The Toronto-Dominion Bank

Patent Trials and Appeals Board

Jul 1, 2020

14755786 - (D) (P.T.A.B. Jul. 1, 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.
14/755,786 06/30/2015 Jakub DANIELAK G4144-00116 9583
39290 7590 07/01/2020
Duane Morris LLP
Duane Morris LLP
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
07/01/2020 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 JAKUB DANIELAK, LAUREN VAN HEERDEN,
GUNALAN NADARAJAH, ORIN DEL VECCHIO,
PAUL MON-WAH CHAN, JONATHAN K. BARNETT,
ASHRAF METWALLI, MATTHEW HAMILTON,
CLARA BOR, and WALLACE BARBOUR

Appeal 2020-001446
Application 14/755,786
Technology Center 3600

____________

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PUR CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject pending claims 1–14, 16, 17, 19–21, 23–28,
31, 33, and 35–42. Final Act. 2. Claims 15, 18, 22, 29, 30, 32, and 34 are
canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Toronto-Dominion Bank.” Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relates to . . . methods and systems that
identify and remedy shortfall events associated with stored account data
. . . operated by financial institutions.” Spec. ¶ 1. Claim 1, reproduced
below with emphasis, is the sole representative independent claim. See
infra 4 (selecting claim 1 as representative).
1. A system, comprising:
a communications unit;
a memory storing instructions; and
one or more processors coupled to the communications unit
and the memory, the one or more processors being configured
to execute the instructions to perform operations including:
loading, from the memory, first data identifying a first
scheduled funds transfer from a first investment account
to a destination account, second data identifying a
shortfall account associated with the first investment
account, and repayment data characterizing at least one
scheduled payment to the shortfall account, the first
scheduled funds transfer being associated with a first
funds transfer amount and a first scheduled transfer time,
and the shortfall account being associated with a period
of temporal validity;
detecting an occurrence of a shortfall event based on the
first data, the shortfall event indicating that the first funds
transfer amount exceeds an amount of funds available
from the first investment account;
determining that a first portion of a shortfall amount is
available for transfer from the shortfall account based on
the repayment data, the shortfall amount reflecting a
difference between the amount of available funds and the
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first funds transfer amount, and the first portion of the
shortfall amount being consistent with the at least one
scheduled payment to the shortfall account;
performing operations that trigger an electronic funds
transfer of the first portion of the shortfall amount from
the shortfall account to the destination account when the
first scheduled transfer time falls within the period of
temporal validity; and
generating and transmitting, via the communications
unit, a first signal to a client device associated with the
first investment account, the first signal comprising a
notification of the triggered electronic transfer, and the
notification causing the client device to present
information characterizing the triggered electronic
transfer within a corresponding interface;
modifying the repayment data in accordance with at least
one of the first funds transfer amount or the first
scheduled transfer time of triggered electronic funds
transfer, the modified repayment data characterizing one
or more additional scheduled transfers of funds from the
first investment account to the shortfall account, and
generating and transmitting, via the communications
unit, a second signal to the client device that includes the
modified repayment data, the second signal comprising
additional data causing the client device to modify the
information presented within the corresponding
interface to include at least a portion of the modified
repayment data.
Appeal Br., Claims Appendix.
Rejection
Claims 1–14, 16, 17, 19–21, 23–28, 31, 33, and 35–42 stand rejected
under 35 U.S.C. § 101 because the claimed invention is directed to patent–
ineligible subject matter. Final Act. 2–5.
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OPINION
Appellant addresses the claims as three groups: (1) all independent
claims (Appeal Br. 16–28); (2) dependent claims 41 and 42 (id. at 29–30);
and (3) the remaining claims (id. at 28–29). We select claims 1, 41, and 2 as
respectively representative of groups (1) to (3). See 37 C.F.R.
§ 41.37(c)(1)(iv). For the below reasons, we are unpersuaded of error in the
rejections of the representative claims. We accordingly sustain the § 101
rejection for all claims.
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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 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 petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
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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
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 187; 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.”) (emphasis
omitted).
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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 (citation 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)
(alteration in original). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under the 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, and mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)−(c), (e)−(h) (9th ed. 2018)).
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
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conclude the claim is directed to a judicial exception (id. at 54) and 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.
Id. at 56.
Analysis for the Independent Claims (First Group)
Representative Claim 1
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a § 101
category of patentable subject matter. Final Act. 2; see also Guidance,
84 Fed. Reg. at 53−54 (“Step 1”).
Step 2A(1):2 Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner’s determination that claim 1 recites
judicial exceptions. See October 2019 Patent Eligibility Guidance Update

2 The Guidance separates the above issues (1) to (4) (supra 6–7) into
Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application. . . .
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
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(“Guidance Update”) at 1 (meaning of “describe”), available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf; see
also 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
Guidance Update). Specifically, we agree the unemphasized limitations of
herein-reproduced claim 1 constitute judicially-excepted (JE) subject matter.
Final Act. 4.3 We further agree these limitations encompass, more
particularly, “transferring funds” (Final Act. 2), a “time-dependent effect of
scheduled transfers on an investment account and a shortfall account”
(Ans. 5), and a consequent “[s]elective modification of the information
presented within [an] interface” (id. at 6). We also agree that, because these
features constitute a “fundamental economic practice” (Final Act. 6) and
“commercial or legal interactions” (Ans. 3), they fall within the Guidance’s
judicial-exceptions category for “Certain Methods of Organizing Human
Activity” (Final Act. 3; Ans. 6). See also Guidance, 84 Fed. Reg. at 52
(categories of judicial exceptions “JE”).
We add that the Examiner correctly identifies the claim’s recitations
of “data,” “electronic,” and “signal” as part of the claimed JE subject matter.
Final Act. 4. See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (Labeling

Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ‛USPTO Berkheimer Memorandum’].”).
3 The Examiner identifies the claimed “additional elements” (id. at 4) and
thereby implicitly identifies the claimed JE subject matter.
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information as electronic, data, a signal, or the like—e.g., “signal with
embedded digital watermark encoded”—does not restrict the information to
statutory subject matter.).
For the foregoing reasons, claim 1 recites JE subject matter.
Step 2A(2): Are the Recited Judicial Exceptions Integrated Into a
Practical Application?
We agree with the Examiner’s determination that the claimed
additional elements do not integrate the claimed judicial exceptions
(i.e., claim 1’s judicially-excepted activities identified above) into a practical
application. Final Act. 4; see also Guidance, 84 Fed. Reg. at 53 (describing
a “practical application” as a “meaningful limit on the [recited judicial
exceptions], such that the claim is more than a drafting effort designed to
monopolize the [exceptions]”); id. at 55 (“exemplary considerations
. . . indicative [of] a practical application”). Specifically, we agree the
emphasized limitations of herein-reproduced claim 1 constitute “the
additional elements of[:] a communications unit[;] a memory storing
instructions[;] one or more processors coupled to the communications unit
and . . . configured to execute the instructions[; and] a client device.” Final
Act. 4. We also agree these claim features “are all recited at a high level of
generality[,] . . . comprise[] a generic computing arrangement,” and
accordingly “result in no more than simply applying the abstract idea using
generic computer elements.” Id.; see also Ans. 4 (citing MPEP § 2106.05(f),
Mere Instructions To Apply An Exception). We further agree the claimed
“updating [of] data . . . is not technical in nature,” but rather “a business
process” that ultimately “displays data on [an] interface.” Final Act. 6
(citing MPEP § 2106.05(g), Insignificant Extra-Solution Activity). We also
agree “mere automation of manual processes, such as using [] generic
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computer [technology] to process . . . financing,” does not constitute a
technological improvement. Ans. 6 (citing Credit Acceptance
Corp. v. Westlake Services, 859 F. 3d 1044, 1055 (Fed. Cir. 2017) and
Lending Tree, LLC v. Zillow, Inc., 656 Fed. App’x 991, 996–97
(Fed. Cir. 2016) (non-precedential)); see also MPEP § 2106.05(a)(I),
Improvements to Computer Technology, at 2100-53 (citing Credit
Acceptance and Lending Tree for the Examiner’s above position).
We add that MPEP § 2106.05(a)–(c) and (e)–(h) support the
Examiner’s determination that the claimed additional elements do not confer
a practical application. See Guidance 84 Fed. Reg. at 55, nn.25–32 (citing
these MPEP sections).
MPEP § 2106.05(a) concerns “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field.”
MPEP at 2100-50. Specifically, it concerns “whether the claim purports to
improve computer capabilities or, instead, invokes computers merely as a
tool.” Id. at 2100-51–52. There is no indication that the claimed invention
improves a technology. The claimed technology merely allocates the
claimed JE activities to the three most basic components of a server—
memory, processors, and a communications unit. The memory stores and
provides the needed financial data. The processors perform all analysis and
the communications unit transmits the results to a client device for display.
Claim 1 therefore does not recite a mechanism or configuration of computer
technology (e.g., a way of programing or designing software), much less an
improvement to computer technology. See McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (“The abstract idea
exception prevents patenting a result where ‘it matters not by what process
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or machinery the result is accomplished.’” (citation omitted)); see also
MPEP § 2106.05(a) at 2100-50–51, 53 (discussions of McRO).
MPEP § 2106.05(b) and (c) respectively concern use of a “Particular
Machine” and “Particular Transformation.” MPEP at 2100-54, 56
(transformation must be “of an article”). Claim 1 does not recite a particular
machine; the above hardware is generic. Nor does claim 1 recite a
transformation, much less a particular transformation. MPEP § 2106.05(e)
concerns “Other Meaningful Limitations.” MPEP at 2100-62. Specifically,
it concerns whether the claim “limitations [go] beyond generally linking the
use of the judicial exception to a particular technological environment.” Id.
It also describes, as an example of limitations falling short of this threshold,
a “data processing system and communications controllers . . . [that] merely
linked the use of the abstract idea to . . . implementation via computers.”
Id. (quoting Alice, 573 U.S. at 226 (internal quotation marks omitted)). For
the reasons discussed with respect to MPEP § 2106.05(a), the claimed
additional elements merely link the claimed JE subject matter to data
processing and communication.
MPEP § 2106.05(f) concerns “Mere Instructions To Apply An
Exception.” MPEP at 2100-63. Specifically, it concerns the “particularity
or generality of the application of the judicial exception.” Id. at 2100-66–
67. It explains that “generically recit[ing] an effect of the judicial
exception[,] or claim[ing] every mode of accomplishing that effect, amounts
to . . . merely adding the words ‘apply it’ to the judicial exception.”
Id. at 2100-66 (citation omitted). The claimed invention accomplishes the
JE subject matter via only generic computer elements performing their
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generic functions in a generic server architecture (see supra 10–11) and
therefore claim 1 constitutes a mere instruction to apply judicial exceptions.
MPEP § 2106.05(g) concerns “Insignificant Extra Solution Activity.”
MPEP at 2100-67–69. Specifically, it concerns whether “the additional
elements add more than . . . activities incidental to the primary process or
product.” Id. at 2100-67. “[L]imitations . . . recite only insignificant
extra-solution activity . . . [if] unrelated to how the solution is achieved.”
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311
(Fed. Cir. 2016). Such limitations include mere “natural consequence[s] of
carrying out the abstract idea in a computing environment.” Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1329 (Fed. Cir. 2017)
(cited by MPEP § 2106.05(g) at 2100-68). The claimed additional elements
are merely incidental, natural consequences of the claimed object and
solution—i.e., of determining and reporting a future shortfall event. For
example, the claimed loading of data—namely “first data identifying a first
scheduled funds transfer . . . , second data identifying a shortfall account
. . . , and repayment data characterizing at least one scheduled payment to
the shortfall account”—constitutes an incidental, natural consequence of
gathering the data needed to anticipate shortfall events. See
MPEP § 2106.05(g) at 2100-67 (describing insignificant “pre-solution
activity”), 68 (“mere data gathering”). Similarly, the claimed “generating
and transmitting . . . [a] signal to the client device . . . to modify the
information presented within the corresponding interface” constitute an
incidental, natural consequence of sending a notification to a bank customer.
See MPEP at 2100-67 (insignificant “post-solution activity”), 69 (“printing
or downloading”).
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MPEP § 2106.05(h) concerns “Field of Use and Technological
Environment.” MPEP at 2100-69. Specifically, it concerns whether an
industry-specific claim limitation “simply . . . acquiesce[s] to limiting the
reach of the patent” by reciting a field of use or technological environment.
Id. It identifies, as an example, limitations that do “not alter or affect how
the process steps . . . were performed.” Id. at 2100-70. There is no
indication that claim 1’s industry-specific limitations—e.g., a “scheduled
funds transfer” and “shortfall account”—alter how claim 1’s non-JE
activities are performed.
For the foregoing reasons, claim 1 is directed to judicial exceptions—
not to a practical application.
Step 2B: Does Claim 1 Recite Anything That Is Beyond the Recited
Judicial Exceptions and Not a Well-Understood, Routine,
Conventional (“WURC”) Activity?
We agree with the Examiner’s determination that all claim features,
i.e., all limitations alone and in combination, constitute either the claimed
JE subject matter or WURC activity. 84 Fed. Reg. at 56. Specifically, we
agree the claimed computer technology is entirely generic (see supra 10–12)
and thus WURC. See Ans. 6–7; Final Act. 6. We also agree the
Specification shows the claimed additional elements, as arranged and
performing the claimed JE activities, can achieve all claim features via a
typical personal computer, server, or the like. Ans. 7 (citing Spec. ¶¶ 19,
23).
We add a claim’s additional elements do not confer “significantly
more” to an invention by: (i) adding the words “apply it” or an equivalent to
an abstract idea (Alice, 573 U.S. at 221–23); (ii) instructing to implement an
abstract idea on a computer (id. at 222–23); or (iii) requiring a generic
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computer to perform generic computer functions (id. at 225). See also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“The patent discloses only generic computers performing
generic functions” and “thus confirms that the implementation of the
abstract idea is routine and conventional.”). The claimed additional
elements squarely fall within these categories (i) to (iii) of WURC activity.
See supra 10–12. Indeed, claim 1 prefaces the invention as being a generic
server (communications unit, memory, and processors) configured to
perform the claimed JE activities. The only other recitations of technology
just state the processed data is “load[ed] from the memory” and
“transmitt[ed] via the communications unit.”
Appellant’s Arguments
Our above determinations address most of Appellant’s arguments.
Only the below arguments need discussion.
Appellant contends the Examiner did not “predicate the determination
in [the Guidance’s Step 2A(1)] on any ‘computer functionality or
technical/technology improvement’ offered by [claim 1].” Reply Br. 3
(citing Ans. 5, which addresses the Guidance’s Step 2A(2)). We are
unpersuaded because the Guidance’s Step 2A(1) is not predicated on
technology. See supra 7–8 (Step 2A(1)).
Appellant contends claim 1 “recite[s] a specific, concrete, and
tangible improvement in an ability of a user to interact with one or more of
the claimed devices or systems through a digital interface, which
dynamically presents, and selectively modifies, interface elements without
user instruction.” Reply Br. 4; see also Appeal Br. 23–24. In support,
Appellant emphasizes claim 1’s recitations of signals that modify the display
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of an interface, states claim 1 recites a “specific method” for visual tracking
of scheduled fund transfers, and cites to paragraphs of the Specification.
Reply Br. 4–6 (citing Spec. ¶¶ 2–3, 44, 188–191; Fig. 10 (elements 1000,
1010)). Appellant also identifies the improvement as a “provisioned
capability . . . to visually perceive and track” time-dependent effects of
scheduled transfers on investment and shortfall accounts. Id. at 6 (emphasis
omitted); see also id. at 7–8 (contending this alleged improvement adds
“significantly more” to the JE activities).
We are unpersuaded because the argued improvement lies in
JE banking information—not in a manner of processing (e.g., collecting,
analyzing, transmitting, or displaying) that information. See SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“[An] advance
[that] lies entirely in the realm of abstract ideas . . . is ineligible for
patenting.”); see also e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241 (Fed. Cir. 2016) (“[T]he claims . . . are directed to an abstract idea [of]
. . . menus with particular features. They do not claim a particular way of
programming or designing the software to create menus that have these
features.”). Claim 1 does not restrict the display of banking information to
the interface structures shown by Appellant’s Figure 10. Compare e.g.,
Trading Techs. Int’l, Inc. v. CQG, INC., 675 F. App’x 1001, 1004
(Fed. Cir. 2017) (“[T]he challenged patents do not simply claim displaying
information on a graphical user interface. The claims require a specific,
structured graphical user interface paired with a prescribed functionality
directly related to the graphical user interface’s structure.”).
Appellant also contends the Examiner does not explain why the
claimed additional elements are WURC. Reply Br. 8–10; Appeal Br. 25–26.
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We are unpersuaded because the Examiner identifies each claimed
additional element as generic or as shown to be WURC by the Specification.
Supra 14–15.
Appellant further contends the Examiner does not link various claim
elements to one of the Guidance’s categories of JE subject matter. Appeal
Br. 16–20. We are unpersuaded because the Examiner clearly identifies all
claim features as constituting JE banking activity or additional elements.
Supra 8–9.
Appellant also contends the claimed processors, communication unit,
memory, and client device integrate the claimed JE activities into a practical
application inasmuch that “it would be impossible to carry out any of the
quoted claim elements and functionalities absent these hardware-based
components.” Appeal Br. 22 (emphasis omitted); see also id. at 23. We are
unpersuaded because the claimed process can be achieved by having a
personal accountant, banker, etc., monitor a customer’s financial accounts
and notify the customer if an impending fund transfer will cause a shortfall
event. We find the claimed computer technology is not essential to
performing these claimed JE activities (nor essential to performing the
claim’s more detailed JE activities). Compare SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“We are not dealing with a
situation in which there is a method that can be performed without a
machine. . . . [T]he use of a GPS receiver is essential.”).4

4 In addition to finding GPS “essential” to the claimed process, SiRF found
the claimed GPS technology distinguished over conventional GPS
technology. SiRF, 601 F.3d at 1322–23.
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Appellant also contends claim 1 patentably distinguishes over the
prior art and, therefore, the Examiner cannot show the claimed additional
elements were WURC. Appeal Br. 27. We are unpersuaded because
overcoming 35 U.S.C. §§ 102 and 103 is not a dispositive consideration for
35 U.S.C. § 101. As the Federal Circuit has explained, a “claim for a new
abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique
claimed was “[g]roundbreaking, innovative, or even brilliant,” that would
not be enough for the claimed abstract idea to be patent eligible. See Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Analysis for Dependent Claims 41 and 42 (Second Group);
Representative Claim 41
Appellant contends claim 41 recites additional elements that, “when
taken as a whole, extend beyond any of the . . . patent-ineligible abstract
ideas enumerated within the 2019 Guidance.” Appeal Br. 29. Appellant
also contends claim 41 recites “a specific technological improvement.”
Id. at 30 (emphasis omitted).
We are unpersuaded because the argued claim features are not
additional elements, but rather JE subject matter. See id. at 29 (emphasized
claimed features). Specifically, the argued signals and visual characteristic
of interface elements are abstractions of the processed banking information
and thus constitute JE subject matter. See supra 9 (discussing similar
abstractions for claim 1).
The argued automation—claimed “without intervention from a user of
the device”—is perhaps an additional element. See id. at 29. However, the
limitation does not indicate a particular way of automating. Amdocs,
Appeal 2020-001446
Application 14/755,786

18
841 F.3d at 1311–12 (Fed. Cir. 2016) (“Because such elements cannot
restrict a claim to a particular way of automating, . . . [they] do not
meaningfully limit claim scope for purposes of patent eligibility.” (internal
quotation marks and citation omitted)).
Analysis for the Remaining Claims (Second Group)
Appellant contends all dependent claims are insufficiently examined
because:
[R]ather than analyzing actual language recited by Appellant’s
dependent claims, the Office simply concludes that
“[Applicant’s dependent claims] further define the abstract idea
that is [allegedly] present in their respective independent claims
. . . and hence are abstract.” [Final Act. 5.] This deficiency
continues to be inconsistent with the Office’s examination
guidelines, and for these reasons, the§ 101 rejection should be
withdrawn. See M.P.E.P. § 2106.07(a) (stating that “the Office
Action must provide [a clear and specific] explanation as to
why each claim is unpatentable”).
Appeal Br. 28 (emphasis omitted). We are unpersuaded of Examiner error.
The Examiner determines the dependent claims merely “further define the
abstract idea that is present in their respective independent claims” (Final
Act. 5 (also above block quote)) and therefore the Examiner clearly and
specifically explains that each dependent claim adds only JE banking
information and activities.

Appeal 2020-001446
Application 14/755,786

19
OVERALL CONCLUSION
We sustain the Examiner’s § 101 rejection of claims 1–14, 16, 17, 19–
21, 23–28, 31, 33, and 35–42.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. Basis Affirmed Reversed
1–14, 16, 17,
19–21, 23–28,
31, 33, 35–42
§ 101 Subject Matter Eligibility
1–14, 16, 17,
19–21, 23–28,
31, 33, 35–42

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