David Yoo

Patent Trials and Appeals Board

Aug 29, 2019

14012875 - (D) (P.T.A.B. Aug. 29, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/012,875 08/28/2013 David Yoo BOKU-P066C 7926
17169 7590 08/29/2019
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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 DAVID YOO
________________

Appeal 2017-011679
Application 14/012,8751
Technology Center 3600
________________

Before LINZY T. McCARTNEY, JASON J. CHUNG, and
CARL L. SILVERMAN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to a transaction network for managing electronic
transactions. Spec. ¶ 2. Claim 1 is illustrative of the invention and is
reproduced below:
1. A computer system for managing electronic
transactions,
comprising:
a server computer system including:
a processor;

1 According to Appellant, Boku, Inc. is the real party in interest. Br. 3.
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a computer-readable medium connected to the processor;
a data store connected to the processor;
a network interface device connected to the processor; and
a set of instructions on the computer-readable medium, the
set of instructions being executable by the processor and
including:
a communication and routing module that receives
a charge request over the network interface device from a
merchant terminal, the charge request including an amount
and a first consumer account identifier, wherein the first
consumer account identifier is not a Mobile Subscriber
Integrated Services Digital Network Number (MSISDN);
an authorization module extracting a MSISDN from
the data store based on the first consumer account
identifier, transmitting an authorization request over the
network interface device to a consumer device at the
MSISDN that has been determined based on the first
consumer account identifier, and receiving a response to
the authorization request over the network interface device
from the consumer device; and
a transaction processing system that processes the
amount of the charge request based on the extracted
MSISDN, wherein the amount of the charge request is
processed only if the response is an authorization response
and transmits a notification to the merchant terminal
following processing of the charge.

REJECTION AT ISSUE
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 2–7; Ans. 2–12.

ANALYSIS OF CLAIMS 1–20 REJECTED UNDER 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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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
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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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
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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 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (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.”).
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 (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. (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 PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
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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 (see 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 are 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 Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Ans. 4, 8–9; Final Act. 4. The Examiner also
determines the present claims do not amount to significantly more than an
abstract idea itself because the Examiner determines the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional previously known to the industry. Ans. 3, 5, 6, 10; Final Act.
3, 5, 9.
Appellant argues the Examiner oversimplifies the claims improperly.
Br. 8–9. Appellant argues, similar to the claims in McRO, Inc. v. Bandai
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Namco Games America Inc., 837 F.3d 1299, 1308–14 (Fed. Cir. 2016), the
present claims are directed to an improvement in computer-related
technology because the present claims implement a non-MSISDN charge
request and a MSISDN authorization and charge to retain potential
customers. Br. 11–14, 16–19 (citing Spec. ¶¶ 3, 4, 14–16, 174–178).
Appellant argues the present claims are similar to McRO in that the
improvement in the present case should not be limited to improving physical
components. Br. 16, 18–19. Appellant argues, similar to BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), the present claims recite a combination of non-conventional and non-
generic arrangement of known, conventional elements, which results in an
inventive concept. Br. 19–20.2 We disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
We reproduce claim 1, below, with emphases.
1. A computer system for managing electronic
transactions,
comprising:
a server computer system including:
a processor;
a computer-readable medium connected to the processor;
a data store connected to the processor;
a network interface device connected to the processor; and
a set of instructions on the computer-readable medium, the
set of instructions being executable by the processor and

2 Appellant’s argument pertaining to Smartgene, Inc. v. Advanced Biological
Labs., SA, No. 2013-1186 (Fed. Cir. 2014) (non-precedential) and Cyberfone
Systems, LLC v. CNN Interactive Group, Inc. 588 F.2d 998 (Fed. Cir. 2014)
(non-precedential) (Br. 20) is moot because we do not rely on these cases to
reach our Decision.
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including:
a communication and routing module that receives
a charge request over the network interface device from a
merchant terminal, the charge request including an
amount and a first consumer account identifier, wherein
the first consumer account identifier is not a Mobile
Subscriber Integrated Services Digital Network Number
(MSISDN);
an authorization module extracting a MSISDN from
the data store based on the first consumer account
identifier, transmitting an authorization request over the
network interface device to a consumer device at the
MSISDN that has been determined based on the first
consumer account identifier, and receiving a response to
the authorization request over the network interface
device from the consumer device; and
a transaction processing system that processes the
amount of the charge request based on the extracted
MSISDN, wherein the amount of the charge request is
processed only if the response is an authorization
response and transmits a notification to the merchant
terminal following processing of the charge.

The emphasized portions of claim 1,3 reproduced above, recite
commercial interactions (including sales activities). According to the
Memorandum, commercial interactions (including sales activities) fall into
the category of certain methods of organizing human activity. See
Memorandum. Moreover, those certain methods of organizing human
activity are a type of an abstract idea. See id.

3 Claim 1, reproduced above with emphasis, recites similar features as
independent claim 19. Appellant does not argue claims 2–20 separately, but
assert the § 101 rejection of those claims should be withdrawn for at least
the same reasons as argued for claim 1. Br. 6–20. We, therefore, group
claims 1–20 together and refer to those claims as the “present claims.”
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We disagree with Appellant’s argument that the Examiner
oversimplifies the present claims improperly (Br. 8–9) because the Examiner
concludes the present claims recite certain methods of organizing human
activity (Ans. 4, 8–9; Final Act. 4).
Because the present claims recite concepts commercial interactions
(including sales activities), which fall into the category of certain methods of
organizing human activity (i.e., an abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that,
similar to the claims in McRO, the present claims are directed to an
improvement in computer-related technology because the present claims
implement a non-MSISDN charge request and a MSISDN authorization and
charge to retain potential customers. Br. 11–14, 16–19 (citing Spec. ¶¶ 3, 4,
14–16, 174–178). And we disagree with Appellant’s argument that the
present claims are similar to McRO in that the improvement in the present
case should not be limited to improving physical components. Br. 16, 18–
19.
The claims in McRO are not analogous to the present claims. Unlike
the claims of McRO, the present claims are not directed to rules for lip sync
and facial expression animation, an improvement in computer technology, or
similar improvements. McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d at 1308–14.
Instead, the present claims are directed to an abstract idea as discussed
supra, in § C.1. or at best, improving an abstract idea—not a technological
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improvement. The Specification indicates the additional elements (i.e.,
“server computer system,”4 “processor,” “computer readable medium,”
“data store,” “network interface device,” “communication and routing
module,” “merchant terminal,” “authorization module,” “consumer device,”
and “transaction processing system”) recited in the present claims are merely
tools used to implement the abstract idea. See e.g., Spec. ¶¶ 5, 15–16, 92–
93.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Ans. 3, 5, 6, 10; Final Act. 3, 5, 9. The Specification supports
the Examiner’s determination in this regard because it explains that “server

4 The additional elements “server computer system,” “computer readable
medium,” “communication and routing module,” “authorization module,”
and “transaction processing system” are recited in claim 1, but not recited in
claim 19.
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computer system,” “processor,” “computer readable medium,” “data store,”
“network interface device,” “communication and routing module,”
“merchant terminal,” “authorization module,” “consumer device,” and
“transaction processing system” are generic components. See e.g., Spec.
¶¶ 5, 15–16, 92–93. Appellant’s Specification indicates these elements were
well-understood, routine, and conventional components because it describes
them at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.; USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 9, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
We disagree with Appellant’s argument that, like BASCOM, the
present claims recite a non-conventional and non-generic arrangement of
known, conventional elements, which results in an inventive concept. Br.
13–14. Instead, the present claims are directed to an abstract idea using
generic components as discussed supra, in §§ C.1. and C.2. or at best,
improving an abstract idea—not an inventive concept.
Appellant does not argue claims 2–20 separately, but asserts the § 101
rejection of those claims should be withdrawn for at least the same reasons
as argued for claim 1. Br. 6–20. Based on our review of the dependent
claims, these claims do not recite any additional features that would
transform the abstract idea embodied in independent claims 1 and 19 into an
inventive concept. Accordingly, we sustain the Examiner’s rejection of:
(1) independent claims 1 and 19; and (2) dependent claims 2–18 and 20
under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
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raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101.
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).
AFFIRMED