Pourfallah, Stacy et al.

Patent Trials and Appeals Board

Apr 24, 2020

12630748 - (D) (P.T.A.B. Apr. 24, 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.
12/630,748 12/03/2009 Stacy Pourfallah P-14295US/090426-30173 1330
113349 7590 04/24/2020
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
YU, ARIEL J
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STACY POURFALLAH and JANET PRUITT
____________

Appeal 2019-002814
Application 12/630,748
Technology Center 3600
____________

Before JEFFREY N. FREDMAN, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to a
processor-implemented method for tracking and reporting qualified
purchases for a payment account. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter
a New Ground of Rejection.

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 VISA
U.S.A. Inc. (see App. Br. 2).
2 We have considered the Specification of Dec. 3, 2009 (“Spec.”); Final
Office Action of Feb. 15, 2018 (“Final Act.”); Appeal Brief of Sept. 28,
2018 (“App. Br.”); and Examiner’s Answer of Dec. 26, 2018 (“Ans.”).
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Statement of the Case
Background
In the United States, insurance companies provide policies with
different deductible levels designating an amount of money that
the policyholder has to pay toward specified health related
expenses before the insurance company begins paying for those
expenses. Policyholders with higher deductible level policies
are eligible to establish a health savings account under the
regulations of the U.S. Internal Review Service (IRS).
(Spec. ¶ 8). “To preserve the tax-advantaged status of health savings
account funds, the health savings account may be used to pay for only those
health related products and services that are defined by the IRS regulations
as deductible medical expenses” (id.). “The IRS may audit a health savings
account . . . This requires the policyholder to perform meticulous
recordkeeping” (id. ¶ 9). “Many people find it difficult to perform the
necessary recordkeeping and thus do not participate in a health savings
account or use a Medicare Advantage plan, even though they would benefit
from doing so” (id.).
The Specification teaches “it is desirable to provide a recordkeeping
program to track transactions that involve accounts like a health savings
account or Medicare Advantage plan and provide the necessary
documentation to substantiate proper use of that account” (Spec. ¶ 10).
The Claims
Claims 1, 7, 8, 10, and 12 are on appeal. Claim 1 is reproduced
below, reformatted for clarity, and with bracketed letters added to identify
certain language:
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1. A processor-implemented method for tracking and
reporting qualified purchases for a payment account, the
processor-implemented method comprising:
[a] receiving, from an issuer, a payment authorization in a
computer-executable message approving the use of a payment
account to conduct a sales transaction for a purchase of one or
more items by a consumer with a merchant;
[b] detecting, via one or more processors at a transaction
handler, whether the payment account indicated in the payment
authorization in the computer-executable message is a health
savings account and whether each item associated with the sales
transaction is qualified for purchase under the account;
[c] as a result of the detection from the computer-executable
message that the payment account is the health saving account
and not other types of accounts, identifying, via the one or more
processors at the transaction handler, the health saving account
in a database managed by the transaction handler and
independent of the merchant;
[d] amending, via the one or more processors, independent
of input from the consumer, the payment authorization by
attaching a request for supplying transaction information to the
payment authorization by the merchant;
[e] transmitting, from the one or more processors at the
transaction handler to the merchant, the amended payment
authorization;
[f] receiving, from the merchant, a record reply that includes
the requested transaction information for one or more qualified
items associated with the sales transaction;
[g] storing, in a data storage element the received transaction
information in association with the payment account;
[h] receiving, from the consumer, an account usage report
request; and
[i] in response to receiving the account usage report request,
automatically generating, via one or more processors, a
formatted account usage report by assembling the stored
transaction information associated with the payment account,
the formatted account usage report including a summary of the
sales transaction on the one or more qualified items for use of
the payment account.
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The Rejection
The Examiner rejected claims 1, 7, 8, 10, and 12 under 35 U.S.C.
§ 103 as obvious over Reed,3 Smith Jr.,4 and Patricelli5 (Final Act. 2–12).
Appellant does not argue the claims separately, so claims 7, 8, 10, and
12 stand or fall with claim 1 because separate reasons for their patentability
were not provided in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(iv).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that Reed, Smith,
Jr., and Patricelli render claim 1 obvious?
Findings of Fact (“FF”)
1. Reed teaches, regarding the preamble of claim 1,
a real time account control method and system that allows only
eligible and authorized items to be purchased using the account
. . . funds available in an account, for example, a flexible
spending account (FSA) or a health reimbursement arrangement
(HRA), are accessed to pay for over the counter (OTC)
medications or any other eligible goods and services.
(Reed 1:15–17).
2. Reed teaches, regarding step (a) of claim 1, that after a
merchant recognizes “eligible healthcare spending account items by the POS
[(point of sale)] system” the merchant sends “healthcare spending account
item transaction data to a decision system” (Reed 4:44–47). Reed teaches
the issuer then “substantiat[es] at the decision system which eligible
healthcare spending account items are authorized” and sends a “response

3 Reed et al., US 7,866,548 B2, issued Jan. 11, 2011.
4 Smith, Jr. et al., US 7,680,737 B2, issued Mar. 16, 2010.
5 Patricelli et al., US 2002/0198831 A1, published Dec. 26, 2002.
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record with a preauthorized transaction amount from the decision system to
the merchant for financial processing” (Reed 4:47–53).
3. Reed teaches, regarding step (b) of claim 1, “the healthcare
spending account device identifying at least one healthcare spending
account” and “recognizing the eligible healthcare spending account items by
the POS system” (Reed 4:42–45). Reed teaches this operates using an
“input device capable of recognizing a healthcare spending account device
identifying the at least one healthcare spending account” (Reed 5:16–19).
4. Reed teaches, regarding step (c) of claim 1, “identifying at least
one healthcare spending account” (Reed 4:43–44). Reed teaches this
operates with “a transaction processor system including: (1.) a first data
structure configured to contain eligible item identifiers for items that are
eligible for purchase using the at least one healthcare spending account”
(Reed 5:21–24).
5. Reed teaches, regarding step (d), that
the transaction data typically including information on each
eligible item, such as, for example, the UPC and price, and the
healthcare spending account detail. The transaction processor
system 30 compares the eligible items to the authorized items
and transmits transaction data back to the point of sale system
20 to identify the cost for the eligible and authorized items.
(Reed 8:56–59). That is, the transaction processor is sending a request for
additional information to the merchant, here pricing information for
approved products.
6. Reed teaches, regarding step (e), that “the merchant sends the
UPCs of the individual eligible items in the transaction, along with their
costs and the card number (which includes the BIN number) to a designated
transaction processor” (Reed 10:49–52).
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7. Reed further teaches, regarding steps (d) and (e), that
“transaction processor receives the UPCs and their associated costs and, in
item 57, compares each against a list of healthcare spending account
authorized items as defined by the subscriber’s plan sponsor” (Reed 10:54–
57).
8. Reed teaches, regarding step (f), “classifying items by their
eligibility for reimbursement by the merchant and identifying merchant
categories for each item” and “sending healthcare spending account item
transaction data to a decision system” (Reed 4:38–46).
9. Reed teaches, regarding step (g), that the
transaction processor also preferably stores permanently,
for example in third data structure 36, the following
information for each transaction, and additionally transmits this
information back to the insurer and/or administrator for further
use and tabulation;
Subscriber identification number,
Card account number,
Department number of each UPC,
All authorized and unauthorized UPC items,
Dollar amounts of each item,
Merchant identification number,
Approved amount with tax,
Date and time of transaction, and
Transaction identification number.

(Reed 11:18–27).
10. Reed teaches, regarding steps (h) and (i), that:
Output screen 28 is typically used to keep the customer
informed by, for example, identifying the items to be purchased
and their price and other information about the transaction, such
as, for example, the amount due from the customer for the
transaction, and information about what amounts are authorized
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for eligible items under the customer’s healthcare spending
account.
(Reed 7:61–67).
11. Patricelli teaches “methods for processing flexible spending
account transactions, and more particularly, to an improved system and
method for alleviating the need for the customer to provide an out-of-pocket
payment at the time of sale and to later process a flexible spending account
reimbursement for the patient responsible balance” (Patricelli ¶ 2).
12 Patricelli teaches that one problem with stored value cards is
that “if a purchaser simultaneously purchases both reimbursable and non-
reimbursable items, the information typically provided by a stored value
card transaction (e.g., merchant category code and purchase amount) is
insufficient to substantiate the expense” (Patricelli ¶ 10).
13. Patricelli teaches, regarding step (d), that “there is a need for an
improved system and method for processing FSA transactions which assures
that only allowed expenses are reimbursed” (Patricelli ¶ 11).
14. Patricelli teaches “the payor transaction database allows the
service provider to rapidly and reliably substantiate whether the expenses
associated with the requests for authorization are IRS allowed expenses
simply by confirming that each customer request transaction matches a
corresponding transaction in the payor transaction database” (Patricelli
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¶ 14).
15. Figure 19 of Smith, Jr. is reproduced below:

As shown in FIG. 19, the accept/reject transaction report page
340 can include a view printable report selection mechanism
342 and/or a print receipts selection mechanism 344. The user
can select the view printable report selection mechanism 342 in
order to view a version of the accept/reject transaction report
page 340.
(Smith, Jr. 28:28–33).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2–12; FF 1–15) and agree that
the claims are obvious over Reed, Smith, Jr., and Patricelli. We address
Appellant’s arguments below.
Appellant contends “FIG. 1 of Patricelli clearly shows that service
provider 120 is defined as a pharmacy or a merchant,” but the “recited
claims recite that a database be managed by the transaction handler and
independent of the merchant” (Appeal Br. 9–10). Thus, Appellant
contends that Patricelli teaches away from this claim limitation.
We find this argument unpersuasive because Reed teaches “the
merchant sends the UPCs of the individual eligible items in the transaction,
along with their costs and the card number (which includes the BIN number)
to a designated transaction processor” (FF 6). Reed also teaches “a
transaction processor system including: (1.) a first data structure” (FF 4).
Thus, Reed is reasonably understood as suggesting a database that is
managed by a transaction processor that is independent of the merchant, that
sends the data to the transaction processor for processing using the
transaction processor database (FF 4, 7). “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Here, the combination of Reed and Patricelli suggests the limitation
argued by Appellant.
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We also do not find the teaching away argument persuasive. “The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from . . . because such disclosure does not criticize, discredit,
or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Appellant does not identify any disclosure in
Patricelli that criticizes, discredits or discourages the use of a transaction
processor system.
Appellant contends that their “embodiments of the invention remove
the need for the merchant to maintain and store information regarding each
health savings account transaction” (Appeal Br. 10).
We find this argument unpersuasive. To the extent that Appellant is
contending there is some unexpected result or other secondary consideration,
no evidence is adduced relative to the teachings of Reed to perform
processing steps at a transaction processor independent of the merchant (FF
2, 4, 6, 7).
Appellant contends that “Patricelli does not verify eligibility. It’s the
service provider that performs the verification process, and that is why
Patricelli makes sure PBM’s copy of the data from the service provider is
accurate because it relies on the service provider to verify such eligibility
data” (Appeal Br. 11). Appellant contends that in Patricelli “claim
adjudication has everything to do with insurance coverage, etc., and not
about whether the payment account relates to a HSA account” (id.).
We find this argument unpersuasive because, as noted above, Reed
teaches the “transaction processor receives the UPCs and their associated
costs and, in item 57, compares each against a list of healthcare spending
account authorized items as defined by the subscriber’s plan sponsor” (FF
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7). Thus Reed teaches the transaction processor, not the merchant or insurer,
verifies eligibility data.
Conclusion of Law
A preponderance of the evidence of record support the Examiner’s
conclusion that Reed, Smith, Jr., and Patricelli render claim 1 obvious.

New Ground of Rejection
We reject claims 1, 7, 8, 10, and 12 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
Principles of Law
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 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. See, 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. 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.”).
Concepts determined to be abstract ideas, and therefore patent
ineligible, include certain methods of organizing human activity, such as
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fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611) and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(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)) or software “purporting to improve the
functioning of the computer itself” (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016)).
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 (quotation marks 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 requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office published guidance
on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance (“Guidance”).6 Under the Guidance, in
determining what concept the claim is “directed to,” we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods

6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50–57 (January 7, 2019).
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of organizing human activity such as a fundamental economic
practice, or mental processes) (Guidance Step 2A, Prong 1);
and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)) (Guidance Step 2A, Prong 2).
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 contains an “‘inventive concept’ sufficient to ‘transform’”
the claimed judicial exception into a patent-eligible application of the
judicial exception. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82).
In so doing, we thus consider whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine and
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.
(Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54–56.
Analysis
Applying the Alice/Mayo analysis and the Revised Guidance to the
facts on this record, we find that Appellant’s claims 1, 7, 8, 10, and 12 are
directed to patent-ineligible subject matter. Because the same issues are
present in each of the claims, we focus our consideration on representative
claim 1. The same analysis applied below to claim 1 also applies to the
other identified rejected claims.
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A. Guidance Step 1
We consider whether the claimed subject matter falls within the four
statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” 2019 Guidance 53–54; see 35
U.S.C. § 101. Claim 1 recites a “method” and therefore falls within the
“process” category. Consequently, we proceed to the next step of the
analysis.
B. Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
Claim 1 includes limitations that fall within two of the three of the
judicially-excepted groupings listed in the Revised Guidance: fundamental
economic practices and mental processes. The claimed method is directed to
a mental process because it includes “claimed steps [that] can be performed
by a human analog (i.e., by hand or thinking)” (Final Act. 11). CyberSource
instructs that “a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373, 1375 (Fed. Cir. 2011)
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”). The claimed method is directed to a fundamental
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economic/accounting practice because the claim recites “commonplace
business methods aimed at processing business information, applying known
business processes to particular technological environments.” Versata Dev.
Grp. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015).
Claim 1 is drawn to a method for tracking and reporting customer
purchases in a health savings account. The Specification acknowledges that
the method “relates to accounts, such as Health Savings Accounts (HSAs)
. . . and in particular to record keeping required of users of such accounts”
(Spec. ¶ 2). The Specification further acknowledges that these accounts
“require[] the policyholder to perform meticulous recordkeeping and to
retain those receipts for several years. Many people find it difficult to
perform the necessary recordkeeping” (Spec. ¶ 9). The Specification solves
this problem by providing “a recordkeeping program to track transaction”
(Spec. ¶ 10).
The steps recited by the claims are concepts that can be performed in
the human mind or by a human with pen and paper, and, therefore qualify as
“mental processes” under the 2019 Guidance. See 2019 Guidance at 52.
Indeed, as noted above, the Specification recognizes that this record keeping
may be performed by a policyholder without the claimed system (see Spec.
¶ 9). This is the mental process of analyzing purchase data for IRS
authorized health items and recognizing which items may be purchased
using a health savings account. “The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans have always
performed these functions.” Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014).
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We also find that the instant claims’ recitation of a “method for
tracking” which purchased products may properly be charged to a health
savings account (which method is implemented through the recited steps
[a]–[g]) is “a fundamental economic practice long prevalent in our system of
commerce”. Bilski v. Kappos, 561 U.S. 593, 611 (2010); see also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That this is a
prior known fundamental economic practice is supported both by the
Specification’s recognition that policyholders may perform these tasks
(Spec. 9) as well as the disclosures of Reed (FF 1) and Patricelli (FF 11) that
it was known to track health care expenses for health savings accounts.
Accordingly, we conclude that the steps of claim 1 recite the judicial
exceptions of mental processes and fundamental economic processes.

Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, the
Revised Guidance directs us to next consider whether the claims integrate
the judicial exception into a practical application. Guidance Step 2A, Prong
2. “[I]ntegration into a practical application” requires that the claim recite
an additional element or a combination of elements, that when considered
individually or in combination, “apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance at 54.
A judicial exception is not integrated into a practical application when
the claims are drawn to the mere use of “a computer as a tool to perform an
abstract idea.” Guidance, 84 Fed. Reg. at 55; see Enfish, LLC v. Microsoft
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Corp., 822 F.3d 1327, 1335–6 (Fed. Cir. 2016) (determining whether the
claims at issue were focused on a “specific asserted improvement in
computer capabilities” or “a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool”).
Here, there is no practical integration of the abstract idea. Other than
the limitations directed to the abstract idea, discussed above, the invention is
claimed at a very high level of generality and relies upon standard
computing devices (see, e.g., Spec. ¶ 57 “a computer (e.g., laptop computer),
a digital game system, a set-top box, a portable workstation, a minicomputer,
or a combination thereof”). We appreciate that simply because standard
devices are used in a claimed method is not solely dispositive of whether its
recited patent-ineligible subject matter is integrated into a practical
implementation.
We note that the Specification does not recite any specific algorithms
for performing the tracking and reporting functions, but merely provides the
general concept of computerizing known methods of tracking and reporting
health savings accounts expenses. See Spec. ¶ 22 (“The present
implementations facilitate mandated recordkeeping of transactions that are
conducted on a particular type of account, where business rules, government
regulations, or other limitations have been placed upon the account as to the
record keeping for certain types and kinds of goods and services that are
purchased in transactions that are conducted on the account.”)
Nor does the Specification rely upon particular networks, hardware,
software or protocols. See Spec. ¶ 73 (A “telecommunications network that
may make use of any suitable telecommunications network and may involve
different hardware, different software and/or different protocols then those
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discussed below.”). Thus, the Specification is understood as teaching
simple, generic computerization of recordkeeping systems of tracking HSA
expenses (see Spec. ¶¶ 9–10).
Therefore claim 1 does not recite elements that integrate the abstract
idea into a practical application that is more than the abstract idea itself.
Instead, the claims recite conventional computer components that are used to
apply the mental process and method of organization of human activity of
tracking and recordkeeping for HSA expenses. Alice makes clear that
“[s]tating an abstract idea while adding the words ‘apply it with a computer’
simply combines those two steps, with the same deficient result.” Alice, 573
U.S. at 223.
C. Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements individually and in combination to determine whether
they provide an inventive concept, such as a specific limitation beyond the
judicial exception that is not well-understood, routine, conventional in the
field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. See 84 Fed. Reg. 51.
There is no evidence that the tracking and recordkeeping process
recited in the claim 1 is drawn to something that is not well-understood,
routine or conventional. We note that the claimed concept does not alter the
computer itself in any structural way and we see no meaningful distinction
between this type of financial/accounting practice and “the concept of
intermediated settlement” held to be abstract in Alice, 573 U.S. at 219. The
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facts here are like those in Credit Acceptance, where the court found “[t]he
invention’s ‘communication between previously unconnected systems—the
dealer’s inventory database, a user credit information input terminal, and
creditor underwriting servers,’ . . . does not amount to an improvement in
computer technology.” Credit Acceptance Corp. v. Westlake Services, 589
F.3d 1044, 1055 (Fed. Cir. 2017).
We therefore find the claims unpatentable under 35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New Ground
1, 7, 8,
10, 12
103 Reed,
Smith, Jr.,
Patricelli
1, 7, 8, 10,
12

1, 7, 8,
10, 12
101 1, 7, 8, 10, 12
Overall
Outcome
1, 7, 8, 10,
12
1, 7, 8, 10, 12

This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” Section 41.50(b) also
provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise one of the
following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event
Appeal 2019-002814
Application 12/630,748

20
the prosecution will be remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. § 41.50(b)