AHMAVAARA, Kalle et al.

Patent Trials and Appeals Board

Dec 24, 2020

2019001889 (P.T.A.B. Dec. 24, 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.
12/634,645 12/09/2009 Kalle AHMAVAARA 030284.00634/090137 7888
15142 7590 12/24/2020
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteKALLE AHMAVAARA, RANDALL C. GELLENS,
GEORGIOS TSIRTSIS, PRASHANTH HANDE, GERARDO GIARETTA,
and ARUNGUNDRAM MAHENDRAN
Appeal 2019-001889
Application 12/634,645
Technology Center 3600
Before BRADLEY W. BAUMEISTER, LARRY J. HUME, and
JAMES B. ARPIN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge HUME.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 8, 10, 11, 14–18, 22, 24, 25,
27–41, 58, 62–64, and 66, all of the pending claims. Claims 4–7, 9, 12, 13,
19–21, 23, 26, 42–57, 59–61, 65, and 67 are cancelled. See Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Qualcomm Inc. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a system and methods to facilitate
connections to access networks. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention “relate[] generally to wireless
communications, and more specifically to methods and systems to enable
connectivity agreements to an access network. Spec. ¶ 2.
Exemplary Claims
Claims 1 and 66 reproduced below, are representative of the subject
matter on Appeal (emphases added to contested prior-art limitations):
1. A method for an access terminal comprising a
communications component to dynamically negotiate a
connection with an access network, the method comprising:
establishing, via the communications component by the
access terminal, an initial communication with the access
network for a purpose of establishing the connection with the
access network;
negotiating, by the access terminal directly with the
access network, without a user being involved in the
negotiations, and based on the initial communication,
connection parameters for the connection, the connection
parameters being based on preconfigured connection rules for
the access terminal; and
establishing, by the access terminal, the connection with
the access network according to the negotiated connection
parameters in response to a third-party service provider

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
June 28, 2018); Reply Brief (“Reply Br.,” filed Jan. 3, 2019); Examiner’s
Answer (“Ans.,” mailed Nov. 5, 2018); Final Office Action (“Final Act.,” or
“FOA” mailed Nov. 16, 2017); and the original Specification (“Spec.,” filed
Dec. 9, 2009) (claiming benefit of US 61/138,103, filed Dec. 16, 2008).
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purchasing the connection according to the negotiated
connection parameters.
66. A method for negotiating, by a third-party service
provider, a connection between an access terminal and an
access network, comprising:
receiving a negotiation trigger that initiates a negotiation
session between the third-party service provider and the access
network for establishing the connection;
negotiating with the access network for one or more
connection parameters associated with the connection until a
connection agreement is achieved without a user being involved
in the negotiations, wherein the connection agreement includes
agreed-upon values corresponding to the one or more
connection parameters, the connection parameters being based
on preconfigured connection rules for the access terminal; and
sending charging information associated with the third-
party service provider to the access network, wherein sending
the charging information initiates establishment of the
connection of the access terminal and the access network
according to the agreed-upon values.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Donahue US 2002/0095311 A1 July 18, 2002
Jensen US 2002/0107697 A1 Aug. 8, 2002
Foley US 2003/0216932 A1 Nov. 20, 2003
Hutchins US 2004/0111292 A1 June 10, 2004
Tedesco et al. (“Tedesco”) US 2005/0165646 A1 July 28, 2005
Patel et al. (“Patel”) US 7,043,225 B1 May 9, 2006
Mashinsky US 2006/0206422 A1 Sept. 14, 2006
Monga et al. (“Monga”) US 7,437,449 B1 Oct. 14, 2008
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REJECTIONS3
Rejection Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
R1
(FOA 5)
1–3, 8, 10, 11, 14–18, 22, 24,
25, 27–41, 58, 62–64, 66 101
4 Subject Matter Eligibility
R2
(FOA 9)
1–3, 14–18, 27, 28, 34–37, 58,
62–64, 66 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings
R3
(FOA 75) 8, 10, 11, 22, 24, 25, 30, 38 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Jensen
R4
(FOA 82) 29 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Donahue
R5
(FOA 83) 31, 39 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Mashinsky
R6
(FOA 86) 32, 33, 40, 41 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Monga

3 The Examiner withdrew the indefiniteness rejection of claims 15 and 35
under 35 U.S.C. § 112, ¶ 2, and also withdrew the § 101 rejection of claims
14 and 34 as directed to an ineligible transitory medium. Ans. 4–5.
4 The Final Office Action and Briefs were filed before the Revised
Guidance (discussed infra) was issued, so that neither Appellant nor the
Examiner had benefit of the subject matter eligibility guidance provided
therein. We perform our review of the § 101 Rejection R1 in accordance
with the Revised Guidance.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 6–18) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–3, 8, 10, 11, 14–18, 22, 24, 25, 27–
41, 58, 62–64, and 66 on the basis of representative claim 1; and we decide
the appeal of obviousness Rejection R2 of claims 1–3, 14–18, 27, 28, 34–37,
58, and 62–64 on the basis of representative claim 1. We address separately
argued claim 66 under obviousness Rejection R1, infra.
Remaining claims 8, 10, 11, 22, 24, 25, 29–33, and 38–41 in
obviousness Rejections R3 through R6, not argued separately, fall with the
respective independent claim from which they depend.5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Based upon our review of the record, and in light of the Director’s
Revised Guidance concerning subject matter eligibility, now incorporated
into the Manual for Patent Examining Procedure (MPEP), addressed infra,

5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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we conclude the Examiner erred in rejecting claims 1–3, 8, 10, 11, 14–18,
22, 24, 25, 27–41, 58, 62–64, and 66 under 35 U.S.C. § 101 for the specific
reasons discussed below.
However, we are not persuaded of Examiner error by Appellant’s
arguments with respect to obviousness Rejections R2 through R6 of claims
1–3, 8, 10, 11, 14–18, 22, 24, 25, 27–41, 58, 62–64, and 66 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments. We highlight and
address specific findings and arguments regarding Rejection R2 of claims 1
and 66 for emphases as follows.
1. § 101 Rejection R1 of Claims 1–3, 8, 1011, 14–18, 22, 24, 25,
27–41, 58, 62–64, and 66
Issue 1
Appellant argues (Appeal Br. 6–11; Reply Br. 5–10) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as directed to patent-ineligible
subject matter is in error. These contentions present us with the following
issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 directed to a judicial
exception to patent-eligible subject matter under § 101 without reciting
significantly more?
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Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.6
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v.
Diehr, 450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo,
566 U.S. at 75–77). 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

6 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “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))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, therefore, we must ensure at part one that we articulate what
the claims are directed to with enough specificity to ensure the part one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
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computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). Whereas a claim limitation to a process that “can be performed in
the human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.7
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical

7 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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 part
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. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.8 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised

8 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/
content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal
public comments, the Office issued further guidance on October 17, 2019,
clarifying the Revised Guidance. USPTO, October 2019 Update: Subject
Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are,
as a matter of internal agency management, expected to follow the
guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
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guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).9
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One,” referred
to herein as “Step 2A(i)”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two,”
referred to herein as “Step 2A(ii)”).10
MPEP § 2106.04(a)) and § 2106.04(d).
Under this guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.11

9 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
10 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (2) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application, using one or more of the
considerations introduced in subsection I supra, and discussed in more detail
in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and
2106.05(e) through (h).” MPEP § 2106.04(d)II.
11 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,12 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field; 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.13
MPEP § 2106.05(d).
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
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). . . .

the MPEP for analyzing the claim should be followed. See MPEP
§ 2106.04(a)(3)(“Tentative Abstract Ideas”).
12 This corresponds to Alice part one where it is determined whether the
claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim
is “not directed to an abstract idea under part one of the Alice framework, we
do not need to proceed to [part] two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
13 Items (3) and (4) correspond to Alice part two where it is determined
whether the claim contains an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application” (Alice, 573 U.S.
at 221) and continue to be collectively referred to as “Step 2B” of the U.S.
Supreme Court’s two-part framework, described in Mayo and Alice.
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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). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See MPEP §§ 2106.05(d)(I)(2); 2106.07(a).
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.14

14 Independent claims 14–16, 27, 34–36, and 66 are respectively directed to
a computer readable storage medium, apparatus, access terminal (apparatus),
method, computer readable storage medium, apparatus, access terminal
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner concluded:
[T]he claims are directed towards negotiating for services
which is considered to be an abstract idea inasmuch as
establishing a communication, negotiating, and establishing a
connection are activities that are considered both fundamental
economic or business practices. This is supported by the
Federal Register dated Tuesday, December 16, 2014, which
shows creating a contractual relationship is considered to be an
abstract idea as shown in buySAFE. In this case the claims
recite connecting to a terminal, negotiating the terms of the
connection and establishing the connection based on those
terms which is creating a contractual relationship. As such the
claims are considered to be an abstract idea as they are directed
toward negotiating for services and creating a contractual
relationship, which as shown in the courts is an abstract idea.
Final Act. 6 (generally citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014).
In the Answer, the Examiner concludes, “the claims do not have to
recite the word contract to be establishing the terms of an agreement or
contract. The limitations of the claims explicitly recite negotiating and
paying for services based on the negotiation of the terms of that service[,]
which is both an agreement and a contract.” Ans. 9.
In response to the Examiner’s conclusion in the Final Action (cited
above) that the claims are directed to a fundamental economic or business
practices, i.e., negotiating and creating a contractual relationship, Appellant
argues, “[t]he Office Action improperly mischaracterizes the subject matter

(apparatus), and method, and thus recite on of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101.
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of the rejected claims. . . . The claims are not directed to ‘creating a
contractual relationship’ as alleged by the Office Action.” Appeal Br. 9.
Appellant further argues:
The claims are directed to establishing a connection between an
access terminal and an access network in which a third-party
service provider purchases the connection according to
negotiated connection parameters. Because the third-party
service provider purchases the connection, the user of the
access terminal does not provide confidential payment
information to the access network. Present Application at
[0101]. As a result, the user of the access terminal is able to
protect his or her confidential payment information.
The subject matter of the pending claims is rooted in
computer technology in order to overcome problems
specifically arising in the realm of computer networks and/or
databases, which qualifies these claims as patent eligible
subject matter. See, e.g., DDR Holdings, LLC v. Hotels.com, LP
(Fed. Cir. 2014). The claims of the present application are
directed to either an access terminal directly negotiating with an
access network, or a third-party service provider.
Appeal Br. 9.
We evaluate whether claim 1 recites an abstract idea based upon the
Revised Guidance.
We determine that Appellant’s invention recites wireless
communications, and more specifically to methods and systems to enable
connectivity agreements to an access network. Spec. ¶ 2. More specifically,
claim 1 recites “[a] method for an access terminal comprising a
communications component to dynamically negotiate a connection with an
access network,” that includes the steps of:
establishing, via the communications component by the
access terminal, an initial communication with the access
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network for a purpose of establishing the connection with the
access network;
negotiating, by the access terminal directly with the
access network, without a user being involved in the
negotiations, and based on the initial communication,
connection parameters for the connection, the connection
parameters being based on preconfigured connection rules for
the access terminal; and
establishing, by the access terminal, the connection with
the access network according to the negotiated connection
parameters in response to a third-party service provider
purchasing the connection according to the negotiated
connection parameters.
Appeal Br. 20 (Claims App. (Claim 1)).
These limitations, under their broadest reasonable interpretation,
recite steps for a communications component of an access terminal to
establish communications with an access network, which includes the access
terminal negotiating directly with the access network using connection
(technical) parameters without user (human) involvement. Appeal Br. 20
(Claims App.) (“without a user being involved in the negotiations”).
In light of the Revised Guidance (now incorporated into the Manual
for Patent Examining Procedure (see generally MPEP § 2106), we first
determine that the claims under appeal recite an abstract idea.
The Examiner does not find that claim 1 recites a mental process or a
mathematical concept. The remaining category of abstract ideas for
consideration is “certain methods of organizing human activity,”
subcategorized as fundamental economic principles or practices; commercial
or legal interactions; or managing personal behavior or relationships or
interactions between people. See id. As discussed above, the Examiner
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characterizes the claims as reciting “negotiating and paying for services
based on the negotiation of the terms of that service which is both an
agreement and a contract.” Ans. 9.
We do not agree with the Examiner’s characterization of the claims as
being directed to negotiating and executing a contract or, more broadly, as
being directed to certain methods of organizing human activity. First, we do
not consider the claimed invention to recite economic principles or practices,
or commercial or legal interactions, or managing personal behavior or
relationships or interactions between people.
Instead, claim 1 recites a negotiation between elements of a machine,
not between humans. Thus, we construe the claims as reciting various
hardware elements organizing machine activities, i.e., an access terminal
establishing initial communications with an access network using connection
parameters based on preconfigured connection rules for the access terminal.
With this technical understanding, we do not view recitation of the phrase
“negotiating . . . connection parameters” to invoke the characteristic
meaning of “negotiating” in the context of contract law, but instead view the
phrase as relating to the recited components automatically determining
acceptable technical parameters for connection based upon hardware and/or
network constraints, using preconfigured connection rules for the access
terminal. See Spec. ¶ 73.15

15 Paragraph 73 of the Specification discloses:
The connectivity parameters may include access terminal
102 preferences, such as a desired connectivity destination(s)
(e.g., connection only to one server, a range of endpoints,
multiple endpoints or ranges of endpoints), the type of
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Moreover, we determine that the recited claim limitations could not
reasonably be expected to be carried out without the use of a computer and
other related auxiliary components and communication links. See Research
Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010) (finding
that claims were not directed to an abstract idea because they “could not, as
a practical matter, be performed entirely in a human’s mind.”).
For the reasons discussed above, we disagree that claim 1 recites an
abstract idea under Step 2A, Prong 1, of the 2019 Guidance. As such, we
disagree with the Examiner’s ultimate conclusion that the claimed invention
is directed to an abstract idea, particularly the abstract idea of negotiating for
services, and may not reasonably be considered as a fundamental economic
or business practice. Based upon the claim language, in light of the
Specification, we conclude claim 1 recites the non-abstract idea of wireless
communications, and more specifically to methods and systems to enable
connectivity agreements to an access network. Therefore, we conclude that
the claims do not recite a judicial exception because the claimed invention
does not recited subject matter in any of the categories of abstract ideas
enumerated in the 2019 Guidelines, and thus fails the Prong 1 abstract idea
analysis under Step 2A(i).

connectivity desired (e.g., protocols and ports commonly used
for web browsing, e-mail, instant messaging, or downloading
applications, among other types of connectivity), one or more
Quality of Service parameters, or the range of connectivity,
among other connection parameters. In other words, the
connectivity parameters are negotiated that define one or more
communication sessions to or through the access network.
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Because the claim does not recite a judicial exception (a law of nature,
natural phenomenon, or subject matter within the enumerated groupings of
abstract ideas above), in accordance with the Revised Guidance, we
conclude the claim is patent-eligible at Step 2A(i). This determination
concludes the eligibility analysis.
Thus, we do not sustain the Examiner’s rejection of claims 1–3, 8, 10,
11, 14–18, 22, 24, 25, 27–41, 58, 62–64, and 66 under 35 U.S.C. § 101.
2. § 103(a) Rejection R2: Claims 1–3, 14–18, 27, 28, 34–37, 58, 62–64
Issue 2
Appellant argues (Appeal Br. 13–16; Reply Br. 11–14) the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over
the combined teachings of Patel, Tedesco, Foley, and Hutchings is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior-art combination
teaches or suggests “[a] method for an access terminal comprising a
communications component to dynamically negotiate a connection with an
access network” that includes, inter alia, the step of “establishing, by the
access terminal, the connection with the access network according to the
negotiated connection parameters in response to a third-party service
provider purchasing the connection according to the negotiated connection
parameters,” as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
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references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
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Analysis
The Examiner finds Patel teaches “establishing, by the access terminal
the connection with the access network according to the negotiated
connection parameters” (Final Act. 10 (citing Patel 11:3–17)); Tedesco
teaches “the service is provided according to the negotiated parameters
based on the third-party service provider purchasing the service according to
the negotiated connection parameters” (Final Act. 11 (citing Tedesco ¶ 28));
Foley teaches negotiations are “performed without a user being involved in
the negotiations” (Final Act. 13 (citing Foley ¶¶ 9, 43–55)); and Hutchins
teaches that “it is known to be required to make payment of services prior to
those services being rendered to the user.” Final Act. 14 (citing Hutchins
¶ 10).
The Examiner further finds:
Since each element and its function are shown in the
prior art, albeit shown in separate references, the difference
between the claimed subject matter and the prior art rests not on
any individual element or function but in the very combination
itself — that is in the substitution of the payment methods of
the primary reference Patel and Tedesco with the requirement
to have payment made prior to rendering services as taught by
Hutchins.
Thus, the simple substitution of one known element for
another producing a predictable result renders the claim
obvious.
Therefore, from this teaching of Hutchins, it would have
been obvious to one having ordinary skill in the art at the time
the invention was made to modify the system for negotiating
connection to a network provided by Patel, Tedesco and Foley,
with requiring payment prior to rendering services as taught by
Hutchins for the purposes of ensuring payment. Since Tedesco
already shows it is known for a third party to pay for these
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services it would have been obvious to ensure the payment is
made prior, thus ensuring that the service provider is paid.
Final Act. 15–16.
In response to the Examiner’s findings, Appellant contends:
Hutchins discloses that a user may make a payment before
services are rendered. Hutchins at [0010]. Hutchins fails to
disclose, teach or suggest that a third-party provider purchases
the connection prior to the services being rendered. More
specifically, Hutchins discloses that a user pays for the services
rather than a third-party paying for the services. . . . Because
Hutchins is directed to a user paying for services prior to the
services being rendered and independent claim 1 is directed to a
third-party purchasing the connection prior to the services being
rendered, Hutchins does not disclose, teach or suggest this
feature.
Appeal Br. 14.
We are not persuaded by Appellant’s arguments because the test for
obviousness is what the combined teachings of the prior art would have
suggested to the hypothetical person of ordinary skill in the art. See Keller,
642 F.2d at 425. As cited above, the Examiner finds Tedesco teaches that a
third party pays for services, and Hutchins teaches that it is known to pay for
services before they are rendered.
Moreover, because there are only three possible options for making
payment for services, i.e., either pay before services are rendered, pay at the
time services are rendered, or pay after services are rendered, we find an
artisan would have known how to choose between the three respective
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payment scheme arrangements with predictable results.16 Our reviewing
courts provide guidance:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int'l Co., 550 U.S. at 421 (emphases added); see also Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009).
Appellant further argues that Hutchins is non-analogous art because,
allegedly,
Hutchins is directed to evaluating the credit worthiness
and payment histories of current and potential patients by
accessing a database limited to a prospective patient’s payment
history with respect only to previous healthcare debt. Hutchins
at [0001] and [0010]. In contrast, independent claim 1 is
directed to a third party purchasing a connection for access to
an access network prior to the connection being established. An
evaluation of a patient’s credit worthiness with respect to the
patient’s previous healthcare debt is not in the same field of
endeavor of the claimed invention and is not analogous to a
third-party purchasing a connection for a user accessing an
access network. In addition, Hutchins is trying to aid a
healthcare provider in initially evaluating the creditworthiness
of prospective patients and, when overdue accounts due occur,
in determining the most cost-effective strategy in collecting the
debt.” Hutchins at [0006]. In contrast, independent claim 1 is
directed to a third party purchasing a connection for access to
an access network prior to the connection being established,

16 See KSR, 550 U.S. at 416 (2007).
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thereby allowing the user to protect his or her confidential
payment information. Thus, Hutchins is attempting to solve a
different problem compared to the problem being solved by
independent claim 1. As a result, Hutchins does not qualify as
prior art and cannot support an obviousness rejection.
Appeal Br. 15.
Whether a reference in the prior art is “analogous” is a fact question.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S.
1052 (1987)). Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. Id. (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032,
1036 (CCPA 1979)).
A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
invention attempts to solve. If a reference disclosure has the
same purpose as the claimed invention, the reference relates to
the same problem, and that fact supports use of that reference in
an obviousness rejection.
In re Clay, 966 F.2d at 659.
We disagree with Appellant’s contention that Hutchins does not
qualify as prior art and thus cannot support an obviousness rejection. We
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disagree because, even assuming Hutchins is not from the same field of
endeavor as Appellant’s claimed invention, Hutchins meets the second
prong of the analogous art test. Hutchins is reasonably pertinent to the
problem which Appellant’s claimed invention is involved, i.e., the problem
of third party payment prior to the rendering of services.17
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2, 3, 14–18, 27, 28, 34–37, 58, and 62–64 which fall therewith. See
Claim Grouping, supra.
3. § 103 Rejection R2: Claim 66
Issue 3
Appellant argues (Appeal Br. 16–18; Reply Br. 15–16) the
Examiner’s rejection of claim 66 under 35 U.S.C. § 103(a) as obvious over
the combined teachings of Patel, Tedesco, Foley, and Hutchings is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for negotiating, by a third-party service provider, a
connection between an access terminal and an access network” that includes,

17 Cf. Donner Technology, LLC v. Pro Stage Gear, LLC, 979 F.3d 1353,
1360–61 (Fed. Cir. 2020) (Holding that the Board erred in its “reasonably
pertinent” analysis by not properly identifying and comparing the purposes
or problems to which the cited reference and claimed invention relate.)
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inter alia, the step of “sending charging information associated with the
third-party service provider to the access network, wherein sending the
charging information initiates establishment of the connection of the access
terminal and the access network according to the agreed-upon values,” as
recited in claim 66?
Analysis
Appellant argues “[s]imilar to above, Hutchins does not disclose,
teach or suggest ‘sending charging information associated with the third-
party service provider to the access network, wherein sending the charging
information, initiates establishment of the connection of the access terminal
and the access network according to the agreed-upon values’ as independent
claim 66 further recites” (Appeal Br. 17), and again contends Hutchins does
not qualify as analogous art.
With respect to Appellant’s non-analogous art argument, we disagree
for the reasons discussed above with respect to independent claim 1.
Moreover, we are not persuaded by Appellant’s allegation that the
reference combination does not teach or suggest the contested limitation
because mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
slip op. at 7–8 (BPAI Aug. 10, 2009) (informative), available at
https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/fd0
9004693.pdf. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
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substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(iv).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 66, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 66.
4. § 103(a) Rejections R3–R6: Claims 8, 10, 11, 22, 24, 25, 29–33, and
38–41
With respect to the rejections of the dependent claims, Appellant
merely argues, “all dependent claims are allowable for at least the reasons
that the respective independent claims are allowable.” Appeal Br. 18. In
view of the lack of any substantive or separate arguments directed to
obviousness Rejections R3 through R6 of claims 8, 10, 11, 22, 24, 25,
29–33, and 38–41 under § 103 (see Appeal Br. 18), we sustain the
Examiner’s rejection of these claims. See 37 C.F.R. § 41.37(c)(1)(iv).
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 5–16) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
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Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause, which we find
Appellant has not shown here. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
we conclude that claims 1–3, 8, 10, 11, 14–18, 22, 24, 25, 27–41, 58, 62–64,
and 66 are not patent-ineligible under 35 U.S.C. § 101, and we do not
sustain that rejection.
(2) Appellant has not shown that the Examiner erred with respect
to obviousness Rejections R2 through R6 of claims 1–3, 8, 10–11, 14–18,
22, 24–25, 27–41, 58, 62–64, and 66 under 35 U.S.C. § 103(a) over the
combinations of the teachings of the applied references, and we sustain those
rejections.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision. See 37 C.F.R.
§ 41.50(a)(1).

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DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis /
References Affirmed Reversed
1–3, 8, 10,
11, 14–18,
22, 24, 25,
27–41, 58,
62–64, 66
101
Subject Matter
Eligibility
1–3, 8, 10,
11, 14–18,
22, 24, 25,
27–41, 58,
62–64, 66
1–3, 14–
18, 27, 28,
34–37, 58,
62–64, 66
103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings
1–3, 14–18, 27,
28, 34–37, 58,
62–64, 66

8, 10, 11,
22, 24, 25,
30, 38
103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Jensen
8, 10, 11, 22,
24, 25, 30, 38
29 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Donahue
29
31, 39 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Mashinsky
31, 39
32, 33, 40,
41 103(a)
Obviousness
Patel, Tedesco,
Foley, Hutchings,
Monga
32, 33, 40, 41
Overall
Outcome
1–3, 8, 10, 11,
14–18, 22, 24,
25, 27–41, 58,
62–64, 66

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FINALITY AND 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

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteKALLE AHMAVAARA, RANDALL C. GELLENS,
GEORGIOS TSIRTSIS, PRASHANTH HANDE, GERARDO GIARETTA,
and ARUNGUNDRAM MAHENDRAN
Appeal 2019-001889
Application 12/634,645
Technology Center 3600
Before BRADLEY W. BAUMEISTER, LARRY J. HUME, and
JAMES B. ARPIN, Administrative Patent Judges.
Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.
I agree with the Majority’s reasoning and conclusions regarding the
obviousness rejections under 35 U.S.C. § 103(a). I write separately because
while I agree with the Majority in reversing the rejection under 35 U.S.C.
§ 101, I would do so for different reasons.
Independent claim 1 reads as follows:
A method for an access terminal comprising a
communications component to dynamically negotiate a
connection with an access network, the method comprising:
[(a)] establishing, via the communications component by the
access terminal, an initial communication with the access
network for a purpose of establishing the connection with the
access network;
[(b)] negotiating, by the access terminal directly with the access
network, without a user being involved in the negotiations, and
based on the initial communication, connection parameters for
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the connection, the connection parameters being based on
preconfigured connection rules for the access terminal; and
[(c)] establishing, by the access terminal, the connection with
the access network according to the negotiated connection
parameters in response to a third-party service provider
purchasing the connection according to the negotiated
connection parameters.
Appeal Br. 20 (paragraph indicators added for clarity and emphasis added to
indicate claim language that allegedly is directed to an abstract idea).
The Examiner determines that limitation (c) (the connection-
establishing limitation), recites a precondition, “in response to a third-party
service provider purchasing the connection according to the negotiated
connection parameters,” that constitutes a fundamental economic or business
practice. Final Act. 6; Ans. 9 (“[P]aying for services based on the
negotiation of the terms of that service [constitutes] an agreement and a
contract.”).
I agree with the Examiner that conditioning an act on prior payment
does constitute a method of organizing human activity that the
2019 Guidance recognizes as constituting an abstract idea. Specifically,
such a conditioning of an act on prior payment constitutes a commercial or
legal interaction. The 2019 Guidance recognizes commercial and legal
interactions as constituting certain methods of organizing human activity
that constitute an abstract idea. MPEP § 2106.04(a). As such, the Examiner
has established that claim 1 recites at least one recognized abstract idea
pursuant to step 2A, prong 1, of the 2019 Guidance.
The Examiner additionally determines that limitation (b) recites a
recognized abstract idea, as well. Final Act. 6; Ans. 9. Specifically, the
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Examiner determines that the claim language “negotiating . . . connection
parameters for the connection, the connection parameters being based on
preconfigured connection rules for the access terminal,” also constitutes an
economic or business practice. Id. The Majority disagrees, “constru[ing]
the claims as reciting various hardware elements organizing machine
activities.” Majority Opinion 17.
The Examiner may have set forth sufficient facts or reasoning to
support the conclusion that the negotiating step constitutes an abstract idea,
but I need not reach a determination on this issue. Assuming the negotiating
step, within the context of the present claims, is broad enough to read
additionally on a business interaction that pre-dates the Internet. For
example, the claim language (aside from the additional requirement that the
negotiation be performed “without a user being involved”) possibly reads on
a user requesting that the access network provider provide a network
connection based on the communication component’s connection
parameters. In light of this assumption, the patent-eligibility analysis would
progress to step 2A, prong 2, to determine whether the claim not merely
recites, but also is directed to at least one of the abstract ideas. MPEP
§ 2106.045(d).
But even if the claim were interpreted in a manner most favorable to
the Examiner, the Examiner still must demonstrate under step 2A, prong 2,
that the additional claim elements beyond the underlying abstract ideas fail
to integrate the abstract ideas into a practical application. MPEP
§ 2106.04(d). And if the Examiner satisfies that showing, the Examiner
additionally must demonstrate under step 2B that the additional elements do
not add significantly more to the abstract idea. MPEP § 2106.05.
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To illustrate, I may well be persuaded that claim 1 is directed to
patent-ineligible subject matter without reciting significantly more if the
Examiner had provided sufficient facts or technical reasoning to support two
conclusions. First, the Examiner must demonstrate sufficiently, for example,
that the only inventive aspect of the claimed method entails the improved
abstract idea of a third-party service provider first purchasing the connection
prior to establishing the connection. See, e.g., Final Act. 7 (citing Spec. ¶ 41
to support this conclusion).
Second, the Examiner also must demonstrate sufficiently that
claim 1’s first two steps of (a) establishing an initial communication and
(b) negotiating connection parameters “without a user being involved” both
merely constitute extra-solution activity performed by generic components
(step 2A, prong 2) in a well-understood, routine, and conventional manner
(step 2B). But here, the Examiner only makes unsupported conclusions like
(1) “the current claims are performed by a generically recited processor and
the memory and program components contain no more than mere
instructions to implement the abstract idea on a computer,” and (2) “[t]he
claims require no more than a generic computer to perform generic computer
functions that are well-understood, routine[,] and conventional activities
previously known to the industry.” Final Act. 7.
Because the Examiner does not provide a sufficient factual basis to
support these conclusions, I would reverse the section 101 rejection under
step 2A, prong 2, of the 2019 Guidance. And I would not reach step 2B of
the 2019 Guidance.