Robert D. Reany et al.

Patent Trials and Appeals Board

Feb 25, 2020

12813766 - (D) (P.T.A.B. Feb. 25, 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.
12/813,766 06/11/2010 Robert D. Reany P00522-US-UTIL 7673
98665 7590 02/25/2020
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
02/25/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT D. REANY, DENNIS J. HILL,
SARA E. FIEBIGER, SUSAN E. RISKOVSKY,
and SANDEEP MALHOTRA
____________

Appeal 2018-0053951
Application 12/813,7662
Technology Center 3600
____________

Before HUBERT C. LORIN, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) claims 1–5 and 7–21. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief, filed November 20,
2017 (“Appeal Br.”) and Reply Brief, filed May 1, 2018 (“Reply Br.”), and
the Examiner’s Answer, mailed March 1, 2018 (“Ans.”) and the Final Office
Action, mailed May 3, 2017 (“Final Act.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies MasterCard International Incorporated as
the real party in interest. Appeal Br. 3.
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CLAIMED INVENTION
Appellant’s claims relate “generally to electronic commerce, and,
more particularly, to electronic payment systems.” Spec. 1:14–15.
Claims 1, 7, 12, and 18 are the independent claims on appeal.
Claim 1, reproduced below with bracketed notations added, is illustrative of
the claimed subject matter:
1. A method comprising the steps of:
[a] facilitating, by at least one hardware processor
configured by at least one memory coupled to said at least one
hardware processor, placement of a hold amount against a
payment card account of a customer, in response to said
customer presenting a payment device, associated with said
payment card account, in connection with a non-PIN, signature-
based, dual-message transaction with a merchant, said
presenting of said payment device being prior to a time when an
amount of said transaction can be determined;
[b] subsequent to said placement of said hold amount,
immediately after said time when said amount of said
transaction can be determined, facilitating, by said at least one
hardware processor configured by said at least one memory
coupled to said at least one hardware processor, an electronic
transmission of an authorization advice message from an
acquirer associated with said merchant to an issuer of said
payment device via a computer network, said authorization
advice message indicating said amount of said transaction; and
[c] facilitating, by said at least one hardware processor
configured by said at least one memory coupled to said at least
one hardware processor, said issuer of said payment device
releasing any portion of said hold amount which exceeds said
amount of said transaction, reducing said hold amount to said
amount of said transaction, immediately responsive to said
authorization advice message.

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REJECTION
Claims 1–5 and 7–21 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, 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. 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.” E.g., Alice Corp. Pty.
Ltd. 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. See 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 [P]etitioners’ application explain the basic
concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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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” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme 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, and 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws,[] and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. 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.”), and 191 (citing Benson and Flook).
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.” See Alice, 573 U.S. at 221 (quotations 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
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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 PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance, 84 Fed. Reg.”).
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., that “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.” See 2019 Revised Guidance, 84 Fed. Reg. 53; see also
MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.

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See 2019 Revised Guidance, 84 Fed. Reg. 56.
Appellant argues claims 1–5 and 7–21 as a group. See Appeal Br. 7–
10; see also Reply Br. 11–13. We select independent claim 1 as
representative. Claims 2–5 and 7–21 stand or fall with independent claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
With regard to the first step of the Mayo/Alice framework, the
Examiner states that the claims recite the abstract idea of “placing an issuer
hold on an account for automated fuel dispenser transactions in an electronic
payment system.” Final Act. 4. The Examiner characterizes independent
claim 1 as:
a concept involving human activity related to commercial
practices and managing relationships or transactions between
people, similar to concepts found by the courts to be abstract such
as processing loan information as in Dealertrack, managing an
insurance policy as in Bancorp and mitigating settlement risk as
in Alice Corp v. CLS Bank International.
Id. at 5.
In response, Appellant argues that “the present application is not
directed to a mere hold on an account, but rather to the novel and non-
obvious method including reducing a hold amount to an amount of a
transaction.” Appeal Br. 7–8; see also Reply Br. 7–8.
Under the first prong of step 2A of the 2019 Revised Guidance,
we first determine if the claims recite an abstract idea. In this regard,
the Specification is titled “METHOD AND APPARATUS FOR
ADDRESSING ISSUER HOLD FOR AUTOMATED FUEL DISPENSER
TRANSACTIONS IN AN ELECTRONIC PAYMENT SYSTEM,” and
“relates generally to electronic commerce, and, more particularly, to
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electronic payment systems.” Spec. 1:14–15. According to the
Specification,
[d]ue to rising fuel prices, there has been an increase in
consumer and media interest in the so-called “excessive hold”
topic, as well as increased attention from policymakers. When
using a credit [or debit] card to purchase gasoline and pay at the
pump, the card is typically presented at the beginning of the
transaction before the amount of gasoline to be purchased, and
thus the price, has been determined. It is possible that a person
could present a valid credit card, but one which has insufficient
credit available to purchase the amount of gasoline ultimately
pumped into the vehicle. To protect gas station operators, a hold
may be placed against the account to ensure sufficient funds to
complete the purchase.
Id. at 1:18–26. The Specification identifies, however, that
[t]here has been concern about the impact of holding Demand
Deposit Account (DDA) funds based on estimated fuel purchases
instead of actual purchase amounts for purchases where signature
debit cards were used. In addition to the lack of availability of
these funds, some consumers have reported that they have
experienced overdraft fees resulting from excessive holds.
Id. at 1:27–32. To address these concerns, the present invention “provide[s]
techniques for addressing issuer hold for automated fuel dispenser
transactions in an electronic payment system.” Id. at 2:1–2. The
Specification also discloses that the present “invention can provide
substantial beneficial technical effects” based upon: (1) “[c]ompatibility
with current industry practices and existing system capabilities” and (2)
being “[a]nalogous to single-message advice mechanism thus minimizing
the impact to the involved parties.” Id. at 3:1–6.
Taking independent claim 1 as representative, the claimed subject
matter recites a method including steps for: (1) placing a hold on a
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customer’s account in response to presentation of a payment device,3 i.e.,
“facilitating . . . placement of a hold amount against a payment card account
of a customer . . . in connection with a . . . dual-message transaction with a
merchant . . . prior to a time when an amount of said transaction can be
determined” (step [a]); (2) once the amount of the transaction has been
determined, transmitting an authorization message indicating the actual
amount of the transaction, i.e., “immediately after . . . said transaction can be
determined, facilitating . . . an electronic transmission of an authorization
advice message . . . indicating said amount of said transaction” (step [b]);
and (3) releasing any portion of the hold amount which is greater than the
actual amount of the transaction in response to the authorization message,
i.e., “facilitating . . . releasing any portion of said hold amount which
exceeds said amount of said transaction, reducing said hold amount to said
amount of said transaction, immediately responsive to said authorization
advice message” (step [c]).
Understood in light of the Specification, we agree with the Examiner
that independent claim 1 broadly recites “placing and releasing a hold on an
account involved in a pending transaction, which is an abstract idea.” Final
Act. 3. We also agree with the Examiner that “[t]his is a concept involving
human activity related to commercial practices and managing relationships
or transactions between people.” Id. at 5; see also Smart Sys. Innovations,
LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017)
(holding claims to verifying (authenticating) payment information directed

3 “For example, one such device can be a contact device such as card 102.
Card 102 can include an integrated circuit (IC) chip 104 having a processor
portion 106 and a memory portion 108.” Spec. 5:10–12.
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to an abstract idea under Alice step one); Smartflash LLC v. Apple LLC,
680 F. Appx. 977, 982-83 (Fed. Cir. 2017) (holding claims to controlling
access to content data based on verification of payment information patent
ineligible); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370-73 (Fed. Cir. 2011) (holding claims to a computer-implemented system
for “verifying the validity of a credit card transaction over the Internet”
patent ineligible); and Inventor Holdings, LLC v. Bed Bath & Beyond Inc.,
876 F.3d 1372 (Fed. Cir. 2017) (claims directed to the use of a POS terminal
to transmit transaction-related information and to process payments held
invalid under 35 U.S.C. § 101). Therefore, when viewed through the lens of
the 2019 Revised Guidance, the Examiner’s analysis depicts the claimed
subject matter as being directed to ineligible subject matter which may be
categorized as one of the ineligible “methods of organizing human activity”
that include “fundamental economic principles or practices (including
hedging, insurance, mitigating risk)” and “commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations),”
and thus an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. 52.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we turn to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example: (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field; (ii) an application of the
judicial exception with, or by use of, a particular machine; (iii) a
transformation or reduction of a particular article to a different state or thing;
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or (iv) a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
See also MPEP § 2106.05(a)–(c), (e)–(h).
The only additional elements recited in claim 1, beyond the abstract
idea, are “at least one hardware processor configured by at least one memory
coupled to said at least one hardware processor,” “a payment device,” and
“computer network”—elements that, as the Examiner observed, “are recited
at a high level of generality and are recited as performing generic computer
functions routinely used in computer applications.” Final Act. 5 (citing
Spec. 5:8–31, 6:6–8, and 9:1–4). We find no indication in the Specification
that the operations recited in claim 1 require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
invoke any assertedly inventive programming, or that the claimed invention
is implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.
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Appellant argues that “the combination of the claimed hardware
processor, acquirer and issuer perform functions (e.g., “‘releasing any
portion of said hold amount which exceeds said amount of said transaction,
reducing said hold amount to said amount of said transaction, immediately
responsive to said authorization advice message’) that are not merely
generic.” Appeal Br. 9. However, as described above, we find no indication
in the Specification that the steps recited in claim 1 require any specialized
computer hardware or other inventive computer components, or that the
claimed invention is implemented using other than generic components
operating in their normal, routine, and expected manner.
Here, the Specification describes that the present “invention
employ[s] features of an existing authorization advice message (based on
ISO 8583) in a new way to communicate, in realtime, the final purchase
amount from the merchant and/or acquirer to the issuer immediately after the
purchase is completed.” Spec. 5:4–7. However, the Specification further
discloses that
[m]essages within a network such as network 138 and/or
network 208, may, in at least some instances, conform to the
International Organization for Standardization (ISO) Standard
8583, Financial transaction card originated messages —
Interchange message specifications, which is the ISO standard
for systems that exchange electronic transactions made by
cardholders using payment cards.

Id. at 11:12–16. The Specification also describes the “payment device” as
being “ISO 7816-compliant contact cards 20 or devices or NFC (Near Field
Communications) or ISO 14443-compliant proximity cards or devices.” Id.
at 10:19–21. As such, the generic devices perform the generically claimed
functions of receiving and transmitting data over a network.
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Appellant argues that
the claimed limitations describe a process that differs from the
routine and conventional sequence of events normally conducted
in connection with a non-PIN, signature-based, dual-message
transaction with a merchant, such as holding Demand Deposit
Account (DDA) funds based on estimated fuel purchases instead
of actual purchase amounts for purchases where signature debit
cards were used, similar to the unconventional sequence of
events in DDR.
Appeal Br. 10; see also Reply Br. 13.
However, we find no parallel to the claims in DDR Holdings. In that
case, the Federal Circuit determined that the claims addressed the problem
of retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host’s website after clicking on an advertisement and activating
a hyperlink. See DDR Holdings, 773 F.3d at 1257. The court noted that
“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.” Id. at 1258. The Federal Circuit, thus, held that the claims were
directed to statutory subject matter because they claim a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id. at 1257.
Independent claim 1 does not, for example, purport to override the
conventional sequence of events ordinarily triggered by the click of a
hyperlink to recite an invention that is “not merely the routine or
conventional use of the Internet.” Id. at 1259. Nor does it purport to
improve the functioning of the computer itself. Nor does it effect an
improvement in any other technology or technical field. Instead, claim 1,
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viewed as a whole and in light of the Specification, amounts to nothing
significantly more than an instruction to apply the abstract idea of “placing
and releasing a hold on an account involved in a pending transaction”
according to ISO standards using conventional and generic components,
which under our precedents, is not enough to transform an abstract idea into
a patent-eligible invention. Final Act. 3; see also Alice, 573 U.S. at 226.
Appellant further argues that “[t]he combination of the claimed
hardware processor, acquirer and issuer perform functions . . . solve the
problem of ‘the impact of holding Demand Deposit Account (DDA) funds
based on estimated fuel purchases instead of actual purchase amounts for
purchases where signature debit cards were used’ with overdraft fees
resulting from excessive holds.” Reply Br. 13 (citing Spec. 1:18–32).
However, the focus of independent claim 1 is not on any technological
advancement, but rather on the implementation of the abstract idea, “for
which computers are invoked merely as a tool.” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Turning to Step 2B of the 2019 Revised Guidance, we determine
whether the additional elements: (1) add a specific limitation or
combination of limitations that is not well-understood, routine, and
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 that an
inventive concept may not be present. See 2019 Revised Guidance,
84 Fed. Reg. 56.
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Addressing the second step of the Mayo/Alice framework, the
Examiner states the claims “do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the abstract
idea.” Final Act. 5. More particularly, the Examiner states
[t]he payment device is described as containing components
which are well known in the art (see [S]pecification on page 5,
lines 8–31). The memory is described as general purpose
memory (see [S]pecification, page 6, lines 6–8). Finally the
hardware processor is described as a general purpose processor
(see [S]pecification on page 9, lines 1–4). None of the
limitations, considered as an ordered combination, provide
eligibility, because taken as a whole, the claims simply instruct
the practitioner to implement the abstract idea with routine,
conventional activity.
(Id.). We agree with the Examiner that the additional elements taken alone
or in combination do not result in anything more than conventional computer
implementation. And, considered as an ordered combination, the “at least
one hardware processor configured by at least one memory coupled to said
at least one hardware processor,” “payment device,” and “computer
network” recited by independent 1 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
independent claim 1 simply recites a series of steps related to the abstract
idea of “placing and releasing a hold on an account involved in a pending
transaction.” Final Act. 3; see also Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps comprises
only ‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept.’”) (citing Alice, 573 U.S. at
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221). The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field, as discussed above with respect to prong two
of step 2A. Instead, independent claim 1 amounts to nothing significantly
more than an instruction to apply the abstract idea according to ISO
standards using conventional and generic components, which under our
precedents, is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 226.
Appellant argues that the claimed combination of additional elements
recited by independent claim 1 represents significantly more than the
abstract idea because “they are a practical implementation of the alleged
abstract idea that performs a transaction, including the placement and release
of a hold, in a non-conventional and non-generic way.” Reply Br. 12
(emphasis omitted). According to Appellant,
[t]he combination of the steps (e.g., placing a hold against an
account in response to presenting a payment device, transmitting
an authorization advice message indicating an amount of a
transaction, and releasing a portion of the hold that exceeds the
amount of the transaction) operates in a nonconventional and
non-generic way to ensure that excessive holds on accounts in
connection with certain types of payments, such as fuel
purchases, can be released “immediately responsive to said
authorization advice message.”
Appeal Br. 10. Appellant contends that “the claimed combination of
additional elements presents a specific, discrete implementation of the
alleged abstract idea” and is therefore analogous to the situation in BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016); see also Appeal Br. 9 (“[T]he claims clearly encompass an element,
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or combination of elements, sufficient to ensure that the claims amount to
significantly more than the alleged abstract idea.”), and 10.).
However, Appellant does not persuasively explain how, and we do not
see how, Appellant’s claim 1 parallels the claims in BASCOM, which recited
a “non-conventional and non-generic arrangement of known, conventional
pieces” within a network, the arrangement of elements being “a technical
improvement over [the] prior art ways of filtering.” See BASCOM, 827 F.3d
at 1350. In BASCOM, the court determined that “[b]y taking a prior art filter
solution (one-size-fits-all filter at the ISP server) and making it more
dynamic and efficient (providing individualized filtering at the ISP server),
the claimed invention represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id.
In contrast, independent claim 1 does not require any non-
conventional and non-generic arrangement of known computer components
on a network. Nor does Appellant show in the claim that the solution is
technology-based, a technical improvement over conventional and routine
ways of “placing and releasing a hold on an account involved in a pending
transaction,” or an improvement to the performance of the computer system
itself. Instead, as discussed above, independent claim 1 operates in a manner
that “conform[s] to the International Organization for Standardization (ISO)
Standard 8583 . . . which is the ISO standard for systems that exchange
electronic transactions made by cardholders using payment cards.” Spec.
11:12–16.
Appellant further argues that the Examiner failed to establish that the
additional elements of independent claim 1 are well-understood, routine, and
conventional, to a skilled artisan in the relevant field, in view of Berkheimer
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v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018) and the Office’s April 19, 2018
Memorandum entitled, “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memo”).4 Reply Br.
11–12.
Appellant’s argument is not persuasive, at least because it could not
be clearer from Alice, that under step two of the Mayo/Alice framework
(i.e., step 2B), the elements of each claim are considered both individually
and “as an ordered combination” to determine whether the additional
elements, i.e., the elements other than the abstract idea itself, “transform the
nature of the claim” into a patent-eligible application. Alice Corp.,
573 U.S. at 217; see also Mayo, 566 U.S. at 72–73 (Requiring that “a
process that focuses upon the use of a natural law also contain other
elements or a combination of elements, sometimes referred to as an
‘inventive concept,’ sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself.”) (emphasis
added). See also Ans. 3–5. Stated differently, the inventive concept under
step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” 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); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290–91 (Fed. Cir. 2018) (“Our precedent has consistently employed this

4 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.pdf.
Appeal 2018-005395
Application 12/813,766

18
same approach. If a claim’s only ‘inventive concept’ is the application of an
abstract idea using conventional and well-understood techniques, the claim
has not been transformed into a patent-eligible application of an abstract
idea.”).
As discussed above, there is no indication here that the steps, recited
in independent claim 1, require any specialized computer or inventive
computer components — the Specification indicates just the opposite. See,
e.g., Spec. 5:4–13:14. Here, the only claim elements in independent claim 1
beyond the abstract idea are the claimed “at least one hardware processor
configured by at least one memory coupled to said at least one hardware
processor,” “payment device,” and “computer network,” i.e., generic
componentry, operating in its routine and ordinary capacity to send, receive,
and process data in order to “plac[e] and releas[e] a hold on an account
involved in a pending transaction.” See Ultramercial, 772 F.3d at 715
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); see also Inventor
Holdings, 876 F.3d at 1378 (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract); and Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339
(Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract).
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. See 2019 Revised Guidance, 84 Fed. Reg. 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).
Appeal 2018-005395
Application 12/813,766

19
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2–5 and
7–21, which fall with independent claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–21 101 Eligibility 1–5, 7–21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED