William Frederick. Mann et al.

Patent Trials and Appeals Board

Aug 12, 2019

13312525 - (D) (P.T.A.B. Aug. 12, 2019)

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.
13/312,525 12/06/2011 William Frederick MANN III 47004.000717 8245
131244 7590 08/12/2019
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania Avenue, NW
Suite 800
Washington, DC 20037
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
08/12/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM FREDERICK MANN III and JEFFREY L. HIRKA
____________

Appeal 2018-003806
Application 13/312,5251
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. (Appeal Br. 1).

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STATEMENT OF THE CASE2
William Frederick Mann III and Jeffrey L. Hirka (Appellants) seek
review under 35 U.S.C. § 134 of a non–final rejection of claims 44, 46–48,
and 64–79, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of performing transactions related to
an account, so as to eliminate the need for the physical presence of a
transaction card during the transaction. Specification 1.
An understanding of the invention can be derived from a reading of
exemplary claim 44, which is reproduced below (bracketed matter and some
paragraphing added).
44. A method by which a tangibly embodied computer conducts
a transaction comprising:
[1] receiving,
from a cellular phone operated by a customer,
a wireless electronic communication comprising
a request to pay a merchant a transaction amount,
a single entry alias that identifies a financial
transaction account associated with the customer,
and
a personal identification entry (PIE);

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.”), filed September 20, 2017, and Reply Brief (“Reply Br.”), filed
February 26, 2018, and the Examiner’s Answer (“Ans.”), mailed December
27, 2017, and the Non-Final Action (“Non-Final Act.”), mailed June 26,
2017).
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[2] retrieving a financial transaction account number for the
financial transaction account;
[3] at least one computer processor analyzing the personal
identification entry
to determine if the customer is authorized to pay the
merchant,
such analyzing including verifying the financial
transaction account number using the customer’s PIE;
and
[4] the at least one computer processor sending a further
electronic communication to the cellular phone operated by the
customer
indicating that a payment from the customer to the
merchant has been made.
The Examiner relies upon the following prior art:
Bartoli US 6,047,268 Apr. 4, 2000
Lewis US 6,213,391 B1 Apr. 10, 2001
Campisano US 6,227,447 B1 May 8, 2001
Pare US 6,269,348 B1 July 31, 2001
Hillhouse US 7,093,282 B2 Aug. 15, 2006
Claims 44, 46–48, and 64–79 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 44, 46–48, and 64–79 stand rejected under the judicially
created doctrine of obviousness type double patenting as claiming the
patentably indistinguishable subject matter as another U.S. Patent.
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Claims 44, 46–48, and 64–79 stand rejected under 35 U.S.C. § 112(a)
as lacking a supporting written description within the original disclosure.3
Claims 44 and 46–48 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Campisano and Lewis.
Claim 75 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Campisano, Lewis, and either Hillhouse or Bartoli.
Claims 44, 46–48, 64–74, and 76–79 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pare and Lewis.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of written description matter turn primarily on whether the
record shows evidence of possession of the claimed subject matter as of the
date of filing.
The issues of obviousness turn primarily on whether the prior art
describes the claim limitations and whether one of ordinary skill would have
combined the teachings.

3 The rejection of claims 44 and 64–79 under 35 U.S.C. § 112(b) as failing
to particularly point out and distinctly claim the invention (Non-Final Act. 9)
are withdrawn (Ans. 3).
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (“FF”) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “single
entry alias.”
Facts Related to the Prior Art
Campisano
02. Campisano is directed to assigning an alias, such as a phone
number and a Personal Identification Number (“PIN”), to a credit
card so as to eliminate the need for the physical presence of the
card during a transaction. Campisano 1:5–9
03. Campisano describes cross-linking the cardholder’s phone number
to the credit card number and providing the customer with a
corresponding PIN that can be changed immediately upon receipt
so that it is a number that the cardmember can easily remember.
The PIN can also be selected by the cardmember from his or her
home phone. As one method of authentication, the bank can
verify the identity of the caller by their phone number using an
Automatic Number Identification (“ANI”) system which ensures a
secure registration of the PIN. The customer can then self-select
the PIN he or she wishes to use. Campisano 1:43–56.
04. Campisano describes the validation process being fairly quick and
then the process retrieves the credit card linked to the phone
number and PIN the cardmember has provided. Campisano 2:33–
35.
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05. Campisano describes the transaction being continued and the card
number received by the merchant being verified using the
cardmember’s PIN. The cardmember provides the PIN to the
merchant. This can be done by having the cardmember punch in
the PIN on the telephone key pad or verbally indicating the PIN to
the merchant. The ten-digit number and PIN are verified by the
merchant. The verification process is similar to that used to
verified original credit card numbers and expiration dates. Once
the number has been verified, the merchant processes the
transaction and the credit card is charged. After the credit card
has been charged, the transaction is completed. Campisano 2:60–
67.
Lewis
06. Lewis is directed to electronic personal identification. Lewis 1:8–
10.
07. Lewis describes a card or other small portable device that
contains a device which positively identifies the cardholder as an
authorized or unauthorized user, and thereby provides or prevents
access to a specific secure objective (e.g. an ATM machine,
security gate or door, computer scanning device, and other such
accounts, areas or the like which require restricted access). The
invention obtains the potential user’s unique personal
identification profile, preferably a digital representation of some
uniquely identifying trait of the user, such as, but not limited to
any biometric analysis system (e.g. fingerprint, DNA, palm print,
retina scan, etc.), or other identification system which produces a
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digital profile that is sufficiently unique as to provide a reasonable
degree of certainty as to identification. Lewis 3:47–65.
08. Lewis describes integration of the invention into a telephone
(particularly a cellular telephone) as being significantly useful. A
phone may create specific tone codes for identification purposes,
and may have a voice identification based ID system. By
integrating the invention into a cellular (or other) telephone, the
device can take advantage of components already present in the
“host” device. In the telephone example, the device may use the
phone’s built in microphone and/or speaker system as the voice ID
input. Additionally, any tone codes the device may create and
transmit may be so created and transmitted by the phone’s built in
tone generator. Lewis 6:15–31.
09. Lewis describes creation of secure PIN codes for ATM cards.
This feature adds flexibility to such cards in that in the event of a
malfunction of or mis-recognition by the primary identification
method, the uniquely generated PIN code may still authorize
access. This secondary ID method is equally secure, since it is
generated according to the originally stored voice print or other ID
characteristic. Also, as explained above, this feature allows for
the existence and efficient management of multiple accounts on a
single card. Lewis 5:54–63.
Pare
10. Pare is directed to tokenless biometric financial transactions. Pare
1:15–16.
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11. Pare describes Network point of sale transactions are
characterized by identifying the payor t using the payor's bid
biometric sample submitted through the payor’s personal PIA, or
through a public PIA attached to an ATM or other public terminal.
The payee is a registered network merchant, and is identified
through a digital certificate. Thus the payor is identified through
biometrics, while the payee is identified through the verification
of a digital certificate issued by an authorized certifying authority.
Pare 16:4–12.
12. Pare describes the payor submitting a bid biometric sample
obtained from their physical person using the PIA’s biometric
sensor. The PIA determines that the biometric scan is non-
fraudulent, and then translates and compresses that biometric scan
into a format suitable for rapid transmission to the DPC. The
payor then enters a PIN code into the PIA keypad. Pare 16:18–23.
13. Pare describes the PIA transmitting the biometric-PIN to the DPC
for identification, along with the payee’s digital certificate. The
DPC identifies the payor, and retrieves the list of credit/debit
accounts that the payor has previously registered with the system,
and transmits this list back to the PIA. Pare 16:19–28.
14. Pare describes the payor optionally choosing from among a list of
credit/debit accounts, or the payor may have only one credit/debit
account from which payment may be made, in which case the
payor’s account is selected automatically. Pare 16:33–37.
15. Pare describes the amount of the transaction being transmitted to
the PIA by the payee. The payor then either approves or cancels
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the transaction using the PIA’s keypad. Once the transaction is
approved, the PIA transmits the electronic payment to the DPC,
where the DPC authorizes the electronic payment and transmits a
new electronic payment transaction to the appropriate credit or
debit network for authorization or execution. Pare 16:38–44.
16. Pare describes a private code, which is distinct from a personal
identification number (PIN) and not used in a payor identification
step, and is preferably chosen by the user, is transmitted to the
PIA from the DPC, and presented to either the payor or payee
subsequent to a successful identification using biometrics. This
private code identifies the authorization system to the payor or
payee users. The private code is selected by the payor or payee
during registration with the third party identicator, and is never
entered into the PIA during a transaction authorization.
Additionally, the PIA and DPC always transmit the private code
in an encrypted form. As a result, only the authentic DPC and
PIA can provide a person's private code after a successful
identification. The private code is displayed to the payor to
validate that the authentic electronic third party identicator has
processes the transaction. Pare 16:52–67.
Hillhouse
17. Hillhouse is directed to generating a password that changes as a
function of various parameters making the password dynamic.
Hillhouse 1:3–7.
18. Hillhouse describes providing a process for transforming at least
a variable parameter into an ordered string of characters, wherein
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the process sometimes results in different ordered strings of
characters for a same variable parameter; providing at least a
variable parameter as a known password; determining from data
available to an individual and from the known password a static
string; providing the determined static string as a password for
verification; verifying the static string to determine that it is an
accurate transformation of the at least a variable parameter
according to the provided process and when the determination is
that the transformation is accurate, providing an indication that the
password is verified. Hillhouse 2:26–43.
19. Hillhouse describes providing a security system based upon a
dynamic password, i.e. a password comprising at least one
parameter that changes in an uncontrollable way. Hillhouse 4:3–
6.
20. Hillhouse describes a most probable parameter that is
uncontrollably variable as being a parameter related to time. It is
therefore advantageous to introduce a parameter related to the
time in a dynamic password generation process because the time
can be used in many ways such as hour of the day, day of the
week/month, age, etc. By introducing at least a time parameter
into a dynamic password generating equation, a password is
automatically and deterministically different nearly every time it
is used. The password mostly comprises some static or passive
parameters such as the name of the user and perhaps also isolated
letters that may complicate the determination of the password.
Hillhouse 4:7–19.
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Bartoli
21. Bartoli is directed to billing a user for transactions for services
and/or goods provided and/or ordered over the Internet. Bartoli
1:6–8.
22. Bartoli describes a merchant’s digitally signed order being sent
to the billing system for authentication and authorization of the
transaction in response to the user’s intent to purchase the selected
item and be billed via the billing system. Information previously
provided to the user’s client terminal’s cookie file is transmitted to
a billing server within the billing system. This information
comprises a static information portion and a transaction oriented
dynamic information portion, which are encrypted prior to
transmission. The static information portion identifies the user
through an assigned account number. The transaction oriented
dynamic information portion comprises at least one sequence that
was sent to the user’s cookie file by the billing server upon a
previous transaction, and is valid for only a single new
transaction. The billing server, upon receiving from the user's
browser program the cookie containing the encrypted static and
dynamic information portions and decrypting same, identifies the
user from the static portion, and accesses from an associated
database the expected transaction oriented dynamic portion that
the billing server last sent to that user. If the expected dynamic
portion matches the received dynamic portion, the user is
authenticated to proceed with the current transaction. The billing
server, upon authentication of the user, then authorizes the specific
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transaction based on various criteria such as the user’s credit limit,
the cost of the transaction, etc. The billing server then sends to the
user’s browser a new cookie which contains the user’s account
identity in the static information portion and a new transaction
oriented dynamic portion to be used by the user’s browser for
authentication of the user for a next transaction. Upon receipt, the
user’s browser program installs the new cookie and provides the
user the opportunity to reject or finally approve of the transaction.
If approved by the user, the order is sent to the merchant’s server
via the user's client terminal browser program. Upon receipt, the
merchant’s server posts the complete transaction information to
the billing server for billing and provides for the delivery of the
goods or services to the user. The customer’s transaction is then
confirmed through an acknowledgment sent via e-mail transmitted
to the e-mail address associated with the account number. Bartoli
2:34–3:14.
ANALYSIS
Claims 44, 46–48, and 64–79 rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more
STEP 14
Claim 44, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each 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. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., 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 Corp., Pty. Ltd. v CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(internal citations omitted) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “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.” Revised Guidance, 84 FR at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
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additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 44 recites receiving data, retrieving data, analyzing data to determine
if authorized, and sending a communication. Analyzing data to determine if
authorized is rudimentary analysis by comparing to criteria. Sending is
transmitting. Thus, claim 44 recites receiving, analyzing, and transmitting
data. None of the limitations recite technological implementation details for
any of these steps, but instead recite only results desired by any and all
possible means.
From this we see that claim 44 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,5 (2) certain methods of organizing

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
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human activity,6 and (3) mental processes.7 Among those certain methods of
organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts, claim 44 recites the concept of
payment processing. Specifically, claim 44 recites operations that would
ordinarily take place in advising one to determine whether a user is
authorized to pay by comparing data to criteria and transmit a notification
after receiving pertinent data. The advice to determine whether a user is
authorized to pay by comparing data to criteria and transmit a notification
after receiving pertinent data involves making a payment, which is an
economic act, and determining that the payor is authorized, which is an act
ordinarily performed in commerce. For example, claim 44 recites “a
payment from the customer to the merchant has been made,” which is an
activity that would take place whenever one is making a payment.
Similarly, claim 1 recites “determine if the customer is authorized to pay the
merchant” which is also characteristic of payment processing.
The Examiner determines the claims to be directed to conducting a
financial transaction using a PIN. Non-Final Act. 4.
The preamble to claim 44 recites that it is a method by which a
tangibly embodied computer conducts a transaction. The steps in claim 44
result in analyzing data to test for authorization and sending a

6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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communication absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 1 and 2 recite receiving and
retrieving data. Limitation 4 recites generic transmitting of payment
indication data. Limitation 3 recites generic analysis by comparing data
against criteria, which advises one to apply generic functions to get to these
results. The limitations thus recite advice for determining whether a user is
authorized to pay by comparing data to criteria and transmitting a
notification after receiving pertinent data. To advocate determining whether
a user is authorized to pay by comparing data to criteria and transmitting a
notification after receiving pertinent data is conceptual advice for results
desired and not technological operations.
The Specification at 1 describes the invention as relating to
performing transactions related to an account, so as to eliminate the need for
the physical presence of a transaction card during the transaction. The
phrase “so as to eliminate the need for the physical presence of a transaction
card during the transaction” is afforded minimal patentable weight because
the choice to use a card is mere convention. Payments can generally be
made without a card by orally communicating account information. Thus,
all this intrinsic evidence shows that claim 44 is directed to making a
payment, i.e. payment processing. This is consistent with the Examiner’s
determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because payment processing is
part of commercial interactions for payment. The concept of payment
processing by determining whether a user is authorized to pay by comparing
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data to criteria and transmitting a notification after receiving pertinent data is
one idea for ensuring a legitimate payment. The steps recited in claim 44 are
part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (customer purchase
transaction).
From this we conclude that at least to this degree, claim 44 is
provisionally directed to payment processing by determining whether a user
is authorized to pay by comparing data to criteria and transmitting a
notification after receiving pertinent data, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 44 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. . . . At
some level, “all inventions . . . embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
. . . Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept.
. . . “[A]pplication[s]” of such concepts “‘to a new and useful
end,’” we have said, remain eligible for patent protection.
. . . Accordingly, in applying the § 101 exception, we must

8 See, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S.
175 (1981)).
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distinguish between patents that claim the “‘buildin[g] block[s]’
” of human ingenuity and those that integrate the building blocks
into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 4
is generic post solution activity, such as storing, transmitting, or displaying
the results. Step 3 recites generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellants’ claim 44 simply recites the concept of
payment processing by determining whether a user is authorized to pay by
comparing data to criteria and transmitting a notification after receiving
pertinent data as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 44 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification spells out different generic
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equipment9 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of payment processing by determining whether a user is authorized
to pay by comparing data to criteria and transmitting a notification after
receiving pertinent data under different scenarios. It does not describe any
particular improvement in the manner a computer functions. Instead, claim
44 at issue amounts to nothing significantly more than an instruction to
apply payment processing by determining whether a user is authorized to
pay by comparing data to criteria and transmitting a notification after
receiving pertinent data using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that

9 The Specification describes the term “computer"” or “computer system” as
to be understood to include at least one processor utilizing a memory or
memories. Spec. 32:16–18.
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the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 44 is directed to achieving the result of
payment processing by advising one to determine whether a user is
authorized to pay by comparing data to criteria and transmitting a
notification after receiving pertinent data, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 44 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional feature[e]” that provides any
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“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, and transmitting data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d
1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of
the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be
achieved by any general purpose computer without special programming.”).
None of these activities are used in some unconventional manner nor do any
produce some unexpected result. Appellants do not contend they invented
any of these activities. In short, each step does no more than require a
generic computer to perform generic computer functions. As to the data
operated upon, “even if a process of collecting and analyzing information is
‘limited to particular content’ or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract.” SAP Am., Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted).
Considered as an ordered combination, the computer components of
Appellants’ claim 44 add nothing that is not already present when the steps
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are considered separately. The sequence of data reception-analysis-
transmission is equally generic and conventional. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission);
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 44 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 44 is representative. There are no remaining method claims.
We conclude that the method claim at issue is directed to a patent-ineligible
concept itself, and not to the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101“in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
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LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of payment processing by determining whether a user is
authorized to pay by comparing data to criteria and transmitting a
notification after receiving pertinent data, without significantly more.
APPELLANTS’ ARGUMENTS
As to Appellants’ Appeal Brief arguments, we agree with and adopt
the Examiner’s determinations and analysis from the Non-Final Action 4–7
and Answer 4–7 and reach similar legal conclusions. We now turn to the
Reply Brief.
We are not persuaded by Appellants’ argument that “finding these
claims abstract would ‘go beyond those concepts that are similar to what
courts have identified as abstract ideas.’” Reply Br. 3 (emphasis omitted).
How these claims are similar to what courts have identified as abstract ideas
is shown supra.
We are not persuaded by Appellants’ argument that
it is the nonconventional and non-generic arrangement of these
functions that makes them patent-eligible. Specifically, the
claims require the use of a single entry alias that is provided by
a cellular phone to identify an account that is used to conduct a
transaction. At the time of invention, the interactions of the
cellular phone and the merchant/financial institution systems are
nonconventional and non-generic functions that result in an
improvement in payment processing.
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Reply Br. 4–5 (emphasis omitted). As we determine supra, the sequence of
data reception-analysis-transmission is generic and conventional. The
cellular phone is recited only as a source of data, not as a structure that
performs a step in the claim. As we determine supra, the source of data
cannot confer eligibility. Further, the phone is used only for its conventional
purpose of transmitting data. See In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 612–613 (Fed. Cir. 2016) (using a generic telephone for its
intended purpose was a well-established “basic concept” sufficient to fall
under Alice step 1.) At bottom, this argument is about the nature of the data,
a single entry alias, and not about any technological implementation making
use of the data.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016). Reply Br. 5–6. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning v. Iatric Sys., 839 F.3d 1089, 1094 (Fed.
Cir. 2016) (differentiating the claims at issue from those in McRO). In
McRO, “it is the incorporation of the claimed rules not the use of the
computer, that improved the existing technology process,” because the
prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” 837 F.3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making payment decisions in a new
environment. Appellants have not argued that the claimed processes of
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determining if the customer is authorized to pay the merchant apply rules of
criteria in a manner technologically different from those which humans
used, albeit with less efficiency, before the invention was claimed. Merely
characterizing the objects of decision making as a personal identification
entry to aid decision making is itself abstract.
The claims in McRO were not directed to . . . “a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type.” . . . We explained that “the claimed
improvement [was] allowing computers to produce ‘accurate and
realistic lip synchronization and facial expressions in animated
characters’ that previously could only be produced by human
animators.” . . . The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (internal citations omitted).
Claims 44, 46–48, and 64–79 rejected under the judicially created doctrine
of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent
This is uncontested.
Claims 44, 46–48, and 64–79 rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure
The Examiner determines there is no support for the recited “single
entry alias.” Non-Final Act. 8. Initially, we determine that the rejection is
moot as to claims 44 and 64–7910 because this limitation is not recited in
those claims.

10 We also note that claims 64–79 depend from method claim 44, yet all
refer to claim 44 as a system claim. Clarification in any subsequent
prosecution should be made.
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The Specification neither defines nor even describes a single entry
alias. The word “single” occurs five times: single account-holder (Spec.
11:23 and 15:4); single piece of equipment (Spec 33:13 and 14); and single
programming language (Spec 35:10). Appellants have provided only
attorney argument, not evidence that one of ordinary skill would have
understood the Specification to support this limitation. Appellants cite an
example of using a phone keypad to enter a single entry. App. Br. 13. But
this example does not characterize the entry as a single entry. Appellants
have not provided evidence that they do not see this as a single entry alias
only in retrospect, but had possession of this idea at the time of filing.
Claims 44 and 46–48 rejected under 35 U.S.C. § 103(a) as unpatentable
over Campisano and Lewis
As to Appellants’ Appeal Brief arguments, we agree with and adopt
the Examiner’s determinations and analysis from Non-Final Action 7–9 and
Answer 10–17 and reach similar legal conclusions. We now turn to the
Reply Brief.
We are not persuaded by Appellants’ argument that there is no reason
aside from the Specification to combine the references. Reply Br. 7–8. The
Examiner only applies Lewis for the cell phone and account number
verification. Non-Final Act. 11. Lewis describes reasons for using a cell
phone for Campisano’s phone as being that the device can take advantage of
components already present in the “host” device. The Examiner determined
that another reason was to increase portability. Non-Final Act. 11.
We are not persuaded by Appellants’ argument that neither reference
discloses verifying the financial transaction account number using the
customer’s PIE. Reply Br. 8. The limitation at issue is “such analyzing
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including verifying the financial transaction account number using the
customer’s PIE [personal identification entry].” Claim 44 limitation 3. The
claim does not recite or narrow the manner or implementation of such
verifying. Campisano describes a card number received by the merchant
being verified using the cardmember’s PIN. A card number is an account
number. A PIN (Personal Identification Number) is used to personally
identify someone and so is within the scope of a personal identification
entry.
Claim 75 rejected under 35 U.S.C. § 103(a) as unpatentable over
Campisano, Lewis, and either Hillhouse or Bartoli
We do not reach the Hillhouse alternative and so we do not reach the
issue of whether Hillhouse is prior art. Reply Br. 9.
We are not persuaded by Appellants’ argument that
Bartoli’s “transaction-oriented dynamic information portion”
disclosed in cited col. 3, lines 15–41 is not used as a personal
identification entry - it is provided by a computer. Thus, not only
does Bartoli fail to disclose the claimed personal identification
entry including a static portion and a dynamic portion, but there
would be no reason – other than hindsight gleaned from the
instant disclosure – Campisano’ s PIN with Bartoli’ s cookie.
Reply Br. 10 (emphasis omitted).
Claim 75 reads as follows.
The system of claim 72, wherein the personal
identification entry includes:
a static portion, the static portion being a portion of the
personal identification entry that is not changed; and
a dynamic portion, the dynamic portion being a portion of
the personal identification entry that is changed, the customer
changing the dynamic portion of the personal identification entry
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while not changing the static portion of the personal
identification entry using the interface processor portion.
Bartoli describes information previously provided to the user’s client
terminal’s cookie file being transmitted to a billing server within the billing
system. This information comprises a static information portion and a
transaction oriented dynamic information portion, which are encrypted prior
to transmission. The static information portion identifies the user through an
assigned account number. Thus, the information personally identifies the
user. This is within the scope of a personal identification entry. The
dynamic portion is sent with the static portion, and so is part of this personal
identification entry. The claim neither recites nor narrows the manner or
implementation for how the customer changes the dynamic portion of the
personal identification entry. As indirect processing is a conventional
manner of processing, indirect changing of the dynamic portion is within the
scope of the claim. Bartoli changes the dynamic portion as the customer
enters transactions, and so the customer indirectly changes the dynamic
portion.
Claims 44, 46–48, 64–74, and 76–79
rejected under 35 U.S.C. § 103(a) as unpatentable over Pare and Lewis
This rejection is cumulative and so not reached.
CONCLUSIONS OF LAW
The rejection of claims 44, 46–48, and 64–79 under 35 U.S.C. § 101
as directed to a judicial exception without significantly more is proper.
The rejection of claims 44, 46–48, and 64–79 under the judicially
created doctrine of obviousness type double patenting as claiming the
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patentably indistinguishable subject matter as another U.S. Patent is
uncontested.
The rejection of claims 46–48 under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure is proper.
The rejection of claims 44 and 64–79 under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure is
improper.
The rejection of claims 44 and 46–48 under 35 U.S.C. § 103(a) as
unpatentable over Campisano and Lewis is proper.
The rejection of claim 75 under 35 U.S.C. § 103(a) as unpatentable
over Campisano, Lewis, and Bartoli is proper.
The rejection of claims 44, 46–48, 64–74, and 76–79 under 35 U.S.C.
§ 103(a) as unpatentable over Pare and Lewis is cumulative and not reached.
DECISION
The rejection of claims 44, 46–48, and 64–79 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED