Apple Inc.

Patent Trials and Appeals Board

Mar 18, 2021

2020006161 (P.T.A.B. Mar. 18, 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.
14/869,877 09/29/2015 Marcel VAN OS P27540US1/77770000423101 7385
150004 7590 03/18/2021
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
JACOB, WILLIAM J
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCEL VAN OS, GREGG SUZUKI,
LAWRENCE Y. YANG, PETER ANTON, and
DONALD W. PITSCHEL
____________

Appeal 2020-006161
Application 14/869,877
Technology Center 3600
____________

Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–57. We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were presented on March 11, 2021 by
telephone.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 5.
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SUMMARY OF THE DECISION
We AFFIRM.
CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to techniques for computer
user interfaces for loyalty accounts and payment accounts (Spec. para. 3).
Claim 16, reproduced below with the italics added, is representative of the
subject matter on appeal.

16. A method, comprising:
at an electronic device with a display and a location
sensor:
detecting, using the location sensor, a current location;
determining whether the current location is associated with a
first account;
in accordance with a failure to determine that the current
location is associated with an account other than a default
payment account, displaying, on the display, a visual indication
of the default payment account without displaying a visual
indication of the first account;
in accordance with a determination that the current
location is associated with the first account, concurrently
displaying, on the display, the visual indication of the default
payment account and the visual indication of the first account;
and
wherein the default payment account and the first
account are linked to the electronic device and the default
payment account and the first account are different.

THE REJECTION
The following rejection is before us for review:
Claims 1–57 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 16 is improper
because the claim is not directed to an abstract idea (Appeal Br. 22–31;
Reply Br. 7–16). The Appellant argues further that the claim is integrated
into a practical application (Appeal Br. 31–39). The Appellant also argues
that the claim is “significantly more” than the alleged abstract idea (Appeal
Br. 39–53; Reply Br. 17–21).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–5, 27–29; Ans. 7–14).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. 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. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof 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 that “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
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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. (internal 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.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
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); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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.
See Guidance.
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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.
The Specification at paragraph 3 states that the invention generally
relates to techniques for computer user interfaces for loyalty accounts and
payment accounts. Here, the Examiner has determined that the claim sets
forth “providing location based selection of available payment methods
(e.g., many merchants have signs that tell a consumer the preferred/ accepted
payment methods, wherein such signs are viewable by the consumer upon
proximity to the merchant)” which is a method of organizing human
activities and fundamental economic practice and abstract concept (Ans. 7).
We substantially agree with the Examiner. We determine that the claim sets
forth the subject matter in italics above, which describes the concept of: [1]
“detecting, using the location sensor, a current location”; [2] “determining
whether the current location is associated with a first account”; [3] “in
accordance with a failure to determine that the current location is associated
with an account other than a default payment account, displaying . . . a
visual indication of the default payment account without displaying a visual
indication of the first account”; [4] “in accordance with a determination that
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the current location is associated with the first account . . . displaying, on the
display, the visual indication of the default payment”; [5] “account and the
visual indication of the first account”; and [6] “wherein the default payment
account and the first account are linked to the electronic device and the
default payment account and the first account are different”; which is a
method of determining a payment method and displaying information based
on geographic locations, which is a certain method of organizing human
activities and fundamental economic practice; and a mental process, i.e., a
judicial exception.
In Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 876 F.3d 1372,
1378 (Fed. Cir. 2017) claims directed to the local processing of payments for
remotely purchased goods was held to be directed to an abstract idea. In
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015) tailoring content on a website based on a user’s
location and time of day was held to be a fundamental economic practice
and directed to an abstract idea. See also Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), where collecting information,
analyzing it, and displaying results from certain results of the collection and
analysis was held to be an abstract idea. In cxLoyalty, Inc. v. Maritz
Holdings Inc., 986 F.3d 1367, 1376–77 (Fed. Cir. 2021) it was held that
claims for “facilitating, or brokering, a commercial transaction (i.e., the sale
and purchase of goods and services) between a purchaser using a first form
of value (i.e., a rewards program participant using points in whole or in part)
and a seller transacting in a second form of value (i.e., a vendor system
which transacts purchases in currency)” serves to “facilitate[] such a
transaction via transfers of information between the participant, vendor
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system, and the intermediary (the GUI and API)” and was directed to
transfers of information relating to long standing commercial practice and an
abstract idea. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 612
(Fed. Cir. 2016) (in which “classifying and storing digital images in an
organized manner” was held to be an abstract concept).
We next determine whether the claim recites additional elements to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h)
(9th Ed., Rev. 10.2019, June 2020).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in the claim, the additional elements beyond the abstract
idea are the recited “electronic device” and “location sensor.” The
limitations of “detecting,” “determining,” and “displaying” as claimed “do
not purport to improve the functioning of the computer itself,” do not
improve the technology of the technical field, and do not require a
“particular machine.” Rather, they are performed using generic computer
components. Further, the claim as a whole fails to effect any particular
transformation of an article to a different state. The recited steps in the
claim fail to provide meaningful limitations to limit the judicial exception.
In this case, the claim merely uses the claimed computer elements as a tool
to perform the abstract idea.
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Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references MPEP §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
paragraphs 84, 88, and 93 for example describes using conventional
computer components such as a computer, memory, controller, and
processor in a conventional manner. The claim specifically includes
recitations for “an electronic device” to implement the method but these
computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claimed generic computer
components which are used to implement the claimed method are well
understood, routine, or conventional in the field. Here, the claim has not
been shown to be “significantly more” than the abstract idea.
The Appellant at pages 33–36 of the Appeal Brief has cited to McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), but
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the claims in that case are distinguished from this case in being directed to
rules for lip sync and facial expression animation.
The Appellant at pages 36–38 of the Appeal Brief has also cited
to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract, but the claims in that case were not similar in
scope to those here and were, in contrast, directed to a self-referential data
table.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same or similar arguments for the remaining
claims which are drawn to similar subject matter, the rejection of these
claims is sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–57 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–57 101 Eligibility 1–57
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).

AFFIRMED