BlackBerry Limited

Patent Trials and Appeals Board

Aug 31, 2021

2021001466 (P.T.A.B. Aug. 31, 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.
16/119,386 08/31/2018 Siamak SARTIPI 1679-2194 3790
136869 7590 08/31/2021
Wilson Lue LLP/BlackBerry Files
250 University Avenue, 5th Floor
Toronto, ONTARIO M5H 3E5
CANADA
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/31/2021 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):
docketing@wilsonlue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIAMAK SARTIPI
____________

Appeal 2021-001466
Application 16/119,386
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 2–4, 6, 7, and 13–15. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims an electronic payment system using mobile wireless
communications device and associated methods. (Spec. ¶ 2, Title).

1 The word “Appellant” is used to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BlackBerry Limited as the real party
in interest. Appeal Br. 3.
Appeal 2021-001466
Application 16/119,386
2

Claim 2 is representative of the subject matter on appeal.
2. A method for controlling transmission of information
during a purchase transaction in a privacy-enhancing manner,
the method comprising:
a purchaser device initiating a purchase transaction by
autonomously generating a transaction identifier and
transmitting the transaction identifier and a device identifier
over a wireless network to a remote payment processor server
system, wherein the purchaser device is a mobile wireless
communications device, and wherein the remote payment
processor server system recognizes the purchaser device using
the device identifier;
the merchant device obtaining the transaction identifier
but not the device identifier directly from the purchaser device;
the merchant device transmitting, over a network to the
remote payment processor server system, the transaction
identifier obtained directly from the purchaser device and
transaction information;
the purchaser device receiving, from the remote payment
processor server system, the transaction information;
the purchaser device transmitting a transaction
confirmation and account access information to the remote
payment processor server system.

THE REJECTIONS
Claims 2–4, 6, 7, and 13–15 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 2–4, 6, 7, and 13–15 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.2
Claims 2–4, 6, 7, and 13–15 are rejected under 35 U.S.C. § 112(b) as
being indefinite.

2 Claim 5 has been cancelled. Therefore, we will only address this rejection
as it is directed to claims 2–4, 6, 7, and 13–15.
Appeal 2021-001466
Application 16/119,386
3

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 2–4, 6, 7, and 13–15 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, . . . then ask, “[w]hat else is there
in the claims before us?” To answer that question, . . . consider
the elements of each claim both individually and “as an ordered
combination” to determine whether the additional elements
“transform the nature of the claim” into a patent-eligible
application. [The Court] described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”

Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
Appeal 2021-001466
Application 16/119,386
4

idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception imposes a
meaningful limit on the judicial exception such that it is integrated into a
practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, pp. 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims recite claim elements which
cover commercial interactions including transaction activities and therefore
recite a certain method of organizing human activity. (Final Act. 9). The
Examiner finds the judicial exception is not integrated into a practical
application because the computer hardware is recited at a high-level of
generality such the recitation amounts to no more than mere instructions to
apply the exception using a generic computer component. The Examiner
also finds that the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because they do not add significantly more to the exception. (Final Act. 10).
The Examiner considers the steps such as obtaining (receiving) and
transmitting to be steps that are considered extra solution activity and mere
instructions to apply the exception using general computer components.
(Id.)
The Specification discloses that the invention relates to the field of
electronic payment systems and more particularly to using a mobile wireless
communications device to facilitate an electronic payment at a point-of-sale
(POS). (Spec. ¶ 2). A payment processor server is configured to receive the
purchaser device ID and purchaser account access information (Spec. ¶ 19).
The Specification also discloses that the payment processor server does not
Appeal 2021-001466
Application 16/119,386
5

send the purchaser device ID to the POS terminal thereby shielding the
purchaser device ID and preserving the privacy of the mobile wireless
communications device from the merchant and POS service provider server.
(Spec. ¶ 39).
Consistent with this disclosure, claim 2 recites “a purchaser device
initiating a purchase transaction by autonomously generating a transaction
identifier,” “merchant device obtaining the transaction identifier,” “merchant
device transmitting . . . the transaction identifier,” “the purchaser device
receiving . . . the transaction information,” and “purchaser device
transmitting a transaction confirmation.”
We agree with the Examiner’s findings that claim 2 is directed to
controlling the behavior of persons concerning a purchase transaction.
More specifically, we determine that claim 2 recites a method of conducting
a purchase transaction between a merchant device and a purchaser device in
such a way as to protect the identity of the purchaser, i.e., a commercial or
legal interaction. See Guidance 84 Fed. Reg. at 52. Moreover, controlling
the behavior of persons concerning a purchase transaction is a fundamental
economic practice. Thus claim 2 recites the judicial exception of a method
of organizing human behavior, which is not patentable subject matter. See
Alice, 573 U.S. at 217–20.
Also, we find the steps of “transmitting the transaction identifier,”
“obtaining the transaction identifier,” “receiving . . . transaction
information,” and “transmitting a transaction confirmation” constitute
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google,
Appeal 2021-001466
Application 16/119,386
6

Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain
arrangements involving contractual relations are directed to abstract ideas).
Thus, we find that the claims recite the judicial exceptions of methods of
organizing human activity and in the alternative, a mental process.
Turning to the second prong of the “directed to test,” claim 2 requires
a “mobile wireless communications device,” a “merchant device,” and a
“remote payment processor server system.” These recitations do not
integrate the recited judicial exceptions into a practical application because
these recitations do not impose “a meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 54. In this regard, we find no
indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in claim 2 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
Appeal 2021-001466
Application 16/119,386
7

at 55.
In addition, the recitations do not affect an improvement in the
functioning of mobile wireless communications device, merchant device, or
remote payment processor server system or other technology, do not recite a
particular machine or manufacture that is integral to the claims, and do not
transform or reduce a particular article to a different state or thing.
Guidance, 84 Fed. Reg. at 54–55. Claim 2 is directed to judicial exceptions
that are not integrated into a practical application and thus claim 2 is directed
to abstract ideas.
Turning to the second step of the Alice analysis, because we find that
the claim 2 is directed to abstract ideas, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract ideas themselves. See Alice,
573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The introduction of computers into the claim does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
Appeal 2021-001466
Application 16/119,386
8

“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 223 (citations omitted).
Instead, “the relevant question is whether claim 2 here does more than
simply instruct the practitioner to implement the abstract ideas . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computers at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
Considered as an ordered combination, the computers of Appellant’s
claim 2 add nothing that is not already present when the steps are considered
separately. The sequence of data reception-analysis-access/display is
equally generic and conventional or otherwise held to be abstract. See
Appeal 2021-001466
Application 16/119,386
9

Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract), Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
Claim 2 does not, for example, purport to improve the functioning of
the computers. As we stated above, the claims do not effect an improvement
in any other technology or technical field. The Specification spells out
different generic computers and equipment that might be used to implement
the invention. (See, e.g., Spec. ¶¶ 29–31). Thus, claim 2 at issue amounts to
nothing significantly more than instructions to apply the abstract ideas
recited in the claim using some unspecified, generic computers. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 5–6; Reply Br. 2–4)
Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 2 recites an improved technical result in
operation of communication systems that support commercial transactions
Appeal 2021-001466
Application 16/119,386
10

because the method carries out the purchase transactions in such a way as to
safeguard at least some of the purchaser’s privacy.
However, claim 2 is “focused on providing information . . . , not on
improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported
advance ‘is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.’ We thus conclude
that the claim[ is] directed to an abstract idea.” Id. at 1385 (citation
omitted).
In cases involving software innovations, such as we have here, the
inquiry as to whether a claim is directed to an abstract idea “often turns on
whether the claims focus on ‘the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an “abstract idea”
for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue
Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, 822
F.3d at 1335–36). Here, the recited devices and servers are invoked merely
as tools. The only improvement relates to the abstract idea of conducting
transactions without sending the purchaser device ID to the merchant. The
focus of the claim is not on physical-realm improvement but on an
improvement in wholly abstract ideas. SAP Am., Inc, 898 F.3d at 1168.
Appellant argues that the claims recite a method that conserves
computer resources because if the mobile device is unable to communicate,
the transaction is not initiated at all so the resources of the merchant system
or payment system are not engaged and therefore recites a technical
improvement to the computers recited in claim 2. (Appeal Br. 6). We find
the Appellant’s argument unpersuasive as to error in the Examiner’s or our
Appeal 2021-001466
Application 16/119,386
11

characterization of what the claim is directed to because the method as
claimed fails to adequately support it. We are unable to identify any claim
language suggestive of an improvement in computer performance. Nor has
Appellant directed us to any suggestion of the argued improvements in the
Specification so as to find that “the specification as a whole . . . makes clear
. . . the technological benefit.” Koninklijke KPN N.V. v. Gemalto M2M
GmbH, 942 F.3d 1143, 1152 (Fed. Cir. 2019). An attorney argument that
such an improvement exists is alone insufficient. See generally In re Glass,
474 F.2d 1015, 1019 (CCPA 1973); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and, In
re Schulze, 346 F.2d 600, 602 (CCPA 1965). In any case, the fact that the
resources of a mobile device are not consumed if the device is not on or able
to initiate a purchase transaction is not a technical improvement to the
purchaser device, merchant device, or server.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 2. We will also sustain the rejection of claim 13 because the
Appellant argues claims 2 and 13 as a group. (Appeal Br. 5). We will also
sustain the rejection as it is directed to the remaining claims subject to this
rejection for the same reasons.

REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
We will not sustain this rejection. The Examiner finds that there is no
teaching of the negative limitation recited in claim 2, i.e., “but not the device
identifier” in the Specification.
Negative claim limitations are governed by the same general law
covering the written description requirement as positively recited claim
elements, however, our reviewing court has also specifically addressed this
Appeal 2021-001466
Application 16/119,386
12

category of claim limitations. In particular, the Federal Circuit has held that
“[n]egative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
Here, we identify the claim language at issue in this appeal to be a
negative claim limitation, that is, the limitation expressly excludes a device
identifier from the transaction identifier received by the merchant device.
Based on the guidance of our reviewing court, we determine whether the
Specification identifies any reason to exclude the device identifier. We find
that the Specification at paragraph 39 discloses that the device identifier is
excluded to preserve the privacy of the mobile wireless device. As such the
Specification discloses a reason to exclude the device identifier from the
data sent to the merchant device.
In view of the foregoing, we will not sustain this rejection.

REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner finds that the word “remote” to describe the payment
processor server is indefinite because the Specification does not define the
term so the distance could by any distance. (Final Act. 12). We agree with
Appellant’s argument in response to this rejection that the term “‘remote’
. . . is notorious in the field of electronic communication as referring to
communications between devices that are physically separated by any
distance.” (Appeal Br. 9).
In view of the foregoing, we will not sustain this rejection.
Appeal 2021-001466
Application 16/119,386
13

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 2–4, 6, 7,
and 13–15 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 2–4, 6, 7, and
13–15 under 35 U.S.C. § 112 first and second paragraph.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 6, 7,
13–15
101 Eligibility 2–4, 6, 7,
13–15

2–4, 6, 7,
13–15
112(a) Written Description 2–4, 6, 7,
13–15
2–4, 6, 7,
13–15
112(b) Indefiniteness 2–4, 6, 7,
13–15
Overall
Outcome
2–4, 6, 7,
13–15

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).
AFFIRMED