BOKU, INC.

Patent Trials and Appeals Board

May 1, 2020

2019000636 (P.T.A.B. May. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/752,176 01/28/2013 Adam Lee BOKU-P074 4441
17169 7590 05/01/2020
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
EXAMINER
ANSARI, AZAM A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ariana@matterlightip.com
stephen@matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ADAM LEE
________________

Appeal 2019-000636
Application 13/752,176
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, MICHAEL J. ENGLE, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1–20, which constitute all of the pending claims.1
Appeal Br. 7–28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Boku, Inc.
Appeal Brief filed March 19, 2018 (“Appeal Br.”), 3.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
The invention provides a computer-based method of
managing electronic transactions. A plurality of merchant
accounts with offers are stored in a data store. A card number
and a mobile phone number are then stored. Due to registration
of the card number at least one of the offers is transmitted to a
consumer mobile phone at the mobile phone number. A charge
advisory is received after transmitting the offer to the consumer
mobile phone. The offer is then applied against an account
having a card number that matches a card number in the charge
advisory.
Abstract.

STATEMENT OF THE REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent-eligible subject matter without significantly
more. Non-Final Act. 3–5.2
Claims 1–4, 6–8, 10–14, 16–18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Wentker (US 2008/0167961 A1; published
July 10, 2008). Non-Final Act. 5–13.
Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wentker and Wanless (US 2009/0147778 A1; published
June 11, 2009). Non-Final Act. 15–16.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Non-Final Action
mailed November 16, 2017 (“Non-Final Act.”) and the Examiner’s Answer
mailed July 30, 2018 (“Ans.”).
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Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wentker and Dean (US 2013/0041734 Al; published
Feb. 14, 2013). Non-Final Act. 13–14.

STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

THE SECTION 101 REJECTION
The Claimed Invention
In relation to the 101 rejection, independent claim 1 is representative
of the appealed claims.3 Claim 1 is reproduced below with paragraph
labeling added for clarity and emphasis added to the claim language that
recites an abstract idea:
1. A computer-based method of managing electronic
transactions, comprising:
[(a)] storing, with a processor, a plurality of merchant offers in
a data store, each offer having an identifier;
[(b)] providing, with the processor, as part of a registration
process, an interface to electronically capture a mobile phone
number and a card number in relation to one another after storing
the merchant offers without capturing a username and password;
[(c)] receiving, with the processor, as part of the registration
process, the card number and the mobile phone number after

3 Appellant argues all of claims 1–20 together as a group. Appeal Br. 22.
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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storing the merchant offers without receiving a username or
password;
[(d)] storing, with the processor, as part of the registration
process, the card number and mobile phone number linked in
relation to one another in a consumer account in the data store
after receiving the card number and mobile phone number and
without storing a username or password for the consumer
account;
[(e)] transmitting, with the processor, after the registration
process, at least one of the offers to a consumer mobile phone at
the mobile phone number after and due to storing the card
number and mobile phone number in the consumer account;
[(f)] receiving, with the processor, as part of a transaction
processing after the registration process and after transmitting
the offer to the consumer mobile phone, a charge advisory over
a network interface device, the charge advisory having a card
number and an identifier;
[(g)] comparing, with the processor, as part of the transaction
processing, the card number in the charge advisory with card
numbers of a plurality of consumer accounts to find a selected
consumer account having a card number that matches the card
number in the charge advisory;
[(h)] finding, with the processor, as part of the transaction
processing, an offer in the selected account having the identifier;
and
[(i)] applying, with the processor, as part of the transaction
processing, the offer found in the selected account having the
identifier against an account having a card number that matches
the card number in the charge advisory.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
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35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, 573 U.S. at 217–18 (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
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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory does not
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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 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. at 191 (citing
Benson and Flook); see also, 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.”).
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 (internal quotation marks
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 SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
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Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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, [and] conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (a) recites “storing . . . a plurality of merchant offers in a
data store, each offer having an identifier.” Storing information constitutes a
mental process such as making note of a mental observation either in the
mind or with the aid of paper and pencil. The 2019 Guidance expressly
recognizes such mental processes as constituting patent-ineligible abstract
ideas. 2019 Guidance, 84 Fed. Reg. at 52; see also October 2019 Guidance
Update at 9 (“A claim that encompasses a human performing the step(s)
mentally with the aid of a pen and paper recites a mental process”)
(emphasis omitted). Accordingly, limitation (a) recites a patent-ineligible
abstract idea.
Limitation (c) recites “receiving . . . as part of the registration process,
the card number and the mobile phone number after storing the merchant
offers without receiving a username or password.” Receiving data
constitutes a certain method of organizing human activity. More
specifically, receiving data constitutes a method of managing interactions
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between people. The 2019 Guidance expressly recognizes this certain
method of organizing human activity as constituting a patent-ineligible
abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Receiving data also constitutes a mental process. More specifically,
receiving data constitutes making a mental observation. The 2019 Guidance
also recognizes mental processes, including observations, as constituting a
patent-ineligible abstract idea. Id.
Accordingly, limitation (c) recites a patent-ineligible abstract idea.
Limitation (d) reads as follows:
storing . . . as part of the registration process, the card number
and mobile phone number linked in relation to one another in a
consumer account in the data store after receiving the card
number and mobile phone number and without storing a
username or password for the consumer account.
For the reasons set forth in relation to limitation (a), storing data constitutes
a mental process such as making note of a mental observation either in the
mind or with the aid of paper and pencil. Accordingly, limitation (d) recites
a patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Limitation (e) recites “transmitting . . . after the registration process,
at least one of the offers . . . after and due to storing the card number and
mobile phone number in the consumer account.” Transmitting information
or data constitutes a certain method of organizing human activity. More
specifically, transmitting data constitutes a method of managing interactions
between people. The 2019 Guidance expressly recognizes this certain
method of organizing human activity as constituting a patent-ineligible
abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Transmitting data also constitutes a mental process. More
specifically, transmitting data constitutes expressing an opinion. The
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2019 Guidance also recognizes mental processes, including expressing
opinions, as constituting a patent-ineligible abstract idea. 2019 Guidance,
84 Fed. Reg. at 52.
Accordingly, limitation (e) recites a patent-ineligible abstract idea.
Limitation (f) recites “receiving . . . as part of a transaction processing
after the registration process and after transmitting the offer to the consumer
mobile phone, a charge advisory . . . , the charge advisory having a card
number and an identifier.” For the reasons discussed in relation to limitation
(c), the information-receiving step of limitation (f) also recites a patent-
ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Limitation (g) recites “comparing . . . as part of the transaction
processing, the card number in the charge advisory with card numbers of a
plurality of consumer accounts to find a selected consumer account having a
card number that matches the card number in the charge advisory.”
Comparing data constitutes a mental process, such as an evaluation or
judgment that can be performed in the human mind. The 2019 Guidance
expressly recognizes such mental processes as constituting patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52.
Accordingly, limitation (g) recites a patent-ineligible abstract idea.
Limitation (h) recites “finding . . . as part of the transaction
processing, an offer in the selected account having the identifier.” Finding
an offer within a plurality of offers constitutes a mental observation or
evaluation. For the reasons set forth in relation to limitations (c), (f), and
(g), then, limitation (h) recites a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52.
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Limitation (i) recites “applying . . . , as part of the transaction
processing, the offer found in the selected account having the identifier
against an account having a card number that matches the card number in the
charge advisory.” Applying discount offers to an account constitutes a
certain method of organizing human activity. More specifically, this step
constitutes a commercial interaction that entails advertising, marketing, or
sales activities. The 2019 Guidance expressly recognizes such certain
methods of organizing human activities as constituting patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52.
For these reasons, each of limitations (a) and (c) through (i)
reasonably can be characterized as reciting a judicial exception to patent-
eligible subject matter under step 2A, prong 1, of the 2019 Guidance.
“Adding one abstract idea . . . to another abstract idea . . . does not render the
claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017).
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
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Before addressing Appellant’s arguments, we note that the additional
elements of various of claim 1’s limitations do not add significantly more to
the abstract idea because they merely are directed to insignificant extra-
solution activity. For example, claim 1’s limitation (c) recites, in full,
“receiving, with the processor, as part of the registration process, the card
number and the mobile phone number after storing the merchant offers
without receiving a username or password.” Even if we were to consider
limitation (c) as an additional limitation under prong 2 rather than part of the
abstract idea under prong 1, this step of receiving data merely constitutes
insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Limitation (b) recites a step of “providing, with the processor, as part
of a registration process, an interface to electronically capture a mobile
phone number and a card number in relation to one another after storing the
merchant offers without capturing a username and password.” That is,
limitation (b) recites a step of providing a processor with an interface to
gather the data that subsequently is to be received by the processor in
limitation (c). Because the step of gathering data with a processor, itself,
constitutes extra-solution activity, a precursor step of providing a processor
with an interface to gather the data that subsequently is to be received also
implicitly constitutes insignificant extra-solution activity. In order for a
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processor to receive data, it necessarily must be provided with some sort of
interface or other means to receive that data.
Limitation (f) also recites a step of receiving data: “receiving, with
the processor, as part of a transaction processing after the registration
process and after transmitting the offer to the consumer mobile phone, a
charge advisory over a network interface device, the charge advisory having
a card number and an identifier.” Likewise, limitation (g) recites a data-
gathering step entailing “finding, with the processor, as part of the
transaction processing, an offer in the selected account having the
identifier.” For the reasons set forth in relation to limitation (c), even if we
consider limitations (f) and (g) as additional elements under prong 2 rather
than part of the abstract idea under prong 1, they also constitute insignificant
extra-solution activity.
Claim 1’s limitation (e) recites a step of “transmitting, with the
processor, after the registration process, at least one of the offers to a
consumer mobile phone at the mobile phone number after and due to storing
the card number and mobile phone number in the consumer account.”
Similar to the data-receiving steps, even if we consider it as an additional
element under prong 2 rather than part of the abstract idea under prong 1,
limitation (e) does not add any meaningful limitations to the abstract idea
because it merely is directed to the insignificant post-solution activity of
transmitting data. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241–42 (Fed. Cir. 2016) (holding that printing or downloading generated
menus constituted insignificant extra-solution activity).
Limitation (a) recites a step of storing data: “storing, with a
processor, a plurality of merchant offers in a data store, each offer having an
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identifier.” Storing data is merely an insignificant intermediary step
between collecting data and displaying data, both of which courts have held
constitute insignificant extra-solution activity. See, e.g., FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097–98 (Fed. Cir. 2016). As such,
even if we consider it as an additional element under prong 2 rather than part
of the abstract idea under prong 1, limitation (a) is directed to the
insignificant extra-solution activity of storing data.
Limitation (d) recites another step of storing data:
storing, with the processor, as part of the registration process, the
card number and mobile phone number linked in relation to one
another in a consumer account in the data store after receiving
the card number and mobile phone number and without storing a
username or password for the consumer account.
For the reasons set forth in relation to limitation (a), even if we
consider it as an additional element under prong 2 rather than part of the
abstract idea under prong 1, limitation (d) also is directed to the insignificant
extra-solution activity of storing data.
Appellant argues that “the claims . . . are not directed to an abstract
idea within the meaning of Alice,” because “they are directed to a specific
improvement to the way computers operate, embodied in the method of
account agnostic phone number and card linking for offers.” Appeal Br. 12
(emphasis omitted). In support, Appellant reproduces claim 1 in its entirety.
Id. at 12–14. But the recitation of the claim language does not constitute an
argument on the merits because “[a] statement [that] merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.” 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s argument, more generally, is unpersuasive because the
process of linking phone numbers and credit cards agnostic of a username or
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password entails one of the recited abstract ideas. That is, Appellant
improperly conflates the claim’s abstract idea with the additional elements.
See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”)
(emphasis omitted); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
Appellant similarly argues that “[t]he specification also teaches that
the method of account agnostic phone number and card linking for offers
functions differently than conventional database structures.” Appeal Br. 15
(emphasis omitted). This argument is unpersuasive because “[t]he ‘novelty’
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89. A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent ineligible. Mayo, 566 U.S. at 90; see also Flook,
437 U.S. at 594–95 (holding claims to “a new and presumably better method
for calculating alarm limit values,” of undisputed usefulness, to be directed
to patent-ineligible subject matter); Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.”).
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Appellant argues that in concluding “that the claims are directed to the
abstract idea of ‘performing transactions between merchants and customers,
with or without discounts given by merchants to customers,’” the Examiner
characterizes the claims at too high a level of abstraction. Appeal Br. 14
(boldface omitted). Appellant asserts that “describing the claims at such a
high level of abstraction and untethered from the language of the claims all
but ensures that the exceptions to § 101 swallow the rule.” Id. (citations
omitted).
This argument is unpersuasive. The level of abstraction at which the
Examiner describes the invention does not change the accuracy of the
Examiner’s determination. Apple, 842 F.3d at 1240 (“An abstract idea can
generally be described at different levels of abstraction.”).
Moreover, Appellant does not dispute that the claimed abstract idea
can be carried out on a general-purpose computer. Appeal Br. 16
(“Appellant is not persuaded that the invention’s ability to run on a general-
purpose computer dooms the claims.”). As such, the recited “processor”
reads on a generic computer component, and claim 1 amounts to mere
instructions to implement the abstract idea on a computer. See Alice, 573
U.S. at 226 (determining that the claim limitations “data processing system,”
“communications controller,” and “data storage unit” were generic computer
components that amounted to mere instructions to implement the abstract
idea on a computer); October 2019 Guidance Update at 11–12 (recitation of
generic computer limitations for implementing the abstract idea “would not
be sufficient to demonstrate integration of a judicial exception into a
practical application”). With respect to the processor interface of limitation
(b) and the network interface device of limitation (f), “[t]hat a computer
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receives and sends the information over a network—with no further
specification—is not even arguably inventive.” buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor has Appellant
persuasively demonstrated that claim 1 is directed to a particular machine or
transformation or adds any other meaningful limitations for the purposes of
the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e). Accordingly,
Appellant has not persuaded us that claim 1 integrates the recited abstract
ideas into a practical application within the meaning of the 2019 Guidance.
See 2019 Guidance, 84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
Appellant does not present any arguments as to whether the additional
elements of claim 1 beyond the abstract idea amount to more than well-
understood, routine, and conventional activity in the field:
Because the claims are not directed to an abstract idea under step
one of the Alice analysis, we do not need to proceed to step two
of that analysis. . . . Appellant submits it is clear for the reasons
stated that the claims are not directed to an abstract idea, and so
Appellant will stop at step one. Appellant submits that the claims
are patent-eligible.
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Appeal Br. 18. And as noted above, Appellant does not argue that the
additional elements—the claimed processor, the processor interface, the
network interface device—are anything other than generic. E.g., id. at 16.
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification confirms that the invention
is directed to an abstract idea that is made more efficient with generic
computer components:
Consumers have traditionally used cut-out coupons that can be
used to obtain discounts, or punch cards that can be used to
accumulate points towards a reward. Similar programs have
made their way into e-commerce and in particular into mobile
phones that are carried by consumers. A consumer mobile phone
may for example download a coupon and have it scanned or
otherwise redeemed at the point-of-sale. The systems that are in
place to allow both merchants and consumers to sign up for such
programs are usually cumbersome, resulting in fewer members
to such a program than what a manager of such a program would
want.
Spec. ¶ 4.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
SECTION 101 CONCLUSIONS:
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to an exception to patent-eligible subject
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matter without reciting significantly more. We, likewise, sustain the
section 101 rejection of claims 2–20, which Appellant does not argue
separately. Appeal Br. 22.

THE PRIOR-ART REJECTION
Determinations and Contentions
In rejecting independent claim 1 as anticipated under 35 U.S.C.
§ 102(b), the Examiner finds Wentker discloses all of the claim limitations.
Non-Final Act. 5–10. Of particular relevance, the Examiner finds, inter alia,
Wentker discloses providing an interface as part of the registration process,
as recited in limitation (b) of claim 1. Id. at 6–7 (citing Wentker ¶¶ 31, 94).
The Examiner also finds that Wentker discloses receiving and storing a card
number and mobile phone number without receiving or storing a username
or password, as part of the registration process, as recited in limitations (c)
and (d). Id.
In the Examiner’s Answer, the Examiner further clarifies the
reasoning underlying the findings, explaining,
“Registration process” is not explicitly defined within the
Applicant’s specification and therefore, the broadest reasonable
interpretation of “registration process” is a consumer making
changes/edits or adding information to their account. According
to ¶ [0094] of the Wentker reference, the consumer is setting up
or registering the “proximity payment feature” to include no
password. Therefore, it is clear that the Wentker reference
discloses a registration process that does not capture/receive/
store a username and password.
Ans. 8.
Appellant argues Wentker fails to teach claim 1 element (b), asserting
Wentker’s Figure 15 element 402 “clearly shows that a password is
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selected.” Appeal Br. 22–23. Appellant further argues Wentker ¶ 94 fails to
teach claim 1 elements (b)–(d) because this teaching “relates to a payment
and it does not relate to registration.” Id. at 22–24. That is, Appellant does
not dispute that Wentker includes functionality for letting the user adjust the
need for a password setting after the initial enrollment, but argues that such
post-enrollment adjustments of settings are not part of the registration
process.
Analysis
We, therefore, must interpret the meaning of the term “a registration
process,” as recited in claim 1. More specifically, we interpret whether “a
registration process,” as claimed, is limited to the initial act of account sign-
up or enrollment, as we understand Appellant to be arguing, or whether “a
registration process” additionally may include the further adjustments of
settings that take place after the initial enrollment, but before engaging in
transactions, such as adjusting the password setting, as the Examiner
interprets the term.
Appellant’s Specification does not expressly define “a registration
process.” See generally Spec. Appellant, instead, merely describes a
registration process as follows:
a service provider enters a [primary account number (PAN)] 300
and a [mobile station international subscriber directory number
(MSISDN)] 222 into the interface 208. The consumer account
setup module 212 receives the PAN 300 as a PAN 301 and the
MSISDN 222 as a MSISDN 226. The consumer account setup
module 212 then transmits the PAN 301 and the MSISDN 226
to the consumer account setup module 32. The consumer
account setup module 32 then stores the PAN 301 as the PAN
303 and the MSISDN 226 as the MSISDN 66 within the
consumer account 28.
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Spec. ¶ 101.
Furthermore, a general-purpose dictionary defines “registration” as
“the act of registering” and provides the following alternative definitions of
the verb “register”: “1b : to enroll formally especially as a voter or student;”
and “2 : to make or adjust so as to correspond exactly.” Merriam-Webster,
https://www.merriam-webster.com/dictionary/register (emphasis added).
These definitions provide extrinsic evidence that the Examiner reasonably
construes “a registration process” to include the act of making adjustments
after an initial enrollment. Appellant provides no persuasive evidence from
the Specification or other sources as to why only the narrower interpretation
is reasonable, and we do not find any. We, therefore, agree that the
Examiner’s claim construction falls within the broadest reasonable
construction consistent with the Specification.
Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). During examination, the
claims must be interpreted as broadly as their terms reasonably allow. In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). “It is the
applicants’ burden to precisely define the invention, not the PTO’s.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant always has the
opportunity to amend the claims during prosecution, and broad interpretation
by the Examiner reduces the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Prater, 415 F.2d 1393,
1404–05 (CCPA 1969).
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For these reasons, we affirm the anticipation rejection of claim 1. We,
likewise, affirm the anticipation rejection of claims 2–4, 6–8, 10–14, 16–18,
and 20, which Appellant does not argue separately. Appeal Br. 26.
We, likewise, affirm the obviousness rejection of dependent claims 5,
9, 15, and 19. Appellant does not allege any additional deficiencies
associated with either of Dean or Wanless, but, instead, only argues these
claims are patentable based upon their dependency on claim 1 or claim 11.
Appeal Br. 26–27.

DECISION SUMMARY
In summary:

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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference Affirmed Reversed
1–20 101 Eligibility 1–20
1–4, 6–8, 10–
14, 16–18, 20
102(b) Wentker 1–4, 6–8, 10–
14, 16–18, 20

5, 15 103(a) Wentker,
Wanless
5, 15
9, 19 103(a) Wentker, Dean 9, 19
Overall
Outcome
1–20