Michael Zhao et al.

Patent Trials and Appeals Board

Jan 30, 2020

14575058 - (D) (P.T.A.B. Jan. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/575,058 12/18/2014 Michael ZHAO 0076412-000300 1002
125578 7590 01/30/2020
MASTERCARD
C/O Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22314
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
ADIPDOC1@BIPC.com
charles.wieland@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ZHAO, JEREMY PASTORE, and
ARUN ELANGOVAN

Appeal 2018-006465
Application 14/575,058
Technology Center 3600

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
MIRIAM L. QUINN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification, filed Dec. 18, 2014 (“Spec.”); Final Office
Action, mailed Oct. 5, 2017 (“Final Act.”); Appeal Brief, filed December 4,
2017 (“Appeal Br.”); Examiner’s Answer, mailed Apr. 5, 2018 (“Ans.”), and
Reply Brief, filed June 5, 2018 (“Reply Br.”).
2 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
Mastercard International, Inc. Appeal Br. 2.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and a processing server in a payment network for suppressing
payment transactions associated with a user’s account based on threshold
levels per industry set by the user to prevent overspending in particular
industries. Spec. ¶¶ 1, 5–6.
Claims 1 and 11 are independent. Claim 1, reproduced below is
illustrative of the claimed subject matter:
1. A method for suppressing payment transactions
based on industry classification, comprising:
storing, in an account database of a processing server of a
payment network, an account profile, wherein the account
profile includes data related to one or more transaction accounts
including at least a plurality of industry thresholds, each
industry threshold being associated with a merchant industry;
receiving, by a receiving device of the processing server
of the payment network, an authorization request for a payment
transaction, wherein the authorization request includes at least a
transaction amount and a merchant identifier associated with a
merchant involved in the payment transaction;
identifying, by a processing device of the processing
server of the payment network, a specific merchant industry
associated with the merchant involved in the payment
transaction based on at least the merchant identifier;
processing, by the processing device of the processing
server of the payment network, the payment transaction using
the payment network if the transaction amount does not exceed
an industry threshold of the plurality of industry thresholds
associated with the specific merchant industry; and
transmitting, by a transmitting device of the processing
server of the payment network, an authorization response
declining the payment transaction if the transaction amount
exceeds the industry threshold of the plurality of industry
thresholds associated with the specific merchant industry.

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III. REJECTIONS
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as not
directed to patent eligible subject matter. Final Act. 3–8.
IV. ANALYSIS
1. Patent Eligibility Rejection
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-step framework, described in Mayo and Alice.
Alice, 573 U.S. 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook), 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. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
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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.
The Office published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office
published an update to that guidance. October 2019 Patent Eligibility
Guidance Update, 84 Fed. Reg. 55,942 (hereinafter “PEG Update”). Under
the 2019 PEG and PEG 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); and

(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).3

See 2019 PEG, 52, and 55–56. Only if a claim: (1) recites a judicial
exception; and (2) does not integrate that exception into a practical
application, does the office 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.
See 2019 PEG 56.

3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first part of the Alice inquiry, the Examiner determines that
claims 1–20 are directed to “a series of behavioral activities including e.g.
storing, in an account database, an account profile ... , receiving ... an
authorization request. .. , identifying ... a specific merchant industry ... ,
processing ... the payment transaction if the transaction amount does not
exceed an industry threshold ... , and transmitting ... an authorization
response ...” Final Act. 3–4. According to the Examiner, these underlying
steps, “when viewed individually and in combination, constitute an abstract
idea of certain methods of organizing human activity.” Id. at 4. Final Act.
2–3. Further, the Examiner determines the “data processing involved in the
claims (e.g. .... identifying ... a specific merchant industry ... based on at
least the merchant identifier, processing ... the payment transaction if the
transaction amount does not exceed an industry threshold) …” involves
“collecting and comparing known information” (Classen), “obtaining and
comparing intangible data” (Cybersource), …, and displaying certain results
of the collection and analysis” (Electric Power Group), and “comparing
information regarding a sample or test subject to a control or target data”
(Ambry/Myriad CAFC); Id. Furthermore, the Examiner determines that the
claims are not directed to improving computer technology, but to improving
the abstract idea itself. Id. at 4–5.
In the second part of the Alice inquiry, the Examiner determines the
claims do not recite additional elements sufficient to amount to significantly
more than the abstract idea. Id. at 5. According to the Examiner, the claim
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recitations of “collecting data (‘receiving ... an authorization request for a
payment transaction ... receiving ... a notification from the computing device
indicating approval. .. receiving ... a request. .. requesting resetting of the
industry threshold ...’) and performing of generic computer functions (e.g.
identifying ... a specific merchant industry ... , processing ... the payment
transaction ... , resetting ... the industry threshold ... , and transmitting
data/information via network) are well-understood, routine and conventional
activities previously known to the industry.” Id. at 5–6.
Appellant’s Contentions
Appellant argues while the claims recite “a series of steps for
suppressing payment transaction[s] based on industry classification,”
the recited steps of receiving authorization request for payment transaction,
processing the request, and transmitting authorization to a merchant if the
requested amount does not exceed a threshold for a particular category take
place in a processing server of a payment network. Appeal Br. 6–7.
Appellant argues that the Specification defines the “authorization request” as
a special type of transaction message with formatted data that must adhere to
standards governing the exchange of messages related to financial
transactions. Appeal Br. 7. Likewise, Appellant argues that the
Specification defines the payment network as one utilizing a specialized
infrastructure and protocols for transmitting the authorization requests and
messages as part of processing payment transactions. Id. Accordingly,
Appellant submits that one of ordinary skill would appreciate such a
payment network for processing authorization requests is not conventional
or routine. Id. Further, Appellant argues because the payment network uses
a processing server that itself cuts the number of transactions in half as well
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as reduces the processing load of financial institutions, it is directed to an
improvement over routine and traditional four party payment transaction
processing systems. Id. at 8–9. Furthermore, Appellant argues that because
the claimed methodology of processing the authorization request at a
processing server within the payment network provides a technological
solution, arising within the realm of networks, that reduces bandwidth and
processing times in a payment processing system, it is directed to patent
eligible subject matter. Id. at 9–10.
Our Review
Applying the guidance set forth in the 2019 PEG, we determine
whether the Examiner has erred in rejecting the claims as directed to patent
ineligible subject matter.
In revised step 1 of the 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter. Because independent claim 1 recites
a “method” including a number of steps, claim 1 falls within the “process”
category of patent-eligible subject matter. Because independent claim 11
recites a “system” including a processor for performing various functions,
claim 11 falls within the “machine” category of patent-eligible subject
matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
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Independent claim 1 recites, inter alia, the following claim steps performed
by a processing server:
(1) storing in an account database transaction accounts
including a merchant industry threshold;
(2) receiving an authorization request for a payment
transaction ;
(3) identifying a merchant industry associated with the
payment transaction;
(4) processing the payment transaction if the transaction
amount does not exceed an industry threshold; and
(5) transmitting an authorization response declining the
payment transaction if the transaction amount exceeds
the industry threshold.
As an initial matter, we note Appellant does not dispute the
Examiner’s determination that these limitations relate to the abstract idea of
“suppressing payment transaction[s] based on industry classification,” which
has been identified as a fundamental economic practice long prevalent in
commerce. Appeal Br. 6. Therefore, we find unrebutted the Examiner’s
determination that the recited steps of “storing, in an account database, an
account profile ... , receiving ... an authorization request. .. , identifying ... a
specific merchant industry ... ,processing ... the payment transaction if the
transaction amount does not exceed an industry threshold ... , and
transmitting ... an authorization response),” are directed to “[c]ertain
methods of organizing human activity.” 84 Fed. Reg. 52. We have
reviewed the claim in light of our guidance and we agree with the Examiner
that independent claims 1 and 11 recite the judicial exception of organizing
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human activity such as suppressing payment transaction[s] based on industry
classification in a series of steps performed by the processing server.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h).4 “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to 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 exception. 2019 PEG at 53.
Appellant’s claims 1 and 11 recite computer-related limitations (e.g., a
processing server of a payment network). Appellant argues the following:
Persons having ordinary skill in the art will readily
understand that an “authorization request” is a special type of
transaction message, where transaction messages are specially
formatted data messages that must adhere to standards
governing the exchange thereof as related to financial
transactions. In addition, payment networks, as defined in the

4 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a
mobile device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
Id.
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present specification, utilize specialized infrastructure and
protocols for transmitting authorization requests and other
messages as part of the processing of payment transactions.

Appeal Br. 7.
The invention recited in the appealed claims
provides for a technical improvement over this type of
system architecture. Specifically, in the appealed claims,
the processing server will itself decline a transaction and
provide the corresponding authorization response if an
application merchant industry threshold will be exceeded
by the transaction. This leads to several benefits over
traditional systems. By the payment network performing
the decline, there is no transmission of the authorization
request to the issuer, processing performed by the issuer,
or transmission of the authorization response from the
issuer to the payment network. The claimed invention
thus cuts the number of transmissions in half as well as
reduces the processing load of issuing financial
institutions. Transaction times for payment transactions
are often measured in milli- or even nanoseconds, with
the number of payment transactions processed via
payment networks on any given day being in the
hundreds of millions, and thus the ability to cut the
number of transmissions in half provides for a drastic
increase in system efficiency and processing feed and a
significant decrease in used bandwidth.
Id. at 8.
We do not find the computer-related limitations are sufficient to
integrate the judicial exception into a practical application. The
Specification does not provide additional details about the processing server
that would distinguish it from any generic processing device with storage in
a stand-alone or network environment. Spec. ¶ 20. Although we agree that
the processing server includes specific instructions for performing the
recited steps, Appellant has not explained persuasively how the claimed data
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structures and thresholds improve the way the processing server stores and
retrieves data in memory. See MPEP § 2106.05(a). Rather, the claims
merely adapt the method of organizing the human activity of suppressing
payment transaction[s] based on industry classification in a series of steps
performed by the processing server. See Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases
have made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.”); see also Bancorp Services, L.L.C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
“employed only for its most basic function . . . does not impose meaningful
limits on the scope of those claims.”).
Further, Appellant’s identified improvements relate to the abstract
idea itself, not improvements to a technology or computer functionality. We
agree with Appellant that, by screening each payment request to determine
whether to authorize a transaction request, the processing server cuts the
number of transmissions and the processing load in the payment network,
and thereby decreases the overall bandwidth and processing feed on the
network. However, the claims do not recite technical improvements to the
payment network, nor does the Specification provide a specific layout for an
improved payment network. Although Appellant alleges that the payment
network needs to adhere to a specific infrastructure and protocol for
transmitting specially formatted data, Appellant has not shown where in the
claims or the Specification those unique features of the network are
disclosed. Instead, the claims and Specification merely recite restructuring
the network by using the processing server to screen transaction requests
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thereby cutting down the amount of transmissions and processing thereon.
Spec. ¶ 20. Thus, on the record before us, the cited claimed operations for
suppressing payment transaction[s] exceeding a threshold based on industry
classification limitations do not improve the functionality of the processing
server by, nor do they achieve an improved technological result in
conventional industry practice. McRO, Inc. v. Bandai Namco Games Am.,
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Instead, the claim limitations
merely use the processing server to improve the human activity of
suppressing payment transaction[s] based on industry classification.
Because claim steps 1–5, outlined above, do not (1) provide any
technical solution to a technical problem as determined in DDR Holdings;5
(2) provide any particular practical application as determined in BASCOM;6
or (3) entail an unconventional technological solution to a technological
problem as determined in Amdocs,7 we agree with the Examiner’s
determination that Appellant’s claims 1 and 11 are directed to an abstract
idea that is not integrated into a practical application.

5 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR's claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257.
6 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
7 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; 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. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
Appellant argues the following:
[T]he appealed claims recite the use of a non-routine and
unconventional system architecture in terms of how payment
transactions are processed via the use of thresholds associated with
merchant industries. The result is a technical improvement in the
realm of transaction processing networks, where the number of
transmissions can be reduced significantly and issuers completely
removed from the transaction processing process in cases where a
merchant industry threshold level is exceeded. The Applicant has thus
improved an existing technological process, which is sufficient for
patent eligibility as set forth in Alice. In addition, the claims recite
a technical solution to a technical problem arising in the realm of
computing networks, specifically as to how to reduce bandwidth and
processing times for an overworked payment processing system,
where such solutions have been found to be patent eligible in DDR
Holdings and Enfish. Thus, the Appellant respectfully submits that the
appealed claims are directed toward patent-eligible subject matter for
at least the above reasons.
Appeal Br. 8–9.
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We discern no additional element or combination of elements recited
in Appellant’s independent claims 1 and 11 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. We are
not persuaded by Appellant’s remarks, noted above, alleging that the claims
are directed to a non-routine and unconventional system architecture in
terms of how payment transactions are processed via the use of thresholds
associated with merchant industries. We agree with the Examiner that using
a generic computer upfront to collect, analyze, process data and displaying
the result in the manner suggested is a routine and conventional approach to
data management, as well as to reduce bandwidth consumption in a network.
Final Act. 4. As noted above, Appellant does not direct our attention to any
portion of the Specification indicating that the claimed processor performs
anything other than well-understood, routine, and conventional functions,
such as receiving, analyzing, processing, and displaying data. See Elec.
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(“Nothing in the claims, understood in light of the [S]pecification, requires
anything other than off-the-shelf, conventional computer, network, and
display technology for gathering, sending, and presenting the desired
information.”); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive.”);
Alice, 573 U.S. at 224–26 (receiving, storing, sending information over
networks insufficient to add an inventive concept). Instead, Appellant’s
claimed subject matter simply uses generic computer components (computer
system) to perform the abstract idea of suppressing payment transaction[s]
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based on industry classification. Appeal Br. 8; see also Spec. ¶ 20. As
noted above, the use of a generic computer does not alone transform an
otherwise abstract idea into patent-eligible subject matter. As our reviewing
court has observed, “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, the claim is
devoid of an inventive concept. See Alice, 573 U.S. at 217. Appellant is
reminded that “the ‘inventive concept’ [under the second part of the
Mayo/Alice test] 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 v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore,
J., concurring). “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.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). We, therefore, agree with the Examiner that the computer
functions recited in the claims were, in fact, generic, and are met by
numerous precedent establishing that using a generic computer to expedite
and automate processes traditionally performed manually, or that are
otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Final Act. 10; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); Bancorp Services,
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L.L.C., 687 F.3d at 1278 (“The computer required by some of Bancorp’s
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.”). Therefore, we conclude that claim 1’s elements,
both individually and as an ordered combination, do not provide an
inventive concept. See 84 Fed. Reg. 56; Berkheimer v. HP Inc., 881 F.3d
1360, 1370 (Fed. Cir. 2018) (“The limitations amount to no more than
performing the abstract idea of parsing and comparing data with
conventional computer components.”); Bancorp, 687 F.3d at 1278 (“[T]he
use of a computer in an otherwise patent-ineligible process for no more than
its most basic function—making calculations or computations—fails to
circumvent the prohibition against patenting abstract ideas and mental
processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 217–218 (quoting Mayo 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Appellant is further reminded that, in many cases, “relying on a
computer to perform routine tasks more quickly or more accurately is
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insufficient to render a claim patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice,
573 U.S. at 224) (“[U]se of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” is not an
inventive concept.); see also, e.g., Intellectual Ventures I LLC v. Capital
One Bank, 792 F.3d at 1370 (“[M]erely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.”). Therefore, the functions recited
in independent claims 1 and 11 do not add meaningful limitations beyond
generally linking the abstract idea to the particular technological
environment. See Final Act 4–6.
Because Appellant’s claims 1 and 11 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second part of the Alice analysis, we sustain the Examiner’s rejection of
independent claims 1 and 14 under 35 U.S.C. § 101.
Appellant does not present additional arguments for dependent claims
2–10, and 12–20. Accordingly, for the same reasons as set forth for
independent claims 1 and 11, we sustain the Examiner’s 35 U.S.C. § 101
rejection of dependent claims 2–10 and 12–20.
VI. CONCLUSION
We affirm the Examiner’s patent eligibility rejections of claims 1–20
under 35 U.S.C. § 101.
Appeal 2018-006465
Application 14/575,058

19
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED