MIDIGATOR LLC

Patent Trials and Appeals Board

Apr 7, 2020

14292513 - (D) (P.T.A.B. Apr. 7, 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.
14/292,513 05/30/2014 Eric Nordyke 51379-503F01US 8034
64046 7590 04/07/2020
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC NORDYKE, BEAU HALE, and COREY BAGGETT
Appeal 2019-001281
Application 14/292,513
Technology Center 3600
Before CARL L. SILVERMAN, SCOTT E. BAIN, and
MICHAEL T. CYGAN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–6, 8–13, and 15–19, which constitute all claims
pending in the application. Claims 7, 14, and 20 have been 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 Midigator LLC.
Appeal Br. 2.
Appeal 2019-001281
Application 14/292,513
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BACKGROUND
The Claimed Invention
Appellant’s claimed invention relates to “processing of financial
transactions,” and more particularly, to generating chargeback alerts to
merchants based on retrieving and matching chargeback records. Spec.
¶¶ 1–2. A chargeback is a process initiated by a credit card customer (or
other payment card customer) with his or her issuing bank or merchant
processor, in order to dispute a charge or request more information about a
charge. Id. ¶ 2. According to the Specification, chargebacks can be
extremely costly to merchants, because they can result in the loss of a
transaction’s dollar amount as well as additional financial penalties and
handling costs, such as those imposed by the issuing bank. Id.
Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the
invention and the subject matter of the appeal, and reads as follows:
1. A non-transitory computer-readable medium containing
instructions to configure a processor to perform operations
comprising:
generating a user interface for specifying a condition
associated with an alert for a merchant, the condition relating to
one or more chargebacks, the one or more chargebacks
representing a return of funds to one or more purchasers for a
purchase from the merchant, the user interface having a first
input field, a second input field, and a third input field, the first
input field being configured for inputting a first field variable
corresponding to a quantity of chargebacks, the second input
field being configured for inputting a second field variable
corresponding to a threshold value, and the third input field
being configured for inputting an operator that specifies a
relationship between the first field variable and the second field
variable;
receiving, via the user interface, a specification of the
condition, the condition being that a the specified relationship
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Application 14/292,513
3
exists between the first field variable and the second field
variable;
determining whether the condition is satisfied;
in response to the condition being satisfied, generating
an alert comprising a short messaging service (SMS) message,
an email, and/or a voicemail message; and
sending the alert to the merchant.
Appeal Br. 23 (Claims Appendix) (emphases added).
The Rejections on Appeal
Claims 1–6, 8–13, and 15–19 stand rejected under 35 U.S.C. § 112(b)
as indefinite. Final Act. 3; Ans. 3.
Claims 1–6, 8–13, and 15–19 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 4–10; Ans. 4–
11.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error. To the extent consistent with the discussion below, we adopt as our
own the findings and reasons set forth in the rejection from which the appeal
is taken and in the Examiner’s Answer. We also provide the following
discussion for highlighting and emphasis.
Rejection Under 35 U.S.C. § 112(b)
The Examiner finds the limitation “that a the specified relationship” in
claim 1 is indefinite. Final Act. 3. Appellant does not argue this rejection,
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Application 14/292,513
4
and the Examiner maintains the rejection in the Answer. Ans. 3.
Accordingly, we summarily sustain the indefiniteness rejection of claims 1–
6, 8–13, and 15–19.
Rejection Under 35 U.S.C. § 101
The Examiner determined that claim 1 is directed to “maintaining
(i.e., facilitating) chargeback alerts to one or more merchants” based on
“specified conditions” regarding quantity of chargebacks, which is a
fundamental economic principle and therefore an abstract idea. Ans. 4–6;
Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-
step framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”). Further, the Examiner found that claim 1
does not recite a technical improvement, and does not recite additional
limitations that amount to significantly more than the abstract idea. Ans. 5–
6. Accordingly, the Examiner concluded that the claims constitute ineligible
subject matter.
Appellant argues that the Examiner “failed to properly identify the
abstract idea,” and that claim 1 is a “technology-based solution” to a
“technical problem.” Appeal Br. 12–13. Specifically, Appellant argues that
claim 1 recites “technical aspects,” including a user interface with specific
“input fields” corresponding to quantity of chargebacks, and that an alert is
“only triggered when the condition specified by the inputs” is received. Id.
14. Appellant further argues that claim 1 recites “additional elements” that
“amount to significantly more than the abstract idea,” such as a
“[t]ransaction server.” Id. 20.
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After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes)
(“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (“Step 2A,
Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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.
See id. 56 (collectively “Step 2B”).
Appeal 2019-001281
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We begin our review with Step 2A, Prong One of the Guidance, as
applied to Appellant’s claim 1.2 Claim 1 recites the following steps
performed by a processor: (1) generating a “user interface” that includes
three input fields, i.e., (a) a first input field for a variable corresponding to
quantity of chargebacks, (b) a second input field for a variable
corresponding to a “threshold” value, and (c) a third input field for an
“operator” specifying the relationship between the first two variables; (2)
“receiving” condition regarding the relationship between first and second
variables; (3) “determining” whether the condition is satisfied; and (4) if the
condition is satisfied, “generating” an alert and “sending” it to the merchant.
Appeal Br. 23 (Claims Appendix). Upon review of claim 1, we agree with
the Examiner’s determination that the foregoing claimed steps constitute a
fundamental economic principle, namely, facilitating a merchant chargeback
alert, e.g., when a quantity of chargebacks is exceeded.
Specifically, the foregoing step (1) recites accepting input of data
regarding chargeback quantity, a threshold, and a relationship (e.g.,
acceptable number or ration of chargebacks). This information is
fundamental to alerting a merchant of certain number of chargebacks. Step
(2) recites “receiving” the condition, via the user interface, that will dictate
whether a chargeback alert is generated (e.g., when a merchant desires to
receive an alert), and step (3) recites determining whether that condition is
satisfied. Again, generating a merchant alert requires knowing the condition
under which an alert should be generated, so these steps also are part of the

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
Appeal 2019-001281
Application 14/292,513
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fundamental principle. Finally, “generating” the alert and “sending” it also
are fundamental aspects of providing a merchant alert. Thus, claim 1 recites
a fundamental economic principle or practice, which is one of the methods
of organizing human activities deemed abstract under the Guidance. Alice,
573 U.S. at 219–20; Bilski, 561 U.S. at 611–612. See also Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (finding the idea of local processing of payments for remotely
purchased goods to be a fundamental business practice that is abstract under
Alice).
As discussed above, several elements in claim 1 recite collecting,
processing, and sending information (namely, the alert). See supra.
Appellant argues that these limitations, and particularly the claimed “input
fields” are technical in nature and therefore not abstract. Appeal Br. 13–14.
We disagree. Collecting, processing, and sending (or receiving) information
“does not change its character as information,” and is “within the realm of
abstract ideas.” See Electric Power Group, LLC, v. Alstom S.A., 830 F.3d
1350, 1353–54 (Fed. Cir. 2016).
For the foregoing reasons, we agree with the Examiner’s
determination that claim 1 recites an abstract idea.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. As discussed above, Appellant argues that
claim 1 recites a “technology-based solution” to a “technical problem.”
Appeal Br. 12–13; see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). Appellant argues the technical improvement is a
“user interface” for receiving “specific values” defining a condition for
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Application 14/292,513
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triggering an alert for an “electronic payment processing system.” Appeal
Br. 14.
Improving the functioning of a computing device or system, such as
an electronic payment processing system, can reflect integration of an idea
into a “practical application.” Guidance Section III; see also DDR, 773 F.3d
1245; Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016). Appellant, however, does not explain, and we do not
discern, any improvement in technology from the claimed invention.
Compare DDR, 773 F.3d at 1258 (Fed. Cir. 2014) (“the claims at issue here
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.”) (emphasis added);
see also Bascom, 827 F.3d at 1350 (“harness[ing a] technical feature of
network technology in a filtering system” to customize content filtering).
The claims in DDR, for example, were “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” see, e.g., DDR, 773 F.3d at 1257, but Appellant’s
claim 1 recites instructions to generate a payment alert using a generic
processor, circuitry, network, and other generic components. See, e.g., Spec.
¶¶ 85–87 (describing generic “programmable processor,” “integrated
circuitry,” “communication network,” “display device,” and other elements).
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites receiving information relating to chargebacks, and
generating a merchant alert based on that information. Appeal Br. 23
(Claims Appendix). Reciting a result-oriented solution that lacks any details
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as to how the computer performed the modifications is the equivalent of the
words “apply it.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341–42 (Fed. Cir. 2015) (citing Elec. Power Grp., LLC, v.
Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (cautioning against
claims “so result focused, so functional, as to effectively cover any solution
to an identified problem”)); see also CyberSource v. Retail Decisions, Inc.,
654 F.3d 1366, 1375 (Fed. Cir. 2011) (mere data gathering does not make a
claim patent-eligible). The data processing-related elements in claim 1 (such
as “determining” whether a condition is satisfied) do not add meaningfully
to the recited method of organizing human activity.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “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); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites receiving data relating to chargebacks, comparing that
data to a threshold and conditions, and generating merchant alerts
accordingly. See supra. We agree with the Examiner’s finding that simply
using standard, generic computer elements (as described in the Specification,
see supra) to implement chargeback alerts is well understood, routine, and
conventional, and is not a meaningful limitation that amounts to significantly
more than an abstract idea. Ans. 18–19; Spec. ¶¶ 85–87; see supra.
Appellant asserts that a “transaction server” is not well-understood, routine
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and conventional. Appeal Br. 20; Spec. ¶ 34. Claim 1, however, does not
recite a transaction server, nor do any of the other claims on appeal.
Moreover, Appellant’s Specification does not support Appellant’s assertion.
Rather, the Specification describes this server as configurable to “visit each
bank’s web portal” (i.e., communicate with the portals) and “execute
script[s]” for the banks “upon request.” Spec. ¶ 34. The Specification does
not indicate that communicating with portals or executing scripts is unique
to the foregoing transaction server, such that a “transaction server” is
unconventional and different from the generically described “clients and
servers” described elsewhere in the Specification. Id. ¶ 85. Further,
Appellant provides no evidence or persuasive argument to rebut the
Examiner’s findings.
Accordingly, we agree with the Examiner’s determination that claim
1 merely uses generic computer elements in the implementation of an
abstract idea, which does not equate to providing a technical solution to a
technical problem. Ans. 8–10.
For the foregoing reasons, we are not persuaded of error. We sustain
the rejection of claim 1 as constituting patent-ineligible subject matter. For
the same reasons, we sustain the rejections of the remaining claims, which
Appellant does not argue separately.
SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–13,
15–19
112(b) Indefiniteness 1–6, 8–13,
15–19

1–6, 8–13,
15–19
101 Eligibility 1–6, 8–13,
15–19

Appeal 2019-001281
Application 14/292,513
11
Overall
Outcome
1–6, 8–13,
15–19

DECISION
We affirm the Examiner’s decision rejecting claims 1–6, 8–13, and
15–19.
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