Anthony Rajakumar

Patent Trials and Appeals Board

Oct 14, 2021

2020003265 (P.T.A.B. Oct. 14, 2021)

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.
11/404,342 04/14/2006 Anthony Rajakumar 10171-244US1 2514
75158 7590 10/14/2021
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
KCarroll@mcciplaw.com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY RAJAKUMAR
____________

Appeal 2020-003265
Application 11/404,342
Technology Center 3600
____________

Before CARL L. SILVERMAN, MICHAEL T. CYGAN, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 8, 9, 13–19, 28, 30, 32–39, 41, 43–52, and 54–58.
Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies the
real party in interest as Verint Americas Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention relates generally to “a method and system to
detect fraud such as credit card fraud.” Spec. 2:9–10. According to the
Specification, “embodiments of the present invention at least reduce losses
due to fraudulent transactions, such as for example, credit card transactions
by using voice data to identify fraudsters.” Id. at 7:18–20.
Claim 8, reproduced below, is illustrative of the subject matter on
appeal:
8. A method, comprising:
building, by a server system, a fraudster database
comprising voice signatures of known fraudsters, wherein each
of the voice signatures includes a set of voice characteristics that
uniquely identify a corresponding fraudster, wherein building the
fraudster database comprises:
collecting, by the server system, voice samples for
a plurality of consumers;
for each of the voice samples, generating, by the
server system, a corresponding unique identifier from a
number embedded in a corresponding one of the voice
samples;
storing, by the server system, the voice samples in a
precursor database, wherein each of the voice samples is
stored in the precursor database in association with the
corresponding unique identifier;
receiving, by the server system, a report from a
client system comprising identifying information
associated with a fraudulent transaction; and
extracting, by the server system, a subset of the
voice samples from the precursor database associated with
a unique identifier that matches the identifying
information;
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receiving, by the server system, a request from the client
system to perform a screening operation in connection with a
transaction by a consumer;
responsive to the request, collecting, by the server system,
a voice sample from the consumer;
comparing, by the server system, the collected voice
sample with the voice signatures of known fraudsters from the
fraudster database; and
notifying, by the server system, the client system of a
result of the comparing.
Appeal Br. 24 (Claims App.).
The Examiner’s Rejections
The Examiner rejected claims 8, 28, 39, 51, 53,2 and 56 under
35 U.S.C. § 112, first paragraph, as unpatentable for failure to comply with
the written description requirement. Non-Final Act. 2–4.
The Examiner rejected claims 8, 9, 13–19, 28, 30, 32–39, 41, 43–52,
and 54–58 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter. Non-Final Act. 4–9.
ANALYSIS3
Section 112 — Written Description
The Examiner rejected claims 8, 28, 39, 51, and 56 under 35 U.S.C.
§ 112, first paragraph, and in particular, the limitations noted below, for
failing to comply with the written description requirement:

2 Appellant canceled claim 53. Appeal Br. 3, 11, 30. As such, we do not
address patentability of this claim herein.
3 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed October 4, 2019 (“Appeal Br.”); the Examiner’s Answer mailed
January 27, 2020 (“Ans.”); the Non-Final Office Action mailed March 7,
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(1) “for each of the voice samples, generating, by the server system, a
corresponding unique identifier from a number embedded in a corresponding
one of the voice samples” (claims 8 and 39); and
(2) “wherein generating the corresponding unique identifier from the
corresponding one of the voice samples includes using speech recognition
and/or transcription of the corresponding one of the voice samples”
(claims 51 and 56). Non-Final Act. 2–4; see Ans. 3–7.
Appellant argues the Examiner erred in rejecting claim 28 under
§ 112, first paragraph, because it was previously amended to delete
limitation (1) above, and does not contain limitation (2) above. Appeal
Br. 11. Appellant next argues that the Specification provides written
description support for each of the above-listed limitations (1) and (2).
See Appeal Br. 11–15. For example, Appellant argues that
“the specification does provide an algorithm for how to generate a unique
identifier from a number embedded in a voice sample,” and that the
“specification explicitly discloses to first perform a transcription of the voice
sample.” Appeal Br. 13. Appellant also argues “the specification implicitly
discloses to next identify/extract a unique number from the transcript, such
[as] a social security number or credit card number in the transcript.” Id.
(emphasis added). Appellant concludes:
[T]he specification does not simply restate the function to be
performed or the result to be achieved (e.g., generate a unique
identifier from a number embedded in a voice sample), but rather
sets out how to perform the function (e.g., transcribe a voice

2019 (“Non-Final Act.”); and Appellant’s Specification filed April 14, 2006
(“Spec.”). We note that Appellant did not file a Reply Brief.
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sample and identify/extract the unique identifier, such as a social
security or credit card number, from the transcript). 4
Id. We have considered Appellant’s arguments concerning § 112, first
paragraph, in its Brief, and find them persuasive of Examiner error, as
discussed below.
Under 35 U.S.C. § 112, first paragraph, a patent specification shall
contain a “written description” of the invention. The purpose of the written
description requirement is to “‘ensure that the scope of the right to exclude,
as set forth in the claims, does not overreach the scope of the inventor’s
contribution to the field of art as described in the patent specification.’”
Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)
(quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).
This requirement protects the quid pro quo between inventors and the
public, whereby the public receives “meaningful disclosure in exchange for
being excluded from practicing the invention for a limited period of time.”
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002).
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that the inventor possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “One does that by such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997). “The invention is, for purposes of the
‘written description’ inquiry, whatever is now claimed.” Vas-Cath Inc. v.

4 We note that Appellant here is construing “generating” to mean, or at least
to include, “identify[ing]” or “extract[ing].”
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Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted).
Such description need not recite the claimed invention in haec verba but
must do more than merely disclose that which would render the claimed
invention obvious. Univ. of Rochester, 358 F.3d at 923; Regents of the Univ.
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997); see also
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir.
2008) (explaining that § 112, ¶ 1 “requires that the written description
actually or inherently disclose the claim element”).
For computer-implemented functional claims, the determination of the
sufficiency of the disclosure requires an inquiry into the sufficiency of both
the disclosed hardware and the disclosed software (i.e., how the claimed
function is achieved), due to the interrelationship and interdependence of
computer hardware and software. Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 682–83 (Fed. Cir. 2015) (“The written
description requirement is not met if the specification merely describes a
‘desired result.’ . . . The more telling question is whether the specification
shows possession by the inventor of how [the claimed function] is
achieved.”) (quoting Ariad, 598 F.3d at 1349) (emphasis added); see 84 Fed.
Reg. 57, 61–62 (Jan. 7, 2019). Further, it is not enough that one skilled in
the art could theoretically write a program to achieve the claimed function,
rather the specification itself must explain how the claimed function is
achieved to demonstrate that the applicant had possession of it. See, e.g.,
Vasudevan, 782 F.3d at 682–83.
Claims 51 and 56
We turn first to dependent claims 51 and 56, which contain both
limitations (1) and (2). The Examiner finds that the application “does not
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sufficiently identify how these functions are performed or [the] result is
achieved.” Non-Final Act. 3. However, that cannot be true for
limitation (1), because the “how” is explicitly supplied by limitation (2).
It is clear how the server system generates an identifier from a number
embedded in a voice sample in limitation (1), because limitation (2) tells us
that the identifier is generated using speech recognition and/or transcription
of the pertinent voice sample.
Nor is the Specification unclear as to how limitation (2) is performed.
As pointed out by the Examiner, the Specification states that the identifier
may be “generated using speech recognition techniques” and/or “human
transcription,” and the identifier may be “a credit card number embedded in
the voice sample.” Non-Final Act. 3 (citing Spec. 13). The Specification
further gives the example of a social security number captured in a voice
sample. Spec. 12:1–5. Thus, limitation (2) finds support in the
Specification’s description of using speech recognition/transcription
techniques to capture a number, such as a credit card or social security
number, which is the generated identifier.
In the Answer, the Examiner provides two further theories as to the
lack of written description. The first is based on the requirement that genus
claims bound by a functional limitation need be supported by description of
species adequate to support the scope of the claimed genus. Ans. 4, 6–7
(citing, inter alia, Ariad Pharm., Inc. v. Eli Lilly and Co, 598 F.3d 1336,
1349–50 (Fed. Cir. 2010) (en banc) (“[A]n adequate written description of a
claimed genus requires more than a generic statement of an invention’s
boundaries.”)). The Examiner finds that the described species of speech
recognition techniques and human transcription fail to support the scope of
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the claimed genus. However, this cannot be the correct analysis for
claims 51 and 56, because the scope of the claims is explicitly limited to
“speech recognition and/or transcription;” i.e., the exact two species found
by the Examiner to be described in the Specification. Because the scope of
clams 51 and 56 are commensurate with the scope of the disclosed species,
they do not lack written description as failing to support the scope of a
recited genus.
The Examiner’s second theory is based upon a requirement that a
functionally-claimed computer-implemented invention be supported by
disclosure of an algorithm setting forth the steps for achieving that function.
Ans. 5 (citing MPEP §§ 2163.02, 2181(IV)). However, this conflates the
written description requirement with the separate requirement for adequate
description of a means-plus-function claim. Disclosure of an algorithm is
required to support a means-plus-function claim so as to prevent the claim
from amounting to “pure functional claiming.” Aristocrat Tech. Australia
PTY Ltd. v. Int’l Game Tech., 521 F. 3d 1328, 1333, 1338 (Fed. Cir. 2008).
The Examiner has not made a finding that any limitation in claims 51 or 56
(or any other claim) invokes means- (or step-) plus-function under 35 U.S.C.
§ 112, 6th paragraph. Accordingly, the requirement of a supporting
algorithm in the Aristocrat line of cases does not strictly apply.
The Examiner further finds “the algorithm or steps/procedure for
performing the claim limit functions are not explained at all to indicate how
the applicant intended the functional claim limit to be implemented.” Non-
Final Act. 3–4. Specifically, the Examiner finds the Specification “void of
any description or example of any speech recognition techniques or human
transcriptions which could be used to perform the function of ‘generating, by
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the server system, a corresponding unique identifier from a number
embedded in a corresponding one of the voice samples.’” Ans. 6.
Computer-implemented inventions may be claimed by their
functionality; in such a situation, the “written description requirement is not
met if the specification merely describes a ‘desired result.’” Vasudevan,
782 F.3d at 682. However, the essential inquiry is “whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter.” Ariad,
598 F.3d at 1351. The determination of possession necessarily varies
depending on the context, including the “existing knowledge in the
particular field, the extent and content of the prior art, the maturity of the
science or technology, [and] the predictability of the aspect at issue.” Id.
The Specification and claims 51 and 56 are clear that the generating of
an identifier may be performed by “speech recognition techniques” and/or
“human transcription.” Spec. 13. The Examiner faults Appellant’s
disclosure for not describing such techniques by example or further
description. Ans. 6. However, the Examiner has not explained how further
description or examples of speech recognition techniques or transcription
would bear on whether Appellant possessed the step of generating an
indicator (e.g., data such as a number) based on a recognized word (i.e., a
number) in a voice. Nor does the Examiner explain how a person of
ordinary skill in the art at the time of the invention would find the claimed
use of speech recognition or transcription techniques—to generate a word
from a voice sample—to be an unpredictable or uncommon use such that it
is inadequately described. We find no evidence in the record that the
claimed use of speech recognition or voice transcription techniques is other
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than their well-known and customary use, which need not be described in
further detail to demonstrate possession. See Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (“[A] patent need not teach, and
preferably omits, what is well known in the art.”).
For the reasons discussed above, we find the Examiner erred in
rejecting claims 51 and 56 under 35 U.S.C. § 112, first paragraph, for lack of
written description.
Claims 8 and 39
Independent claims 8 and 39 recite only limitation (1), and are not
limited to the specific speech recognition or transcription limitations of their
dependent claims 51 and 56. However, as described supra, the Specification
describes speech recognition or transcription as how the server system
generates an identifier from a number embedded in a voice sample in
limitation (1). In claims 8 and 39, it is true that the claims are broader than
the disclosed species, and reliance on described species for written
description support requires that the described species sufficiently represent
the entire genus. Regents of the University of California, 119 F.3d at 1588.
However, even a single disclosed species may adequately support a genus.
See, e.g., In re Rasmussen, 650 F.2d 1212 (CCPA 1981) (finding a single
example of applying adhesive in one or two strips to a material to support
the claimed “adheringly applying” limitation).
Here, the Examiner has found the described speech recognition
techniques and human transcription techniques insufficient to support the
claimed genus of generating a unique identifier from a number embedded in
a voice sample. Ans. 6–7. Yet the Examiner fails to explain the reasoning
behind that finding, and that alone causes the rejection to be insufficient.
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In re Wertheim, 541 F.2d 257, 263 (CCPA 1976) (“[T]he PTO has the initial
burden of presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined
by the claims.”).
Further, there is no indication from the record that one having
ordinary skill in the art would not understand Appellant to have invented a
method of generating an identifier from a number embedded in a voice
sample. A patent application is “written for a person of skill in the art, and
such a person comes to the patent with the knowledge of what has come
before.” LizardTech, Inc. v. Earth Resource Mapping, Inc. 424 F.3d 1336,
1345 (Fed. Cir. 2005). Lack of written description of a genus is readily
apparent where the record, viewed in light of the skill in and predictability of
the art, demonstrates some question as to the existence of some alternative
captured by a generic claim but not otherwise disclosed. See id. at 1345
(finding a person of skill in the art would not understand LizardTech to have
invented a generic method of making a seamless discrete wavelet transform
except by the specific mathematical operations of the single described
species). Such is not presented as the situation here.
Nor does the Specification indicate some alternative captured by the
generic claim but otherwise indicated in the record as not part of the claimed
invention. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.
1998) (finding the specification that “tout[s] the advantages” of a conical
shape and disparages other shapes as inferior to “make clear the
[specification] discloses only conical shapes and nothing broader.”); ULF
Bamberg v. Dalvey, 815 F.3d 793, 797–98 (Fed. Cir. 2016) (finding the
Specification that distinguished as inferior a white background layer melting
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below 220°C to show lack of possession of a claim to a white background
layer melting both above and below 220°C).
Nor does the record indicate substantial variability or unpredictability
in the genus such that “ordinary artisans could not predict the operability of
any species other than the one disclosed.” In re Curtis, 354 F.3d 1347, 1353
(Fed. Cir. 2004) (record did not support a “friction-enhancing” dental floss
coating other than the disclosed microcrystalline wax coating, which was
stated by Appellant to have “surprising and unexpected” properties).
Here, the generation of information from a number embedded within a
voice sample is described broadly in the Specification, with no
disparagement of any particular method of such generation, and no
indication of substantial variability or unpredictability in any method of
performing such generation. Rather, the record reflects that the defining
characteristic of the generation is the identification of a word in a voice
record to provide an identifier, and the presence of narrower species does not
reflect a more specific function or characteristic that places further limits on
Appellant’s described invention. See In re Smythe, 480 F.2d. 1376, 1383–84
(CCPA 1973) (one skilled in the art would recognize the written description
supported using a generic inert fluid as a segmentizing medium despite only
describing particular examples using a liquid, because of the described
properties and functions of the segmentizing medium were consistent with
those of both inert fluids and liquid). From the record, there is no indication
that a person of ordinary skill in the art would not have understood
Appellant to have possessed the claimed step of generation of a unique
identifier from a number embedded in a corresponding one of the voice
samples.
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For the reasons discussed above, we find the Examiner erred in
rejecting claims 8 and 39 under 35 U.S.C. § 112, first paragraph, for lack of
written description.
Claim 28
The Examiner does not clearly explain what language in claim 28 is
found to lack written description, much less why. That alone causes the
rejection to be insufficient. See In re Wertheim, 541 F.2d at 263.
Accordingly, we do not sustain the Examiner’s rejection of claims 8,
28, 39, 51, and 56 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the written description requirement.
Section 101 — Patentable Subject Matter
Appellant disputes the Examiner’s determination that claims 8, 9, 13–
19, 28, 30, 32–39, 41, 43–52, and 54–58 are directed to patent-ineligible
subject matter. Appeal Br. 15–23.
Appellant proffers several patent-eligibility arguments, mostly in
conclusory form, including (1) “the pending claims recite an improved
technological process for how to build and use a fraudster database to
facilitate fraud detection comparisons and notifications” (Appeal Br. 15; see
id. at 19 (“[T]he pending claims provide specific improvements to a
technological process.”)); (2) the claims “recite[] a particular computer
architecture” (id. at 16); (3) “the particular architecture of components and
set of interactions therebetween recited in the technical solution set out by
the pending claims cannot simply be performed in the human mind or by a
human using a pen and paper” (id. at 17); (4) “execution of a feature by a
computer system cannot be performed mentally” (id. at 18); (5) “the
computers of the pending claims are not[] merely invoked as a tool, but
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instead form the basis for the technological improvement in how a fraudster
database is built and used” (id. at 21); (6) “an ‘inventive concept’ lies in at
least how the fraudster database is built based on extracted voice samples
from a precursor database that have unique identifiers that match identifying
information from a report of a fraudulent transaction” (id. at 22); and
(7) “the claims are sufficiently limited to a specific application” (id. at 23).
In the Answer, the Examiner maintains and further clarifies the Section 101
rejection. See Ans. 7–15. Appellant did not reply to the Examiner’s
Answer. We have considered Appellant’s arguments concerning § 101 in its
Brief, but find them unpersuasive of Examiner error, as discussed below.
“Whether a patent claim is drawn to patent-eligible subject matter is
an issue of law that is reviewed de novo.” SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
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subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis: (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
Independent Claim 8
In this case, we conclude Appellant’s independent claim 8 recites an
abstract idea. Specifically, Appellant’s claim 8 is generally directed to
detecting fraudulent transactions, and more specifically, doing so by
comparing a person’s voice (biometric) to voices of known fraudsters, as
found by the Examiner. See Non-Final Act. 4 (“[T]he claimed invention is
directed to an abstract idea of detecting fraud . . . without significantly
more.”); Ans. 8 (“[T]he specification and claims as a whole are directed
toward fraud detection.”). This is consistent with how Appellant describes
the claimed invention. See Spec. 2:9–10 (“Embodiments of the invention
relate to a method and system to detect fraud such as credit card fraud.”
(emphasis added)), 7:18–20 (“Broadly, embodiments of the present
invention at least reduce losses due to fraudulent transactions, such as for
example, credit card transactions by using voice data to identify
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fraudsters.”), 12:15–17 (“[T]he voice sample is compared to voice signatures
in the fraudster database.”); 16:4–8 (“[P]erforming the screening operation
. . . [is] achieved by comparing against the voice signatures in the fraudster
database in order to find a match, which would be indicative of a
fraudster.”).
Consistent with our Office Guidance and case law, we conclude that
detecting fraudulent transactions, including by using human biometrics such
as voice, is a certain method of organizing human activity (e.g., a
fundamental economic practice)—i.e., an abstract idea. See 84 Fed. Reg.
at 52; see also Alice, 573 U.S. at 219–20 (concluding that use of a third party
to mediate settlement risk is a “fundamental economic practice” and thus, an
abstract idea); Bilski v. Kappos, 561 U.S. 593, 611–12 (2010) (concluding
hedging to be a fundamental economic practice and, therefore, an abstract
idea); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054
(Fed. Cir. 2017) (holding that “processing an application for financing a
purchase” falls within certain methods of organizing human activities and is,
therefore, an abstract idea); Ans. 10; cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (holding that
detecting fraudulent transactions by obtaining and comparing information
relating past transactions to a particular Internet address is an abstract mental
process); FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016) (holding that detecting fraud and/or misuse in a computer
environment based on analyzing data such as in log files, or other similar
records, including user identifier data is an abstract idea). Although
Appellant argues that the claim is not directed to fraud detection because it
focuses on “how to build and use a fraudster database” (Appeal Br. 20), this
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is not materially different from “the concept of analyzing records of human
activity to detect suspicious behavior” and presenting the results of such
analysis that was found abstract in FairWarning. FairWarning, 839 F.3d
at 1093.
Claim 8 is reproduced below with limitation identifiers added in
brackets (e.g., “[a]”) and the limitations that recite detecting fraudulent
transactions in italics:
8. A method, comprising:
[a] building, by a server system, a fraudster database
comprising voice signatures of known fraudsters, wherein each
of the voice signatures includes a set of voice characteristics that
uniquely identify a corresponding fraudster, wherein building
the fraudster database comprises:
[b] collecting, by the server system, voice samples
for a plurality of consumers;
[c] for each of the voice samples, generating, by the
server system, a corresponding unique identifier from a
number embedded in a corresponding one of the voice
samples;
[d] storing, by the server system, the voice samples
in a precursor database, wherein each of the voice
samples is stored in the precursor database in association
with the corresponding unique identifier;
[e] receiving, by the server system, a report from a
client system comprising identifying information
associated with a fraudulent transaction; and
[f] extracting, by the server system, a subset of the
voice samples from the precursor database associated
with a unique identifier that matches the identifying
information;
[g] receiving, by the server system, a request from the
client system to perform a screening operation in connection
with a transaction by a consumer;
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[h] responsive to the request, collecting, by the server
system, a voice sample from the consumer;
[i] comparing, by the server system, the collected voice
sample with the voice signatures of known fraudsters from the
fraudster database; and
[j] notifying, by the server system, the client system of a
result of the comparing.
Appeal Br. 24 (Claims App.) (emphases added).
More particularly, the concept of detecting fraudulent transactions
using voice comprises (i) obtaining voice samples of known fraudsters
(i.e., the italicized portions of claim elements [a] through [f]); (ii) upon
request, obtaining a voice sample of a suspect (i.e., the italicized portions of
claim elements [g] and [h]); (iii) comparing the suspect voice sample to
voice samples of known fraudsters (i.e., the italicized portions of claim
element [i]); and (iv) providing a result of the comparison (i.e., the italicized
portions of claim element [j]). Fraud prevention by verifying the identity of
a customer (suspect) is as fundamental to business as the economic concepts
that were identified as abstract ideas by the Supreme Court, such as
intermediated settlement (Alice Corp.) and risk hedging (Bilski), discussed
above.
Because claim 8 recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a practical application. 84 Fed. Reg. at
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54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
In this case, we find the additional limitations do not integrate the
judicial exception into a practical application. More particularly, the claims
do not recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55; see also Ans. 11
(“The examiner summarizes by stating that there is no improvement to a
technology or to the computer itself and that the claims do not use a
particular machine.”).
Claim 8 recites, in addition to the limitations identified as an abstract
idea, a server system and a client system. However, these systems are
recited as no more than performing the generic computer functions of
collecting, storing, receiving, and extracting or filtering data, and giving data
unique identifiers in a database.
Contrary to Appellant’s arguments (see, e.g., Appeal Br. 15–23), the
invention of claim 8 is not directed to an improvement in computer or other
technology. Although Appellant characterizes the claimed invention as “an
improved technological process for how to build and use a fraudster database
to facilitate fraud detection comparisons and notifications” (Appeal Br. 15),
Appellant does not sufficiently identify the technological “problem” being
solved. See Appeal Br. 15–23. The purported improvement or “specific
approach” (“generating . . . a corresponding unique identifier from a number
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embedded in a corresponding one of the voice samples”) (Appeal Br. 15–16)
relates to the abstract idea, and does not improve a computer (or database),
technology, or a technical field.5 See McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the
claims in these patents focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery.”)
(citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016)). In particular, McRO found eligibility for a system that performed a
task by computer in a different manner than performed by humans. McRO,
837 F.3d at 1314 (finding the computer to use specific morphing rules rather
than subjective animator determinations to draw faces). Unlike McRO’s
specifically claimed phoneme morph weights, neither the claims nor the
Specification indicates that the performance of the claimed invention is by a
different manner than performed by humans. Nor are we persuaded by
Appellant’s unsupported allegation that, although “a human mind might be
able to compare two voices to each other,” it would not be able to compare a
set of features of a voice (such as “volume, pitch, tone, timbre, cadence,
speed, meter, rhythm, inflection, accent, dialect”) to uniquely identify an

5 Appellant explicitly describes the “unique identifier” as capable of being
“generated” by a human using “human transcription” (Spec. 13:7–11), which
itself is merely a mental process (an observation, evaluation, or judgment)—
i.e., an abstract idea. See Ans. 8–9 (“The speech recognition techniques and
human transcription is described at a high level of generality without any
implementation details (see 35 U.S.C. § 112). Additionally, this can be
considered a step or function a human can perform (i.e. human
transcription).”).
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individual, and that the use of the computer to perform, in some unspecified
way, this comparison would constitute an improvement to technology.
Further, unlike in McRO and Enfish, we find the invention of claim 8
uses computers, databases, and networking as tools, rather than improving
upon those tools. Also, unlike in Uniloc USA, Inc. v. LG Elecs. USA, Inc.,
957 F.3d 1303, 1309 (Fed. Cir. 2020), where the claims recited a specific
improvement in the functionality of a communication system itself, namely
the reduction of latency experienced by parked secondary stations therein,
we find claim 8 merely recites generalized steps to be performed on a
computer using generic computer capabilities—there is no claimed
improvement to database speed, efficiency, or structure, instead a generic
database is used for what it is intended for, to store and organize data. See
Spec. 16:21–19:7 (describing that the claimed invention uses generic
processors, storage devices, operating systems, and software applications).
Further, Appellant does not explain persuasively how the steps recited in
claim 8 are not merely the generic use of computer databases and networks.
See Appeal Br. 15–23; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1258–59 (Fed. Cir. 2014) (“We caution, however, that not all claims
purporting to address Internet-centric challenges are eligible for patent.”).
We also note that Appellant’s Specification expressly states that the
purported invention is detecting fraud such as credit card fraud (Spec. 2:9–
10), not improving computer database technology.
For at least the foregoing reasons, claim 8 does not integrate the
judicial exception into a practical application.
Because we determine the invention of independent claim 8 is
directed to an abstract idea or combination of abstract ideas, we analyze the
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claim under step two of Alice (i.e., step 2B of the Office Guidance) to
determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that was not well-
understood, routine, conventional activity in the field, or simply append
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56. “Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).
In this case, Appellant’s claim 8 does not recite specific limitations
(alone or when considered as an ordered combination) that were not well-
understood, routine, and conventional. Collecting, storing, receiving, and
extracting or filtering data, and giving data unique identifiers in a database,
as in claim 8, for example, merely requires the well-understood function of a
computer, database, and network. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”). In addition, Appellant describes the components of
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the claimed invention, even the “database,” at a high level of generality and
the components perform generic functions that are well-understood, routine,
and conventional. See, e.g., Claim 8 (“server system”; “client system”;
“database”); Spec. 16:21–19:7 (“server”; “processor”; “memory”; “input
devices”; “storage devices”; “networks”; “fraudster database”; “fraudster
report”); Figs. 1–10.
Consistent with the Berkheimer Memorandum,6 we agree with the
Examiner’s findings that claim 8 merely recites generic computer
components (e.g., a server system, client system, and database) performing
generic computing functions that are well-understood, routine, and
conventional (e.g., receiving or generating data, processing or analyzing
data, and providing results of the data processing over a network). See Final
Act. 6–9; Ans. 9 (“[T]he examiner disagrees that the use of []servers and
databases constitute a ‘particular architecture’. The physical devices and
database are described at a high level of generality. Pages 16-19 of the
specification describe the use of generic processors and routines executed to
implement the embodiment of the invention and not a particular
architecture.”), 14 (“The building of the database involves what is placed

6 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
for a finding that an element was well-understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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into the database, such as sets and subsets of voice samples and unique
identifiers. However, there is no disclosure in the specification of an
improved storage device or database structure. Instead, the claimed and
disclosed database are described as generic storage devices.”); see
also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components, such as an
“interface,” “network,” and “database,” fail to satisfy the inventive concept
requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and [a] ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”); buySAFE, 765 F.3d at 1355 (“That a
computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”). We also find no
additional limitations in independent claim 8 that amount to “significantly
more” than the abstract idea itself. See MPEP § 2106.05(d).
Additionally, to the extent Appellant contends the claims do not seek
to tie-up (i.e., preempt) an abstract idea (see Appeal Br. 20), we are
unpersuaded of Examiner error. “‘[W]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.’” FairWarning, 839 F.3d at 1098 (quoting
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015)); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”). Further, “[w]here a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
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as they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa, 788 F.3d at 1379.
For the reasons discussed above, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 8 under 35 U.S.C. § 101.
Independent Claims 28 and 39
Appellant argues independent claims 28 and 39 as a group with
independent claim 8. Appeal Br. 22. Accordingly, we sustain the
Examiner’s rejection of independent claims 28 and 39 under 35 U.S.C. § 101
for the same reasons as for claim 8. See 37 C.F.R. § 41.37(c)(1)(iv).
Dependent Claims 9, 13–19, 30, 32–38, 41, 43–52, and 54–58
As for the dependent claims at issue, Appellant in its Brief merely
recites the additional limitations of dependent claims 13–16 and 52, without
any separate substantive arguments for patentability, and otherwise groups
these claims together with the remaining dependent claims. See Appeal
Br. 15, 17, 21–22. As such, Appellant’s contentions regarding dependent
claims 9, 13–19, 30, 32–38, 41, 43–52, and 54–58 amount to a general
denial that fails to address the Examiner’s findings and are, therefore,
insufficient to be considered arguments for separate patentability. 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were [patentable].”).
Regardless, we find no additional limitations in dependent claims 13–16
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and 52 that amount to “significantly more” than the abstract idea itself. See
MPEP § 2106.05(d). Accordingly, we sustain the Examiner’s rejection of
dependent claims 9, 13–19, 30, 32–38, 41, 43–52, and 54–58 under
35 U.S.C. § 101 for the same reasons as for claim 8. See 37 C.F.R.
§ 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
8, 28, 39,
51, 56
112, first
paragraph
Written
Description
8, 28, 39,
51, 56
8, 9, 13–19,
28, 30, 32–
39, 41, 43–
52, 54–58
101 Eligibility 8, 9, 13–19,
28, 30, 32–
39, 41, 43–
52, 54–58

Overall
Outcome
8, 9, 13–19,
28, 30, 32–
39, 41, 43–
52, 54–58

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