Anil C. Jacob et al.

Patent Trials and Appeals Board

Jul 16, 2019

14047887 - (D) (P.T.A.B. Jul. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/047,887 10/07/2013 Anil C JACOB 47004.000776 1038
131244 7590 07/16/2019
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania Avenue, NW
Suite 800
Washington, DC 20037
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
07/16/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANIL C JACOB and MANNING R FIELD
____________________

Appeal 2018-002682
Application 14/047,8871
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–5, 7, 8, and 15–20, which are all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellants’ disclosed embodiments and claimed invention relate to
“systems and methods for enhanced dining experiences using a mobile
device.” Spec. ¶ 2.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A method for enhanced cardless payment, comprising:
a computer processor for a payment system receiving
from a computer application executed by a mobile electronic
device associated with a customer, a customer identifier for the
customer and an indication that the customer is using a cardless
payment feature to pay for a good or service provided by a
provider of the good or service for which the customer is
physically present at the provider’s location to receive, wherein
the customer identifier is associated with an account with a
credit card issuer;
the computer processor receiving a first notification from
the computer application that the customer is physically present
at a location for the provider of the good or service;
the computer processor receiving an indication from the
provider of the good or service that the provider of the good or
service has provided the good or service to the customer;
the computer processor receiving a second notification
from the computer application that the customer is no longer

2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 10, 2017); Reply Brief (“Reply Br.,” filed Jan. 16, 2018); Examiner’s
Answer (“Ans.,” mailed Nov. 27, 2017); Final Office Action (“Final Act.,”
mailed June 19, 2017); and the original Specification (“Spec.,” filed
Oct. 7, 2013) (claiming benefit of US 61/837,916, filed June 21, 2013).
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physically present at the location for the provider of the good
or service;
the computer processor receiving from the provider of
the good or service an invoice for the good or service after the
good or service was provided;
the computer processor transmitting, over at least one
network, the invoice to the computer application;
the computer processor receiving, over the at least one
network and from the computer application, an approval for the
invoice from the customer; and
the computer processor charging the customer’s account
for the invoice.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Bam et al. (“Bam”) US 2005/0216354 A1 Sept. 29, 2005
Blackhurst et al. (“Blackhurst”) US 2011/0191184 A1 Aug. 4, 2011
Hammad (“Hammad”) US 2013/0166332 A1 June 27, 2013
Rejections on Appeal
R1. Claims 1–5, 7, 8, and 15–20 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 9.
R2. Claims 1–3, 7, 8, 15–18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Bam and Blackhurst.
Final Act. 11.
R3. Claims 4, 5, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bam, Blackhurst, and Hammad.
Final Act. 21.
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CLAIM GROUPING
Based on Appellants’ arguments (App. Br. 5–12) 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 1–5, 7, 8, and 15–20 on the basis of
representative claim 1; and we decide the appeal of obviousness Rejection
R2 of claims 1–3, 7, 8, 15–18, and 20 on the basis of representative claim 1.
Remaining claims 4, 5, and 19 in Rejection R3, not argued separately,
stand or fall with the respective independent claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent, Appellants have 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 de novo review and our Revised Guidance with
respect to patent-eligible subject matter rejections under 35 U.S.C. § 101, we
affirm the rejection of claims 1–5, 7, 8, and 15–20 for the specific reasons
discussed below.
Further, we disagree with Appellants’ arguments with respect to
obviousness Rejections R2 and R3 of claims 1–5, 7, 8, and 15–20 under 35

3 “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 Appellants do 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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U.S.C. § 103(a) and, unless otherwise noted herein, 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
Appellants’ arguments.
We highlight and address specific findings and arguments regarding
claim 1 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1–5, 7, 8, and 15–20
Issue 1
Appellants argue (App. Br. 5–8; Reply Br. 2–4) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being 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 patent-ineligible under 35
U.S.C. § 101?
Principles of Law
A. 35 U.S.C. § 101
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the 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 Supreme Court’s two-step 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
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

4 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 35 U.S.C. § 101. MPEP § 2106.
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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 (1854)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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
formula to a known structure or process may well be deserving of patent
protection.”).
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, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
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inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (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
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, 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);5 and

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
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(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or

6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised 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.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.

8 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
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.10 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).11 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.13
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). . . .
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). . . .

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
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 does 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 (process) 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.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 “is directed to a judicial
exception . . . without significantly more . . . . [where the claim is]
determined to be directed to an abstract idea.” Final Act. 9. Further, the
Examiner concluded “[t]he claims are directed towards the abstract idea of a
computer system that provide cardless payment for goods or services [by
performing the steps of claim 1], which is a fundamental economic
practice.” Ans. 3. Further, “the steps of the claims could be performed
through the use of organized human activities given enough time.” Ans. 4.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
Claim 1 recites, in pertinent part, “[a] method for enhanced cardless
payment,” that includes the steps of:
(1) “[R]eceiving . . . a customer identifier for the
customer and an indication that the customer is using a cardless
payment feature to pay for a good or service provided by a
provider of the good or service for which the customer is
physically present at the provider’s location to receive, wherein
the customer identifier is associated with an account with a
credit card issuer.”
(2) “[R]eceiving a first notification . . . that the customer
is physically present at a location for the provider of the good
or service.”
(3) “[R]eceiving an indication from the provider of the
good or service that the provider of the good or service has
provided the good or service to the customer.”
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(4) “[R]eceiving a second notification . . . that the
customer is no longer physically present at the location for the
provider of the good or service.”
(5) “[R]eceiving from the provider of the good or service
an invoice for the good or service after the good or service was
provided.”
(6) “[T]ransmitting . . . the invoice.”
(7) “[R]eceiving . . . an approval for the invoice from the
customer.”
(8) “[C]harging the customer’s account for the invoice.”
Claims App’x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
“relates to the use of mobile devices and, more particularly, to systems and
methods for enhanced dining experiences using a mobile device.” Spec. ¶ 2
(emphasis added).
Appellants’ Abstract describes the invention as:
Systems and methods for enhanced dining experiences
using a mobile device are disclosed. In one embodiment, a
method for enhanced cardless payment may include (1) a
provider of a good or service receiving, from a customer, a
customer identifier and an indication that the customer will use
a cardless payment feature, wherein the customer identifier is
associated with a messaging address and an account with a
credit card issuer; (2) providing a good or service to the
customer; (3) at least one computer processor generating an
invoice for the good or service; (4) transmitting, over at least
one network, the invoice to the customer’s messaging address;
(5) receiving, over the at least one network, an approval for the
invoice from the customer; and (6) the at least one computer
processor charging the customer’s account for the invoice.
Spec. 32 (Abstract).
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We conclude claim 1 recites a certain method of organizing human
activity in the form of a commercial interaction, which may also be
performed by pen and paper. This type of activity, i.e., marketing or sales
activities or behaviors, as recited in each of limitations (2) through (7), for
example, includes longstanding conduct that existed well before the advent
of computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson.”).14
Under the broadest reasonable interpretation standard,15 and aside
from the computer-related aspects of the claimed invention, we conclude

14 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
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limitations (2) through (7) recite steps that would ordinarily occur when
making payments via an invoicing system, i.e., in a “cardless” manner. See
Ans. 4. For example, “an indication that the provider has provided the good
or service to the customer” (step (3)) is an operation that generally occurs
before “receiving from the provider of good and service an invoice” (step
(5)). Further, “receiving an approval for the invoice from the customer”
(step (7)) is typically carried out at the end of a commercial interaction,
whether initiated person-to-person, on paper, or using a computer.
With respect to this step of the analysis, Appellants contend:
The claims specifically require computer based technology.
However, the problem that Applicant has solved is not
something that existed in a pre-Internet world; it is an entirely
new business practice that leverages the technology that is
available to facilitate enhanced cardless payments. Thus, the
claims do not “merely recite the performance of some business
practice known from the pre-Internet world along with the
requirement to perform it on the Internet,” but solve a
technological-based payment problem.
Reply Br. 4 (citation to DDR Holdings16 omitted); see also App. Br. 6–7.
Appellants’ reliance on DDR is misplaced, as the recited claims do not
improve a computer. The Federal Circuit found the claims in DDR to be
patent-eligible under step one of the Alice test because “the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773

contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
16 See generally DDR Holdings v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014).
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F.3d at 1257. Specifically, the Federal Circuit found the claims addressed
the “challenge of retaining control over the attention of the customer in the
context of the Internet.” Id. at 1258. Appellants do not identify a technical
problem that is solved by the claimed invention; rather, Appellants allege
that their invention uses technology to improve a commercial interaction
(i.e., a method of payment). App. Br. 4. Moreover, as explained more fully
below, the Specification does not support the view that the computer related
claim elements are unconventional. See Spec. ¶ 98. Accordingly, we find
the rejected claims are dissimilar to the claims considered in DDR.
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for enhanced cardless payment is a certain method of organizing
human activity. We conclude claim 1, under our Revised Guidance, recites
a judicial exception of marketing or sales activities or behaviors, i.e., a
commercial interaction, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of limitations (2) through (7) of claim 1 recite abstract
ideas as identified in Step 2A(i), supra, and none of the limitations integrate
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the judicial exception of a certain method of organizing human activity into
a practical application as determined under one or more of the MPEP
sections cited above. The claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
As to the specific limitations, we find limitation (1) (“receiving a
customer identifier for the customer and an indication that the customer is
using a cardless payment feature to pay for a good or service”) recites
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the steps or function in Appellants’ claims, is a classic
example of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappas,
561 U.S. 593 (2010).
We also find limitation (8) (“charging the customer’s account for the
invoice”) recites insignificant post solution activity.17 The Supreme Court
guides that the “prohibition against patenting abstract ideas ‘cannot be
circumvented’ [by] adding ‘insignificant postsolution activity.’” Bilski, 561
U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92). On this record, we are
of the view that Appellants’ claims do not operate the recited generic
computer components in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).

17 We also note the “charging” step could also be considered as an abstract
idea that can be carried out by a human in the mind or by use of pen and
paper. See CyberSource, 654 F.3d at 1375.
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Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellants have not
shown an improvement or practical application under the guidance of
Manual of Patent Examining Procedure section 2106.05(a) (“Improvements
to the Functioning of a Computer or to Any Other Technology or Technical
Field”) or section 2106.05(e)(“Other Meaningful Limitations”). Nor do
Appellants advance any arguments in the Brief(s) that are directed to the
Bilski machine-or-transformation test, which would only be applicable to the
method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular
Machine) and 2106.05(c) (Particular Transformation).
With respect to this step of the analysis, Appellants argue:
Appellant does not dispute that the use of location-
sensing technology is known. Bascom, however, instructs that
claims that improve an existing technological process are
patent-eligible . . . . The use of notifications based on the
customer location improves the technology of cardless payment
systems as the payment system would know (1) that the
customer has arrived, (2) that the customer received the
good/service; and (3) that the customer has left. It may then
charge the customer for an invoice associated with the
transaction.
App. Br. 7–8 (citation to Bascom18 omitted); see also Reply Br. 4).
We note that in Bascom, the claims were directed to the inventive
concept of providing customizable Internet-content filtering which, under
Step 2 of the Alice analysis, was found to transform the abstract idea of

18 See generally Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016).
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filtering content into a patent-eligible invention. Although the underlying
idea of filtering Internet content was deemed abstract, under step 2 of the
Alice analysis, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
the filtering system to give users the ability to customize filtering for their
individual network accounts. Bascom, 827 F.3d at 1349.
In response to Appellants’ reliance upon Bascom, supra, we find no
analogy between Appellants’ claimed enhanced cardless payment and the
Internet content filtering claims in Bascom.
Therefore, we conclude the abstract idea is not integrated into a
practical application under Step 2A(ii), and thus the claim 1 is directed to the
judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
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features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea19; mere instructions to implement an
abstract idea on a computer20; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.21
Evaluating representative claim 1 under Step 2B of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
a commercial interaction in the form of a method for cardless payment into a
patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and

19 Alice, 573 U.S. at 221–23.
20 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
21 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “computer
processor,” “payment system,” “computer application executed by a mobile
electronic device,” “at least one network” in method claim 1; and “computer
application executed by a mobile electronic device” and “at least one
network” in method claim 15, the Specification discloses: “The system of
the invention or portions of the system of the invention may be in the form
of a ‘processing machine,’ such as a general purpose computer.” Spec. ¶ 98.
The Specification further discloses:
[0043] Referring to Figure 1, a block diagram of a system for
enhanced dining experiences using a mobile device according
to one embodiment is provided. System 100 includes
workstation 110, which may be any suitable computer,
including for example, desktop computers, laptop computers,
notebook computers, etc.
[0044] System 100 may further include mobile electronic
device 120. In one embodiment, mobile electronic device 120
may be a smartphone (e.g., Apple iPhone, Samsung Galaxy,
etc.), a tablet computer (e.g., Apple iPad, Samsung Galaxy,
Amazon Kindle, Barnes & Noble Nook Tablet, etc.), Google
Glass, Smart E-watch/Bracelet, etc. Any suitable mobile
electronic device may be used. Preferable, mobile electronic
device 120 may access a network, such as the Internet,
wirelessly.
[0045] In one embodiment, system 100 may include terminal
130. Terminal 130 may be provided, for example, at kiosks in
hotels, malls, airports, etc.
[0046] System 100 may include server 150. In one
embodiment, server 150 may host an application that may be
used to enhance the user's dining experience. Although only
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one server is depicted in Figure 1, more than one server may be
provided.
[0047] Places of interest, such as restaurants 160, may be
provided.
[0048] Database 180 may receive, store and/or maintain user
information, account information, user preferences, data on the
places of interest, payment information, rewards information,
loyalty account information, etc.
[0049] Workstation 110, mobile electronic device 120, terminal
130, restaurants 160, and database 180 may communicate with
server 150 over any suitable network. Suitable networks
include, for example, the Internet, a local area network, a wide
area network, a virtual private network, etc. In one
embodiment, workstation 110 and mobile electronic device 120
and/or terminal 130 may communicate with each other using
any suitable communication protocol, including WiFi,
Bluetooth, Near Field Communication, etc.
Spec. ¶¶ 43–49
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.22
Appellants further argue, “the use of known location-sensing
technology improves the technological process of cardless payments, and is
patent-eligible.” Reply Br. 4 (generally citing Bascom) (emphasis added).
With respect to this argument, we note claim 1 merely recites “an indication

22 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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that the customer is using a cardless payment feature to pay for a good or
service . . . for which the customer is physically present at the provider’s
location;” “receiving a first notification from the computer application that
the customer is physically present at a location;” and “receiving a second
notification from the computer application that the customer is no longer
physically present at the location.” Claim 1.
As a matter of claim construction, we conclude Appellants’ argument
is not commensurate with the scope of the claim, which does not require or
recite “known location sensing technology,” but which instead broadly
recites provision of “an indication” of presence and notifications of physical
presence or not. Thus, we are not persuaded that recitation of notifications
of physical presence as variously recited in claim 1 provides significantly
more under Step 2B.
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for enhanced cardless payment that includes “a
computer processor,” “computer application executed by a mobile electronic
device,” and “at least one network” as in claim 1, is simply not enough to
transform the patent-ineligible abstract idea here into a patent-eligible
invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims, which
merely require generic computer implementation, fail to transform [an]
abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claims 1 and
15, in essence, merely recite various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
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Therefore, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner’s § 101 rejection of independent claim 1,
and grouped claims 2–5, 7, 8, and 15–20, not argued separately, and which
fall therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1–3, 7, 8, 15–18, and 20
Issue 2
Appellants argue (App. Br. 8–12; Reply Br. 5–8) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bam and Blackhurst 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 that includes, inter alia, the limitations of
(1) the computer processor receiving a first notification from
the computer application that the customer is physically present at a
location for the provider of the good or service;
(2) the computer processor receiving an indication from the
provider of the good or service that the provider of the good or service
has provided the good or service to the customer; and
(3) the computer processor receiving a second notification from
the computer application that the customer is no longer physically
present at the location for the provider of the good or service,
as recited in claim 1?
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ANALYSIS
Appellants contend: “[t]he proposed combination of Bam and
Blackhurst does not disclose the first and second notifications recited in
independent claims 1 and 15.”23 App. Br. 8. Appellants further argue:
All that [Bam ¶ 37] discloses is that the customer is proximate a
POS device. There is no notification provided, let alone a
notification received from a computer application executed by
a mobile electronic device associated with a customer that
indicates that the customer is physically present at the location
of a provider of a good or service. Thus, Bam fails to disclose
the claimed “first notification.”
Nor does Bam disclose “the computer processor
receiving a second notification from the computer application
that the customer is no longer physically present at the location
for the provider of the good or service” . . . . Bam cannot
disclose “the computer processor receiving a second
notification from the computer application that the customer is
no longer physically present at the location for the provider of
the good or service” because Bam’s customer was never
physically present at the location of the provider of the good
or service.
Similarly, there is not disclosure that the computer
processor for the payment system receives a notification from
the provider of the good or service [when the provider of the
good or service] has provided the good or service . . . .
Blackhurst does not cure Bam’s deficiencies. All
Blackhurst discloses is the use of GPS, RF location, etc. to
determine the customer’s location and send the location
information to a merchant offer program application . . . .
Receiving a notice that the customer has left a pre-defined
radius or area, which is not disclosed as being a location for a
provider of a good or service is not a disclosure of the receipt of

23 We note that independent claim 15 recites neither “the first notification,”
nor “the second notification.”
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a notification that the customer is no longer physically present
at the location for the provider of the good or service.
Id. 10–12 (emphasis in original); see also Reply Br. 5–8.
The Examiner found paragraph 37 of Bam (“[t]he customer, standing
in proximity to the POS terminal . . . decides on which form and which third
party payment he/she desires to use for the particular transaction”) teaches
that the customer is present at the physical location of a merchant making a
purchase of good or service. Ans. 6. The Examiner also cited to Blackhurst
to modify the teachings of Bam. See Ans. 6.
When the local merchant offer program application . . .
is running it identifies the location of the customer . . . and
sends the location information back to the merchant offer
program application . . . . The position of the customer . . . is
determined through a location-determining device, such as a
GPS system, RF locator, or other device. The local merchant
offer program application . . . can determine the customer’s
location on a real-time basis, be updated over a time interval, be
updated when the customer . . . leaves a pre-defined radius or
area.
Blackhurst ¶ 63 (emphasis added).
Appellants argue none of paragraphs 37, 39, and 51 of Bam disclose
the recited first and second notifications, “and the general citation to
Blackhurst of using GPS technology to send location information does not
render this element obvious.” Reply Br. 6.
We disagree with the Appellants’ argument because, while Blackhurst
teaches “GPS technology to send location information,” Appellants’
argument is not responsive to the specific rejection made by the Examiner.
In particular, we agree with the Examiner because Bam teaches that the
customer is present at the physical location of a merchant making a purchase
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of a good or serviceand Blackhurst teaches that a program application
identifies the location of the customer, sends the location information back
to the merchant application (the first notification), and updates the merchant
application when the customer leaves a predefined location (the second
notification). Thus, in combination, Bam and Blackhurst teaches or at least
suggests contested limitations (1) and (3).
We also agree with the Examiner’s finding that Bam discloses
contested limitation (2) “the computer processor receiving an indication
from the provider of the good or service that the provider of the good or
service has provided the good or service to the customer,” as recited in
claim 1 (emphasis added). The Examiner cites to Bam as teaching or
suggesting this limitation. Ans. 7.
[T]he customer may contact the system to authorize the
purchase when the customer takes possession of his/her
purchase . . . the system waits for the customer to make contact
with the system to authorize the purchase once the food has
been delivered . . . [and] then transmits the payment
authorization to the merchant to complete the purchase.
Bam ¶ 72.
In response, Appellants’ argue:
Bam, cited by the Examiner, d[oes] not disclose [the contested
limitation] because [¶ 72] discloses the customer informing the
merchant that food has been delivered so that the merchant
may conduct the transaction, and not the provider of the goods
or services sending a notification that the goods or services
have been provided.
Reply Br. 7.
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We agree with the Examiner because the cited portion of Bam teaches
or suggests that a merchant completing the transaction (after the customer
has received the good and authorized the transaction) is an indication by the
merchant, i.e., the provider of the good or service, that he has provided the
good or service to the customer.
We agree with the Examiner’s finding that the combination of Bam
and Blackhurst discloses contested limitations (1) through (3) as recited in
claim 1, and as quoted above.
Therefore, 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 limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 2–3, 7, 8, 15–18, and 20, which
fall therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claims 4, 5, and 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 4, 5, and 19 under § 103 (see App.
Br. 12), we sustain the Examiner’s rejection of these claims. Arguments not
made are waived.24

24 Appellants merely argue: “[C]laims 4, 5, and 19 are dependent on
independent claim 1 or 15, and are allowable for at least the reasons set forth
above.” App. Br. 12.
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REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2–8) 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
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–5, 7, 8, and 15–20 are patent-ineligible under 35 U.S.C. § 101, and
we sustain Rejection R1.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1–4, 5, 7, 8, and 15–20 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 1–5, 7, 8,
and 15–20.
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