Ex Parte Ginsberg et al

Patent Trials and Appeals Board

May 3, 2019

11830585 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/830,585 07/30/2007
31625 7590 05/07/2019
BAKER BOTTS L.L.P.
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Todd D. Ginsberg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074259.0126 3071
EXAMINER
GOYEA, OLUSEGUN
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
tracy .engberg@bakerbotts.com
juli. tran@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD D. GINSBERG
and KEITH SIBSON 1
Appeal2018-003126
Application 11/830,585
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and LISA M. GUIJT,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
rejecting claims 1, 3, 4, 7, 9-16, 18-22, 24, 27, 32, 33, 35, 36, 38, and 39.
Appeal Br. 10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify NetSpend Corporation as the real party in interest.
Appeal Br. 3.
Appeal2018-003126
Application 11/830,585
CLAIMED SUBJECT MATTER
Claims 1, 14, 19, 32, 33, 35, 36, 38, and 39 are independent. Claim 1
is reproduced below.
1. A method comprising:
receiving as input transactional data including a card
identifier, merchant information, and a transaction amount from
a point of sale;
determining, by a processor, at least one alert
corresponding to the received transactional data, wherein a
portion of the at least one alert is pre-generated and received
from a memory;
identifying a mobile unit identifier associated with the
card identifier, the mobile unit identifier associated with a
mobile unit configured to receive the at least one alert;
configuring the at least one alert for presentation to
mobile units; and
forwarding the at least one alert to the mobile unit
associated with the mobile unit identifier;
wherein the at least one alert comprises an educational
alert including information related to the transactional data; and
wherein the educational alert comprises a pre-authorized
amount different from the transaction amount and a message
containing information related to a future release of the
difference between the transaction amount and the pre-
authorized amount.
Appeal Br. 17 (Claims App.).
REJECTION
Claims 1, 3, 4, 7, 9-16, 18-22, 24, 27, 32, 33, 35, 36, 38, and 39 are
rejected as directed to patent-ineligible subject matter under a judicial
exception to 35 U.S.C. § 101.
2
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Application 11/830,585
ANALYSIS
The patent laws provide that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. However,
"this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int'!, 573 U.S. 208,216 (2014) (citation omitted).
Mayo Collaborative Services set forth a framework to distinguish
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts. Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs v. Prometheus Labs, Inc.,
566 U.S. 66, 77 (2012)). First, we determine whether the claims are directed
to a patent-ineligible concept. Id. If so, we next consider the claim elements
individually and as an ordered combination to determine whether additional
elements transform the claims into a patent-eligible application. Id. This
search for an inventive concept seeks an element or combination of elements
"sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Id. at 217-218.
Recently, the PTO published guidance for evaluating subject matter
eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 ("Revised Guidance"). Under Step One, a determination is
made whether the claims are in a statutory category of patentable subject
matter, i.e., do they recite a process, machine, manufacture, or a composition
of matter, identified in 35 U.S.C. § 101. Revised Guidance, 84 Fed. Reg. 50,
53-54; See Alice, 573 U.S. at 216; Mayo, 566 U.S. at 70.
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Application 11/830,585
Next, at Revised Step 2A, Prong One, an evaluation is made whether
a claim recites a judicial exception, i.e., an abstract idea set forth in Section I
of the Revised Guidance, a law of nature, or a natural phenomenon. Id. at
54. To determine if a claim recites an abstract idea, specific limitations that
recite an abstract idea must be identified (individually or in combination),
and a determination made whether the limitation(s) falls within one or more
of the subject matter groupings in Section I of the Revised Guidance. Id.
(III.A. Revised Step 2A). The three groupings are (1) mathematical concepts,
relationships, formulas, or calculations, (2) certain methods of organizing
human activity, fundamental economic principles and practices, commercial
interactions, managing personal behavior, relationships, or interactions and
(3) mental processes and concepts formed in the human mind. Id. at 52.
If a claim recites a judicial exception, Prong Two of Revised Step 2A
requires a determination to be made whether the claim as a whole integrates
the judicial exception into a practical application. Id. "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." Id. If a judicial exception is
integrated, the claim is patent eligible. See id. at 54--55.
If a claim does not "integrate" a recited judicial exception, the claim is
directed to the judicial exception and further analysis is required under Step
2B to determine whether the claim contains additional elements, considered
individually or in combination, that provide an inventive concept, such that
the additional elements amount to significantly more than the exception
itself. Id. at 56.
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Application 11/830,585
Step One: Does Claim 1 Fall within a Statutory Category of§ 1 OJ?
The Examiner finds that the claims are directed to methods and
systems for providing an alert to a mobile device based on received message
and/or transaction data. Non-Final Act. 3. Appellants agree with this
determination. See Appeal Br. 4--9 ( asserting that independent claims 1, 14,
32, 33, 35, and 36 recite methods and independent claims 19, 38, and 39
recite systems) (Summary of the Claimed Subject Matter). We agree with
the parties that the claims fall within statutory categories of 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
Appellants argue independent and dependent claims as separate
groups. Br. 10-15. We select claim 1 as a representative independent claim
(37 C.F.R. § 4I.37(c)(l)(iv)) and address the dependent claims separately.
The Examiner determines claim 1 recites a method for providing an
alert to a mobile device based on a received message and/or transaction data,
which is an abstract idea. Non-final Act. 3, 4, 5. The Examiner determines
that claim 1 recites the method as a series of steps of receiving, identifying,
comparing, formatting, and transmitting data to include an alert, and courts
have held steps like these to be abstract ideas. Id. at 3--4 ( citations omitted).
The Examiner's determination corresponds to the Revised Guidance's
abstract ideas of a certain method of organizing human activity as 1) sales
activity of commercial interactions and (2) fundamental economic practices
of risk mitigation. See Non-Final Act. 3-5; see Revised Guidance 52 ("(b)
Certain methods of organizing human activity-fundamental economic
principles or practices .... "). The Examiner determines this method also
involves generic steps of receiving, identifying, comparing, formatting, and
transmitting data that do not transform these abstract ideas. Id.
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Application 11/830,585
Appellants' argument that "it is unclear from the Office Action what
the Examiner contends is the abstract idea" (Appeal Br. 11) is not persuasive
because Appellants restate the Examiner's determination that claim 1 recites
the "abstract idea of 'providing an alert to a mobile device based on received
message and/or transaction data"' (Id.). We agree claim 1 recites a method
involving the abstract idea of organizing the human activity involved in a
commercial sales interaction and the fundamental economic practice of
mitigating risk by providing a credit (education) alert to a mobile device.
Claim 1 recites the human activity involved in a commercial sale as
"receiving as input transactional data including a card identifier, merchant
information, and a transaction amount from a point of sale." The step of
"determining, by a processor, at least one alert corresponding to the received
transactional data" of the sale recites a fundamental risk mitigation feature.
This feature identifies a remaining or current available balance on the card
account. Spec. 6:28-31. "Identifying a mobile unit associated with the card
identifier ... to receive the at least one alert" is part of this risk mitigation.
Claim 1 also mitigates risk by "configuring the at least one alert for
presentation to mobile units; and forwarding the at least one alert to the
mobile unit." Claim 1 further organizes the activity of the commercial sale
and mitigates risk by reciting that "the educational alert comprises a pre-
authorized amount different from the transaction amount and a message
containing information related to a future release of the difference between
the transaction amount and the pre-authorized amount." The educational
alert informs the card holder that sufficient funds are available for the sale,
and the card user may engage in transactions at a greater pre-authorized
amount without risk of exceeding the account's credit limit. Id. at 7:9-19.
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The Examiner correctly finds that these and other steps recite generic
data receiving, data comparing ("determining" and "identifying" steps), data
formatting ("configuring" step), and data transmitting ("forwarding" step) of
the human activity of a commercial sale and risk mitigation. Non-Final Act.
3. Elec. Power Grp. LLC v. Alstom SA, 830 F.3d 1350, 1353-54 (Fed. Cir.
2016). Claim 1 thus recites a method of organizing the human activity of a
commercial sales transaction and mitigating risk by providing an educational
alert to a mobile unit with a pre-authorized amount for a transaction. This
method organizes the human activity of a sales transaction and mitigates risk
by providing account information to a mobile unit for cashless consumer
transactions. Spec. 1 :9-12; 2:2-32. An "educational alert" provides up-to-
date, real-time account information to mitigate risk. Id. at 2:2-32, 3 :2-3.
We determine that claim 1 's method of providing an alert to a mobile
device based on a received message and/or transaction data to provide up-to-
date, real-time account information to the mobile device recites the abstract
idea of organizing human activity of a commercial sale and mitigating risk
( a fundamental economic practice) by obtaining updated account (credit)
information to ensure a transaction is within pre-authorized credit limits.
We agree with the Examiner that the dependent claims recite similar
aspects of these abstract ideas. Claim 9 recites receiving as input a message
from a user via the mobile unit, determining at least one alert corresponding
to the message from the user, and forwarding one or more alerts to the
mobile unit. Appeal Br. 18 (Claims App.). Claim 3 recites generic mobile
units such as a cell phone, a PDA, a pocket computer, and pager. Id. at 17.
Claim 4 recites that the alert is an activity alert that includes a transaction
amount and a balance. Id. These steps involve aspects of mitigating risk.
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Claims 10-12 recite generic features of the forwarding step. Claim 10
recites forwarding the at least one alert by sending a text message via a short
message service over a short message peer to peer infrastructure. Claim 11
recites forwarding the at least one alert by sending an electronic mail over a
simple mail transfer protocol to one of a PDA, portable computer, and
stationary computer. Claim 12 recites sending a text message via a short
message service over a simple mail transfer protocol. See id. at 18.
We agree with the Examiner that the dependent claims recite generic
features of the environment for performing these abstract ideas and involve
additional steps of receiving, processing, and transmitting data for the sales
activity and risk mitigation steps recited in claim 1. Non-Final Act. 5.
Therefore, we disagree with the argument that the Office Action fails to
address the dependent claims. Nor do Appellants explain how the elements
in the dependent claims recite more than the abstract ideas. Appeal Br. 14;
Reply Br. 6. The Examiner's findings may be less detailed than Appellants
prefer, but the Examiner correctly analyzes the dependent claims. Notably,
Appellants do not address the findings that the Examiner does make for the
dependent claims and therefore do not apprise us of Examiner error.
Step 2A, Prong Two: Is There an Integrated Practical Application?
Appellants' other arguments essentially raise the issue of whether
claim 1 recites additional elements that integrate these abstract ideas into a
practical application that makes claim 1 patent eligible. Appellants argue
that cases relied on by the Examiner to show that claim 1 is directed to an
abstract idea are distinguishable from the facts of this case and the ability to
format and send alerts to a mobile device is an improvement to alert
technology that is embodied in the claims. Appeal Br. 11-12.
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Providing an alert to a mobile unit, without more, does not integrate
the abstract ideas into a practical application. See Affinity Labs of Texas,
LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016); see also
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016) ( conveying regional content to out-of-region electronic devices is
insufficient as it lacks a particular way of performing that claimed function).
Providing content related to a financial transaction and risk does not
recite an additional element sufficient to integrate the abstract ideas into a
practical application. See Alice, 573 U.S. at 208 (holding that a method of
exchanging financial obligations between parties to mitigate the settlement
risk was an abstract idea). Similar to such a fundamental economic practice,
claim 1 provides an up-to-date account balance for a sales transaction via an
"educational alert" that mitigates the risk of a user exceeding a credit limit.
Instead of integrating the abstract ideas into a practical application in
a particular machine or manner, claim 1 recites generic components ("point
of sale," "processor" "memory," and "mobile unit") that perform generic
functions. Non-Final Act. 4--5. Claim 1 recites a generic environment for
carrying out the abstract ideas of organizing human activity in a sale and
mitigating risk by providing an alert to a mobile device with updated credit
account information. See Affinity Labs, 838 F.3d at 1269 (citing In re TL!
Communications LLC Patent Litigation, 823 F.3d 607, 611 (Fed. Cir.
2016)). Similar to the decision in Alice, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible concept," and merely implementing the abstract ideas on generic
components or limiting the ideas to a technological environment does not
integrate them into a practical application. See Alice, 573 U.S. at 223.
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Here, claim 1 merely adds generic computer components to abstract
ideas identified in Step 2A, Prong One with no meaningful integration of the
ideas into particular functionality or technology. Merely conveying data is
insufficient to integrate the abstract idea into a practical application. Non-
Final Act. 3; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354--55
(Fed. Cir. 2014) (holding that claims to a transaction performance guarantee
that creates a contractual relationship and dependent claims that narrow the
idea to particular types of relationships are insufficient while the use of a
generic computer to perform generic functions of receiving and sending
information over a network connecting the intermediary to other institutions
involved in the transaction was insufficient to integrate the concept).
In CyberSource Corporation v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011 ), the Federal Circuit held that a method of credit card fraud
detection that collected and organized data for credit card numbers and
Internet addresses to obtain data pertinent to business risks was not tied to a
particular machine sufficient to integrate it into a patent eligible application
where the Internet was merely a source of data gathering which cannot make
otherwise nonstatutory subject matter statutory. CyberSource, 654 F.3d at
1370. The steps of obtaining information about transactions, mapping credit
card numbers, and using a map to determine the validity of a transaction
were unpatentable (i.e., unintegrated) mental processes. Id. at 1371; Ans. 7.
Claim 1 is akin to a budgeting method that stores a user profile with
pre-set spending limits in a database, receives transaction summary data over
a communication medium, and determines if a transaction exceeds a pre-set
limit. Such steps lack a meaningful integration. See Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367---68 (Fed. Cir. 2015).
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The dependent claims also recite generic components that perform
generic functions, which are insufficient to integrate the abstract ideas into a
practical application or impose a meaningful limit on the judicial exception.
Nor do Appellants explain how such the generic components and functions
integrate the abstract ideas into a meaningful practical application.
The claimed method provides a pre-authorized credit amount for a
particular sales transaction. This information is delivered as an "educational
alert" and a message about the future release of the difference to reduce risk
in cashless sales or financial transactions at point of sale devices and create
upsell opportunities. Such generic risk and sales management activities by a
third party does not integrate the abstract ideas into a practical application.
See Alice, 573 U.S. at 223; CyberSource, 654 F.3d at 1371.
Implementing the abstract ideas on generic components that perform
generic functions fails to integrate the abstract ideas into practical, patent-
eligible applications. We also determine that claim 1 's additional generic
information processing steps of receiving transactional data ( collecting),
determining at least one alert and identifying a mobile unit identifier
(analysis/calculation), and configuring and forwarding at least one alert
(transmitting) do not integrate the abstract ideas into practical applications or
impose meaningful limitations on them. See Elec. Power Grp., 830 F.3d at
1353-54 (holding that claims directed to collecting information, even when
limited to particular content, without changing its character as information,
and analyzing information by steps people go through in their minds or
mathematical algorithms are not patent eligible); Cy her Source, 654 F .3d at
1370-71 (holding that steps of obtaining transaction information and
mapping card numbers are patent-ineligible mental processes).
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Nor are we persuaded by Appellants' argument that formatting and
sending an alert to a mobile device cannot be a mental process ( or, in this
context, a certain method of organizing human activity or risk mitigation),
because it is intertwined inextricably as an improvement to alert technology
embodied in the claims. Reply Br. 3--4; Appeal Br. 12. Claim 1 just recites
sending an education alert to a mobile device of a user making a cashless
transaction as a pre-authorized credit amount for that card account. "Simply
requiring computer implementation of an otherwise abstract-idea process, as
FairWaming would require of the claim, does not make the claims patent
eligible." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098
(Fed. Cir. 2016). It does not integrate the idea into a practical application.
The Specification supports this determination that claim 1 and the
dependent claims do not integrate the abstract idea of risk management by
sending pre-authorized credit card account information to a mobile device of
a user involved in a cashless card transaction into a practical application. As
discussed above, the Specification discloses the invention as providing real-
time account information to a generic mobile unit. Spec. 1:9-12, 3:3--4.
The Specification also describes alert system 100 as including a transaction
processor 102 coupled to outgoing alert server 104 with point of sale device
106 and mobile unit 108. Id. at 6:9-17. Education alerts merely provide
information such as the transaction amount, remaining or current balance on
a cashless card. Id. at 6: 19-7: 5. In claim 1, they provide a pre-authorized
amount of credit on a card account and an amount to be "released" for future
transactions, i.e., additional credit is available on the card. Id. at 7:9-19.
Merely reciting this fundamental practice of risk management in a generic
computer environment does not impose meaningful limitations on it.
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Instead, messages are sent in a generic format receivable by a generic
mobile unit. If the mobile unit is a cell phone, a text message (SMS) is sent
over a mobile carrier's simple mail transfer protocol (SMTP) gateway. Id. at
13:4--14:12. If the mobile device is a portable computer, the message may
be sent as email over SMTP. Id. We find no integration in these steps.
No other details are disclosed or claimed for the computer hardware
or software that implements the transaction alert system and pre-authorized
account alert information. The Specification thus discloses the components
as generic computer technology that is used to perform generic computing
functions. In claim 1, the transactional data is received from a point of sale.
A processor determines at least one alert corresponding to the received
transactional data and identifies a mobile unit identifier associated with the
card identifier that is sent as transactional data. These steps are similar to
the non-integrated mental process steps in CyberSource. Configuring and
forwarding the alert is specified at a high level of generality that does not
provide an integration into a practical application, e.g., one involving a
particular machine or process, beyond merely transmitting information that
has a particular content unrelated to any hardware or software improvement.
Reciting different types of mobile units as a generic cell phone, PDA,
pocket computer, and pager merely recites a particular environment that
implements the abstract ideas. Claim 4 recites different alert information
pertaining to the transaction amount and "a balance." Claim 7 recites that
the card identifier identifies a post-pay card or a prepaid card. In claim 9, a
user can input a message at the mobile unit, which sends the message so an
alert corresponding to the message can be determined. Claims 10-11 recite
generic network communications protocols such as SMS, SMPP, and SMTP.
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Based on the foregoing analysis, we find no integration of the abstract
ideas into a practical application sufficient to make the abstract ideas patent-
eligible. See Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1337-38 (Fed. Cir. 2017) (holding that claim 1 's recital of the
functions of "converting," "routing," "controlling," "monitoring," and
"accumulating records" does not describe sufficiently how to achieve these
results in a non-abstract way, and thus the claims are directed to an abstract
idea where physical components merely provide a generic environment in
which to carry out the abstract idea); see Ans. 6-9.
Step 2B: Does Claim 1 Recite an Inventive Concept
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transforms the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217-18. Appellants do not identify any inventive concept in their claims,
except to assert that the claims "specify how transactional data is received,
how the alerts are generated, how the destination for the alerts is determined,
how the alerts are formatted, and what is sent to the alert." See Appeal Br.
13-15; Reply Br. 5-6. Appellants argue that the Examiner admits that the
claims recite new and novel methods and systems for providing alerts to
mobile users because the novelty rejections have been withdrawn. Reply Br.
3. Appellants also argue that the claims cannot be performed exclusively by
the human mind. 2 Id. at 3--4. These arguments are not persuasive, however.
2 Notably, we understand the Examiner's rejection as assigning the claimed
abstract idea to the subject matter grouping of "a certain method of
organizing human activity," and not to the subject matter grouping of "a
mental process." Revised Guidance 51-52. Thus, Appellant's arguments
regarding the performance of claim limitations in the human mind are moot.
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First, generalized references to unspecified features in unspecified
dependent claims does not present effective argument for the separate
patentability of those claims. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv); In re Lovin,
652 F.3d 1349, 1356-57 (Fed. Cir. 2011) (more substantive argument is
required in an appeal brief than a mere recitation of claim elements and a
bare assertion that they establish patentability). Here, the claimed generic
components perform basic data collecting, analysis, and transmission with
no indication that these functions are inventive concepts, individually or in
combination, that "provide[] 'significantly more' than the recited judicial
exception (e.g., because the additional elements are unconventional in
combination). Revised Guidance 56.
"The '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." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); see also Mayo,
566 U.S. at 88-90 (holding that patent eligibility of an abstract idea does not
depend on its alleged novelty or non-obviousness); SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) ("No matter how
much of an advance in the finance field the claims recite, the advance lies
entirely in the realm of abstract ideas, with no plausibly alleged innovation
in the non-abstract application realm."); Two-Way Media, 874 F.3d at 1340
("Eligibility and novelty are separate inquiries."); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("But, a claim for a
new abstract idea is still an abstract idea."); Versata Develop. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (holding claims that
improved an abstract idea, but not a computer's performance unpatentable ).
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In sum, the recitation of such generic computer components in claim 1
and dependent claims also is insufficient to add an inventive concept to an
otherwise abstract idea. See TL!, 823 F.3d at 614; see also Ans. 9-11.
Furthermore, Appellants have to do more than simply restate claim
limitations and assert the claims are directed to a technological improvement
without explaining the nature of that improvement. See Voit Techs., LLC v.
Del-Ton, Inc., No. 2018-1536, 2019 WL 495163, at 3 (Fed. Cir. 2019) (non-
precedential); Move, Inc. v. Real Estate Alliance Ltd., 721 F. App'x 950, 957
(Fed. Cir. 2018) (non-precedential) (holding "[w]here '[t]he claim language
does not provide any specific showing of what is inventive about the
[limitation in question] or about the technology used to generate and process
it,' we have concluded that the claims do not satisfy Alice's second step.").
Whether its limitations are considered individually or as an ordered
combination, claim 1 lacks an inventive concept that renders claim 1 patent
eligible. Individual limitations recite steps of providing real-time account
information for a cashless sales transaction at a point of sale as generic data
processing steps. As an ordered combination, the steps lack an inventive
concept because they do not transform this method into significantly more
than the abstract ideas. Instead, they involve receiving information about a
sales transaction and sending the information about the card account and
credit limit to a mobile unit-steps that are not innovations in computer or
network technology. Arguments about preemption (Appeal Br. 14--15) are
resolved by our § 101 analysis. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Two-Way Media, 874 F.3d
1329 at 1339 (where patent claims are deemed patent ineligible, "preemption
concerns are fully addressed and made moot").
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Appellants also take issue with the Examiner's finding that claim 1
does not recite additional elements that are significantly more than the
abstract idea because the claimed components perform generic computer
functions that are well-understood, routine, and conventional activities that
merely implement the abstract with a computerized system. Appeal Br. 13;
Reply Br. 4. These arguments are not persuasive for several reasons.
The Examiner correctly finds that claim 1 recites generic computers
and components such as "a point of sale," "a processor," "a memory," and
"a mobile unit" that perform generic functions. Non-Final Act. 4; Ans. 8.
The point of sale thus receives transactional data, card identifier, merchant
information, and a transaction amount and forwards that data, presumably to
a processor. The processor processes the transactional data and determines
at least one alert corresponding to the transactional data, part of which may
be stored in the memory. The mobile unit receives the configured and
forwarded alert.
The Examiner reasons correctly that the courts have held such generic
computers and components that perform such generalized functions do not
provide an inventive concept to an abstract idea. Ans. 7-8, 10-11; see Alice,
573 U.S. at 223 ("These cases demonstrate that the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention."); TL! Commc 'ns, 823 F.3d at 614 ("It is well-
settled that mere recitation of concrete, tangible components is insufficient
to confer patent eligibility to an otherwise abstract idea. . . . We agree with
the district court that the claims' recitation of a 'telephone unit,' a 'server',
an 'image analysis unit,' and a 'control unit' fail to add an inventive concept
sufficient to bring the abstract idea into the realm of patentability.").
17
Appeal2018-003126
Application 11/830,585
The Specification confirms these findings and analysis. The alert
system 100 includes transaction processor 102, alert server 104, point of sale
device 106, and mobile unit 108 as illustrated in Figure 1 reproduced below.
i'········-------·--. :
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: y .. ~ ,: :'~ ;::.3h· ~h:.iv~ L .. u ......... Z~~~~~....---······-----~,. 'f:·,l~:~.::::..:..:~,~,: P:\:{~{::':S•:,t jj
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Figure 1 illustrates alert system 100. No other details are provided
about these components beyond that disclosed above. Nor do Appellants
argue that these components embody any innovative additional elements or
features. If these components or their functionality are unconventional or
innovative, such features are not claimed or disclosed.
The dependent claims recite similar generic components to implement
the abstract idea and its data collection, analysis, and transmission steps with
routine functionality. These include a mobile unit comprising a cell phone, a
PDA, a pocket computer, and a pager (claim 3), card identifier for a post-pay
card or a prepaid card ( claim 7), alert formats as a text message on short
message service (SMS), or email over simple mail transfer protocol (SMTP)
( claims 11 and 12). See Non-Final Act. 5.
18
Appeal2018-003126
Application 11/830,585
The ordered combination of elements implements the abstract ideas
on generic computers and other generic components performing generic
functions and data processing. Nor does the claimed method represent a
patent-eligible improvement to alert technology as Appellants assert; rather,
we agree with the Examiner that the claims recite an abstract idea that is
implemented in a conventional computing environment, which does not
provide significantly more than the recited judicial exception because these
additional elements are conventional in combination. See Appeal Br. 12,
14--15; Reply Br. 6. Appellants argue that the claims specify transactional
data being received, alerts being generated, destinations for the alerts are
determined, and the alerts are formatted and sent as an ordered combination
of elements that provides an inventive concept. Reply Br. 6. However, as
discussed above, merely combining different aspects of an abstract idea with
data processing steps is not sufficient to elevate the abstract idea to a patent
eligible application. The claimed educational alert merely conveys current
account information, e.g., a pre-authorized credit limit, to a mobile unit,
which is a certain method of organizing human activity and risk mitigation.
For the foregoing reasons, we sustain the rejection of claims 1, 3, 4, 7,
9-16, 18-22,24,27,32,33,35,36,38,and39.
DECISION
We affirm the rejection of claims 1, 3, 4, 7, 9-16, 18-22, 24, 27, 32,
33, 35, 36, 38, and 39 as directed to patent-ineligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
19