Thomas Sherfey. Chittenden et al.

Patent Trials and Appeals Board

Jun 9, 2020

2018005597 (P.T.A.B. Jun. 9, 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.
13/853,387 03/29/2013 Thomas Sherfey Chittenden JR. 47376-127001US (263857) 3837
123896 7590 06/09/2020
Mintz Levin/Wayne Fueling Systems LLC
One Financial Center
Boston, MA 02111
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/09/2020 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):
ipdocketingbos@mintz.com
ipfileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SHERFEY CHITTENDEN JR,
PAUL MATTHEW KERN, BRADFORD IAN LOEWY, and
SETHURAMAN SUBRAMANIAN
Appeal 2018-005597
Application 13/853,387
Technology Center 3600
Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JESSICA C. KAISER, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1, 2, and 4–23 are pending, stand rejected, are appealed by
Appellant,1 and are the subject of our decision under 35 U.S.C. § 134(a).
See Final Act. 1–2; Appeal Br. 4.2 We have jurisdiction under
35 U.S.C. § 6(b).

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 Wayne
Fueling Systems LLC. Appeal Br. 1.
2 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed Mar. 29, 2013 (claiming benefit of US 61/711,093 (filed Oct. 8, 2018));
Appeal Brief (“Appeal Br.”) filed Nov. 6, 2017; and Reply Brief (“Reply
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention “relates to processing of transactions related to products
and, in particular, to embodiments of systems and methods that facilitate
transactions at retail fueling stations that occur via mobile devices.” Spec.
¶ 2; see Spec. ¶ 5; Abstract. Claims 1 (reciting a method), 14 (reciting a
gateway component (a machine)), and 18 (reciting a system) are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of processing a transaction at a fueling
station, said method comprising:
at a transaction gateway component comprising a processor
and a non-transitory computer readable medium:
[A] receiving, from a mobile terminal, a site location
code that corresponds to a retail fueling station that includes a
plurality of fuel dispensers each configured to dispense fuel;
[B] accessing a database in response to the site location
code;
[C] receiving site configuration information found in
the database, the site configuration information corresponding to
the received site location code, wherein the site configuration
information comprises a plurality of product records that each
relate to a different type of product available for sale at the
fueling station, and wherein each of the product records comprise
data that assigns the product in the product record either a
reservable product identifier or a non-reservable product
identifier;

Br.”) filed May 9, 2018. We also refer to the Examiner’s Final Office
Action (“Final Act.”) mailed Aug. 15, 2017; and Answer (“Ans.”) mailed
Mar. 9, 2018.
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[D] receiving, from the mobile terminal, a product
selection that identifies one or more of the product records in the
retrieved site configuration information so as to select for
purchase one or more of the different types of products available
for sale at the retail fueling station;
[E] determining which of the products in the identified
one or more product records are assigned with the reservable
product identifier; and
[F] generating an output comprising a reservation
command with data to reserve the one or more selected
products determined to be assigned with the reservable product
identifier, the one or more selected products assigned with the
non-reservable product identifier not being reserved.
Appeal Br., Claims App. A (bracketed claim limitation designations added).
REJECTION
The Examiner rejects claims 1, 2, and 4–23 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 14–18.3
ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).

3 The Examiner has withdrawn his rejection of the claims under 35 U.S.C.
§ 103. Ans. 3.
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services. v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77–80 (2012). “[F]or distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at
217. The framework requires us first to consider “whether the claims at
issue are directed to one of those patent-ineligible concepts.” Alice, 573
U.S. at 217. If so, we then examine “the elements of [the] claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office has published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).4
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg. at
54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; see also Alice, 573 U.S. at 217–18.
For example, we 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.5
See 2019 Revised Guidance, 84 Fed. Reg. at 56.

4 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
5 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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With these principles in mind, we turn to the merits of the § 101
rejection. The Examiner rejects Appellant’s claims 1, 2, and 4–23 as being
directed to patent-ineligible subject matter. See Final Act. 14–18; Ans. 3–5.
Appellant does not separately argue the claims with specificity and, instead,
argues the claims together (with respect to claim 1) for this rejection. See
Appeal Br. 38. Accordingly, we address the Examiner’s rejection of
independent claim 1 and the claims not separately argued by Appellant as a
group based on claim 1, as permitted by 37 C.F.R. § 41.37(c)(1)(iv).
Statutory Subject Matter
Claim 1 recites a “method” (supra). Appellant’s “method” includes
“a transaction gateway component” that further includes “a processor” and a
“computer readable medium” that perform a process comprising a number of
functions or steps. Appeal Br., Claim App. A (claim 1). Accordingly, we
analyze Appellant’s method as a process for performing the delineated
functionality, which is a statutory category of invention (subject matter)
(USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 1 as being directed to patent-
ineligible subject matter. See Final Act. 14–18; Ans. 3–5. Specifically, the
Examiner concludes claim 1 and the other independent claims are “directed
to a judicial exception (. . . an abstract idea) without significantly more”—
“processing transactions at a retail fueling station using a mobile device”
(Final Act. 14) because “claim 1 recites receiving a site location data,
accessing a database, receiving site configuration information, receiving
product selection, determining which product is assigned the product
identifier and generating an output” (Final Act. 16). The Examiner also
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concludes that the recited claim limitations “describe idea(s) which are
analogous to the basic concepts collecting information, analyzing it, and
displaying certain results of the collection and analysis” similar to Electric
Power Group, and “collecting and comparing known information” similar to
Classen. Final Act. 16–17 (citing Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) and Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)). See Final Act. 14–18; Ans.
3–5.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 22–34;
Reply Br. 2–4. Specifically, Appellant contends, with respect to the first
step of the Alice analysis, that the Examiner failed to present a prima facie
patent eligibility analysis in that “the Examiner’s conclusory statement[s]
. . . fail[] to provide the explanation necessary to establish a proper § 101
rejection.” See Appeal Br. 24–25. Appellant also contends Electric Power
is not analogous to claim 1 because, inter alia, claim 1 is “not directed to the
generic information gathering” (Appeal Br. 29) and “is not directed to the
generic information analyzing that the court found problematic in Electric
Power” (Appeal Br. 30). See Appeal Br. 25–31; Reply Br. 2–4. Appellant
further contends Classen is not analogous to claim 1 because, inter alia,
“claim 1 does not recite a method of purely mental steps and cannot be
performed by a human using mental steps or basic critical thinking.” Appeal
Br. 32; see Appeal Br. 31–33; Reply Br. 4. Additionally, Appellant
contends “claim 1 is [not directed] to [a] fundamental economic practice”
(Appeal Br. 34). See Appeal Br. 33–34.
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For the reasons discussed below, we conclude Appellant’s claim 1
(and the other pending claims) recites abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner’s reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant’s claim 1 (see Appeal Br., Claims App. A). Omitting the portions
of the claim invoking use of generic technology (which are discussed
separately below), claim 1 focuses on (as stated in the preamble) “processing
a transaction at a fueling station” by performing the delineated functionality
(steps or functions). These functions elaborate on the fueling station
transaction process, and comprise: (A) “receiving” or collecting information
comprising “a site location code” of a fueling station (limitation A); (B)
analyzing the collected (site location code) information by “accessing”
stored data, where the accessing is “in response to” (utilizes) the “site
location code” (limitation B); and (C) analyzing the collected (site location
code) information by “receiving site configuration information,” which
corresponds to the site location code (i.e., matching the site location code
with corresponding site configuration information and providing the
corresponding site configuration information), where the site configuration
information is characterized as “a plurality of product records that each
relate to a different type of product available for sale at the fueling station”
and each product in the product record is assigned “a reservable product
identifier or a non-reservable product identifier”—that is, the site
configuration information includes product records (data/information) that
are assigned (include) product identifiers (additional data/information)
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(limitation C). The functions of the fueling station transaction process
further include analyzing the received (collected) site configuration
information by “receiving . . . a product selection” identifying “one or more
of the product records” in the received site configuration information “so as
to select for purchase one or more of the different types of products available
for sale at the retail fueling station” (i.e., selecting a product and providing
the selection) (limitation D). The functions of the fueling station transaction
process also include analyzing the received selection information (selected
product records) by “determining which of the [identified] product records
are assigned with the reservable product identifier (limitation E).
Additionally, the fueling station transaction process functionality includes
“generating an output” that comprises “a reservation command . . . to reserve
the one or more [reservable] selected products” (products “assigned with the
reservable product identifier”) (limitation F).
Apart from the use of generic technology (discussed further below),
each of the limitations of claim 1 describes “‘collecting information,
analyzing it, and displaying [(outputting)] certain results of the collection
and analysis,’ where the data analysis steps are recited at a high level of
generality such that they could practically be performed in the human mind.”
October 2019 Update: Subject Matter Eligibility 7, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf (hereinafter “October 2019 Update”). The fueling station
transaction process amounts to a mental process that is very similar to
Electric Power Group. See Elec. Power Grp., 830 F.3d at 1351–54.
A person can practically perform the functions of limitations A–F
(receiving (acquiring or apprehending) site location information, accessing
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stored data, receiving corresponding records that match other received (site
location) information and include an assigned product identifier, receiving a
product selection (identifying product records), determining if the identified
product records are reservable (have an assigned reservable product
identifier), and outputting a reservation) mentally, or by using pen and
paper. Nowhere does Appellant point to specific claim limitations that
distinguish over a human process. Further, the revised guidance explains
that “mental processes” include acts that people can perform in their minds
or using pen and paper, even if the claim recites that a generic computer
component performs the acts. See 2019 Revised Guidance, 84 Fed. Reg. 52
n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”) Because each of the
limitations discussed above encompasses an act that people can perform in
their minds or using pen and paper, claim 1 recites mental processes.
Appellant’s arguments have not persuaded us otherwise. See Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) (identifying the abstract idea of collecting, displaying, and
manipulating data); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the
“claims generally recite . . . extracting data [and] recognizing specific
information from the extracted data” and that the “claims are drawn to the
basic concept of data recognition”). Even where the analysis requires one to
access and gather data, or utilize a pen and paper in the analysis, such
analysis may still be an abstract mental process. See CyberSource Corp. v.
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Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (“[E]ven if
some physical steps are required to obtain information from the database . . .
such data-gathering steps cannot alone confer patentability.”).
Also, apart from the use of generic technology (discussed further
below), each of the limitations of claim 1 describes activities that would be
performed during a common commercial transaction at a fueling station:
limitations A–F describe collecting and analyzing information (recognizing
or apprehending a location, recognizing or apprehending different products
at the location, selecting a product, and determining if a product is
reservable), and purchasing the product (reserving the product for purchase).
Claim 1 thus also recites certain methods of organizing human activity. See
Final Act. 3 (determining that “[t]he conceptual idea of processing
transactions at a retail fueling station using a mobile device is a fundamental
economic practice”); 2019 Revised Guidance, 84 Fed. Reg. at 52 (explaining
that certain methods of organizing human activity include fundamental
economic principles or practices and commercial or legal interactions).
Appellant’s contentions (supra) focus on the Examiner’s purported
improper analysis of the claims (in particular claim 1) and the Examiner’s
purported failure to establish a prima facie case of unpatentability. See
Appeal Br. 24–25. Here, in rejecting the claims (in particular claim 1) under
35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice
two-step framework, consistent with the guidance set forth in the USPTO’s
“2014 Interim Guidance on Patent Subject Matter Eligibility,” 79 Fed. Reg.
74618 (Dec. 16, 2014), in effect at the time the rejection was made on
August 15, 2017. The Examiner notified Appellant of the reasons for the
rejection “together with such information and references as may be useful in
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judging of the propriety of continuing the prosecution of . . . [the]
application.” 35 U.S.C. § 132; see Final Act. 2–4. In doing so, the
Examiner set forth a prima facie case of unpatentability such that the burden
of production shifted to Appellant to demonstrate that the claims are patent
eligible.
To the extent Appellant argues utilizing devices (e.g., the processor,
computer readable medium, database, and mobile terminal) to perform the
recited functionality is not abstract, Appellant misconstrues the inquiry. As
we explained infra, the devices are additional elements that are not part of
this part of the abstract idea analysis. The relevant inquiry is whether the
processes (functionality) recited in the claims (in particular claim 1) are
abstract. Cf. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770
(Fed. Cir. 2019) (“[A]s the Supreme Court indicated in Alice, whether a
device is ‘a tangible system (in § 101 terms, a “machine”)’ is not
dispositive.” (quoting Alice, 573 U.S. at 224)); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot every claim that
recites concrete, tangible components escapes the reach of the abstract-idea
inquiry.”).
In summary, we conclude Appellant’s claim 1 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 1 recites a process for making a transaction (reserving for
purchase a product) at a fueling station—the fueling station transaction
process—by apprehending a site location, recognizing products at the
location, selecting a product, determining if the identified product is
reservable, and reserving the selected product, as discussed supra. The
fueling station transaction process consists of mental processes that can be
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practically performed in the human mind (or utilizing pen and paper)
including observation, evaluation, or judgment. See 2019 Revised
Guidance, 84 Fed. Reg. at 52, 53 (listing “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)” as some of the “enumerated groupings of abstract
ideas” (footnote omitted)). The fueling station transaction process also
encompasses certain methods of organizing human activity. See 2019
Revised Guidance, 84 Fed. Reg. at 52 (explaining that certain methods of
organizing human activity include fundamental economic principles or
practices and commercial or legal interactions).
Practical Application
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Revised Guidance, whether
the claims are directed to that abstract idea, or whether the claims integrate
the abstract idea into a practical application of that abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. at 54. In doing so, we evaluate the claim as
a whole to determine whether the claim “integrate[s] the [abstract idea] into
a practical application, using one or more of the considerations laid out by
the Supreme Court and the Federal Circuit.” 2019 Revised Guidance, 84
Fed. Reg. at 55; see also October 2019 Update at 12 (discussing the practical
application analysis). That is, we consider any additional elements recited in
the claim along with the limitations that recite an abstract idea to determine
whether the claim integrates the abstract idea into a practical application.
See October 2019 Update at 12.
Claim 1 recites additional elements beyond the abstract fueling station
transaction process (the judicial exception). The additional elements in
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claim 1 include “transaction gateway component” (which further includes
the “processor” and the “computer readable medium”), the “database,” and
the “mobile terminal.” Appeal Br., Claim App. A (claim 1).
Appellant’s Specification describes a “data processing system for
analyzing data and performing other analyses” including “a data processing
system 402” and “a data storage system 408”; and the “transaction gateway
component” may include “one or more of systems 402 [and] 408.” Spec.
¶ 63. “The data processing system 402 includes one or more data
processor(s)” and a
“data processor” is a device for automatically operating on data
and can include a central processing unit (CPU), a desktop
computer, a laptop computer, a mainframe computer, a personal
digital assistant, a digital camera, a cellular phone, a smartphone,
or any other device for processing data, managing data, or
handling data . . . .
Spec. ¶ 64. Similarly, Appellant’s Specification describes the data storage
system 408 including “one or more tangible non-transitory computer-
readable storage medium(s) configured to store information . . . . [and] [a]
“tangible non-transitory computer-readable storage medium” as used herein
refers to any non-transitory device . . . that participates in storing instructions
which may be provided to the processor for execution.” Spec. ¶ 66.
Appellant’s Specification also describes accessing the database, where
“[e]xemplary databases include relational databases, flat file, key-value file,
or other system for storing data.” Spec. ¶ 32. Appellant’s Specification
further describes the mobile terminal (mobile device) as “a mobile device
(e.g., a smartphone and/or other terminal)” (Spec. ¶ 5), “a terminal, such as a
mobile telephone” (Spec. ¶ 76), and “terminal 112 can include a variety of
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portable computing devices ( e.g., computers, cellular phones, smartphones,
tablets, personal digital assistants, laptops, etc.)” (Spec. ¶ 17).
In summary, Appellant’s written description does not portray the
transaction gateway component, processor, computer readable medium,
database, and mobile terminal, or other enumerated additional elements as
anything but standard computer components. Nor does Appellant’s written
description portray these components as operating in a new way. Instead,
the written description depicts these components as generic components
operating in their accustomed manner.
Accordingly, Appellant’s written description shows that these
additional elements are generic. See Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not
teach, and preferably omits, what is well known in the art.”); Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017)
(“The claimed mobile interface is so lacking in implementation details that it
amounts to merely a generic component (software, hardware, or firmware)
that permits the performance of the abstract idea, i.e., to retrieve the user-
specific resources.”).
None of these additional elements, whether taken alone or in the
context of the claims as a whole, integrate the judicial exception into a
practical application. In particular, the recited limitations including the
additional elements may improve the mental process or certain method of
organizing human activity for facilitating a fueling station transaction
process, but do not describe an improvement in the functioning of a
computer, or an improvement to other technology or technical field. See
Revised Guidance, 84 Fed. Reg. at 55.
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Appellant contends claim 1 recites elements for “processing a
transaction at a fueling station” (Appeal Br. 36) that “constitute an
improvement to computer-related technologies because they allow for a
transaction gateway component to reserve reservable products available for
sale at the fueling station” (Appeal Br. 36–37), i.e., technical improvements
provided by the process of claim 1. See Appeal Br. 36–37. In other words,
Appellant contends the claims recite a technological improvement that
amounts to more than simply utilizing a computer as a tool to accomplish the
fueling station transaction process.
Appellant’s contentions correspond to the reasoning in MPEP
§ 2106.05(a), where additional elements integrate the judicial exception into
a practical application. We, however, disagree with Appellant’s contentions.
Appellant’s additional elements do not apply or use the fueling station
transaction process (the judicial exception) in a manner that imposes a
meaningful limit on the judicial exception, such that it is more than a
drafting effort designed to monopolize the exception. See Alice, 573 U.S. at
221–24 (citing Mayo, 566 U.S. at 78–85). Rather, Appellant’s claim recites
generic computer elements (e.g., the processor and mobile terminal) that are
utilized as tools to carry out the exchange of information and information
analysis to determine various information for performing a transaction
(reserving products for purchase) as discussed supra. Utilizing computers as
tools to perform common data information analysis and data collection
functions that can be mental processes or certain methods of organizing
human activity (an abstract idea) does not impose a meaningful limit on the
abstract idea. See MPEP § 2106.05(f); see also Alice, 573 U.S. at 223
(finding “if [the] recitation of a computer amounts to a mere instruction to
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implement an abstract idea on a computer that addition cannot impart patent
eligibility”) (quotations and citations omitted).
Appellant’s claim 1 (and the other pending claims) can be
distinguished from patent-eligible claims such as those in McRO, Enfish,
BASCOM, and DDR Holdings that are directed to “a specific means or
method that improves the relevant technology” (McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)), or “a
specific improvement to the way computers operate” (Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), solving a
technology-based problem (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a method
“rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]” (DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Contrary to
Appellant’s arguments, claim 1 is not a technological improvement or an
improvement in a technology. Appellant’s claim 1 does not “improve the
functioning of the computer itself” or “any other technology or technical
field.” Alice, 573 U.S. at 225. Nor does it provide a technological solution
to a technological problem. See DDR Holdings, 773 F.3d at 1257; MPEP
§ 2106.05(a). Appellant fails to explain sufficiently and persuasively how
the instant claim(s) are directed to an improvement in the way computers
operate, nor has Appellant identified any technical advance or improvement
or specialized computer components. See Appeal Br. 36–37.
In summary, “the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
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§ 2106.05(f) (instructing Examiners to consider “[w]hether the claim
invokes computers or other machinery merely as a tool to perform an
existing process” in determining whether the claim recites mere instructions
to apply the exception) (cited in 2019 Revised Guidance, 84 Fed. Reg. at 55
n.30) (emphasis omitted). Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 1 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
discussed above, this requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” 2019 Revised
Guidance, 84 Fed. Reg. at 56.
The Examiner determined that Appellant’s claim 1 (and the other
pending claims) “do not include any additional elements that are sufficient to
amount to significantly more than the judicial exception since the additional
element[s] when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea.” Final Act. 17;
see Final Act. 15–18; Ans. 4–5. Specifically, the Examiner concluded that
“the additional computer elements, which are recited at a high level of
generality, provide conventional computer functions that do not add
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meaningful limitations to practicing the abstract idea” (Final Act. 15) and
“the additional limitations” are “generic computer components [that] are
claimed to perform their basic functions of storing, retrieving, processing,
and displaying that are well understood, routine, and conventional activities
which amount to no more than implementing the abstract idea with a
computerized programmed system” (Final Act. 17). See Final Act. 15–18;
Ans. 4–5.
Appellant does not address explicitly which additional elements are
not well-known, routine, or conventional, or how the additional elements
perform functions that are not well-known, routine, and conventional with
respect to the second step of the Alice analysis. Appellant does, however,
contend claim 1 (as well as the other pending claims) should be upheld
under the Step 2B analysis. See Appeal Br. 35–38; Reply Br. 3–4.
Specifically, Appellant contends “the elements of claim 1 taken individually
and as an ordered combination amount to significantly more than the
abstract idea identified in Step 2A and transform the nature of the claim into
a patent-eligible application” (Appeal Br. 35) and the Examiner’s rejection,
with respect to Step 2B, “fails to meet the burden required for a proper § 101
rejection” because it “amounts to nothing more than a conclusory statement
that the claim lacks significantly more than well-known activities” (Appeal
Br. 36). See Appeal Br. 35–38.
Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (USPTO’s Step 2B). We agree with the
Examiner that Appellant’s claim 1 (as well as the other pending claims) does
not evince an “inventive concept” that is significantly more than the abstract
idea itself. In particular, Appellant fails to explain how the additional
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elements (supra) add specific limitations beyond the judicial exception that
are not well-understood, routine, and conventional in the field.
As previously discussed, claim 1 merely recites additional non-
abstract elements (the transaction gateway component, processor, computer
readable medium, database, and mobile terminal) that perform the fueling
station transaction process. The record supports the Examiner’s findings
(see Final Act. 15–18; Ans. 4–5) that the additional elements, individually
and as an ordered combination, are generic computer components that carry
out common information collection and analysis functions recited in the
fueling station transaction process (the abstract idea), and that the additional
elements are well-understood, routine, and conventional, specified at a high
level of generality. See, e.g., Spec. ¶¶ 5, 17, 32, 63, 64, 66, 76; Ans. 4–5;
see also Revised Guidance, 84 Fed. Reg. at 56.
Such conventional computer processes operating on conventional
computer hardware “do not alone transform an otherwise abstract idea into
patent-eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at
1256). Further, generically claimed elements of a component (transaction
gateway component), a processor, a medium (computer-readable medium), a
database, and a mobile device (mobile terminal) have been found to be no
more than well-understood, routine, and conventional activity in the context
of gathering, assembling, and analyzing information. See, e.g., Berkheimer
v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (“These conventional
limitations of claim 1, combined with limitations of analyzing and
comparing data and reconciling differences between the data . . . . amount to
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no more than performing the abstract idea of parsing and comparing data
with conventional computer components.”).
To the extent that Appellant argues that the purported technical
improvements and benefits of the fueling station transaction process (the
abstract idea) in conjunction with the additional elements provide
significantly more than the abstract idea, we are not persuaded. See Appeal
Br. 35–38. According to Appellant, claim 1 recites purported benefits and
technical improvements—“claim 1 recites elements for processing a
transaction at a fueling station . . . include[ing] . . . a site location code, site
configuration information, . . . product selection[,] and generation of an
output including a reservation command” that “constitute an improvement to
computer-related technologies because they allow for a transaction gateway
component to reserve reservable products available for sale at the fueling.”
Appeal Br. 36–37. The purported benefits and technical improvements,
however, flow from the abstract idea and not the additional elements. That
is, other than using generic technology, the purported benefits and
improvements are elaborations on the basic abstract idea itself. “It is clear
from Mayo that the ‘inventive concept’ cannot be the abstract idea itself.”
Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359
(Fed. Cir. 2018).
Appellant also fails to persuade us that the Examiner did not support
the determination that the additional elements are well-known, routine, and
conventional. The Examiner provides citations to several court decisions,
which discuss well-known, routine, and conventional activity, and that
support the Examiner’s determination. See Ans. 5. Appellant does not
address the Examiner’s citations or reasoning.
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“The second step of the Alice test is satisfied when the claim
limitations ‘involve more than performance of []well-understood, routine,
[and] conventional activities previously known to the industry.’”
Berkheimer v. HP Inc., 881 F.3d at 1367 (quoting Content Extraction, 776
F.3d at 1347–48 and Alice, 573 U.S. at 225). “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer, 881 F.3d at 1369; see 2019
Revised Guidance, 84 Fed. Reg. at 56.
Accordingly, we find the Examiner has supported the finding that that
the additional elements are well-known, routine, and conventional, and we
agree with the Examiner (Ans. 4–5) that the additional elements (supra) are
well-known, routine, and conventional. The Examiner has provided support
from at least category 2 (below) of the four categories of information
required by the USPTO’s guidance in its Berkheimer Memo:6
1. A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) . . . .
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . .

6 Memorandum from Robert W. Bahr, entitled “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.),” dated April 19, 2018
(“Berkheimer Memo”). The Berkheimer Memo is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited May. 25, 2019).
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4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s) . . . .
Berkheimer Memo at 3–4.
For at least the reasons above, Appellant has not persuasively shown
the additional elements amount to significantly more than the abstract idea
when considered either individually or as a combination, and we are not
persuaded of Examiner error in the rejection of claim 1 under 35 U.S.C.
§ 101. Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 1, independent claims 14 and 18, and dependent claims 2,
4–13, 15–17, and 19–23, which depend from claims 1, 14, and 18,
respectively, and which were not argued separately with specificity.
CONCLUSION
For the reasons discussed above, we determine that claims 1, 2, and
4–23 are directed to an abstract idea and do not demonstrate an inventive
concept. Appellant has not shown that the Examiner erred in rejecting
claims 1, 2, and 4–23 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 2, 4–23 101 Eligibility 1, 2, 4–23

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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). See
37 C.F.R. § 41.50(f).
AFFIRMED