Edward Marshall

Patent Trials and Appeals Board

Nov 23, 2020

2020003759 (P.T.A.B. Nov. 23, 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.
14/505,759 10/03/2014 Edward J. Marshall EJM01 1884
87457 7590 11/23/2020
Edward J. Marshall, Attorney at Law
PO Box 127
Alto, TX 75925
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
edmarshall@marshalliplaw.com
tracymarshall@marshalliplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD J. MARSHALL

Appeal 2020-003759
Application 14/505,759
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 8, 15, 22–26, 31, and 32 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Pursuant
to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to
reject the claims. 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 Edward J.
Marshall. Appeal Br. 2.
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STATEMENT OF THE CASE
The Examiner rejected claims 8, 15, 22–26, 31, and 32 under 35
U.S.C. § 101 in the Final Office Action “because the claims are directed to
non-statutory subject matter[, and specifically,] because the claims as a
whole, considering all claim elements both individually and in combination,
do not amount to significantly more than an abstract idea.” Final Act. 3.
Claim 8 is representative and reproduced below (with bracketed
numbering added to the claim to reference the recited limitations):
8. A device configured to validate payment requests associated
with a payment account of a user, the device comprising:
a network interface coupled to a wide area network, the
network interface configured to:
[1] receive user check-in information transmitted from a
user mobile device, the user check-in information including
[1a] a current location of the user and [1b] a first merchant
identifier identifying a merchant;
[2] receiving, from a merchant system, an indication that
approval has been requested for a payment transaction
associated with the payment account of the user, wherein the
indication that approval has been requested includes [2a] a
location associated with the payment transaction, and [2b] a
second merchant identifier;
a processor and associated memory configured to:
[3] make a determination regarding [3a] whether the
location associated with the payment transaction matches the
current location of the user, and [3b] whether the first merchant
identifier is associated with the same merchant as the second
merchant identifier;
[4] in response to the determination indicating [4a] a
match between the location associated with the payment
transaction and the current location of the user, and [4b] a
match between the first and second merchant identifiers,
transmitting a payment transaction approval message to the
merchant system, subject to other automated payment approval
requirements associated with the payment account; and
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[5] in response to the determination indicating no-match
between [5a] at least one of the location associated with the
payment transaction and the current location of the user, or [5b]
the first and second merchant identifiers, transmitting a
transaction declined message to the merchant system, pending
second level authentication, even if the other automated
payment approval requirements associated with the payment
account are satisfied.

CLAIMS
There are two independent claims on appeal, claims 8 and 15. We
select claim 8 as representative and describe the steps in the claim below.
Claim 8 is directed to a device configured to perform a method to
validate payment requests. The device comprises a network interface
coupled to network, and a processor and associated memory which are
configured to perform a method. The device validates payment requests
associated with the payment account of a user. The user can be a customer of
a merchant who seeks to buy an item from the merchant. The claim involves
validating a payment transaction by determining that the customer (“user”)
is at the same location where the customer wants to make the payment
transaction, and, that a “merchant identifier” supplied by the customer and
merchant match. The claim does not describe what entity is validating the
payment transaction, but as explained below, it would be reasonably
understood in the context of the Specification to be, for example, bank or
credit/debit card issuer. Spec. ¶ 14.
In the first step [1] of the claim, the customer checks-in. The claim
does not identify the check-in entity, but the Specification states that the
check-in can be “a function or feature of a bank’s website mobile
application, or a feature of a check-in or pre-verification service.” Spec. ¶ 9.
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The check-in has [1a] the customer’s current location, and [1b] a first
merchant identifier. The Specification explains that the merchant identifier
can be information about the location and store of the merchant. Spec. ¶¶ 14,
15. The customer is therefore, in one embodiment covered by the claim,
checking-in to identify his location and the location of the store where he
seeks to make a payment transaction with the merchant, such as paying for
an item being sold by the merchant.
The second step [2] involves the merchant making a request to
approve the payment transaction from the customer. The purchase can be
made by the customer with a credit or debit card (Spec. ¶ 9), although this is
not explicitly recited in the claim. The merchant is therefore requesting that
the debit or credit card company, or bank, etc., approve the payment
transaction for the customer using the customer’s card to make a purchase
with the merchant. The request to the credit/debit card company, bank, etc.,
involves receiving information from the merchant system which parallels the
information in step [1], namely, [2a] the location where the customer is
requesting that the payment transaction be approved, and [2b] a second
merchant identifier.
In step [3], it is determined whether there is a match in location ([1a]
and [2a]) and merchant identifiers ([1b] and [2b]). Steps [1] and [2] therefore
gather the information used in step [3] of the claim. If a match is identified
between the locations and merchant identifiers, a payment approval message
is sent to the merchant. Thus, when it is determined that (a) there is a match
between the location of the customer and the location where the customer
wants to make the payment transaction, and (b) a match between the location
of the store received from the customer and from the merchant, the payment
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is approved in step [4], providing an additional validation to the payment
transaction. If a match is not identified — “no-match” as recited in the claim
— the transaction is declined by the credit/debit card company or bank in
step [5].
Claim 15 is directed to a payment validation system that is configured
to perform substantially the same method recited in claim 8.

PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
it is determined that the claims are directed to an ineligible concept, then the
second step of the two-part analysis is applied in which it is asked “[w]hat
else is there in the claims before us?” Id. (alteration in original). The Court
explained that this step involves
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.”
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Alice, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566
U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Eligibility Guidance”). This guidance provides additional direction on how
to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept itself. 84 Fed. Reg. 56.
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

DISCUSSION
Claim 8 is directed to a device configured to validate payment
requests associated with a payment account of a user. A device is a
“manufacture,” one of the statutory categories of patent-eligible subject
matter under 35 U.S.C. § 101. Because the claim falls into one of the
statutory categories of patent-eligible subject matter, following the first step
of the Mayo/Alice analysis, we proceed to Step 2A, Prong One, of the
Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner determined that the steps in the claim are directed to
the concept of “‘minimizing risk and fraud detection’” which the Examiner
found is a fundamental economic practice and a method of organizing
human activity, one of the categories of abstract ideas listed in the Eligibility
Guidance. Final Act. 4–5. The Examiner also found that the steps are
analyzing information that “people go through in their minds” and therefore
are “essentially mental processes,” another category of abstract ideas. Final
Act. 8–9.
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Appellant contends that the Examiner mischaracterized the claim as
“‘directed to the abstract idea of minimizing risk and fraud detection.’”
Appeal Br. 14. Appellant states that the claims are “directed to an improved
payment validation system (or device) that solves a technical problem with
conventional payment systems in a technical manner” which is not an
abstract idea. Id. Appellant also argues that the claim does not recite one of
the judicial exceptions to patent eligibility. Appellant states that the
Examiner has not provided a reason or explanation as to why the claims are
one of the examples described in the Eligibility Guidance of a method of
organizing human activity. Appeal Br. 16.
The Examiner did not mischaracterize the claim as minimizing risk
and fraud detection. The Specification explains that the invention is a system
“used for preventing fraudulent use of payment instruments.” Spec. ¶ 3. See
also Spec. ¶ 1 (“This invention relates generally to preventing fraudulent
credit and debit card purchases, and more particularly to checking in at a
merchant’s location to pre-validate purchases made at that location.”). The
Specification explains that the claimed method “prevent[s] fraudulently
obtained payment card or account information from being used to make a
purchase” by determining matches between the user and merchant locations,
and the merchant identifiers received from the user and merchant (step [3] of
claim 8). Spec. ¶ 9. See also Spec. ¶¶ 1, 10. Once the matches are
determined, the claim “transmit[s] a payment transaction approval message
to the merchant system” (step [4] of claim 8). The claim therefore minimizes
the risk of a fraudulent payment transaction by using the location and
merchant identifier information. The Specification gives an example of a
payment transaction as a transaction that takes place at a “point of sale”
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system at a merchant. Spec. ¶¶ 5, 26. The claim therefore involves “sales
activities” at a merchant, which is listed as an example of organizing human
activity in the Eligibility Guidance, 84 Fed. Reg. 52.
Consistently, in Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017), a method of processing a payment for
purchases of goods from a seller was determined to be a patent-ineligible
fundamental business practice. Business transactions accomplished on a
computer do not transform an abstract idea into one that is patent-eligible.
Alice, 573 U.S. at 212–13; Inventor Holdings, 876 F.3d at 139.
Consequently, we do not agree with Appellant that the Examiner erred in
characterizing the claim as reciting a method of organizing human activity.
The Examiner also found that the claim recites a mental process. The
Examiner explained in the Answer that, while the steps of the claim of
determining the user location and merchant and then determining whether
they match (steps [1]–[3] of claim 8) are performed using a network
interface, a processor, and memory, the matching between locations and
merchant identifiers could be performed in the human mind “but for the
recitation of generic computer components.” Ans. 12–13. In other words,
step [3] of the claim could be accomplished when a customer confirms by
phone or email with the bank that it is him at the merchant location desiring
to make a payment transaction, and the merchant does the same, for
example, by recognizing/confirming that the customer is at its location, and
informing the bank by phone.
Appellant argues that a human could not perform the claimed steps
because it would require “that a human being’s mind interfaces with both a
mobile device and a merchant system.” Reply Br. 4. Appellant also states
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that the Eligibility Guidance explicitly states that claims do not recite mental
process when certain limitations cannot be practically “performed in the
human mind.” Id. (citing PEG Update2 7).
Appellant has misunderstood how the abstract idea of a mental
process is applied when the steps of the claim are performed on a computer.
Specifically, the question is whether the claimed process, which is
accomplished on a computer, is automating a process that could also be
performed in the human mind. The human mind does not have to connect to
a computer, a mobile device, or network interface as asserted by Appellant.
The issue is whether a human mind could perform the steps of the claim
without using the technology recited in the claim. “Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.” Versata Development Group, Inc. v. SAP America,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). Therefore, while claim 8 may
recite steps which are accomplished using a network interface and computer
processor, the computer-implementation does not confer patent-eligibility
because the steps could still be performed by a human without the
technology (Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“Furthermore, with the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.”)). For this reason, while a network interface, a processor associated

2 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed July 3, 2020) (“PEG Update”).

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with memory, a mobile device, and a merchant system are used in the claim
to accomplish the claimed payment validation process, the location and
merchant identifier matching recited in step [3] could be accomplished in the
human mind, for example, using a phone to confirm that the user is at the
merchant’s location, and that the locations are the same. Accordingly, we are
not persuaded the Examiner erred in determining that claim 8 recites mental
processes.
Because we find that the Examiner correctly found that claim 8 recites
an abstract idea, we proceed to Step 2A, Prong Two, of the analysis.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. “A claim that integrates a judicial exception into a
practical application will apply, rely on, or use 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.” Eligibility Guidance, 84 Fed. Reg. 54. Integration into a
practical application is evaluated by identifying whether there are additional
elements individually, and in combination, which go beyond the judicial
exception. Id. at 54–55. The PEG Update further explains that “the
specification should be evaluated to determine if the disclosure provides
sufficient details such that one of ordinary skill in the art would recognize
the claimed invention as providing an improvement.” PEG Update 12.
According to Appellant, the Specification states that there is a
technical shortcoming in current payment systems. Appeal Br. 14 (citing
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Spec. ¶ 2: (“These breaches of security illustrate the shortcomings of
currently available payment and fraud prevention systems.”). Appellant
explains that the Specification describes “[o]ne of the ways to overcome the
shortcoming of current systems is to use a pre-purchase check-in procedure
to prevent anyone from making an unauthorized purchase, even if that
person has all of the information conventionally needed to make a
purchase.” Appeal Br. 14); Spec. ¶ 9 (“At least one embodiment of the
present disclosure uses a pre-purchase check-in procedure via a separate
communication path to prevent fraudulently obtained payment card or
account information from being used to make a purchase, even if the thief is
in possession of all of the information conventionally needed to make a
purchase.”). Appellant argues that the “technical improvement is using
check-in information received from a user, and merchant information
received separately from a merchant, to determine whether the location
associated with the payment transaction matches the current location of the
user.” Appeal Br. 18.
The technical improvement identified by Appellant is determining in
step [3] whether there is a match between [3a] “the location associated with
the payment transaction matches the current location of the user” and [3b]
“the first merchant identifier is associated with the same merchant as the
second merchant identifier.” If a match between both [3a] and [3b] are
found, step [4] of the claim transmits the payment approval message to the
merchant.
The receipt of the information (location, merchant identifier) used to
determine whether there is a match is recited in steps [1] and [2]. These steps
of the claim are insignificant extra-solution activity and therefore
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insufficient to integrate the abstract idea into a practical application. As
explained in the Eligibility Guidance, “a mere data gathering such as a step
of obtaining information about credit card transactions so that the
information can be analyzed in order to detect whether the transactions were
fraudulent” is insignificant extra-solution activity which is insufficient to
integrate the judicial exception into a practical application. Eligibility
Guidance, 84 Fed. Reg. 55 n.31 (citing CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)).
Step [3] of claim 8 “make[s] a determination regarding [3a] whether
the location associated with the payment transaction matches the current
location of the user, and [3b] whether the first merchant identifier is
associated with the same merchant as the second merchant identifier.” As
discussed above, the determination that the information collected from the
user and merchant matches each other could be done by phone and verbal
affirmation, for example, the user informing the credit card company
verbally that it is him at the merchant location requesting to make the
payment transaction with the merchant and the merchant confirming this by
phone and visual recognition (such as requiring an identification card to
complete the transaction). Thus, like the fraud detection of claim 3 in
CyberSource, a “simple observation” could be employed to verify that the
user is at the same location as the merchant. CyberSource, 654 F.3d at 1373.
The claim does not recite how the determination is made other than it
is done on “a processor and associated memory.” The Appeal Brief
references “paras. 0015, 0019 0024, 0025; 0029; Fig. 4, item 413)” of the
Specification as written descriptive support for this claim limitation (Appeal
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Br. 3), but none of these disclosures explain how that matching is
accomplished, such as using a specific technique or method to accomplish it.
As discussed in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1315 (Fed. Cir. 2016), the “abstract idea exception has been applied to
prevent patenting of claims that abstractly cover results where ‘it matters not
by what process or machinery the result is accomplished.’ [O’Reilly v.
Morse, 56 U.S. (15 How.) 62, 113,]; see also Mayo, 132 S.Ct. at 1301.”
McRO, 837 F.3d at 1314. McRO stated that therefore, a court must “look to
whether the claims in these patents focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, 837 F.3d at 1314.
Further, as discussed in Dropbox, Inc. v. Synchronoss Technologies,
Inc., 815 F. App’x 529, 533 (Fed. Cir. 2020):
The patent has to describe how to solve the problem in a
manner that encompasses something more than the “principle in
the abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920
F.3d 759, 769 (Fed. Cir. 2019)] (explaining that an invention
may not be patent eligible if the “claims ‘were drafted in such a
result-oriented way that they amounted to encompassing the
‘principle in the abstract’ no matter how implemented’”
(quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1343 (Fed. Cir. 2018))); see also Finjan, Inc. v. Blue Coat Sys.,
Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (“[A] result, even an
innovative result, is not itself patentable.”).
Step [3] of claim does not recite how the match determination is
made. The steps are recited in a “result-oriented way” in which the result is
described in the claim, but not how the result is accomplished. The step is
therefore the “principle in the abstract” and it has not been salvaged from
ineligibility by limiting how the determination is made. We contrast this to
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McRO where the claim recited a series of steps that “produce[d] lip
synchronization and facial expression control of said animated characters.”
McRO at 1308. McRO found that the recited steps “are limiting in that they
define morph weight sets as a function of the timing of phoneme sub-
sequences.” Id. at 1313. The court found that the “claimed process uses a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a sequence of
synchronized, animated characters.” Id. at 1315. For this reason, the claimed
process was found to be patent-eligible under 35 U.S.C. § 101. In contrast,
neither the claim nor the Specification describes how the determination in
step [3] of claim is made. The step, itself, is abstract and therefore cannot
serve as the additional element which goes beyond the judicial exception. 84
Fed. Reg. 54–55. Thus, we are not persuaded by Appellant’s argument that
the technical improvement integrates the recited abstract idea into a practical
application.

Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, which asks whether there is an inventive concept. In making this
Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
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indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56. We must also consider whether the combination
of steps performs “in an unconventional way and therefore include[s] an
‘inventive concept,’ rendering the claim eligible at Step 2B.” Id. In this part
of the analysis, we 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.” Alice, 573 U.S. at 217.
Appellant contends that the “inventive concept can be found in the
non-conventional and non-generic arrangement of known, conventional
pieces.” Appeal Br. 19. Appellant states:
[C]urrent payment systems do not verify that the user is in the
same location as the payment transaction in the same way that
the claimed invention does. Conventionally, location
verification can be performed by requiring the physical
presence of a card, by entry of a pin number, or the like. There
are no known systems that employ the claimed technique of
verifying that a user is in the same location as the merchant by
matching merchant identifiers from the user and from the
merchant.
Id.
Novelty and non-obviousness are not the test of eligibility under
Section 101. A claim can be new and unobvious and still be ineligible for a
patent because it is directed to an abstract idea without significantly more.
See Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir.
2018) (“The eligibility question is not whether anyone has ever used tabs to
organize information. That question is re-served for §§ 102 and 103”). While
Appellant’s statement about the prior art may be correct, Appellant does not
provide evidence that the steps recited in the claim are accomplished in an
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inventive, unconventional way, rather than being a product of well-
understood and routine activity. We have not been directed to anything in
the Specification that explains how the data gathering of steps [1] and [2]
and the match determination in step [3] are done. Thus, even when these
limitations are considered in combination, we have not been directed to an
inventive concept.

Claims 23 and 25
Claims 23 and 25 recite “determine that the location associated with
the payment transaction matches the current location of the user if a physical
distance between the location associated with the payment transaction
matches the current location of the user to within less than a threshold
distance.” Appellant contends that these claims are separately patentable
because “no conventional systems known to the appellant that use a distance
threshold as a factor in determining whether or not to authorize a payment
transaction” and therefore the functioning of the automated payment system
is improved. Appeal Br. 20.
The issue under Section 101 is not the novelty or obviousness of
specific limitation, but whether that limitation is abstract or integrates the
recited abstract idea into a practical application. In this case, the same defect
for claim 8 with respect to its eligibility is present in claims 23 and 25. The
threshold determination can be accomplished by the human mind, for
example, by using visual recognition that the user is actually at the merchant
site and presenting a user identification card. The claim does not explain
how the threshold determination is implemented nor even where the
determination is made and by what device. Thus, as for claim 8, the abstract
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idea embodied in the claim limitation is not rescued by a specific
implementation such that claim no longer recites the bare abstract principle.

Claims 24 and 26
Claims 24 and 26 recite, “obtain user input specifying a location
threshold granularity; and apply the location threshold granularity to
determine whether the physical distance between the location associated
with the payment transaction matches the current location.” Appellant
argues that no conventional systems use “a distance threshold granularity”
which “provides improved functioning of automated payment systems.”
Appeal Br. 21. Appellant cites the following Specification disclosure to
support their eligibility: “For example, if a user checks-in at a Discounts 4
All store, at address A, but the payment request comes from the Discounts 4
All store fourteen blocks away from the user at location B, the payment
request could be denied if the location threshold were set to ‘exact,’ but
could be approved if the location threshold were set to ‘City.’” Spec. ¶ 18.
As explained, eligibility under § 101 is not determined by compliance
with § 102 or § 103. This step of the claim could be accomplished by a
mental process if a user is at location B, such as hotel, and the hotel confirms
to the banks or credit/debit card company that the user has checked in and
therefore is at the “City” location, or alternatively or in addition, by the user
confirming by phone or email that the user is the “City” location. The claim
does not specify how the threshold granularity is accomplished and therefore
the claim recites the step as an abstract principle.

Appeal 2020-003759
Application 14/505,759

19
Claims 31 and 32
Claims 31 and 32 recite, “set a temporary check-in flag on the
payment account associated with the user, the temporary check-in flag
indicating that payment transaction requests from the merchant at the current
location are allowed.” Appellant states that the “temporary check-in flag is
significantly more than minimizing risk and fraud detection, because it
provides automated payment systems the ability to temporarily allow
payment requests that might come from a particular merchant to be
processed” which is an improvement over conventional systems. Appeal Br.
21. Appellant identifies support for the limitation in the Specification (Spec.
¶ 16), but the cited disclosure does not provide a description of how the
stated flag is implemented. The flag could be implement by making a written
note on the account and thus could be accomplished with paper and pen.
Thus, for the reasons articulated for the other claims, we do not find that the
limitations in claims 31 and 32 are stated with sufficient particularity to
confer patent eligibility on the claim.

Summary
For the foregoing reasons, we affirm the rejection of claim 8.
Independent clam 15 has the same limitations as claim 8 and falls for the
same reasons. Claims 22 was not argued separately and therefore falls with
claims 8 and 15.
Appeal 2020-003759
Application 14/505,759

20

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 15, 22–
26, 31, 32
101 Eligibility 8, 15, 22–
26, 31, 32

TIME PERIOD
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