Square, Inc.

Patent Trials and Appeals Board

Jun 30, 2020

2019000584 (P.T.A.B. Jun. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/189,880 02/25/2014 Paul Aaron SQ-0112-US1-CIP2 9818
151231 7590 06/30/2020
Schott P.C.
610 Old York Road, Suite 400
Jenkintown, PA 19046
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
patents@schottpc.com
square@clairvolex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL AARON and ANDREW BOROVSKY
Appeal 2019-000584
Application 14/189,880
Technology Center 3600
Before ALLEN R. MACDONALD, DEBRA K. STEPHENS, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 9, 12, 13, 15–23, and 25 (see
Final Act. 1).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 Square,
Inc. (Appeal Br. 1).
2 Claims 7, 10, 11, 14, 24, and 26 have been cancelled (Final Act. 2).
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CLAIMED SUBJECT MATTER
The claims are directed to a displaying accounts associated with a
proxy card to enable a selection (Abstract).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dwight US 2012/0166311 A1 June 28, 2012
Casey US 8,459,544 B2 June 11, 2013
Laracey US 2013/0246203 A1 Sept. 19, 2013
Chatterjee US 8,577,803 B2 Nov. 5, 2013

REJECTIONS
Claims 1–6, 8, 9, 12, 13, 15–23, and 25 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception to patent-eligible subject
matter without reciting significantly more (Final Act. 3–6).
Claims 1–6 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Chatterjee, Laracey, and Dwight (id. at 6–13).
Claims 9, 12, 13, 16–19, and 21 stand rejected under 35 U.S.C. § 103
over Chatterjee, Dwight, and Casey (id. at 13–21).
Claims 15, 20, 22, 23, and 25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Chatterjee, Dwight, Casey, and Laracey (id. at 23–
28).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make in the Briefs, have not been considered and are deemed to be waived
(See 37 C.F.R. § 41.37(c)(1)(iv)).

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OPINION
35 U.S.C. § 101: CLAIMS 1 – 6, 8, 9, 12, 13, 15 – 23, AND 25
Contentions
Appellant argues their invention as recited in claims 1 – 6, 8, 9, 12,
13, 15 – 23, and 25 is directed to patent eligible subject matter (Appeal
Br. 22).
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 (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
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 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”)).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); 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, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 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; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula”)). Having
said that, the 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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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.).
USPTO 2019 Revised Section 101 Guidance
In January 2019, the USPTO published revised guidance on the
application of § 101 (see 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019 (“2019 Guidance”)).3 “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance” (id. at 51); see also October 2019 Update at 1).
Under the 2019 Guidance and the October 2019 Update, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes)
(“Step 2A, Prong One”); and

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance
(USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf)).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”)).4
(2019 Revised Guidance, 84 Fed. Reg. at 52–55).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception
(2019 Revised Guidance, 84 Fed. Reg. at 52–56).

Analysis
Appellant argues all pending claims as a group (see Appeal Br. 15).
Accordingly, we address all pending claims as a group and select
independent claim 1 as representative of the claimed subject matter (see
37 C.F.R. § 41.37(c)(1)(iv)).

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application (see 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55).
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STEP 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title” (35 U.S.C. § 101). We
determine that independent claims 1, 9, and 16 recite a method and
independent claim 22 recites a system. As such, the claims are directed to
statutory classes of invention within 35 U.S.C. § 101, i.e., processes and
machines.

STEP 2A, Prong 1
Under Step 2A, Prong 1, of the Guidance, we must determine whether
the claims, being directed to statutory classes of invention, nonetheless fall
within a judicial exception. More specifically, we first look to whether the
claim recites any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activities such as a fundamental economic practice, or mental processes)
(84 Fed. Reg. at 52–54).
We agree with the Examiner that the claims recite “financial
transactions, transaction account details, and managing business relations
relative to accounts which is a fundamental economic practice” (Ans. 4).
We conclude the claims recite the abstract idea of a commercial interaction,
namely sales activities, which are categorized as certain methods of
organizing human activity, because the claims recite “receiving . . .
transaction information associated with a purchase transaction between a
merchant and a consumer that involves a payment” (See 2019 Guidance,
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84 Fed. Reg. at 52). We further conclude the claims also recite the abstract
idea of mitigating risk, as admitted by Appellant (Reply Br. 4). As stated in
the 2019 Guidance, mitigating risk is a method of organizing human activity.
An inspection of the claims supports the Examiner’s determination.
More specifically, representative claim 1 reads as follows with emphasis
added to indicate the portions of the claim that recite abstract ideas:
[a] receiving, from a point-of-sale (POS) system and by
a computer system, transaction information associated with a
purchase transaction between a merchant and a consumer that
involves a payment,
the purchase transaction involving a reading of a
payment card by a card reader associated with the POS
system,
the payment card being associated with a plurality
of payment accounts,
the payment accounts each being associated with
one of a credit card, a debit card, an automated teller
machine (ATM) card, or a stored value card;
[b] receiving, from the POS system and by the computer
system, payment card information obtained from the payment
card by the card reader;
[c] based on the payment card information, accessing, by
the computer system, a database to identify the payment
accounts associated with the payment card and to identify a
mobile device associated with the payment card;
[d] selecting, by the computer system, a first payment
account of the plurality of payment accounts to use to obtain an
authorization for the payment, the authorization being indicative
that the first payment account has sufficient funds available for
use for the payment;
[e] sending a message, by the computer system, that
triggers a process that causes the authorization, from a first
funding source that authorizes payments based on the first
payment account, to be sent to the POS system, the authorization
including information that prompts the POS system to generate,
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for delivery to the consumer, a purchase receipt for the purchase
transaction;
[f] after the purchase receipt is generated, and prior to
the merchant receiving any funds for the payment, sending, by
the computer system, a message for delivery to the mobile device
to prompt the mobile device to display a user interface that
indicates a subset of the plurality of payment accounts associated
with the payment card, enabling the consumer to specify a
second payment account of the subset of the payment accounts to
use for the purchase transaction; and
[g] selecting, by the computer system, the second
payment account to use for the purchase transaction in response
to a message from the mobile device indicating to use the second
payment account for the purchase transaction,
wherein the selecting of the second payment
account initiates a process that prevents the payment to
the merchant from being processed by the first funding
source such that no funds for the payment to the merchant
are obtained from the first payment account.
(bracketed letters added).
The limitations of claim 1 recite a “commercial interaction,” i.e.,
certain methods of organizing human activity, in the financial industry
(Ans. 4). The claim recites initiating a purchase –– “receiving . . .
transaction information associated with a purchase transaction . . . involving
a reading of a payment card”; “receiving . . . payment card information
obtained from the payment card”; “based on the payment card information, .
. . identify[ing] the payment accounts . . . and [an associated] mobile
device”; and “selecting . . . a first payment account . . . to use to obtain
authorization for the payment” (limitations [a], [b], [c], [d]). The claim
further recites subsequently completing the purchase of a good or service
using a payment card transaction sent to a payment service system (i.e., the
claimed “computer system”) ––“sending a message. . . that . . . authorizes
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payments . . . from a first funding source . . . [and] generat[ing] . . . a
purchase receipt” and “selecting . . . the second payment account to use for
the purchase transaction in response to [the user’s message]” (steps [e]
and [g]).
Restated, claim 1 recites initiating and subsequently completing a
payment by transmitting payment source information and transaction data
associated with the purchase for delivery to a payment processor. Such steps
are a fundamental aspect of purchasing a good or service (e.g., a credit card
transaction). Thus, these steps recite commercial interactions (i.e., sales
activities). The 2019 Guidance recognizes sales activities and commercial
transactions as certain methods of organizing human activity that constitute
a patent-ineligible abstract idea (84 Fed. Reg. at 52).
Limitation [f] recites the following step:
after the purchase receipt is generated, and prior to the
merchant receiving any funds for the payment, sending . . . a
message for delivery to the mobile device to prompt the mobile
device to display a user interface that indicates a subset of the
plurality of payment accounts associated with the payment card,
enabling the consumer to specify a second payment account of
the subset of the payment accounts to use for the purchase
transaction.
This step recites the fundamental and well-known practice of sending
a communication to prompt the display device to display a user interface
indicating payment accounts and enabling the consumer to specify a second
payment account. We note that this limitation does not recite sending a
message to a mobile device. Rather, it more broadly recites “sending . . . a
message for delivery to the mobile device to prompt the mobile device to
display a user interface.” As such, the language is broad enough to read on
sending a message to any entity, including a human, and the further
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italicized language merely explains the intended reason for sending the
message. Therefore, this step also recites a commercial interaction (i.e.,
sales activities).
To summarize, claim 1 recites a commercial interaction, and more
specifically, a type of sales activity, which is identified as a certain method
of organizing human activity according to the 2019 Guidance (84 Fed. Reg.
at 52). Additionally, selecting one payment source of a plurality of available
payment sources based on a buyer’s preference is a long-standing economic
practice, which also falls under the recognized category of a commercial
interaction. Therefore, we determine claim 1 recites an abstract idea.

STEP 2A Prong 2
Next, we determine whether the claims are directed to the abstract
concept itself or whether the claims are instead directed to some
technological implementation or application of, or improvement to, the
recited concept, i.e., integrated into a practical application (see, e.g., Alice,
573 U.S. at 223, discussing Diehr, 450 U.S. at 175).
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application
(2019 Guidance, 84 Fed. Reg. at 53–55). The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field (id. at 55; MPEP § 2106.05(a)).
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Appellant argues the invention, as recited in independent claim 1, “is
directed to more than just ‘transmitting information to undertake a financial
transaction, managing business relations relative to accounts, identifying
charges and details of transactions, account settlement, monitoring and
reporting, and using categories to organize, store and transmit information’
as stated in the Final Office Action” (Appeal Br. 22). Contrary to
Appellant’s argument, however, the Examiner properly inspected the claims
and determined
the claim does not effect an improvement to another technology
or technical field; the claim does not amount to an improvement
to the functioning of a computer itself; and the claim does not
move beyond a general link of the use of an abstract idea to a
particular technological environment.
(Final Act. 4).
More specifically, Appellant argues independent claim 1 “improve[s]
computer-related technology to overcome problems specifically arising in
the realm of remote electronic transactions” (Appeal Br. 23). We are not
persuaded, however; rather, we agree with the Examiner’s determinations
that “neither the claims nor the specification identifies elements beyond
generic computer components performing generic computer functions”
(Ans. 4). As the Examiner determines, “the instant claims provide a
generically computer-implemented solution to a business-related or
economic problem” (Ans. 5).
The focus of claim 1 is not on such an improvement in computers as
tools, but on certain independently abstract ideas that use computers as tools,
with claim 1 neither effecting an improvement to another technology or
technical field, nor amounting to an improvement to the functioning of the
computer itself (Ans. 5). Appellant’s Specification discloses “a technique
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for displaying accounts . . . , to enable a consumer to select a financial
account to use for a financial transaction” (Spec. ¶ 18). Consistent with the
Specification, claim 1 recites mere instructions to implement the abstract
idea on a computer (i.e., the claimed “mobile device”), and further, merely
use a computer as a tool to perform the abstract idea (84 Fed. Reg. at 55;
MPEP § 2106.05(f)).
Appellant also argues “the present claims involve near instantaneous
communications involving multiple devices for time-sensitive transactions
involving a proxy object that is tied to multiple accounts—a problem that
only exists in remote electronic transactions over computer networks and
that has no ‘bricks and mortar’ analogue” (Appeal Br. 23). Appellant’s
contentions are unpersuasive. Claim 1 is not limited to any specific type of
technology for network-based financial transactions. Rather, Appellant’s
Specification indicates that the claimed steps can be performed on a variety
of generic and commercially available computing devices: “[c]onnector 390
represents an information flow made via any type of communications
medium, such as a network (wired or wireless)” (Spec. ¶ 72).
Our reviewing court has held that “merely limiting the field of use of
the abstract idea to a particular . . . environment does not render the claims
any less abstract” (Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1259 (Fed. Cir. 2016)). Therefore, contrary to Appellant’s argument,
although the solution uses technology—e.g., software and networks are used
in order to expedite and simplify transaction processing between a merchant
and consumer—there is no improvement to the computer or the technology,
itself.
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The October 2019 Patent Eligibility Guidance Update states with
regards to the Step 2A, Prong 2, analysis that Examiners should “analyze the
‘improvements’ consideration by evaluating the specification and the claims
to ensure that a technical explanation of the asserted improvement is present
in the specification, and that the claim reflects the asserted improvement”
(October 2019 Update).
Appellant’s Specification does not contain a technical explanation of
the asserted improvements of “computer-related technology to overcome
problems specifically arising in the realm of remote electronic transactions”
(see Appeal Br. 23). Rather, the Specification merely describes general
communications that occur between the POS system, the computer system,
and the consumer’s mobile device.
For example, the process of transmitting the transaction information is
described merely as follows: “card reader 155 transmits information
obtained from proxy card 150 to POS system 158, a point-of-sales (POS)
system to which card reader 155 is coupled (either directly or indirectly)”
(Spec ¶ 33) and “POS system 158 further transmits information associated
with the purchase transaction, referred to herein as the transaction
information, to financial system 160” (Spec ¶ 35).
Other portions of the Specification and accompanying figures
similarly describe generally how the communications occur between the
various entities. However, nowhere in the Specification is there provided
any sufficiently technical explanation of the asserted improvements to the
technology. Nor are the elements themselves described as providing any
sufficiently technical explanation of asserted improvements to the
technology (see, e.g., “[c]onsumers today user many types of payment cards
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(e.g., credit cards, debit cards, prepaid gift cards and other payment objects
(e.g., a smart phone with a digital wallet) to make purchases” (Spec. ¶ 2); “a
VISA branded payment card” (id. ¶ 70); “the term ‘card reader’ herein refers
to any object that can be used to obtain information from an object used to
make an electronic payment where the card reader must be in the general
vicinity of the object, such as an optical scanner, a near field
communications device, a Bluetooth communications device, etc.” (id.
¶ 21); “[f]inancial system 160 receives the transmitted information, and
based on this information, decides to relay the transmitted information to
computer system 170 for further processing” (id. ¶ 45)). The Specification
does not provide technical details of any of these elements (see generally
Specification).
Accordingly, Appellant does not sufficiently demonstrate that claim 1
integrates the judicial exception into a practical application (see
2019 Revised Guidance, Section III(A)(2) (Prong Two: If the Claim Recites
a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated
Into a Practical Application)) (84 Fed. Reg. at 54–55). We, therefore, agree
with the Examiner that claim 1 is directed to a judicial exception—i.e., an
abstract idea—without reciting significantly more so as to integrate the
abstract idea into a practical application.

STEP 2B
Next, we determine whether claim 1 includes additional elements that
provide significantly more than the recited judicial exception, thereby
providing an inventive concept (Alice, 573 U.S. at 218–219 (quoting Mayo,
566 U.S. at 72–73)). Under the 2019 Guidance , we determine whether
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claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception (84 Fed. Reg. at 56).
Considered individually or taken together as an ordered combination,
the additional claim elements fail “to ‘transform’ the claimed abstract idea
into a patent-eligible application” (Alice, 573 U.S. at 221 (quoting Mayo,
132 S. Ct. at 1294, 1298)). Beyond the abstract idea, the additional claims
merely recite “well-understood, routine conventional activit[ies],” either by
requiring conventional computer activities or routine data-gathering steps
(Alice, 573 U.S. at 225 (quoting Mayo, 132 S. Ct. at 1294) (alterations in
original)). Indeed, we agree with the Examiner that the claims do not recite
significantly more than the abstract idea itself because the “focus of the
instant claims is not on such an improvement in computers as tools, but on
certain independently abstract ideas that use computers as tools” (Ans. 5).
We further agree “the computer components at each step of the management
process perform purely generic computer functions” (Final Act. 4).
Appellant argues the claims “provide[] a technology-based solution to
the problem of insufficient fund transactions in a manner that is more than
occurs at a conventional payment terminal alone” (Appeal Br. 29) and “[t]he
Final Office Action fails to consider these interactions, and instead considers
the claimed operations only in isolation” (Appeal Br. 30).
We are not persuaded. Neither the individual features of claim 1
themselves nor the combination of elements are anything other than well-
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understood, routine, or conventional activities. According to the Berkheimer
Memorandum,
[a] specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements as well-understood or routine or
conventional (or an equivalent term), as a commercially
available product, or in a manner that indicates that the
additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such
additional elements to satisfy 35 U.S.C. § 112(a).
(Robert W. Bahr, Memorandum of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.), 1, 3, (April 19, 2018), emphasis added).
The additional elements described in claim 1 are “well-understood,
routine, and conventional” within the meaning of step 2B of the
2019 Guidance. For example, Appellant’s Specification describes a point-
of-sale (POS) system without sufficiently specific details (see, e.g., Spec.
¶¶ 19, 23, 28, 148). The description of the elements of Figure 9 discloses
elements well-understood, routine, and conventional (e.g., one or more
processors 910, memory 911, a communication device 912, and one or more
input/output (I/O) devices 913) (Spec. ¶ 149).
Moreover, the “payment card” recited in claim 1, is read by a card
reader. However, Appellant indicates that a payment card containing the
ability to be read by a card reader (e.g., by a magnetic stripe or computer
chip) was well-understood, routine, and conventional (see id. ¶ 33). Indeed,
examples of payment cards are described as “credit cards, debit cards, [and]
prepaid gift cards” (id. ¶ 2) and examples of a “card reader” are described as
“an optical scanner, a near field communications device, a Bluetooth
communications device, etc.” (id. ¶ 33). “Mobile device,” also recited in the
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claims, is described in the Specification as including “smart phones, tablets.
Portable media devices, wearable devices, laptops, and other portable
computers” (id. ¶ 59). Finally, claim 1 broadly recites a “computer system”
(Appeal Brief, claim 1).
None of the details of any of these recited elements are described in
the Specification as anything other than what is well-understood, routine,
and conventional (see generally Spec.). “When claims . . . are ‘directed to
an abstract idea’ and ‘merely requir[e] generic computer implementation,’
they ‘do[] not move into section 101 eligibility territory’” (buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)).
Thus, we are unable discern any additional elements in claim 1, even
when the recitations are considered in combination, that represent
significantly more than the performance of routine, conventional functions
of a generic computer. That is, claim 1 does not require any
nonconventional computer components, or even a “non-conventional and
non-generic arrangement of known, conventional pieces.”; rather, claim 1
merely calls for performance of the claimed receiving of information,
identifying accounts based on the information, communicating the
information, and selecting the account to pay with “on a set of generic
computer components” (Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). Accordingly, we
conclude claim 1 fails to recite additional elements that amount to
significantly more than the judicial exception.
Appellant additionally argues that the claims “do not attempt to tie up
the identified Abstract Idea so other cannot practice it” (Appeal Br. 23).
This argument is unpersuasive because the claims are directed to patent-
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eligible subject matter. Although preemption is characterized as a driving
concern for patent eligibility, preemption itself is not the test for patent
eligibility. Rather, “[w]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP, 788 F.3d at 1362–63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract”)).
Accordingly, Appellant does not persuade us the Examiner errs in
concluding independent claim 1 and commensurately recited independent
claims 9, 16, and 22 are directed to an exception to patent-eligible subject
matter without reciting significantly more. Appellant does not separately
argue the dependent claims (Spec. 33). Thus, Appellant does not establish
the Examiner erred in determining claims 1–6, 8, 9, 12, 13, 15–23, and 25
are directed to an exception to patent-eligible subject matter without reciting
significantly more. Therefore, we sustain the Examiner’s rejection of claims
1–6, 8, 9, 12, 13, 15–23, and 25 under 35 U.S.C. § 101.

35 U.S.C. § 103: CLAIMS 1–6, 8, 9, 12, 13, 15–23, AND 25
Contentions
Appellant contends their invention, as recited in claims 1 – 6, 8, 9, 12,
13, 15 – 23 and 25, is not obvious over various combinations of Chatterjee,
Laracey, Dwight, and Casey (Appeal Br. 13). The issues presented by the
arguments are whether the combination of Chatterjee, Laracey, and Dwight
teaches or suggests: (1) “after the purchase receipt is generated, and prior to
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the merchant receiving any funds for the payment” and (2) “wherein the
selecting of the second payment account initiates a process that prevents the
payment to the merchant from being processed by the first funding source
such that no funds for the payment to the merchant are obtained from the
first payment account,” as recited in claim 1 and as commensurately recited
in independent claims 9, 16, and 22.

Claim 1
“after the purchase receipt is generated, and prior to the merchant receiving
funds for the payment”

Appellant argues “Dwight fails to disclose performing any actions
after the purchase receipt is generated, and prior to the merchant receiving
any funds for the payment” (Appeal Br. 16 (emphases omitted)). According
to Appellant, “in Dwight the user is only provided the ability to make these
changes after the merchant receives funds for the payment, not prior to the
merchant receiving any funds for the payment” (id. at 17 (emphases
omitted)).
Dwight teaches “[i]f the initial funding source is X and the payment
request is approved with X, the user may still be able to change the funding
source to Y after the purchase has been completed” (Dwight ¶ 12).
Importantly, Dwight teaches “[e]xamples for payment options (before, at, or
after purchase) may include holding off payment until a certain time period
after the transaction” (id. ¶ 27) (emphasis added). Dwight further teaches
“[a]fter the checkout process is ended, the user may decide at some point to
change the payment selections made during the checkout” (id. ¶ 36)
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(emphasis added). Dwight clarifies that the “change” can be in the form of a
different payment source (id. ¶ 53).
Thus, Dwight teaches a user may hold off payment until a certain time
period after the transaction, and then change the payment selection to pay
before or at the certain time period. Therefore, based on these portions of
Dwight, and on the reference as a whole, we agree with the Examiner that
Dwight teaches that a consumer is able to change their payment source
“prior to the merchant receiving funds for the payment,” as claimed.

“wherein the selecting of the second payment account initiates a process
that prevents the payment to the merchant from being processed by the first
funding source such that no funds for the payment to the merchant are
obtained from the first payment account”

Similar to the previously-argued feature, Appellant argues “Dwight
fails to disclose a process that prevents the payment to the merchant from
being processed by the first funding source such that no funds for the
payment to the merchant are obtained from the first payment account”
(Appeal Br. 19). This argument is unpersuasive, as well.
As stated above, Dwight teaches a user is able to defer payments for a
purchase for a certain period of time (Dwight ¶ 27). Dwight further teaches
the user may change the payment source they used at checkout (Dwight
¶¶ 36, 53). We agree with the Examiner that Dwight teaches the claimed
process of preventing payment to the merchant from being processed by the
first funding source such that no funds for the payment to the merchant are
obtained from the first payment account; the payment is made by the
selected second payment source in Dwight. Thus, Appellant has not
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persuaded us the combination of Chatterjee, Laracey, and Dwight fails to
teach “wherein the selecting of the second payment account initiates a
process that prevents the payment to the merchant from being processed by
the first funding source such that no funds for the payment to the merchant
are obtained from the first payment account,” as recited in claim 1.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Chatterjee, Laracey, and Dwight teaches or suggests the
disputed limitations, as recited in claim 1. Therefore, we sustain the
rejection of claim 1 under 35 U.S.C. § 103 for obviousness over Chatterjee,
Laracey, and Dwight.

Claims 9, 16, and 22
Claims 9, 16, and 22 are commensurately recited to claim 1. For the
reasons set forth above, we are not persuaded the Examiner erred in finding
the combination of Chatterjee, Laracey, and Dwight teaches or suggests the
limitations as recited in claims 9, 16, and 22. Therefore, we sustain the
rejection of claims 9, 16, and 22 under 35 U.S.C. § 103 for obviousness over
Chatterjee, Laracey, and Dwight, for the same reason as discussed above
with regard to claim 1.

Claims 2–6, 8, 9, 12, 13, 15–23, and 25
Claims 2 – 6, 8, 9, 12, 13, 15 – 23, and 25 depend from independent
claims 1, 9, 16, and 22, respectively. Appellant does not separately argue
these claims (see generally Appeal Br.). Therefore, the rejections of these
claims stand with their respective independent claims.

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CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
We affirm the rejection of claims 1–6, 8, 9, 12, 13, 15–23, and 25
under 35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception to patent-eligible subject matter without reciting significantly
more.
We affirm the rejection of claims 1–6 and 8 under 35 U.S.C. § 103 as
being unpatentable over Chatterjee, Laracey, and Dwight.
We affirm the rejection of claims 9, 12, 13, 16–19, and 21 under
35 U.S.C. § 103 over Chatterjee, Dwight, and Casey.
We affirm the rejection of claims 15, 20, 22, 23, and 25 under
35 U.S.C. § 103 as being unpatentable over Chatterjee, Dwight, Casey, and
Laracey is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 9,
12, 13, 15–
23, 25
101 Eligibility 1–6, 8, 9,
12, 13, 15–
23, 25

1–6, 8 103 Chatterjee, Laracey,
Dwight
1–6, 8
9, 12, 13,
16–19, 21
103 Chatterjee, Dwight,
Casey
9, 12, 13,
16–19, 21

15, 20, 22,
23, 25
103 Chatterjee, Dwight,
Casey, Laracey
15, 20, 22,
23, 25

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1–6, 8, 9,
12, 13, 15–
23, 25

TIME PERIOD FOR 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) (see 37 C.F.R.
§ 1.136(a)(1)(iv)).
AFFIRMED