Kimberly Dunwoody et al.

Patent Trials and Appeals Board

Oct 18, 2019

14301352 - (D) (P.T.A.B. Oct. 18, 2019)

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.
14/301,352 06/11/2014 Kimberly Dunwoody 90945-910994 (015910US) 2094
20350 7590 10/18/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIMBERLY DUNWOODY and SCOTT PAINTIN
____________

Appeal 2018-002563
Application 14/301,352
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–12 and 21–27. 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. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed September 19, 2017) and Reply Brief (“Reply Br.,” filed January 8,
2018), and the Examiner’s Answer (“Ans.,” mailed November 8, 2017) and
Final Office Action (“Final Act.,” mailed April 21, 2017). Appellant
identifies the real party in interest as “The Western Union Company of
Englewood, Colorado.” Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention “relates, in general, to money transfers,
and more particularly, to item-specific money transfers” (Spec. ¶ 2).
Claims 1, 26, and 27 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of implementing item-specific money
transfers over a network including the Internet, the method
comprising:
[(a)] receiving, at a money transfer computer processor,
a barcode of an item and a photograph of the item;
[(b)] based on the barcode of the item and the photograph
of the item, determining, by the money transfer computer
processor, a vendor for the item and a price of the item;
[(c)] receiving, at the money transfer computer
processor, from a receiver, a money transfer request for an
amount of the price of the item, wherein the money transfer
request identifies a sender;
[(d)] sending over the network, by the money transfer
computer processor, the money transfer request to the sender;
[(e)] based on the barcode of the item and the photograph
of the item, restricting the funds for the money transfer to be used
for payment specifically to the vendor for purchase of the item;
[(f)] based on the restricting of the funds, receiving over
the network, at the money transfer computer processor, from the
sender, an authorization for a money transfer in the amount of
the price of the item, wherein the authorization includes an
indication that funds from the money transfer are restricted
specifically for use to purchase the item with the vendor; and
[(g)] in response to receiving the authorization from the
sender for the money transfer, distributing the funds to the
vendor, wherein distributing the funds to the vendor comprises:
[(g1)] generating, by the money transfer computer
processor, a PIN associated with the money transfer based
on at least one of the item or a location associated with the
receiver;
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[(g2)] associating, by the money transfer computer
processor, the PIN with the funds for the money transfer,
such that funds for the money transfer are restricted and
presentation of the PIN is required to release the funds;
[(g3)] transmitting, by the money transfer computer
processor, the PIN to the receiver in response to the money
transfer request; and
[(g4)] providing, by the money transfer computer
processor, the PIN to the vendor.
REJECTIONS
Claims 1–12 and 21–27 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1–12 and 21–27 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Russell (US 2001/0047310 A1, published Nov. 29, 2001), Armstrong et al.
(US 2005/0131836 A1, published June 16, 2005) (“Armstrong”),
Lindahl et al. (US 2008/0197192 A1, published Aug. 21, 2008) (“Lindahl”),
and Barnes Jr. (US 2003/0065805 A1, published Apr. 3, 2003) (“Barnes”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues independent claims 1, 26, and 27 as a group (Appeal
Br. 5–10). We select independent claim 1 as representative. Claims 26 and
27 stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
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to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., 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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “authorizing [a] money transfer
based on information collected and [the] restricting of funds, associating [a]
PIN with the funds, and distributing [the] funds based on the PIN” — a
concept that Examiner concluded is an abstract idea similar to other concepts
that the courts have held abstract (Final Act. 2–4). The Examiner also
determined that the claims do not include additional elements that are
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sufficient to amount to significantly more than the abstract idea itself (id.
at 4).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that is considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. 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. Id.2

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“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.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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Independent Claims 1, 26, and 27 and Dependent Claims 2–12
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded, as an initial matter, that the Examiner
overgeneralized the claims as directed to “authorizing [a] money transfer
based on information collected and [the] restricting of funds, associating [a]
PIN with the funds, and distributing [the] funds based on the PIN” (Appeal
Br. 5). Instead, Examiner’s characterization is, in our view, fully consistent
with the Specification, as described below, including the claim language.
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That the claims include more words than the phrase the Examiner used to
articulate the abstract idea, and that the Examiner, thus, articulates the
abstract idea at a higher level of abstraction than would Appellant is an
insufficient basis to persuasively argue that the claim language has been
mischaracterized or that the Examiner has failed to consider the claims as a
whole. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016) (“An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
We also do not agree with Appellant that the Examiner erred in
determining that claim 1 is directed to an abstract idea (Appeal Br. 5–8).
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 claims is on a specific
improvement in the 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 the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
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The Specification is entitled “ITEM-SPECIFIC MONEY TRANSFER
METHODS AND SYSTEMS,” and states that the invention relates, in
particular, “to item-specific money transfers” (Spec. ¶ 2). The Specification
describes, in the “Background” section, that “[c]urrently, the process of
transferring money is complicated and not user-friendly” in that a number of
forms and processes must be completed before completing the money
transfer (id. ¶ 3). The Specification also describes that “when a person sends
money to another person, he or she is often unsure of exactly how the money
has been spent, if the item is being purchased at the best price available, and
[how] to prevent fraudulent transactions” (id.). Therefore, according to the
Specification, “improvements in the art are needed” (id.).
The claimed invention is ostensibly intended to address this need by
providing a method for implementing item-specific money transfers such
that the transferred funds are restricted so as to only be available for
payment to the vendor of the specific item (id. ¶ 4). Claim 1, thus, recites a
method for implementing item-specific money transfers over a network
comprising: (1) receiving a barcode and photograph of an item, i.e.,
“receiving, at a money transfer computer processor, a barcode of an item and
a photograph of the item” (step (a)); (2) determining the vendor and a price
of the item, i.e., “based on the barcode of the item and the photograph of the
item, determining, by the money transfer computer processor, a vendor for
the item and a price of the item” (step (b)); (3) receiving a money transfer
request for the price of the item, i.e., “receiving, at the money transfer
computer processor, from a receiver, a money transfer request for an amount
of the price of the item, wherein the money transfer request identifies a
sender” (step (c)); (4) sending the money request to the sender identified in
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the request, the request restricting the funds to be used for payment
specifically to the vendor for purchase of the item, i.e. “sending over the
network, by the money transfer computer processor, the money transfer
request to the sender” and “based on the barcode of the item and the
photograph of the item, restricting the funds for the money transfer to be
used for payment specifically to the vendor for purchase of the item”
(steps (d) and (e)); (5) receiving authorization for the money transfer from
the sender, i.e., “based on the restricting of the funds, receiving over the
network, at the money transfer computer processor, from the sender, an
authorization for a money transfer in the amount of the price of the item,
wherein the authorization includes an indication that funds from the money
transfer are restricted specifically for use to purchase the item with the
vendor” (step (f)); and (6) distributing the funds to the vendor, i.e.,
in response to receiving the authorization from the sender
for the money transfer, distributing the funds to the vendor,
wherein distributing the funds to the vendor comprises:
generating, by the money transfer computer
processor, a PIN associated with the money transfer based
on at least one of the item or a location associated with the
receiver;
associating, by the money transfer computer
processor, the PIN with the funds for the money transfer,
such that funds for the money transfer are restricted and
presentation of the PIN is required to release the funds;
transmitting, by the money transfer computer
processor, the PIN to the receiver in response to the money
transfer request; and
providing, by the money transfer computer
processor, the PIN to the vendor.
(steps (g) and (g1)–(g4)). These limitations, given their broadest reasonable
interpretation, recite transferring money restricted for payment to a vendor
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of a specific item, i.e., a fundamental economic practice and/or a commercial
interaction, which is a method of organizing human activity and, therefore,
an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The courts have held similar concepts abstract. Thus, for example, in
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372
(Fed. Cir. 2017), the Federal Circuit held claims to a method of processing a
payment for a purchase of goods to be directed to an abstract idea,
explaining, “[t]he idea that a customer may pay for items ordered from a
remote seller at a third-party’s local establishment is the type of fundamental
business practice that, when implemented using generic computer
technology, is not patent-eligible.” Id. at 1378. See also, e.g., Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367–68
(Fed. Cir. 2015) (holding that claims directed to “tracking financial
transactions to determine whether they exceed a pre-set spending limit (i.e.,
budgeting)” are “not meaningfully different from the ideas found to be
abstract in other cases before the Supreme Court and our court involving
methods of organizing human activity”); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional element recited in claim 1, beyond the abstract
idea, is the claimed “money transfer computer processor” — an element that,
as the Examiner observes (Final Act. 5), is recited at a high level of
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generality, i.e., as a generic computer component (see also, e.g., Spec. ¶ 41
(describing the use of “one or more general purpose processors”)). We find
no indication in the Specification, nor does 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 assertedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.3
Appellant ostensibly maintains that claim 1 is not directed to an
abstract idea because the claim “provides a technical solution to a problem

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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that accompanies remote money transfers,” i.e., that the sender is “often
unsure of exactly how the money has been spent, if the item is being
purchased at the best price available, and [how] to prevent fraudulent
transactions” (Appeal Br. 5 (citing Spec. ¶ 3)). Appellant asserts that “[i]n
order to avoid such fraudulent transactions or other misuse of funds by the
recipient, the claims recite a technology-based solution to ensure that a
remote money transfer is restricted for the use of purchasing a particular
item only, from a particular vendor and at a particular price” (id.; see also
Reply Br. 2–3). But, we are not persuaded that avoiding fraudulent
transactions is a technical, as opposed to a business, problem or that
ensuring that a remote money transfer is restricted to use in purchasing a
particular item from a particular vendor at a particular price is a technical, as
opposed to a business, solution.
Appellant argues that in order to implement this “technology-based
solution,” claim 1 recites “various technical features,” i.e., receiving a
barcode and a photograph of an item; determining, based on the barcode and
photograph, a vendor for the item and a price; restricting the money transfer
for payment specifically to the vendor for purchase of the item; and
generating at least one of an item-specific transaction PIN and/or a receiver
location-specific transaction PIN that will be used for completing the
transaction (Appeal Br. 5-6; see also Reply Br. 3). But, as described above,
there is no indication in the Specification that the operations recited in
claim 1, i.e., the asserted “technical features,” require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, invoke any assertedly inventive programming, or that the
claimed invention is implemented using other than generic computer
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components to perform generic computer functions, which is not enough for
patent eligibility.
We also do not agree with Appellant that claim 1 is analogous to the
claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) (Appeal Br. 7). Appellant argues that, as in DDR Holdings,
the present claims are “necessarily rooted in computer technology (e.g.,
capturing and receiving item barcodes and photographs in order to verify the
item and determine a vendor, and using [an] item-specific and/or location-
specific transaction PIN in order to prevent fraud/misuse of funds transfers)”
and do not “merely recite the performance of some business practice known
from the pre-Internet world along with some generic requirement to perform
it using the Internet” (id.; see also Reply Br. 3). But, we are not persuaded
that preventing potentially fraudulent transactions is a challenge specifically
arising in realm of computer networks; instead, it is a business problem that
existed prior to the Internet and computers.
The proposed solution here, i.e., restricting transferred funds to use in
purchasing a particular item from a particular vendor at a particular price,
using, at best, a generic processor, also is not “necessarily rooted in
computer technology.” Rather, it is an implementation on generic computer
components of the abstract idea itself. As the court explained in Enfish, the
relevant inquiry is not whether there is a business challenge resolved by the
claimed invention, but whether the challenge is one rooted in technology, or
one where the proposed solution is merely using computers as a tool. See
Enfish, 822 F.3d at 1335–36.
Although Appellant ostensibly argues otherwise, the court did not
conclude in DDR Holdings that the claims were patent eligible merely
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because the claims did not recite the performance of a business practice
known from the pre-Internet world along with the requirement to perform it
on the Internet. Instead, the Federal Circuit held that the claims were
directed to statutory subject matter because they claimed a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” i.e., retaining
website visitors who, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be transported instantly away from a
host’s website after “clicking” on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, in fact, expressly cautioned in DDR Holdings that
“not all claims purporting to address Internet-centric challenges are eligible
for patent.” DDR Holdings, 773 F.3d at 1258. And, the court held that the
claims distinguished over patent-ineligible claims that “broadly and
generically claim ‘use of the Internet’ to perform an abstract business
practice (with insignificant added activity),” because they “specify how
interactions with the Internet are manipulated to yield a desired result — a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.” Id.
Here, we do not find, and Appellant does not identify, any analogous
modification to the routine and conventional functioning of computer
network technology. At best, the invention appears to use generic computer
components to perform an abstract business practice, i.e., restricting the use
of a money transfer to the purchase of a specific item from a specific vendor
at a specific price.
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That claim 1 invokes the use of a network, e.g., the Internet, is not
sufficient, in our view, to transform Appellant’s otherwise patent-ineligible
abstract idea into patent-eligible subject matter. Narrowing the abstract idea
to online transactions merely limits the use of the abstract idea to a particular
technological environment, which the Court made clear in Alice is
insufficient to transform an otherwise patent-ineligible abstract idea into a
patent-eligible subject matter. See Alice Corp., 573 U.S. at 222.
We also are not persuaded of Examiner error by Appellant’s argument
that claim 1 poses no risk of preemption (Appeal Br. 7–8; see also Reply
Br. 3–4)). There is no dispute that the Supreme Court has described “the
concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption.” Alice Corp., 573 U.S. at 216. Yet,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
We conclude, for the reasons set forth above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
processor recited in the claim is no more than a generic computer component
used as a tool to perform the abstract idea of restricting the use of a money
transfer to the purchase of a specific item. As such, it does not integrate the
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recited abstract idea into a practical application. See Alice Corp., 573 U.S.
at 223–24 (“[W]holly generic computer implementation is not generally the
sort of ‘additional featur[e]’ that provides any ‘practical assurance that the
process is more than a drafting effort designed to monopolize the [abstract
idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with
the Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant argues that even if claim 1 is directed to an abstract idea,
the claim includes additional elements sufficient to transform the nature of
the claim into a patent-eligible application (Appeal Br. 8). Citing the
Federal Circuit’s holding, in BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that an inventive
concept can be found in the non-conventional and non-generic arrangement
of known conventional pieces, Appellant summarily asserts that even
assuming that the claimed embodiments could be implemented with generic
computing components, “it is the non-conventional and non-generic
arrangement of this combination of computing components that allow[s] the
claims to implement secure item-specific transfers over the Internet, using a
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money transfer computer processor configured to generate an item-specific
and/or receiver location-specific PIN, and to restrict[ ] the funds transfer by
associating the transfer with the item-specific and/or location-specific PIN
required to release the funds” (id.; see also Reply Br. 4). Yet, Appellant
does not adequately identify the allegedly “non-conventional and non-
generic” arrangement of elements that provides the inventive concept.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 1, and claims 26 and 27, which fall with
claim 1. We also sustain the Examiner’s rejection of dependent claims 2–
12, which are not argued separately.
Dependent Claims 21–25
Turning to dependent claims 21–25, Appellant argues that the blanket
rejection of all pending claims, including all dependent claims, without an
analysis of each claim under the Alice framework is improper in this case,
and that every claim must be examined individually (Appeal Br. 9).
Appellant, thus, ostensibly maintains that the Examiner failed to comply
with applicable USPTO guidelines by failing to provide a separate analysis
of each of the dependent claims. We disagree.
There is no dispute that examiners are to consider each claim
individually. But, consideration of each claim individually does not require
a separate written analysis for each individual claim.
We decline to find error here in the Examiner’s decision not address
the patent eligibility of each of claims 21–25 separately. Claims 21–25
depend from independent claim 1, and are directed to the same abstract idea
as claim 1. See Content Extraction & Transmission LLC v. Wells Fargo
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Bank, Nat. Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that
when all claims are directed to the same abstract idea, “addressing each
claim of the asserted patents [is] unnecessary.”). These dependent claims
recite additional features related to the distribution of funds to the vendor
(claims 24 and 25), and recite further limitations regarding how the PIN is
generated (claim 21) and how the location of the receiver is determined
(claims 22 and 23). But, the additional claim elements recited in these
claims are insufficient, in our view, to confer patent eligibility.
Appellant asserts that “each of dependent claims 21–25 recites
additional technical features further addressing the problem of preventing
fraud/misuse in remote transactions by ensuring that transferred funds are
restricted for the use of purchasing particular items only, from particular
vendors and at particular prices” (Appeal Br. 9). Yet, as with claim 1, we
find no indication in the Specification that the operations recited in these
dependent claims require any specialized computer hardware or other
inventive computer components, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. We
also find nothing of record that attributes an improvement in technology
and/or a technical field to the claimed invention. And, as described above,
we are not persuaded that restricting funds usage in remote transactions is a
technological improvement, as opposed to an improvement in a business
practice.
We are not persuaded that the Examiner erred in rejecting dependent
claims 21–25 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s
rejection.
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Indefiniteness
Appellant does not provide any substantive response to the
Examiner’s rejection of claims 1–12 and 21–27 under 35 U.S.C. § 112(b).
Instead, Appellant asserts that the rejection is “not at issue in this appeal”
(Appeal Br. 10). Accordingly, we summarily sustain the Examiner’s
rejection.
Obviousness
Appellant also provides no substantive response to the Examiner’s
rejection of claim 27 under 35 U.S.C. § 103(a), asserting that the rejection is
“not at issue in this appeal” (id.). Accordingly, we summarily sustain the
Examiner’s rejection of claim 27 under § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12, 21–27 101 Eligibility 1–12, 21–27
1–12, 21–27 112(b) Indefiniteness 1–12, 21–27
27 103(a) Russell,
Armstrong,
Lindahl,
Barnes
27
Overall
Outcome
1–12, 21–27

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED