MARTIN, DOUGLAS RAYMOND. et al.

Patent Trials and Appeals Board

Jan 2, 2020

13828473 - (D) (P.T.A.B. Jan. 2, 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.
13/828,473 03/14/2013 DOUGLAS RAYMOND MARTIN 83356015 3706
28395 7590 01/02/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS RAYMOND MARTIN and
KENNETH JAMES MILLER

Appeal 2019-001831
Application 13/828,473
Technology Center 3600

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Douglas Raymond Martin
et al., appeals from the Examiner’s decision rejecting claims 1, 2, 5, 6, 13,
14, and 20. Claims 3, 4, 7–12, and 15–19 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 2.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to systems and methods “for vehicle
accessible ATM transactions.” Spec. ¶ 1.
Exemplary Claim
Claims 1 and 6, reproduced below, are representative of the subject
matter on appeal (formatting added; emphasis added to contested prior-art
limitations):
1. A system comprising:
an automated teller machine (ATM); and
an ATM-related processor configured to:
wirelessly connect to an approaching vehicle;
validate a transaction request based on comparison
of a received vehicle identifier and mobile device
identifier, both received from the vehicle, compared to
account-associated stored identifiers in an identified
account; and
provide transaction services over the wireless
connection, following transaction-request validation,
allowing a user to interact with the ATM using an in-
vehicle display.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Sept. 7, 2018); Reply Brief (“Reply Br.,” filed Dec. 27, 2018); Examiner’s
Answer (“Ans.,” mailed Nov. 21, 2018); Final Office Action (“Final Act.,”
mailed June 5, 2018); and the original Specification (“Spec.,” filed
Mar. 14, 2013).
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6. A system comprising:
a vehicle- based processor configured to:
provide account, device-identifying and vehicle-
identifying information, the device-identifying
information retrieved from a mobile device, responsive to
an authorization request from an automated teller
machine (ATM);
present a list of ATM-related services on a vehicle
display for user interaction, responsive to an ATM
confirming authorization based on the device-identifying
and vehicle identifying information; and
transmit user requests input on the display to the
ATM.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chutorash et al. (“Chutorash”) US 2010/0280956 A1 Nov. 4, 2010
McIntosh US 8,177,127 B2 May 15, 2012
Rejections on Appeal
R1. Claims 6, 13, 14, and 20 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter without significantly
more. Final Act. 10.
R2. Claims 1, 2, 5, 6, 13, 14, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of McIntosh and
Chutorash. Final Act. 5.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 6–14) 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 6, 13, 14, and 20 on the basis of
representative claim 6; we decide the appeal of obviousness Rejection R2 of
claims 1, 2, and 5 on the basis of representative claim 1; and we decide the
appeal of obviousness Rejection R2 of claims 6, 13, 14, and 20 on the basis
of representative claim 6.3
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); In re Hyatt,
211 F.3d 1367, 1373 (Fed. Cir. 2000) (determining an argument not first
raised in the brief to the Board is waived on appeal).
For the reasons discussed herein, we reverse the Examiner’s patent-
ineligible subject matter Rejection R1 of claims 6, 13, 14, and 20. However,
we disagree with Appellant’s arguments with respect to obviousness
Rejection R2 of claims 1, 2, 5, 6, 13, 14, and 20, and, unless otherwise
noted, we incorporate by reference herein and adopt as our own: (1) the

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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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 independent claims 1 and 6 for
emphasis as follows.
1. § 101 Rejection R1 of Claims 6, 13, 14, and 20
Issue 1
Appellant argues (Appeal Br. 6–11; Reply Br. 2–3) the Examiner’s
rejection of claim 6 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:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 6 patent ineligible 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.,

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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Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)). “Eligibility under 35 U.S.C. § 101 is a question
of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1166 (Fed. Cir. 2018).
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
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))).
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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
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.”).
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.”).
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
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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
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, 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);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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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 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.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

7 Items (3) and (4) 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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Revised Guidance 52 (footnotes omitted).
Under the Revised 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
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) 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.

8 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
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.10 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).11 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
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). . . .

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or ordered combination of elements) is well-
understood, routine, conventional activity must be supported with at least
one of the four specific types of evidence required by the USPTO
Berkheimer Memorandum. For more information concerning evaluation of
well-understood, routine, conventional activity, see MPEP § 2106.05(d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer
Memo”).
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See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
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.
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.
Analysis
Step 1 – Statutory Category
Claim 6, as a system (machine) 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.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined 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. Specifically, the Examiner determined
Claim 6 is directed to
[T]he steps or functions of “provide . . .” and “present . . .” are
similar to concepts that have been identified as abstracts by the
courts as found in Classen and Perkin-Elmer which involved
functions of collecting and comparing data to determine a risk
level. The function of “transmit . . .” is also similar to a concept
that was identified as abstract by the courts as found in
Cyberfone which involved using categories to organize, store
and transmit information.
Final Act. 11.
We evaluate, de novo, whether claim 6 recites an abstract idea based
upon the Revised Guidance. In applying the Revised Guidance, we
conclude claim 6 recites a judicial exception of certain method of organizing
human activity — commercial interactions, and thus an abstract idea.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification describes that
the invention relates to “a method and apparatus for vehicle accessible ATM
transactions.” Spec. ¶ 1.
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101, including (1) December 2016 Memorandum, (2) April 2018
Memorandum and (3) May 2018 Training. Appeal Br. 7–9. However, this
prior guidance and update have been superseded by the 2019 Revised
Guidance. See Revised Guidance at 52. As such, our de novo review will
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not address the sufficiency of the Examiner’s rejection against the cited prior
guidance. Rather, our analysis will comport with the 2019 Revised
Guidance. We will also review patent eligibility under section 101 de novo
as discussed below. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed.
Cir. 2012).
In TABLE 1 below, we identify in italics the specific claim
limitations 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:
TABLE 1
Independent Claim 6 Revised Guidance
A system comprising:
a vehicle-based
processor configured to:
Generic computer component, i.e., a processor,
and a generic vehicle.
[L1] provide account,
device-identifying and
vehicle-identifying
information, the device-
identifying information
retrieved from a mobile
device, responsive to an
authorization request
from an automated
teller machine (ATM);
Receiving or obtaining information, i.e., data
gathering, is insignificant extra-solution
activity. Revised Guidance 55, n.31; see also
MPEP § 2106.05(g).
[L2] present a list of
ATM-related services on
a vehicle display for
user interaction,
responsive to an ATM
confirming authorization
based on the device-
Presenting a list of services based on
(“responsive to”) an authorization, i.e., data, is
an abstract idea, i.e., “a certain method of
organizing human activity – commercial
interactions.” See Revised Guidance 52.
Moreover, transmitting or outputting
information for display may be considered as
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Independent Claim 6 Revised Guidance
identifying and vehicle
identifying information;
and
insignificant post-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g); and see buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (determining a claim reciting a
computer that receives and sends information
over a network is directed to an abstract idea);
Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) (holding that displaying data is an
abstract idea).
[L3] transmit user
requests input on the
display to the ATM.
Transmitting or outputting information is
insignificant post-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g); and see buySAFE,765 F.3d at
1355 (determining a claim reciting a
computer that receives and sends information
over a network is directed to an abstract idea).
Appeal Br. 14 (Claims App.).
We determine that claim 6 recites a certain method of organizing
human activity in the form of a commercial interaction, i.e., a business
relation. This type of activity, i.e., presenting a list of services, in this case,
ATM-related services, in response to an authorization received after
confirmation of identifying information in limitation L2, for example, and
then transmitting user requests in limitation L3, and aside from any
computer-related aspects, includes longstanding conduct that existed well
before the advent of computers and the Internet, and could be carried out by
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a human with pen and paper. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).14
Thus, under Step 2A(i), we agree with the Examiner that limitations
L1 through L3, i.e., providing account and vehicle data, and presenting a list
of services after authentication, and then transmitting user requests, involves
functions of collecting, comparing, and transmitting data, and thus is a
judicial exception. Ans. 12. We conclude claim 6, under our Revised
Guidance, recites a judicial exception of certain method of organizing
human activity — commercial interactions, and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, 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

14 Our reviewing court recognizes 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). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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to determine whether they integrate the exception into a practical
application.
We conclude none of the claim limitations in claim 6 clearly
addresses a need or improvement in the field of computer technology.
As to the specific limitations, we find limitation L1 identified in
TABLE 1 above 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 determine limitation L3 in claim 6 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).
We conclude each of the limitations of claim 6 recite either abstract
ideas or extra-solution activity as identified in TABLE 1 in Step 2A(i),
supra, and none of the limitations integrate the judicial exception into a
practical application as determined under one or more of the MPEP sections
cited above. The claim as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
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displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019).
Therefore, on this record, Appellant has not shown an improvement to
computer technology or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to method (process) claims, none of which
are on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and
2106.05(c) (Particular Transformation).
Accordingly, we conclude the judicial exception is not integrated into
a practical application, and thus the claim is directed to the judicial
exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
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describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea15; mere instructions to implement an
abstract idea on a computer16; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry.17
The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368. See Berkheimer Memo. In particular, the
Berkheimer Memo points out that a combination of elements is found to be

15 Alice, 573 U.S. at 221–23.
16 Alice, 573 U.S. at 222–23.
17 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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well-understood, conventional, or routine, only if an examiner expressly
finds 1) a citation to an express statement in the specification, 2) a citation to
a court decision noting the well-understood, routine, conventional nature of
the combination of elements, 3) a citation to a publication that demonstrates
the well-understood, routine, conventional nature of the combination of
elements, or 4) a statement of official notice of the well-understood, routine,
conventional nature of the combination. Id. at pp. 3–4.
Appellant argues the Examiner failed to provide sufficient evidence
showing routine, conventional, or well-understood claims. Appeal Br. 8–9.
Appellant also argues that more than a review of the individual components
is required – because, as in BASCOM, an inventive concept can be found in
the non-conventional arrangement of known, conventional pieces. Id. at 6.
We agree with Appellant that an inventive concept might be found in
the non-conventional arrangement of the known, conventional elements
recited in claim 6, and the Examiner erred by not making at least one of the
four types of factual findings required by Berkheimer.
Accordingly, on the record before us, for essentially the reasons
articulated by Appellant in the Appeal Brief (6, 8–9), we do not sustain the
Examiner’s rejection of claims 6, 13, 14, and 20 under 35 U.S.C. § 101, as
directed to patent-ineligible subject matter.
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2. § 103(a) Rejection R2 of Claims 1, 2, 5, 6, 13, 14, and 20
Issue 2
Appellant argues (Appeal Br. 11–14; Reply Br. 4) the Examiner’s
rejection of claims 1 and 618 under 35 U.S.C. § 103(a) as being obvious over
the combination of McIntosh and Chutorash 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 “vehicle identifier and mobile device identifier, both received
from the vehicle,” as recited in claim 1 (emphasis added), and did the
Examiner err in finding the cited prior art combination teaches or suggests a
“device-identifying and vehicle-identifying information, the device-
identifying information retrieved from a mobile device,” as recited in claim 6
(emphasis added)?
Analysis
Although Appellant admits Chutorash’s teaching of transmitting a
VIN along with a transaction request combined with McIntosh’s system
“could solve part of the problem,” Appellant contends, however:
1) there is still no transmission of a mobile device identifier
from the vehicle in addition to the vehicle identifier (claims 1, 6
and 14), 2) there is no retrieval of the mobile device identifier
from the mobile device by the vehicle (claims 6 and 14); and 3)
the portions of Chutorash cited as relating to a mobile phone
(68 and 69) merely teach that the mobile phone is a payment
information source.

18 We group claims 1, 2, and 5 together, and also group claims 6, 13, 14,
and 20. See Claim Grouping, supra.
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Appeal Br. 13.
We are not persuaded by Appellant’s arguments because the
arguments are not commensurate with the scope of the claims. Appellant
argues “there is no retrieval of the mobile device identifier from the mobile
device by the vehicle.” Appeal Br. 13. However, both independent claims 1
and 6 recite “from the vehicle” not “by the vehicle.” Id. (emphasis added).
We agree with the Examiner’s findings because we find McIntosh’s
customer entering a PIN into a cell phone while inside the vehicle teaches or
at least suggests Claim 1’s mobile device identifier or any other identifier
(including a VIN the customer can also type in) “received from the vehicle.”
Final Act. 5–6, citing McIntosh, col. 9, 52–66, col. 10, 2–48. We also find
Chutorash’s vehicle control system sending a vehicle identifier along with
the transaction signal for use as an authentication factor, and only allowing
access if it recognizes both the card information and the VIN teaches or at
least suggests “a received vehicle identifier . . . received from the vehicle.”
Final Act. 7, citing Chutorash ¶¶ 104, 105.
We agree with the Examiner’s findings and legal conclusion, and
emphasize that the Examiner’s ultimate legal conclusion of obviousness is
based upon the combined teachings of the cited references. “[T]he law does
not require that the references be combined for the reasons contemplated by
the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). “[A]ny
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining” references.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Moreover, for a
prima facie case of obviousness to be established, the references need not
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recognize the same problem solved by the Appellant. See In re Kemps, 97
F.3d 1427, 1430 (Fed. Cir. 1996).
We further note Appellant has not demonstrated that the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 420). Although Appellant has not specifically alleged the Examiner
relied upon improper hindsight, Appellant has not provided objective
evidence of secondary considerations which our reviewing court guides
“operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak
Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of representative
independent claims 1 or 6, nor do we find error in the Examiner’s resulting
legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection R2 of
independent claims 1 and 6, and grouped claims 2, 5, 13, 14, and 20, which
variously fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–4) 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
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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, as governed by relevant case law,
we conclude claims 6, 13, 14, and 20 are patenteligible under 35 U.S.C.
§ 101, and we do not sustain Rejection R1.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1, 2, 5, 6, 13, 14, and 20 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis / References Affirmed Reversed
6, 13, 14,
20
101 Subject Matter
Eligibility
6, 13, 14,
20
1, 2, 5, 6,
13, 14, 20
103 Obviousness
McIntosh and
Chutorash
1, 2, 5, 6,
13, 14, 20

Overall
Result
1, 2, 5, 6,
13, 14, 20

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