Norbert Holl et al.

Patent Trials and Appeals Board

Dec 2, 2020

2020001346 (P.T.A.B. Dec. 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.
13/821,692 05/20/2013 Norbert Holl 19838.64 5330
22913 7590 12/02/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NORBERT HOLL, JÜRGEN SCHMITZ, and DIETER STEIN
____________

Appeal 2020-001346
Application 13/821,692
Technology Center 3600
____________

Before MAHSHID D. SAADAT, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 34–43, which are all the claims pending
in this application.2 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. Appellant identifies the real party in interest as
GIESECKE+DEVRIENT CURRENCY TECHNOLOGY GMBH. Appeal
Br. 2.
2 Claims 1–33 have been canceled.
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STATEMENT OF THE CASE
Appellant’s disclosure is directed to processing bank notes by taking
the serial numbers of the bank notes into consideration. See Spec. ¶ 2.
According to Appellant, the disclosed method helps to identify forgeries by
comparing the serial number of a bank note to be processed with previously
captured and saved serial numbers that have been identified as forgeries.
See Spec. ¶¶ 3–7. Claim 34 is illustrative of the invention and reads as
follows:
34. A method for processing bank notes, the method
comprising:
providing a bank-note processing machine having a sensor
device, a non-volatile memory, and a control device;
automatically processing the bank notes with the bank-
note processing machine, said processing including, upon
inputting the bank notes into the bank-note processing machine,
automatically ascertaining by the bank-note processing machine
characteristics of each of the bank notes, automatically sorting
each of the bank notes, and within the bank-note processing
machine, automatically outputting each of the bank notes to at
least one of a plurality of output pockets of the bank-note
processing machine or an output for further processing based on
the ascertained characteristics;
automatically capturing, by the sensor device, feature data
from each of the bank notes;
automatically delivering the feature data of each of the
bank notes from the sensor device to the control device;
automatically ascertaining, by the bank-note processing
machine, serial numbers of the bank notes by the sensor device
and the control device;
automatically comparing by the control device the serial
numbers with serial numbers stored in the non-volatile memory;
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automatically storing, by the bank-note processing
machine, a specification of a plurality of classes which
respectively characterize at least one property of bank notes;
automatically associating, by the bank-note processing
machine, at least one of the classes with a plurality of serial
numbers, said associating including automatically defining, by
the bank-note processing machine, a range for the plurality of
serial numbers by employing placeholders and automatically
associating, by the bank-note processing machine, at least one
property with the bank note provided with the respective serial
number;
automatically storing, by the bank-note processing
machine, the respective serial number and the associated class or
classes in the non-volatile memory; and
automatically controlling, by the bank-note processing
machine, the processing of the bank notes in the bank-note
processing machine by the control device based on the stored
classes associated with the respective serial numbers.
Appeal Br. 30–31 (Claim Appendix).
Claims 34–43 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. See Final Act. 2–7.
ANALYSIS
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010). Arguments Appellant could have
made, but chose not to make, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. Based upon our de novo review of
the record, we agree with the Examiner and highlight the following for
emphasis.
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Rejection and Arguments
The Examiner determines “the claimed invention is directed to an
abstract idea without significantly more.” Final Act. 2. The Examiner
identifies the functions recited in the independent claims as “a method for
processing bank notes and is considered a judicial exception because it falls
under certain the [sic] category of methods of organizing human activity
such as commercial interactions.” Id. Additionally, the Examiner finds
“[t]his judicial exception is not integrated into a practical application” and
“[t]he claim(s) does/do not include additional elements that are sufficient to
amount to significantly more than the judicial exception.” Id. The
Examiner specifically explains the recited functions describe “a process that,
under the broadest reasonable interpretation, covers methods of organizing
human activity such as commercial interactions” and “other than, a bank-
note processing machine having a sensor device, a non-volatile memory, and
a control device, nothing in the claim precludes the steps from being
performed as a method of organizing human activity.” Final Act. 3–4. The
Examiner also determines that “t]he judicial exception is not integrated into
a practical application” because “the claim only recites the additional
element - a bank-note processing machine having a sensor device, a non-
volatile memory, and a control device to perform all the steps.” Final Act. 4
(citing Spec. ¶ 18 (describing a generic automated teller machine (ATM)
performing generic ATM functions)). Additionally, the Examiner
determines “[m]ere instructions to apply an exception using a generic
computer component cannot provide an inventive concept.” Id. Lastly, the
Examiner determines that the dependent claims recite the same abstract idea
recited in the independent claim “because the additional recited limitations
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only refine the abstract idea further.” Final Act. 5.
Appellant contends the Examiner has not explained how the claims
“are considered to be ‘human activity’ or ‘commercial interactions.’”
Appeal Br. 18. According to Appellant,
Rather than being directed to a “commercial interaction,” method
claim 34 is directed to the processing of bank notes by a bank-
note processing machine. Such processing results in input bank
notes being sorted and output into pockets or output for further
processing, to end that processed bank notes may be sorted,
stacked, bundled, destroyed, removed from circulation, or, for
example, identified as forgeries. (See paragraphs [0002], [0003],
[0021] of Appellant’s specification.)
Id. Additionally, Appellant contends “each step of claim 34 expressly and
purposely requires the step to involve and be performed by the bank-note
processing machine. No human activity is required or involved.” Id.; see
also Reply Br. 3–5. Appellant also contends the judicial exception is
integrated into a practical application because the claims require different
kinds of bank-note processing machines, where the serial number of the
bank notes are ascertained by sensor and control devices and later compared
with other numbers, stored as ranges of numbers, and used in processing of
the bank notes. Appeal Br. 20–21; Reply Br. 6 (citing Spec. ¶ 18).
Appellant argues that the claimed bank-note processing improves the related
technical field by defining permissible serial number ranges and considering
a number of known serial numbers and classes. Appeal Br. 22–23 (citing
Spec. ¶¶ 4, 7–9). With respect to the additional elements, Appellant
contends the claimed bank-note processing machine requires a plurality of
output pockets, sensor devices, and control devices, which perform the
claimed functions such as ascertaining and comparing serial numbers,
defining ranges and controlling the bank-note processing. Appeal Br. 24–
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25; Reply Br. 8–9. Appellant argues that the Examiner’s assertion that such
components are well-understood, routine, and conventional is not sufficient
to establish that the recited components are generic computer components
“because ‘the inventive concept inquiry requires more than recognizing that
each claim element, by itself, was known in the art’ (BASCOM,3 827 F.3d at
1350 (underlining added)). Appeal Br. 27.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” See 35 U.S.C. § 101.4
The Supreme Court, however, 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 Services v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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 id. 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

3 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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 patent-eligibility
inquiry under 35 U.S.C. § 101.
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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; see also 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 183 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–
68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing
Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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, 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.” See 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
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protection.”), 191 (citing Benson, 409 U.S. at 63; Flook, 437 U.S. at 594).
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 (quotations and citations omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requiring generic computer implementation fails to transform that
abstract idea into a patent-eligible invention.” Id. at 212.
The Revised Guidance
In 2019, the USPTO published Revised Guidance in the Federal
Register concerning the application of 35 U.S.C. § 101. See Rev. Guidance,
84 Fed. Reg. 50–57. The Manual of Patent Examining Procedure (“MPEP”)
now incorporates this revised guidance and subsequent updates at Section
2106 (9th ed. Rev. 10.2019, rev. June 2020).
Under the Revised Guidance, we first look to whether the claim
recites any judicial exceptions, including certain groupings of abstract ideas
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(“Step 2A(i)”). 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).

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 Revised Guidance provides that the claim is
patent-eligible at Step 2A(i). This determination concludes the eligibility
analysis, except in rare situations identified in the Revised Guidance.
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 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
(“Step 2A(ii)”).
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The seven identified “practical application” sections of the MPEP,5
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
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application as determined under one
or more of the MPEP sections cited above, do we then determine whether
the additional elements of the claim, considered both individually and in
combination, provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself) (“Step 2B”).
Rev. Guidance, 84 Fed. Reg. 56.
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
at a high level of generality, to the judicial exception, which is indicative

5 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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that an inventive concept may not be present.” See Rev. Guidance, 84 Fed.
Reg. 56; see also MPEP § 2106.05(d).
In the Step 2B analysis, the Examiner is tasked with providing an
evidentiary basis that the additional elements (or combination of elements)
are well-understood, routine or conventional by expressly supporting 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).
Robert W. Bahr, Changes in Examination Procedures Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.), USPTO 1–5 (2018) (“Berkheimer Memo”); see also MPEP
§ 2106.05(d).
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, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
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the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
Discussion
Step 1
Claim 34 is a method (process) claim by reciting 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.
Step 2A(i): Judicial Exception
The preamble of claim 1 recites: “[a] method for processing bank
notes.” Appeal Br. 30 (Claims Appendix). Table I below compares the
remaining limitations of claim 34 to the organizing human activity grouping
of abstract ideas set forth in the Revised Guidance.
Table I
Claim 1 Revised Guidance
(a) processing the bank notes with
the bank-note processing machine,
. . . ascertaining by the bank-note
processing machine characteristics
of each of the bank notes, . . .;

Organizing human activity, e.g.,
fundamental economic principles or
practices (including mitigating risk);
commercial interactions (including
sales activities or behaviors), managing
personal behavior or relationships or
interactions between people (including
social activities, teaching, and
following rules or instructions). Rev.
Guidance, 84 Fed. Reg. 52 n.13.
(b) . . . capturing, by the sensor
device, feature data from each of the
bank notes; . . . delivering the
feature data of each of the bank
notes from the sensor device to the
control device; . . . ascertaining, . . .,
Organizing human activity
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serial numbers of the bank notes . .
.; . . . comparing by the control
device the serial numbers with serial
numbers stored in the non-volatile
memory;
(c) . . . storing, . . ., a specification
of a plurality of classes which
respectively characterize at least
one property of bank notes;
Organizing human activity
(d) . . . associating, . . ., at least one
of the classes with a plurality of
serial numbers, said associating
including automatically defining, by
the bank-note processing machine, a
range for the plurality of serial
numbers by employing placeholders
and automatically associating, . . .,
at least one property with the bank
note provided with the respective
serial number;
Organizing human activity
(e) . . . storing, . . ., the respective
serial number and the associated
class or classes in the non-volatile
memory;
Organizing human activity
(f) . . . controlling, by the bank-note
processing machine, the processing
of the bank notes in the bank-note
processing machine by the control
device based on the stored classes
associated with the respective serial
numbers.
Organizing human activity

Thus, under Step 2A(i), we determine limitations (a)–(f) of claim 34
recite steps that the Revised Guidance categorizes within the “organizing
human activity” grouping of abstract ideas. In particular, these limitations
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recite a fundamental economic practice in bank notes that is used to
ascertain the authenticity and other information related to the category and
condition of the bank notes. Limitations (a)–(f) are also similar to additional
concepts within the “organizing human activity grouping of abstract ideas:
mitigating risk, sales activities or behaviors, and managing personal
behavior.” See Rev. Guidance 84 Fed. Reg. 52 n.13; see also Bilski, 561
U.S. at 611; Alice, 573 U.S. at 219.
We also determine that claim 34 recites limitations related to an act of
judgment and evaluation in the form of the above-cited limitations, which
allows a capturing, delivering, ascertaining, comparing, and associating bank
note serial numbers with other known serial numbers.6 Such acts are
characteristic of mental processes, which comprise a category of abstract
ideas. Many of these steps––capturing, delivering, ascertaining, comparing,
storing, and associating––involve mental processes, i.e., concepts that are
performed in the human mind and can be performed by a person using pen
and paper. The Revised Guidance describes mental processes as
observations, evaluations, judgements, and opinions, where such can be
practically performed in the human mind. October 2019 Update: Subject
Matter Eligibility 7, accessible at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf. Cases reciting steps of collecting,
comparing, and analyzing known information, which are practically

6 See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
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performed in the human mind, are provided as examples of such mental
processes. Id. at 7–8 (citing Classen,7 Electric Power Group8). Rev.
Guidance, 84 Fed. Reg. at 52. Such mental processes are not patent eligible.
E.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(Fed. Cir. 2011) (holding that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
“unpatentable mental process[ ]”) and FairWarning IP, LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding claims to
“detecting fraud and/or misuse in a computer environment based on
analyzing data such as in log files, or other similar records, including user
identifier data” to be an ineligible mental process).
Therefore, Appellant’s arguments do not persuade us of Examiner
error in determining that the recited claim limitations fall under the category
of methods of organizing human activity. See Final Act. 2–3. Although the
claim also recites a “bank-note processing machine having a sensor device, a
non-volatile memory, and a control device,” the performance of claim
limitations using generic technological elements does not remove the claim
from any of the identified groupings of abstract ideas. See Rev. Guidance,
84 Fed. Reg. 52 n.14. Moreover, consistent with judicial precedent and the
Revised Guidance, this additional element is analyzed in Steps 2A(ii) and 2B
to determine whether it integrates the recited abstract idea into a practical

7 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (collecting and comparing known information).
8 Elec. Pwr. Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(treating claims directed to “collecting information, analyzing it, and
displaying certain results of the collection and analysis” as an abstract idea
within the mental processes grouping).
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application or provides an inventive concept. See Final Act. 4; see also our
discussion below.
Step 2A(ii): Integration into a Practical Application
Because the claim recites a patent-ineligible concept, we proceed to
Step 2A(ii). For the reasons that follow, we agree with the Examiner’s
determination that claim 34 does not integrate the judicial exception into a
practical application. See MPEP §§ 2106.05(a)–(c) and (e)–(h).
Although claim 34 additionally recites that certain functions are
performed by “bank-note processing machine having a sensor device, a non-
volatile memory, and a control device,” Appellant presents no persuasive
evidence that practicing the claim results in an improvement to the
functioning of the computer or any other technology.9 In particular, claim
34 is silent regarding specific limitations describing an improved machine,
apparatus, computer, hardware processor, memory, non-transitory machine
readable storage medium, network, database, Internet, etc.
Contrary to Appellant’s contention that claim 34 solves a specific
technological problem and “provides significant improvements to the
technical field of bank-note processing” (Appeal Br. 21–22), claim 34 does
not improve the operation of the bank-note processing machine, which
operates predictably regardless of whether a serial number falls between a
set of stored numbers. That the processing of the bank-notes may be

9 “In determining patent eligibility, [E]xaminers should consider whether the
claim ‘purport(s) to improve the functioning of the computer itself’” or “any
other technology or technical field.” See MPEP § 2106.05(a) (citation
omitted).

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controlled “based on the stored classes associated with the respective serial
numbers” does not amount to an improvement in the device itself.
Nor, is claim 34 like the patent-eligible claims in Enfish, which were
“specifically directed to a self-referential table for a computer database” and
“a specific improvement to the way computers operate.” Enfish, 822 F.3d at
1336–37. By contrast, Appellants’ claim 34 merely recites a bank-note
processing scheme that uses generic computing elements and storage as
tools. Put another way, the claim does little more than apply generic
computing elements and functionalities to a known processing machines for
providing a solution to a known problem (identifying and sorting bank-notes
and identifying forgeries). See, e.g., Spec. ¶¶ 13, 14, 18, 37, and 40
(describing sensors, memories, network devices, and system components in
no more than generic terms).
Furthermore, Appellant does not persuade us of specific limitations
directed to a particular machine in the claim or Specification to support that
the bank-note processing machine and its components are non-generic or
perform non-generic functions. Thus, because the claim is not directed to a
particular machine and merely implements an abstract idea using generic
computer components, it fails to satisfy the “tied to a particular machine”10
prong of the Bilski machine-or-transformation test. See Alice, 573 U.S. at
223; see also Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016).

10 “When determining whether a claim recites significantly more than a
judicial exception, examiners should consider whether the judicial exception
is applied with, or by use of, a particular machine.” See MPEP
§ 2106.05(b).
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Claim 34 recites a series of steps for ascertaining and comparing
bank-note serial numbers to sort and control the processing of bank notes.
These data operations are not a transformation or reduction of an article into
a different state or thing constituting patent-eligible subject matter.11 “The
mere manipulation or reorganization of data . . . does not satisfy the
transformation prong.” CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011). Applying this guidance here, we
determine claim 34 fails to satisfy the transformation prong of the Bilski
machine-or-transformation test.
We determine claim 34 does not add meaningful limitations beyond
generally linking the use of the judicial exception to a particular
technological environment.12 As discussed above, the recited “bank-note
processing machine having a sensor device, a non-volatile memory, and a
control device,” are nothing more than generic components performing
generic functions, which does not amount to significantly more than an
abstract idea. We also note that, although claim 34 relates to ascertaining
the authenticity and the type of a bank note and is implemented in a
computer-based payment device, such recitations do no more than generally
link the use of a judicial exception to a particular field of use or
technological environment. See Rev. Guidance, 84 Fed. Reg. 55.
Lastly, we determine that because Appellant’s claimed technological
elements appear to be merely generic elements being used in their ordinary

11 “Another consideration when determining whether a claim recites
significantly more is whether the claim effects a transformation or reduction
of a particular article to a different state or thing.” See MPEP § 2106.05(c).
12 See MPEP § 2106.05(e) (other meaningful limitations & MPEP
§ 2106.05(h) field of use and technological environment).

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capacity, we determine the additional elements of claim 34 do not amount to
more than a recitation of the words “automatically” perform a generic
function and are no more than mere instructions to implement an abstract
idea on a computerized device.13 See, e.g., TLI Communications LLC v. AV
Automotive LLC, 823 F.3d 607, 615 (Fed. Cir. 2016) (Concluding that
claims reciting the abstract idea of “classifying and storing images in an
organized manner” were directed to patent-ineligible subject matter because
they did no more than “generically spell out what it means to ‘apply [the
recited abstract idea] on a telephone network’” such that “the recited
physical components behave[d] exactly as expected according to their
ordinary use.”)
In view of the foregoing, we determine claim 34 does not recite
additional elements that integrate the judicial exception into a practical
application and, thus, is “directed to” a judicial exception, namely an
abstract idea.
Step 2B: Inventive Concept
Because claim 34 recites a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that, when considered individually or as an ordered combination, is not
“well-understood, routine, conventional” in the field. Rev. Guidance, 84
Fed. Reg. 56. Absence of an inventive concept in shown when the claim
simply appends well-understood, routine, conventional activities previously

13 “[T]ransformation into a patent-eligible application requires more than
simply stat[ing] the [abstract idea] while adding the words ‘apply it.’” See
Alice, 573 U.S. at 221 (quotations and citation omitted); see MPEP
§ 2106.05(f).
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known to the industry, specified at a high level of generality, to the judicial
exception. Id.
The Examiner further determines that claim 34’s additional elements,
such as the sensors, control devices, and outputs, “amounts[sic] to no more
than mere instructions to apply the exception using a generic computer
component.” Ans. 7. Additionally, contrary to Appellant’s assertion that the
Examiner has failed to show that such components are well-understood,
routine, and conventional or that the recited components are generic
computer components, the Examiner has relied on the requirements
established by the Berkheimer decision. In particular, the Examiner refers to
Appellant’s Specification to identify how the additional elements, such as
the “bank-note processing machine having a sensor device, a non-volatile
memory, and a control device” are described to perform the claimed
functions. Ans. 8. The Examiner relies on Appellant’s Figures 1 and 3 and
their related description in paragraphs 12–18 and 36–40 and explains that the
disclosed example identifies an ATM as the claimed bank-note processing
machine, which is known in banking industry as a generic device with
conventional features and generic components such as “a sensor device, a
non-volatile memory, and a control device.” Id. (citing DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (generic
components performing generic functions are not enough to make an
otherwise ineligible claim patent-eligible”); BASCOM, 827 F.3d at 1351
(“rather than reciting any nonconventional components, or even a non-
conventional arrangement of known, conventional pieces, the additional
elements call for performing functions on generic components”)). The
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Examiner concludes that the recited “bank-note processing machine is
merely a platform on which the abstract idea is implemented.” Ans. 10.
We agree with the Examiner and find that Appellant’s reliance on
Berkheimer as evidence of Examiner error is also misplaced. Appeal Br.
15–16; Reply Br. 8 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1368
(Fed. Cir. 2018)). The exemplary claim limitation at issue in Berkheimer
was “storing a reconciled object structure in the archive without substantial
redundancy,” which the court found was “directed to [an] arguably
unconventional inventive concept described in the [S]pecification.” 881
F.3d at 1370. There was no evidence in the record that this limitation
described well-understood, routine, and conventional technology. Id. at
1368. The court held there was a “genuine issue of material fact” and that
“fact questions created by the [S]pecification’s disclosure” precluded
summary judgment of invalidity under step two of the Alice/Mayo
framework. Id. Here, by contrast, the Examiner has determined—and cited
the Specification and case law as evidence—that the additional technological
limitations of claim 34 are merely generic and perform functions that are
well-understood, routine, and conventional. Final 4–5; see also Ans. 7–8.
Additionally and as discussed above, a complete review of the Specification
amply supports such a determination. See, e.g., Figs. 1, 3; Spec. ¶¶ 18
(describing the bank-note processing machine as a generic automatic teller
machine); 13, 14, 37, and 40 (describing sensors, memories, network
devices, and system components in no more than generic terms). We also
observe, there is no discussion of any special functionality or considerations
for a technological aspect of any technological component recited in claim 1.
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As such, claim 34 does not indicate that specialized computer
hardware is necessary to implement the claimed systems, nor does it require
any nonconventional sensors, computer, network, or memory, or even a
nonconventional and non-generic arrangement of known, conventional
pieces, but merely call for performance of the claimed ascertaining the bank-
note serial numbers, comparing and storing the numbers, and controlling the
processing of the bank notes. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (finding the invocation of computers and
generic functionality adds no inventive concept); MPEP § 2106.05(d)
(“Courts have held computer‐implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions merely used to
implement an abstract idea . . . .”)).
Therefore, because the additional elements of claim 34 recite only
well-understood, routine, and conventional technology, we determine that
claim 34, as well as the remaining claims dependent therefrom, viewing their
limitations “both individually and as an ordered combination,” do not recite
significantly more than the judicial exception to transform the claim into
patent-eligible subject matter. See Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 79).
Conclusion
For at least the above reasons, we agree with the Examiner that claim
34 is “directed to” an abstract idea and do not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 34, as well as the
remaining claims which fail to include additional elements that add
significantly more to the abstract idea, under 35 U.S.C. § 101.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
34–43 101 Eligibility 34–43

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