THE TORONTO-DOMINION BANK

Patent Trials and Appeals Board

Jul 21, 2021

2021000502 (P.T.A.B. Jul. 21, 2021)

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.
14/796,681 07/10/2015 Lauren van Heerden G4144-00236 8314
39290 7590 07/21/2021
Duane Morris LLP - Washington, D.C.
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/21/2021 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):
DC_IPDocketing@duanemorris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAUREN VAN HEERDEN, ORIN DEL VECCHIO,
GUNALAN NADARAJAH, PAUL MON-WAH CHAN,
STEVEN ROBERT LANGHAM, JONATHAN K. BARNETT,
JAKUB DANIELAK, ROISIN FRITZ, JOHN JONG SUK LEE,
ROBERT MILLER, and ASHRAF METWALLI
____________

Appeal 2021-0005021
Application 14/796,681
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

1 We note co-pending appeal 2020-006187, application 14/796,746 with
substantially similar claims, is an application owned by the same appellant
or assignee, has the same legal representative, and directly affects, is directly
affected by, and has a bearing on the Board’s decision in the pending appeal,
and is thus related. 37 C.F.R. § 41.37(c)(1)(ii).

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 1–3, 5–9, 11–13, 15–22, and
24–28, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The Appellant’s invention “relates to a method and network for
incentivizing consumer [behavior].” Spec. ¶ 2. More specifically, the
invention “determines the incentive plan(s) applicable to a financial
transaction based on the product class(es) of the product(s) purchased in the
transaction, and initiates an incentive transaction with an incentive account
based on the applicable incentive plan(s).” Id. ¶ 4.
Claims 1, 11, and 20 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (lettered
bracketing added for reference).
1. A method of effecting an incentive transaction using at
least one computer server, the at least one computer server being
in communication with a database of incentive plans, each said
incentive plan comprising an incentive plan definition and at
least one participant identifier, each said incentive plan definition
identifying a product class and defining an incentive transaction,
each said incentive plan being associated with a plurality of
incentive plan participants by the at least one participant
identifiers, each said participant identifier being uniquely

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “The
Toronto-Dominion Bank.” Appeal Br. 3.
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associated with a respective one of the incentive plan
participants, the method comprising:
[(a)] the at least one computer server receiving from a
payment terminal a transaction notification message identifying
a financial transaction initiated by one of the plan participants at
the payment terminal, the transaction notification message
including the participant identifier of the one plan participant and
at least one product code each identifying a product being
purchased in the financial transaction;
[(b)] the at least one computer server authorizing the
financial transaction in response to the transaction notification
message;
[(c)] the at least one computer server identifying at least
one applicable incentive plan applicable to the financial
transaction by (i) correlating the participant identifier of the one
plan participant of the transaction notification message with the
at least one applicable incentive plan in the database, and
(ii) correlating the product class of the incentive plan definition
of the at least one applicable incentive plan with a product code
excluded from the transaction notification message;
[(d)] the at least one computer server determining an
incentive amount for the incentive transaction from the at least
one product code and from the incentive plan definition of the at
least one applicable incentive plan; and
[(e)] the at least one computer server initiating the
incentive transaction by transferring the incentive amount
between a first account associated with the one plan participant
and a second account associated with another of the plan
participants of the at least one applicable incentive plan.
Appeal Br. 40 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Ciancio et al. (“Ciancio”) US 2004/0219971 A1 Nov. 4, 2004
Trifiletti et al. (“Trifiletti”) US 2010/0082420 A1 Apr. 1, 2010
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Name Reference Date
Cawley US 2010/0094698 A1 Apr. 15, 2010
Etheredge et al.
(“Etheredge”)
US 2010/0106583 A1 Apr. 29, 2010
Ross et al. (“Ross”) US 2013/0054326 A1 Feb. 28, 2013
Thompson et al.
(“Thompson”)
US 2013/0054394 A1 Feb. 28, 2013
Wegner et al. (“Wegner”) US 2014/0222530 A1 Aug. 7, 2014

REJECTIONS
I. Claims 1–3, 5–9, 11–13, 15–22, and 24–28 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. Final Act. 2.
II. Claims 1, 2, 8, 11, 12, 18, 20, 21, 27, and 28 stand rejected
under 35 U.S.C. § 103 as unpatentable over Trifiletti, Ciancio, and Ross. Id.
at 5.
III. Claims 3, 13, and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Trifiletti, Ciancio, Ross, and Wegner. Id. at 11.
IV. Claims 5–7, 15–17, and 24–26 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Trifiletti, Ciancio, Ross, and Etheredge.
Id. at 12.
V. Claims 9 and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Trifiletti, Ciancio, Ross, and Thompson. Id. at 14.

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OPINION
Rejection I — 35 U.S.C. § 1013
The Appellant presents arguments for independent claim 1 and relies
on those arguments for claims 2, 3, 5–9, 11–13, 15–22, and 24–28. See
Appeal Br. 23, 24, 31, 33, 37, 39. We thus group all the claims together and
select claim 1 as representative of the group, with the rejection of the
remaining claims standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
Section 101
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 U.S. 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).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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)

3 The rejections are addressed in the order presented by the Examiner in the
Final Action.
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(“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);
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 (1854))); 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
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 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.”).
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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 (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. (alterations in original) (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 Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October
2019 Update: Subject Matter Eligibility (“October 2019 Update”),
incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
Although “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance,” the guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
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Under USPTO guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP § 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. § 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).4
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 additional elements, individually or in combination,
provide an inventive concept. See MPEP § 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities

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. “A claim that integrates a judicial exception into a
practical application will 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 Guidance — Section III(A)(2), 84 Fed. Reg. at 54–55;
MPEP § 2106.04(d).
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previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Preliminary Matter
We first address the Appellant’s arguments that the Examiner’s
rejection is in error because the Examiner fails to follow the Guidance and
does not present a prima facie rejection. See Appeal Br. 25–28 (arguing that
“contrary to M.P.E.P. § 2106.07(a), the Final Office Action does not explain
why each and every claim recites, on its own or per se, subject matter that
corresponds to one of these concepts.”), 30, 32, 36, 38 (“Appellant submits
that the Final Office Action fails to include the articulated reasoning
required to substantiate a prima facie rejection of the pending claims under
35 U.S.C. § 101.”); see also Reply Br. 15 (“[T]he Final Office Action did
not explain why each and every claim recites, on its own or per se, subject
matter that corresponds to one of the concepts that any Court had determined
was ineligible subject matter.”). We disagree.
Here, in rejecting claim 1 under § 101, the Examiner analyzes the
claim using the Mayo/Alice two-step framework. Specifically, the Examiner
looks to the intrinsic evidence of the Specification, including the claim
language, as a factor in determining that claim 1 recites and is directed to an
abstract idea. See Ans. 16–22; Final Act. 2–4. The Examiner evaluates
whether the claim is directed to a judicial exception by determining that the
claim recites a method of organizing human activity and a mental process,
evaluating whether the judicial exception is integrated into a practical
application, and determining it is not. See Final Act. 2–4; Ans. 16–19,
21–23. We note that the Guidance states that the approach of Examiners
comparing claims to claims found abstract in court decisions has “become
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impractical” and is no longer part of USPTO 101 guidance. Guidance, 84
Fed. Reg. at 51–52. The Examiner further considers the additional elements
beyond the abstract idea individually and as an ordered combination and
notifies the Appellant that “[t]he claims . . . considered as a whole, do not
provide an inventive concept (significantly more than the abstract idea).”
Ans. 18–19; see also Final Act. 4. Accordingly, the Examiner has notified
the Appellant of the reasons for the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, the Examiner has clearly articulated the reasons as to why the
claim is directed to an abstract idea and has notified the Appellant of the
reasons for the rejection “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132. In doing so, the Examiner set forth a
prima facie case of unpatentability. See In re Jung, 637 F.3d at 1362;
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection”). We
further note that the Examiner has followed the USPTO’s guidelines. And,
to the extent the Appellant argues that the Examiner’s alleged failure to
“rebut Appellant’s submissions” (Appeal Br. 30, 32, 36, 38; Reply Br. 2,
15–21) is reversible error, we disagree. Moreover, we note that the
Examiner clearly considers the Appellant’s arguments and responds to them,
i.e., “rebut[s]” them. Final Act. 16–20; Ans. 3–21. That the Examiner finds
them unpersuasive is not reversible error.
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To the extent the Appellant argues that the Examiner erred in not
addressing each claim individually, we note that there is no specific
requirement that requires that each claim be examined individually by the
Examiner in determining that the claims are directed to an abstract idea. See
Alice, 573 U.S. at 217–21. We further note that the Examiner addresses the
limitations of the dependent claims. Final Act. 4. There is no indication that
the Appellant was not put on notice of the Examiner’s rejection regarding
the dependent claims or that the rejection otherwise failed to satisfy the
requirements of 35 U.S.C. § 132. And, we note that the Appellant does not
provide separate arguments for each dependent claim. Appeal Br. 39.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A of
USPTO guidance, we first determine to what claim 1 is directed, i.e.,
whether the claim recites an abstract idea and if so, whether the claim is
directed to that abstract idea.
Here, under the first step of the Mayo/Alice framework and Step 2A,
Prong One of USPTO guidance, the Examiner determines that claim 1
recites the abstract idea of “implementing an incentive rewards program (or
‘incentive plan’) for providing incentives to a user when the user participates
in the incentive plan and engages in an eligible transaction,” which “is a
method of managing interactions between people, with a marketing
objective” that “falls with the ‘Certain Methods of Organizing Human
Activity’ grouping” of abstract ideas, particularly a commercial transaction
or exchange. Final Act. 3; see also Ans. 12, 16.
The Appellant disagrees and contends that under Prong One, the
“claimed solution is not directed to a concept that the courts have identified
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as an abstract idea” (Appeal Br. 23; Reply Br. 15 (underlining omitted)) and
that claim 1 does not recite “managing interactions between people, with a
marketing objective” (Appeal Br. 25; see also Reply Br. 15).
Under Prong Two of USPTO guidance, the Examiner finds that the
additional elements of a processor and server “are recited at a high level of
generality” that “are merely invoked as tools to perform an abstract idea.”
Final Act. 3–4. The Examiner thus determines that the additional elements
“do not integrate the abstract idea into a practical application.” Id. at 4.
The Appellant disagrees and contends that “the claimed solution
improves upon the conventional technical process of processing incentive
rewards” (Appeal Br. 29; see also id. at 28; Reply Br. 16), “recites computer
elements that, in combination with one another, effects an improvement in
the functioning of a computer” (Appeal Br. 30), “satisfies the machine-or-
transformation test” (Appeal Br. 33; see also id. at 34; Reply Br. 17
(underlining omitted)), and “do[es] not disproportionately tie up the use of
any abstract idea” (Appeal Br. 33; see also Reply Br. 19).
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claim is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification, including
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the claim language, that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
Reciting a Judicial Exception
The Title of the Specification provides for a “PRODUCT-CLASS-
BASED INCENTIVIZED TRANSACTION.” Spec. 1. In the
“BACKGROUND” section, the Specification discusses the purpose of
loyalty programs as “reward[ing] customers for patronizing a particular
merchant or group of participating merchants.” Spec. ¶ 3. The
“SUMMARY” provides that the invention “determines the incentive plan(s)
applicable to a financial transaction based on the product class(es) of the
product(s) purchased in the transaction, and initiates an incentive transaction
with an incentive account based on the applicable incentive plan(s)” (id. ¶ 4)
and that a benefit of the invention is that “plan participants may be
incentivized to engage in [behavior] (e.g. refrain from purchasing products,
and/or encouraged to purchase other products) that has a positive impact on
the value in their incentive account and thereby engage in [behavior] that is
beneficial to the plan participant” (id. ¶ 35).
In view of this disclosure, claim 1 recites “a method of effecting an
incentive transaction using at least one computer server . . . , the method
comprising: the at least one computer server”: (a) “receiving from a payment
terminal a transaction notification message identifying a financial
transaction . . . including the participant identifier . . . and at least one
product code”; (b) “authorizing the financial transaction”; (c) “identifying at
least one applicable incentive plan” by correlating the participant identifier
with an applicable plan and correlating the product class definition with a
product code; (d) “determining an incentive amount . . . from the at least one
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product code and from the incentive plan definition of the at least one
applicable incentive plan”; and (e) “initiating the incentive transaction by
transferring the incentive amount.” Appeal Br. 40 (Claims App.).
We consider claim 1 as a whole5 giving it the broadest reasonable
construction6 as one of ordinary skill in the art would have interpreted it in
light of the Specification7 at the time of filing.
Limitation (a) of receiving from a payment terminal a transaction
notification message is an extra-solution activity of receiving data and an
abstract idea of collecting data. See In re Bilski, 545 F.3d 943, 963 (Fed.
Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity);
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (collecting information is an abstract idea).
Limitation (b) of authorizing the financial transaction is recited
functionally without any implementation details on how, technology or by
what algorithm, the authorization is performed. Paragraph 80 of the
Specification, upon which the Appellant relies on as support for this
limitation (Appeal Br. 4) provides that “[i]f the financial institution

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
6 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
7 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish,
822 F.3d at 1335, among others).
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determines that the financial transaction can be authorized, the financial
institution server 300 generates an Incentive Program Transaction message.”
Paragraph 79 of the Specification provides “the financial institution server
300 determines whether the financial transaction can be authorized by
determining whether the financial account that is associated with the primary
account number is still active and has sufficient credit/funds to complete the
transaction.” As such, the authorizing of a transaction involves some
analysis of data, which is a mental process. See Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[W]e have treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes”).
Limitation (c) of identifying an applicable plan from a correlation of
participant identifier with incentive plan and a correlation of product class
with product code is a mental process of comparing, i.e., analyzing, data.
See Electric Power Group, 830 F.3d at 1354.
Limitation (d) of determining an incentive amount from the product
code and from the incentive plan definition is also recited functionally
without any implementation details on how, technology or by what
algorithm, the determining is performed. Paragraph 96 of the Specification,
upon which the Appellant cites as support for this limitation (Appeal Br. 4)
provides that “[t]o determine the incentive amount for the incentive
transaction(s), the transaction server 400 may apply the UPC of the products
being purchased, the purchase price of the products and/or the total
authorization amount for the transaction, as inputs to the incentive plan
definition of the applicable incentive plan(s).” As such, determining the
incentive amount may comprise the use of mathematical concepts to analyze
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information, which is a mental process. See Electric Power Group, 830 F.3d
at 1354.
Limitation (e) of initiating the incentive transaction by transferring the
incentive amount from one account to another account comprises
transmitting payment data, which is an abstract idea. See Ultramercial, Inc.
v. Hulu, LLC, 772 F. 3d 709, 715 (Fed. Cir. 2014) (determining that
receiving payment is an abstract idea); ChargePoint, Inc. v. SemaConnect,
Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (determining that communicating
between servers over a network is an abstract idea).
The computer server configured to perform limitations (a) through (e)
(indicated as server 400 (Appeal Br. 4)) is a generic server. See Spec. ¶¶ 37,
42–44, 51–52 (describing server 400 as including a network interface and
computer processing system 406 that “may include one or more
microprocessors 408 and a non-transient computer-readable medium 410”).
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a way of using a generic
server to perform the functions of receiving and analyzing data and initiating
a transfer of data based on the results for the purposes of implementing an
incentive rewards program and providing incentives to a user.8 This is an
abstract idea of “[c]ertain methods of organizing human activity . . .
commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors)” comprising “[m]ental processes—concepts

8 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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performed in the human mind (including an observation, evaluation,
judgment, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP
§ 2106.04(a)(2)(II), 2106.04(a)(2)(III).
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of collecting,
analyzing, and displaying the results in Electric Power Group, 830 F.3d at
1354, collecting, analyzing, manipulating, and processing data and
displaying the results of the analysis, manipulation, and processing in
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017), “an intermediated settlement system that employs a
discount for early payment” by determining an incentive amount in Fast 101
Pty. Ltd. v. CitiGroup Inc., 834 F. App’x 591, 593 (Fed. Cir. 2020), cert.
denied sub nom. Fast 101 Pty. Ltd. v. Citigroup Inc., No. 20-1517, 2021 WL
2301993 (U.S. June 7, 2021), “promoting the purchase of a product with the
incentive being a spot in a television program, i.e. product promotion” in In
re Eberra, 730 F. App’x 916, 918 (Fed. Cir. 2018), and advertising and
marketing in In re Morsa, 809 F. App’x 913, 917 (Fed. Cir. 2020), cert.
denied sub nom. Morsa v. Iancu, No. 20-32, 2020 WL 5883301 (U.S. Oct. 5,
2020), reh’g denied, No. 20-32, 2020 WL 6551927 (U.S. Nov. 9, 2020). As
such, we are unpersuaded by the Appellant’s argument that claim 1 does not
recite an abstract idea because it is not similar to a concept identified by the
courts as an abstract idea. See Appeal Br. 24–27.
We also find unpersuasive the Appellant’s argument that claim 1 does
not recite an abstract idea because it does not manage interactions, use
marketing information to manage interactions, or performs mental processes
because
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[T]he solution of independent claim 1 involves at least one server
“receiving . . . a transaction notification message identifying a
financial transaction initiated by one of the plan participants at
the payment terminal”, and “initiating the incentive transaction
by transferring the incentive amount between a first account
associated with the one plan participant and a second account
associated with another of the plan participants of the at least one
applicable incentive plan.”
Appeal Br. 25; see also id. at 26, 31 (“This ordered combination cannot be
performed in the human mind; and the database, computer server and
payment terminal are not incidental to the claimed sequence.”). To the
extent the Appellant argues that the claim cannot recite an abstract idea
because it requires computer elements of a server, payment terminal, and
database that perform the functions of effecting a transfer and receiving and
providing communications, we note that “[c]ourts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.” Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335
(Fed. Cir. 2015). We further emphasize that claim 1 recites using a generic
server to perform the functions identified by the Appellant for the purpose of
providing incentives a method of organizing human activity of a
fundamental economic practice of commercial interactions including
marketing, sales activities or behaviors, or business relations. See
Ans. 16–17.
Having concluded that claim 1 recites a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application.
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Integration into a Practical Application
We look to whether the claim 1 “appl[ies], rel[ies] on, or use[s] 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,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). We note that, as stated above, the question is whether the
claim as a whole “focus on a specific means or method that improves the
relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
Here, the only additional elements recited in claim 1 beyond the
abstract idea are the “computer server,” the “payment terminal,” and the
“database,” that are described in the Specification as a generic server,
payment terminal, and database. See supra; Spec. ¶¶ 37–39. As is clear
from the Specification, there is no indication that the operations recited in
claim 1 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any asserted
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.”); see also Ans. 14.
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We also find no indication in the Specification that the claimed
invention as recited in claim 1 effects a transformation or reduction of a
particular article to a different state or thing. Nor do we find anything of
record 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 USPTO guidance.
The Appellant contends that the invention integrates the judicial
exception into a practical application because the “the claimed solution . . .
improves upon the technical process of processing incentive rewards, [and
thus] the solution of independent claim 1 integrates a process into a practical
application within the meaning of the 2019 Eligibility Guidance.” Appeal
Br. 29 (citing DDR Holdings); see also id. at 30; Reply Br. 16–17, 20–21.
We disagree.
In DDR Holdings, 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. DDR Holdings, 773 F.3d at 1257.
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. The court cautioned that “not all claims
purporting to address Internet-centric challenges are eligible for patent.” Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial in that, in DDR Holdings, the computer network was not
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operating in its “normal, expected manner” and the claims did not “recite an
invention that is . . . merely the routine or conventional use of the Internet.”
Id. at 1258–59.
Here, the Appellant does not state what particular problem arising in
the realm of computer network the claim addresses. To the extent the
Appellant asserts that the claim addresses a problem in “processing time”
(Appeal Br. 29), the Appellant provides no support in the form of evidence
or reasoning that, at the time of the invention, this was a problem. At best,
the Specification alludes to a problem associated with incentivizing
customers to purchase a product. See Spec. ¶¶ 3, 4, 35; supra. This is not a
problem rooted in technology, but rather a business problem related to
marketing or advertising, an abstract idea. See Morsa, 809 F. App’x at 917.
Further, the purported solution comprises a generic server operating in
its ordinary and conventional capacity to perform the functions of receiving
data, identifying an incentive plan, determining an incentive amount,
transferring the incentive amount, and providing a notification. See supra;
see also Alice, 573 U.S. at 224–26. To the extent that Appellant asserts that
the solution of the “process of processing incentive awards” is an
unconventional, non-routine technical solution (Appeal Br. 29–30), we
disagree. See Ans. 14–15. The Appellant does not direct attention to, and
we do not see, where the Specification provides that the computer server acts
in an abnormal manner or outside of its ordinary capacity. Rather, the claim
recites an invention that is merely the routine or conventional use of a
generic computer. See DDR Holdings, 773 F.3d at 1258–59. The Appellant
does not contend that it invented any of the claimed components or their
basic functions or that those components, claimed generally, were unknown
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in the art as of the time of the invention. See Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016) (“Amazon.com”).
Any solution presented is in the abstract idea itself, and not to any
technology, i.e., to the computer components themselves. See BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
We disagree with the Appellant’s contention that claim 1 recites an
improvement to the functioning of a computer or to technology or a
technical field. See Appeal Br. 29–30; see also Reply Br. 16–17. The
Appellant’s arguments that claim 1 provides an improvement to computer
technology by “recit[ing] computer elements (e.g. a database of incentive
plans, at least one computer server, a payment terminal) that work in
combination to effect a process, but with a reduction in the time required to
determine an incentive amount in comparison with, for example, the
solutions taught by Trifiletti and Ciancio” (Appeal Br. 30; see also Reply
Br. 16), by “provid[ing] an improvement over solutions that compute the
incentive amount from the purchase price of each item purchased” (Appeal
Br. 30; Reply Br. 16–17) are unsupported attorney argument. “[O]ur
precedent is clear that merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015). “[T]he so-called
improvements resulting from the claimed method are simply improvements
attendant to using electronic systems.” Fast 101 Pty, 834 F. App’x at 594.
We do not see, and the Appellant does not show, where the Specification
discusses how or that the “computer elements . . . work[ing] in combination”
(Appeal Br. 30) provide these alleged improvements to the technology of the
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server itself, to the technology of the prior art, or to any other technology or
technical field.
We find unpersuasive the Appellant’s argument that claim 1 “satisfies
at least the first prong of the machine-or-transformation test.” Appeal
Br. 31; see also Reply Br. 17–19. As explained in DDR Holdings, 773 F.3d
at 1256, “in Mayo, the Supreme Court emphasized that satisfying the
machine-or-transformation test, by itself, is not sufficient to render a claim
patent-eligible, as not all transformations or machine implementations infuse
an otherwise ineligible claim with an ‘inventive concept.”’ The Federal
Circuit explains that “[the machine-or-transformation] test can provide a
‘useful clue’ in the second step of the Alice framework.” Ultramercial, 772
F.3d at 716. Here, the claim does not pass “the first prong” of the machine-
or-transformation test, i.e., the machine “prong,” because it is “not tied to
any particular novel machine or apparatus, only [to] a general purpose
computer.” Ultramercial, 772 F.3d at 716–17. As discussed above, the
server implementing the method is a generic server that communicates with
a generic payment terminal and database. See supra, Spec. ¶¶ 37, 38, 40–44.
That the components “play an integral part in the performance of the
sequence” (Appeal Br. 32; see also Reply Br. 18) simply limits the use of
the abstract idea to a particular technological environment. See Alice, 573
U.S. at 223 (holding that attempting to limit the use of an abstract idea to a
particular technological environment does not make a claim patent-eligible)
(quoting Bilski, 561 U.S. at 610–11); Affinity Labs. of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limiting
the field of use of the abstract idea to a particular existing technological
environment does not render the claim[] any less abstract”); Bancorp Servs.,
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L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1276 (Fed. Cir.
2012) (finding that the computer employed for basic functions did not
impose meaningful limits on the scope of the claims).
We further disagree that the interactions between the server, database,
and payment terminal yield a “transformation of a transaction notification
message into the transfer of an incentive amount into a specified incentive
account. See DDR Holdings, 773 F.3d at 1258-1259.” Appeal Br. 35. The
claim does not transform the data of a notification message into another state
or thing. Rather the notification provides notice that a transfer of funds, i.e.,
data, has been made — the data remains data, but simply is moved from one
location to another. See also Ans. 16.
The Appellant’s argument that the claims “do[] not disproportionately
tie-up the use of any abstract idea” because the claimed subject matter “does
not monopolize these prior methods” of Trifiletti and Ciancio (Appeal
Br. 34; see also id. at 33, 35 (arguing the use of specific data); Reply
Br. 19–21) does not persuade us that the claim imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. Although the Supreme Court
has described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent-eligible subject matter,] as one of
pre-emption” (see Alice, 573 U.S. at 216), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
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v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573
U.S. at 216). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
To the extent the Appellant argues that the elements of claim 1 that
imposes a meaningful limit on the judicial exception because the prior art
Trifiletti and Ciancio do not teach the elements (Appeal Br. 33–34; Reply
Br. 19–20 (“The claimed solution defines an inventive concept over the state
of the art) (emphasis omitted)), the Appellant misapprehends the controlling
precedent. An abstract idea does not transform into an inventive concept
just because the prior art does not disclose or suggest it. See Mayo, 566 U.S.
at 78. “Groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–
89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to
substitute §§ 102, 103, and 112 inquiries for the better established inquiry
under § 101”); Ultramercial, 772 F.3d at 716 (“That some of the eleven
steps were not previously employed in this art is not enough—standing
alone—to confer patent eligibility upon the claims at issue.”).
The Appellant’s reliance on Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Appeal Br. 34) is misplaced. In
Amdocs, the Federal Circuit held the claim was patent eligible because the
claim entailed an unconventional technological solution (enhancing data in a
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distributed fashion) to a technological problem (massive record flows which
previously required massive databases). Although the solution required
generic components, the court adopted the district court’s interpretation of
the claim term “enhance,” stating, it approved “reading the ‘in a distributed
fashion’ and the ‘close to the source’ of network information requirements
into the term ‘enhance,’” and determined that “the claim’s enhancing
limitation necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality” and that the “enhancing limitation depends not only upon the
invention’s distributed architecture, but also depends upon the network
devices and gatherers––even though these may be generic––working
together in a distributed manner.” Amdocs, 841 F.3d at 1300–01. Here,
there is no similar evidence that the architecture of the generic server,
database, and payment terminal is comparable to the components in Amdocs
or otherwise establishes that the components operate in an unconventional
manner.
To the extent the Appellant argues that claim 1 “does not
disproportionately tie up the use of an abstract idea and is directed to eligible
subject matter” because it has a “level of detail” and “clearly specifies how
interactions between a database of incentive plans, at least one computer
server, and a payment terminal yield a desired technical result- i.e.,
transformation of a transaction notification message into the transfer of an
incentive amount into a specified incentive account” (Appeal Br. 35), we
note that a detailed abstract idea is still an abstract idea. See Ultramercial,
772 F.3d at 716–17.
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Rather, we agree with the Appellant that claim 1 is similar to those of
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1338 (Fed. Cir. 2017) and Amazon.com. Appeal Br. 34. Like Two-
Way Media, claim 1 at issue merely uses generic computer components to
carry out the abstract idea of providing incentive amounts. And, similar to
the claims in Amazon.com, the claimed invention describes the involved
computer components generically, rather than with the specificity necessary
to show that the claims provide a technological solution to a technological
problem.
We thus agree with the Examiner that the additional elements of
claim 1 do not integrate the judicial exception into a practical application, as
the term is used in USPTO guidance, because they “are merely invoked as
tools to perform an abstract idea.” Final Act. 3–4; Ans. 15.
Accordingly, we are not persuaded of error in the Examiner’s
determination that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework and USPTO
guidance Step 2B, we “[e]valuat[e] additional elements to determine
whether they amount to an inventive concept [which] requires considering
them both individually and in combination to ensure that they amount to
significantly more than the judicial exception itself.” MPEP § 2106.05(I).
Here, we agree with and adopt the Examiner’s findings and conclusion that,
even if viewed apart from the abstract idea as further additional
elements, and considered in Step 2B, the steps [of claim 1] of
“receiving a notification”; and “authorizing the financial
transaction”; are elements that the courts have recognized as
well-understood, routine, conventional activity in particular
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fields. (MPEP-2106.05(d).II.). The claims do not provide an
inventive concept (significantly more than the abstract idea).
Final Act. 4; see also Ans. 18–19. We add the following for emphasis.
We find unpersuasive for the reasons indicated above the Appellant’s
arguments that
since the solution of independent claim 1 determines the
incentive amount inter alia by determining whether the customer
did NOT purchase a particular class of items (i.e. scanning the
transaction notification message and terminating the analysis if
the transaction notification message includes an item from any
excluded class), the claimed solution reduces the processing time
required to determine the incentive in comparison with, for
example, the solutions taught by Trifiletti and Ciancio.
Therefore, the solution of independent claim 1 is not
merely the routine or conventional use of a generic computer
technology, but instead improves upon the conventional
technical process of transferring an incentive amount to
participants of an incentive plan. See DDR, 773 F. 3d at 1259.
Appeal Br. 37–38; see also Reply Br. 20–21. We note further that the claim
does not require any scanning, terminating, or determining that an item was
not purchased. Rather, limitation (c) requires a correlation between a
product class of the plan definition and a code excluded from the transaction
and limitation (d) simply recites the result of determining an incentive
amount, without any details on how that is accomplished.
Contrary to the Appellant’s assertion, we also find no parallel between
claim 1 here and the patent-eligible claim 1 in hypothetical Example 37 of
the USPTO's “Subject Matter Eligibility Examples: Abstract Ideas,”
available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf (hereinafter “Eligibility Examples”).
Appeal Br. 39. Put simply, the hypothetical claim requires the GUI to
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function in a specific manner that results in an improved user interface for
electronic devices. Appellant fails to show how the claim here is similar to
Example 37’s “specific manner of automatically displaying icons to the user
based on usage which provides a specific improvement over prior systems,
resulting in an improved user interface for electronic devices.” Appeal
Br. 39. We find no comparable improvement to a user interface in the
Appellant’s claimed invention; claim 1 does not recite a specific manner of
displaying anything nor does it recite a specific improvement over prior art
systems resulting in a technological or technical improvement in the
computer components of claim 1. See BSG Tech, 899 F.3d at 1288 (“[A]n
improvement to the information stored by a database is not equivalent to an
improvement in the database’s functionality.”).
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1, considered individually and as an
ordered combination, do not amount to significantly more than the abstract
idea itself.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 1 and thus also of claims 2, 3,
5–9, 11–13, 15–22, and 24–28.
Rejections II–V — 35 U.S.C. § 103
We agree with the Appellant’s contention that the Examiner’s
rejection under 35 U.S.C. § 103 of claims 1, 11, and 20 as obvious over
Trifiletti, Ciancio, and Ross is in error because the Examiner does not show
that Ross, upon which the Examiner relies, teaching transferring an amount
between participants’ accounts, as recited in limitation (e) of claim 1 and
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similarly recited in claims 11 and 20. See Appeal Br. 18–19; see also Reply
Br. 10–13.
The Examiner relies on Trifiletti for teaching limitations (a), (b), part
of (c), and (d) of claim 1 and similarly recited in independent claims 11
and 20. Final Act. 5–7. The Examiner relies on Ciancio for teaching each
incentive plan definition identifying a product class, as recited in the
preamble, and parts (i) and (ii) of limitation (c) of correlating. Id. at 7–8.
The Examiner relies on Ross for teaching limitation (d) of initiating a
transfer amount between a first account of one participant and a second
account of another participant. Id. at 8–9. In relevant part, the Examiner
finds that Ross teaches “that when a member of a SN [social network]
initiates an incentive transaction with a first account, this first account
accrues rewards (incentives), while at the same time, a second account of a
second member of the SN who is a plan participant accrues rewards (group
rewards) as well.” Id. at 8. The Examiner determines:
Trifiletti[] teaches a “base” reward program where consumers
accrue rewards based on transactions; and Ross[] teaches a
“comparable” reward program, which offers the improvement of
providing group rewards so that a transaction associated with a
first account of a first user may accrue rewards for said first
account as well as for a second account associated with another
of the plan participants.
It would have been obvious to one of ordinary skill in the
art at the time of the invention to expand Trifiletti[]; in view of
Ross[]; to include a transaction associated with a first account of
a first user may accrue rewards for said first account as well as
for a second account associated with another of the plan
participants. One of ordinary skill in the art at the time of the
invention would have been motivated to expand Trifiletti2420 in
this way, since doing so is applying a known technique (reward
program wherein a transaction associated with a first account of
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a first user may accrue rewards for said first account as well as
for a second account associated with another of the plan
participants) to improve a similar reward program, in the same
way.
Id. at 8–9.
We agree with the Appellant that when giving limitation (e)’s recital
of transferring the incentive amount between the first and second accounts
its broadest reasonable interpretation in light of the Specification, the
limitation “mean[s] that the server withdraws the incentive amount from the
account of one member of the incentive plan and deposits that amount into
the account of another member of that incentive plan.” Reply Br. 13; see
also id. at 11–12 (citing Spec. ¶¶ 84, 88, 90, 97); cf. Ans. 9 (“The claim
language does not require that a reward from one group member is taken
from one group member and what is taken from one member is transferred
to another group member.).
The Examiner finds that Ross teaches “when a first member of a SN
initiates an incentive transaction with a first account, this first account
accrues rewards (incentives), while at the same time, a second account of a
second member of the SN who is a plan participant accrues rewards (group
rewards) as well.” Ans. 9. However, we do not see, and the Examiner does
not find, that Ross teaches transferring an amount from a first account to a
second account, i.e., initiating a transfer between first and second accounts.
See Appeal Br. 18–19.
We, therefore, do not sustain the rejection under 35 U.S.C. § 103 of
independent claims 1, 11, and 20. We also do not sustain the rejections
under 35 U.S.C. § 103 of claims 2, 3, 5–9, 12, 13, 15–19, 21, 22, and 24–28,
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for which the Examiner’s reliance on the other cited art does remedy that
deficiency in the Examiner’s rejection of independent claims 1, 11, and 20.

CONCLUSION
The Examiner’s decision to reject claims 1–3, 5–9, 11–13, 15–22, and
24–28 under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 1–3, 5–9, 11–13, 15–22, and
24–28 under 35 U.S.C. § 103 is reversed.
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–3, 5–9, 11–
13, 15–22,
24–28
101 Eligibility 1–3, 5–9,
11–13, 15–
22, 24–28

1, 2, 8, 11,
12, 18, 20,
21, 27, 28
103 Trifiletti, Ciancio,
Ross
1, 2, 8, 11,
12, 18, 20,
21, 27, 28
3, 13, 22 103 Trifiletti, Ciancio,
Ross, Wegner
3, 13, 22
5–7, 15–17,
24–26
103 Trifiletti, Ciancio,
Ross, Etheredge
5–7, 15–
17, 24–26
9, 19 103 Trifiletti, Ciancio,
Ross, Thompson
9, 19
Overall
Outcome
1–3, 5–9,
11–13, 15–
22, 24–28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED