The Supreme Court and [the Federal Circuit] have repeatedly
made clear that merely limiting the field of use of the abstract idea to a
particular existing technological environment does not render the claims any
less abstract.”). Cf. Appeal Br. 13–14 (arguing that the debit network is not
a field of use limitation). Any improvement to “allowing authorization of
each and every individual payment of a recurring payment transaction . . .
using a debit card” (id. at 19) lies in the abstract idea itself. The claim does
“not provide any concrete solution. Instead, [it] provide[s] functional,
results-oriented limitations like others . . . held to be directed to abstract
ideas.” In re Greenstein, 778 F. App’x 935, 938 (Fed. Cir. 2019). The
claim “provides only a result-oriented solution[] with insufficient detail for
how a computer accomplishes it. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017).
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
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determination that the claim’s limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial.
See Non-Final Act. 3–4; Ans. 4.
The Appellant contends that the “features of claim 1 collectively are
not ‘well-understood, conventional, or routine.’ Prior to Appellant’s
invention, recurring payment transactions were not permissible via a debit
card, much less were these features collectively well-understood,
conventional or routine.” Appeal Br. 14. The Appellant argues that the
Examiner fails to provide support for the “alleg[ation] that various features
of claim 1 are ‘well-understood, routine or conventional’” in accordance
with the USPTO Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) promulgated to the Patent Examining
Corps on April 19, 2018 (“Berkheimer Memo”). Id. at 7.
To the extent the Appellant argues that claim 1 as a combination
amounts to significantly more than the abstract idea because the combination
is not well-understood, routine, or conventional over prior art (see Appeal
Br. 14), an abstract idea does not transform into an inventive concept just
because the prior art does not disclose or suggest it. See Mayo, 566 U.S.
at 78. “Ground-breaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “[t]he ‘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.” Diehr, 450 U.S. at 188–
89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to
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substitute §§ 102, 103, and 112 inquiries for the better established inquiry
under § 101”).
The Appellant’s argument that the Examiner fails to provide adequate
support in accordance with the Berkheimer Memo is also not persuasive of
error. The Berkheimer Memo at page 3 instructs, in relevant part, the
Examiner to support a rejection in writing with “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).” Here, the claimed steps of receiving
data, initiating and communicating data, determining whether to initiate
payment, and causing payment are part of the abstract idea itself; they are
not additional elements to be considered when determining whether claim 1
includes additional elements or a combination of elements that is sufficient
to amount to significantly more than the judicial exception. Cf. Appeal
Br. 12–13 (arguing that “features of claim 1 are more than ‘nominal or
tangential additions to the process of authenticating a recurring payment
transaction using a debit card.”). Nonetheless, the Examiner specifically
cites to the Specification, specifically paragraphs 3 through 7 in the
BACKGROUND OF THE INVENTION section, as support for these functions
being well-understood, routine, and conventional operations of a computer
in the field of payment transactions at the time of filing. Ans. 4. The
Examiner determines here, and we agree, that the only claim elements
beyond the abstract idea are the server, device, and debit network. See Non-
Final Act. 4 and Ans. 4 (citing the Specification). And we agree that the
Specification indisputably shows the claimed server device, and network
were conventional at the time of filing. See supra.
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The Appellant cannot reasonably maintain that there is a genuine issue
of material fact regarding whether operation of the claimed server, device,
and network is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components,
or that the claimed invention is implemented using other than generic
computer components to perform the generic computer functions as
discussed above. Indeed, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring) (citations omitted) (“Berkheimer II”).
The Appellant also contends that “the inventive concept is embodied
in the . . . combination of features of claim 1” comprising limitations (b)
through (f) of, for each individual payment, initiating a communication,
communicating, receiving the PIN, determining whether to initiate payment,
and causing payment. Reply Br. 2–6; see also Appeal Br. 14–16. The
Appellant argues that “the Examiner has failed to assert, much less provide
any evidence, that the combination of features set forth above is routine,
well-understood or conventional.” Reply Br. 5. However, “the relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Instead, the question under step two of the Mayo/Alice
framework is whether the claim includes additional elements, i.e., elements
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other than the abstract idea itself, that “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 79, 78).
Alice is clear, as described above, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice,
573 U.S. at 217; see also Mayo, 566 U.S. at 72–73 (requiring that “a process
that focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an ‘inventive concept,’
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself”). In other words, the inventive
concept under step two of the Mayo/Alice framework cannot be the abstract
idea itself: “It is clear from Mayo that the ‘inventive concept’ cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous
cases from this court which have held claims ineligible because the only
alleged ‘inventive concept’ is the abstract idea.” Berkheimer II, 890 F.3d
at 1374; see also BSG Tech, 899 F.3d at 1290 (“It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”) (citation omitted).
Here, as discussed above, the elements other than the abstract idea,
i.e., the server, device, and network, are used in their ordinary and
conventional capacities to receive, communicate, and analyze data, and
perform an action based on the analyses. See Electric Power Grp., LLC v.
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Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending,
monitoring, analyzing, selecting, and presenting information does not
transform the abstract process into a patent-eligible invention);
FairWarning, 839 F.3d at 1095 (generating a rule related to accessing
information, applying the rule, and storing and announcing the result did not
transform the abstract idea into a patent-eligible invention); Alice, 573 U.S.
at 226 (“Nearly every computer will include a ‘communications controller’
and ‘data storage unit’ capable of performing the basic calculation, storage,
and transmission functions required by the method claims.”). The only
additional elements beyond the abstract idea are the server, device, and
network, which are recited at a high level of generality.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 1.
Claims 2–5, 8–15, and 18–20
For each of claims 2–5, 8–15, and 18–20, the Appellant argues that
the claim “must be reversed for at least the reasons set forth above with
regard to claim 1.” Appeal Br. 20–28. As we find no error in the rejection
under claim 1, we are not persuaded of error by this argument.
The Appellant further states the limitations of each claim and states
“the Examiner has failed to provide proper support that the . . . features of
[each] claim . . . are well-understood, routine, or conventional in accordance
with the Berkheimer Memo.” Id.
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Regarding independent claim 11, that recites an apparatus performing
the same limitations as in claim 1, the Examiner relies on the same analysis
as for claim 1. Non-Final Act. 4. Thus, the Appellant’s argument is
unpersuasive for claim 11 for the same reasons discussed above with respect
to claim 1.
Regarding the dependent claims 2–5, 8–10, 12–15, and 18–20, the
Examiner does “not rely on the fact that the argued limitations of [the]
claims . . . are well-understood, routine, or conventional.” Ans. 9. Rather,
the Examiner determines that the claims “do not include any additional
elements that are sufficient to amount to significantly more than the judicial
exception when considered both individually and as an ordered combination.
There is no inventive concept that adds significantly more.” Non-Final
Act. 4.
We note that the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer II, 890 F.3d at 1373. The Appellant does not present evidence,
reasoning, or argument that non-abstract features of the dependent claims are
not well-understood, routine, and conventional. Rather, the Appellant
merely repeats the limitations of the claims and states that the Examiner fails
to provide evidence. The Appellant does not otherwise provide argument
why the Examiner erred in determining that these claims lack an inventive
concept. See BSG Tech., 899 F.3d at 1291 (“BSG Tech does not argue that
other, non-abstract features of the claimed inventions, alone or in
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combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claims 2–5, 8–15, and 18–20.

CONCLUSION
The Examiner’s decision to reject claims 1–5, 8–15, and 18–20 under
35 U.S.C. § 101 is sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–5, 8–15,
18–20
101 Eligibility 1–5, 8–15,
18–20

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)(l)(iv).

AFFIRMED