Amit Gaur et al.

Patent Trials and Appeals Board

Feb 27, 2020

13470067 - (D) (P.T.A.B. Feb. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/470,067 05/11/2012 Amit Gaur BOKU-P070 4294
17169 7590 02/27/2020
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
ariana@matterlightip.com
stephen@matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIT GAUR and ADAM LEE
____________

Appeal 2018-0056241
Application 13/470,067
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Amit Gaur and Adam Lee (Appellant)2 appeal pursuant to 35 U.S.C.
§ 134(a) from the decision rejecting claims 1, 4–6, 9–13, 16–18, and 21–24,
which are the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our Decision references Appellant’s Appeal Brief (“App. Br.,” filed June
27, 2017) and Reply Brief (“Reply Br.,” filed May 10, 2018), the
Examiner’s Answer (“Ans.,” mailed April 4, 2018), and Final Office Action
(“Final Act.,” mailed Jan. 27, 2017).
2 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is “Boku,
Inc.” App. Br. 3.
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellant’s invention “relates generally to a transactions network and
to a method and system for managing electronic transactions.” Spec. ¶ 1.
Claims 1 and 13 are the independent claims on appeal. Claim 13,
reproduced below with bracketed notations, is illustrative of the subject
matter on appeal.
13. A computer-based method of managing electronic
transactions comprising:
[(a)] storing, with a processor, a plurality of merchant
accounts in a data store, each merchant account having a
respective merchant account identifier;
[(b)] receiving, with the processor, an offer entry over
the network interface device from each of a plurality of
merchant computer systems;
[(c)] storing, with the processor, the offer entry in the
data store in association with the merchant account having the
respective merchant account identifier;
[(d)] storing, with a processor of a server computer
system, a plurality of consumer accounts in a data store, each
consumer account having a respective consumer account
identifier;
[(e)] detecting, with the processor, registration of a
consumer account identifier of a consumer account for
transmission to the network computer system;
[(f)] transmitting, with the processor, the consumer
account identifier of the consumer account via a network
interface device to a network computer system if the consumer
account has been registered by the registration detection
module;
[(g)] receiving, with the processor, transaction data in a
first retrieval from the network computer system, the
transaction data that is received in the first retrieval from the
network computer system being consumer transaction data
including the consumer account identifier that has been
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registered and being received due to transmission of the
consumer account identifier that has been registered via a
network interface device to the network computer system;
[(h)] building, with the processor, a profile utilizing the
transaction data;
[(i)] transmitting, with the processor, a selected one of
the offer entries to a consumer device, wherein the offer entry
that is transmitted is based at least in part on the profile
[(j)] detecting, with the processor, deregistration of a
consumer account identifier of a consumer account;
[(k)] transmitting, with the processor, the consumer
account identifier that has been deregistered via a network
interface device to a network computer system; and
[(l)] receiving, with the processor, transaction data in a
second retrieval from the network computer system, the
transaction data that is received in the second retrieval from the
network computer system including the consumer account
identifier that has been registered and being received due to
transmission of the consumer account identifier that has been
registered via a network interface device to the network
computer system and the transaction data that is received in the
second retrieval from the network computer system excluding
the consumer account identifier that has been deregistered and
being excluded due to transmission of the consumer account
identifier that has been deregistered via a network interface
device to the network computer system.
App. Br. 39–40, Claims Appendix.
Rejections
I. Claims 1, 4–6, 9–13, 16–18, and 21–24 are rejected under
35 U.S.C. § 112 (Pre-AIA), first paragraph, as failing to comply
with the written description requirement.
II. Claims 1, 4–6, 9–13, 16–18, and 21–24 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
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III. Claims 1, 4–6, 9–13, 16–18, and 21–243 are rejected as
unpatentable under 35 U.S.C. § 103 over Mercuri et al.,
(US 2012/0278172 A1, published Nov. 1, 2012) (“Mercuri”),
Pourfallah et al., (US 8,939,356 B2, issued Jan. 27, 2015)
(“Pourfallah”), Orbke et al., (US 2002/0059430 A1, published
May 16, 2002) (“Orbke”), and Hamilton et al.,
(US 2003/0097571 A1, published May 22, 2003) (“Hamilton”).

OPINION
Rejection I
35 U.S.C. § 112, first paragraph
We are persuaded the Examiner erred in rejecting claims 1, 4–6, 9–13,
16–18, and 21–24 as failing to comply with the written description
requirement because “the Examiner is unable to find support in the
applicant’s [S]pecification for the added limitation” recited in step (l) of
claim 13. Final Act. 2–3. In response to Appellant’s arguments that
paragraphs 56 and 64 of the Specification provide support for limitation (l),
the Examiner asserts that those paragraphs do not teach or suggest the
limitation:
transaction data retrieval module in a second retrieval
retrieving transaction from the network system, the transaction
data that is received in the second retrieval from the network
computer system including the consumer account identifier that
has been registered and being received due to transmission of
the consumer account identifier that has been registered via
a network interface device to the network computer system and

3 We modify the statement of rejection because it included canceled claims
7, 8, 19, and 20. See Final Act. 7.
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the transaction data that is received in the second retrieval from
the network computer system excluding the consumer account
identifier that has been deregistered and being excluded due to
transmission of the consumer account identifier that has been
deregistered via a network interface device to the network
computer system
Ans. 3.
Appellant responds:
The Examiner appear[s] to agree that first retrieval is
very clearly described. A PAN can then be registered or
deregistered as described in paragraphs [0056 and 0064]. As
described, the registration or deregistration of the PAN will
result in data being included or not included in a data retrieval.
Clearly such data retrieval must be a subsequent data retrieval
after the first data retrieval. No other interpretation will make
sense. Furthermore, paragraph [0093] states that the targeting
system only extracts customers that have been registered within
the last week, two weeks or the like. If data for new customers
are available, then it also means that data for customers that
were registered before the last week, two weeks or the like was
also available. There must, therefore, have been a prior data
retrieval representing customers that were registered before the
last week, two weeks or the like, and therefore a first data
retrieval and a second data retrieval.

Reply Br. 13–14.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
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clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id. We agree with Appellant that
although the Specification does not literally describe the limitation at issue,
it is clear from the context of the invention, and in particular paragraphs 56,
64, and 93 of the Specification, that Appellant was in possession of the
claimed subject matter because Appellant’s transaction data retrieval module
performs periodic retrievals (e.g., 1st, 2nd, 3rd . . .) to retrieve transaction data
from the network computer system. As such, we determine the Examiner’s
written description requirement is unfounded.
Accordingly, we do not sustain the rejection of claims 1, 4–6, 9–13,
16–18, and 21–24 as failing to comply with the written description
requirement.
Rejection II
35 U.S.C. § 101
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
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directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78, 79). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determines:
Based on the broadest reasonable interpretation of the claims,
consistent with Applicant’s specification, the examiner submits
that the claims are directed to awarding a discount based on
user interaction with the content, which represents the abstract
ideas of comparing information regarding a sample or test
subject to a control or target data, comparing new and stored
information and using rules to identify options, which is similar
to cases Ambry, Myriad CAFC, and Classen that have been
found to have concepts considered to be an abstract idea.
Final Act. 4.
In contesting the rejection, Appellant argues all pending claims
together as a group. See App. Br. 15–29. We select independent claim 13 as
the representative claim for the group; thus, claims 1, 4–6, 9–12, 16–18, and
21–24 stand or fall with claim 13. 37 C.F.R. § 41.37(c)(1)(iv). In their
Appeal Brief, Appellant does not contest the Examiner’s characterization of
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the abstract idea.4 Instead, Appellant contends “the first step in the Alice
inquiry in this case asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities (i.e., the self-referential table
for a computer database) or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.” App. Br.
17. According to Appellant, the claims “are directed to a specific
improvement to the way computers operate, embodied in consumer
identifier registration/deregistration based on/off switching of consumer
data retrieval from a network.” Id. at 18. For the following reasons, we
are not persuaded by Appellant’s arguments.
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all

4 Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.5
We have reviewed the eligibility of the pending claims through the
lens of the 2019 Revised Guidance, but we are not persuaded the Examiner
erred in concluding that the claims are directed to a judicial exception
without significantly more.

Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the

5 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
currently superseded USPTO guidance.
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[judicial] exception into a practical application,” i.e., that 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 (“Step 2A, Prong 2”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
Appellant’s Specification is entitled “TRANSACTION DATA
RETRIEVAL AND TARGETING” and, as mentioned above, the “invention
relates generally to a transactions network and . . . for managing
transactions.” Spec. ¶ 1. Independent claim 13 recites a “method of
managing electronic transactions comprising:” (a) storing a plurality of
merchant accounts in a data store; (b) receiving an offer entry; (c) storing the
offer entry; (d) storing a plurality of consumer accounts; (e) detecting
registration of a consumer account identifier; (f) transmitting the consumer
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account identifier of the consumer account if the consumer account has been
registered; (g) receiving transaction data in a first retrieval; (h) building a
profile utilizing the transaction data; (i) transmitting a selected one of the
offer entries to a consumer; (j) detecting deregistration of a consumer
account identifier of a consumer account; (k) transmitting the consumer
account identifier that has been deregistered; and (l) receiving transaction
data in a second retrieval, the transaction data that is received in the second
retrieval including the consumer account identifier that has been registered
and excluding the consumer account identifier that has been deregistered.
Under the broadest reasonable interpretation, these limitations recite
collecting information, i.e., storing, building, and receiving information
(steps (a)–(d), (g), (h), (l)); analyzing information, i.e., detecting
registration/deregistration data (steps (e), (j)); and sending information, i.e.,
transmitting data (steps (f), (i), (k)). In essence, steps (a)–(i) of claim 13
describe a method of targeting content/advertising (offers) to a registered
user based on the user profile, which utilizes past user transaction data. The
process of targeting content/advertising to a consumer is a commercial
interaction between a seller or marketer and a consumer, which is a method
of organizing human activity and, therefore, an abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. at 52 (describing “Certain methods of
organizing human activity” as including “commercial or legal interactions
(including . . . advertising, marketing or sales activities or behaviors”)).
Steps (j)–(l) ostensibly describe a result of updating consumer
deregistration with the system by detecting a consumer deregistration,
communicating it to the system, and receiving transaction data in a second
retrieval that excludes the deregistered account identifier. In other words,
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the deregistered account identifier must have been updated in the system
before the second retrieval in step (l), which as a result, excludes the
deregistered account identifier. See, e.g., Spec. ¶ 53 (“Immediately upon
detection of a registration or deregistration of a PAN, the PAN update log
generation module 412 records both the PAN and a flag to indicate that the
PAN is registered or deregistered.”). Our reviewing court has found
updating an activity log to be insignificant extra-solution activity. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
The abstract idea here is not meaningfully different from the ideas
found to be abstract in other cases before our reviewing court involving
methods of organizing human activity. For example, in Bridge and Post,
Inc. v. Verizon Communications, Inc., 778 F. App’x 882 (Fed. Cir. 2019),
the Federal Circuit held that abstract ideas include tracking a user’s
computer network activity and using information gained about the user to
deliver targeted media, such as advertisements. See also, e.g., Affinity Labs
of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
(customizing a user interface to have targeted advertising based on user
information); Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a
user based on particular information); Morsa v. Facebook, Inc., 77 F. Supp.
3d 1007, 1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015)
(concluding that targeting advertisements to certain consumers is no more
than an abstract idea). In light of these precedents, we conclude that claim
13 equally recites an abstract idea.
Having concluded that claim 13 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
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recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). When a claim recites a judicial
exception and fails to integrate the exception into a practical application, the
claim is “directed to” the judicial exception. 2019 Revised Guidance, 84
Fed. Reg. at 51. The claim may integrate the judicial exception when, for
example, it reflects an improvement to technology or a technical field.
Id. at 55.
To that end, Appellant contends claim 13 is not directed to an abstract
idea because
the invention specifically deals with a particular technique of
“consumer account identifier registration/deregistration
based on/off switching of consumer data retrieval from a
network”. Furthermore, the techniques that are used are not
conventional for carrying out any abstract idea. A consumer
account number is registered or deregistered and the data
structure the thereby updated so that the computer can
determine which sets of transaction data should be downloaded.
Such an update of the data structure is sufficient to pass muster
under Enfish and there is no need for any particular data base
technique in how computers carry out one of their basic
functions of storage and retrieval of data.

Reply Br. 32–33; see also App. Br. 18–20.
In response to Appellant’s argument, the Examiner asserts that “the
appellant merely copies claim language and language from the specification
but does not explain what the problem is that is being solved. Does not
explain how there is an improvement to the functioning of the computer or
another technology.” Ans. 4–5. We agree with the Examiner.
First, as the Examiner states, it is unclear from Appellant’s argument
how updating the registration/deregistration of a consumer account for
sending targeted offers only to registered consumers reflects a technological
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improvement of any sort. We have reviewed paragraph 64 of the
Specification, which Appellant alleges supports “an improvement of an
existing technology” (App. Br. 21), but we do not see and Appellant does
not adequately explain how only identifying transactions from consumer
accounts registered within the system reflects a technological improvement.
See Spec. ¶ 64 (account data received due to transmission of a consumer
account identifier that has been registered).
Second, we disagree with Appellant’s contention that claim 13 reflects
non-abstract improvements to computer technology under Enfish.6 Indeed,
there is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. In Enfish, the court noted that
“[s]oftware can make non-abstract improvements to computer technology
just as hardware improvements can.” Enfish, 822 F.3d at 1335. The court
asked “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” Id. at 1335–36. The court found that the “plain focus of the claims”
there was on an improvement to computer functionality itself (a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data), not
on a task for which a computer is used in its ordinary capacity. Id.
Unlike Enfish, we find the focus of the claim as a whole here is
directed to a result or effect that itself is the abstract idea, because the

6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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processor claimed is merely invoked as a tool to transmit offers based on a
consumer profile to a registered consumer device. We disagree with
Appellant’s contention that “[t]he manner that the data structure is updated
to reflect which accounts are registered and which accounts are deregistered
for purposes of determining which transaction data to retrieve is sufficient to
pass muster under Enfish.” Reply Br. 34. Maintaining which consumer
account identifiers are registered with the system, by updating a registration
log to exclude deregistered consumer account identifiers, is not the focus of
claim 13 and does not reflect any sort of technological improvement; rather,
updating a registration list (i.e., PAN list) by removing deregistered accounts
is tangential to the process of transmitting targeted profile based offers to
registered consumers. See Spec. ¶¶ 52–56. The removal of a deregistered
consumer account identifier and updating the account numbers to reflect
only registered consumer account identifiers, as mentioned above, is akin to
updating an activity log, which is insignificant extra-solution activity.
We also are unpersuaded by Appellant’s contention that similarly to
McRO,7 the claims before us reflect a technological improvement. See App.
Br. 24–27. There, the Federal Circuit addressed claims directed to “[a]
method for automatically animating lip synchronization and facial
expression of three-dimensional characters” McRO, 837 F.3d at 1307. The
court reviewed the specification of the patent at issue and found that, rather
than invoking the computer merely as a tool, “[c]laim 1 of the [asserted]
patent is focused on a specific asserted improvement in computer
animation.” Id. at 1314. The court found that the plain focus of the claim

7 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016) (hereinafter “McRO”).
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was on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity. Contrary
to Appellant’s arguments and unlike McRO, which focused on a specific
means or method that improved computer animation technology, claim 13
here is not purported to improve any technology. Instead, claim 13 is
focused on using generic computer operations, in which a generic computer
is used in its ordinary capacity to transmit targeted profile based offers to a
registered consumer device, by receiving, storing, detecting, and
transmitting data.
Therefore, we determine that the claim does not “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,” i.e., the claim does not integrate the
abstract idea into a practical application. See 2019 Revised Guidance, 84
Fed. Reg. at 54.8

Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that
claim 13 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Alice framework, whether
claim 13 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether claim 13 adds specific
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field. Id. at 56. To determine whether a claim

8 For purposes of maintaining consistent treatment within the Office, these
considerations are made under Step 1 of Alice (Step 2A of Office guidance).
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provides an inventive concept, the additional elements are considered—
individually and in combination—to determine whether they (1) add a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (2) simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception. Id.
In that regard, the Examiner determined:
The claims do not recite an improvement to another
technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment. For the role of a
computer in a computer implemented invention to be deemed
meaningful in the context of this analysis, it must involve more
than performance of “well-understood, routine, [and]
conventional activities previously known to the industry.” Id.
at 2359 (quoting Mayo, 132 S. Ct. at 1294 (internal quotation
marks and brackets omitted)). Further, “the mere recitation of a
generic computer cannot transform a patent ineligible abstract
idea into a patent-eligible invention.” Id. at 2358. None of the
hardware offers a meaningful limitation beyond generally
linking the system to a particular technological environment,
that is, implementation via computers. Viewed as a whole, the
claims do not purport to improve the functioning of the
computer itself, or to improve any other technology or technical
field. Use of an unspecified, generic computer does not
transform an abstract idea into a patent-eligible invention.
Thus, the claim does not amount to significantly more than the
abstract idea itself.

Final Act. 5.
Under the second step of the Alice and Mayo framework, we are not
apprised of error in the Examiner’s determination that the elements of the
claim do not contain an “inventive concept” sufficient to “transform” the
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claimed abstract idea into a patent-eligible application. In the Appeal Brief,
Appellant does not dispute these findings. As such, any basis for asserting
error in this regard has been waived. See 37 C.F.R. § 41.37(c)(1)(vii). The
additional limitations merely perform functions of storing,9 receiving,10
detecting,11 updating,12 and transmitting data over a network, all of which
have been held by the courts to be well-understood, routine, and
conventional computer functions.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 13 is directed to patent-ineligible subject matter. Accordingly, we
sustain the rejection of independent claim 13 under 35 U.S.C. § 101, and
claims 1, 4–6, 9–12, 16–18, and 21–24, which fall with claim 13.
Rejection III
35 U.S.C. § 103
We are persuaded by Appellant’s argument that Hamilton (App.
Br. 31), on which the Examiner relies (see Final Act. 10; see also Ans. 6),
fails to disclose

9 Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015); OIP Techs., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (Storing and
retrieving information in memory).
10 Receiving or transmitting data over a network, e.g., using the Internet to
gather data, Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1321, 1362 (Fed. Cir. 2016) (utilizing an intermediary computer to forward
information); In re TLI Communications LLC Patent Litigation, 823 F.3d
607, 610 (Fed. Cir. 2016).
11 Cleveland Clinic Foundation v. True Health Diagnostics LLC, 859 F.3d
1352, 1362 (Fed. Cir. 2017).
12 Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359 (creating and
maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716 (updating an
activity log).
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transaction data retrieval module in a second retrieval retrieving
transaction data from the network computer system . . . the
transaction data that is received in the second retrieval from the
network computer system excluding the consumer account
identifier that has been deregistered and being excluded due to
transmission of the consumer account identifier that has been
deregistered via a network interface device to the network
computer system,

as recited in claim 1. In particular, Appellant acknowledges that is it known
to register and deregister accounts and concedes that Hamilton discloses
registration and deregistration of consumer accounts, but argues that
Hamilton does not teach or suggest “a transaction data retrieval module that,
in the second retrieval from the network computer system, includes the
consumer account identifier that has been registered and excludes the
consumer account identifier that has been deregistered as claimed in the final
element of claim 1.” Reply Br. 42.
The difficulty with the Examiner’s position is that it fails to account
for all the terms in the disputed claim limitation. As our reviewing court has
emphasized, “[c]laims must be ‘interpreted with an eye toward giving effect
to all terms in the claim.’” Becton, Dickinson & Co. v. Tyco Healthcare
Group, LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010) (quoting Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)). Responding to
Appellant’s argument, the Examiner states:
The reference of Hamilton was used to reject the deregistration
of consumer accounts which Hamilton discloses at [0210],
“updating registration information, handling transfers of
ownership, making account adjustments, and canceling
accounts. The personal computers at the customer service
system 1120 can be utilized by operators to make changes
regarding registration updates, ownership issues, account
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adjustments, the cancellation of accounts, etc.” Thus using
broadest reasonable interpretation the cancellation of an
account is equivalent to deregistration.

Ans. 6–7. But the claim limitation requires more than basic consumer
account registration/deregistration and canceling accounts. For
example, claim 1 requires communication between a transaction data
retrieval module and the network computer system, such that as part
of a second retrieval of transaction data, the transaction data that is
received from the network computer system excludes the consumer
account identifier due to transmission of the consumer account
identifier that has been deregistered. The Examiner has not identified
any of these elements in Hamilton and fails to explain how
communication between these components is accomplished in
Hamilton. A rejection based on 35 U.S.C. § 103 clearly must rest on a
factual basis. The Examiner has the initial duty of supplying the
factual basis for the rejection and may not resort to speculation,
unfounded assumptions, or hindsight reconstruction to supply
deficiencies in its factual basis. In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). Because the Examiner has not established that
Hamilton discloses the limitation
the transaction data retrieval module in a second retrieval
retrieving transaction data from the network computer system,
the transaction data that is received in the second retrieval from
the network computer system including the consumer account
identifier that has been registered and being received due to
transmission of the consumer account identifier that has been
registered via a network interface device to the network
computer system and the transaction data that is received in the
second retrieval from the network computer system excluding
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the consumer account identifier that has been deregistered and
being excluded due to transmission of the consumer account
identifier that has been deregistered via a network interface
device to the network computer system

(App. Br. 35–36, Claims Appendix), we are apprised of reversible error.
Therefore, we do not sustain the rejection of independent claim 1 as
unpatentable over Mercuri, Pourfallah, Orbke, and Hamilton, and
independent claim 13, which recites a substantially similar limitation that
was rejected based on the same deficient findings in Hamilton. We also do
not sustain the rejection of dependent claims 4–6, 9–12, 16–18, and 21–24.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious.”).
CONCLUSION
Rejection I under 35 U.S.C. § 112, first paragraph, is reversed.
Rejection II under 35 U.S.C. § 101 is affirmed.
Rejections III under 35 U.S.C. § 103 is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 4–6, 9–
13, 16–18,
21–24
112, first
paragraph
Written Description  1, 4–6, 9–
13, 16–18,
21–24
1, 4–6, 9–
13, 16–18,
21–24
101 Eligibility 1, 4–6, 9–
13, 16–18,
21–24

1, 4–6, 9–
13, 16–18,
21–24
103 Mercuri, Pourfallah,
Orbke, Hamilton
1, 4–6, 9–
13, 16–18,
21–24
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
Overall Outcome: 1, 4–6, 9–
13, 16–18,
21–24

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

AFFIRMED