Thomas M. Wolf

Patent Trials and Appeals Board

Jan 16, 2020

13926264 - (D) (P.T.A.B. Jan. 16, 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.
13/926,264 06/25/2013 Thomas M. Wolf 21652-00272 2610
75564 7590 01/16/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS M. WOLF
___________

Appeal 2018-006031
Application 13/926,264
Technology Center 3600
____________

Before ERIC B. CHEN, HUNG H. BUI, and
MICHAEL M. BARRY, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-006031
Application 13/926,264

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 12–20. Claim 11 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to clearing payment card transactions.
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-based method for clearing payment
card transactions, the method implemented using a remote
processing computer device coupled to a memory device,
wherein the remote processing computer device is physically
located within a first geographic region, the method
comprising:
[i] communicating with a web-based server physically
located within the first geographic region that provides a file-
drop component within a local shared network physically
located within the first geographic region;
[ii] retrieving, by the remote processing computer device
from the file-drop component, financial transaction data relating
to purchases made at one or more merchants by a plurality of
payment card cardholders, wherein the financial transaction
data is placed in the file-drop component by one or more
computer devices associated with one or more local clearing
users where the one or more computer devices and the one or

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
MasterCard International Inc. (Appeal Br. 1.)
Appeal 2018-006031
Application 13/926,264

3
more local clearing user are physically located within the first
geographic region;
[iii] checking, by a pre-processing component provided
by the remote processing computer device, the retrieved
financial transaction data for errors based on one or more local
rules associated with the first geographic region;
[iv] performing, by a clearing companion component
provided by the remote processing computer device, a batch
clearing process within the first geographic region on
financial transaction data retrieved in a predetermined period
from the local clearing users physically located within the
first geographic region, wherein the batch clearing process
generates a set of results; and
[v] placing, by the remote processing computer device,
in the file-drop component, the set of results of the batch
clearing process for retrieval by the corresponding local
clearing user;
[vi] wherein the remote processing computer device is
in communication with a main frame processing computer
system that is physically located in a second geographic
region, the second geographic region being outside of the
first geographic region, wherein the main frame processing
computer system includes one or more rules associated with
the second geographic region that are different from the one
or more rules associated with the first geographic region.

REJECTION2
Claims 1–10 and 12–20 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.

2 The Examiner has withdrawn the rejections of claims 1–10 and 12–20
under 35 U.S.C. § 103. (Ans. 2.) As such, the art rejections are no longer
pending on appeal.
Appeal 2018-006031
Application 13/926,264

4
OPINION
We are unpersuaded by Appellant’s arguments (Appeal Br. 6–13; see
also Reply Br. 1–4) that independent claims 1, 9, and 17 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner determined that:
Concepts of clearing payment card transactions by
communicating with a web-based server, provides a file-drop
component, retrieving financial transaction data relating to
purchases made, data is placed, associated with clearing users,
checking the retrieved financial transaction data for errors,
performing a batch clearing process, generates a set of results,
placing the set of results for retrieval, and includes rules
associated with the geographic region, identify concepts held by
the courts to be an abstract idea.
(Ans. 7.) In particular, the Examiner determined that “[c]ourt decisions and
their related concepts include . . . collecting, displaying, and manipulating
data (see Int. Ventures v. Cap One Financial) . . . and data recognition and
storage (see Content Extraction).” (Id.) The Examiner further determined
that “[c]onsidering the limitations as an ordered combination adds nothing
that is not already present when looking at the elements taken individually”
and “[t]here is no indication that the combination of elements improves the
functioning of a computer or improves any other technology.” (Id. at 9.)
We agree with the Examiner’s determinations and ultimate conclusion that
the claims are directed to patent-ineligible subject matter.
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
Appeal 2018-006031
Application 13/926,264

5
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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); 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);
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
Appeal 2018-006031
Application 13/926,264

6
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. at 191 (citing Benson and Flook); see also, 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-
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). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
In 2019, The PTO published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
Under that guidance, we first look to whether the claim recites:
Appeal 2018-006031
Application 13/926,264

7
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
2019)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
See 84 Fed. Reg. 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Likewise, claim 9 is a system claim, and claim 17 is a
computer-readable storage media, both of which fall within the
“manufacture” category of 35 U.S.C. § 101. Therefore, claims 1, 9, and 17
fall within one of the four statutory categories of patentable subject matter
identified by 35 U.S.C. §101.
Although claims 1, 9, and 17 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must
Appeal 2018-006031
Application 13/926,264

8
determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52–
55. If a claim recites a judicial exception without integrating the judicial
exception into a practical application, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 1, a method claim, recites the following
limitations: “[ii] retrieving . . . financial transaction data relating to
purchases made at one or more merchants by a plurality of payment card
cardholders,” “[iii] checking . . . the retrieved financial transaction data for
errors based on one or more local rules associated with the first geographic
region,” and “[iv] performing . . . a batch clearing process within the first
geographic region on financial transaction data retrieved in a predetermined
period from the local clearing users physically located within the first
geographic region.”
Such limitations of claim 1 recite a patent-ineligible abstract idea of
mental processes, such collecting, displaying, and manipulating (or
analyzing) data. See, e.g., Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (“collecting, displaying, and
manipulating data” is an abstract idea); see also, e.g., Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016 (“[t]he advance they
purport to make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.”).
Alternatively, such limitations of claim 1 recite certain methods of
Appeal 2018-006031
Application 13/926,264

9
organizing human activity, such as a fundamental economic practice, for
example, clearing payment card transactions. See, e.g., Alice, 573 U.S. at
219–20 (“a fundamental economic practice long prevalent in our system of
commerce” is an abstract idea).
Claim 1 further recites “[v] placing . . . the set of results of the batch
clearing process for retrieval by the corresponding local clearing user.”
Such limitations of claim 1 recite a patent-ineligible abstract idea of mental
processes, such data recognition and storage. See, e.g., Content Extraction
and Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within
the collected data set, and . . . storing that recognized data in a memory” is
an abstract idea).
Accordingly, claim 1 recites a judicial exception. Claims 9 and 17
recites limitations similar to those discussed with respect to claim 1. Thus,
claims 9 and 17 also recite a judicial exception.

Step 2A, Prong Two
Because claim 1 recites a judicial exception, we next determine if the
claims recite additional elements that integrate the judicial exception into a
practical application.
Computer-based method claim 1 recites the following limitations:
“[ii] retrieving, by the remote processing computer device from the file-drop
component, financial transaction data . . . wherein the financial transaction
data is placed in the file-drop component by one or more computer devices,”
“[iii] checking, by a pre-processing component provided by the remote
processing computer device, the retrieved financial transaction data for
Appeal 2018-006031
Application 13/926,264

10
errors,” “[iv] performing, by a clearing companion component provided by
the remote processing computer device, a batch clearing process,” “[v]
placing, by the remote processing computer device, in the file-drop
component, the set of results of the batch clearing process,” and “[vi]
wherein the main frame processing computer system includes one or more
rules” (emphases added).
The recited computer hardware, including a “remote processing
computer device” “file-drop component,” “computer devices,” “pre-
processing component,” “clearing companion component,” and “main frame
processing computer system” are merely a tools for performing the abstract
idea. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016)
(“[T]he claims are directed not to an improvement in cellular telephones but
simply to the use of cellular telephones as tools in the aid of a process
focused on an abstract idea.”).
Accordingly, claim 1 does not recite additional elements that integrate
the judicial exception into a practical application. Claims 9 and 17 recite
similar additional limitations.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 9, and 17 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, which is enough to ensure that the claim is
directed to significantly more than a judicial exception.
Appeal 2018-006031
Application 13/926,264

11
Claim 1 is a computer-based method claim, includes a preamble
recitation of a “memory device” and further recites a “web-based server,”
“file-drop component,” “local shared network,” “remote processing
computer device,” “computer devices,” “pre-processing component,”
“clearing companion component,” and “main frame processing computer
system.” Similarly, claims 9 and 17 further recite a “processor.”
With respect to the claimed hardware components, Appellant’s
Specification discloses the following:
Memory area 310 may include, but are not limited to,
random access memory (RAM) such as dynamic RAM (DRAM)
or static RAM (SRAM), read-only memory (ROM), erasable
programmable read-only memory (EPROM), electrically
erasable programmable read-only memory (EEPROM), and non-
volatile RAM (NVRAM).
(Spec. ¶ 53 (emphasis added).)
In one embodiment, client systems 114 are computers
including a web browser, such that server system 112 is
accessible to client systems 114 using the Internet. Client
systems 114 are interconnected to the Internet through many
interfaces including a network, such as a local area network
(LAN) or a wide area network (WAN), dial-in-connections,
cable modems, and special high-speed Integrated Services
Digital Network (ISDN) lines.
(Id. ¶ 30 (emphasis added).)
Each of users 602 is able to upload payment card
transaction data to a file-drop/file-pickup component 604 and to
upload processing commands and preferences to a user control
component 606. . . . The results of the clearing process and any
reports generated are transmitted to file-drop/file-pickup
component 604 for retrieval by the respective user that submitted
the payment card transaction data.
(Id. ¶ 55 (emphasis added).)
Appeal 2018-006031
Application 13/926,264

12
In the example embodiment, RPS 40 . . .
communicatively coupled in a cloud environment 48 and
physically located within the political boundaries 50 of a single
country, commonwealth, or economic cooperation authority.
(Id. ¶ 27 (emphasis added).)
In various embodiments system 20 includes a remote
processing system (RPS) 40 that may operate similarly to
interchange network 28. In the example embodiment, RPS 40
includes a pre-processing component 42, a clearing companion
component 44, and a plurality of clearing users 46
communicatively coupled in a cloud environment 48 and
physically located within the political boundaries 50 of a single
country, commonwealth, or economic cooperation authority.
(Id. (emphasis added).)
Using an interchange network 28, computers of merchant
bank 26 or merchant processor will communicate with
computers of an issuer bank 30 to determine whether
cardholder’s 22 account 32 is in good standing and whether the
purchase is covered by cardholder’s 22 available credit line.
Based on these determinations, the request for authorization will
be declined or accepted. If the request is accepted, an
authorization code is issued to merchant 24.
(Id. ¶ 23.)
Pre-processing component 42 checks the payment card
transaction data for errors and if errors are discovered, pre-
processing component 42 may return the payment card
transaction data to the respective user 602 for correction and
resubmittal. If the received payment card transaction data is
error-free or if the errors have been removed, the payment card
transaction data is transmitted to clearing companion component
44 where a clearing process is performed.
(Id. ¶ 55 (emphasis added).)
In the example embodiment, a plurality of clearing users
602 are communicatively coupled to RPS 40 through in-country
Appeal 2018-006031
Application 13/926,264

13
cloud 48. Users 602 are typically banks or financial institutions
involved in a multi-party payment card transaction interchange.
(Id. ¶ 54 (emphasis added).)
FIG. 2 is a simplified block diagram of an example
processing system 100 including a plurality of computer devices
in accordance with one embodiment of the present invention.
System 100 may be representative of at least a portion of system
20 and/or RPS 40 and in certain respects may function similarly.
In the example embodiment, system 100 may be used for
performing payment-by-card transactions in a central location
and in a main frame computer environment or system 100 may
be used for performing payment-by-card transactions in a remote
location and in a web-enabled server environment.
(Id. ¶ 29.)
The term processor, as used herein, refers to central
processing units, microprocessors, microcontrollers, reduced
instruction set circuits (RISC), application specific integrated
circuits (ASIC), logic circuits, and any other circuit or
processor capable of executing the functions described herein.
(Id. ¶ 56 (emphasis added).)
The generalized functional terms by which the computer components
are described reasonably indicates that Appellant’s Specification discloses:
(i) conventional memory area 310 (e.g., RAM, DRAM, SRAM, ROM,
EPROM, EEPROM, NVRAM) (¶ 53); (ii) conventional server system 112,
which interconnects with client systems 114 via LAN, WAN, dial-in-
connections, cable modems, or high-speed ISDN lines (¶ 30); (iii)
conventional file-drop/file-pickup component 604 for uploading processing
commands or preferences, and retrieving payment card transaction data; (iv)
users 602, which are illustrated as computer devices in Figure 6; (v)
conventional cloud environment 48; (vi) conventional remote processing
system 40, which operates similarly to interchange network 28 for
Appeal 2018-006031
Application 13/926,264

14
communicating between merchant bank 26 and issuer bank 30; (vii)
conventional pre-processing component 42, which checks the payment card
transaction data for errors; (viii) conventional clearing companion
component 44, which performs clearing processing; (ix) conventional
processing system 100 including computer devices for performing payment-
by-card transactions; and (x) conventional processors (e.g., central
processing units, microprocessors, microcontrollers, RISC, ASIC, logic
circuits). Moreover, claim 1 recites the additional limitations of “[i]
communicating with a web-based server physically located within the first
geographic region that provides a file-drop component within a local shared
network physically located within the first geographic region” and “[vi]
wherein the remote processing computer device is in communication with a
main frame processing computer system . . . wherein the main frame
processing computer system includes one or more rules . . . ,” which are
merely conventional hardware components performing their conventional
functions.
In addition, Appellant’s Figure 6 illustrates that remote processing
system 40 includes pre-processing component 42, clearing companion
component 44, file-drop/file-pickup component 604, such that remote
processing system 40 is accessible to users 602 (e.g., banks or financial
institutions). (¶¶ 54–55.) Appellant’s Figure 1, an exemplary embodiment,
illustrates that remote processing system 40 is coupled to cloud
environment 48. (¶ 54.) Appellant’s Figure 2, another exemplary
embodiment, illustrates system 100, which includes server system 112
connected to client systems 114, via Internet or other networks. (¶ 30.)
Thus, Figures 1, 2, and 6 illustrate that server system 112, file-drop/file-
Appeal 2018-006031
Application 13/926,264

15
pickup component 604, cloud environment 48, remote processing system 40,
users 602, pre-processing component 42, clearing companion component 44,
and processing system 100 function cooperatively as an ordered
combination.
In view of Appellant’s Specification, the claimed hardware
components, including a “memory device,” “web-based server,” “file-drop
component,” “local shared network,” “remote processing computer device,”
“computer devices,” “pre-processing component,” “clearing companion
component,” “main frame processing computer system,” and “processor,”
reasonably may be determined to be generic, purely conventional computer
elements, as an ordered combination.
Thus, claims 1, 9, and 17 do no more than require generic, purely
conventional computer elements, as an ordered combination, performing
generic computer functions, rather than improve computer capabilities.
First, Appellant argues that “[t]he Examiner provides only a general
allegation and provides no findings of fact to substantiate the assertion that
the claims ‘merely amount[s] to the application or instructions to apply the
abstract idea[’].” (Appeal Br. 6; see also Reply Br. 1–2.) Similarly,
Appellant argues that “[t]he Action rejects Claims 1–10 and 12–20 under 35
U.S.C. §101, but does not clearly identify an abstract idea that is allegedly
recited by the claims” (id. at 14) and “the Action does not cite any
appropriate court decisions that supports the identification of the subject
matter recited in the claim language as an abstract idea” (id. at 15). Contrary
to Appellant’s arguments, the Examiner has identified the appropriate
judicial exceptions as “mental processes” and the Examiner has compared
the claimed concepts of independent claim 1 to appropriate Federal Circuit
Appeal 2018-006031
Application 13/926,264

16
decisions (i.e., Intellectual Ventures and Content Extraction). Accordingly,
the Examiner has met the burden of a general prima facie notice
requirement. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (“[A]ll
that is required of the [Patent] [O]ffice to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of [section] 132.”).
Second, Appellant argues that “Claim 1 addresses the problem of data
collection across networked sources for improving efficiency of a payment
network” and “[t]he claimed solution includes providing drop-box
components and pre-processing components in the same geographic physical
location as the payment card holders and the locations of the payment
transactions (i.e., local to the payment transaction).” (Appeal Br. 7.)
Similarly, Appellant argues that “[t]he present claims describe an
unconventional system [as in BASCOM Global Internet v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016),] for performing payment card
transactions without having to invest significant time and/or money into
infrastructure, while still allowing the payment processing to be performed
in accordance with local rules” and “[t]his system requires rearranged
components and operations to perform the payment processing without
requiring direct contact with the mainframe.” (Id. at 8; see also Reply
Br. 4.) However, Appellant has not adequately explained why the claim
“purport[s] to improve the functioning of the computer itself” or “any other
technology or technical field.” Alice, 573 U.S. at 225. In particular,
Appellant has not explained how “clearing payment card transactions within
the political boundaries of a single country, commonwealth, or economic
Appeal 2018-006031
Application 13/926,264

17
cooperation authority” (Spec. ¶ 3) improves the function of a computer or
other technology.
Third, Appellant argues that “[t]he unconventional and non-generic
nature of the combination of elements can also be shown in the 35 U.S.C.
§ 103 rejection in the latest Action, which required a combination of five (5)
references to allegedly describe the limitations of the present claims.”
(Appeal Br. 8–9.) However, Appellant improperly conflates the
requirements for eligible subject matter with the independent requirements
of novelty and non-obviousness. “The ‘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.
Fourth, Appellant argues that:
The claimed solution [similar to DDR Holdings, LLC. v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)] — providing
drop-box components, pre-processing components, and a
clearing component, and processing in the same geographic
physical location as the payment card holders and the locations
of the payment transactions — is “necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks” and, more specifically, in the
realm of electronic payment networks.
(Appeal Br. 9.) However, other than a conclusory statement that the claims
“necessarily rooted in computer technology,” Appellant does not adequately
explain how “clearing payment card transactions within the political
boundaries of a single country, commonwealth, or economic cooperation
authority” (Spec. ¶ 3) is a problem in the realm of computer networks.
Fifth, Appellant argues that “the present claims are not directed to an
abstract idea, but rather are directed to a specific implementation of a
Appeal 2018-006031
Application 13/926,264

18
solution to a problem in the software arts,” similar to Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). (Appeal Br. 11.) In
particular, Appellant argue that:
the claimed recitations improve the operation of a computer by
problem of data collection across networked sources for
improving efficiency of a payment network, thereby reducing
network traffic over long distances by providing an efficient
method for allowing local processing of payment transactions
without requiring the development of a new platform.
(Id.) However, other than a conclusory statement that the claims “improve
the operation of a computer,” Appellant does not adequately explain how
“clearing payment card transactions within the political boundaries of a
single country, commonwealth, or economic cooperation authority”
(Spec. ¶ 3) is a problem in the software arts.
Last, Appellant argues that similar to McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), “the relevant technology
improves the operation of a computer network by providing dropbox
components, pre-processing components, and a clearing component, and
processing in the same geographic physical location as the payment card
holders and the locations of the payment transactions.” (Appeal Br 12; see
also Reply Br. 3.) However, other than a conclusory statement that the
claims “improves the operation of a computer network,” Appellant does not
adequately explain how “clearing payment card transactions within the
political boundaries of a single country, commonwealth, or economic
cooperation authority” (Spec. ¶ 3) is an improvement in computer-related
technology.
Thus, we agree with the Examiner that claims 1, 9, and 17 are directed
towards patent-ineligible subject matter.
Appeal 2018-006031
Application 13/926,264

19
Accordingly, we sustain the rejection of independent claims 1, 9, and
17 under 35 U.S.C. § 101. Claims 2–8, 10, 12–16, and 18–20 depend from
independent claims 1, 9, and 17, and Appellant has not presented any
additional substantive arguments with respect to these claims. We sustain
the rejection of claims 2–8, 10, 12–16, and 18–20 under 35 U.S.C. § 101 for
the same reasons discussed with respect to independent claims 1, 9, and 17.

CONCLUSION
The Examiner’s decision rejecting claims 1–10 and 12–20 under 35
U.S.C. § 101 is affirmed.

DECISION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–10,12–20 § 101 1–10, 12–20

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)(1)(iv).

AFFIRMED