Global Payments Inc.

Patent Trials and Appeals Board

May 15, 2020

2019002652 (P.T.A.B. May. 15, 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.
14/528,592 10/30/2014 Dean A. DECRISTOFORO 052664-0273 4188
22428 7590 05/15/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEAN A. DECRISTOFORO
____________

Appeal 2019-002652
Application 14/528,592
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–11, and 13–32, which are all of
the pending claims. The Appellant’s representative appeared for Oral
Argument on May 4, 2020. 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. The Appellant identifies the real party in interest as
Global Payments Inc. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The Appellant states that their invention “provide[s] an improved way
to obtain funds for gaming activities.” Spec. ¶ 5.
Claims 1, 8, 13, 18, 27, and 29 are the independent claims. Claim 1
(Appeal Br. 45 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below (with added bracketing for reference):
1. A method for making funds available for gaming, the method
comprising:
[(a)] reading customer information of a customer from a
card at a terminal;
[(b)] allowing the customer to select a quasi-cash
transaction at the terminal and generating an order authorizing
the quasi-cash transaction when the customer selects the quasi-
cash transaction;
[(c)] retrieving the order and information for verifying an
identity of the customer at a station;
[(d)] receiving an electronic signature from the customer
at the station;
[(e)] placing the electronic signature on an image that
includes a bank account number, a transit routing number and a
place to specify who the quasi-cash transaction is being paid to,
[(f)] displaying an option to the customer on a display
included at the station that allows the customer to select, at the
customer’s option, after the identity of the customer is verified,
(1) an electronic endorsement from the customer and placement
of the electronic endorsement in an electronic image or
(2) cancelling of the quasi-cash transaction,
[(g)] wherein the display includes a customer input device
and the customer input device asks the customer to select (1) or
(2) and receives the customer's selection of (1) or (2) as input,
and
[(h)] wherein the electronic signature is stored separately
from transaction data of the quasi-cash transaction.
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THE REJECTION2
Claims 1–6, 8–11, and 13–22 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.

OPINION
35 U.S.C. § 101 Framework
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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 Court’s two-part 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.”).

2 The Examiner withdraws the rejection of claims 1–6, 8–11, and 13–32
under 35 U.S.C. § 103.
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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 waterproof 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
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. (citation omitted)
(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
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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. (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, after the Examiner’s Answer was mailed and before
the Appellant’s Reply Brief was filed, the U.S. Patent and Trademark Office
(USPTO) published revised guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter
of internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. 84 Fed. Reg. at 50.4

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51
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Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised 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, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”). Thus, the
Appellant’s arguments related to prior guidance (see, e.g., Appeal Br. 33–42
(arguing the rejection fails to satisfy guidelines’ criteria) will not be
considered.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. 54–55.
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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 Revised Guidance, 84 Fed. Reg. at 52–56.
Failure to Follow USPTO Guidelines
We first address the Appellant’s contention that “[t]he Examiner’s
Answer does not follow the updated procedures provided in the January
2019 Guidance. The rejection of the claims under 35 U.S.C. § 101 should
be reversed at least for that reason alone.” Reply Br. 3 (citing the 2019
Revised Guidance). We disagree.
As we stated above, the 2019 Revised Guidance was issued in January
2019, after the Examiner’s Answer was mailed on December 14, 2018. The
USPTO makes clear that any guidance issued “does not constitute
substantive rulemaking and does not have the force and effect of law.” 2019
Revised Guidance, 84 Fed. Reg. at 51; see also May 2016 Subject Matter
Eligibility Update, 81 Fed. Reg. 27381, 27382 (May 6, 2016). In particular,
the 2019 Revised Guidance “does not create any right or benefit, substantive
or procedural, enforceable by any party against the USPTO,” and although
USPTO personnel are “expected to follow the guidance,” failure to do so “is
not, in itself, a proper basis for either an appeal or a petition.” 84 Fed. Reg.
at 51, 81 Fed. Reg. at 27382.
Here, the Examiner applies the Supreme Court’s two-step framework,
described in Mayo and Alice, and considers Office guidelines (in effect at the
time) in that application. See Final Act. 4–9; Ans. 4–12. Specifically, the
Examiner notifies the Appellant that “the claims are directed to making
funds available for gaming,” which is an abstract idea of a certain method of
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organizing human activity of “inter/intrapersonal activities” and
“fundamental economic practices.” Final Act. 6. The Examiner further
considers the elements individually and as an ordered combination and
notifies the Appellant that “[w]hen viewed individually, or as an ordered
combination, the additional limitations do not amount to a claim as a whole
that is significantly more than the abstract idea.” Id. at 9; see also id. at 7–8
(providing reasons for this determination). Thus, the Examiner has notified
the Appellant of the reasons for the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
We also disagree with the Appellant’s contention that the Examiner
fails to “consider each claim separately based on the particular elements
recited therein” (Appeal Br. 33; see also Reply Br. 5, 8–13) and “has failed
to address the eligibility of any dependent claim, and for that reason the
rejection of each of these claims under Section 101 is improper for each of
these claims” (Appeal Br. 42; see also Reply Br. 14). There is no specific
requirement that each claim be examined individually by the Examiner in
determining that the claims are directed to an abstract idea. See Alice, 573
U.S. 208 at 217–21 (addressing the claims together). The Examiner includes
the other claims in the heading of the rejection (Final Act. 4) and addresses
all of the claims together (see id. at 5–9; see also Ans. 4–10). We note that
independent claim 8 recites a system with elements performing the same
functions as recited in claim 1. Claims 13 and 27 recite methods performing
some, but not all, of the functions recited in claim 1. Claims 27 and 29
recite systems with elements performing the same functions recited in
claimed 13 and 27, respectively. Thus, by addressing claim 1, the Examiner
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addresses every element claimed in all of the independent claims. The
Examiner further addresses the dependent claims in the Answer, determining
that they
do not impart patent eligibility to the abstract idea of the
independent claims. The dependent claims rather further narrow
the abstract idea and the narrower scope does not change the
outcome of the two part Mayo test. Narrowing the scope of the
claims is not enough to impart eligibility as it is still interpreted
as an abstract idea, a narrower abstract idea. Therefore none of
the dependent claims alone or as on ordered combination add
limitations that qualify as significantly more than the abstract
idea.
Ans. 11–12. There is no indication that the Appellant was not put on notice
of the Examiner’s rejection regarding claims 2–6, 8–11, and 13–32.
Claims 1–6, 8–11, 13–22, 27, and 29
The Appellant groups the independent claims together (see Appeal
Br. 30–35), presents the same arguments for each independent claim (see id.
at 35–42), and depends on those argument for dependent claims 2–6, 9–11,
14–17, and 19–22 (see id. at 42). We thus group these claims together and
select claim 1 as representative of this group, with claims 2–6, 8–11, 13–22,
27, and 29 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that independent claim 1 is “directed to making funds available
for gaming,” which is similar to concepts of “[a]nonymous loan shopping”
and “collecting information, analyzing it, and displaying certain results of
the collection and analysis,” i.e., “[a]n idea of itself” or a mental process,
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“[a]rbritation . . . and creating contractual relationships,” i.e., “certain
methods of organizing human activity, which are concepts relating to
inter/intrapersonal activities, such as managing relationships/transactions,
legal obligations, and sales activities,” and “mitigating settlement risk,” i.e.,
a fundamental economic practice. Final Act. 7; see also Ans. 8. When
viewed through the lens of the 2019 Revised Guidance, the Examiner’s
analysis depicts the claimed subject matter as “[c]ertain methods of
organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk)” under Prong One of Revised
Step 2A. 84 Fed. Reg. at 52.
The Examiner further determines that the elements of the claim do not
recite an improvement to technology (Ans. 8), that the “components are
recited at a high level of generality” (id. at 9), and “the claim[’]s[]
invocation of the computer merely amounts to the limiting of the use of the
abstract idea to a particular technological environment.” Final Act. 8–9.
When viewed through the lens of the 2019 Revised Guidance, Prong Two of
Revised Step 2A, the Examiner’s determinations indicate that the claim’s
additional elements do not integrate the judicial exception into a practical
application because they “merely use[] a computer as a tool to perform an
abstract idea” and “do[] no more than generally link the use of the judicial
exception to a particular technological environment or field of use.” 84 Fed.
Reg. at 52.
The Appellant contends that claim 1’s “techniques allow a negotiable
instrument to be made. See para. [0012] of the specification as filed”
(Appeal Br. 33) and characterizes the claim as “allow[ing] secure and
convenient transactions that yield a negotiable instrument (see para. [0012]
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of the specification as filed)” (Reply Br. 4). The Appellant further contends
that claim 1 “provide[s] a solution to achieve a desired result, by making
funds available for gaming in a secure manner and using specific techniques,
including identity verification and an electronic signature.” Appeal Br. 33;
see also Reply Br. 5. Applying the 2019 Revised Guidance, the Appellant
argues that claim 1 “integrate[s] a judicial exception into a practical
application” because it “includes elements that ‘impose a meaningful limit’
on any concept that might reasonably be characterized as a judicial
exception.” Reply Br. 7–8 (citing 84 Fed. Reg. at 53). For at least the
following reasons, we disagree.
Reciting a Judicial Exception
We first determine to what claim 1 is directed. The Federal Circuit
has explained that “the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claim is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, including the claim language, that
claim 1 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “A SYSTEM AND METHOD FOR
MAKING FUNDS AVAILABLE FOR GAMING.” Spec., Title (emphases
omitted). In the “BACKGROUND” section, the Specification discusses that
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“[g]aming establishments, such as casinos, typically provide customers a
number of options for obtaining funds for gaming activities.” Id. ¶ 2. A
typical option can be an automated teller machine (“ATM”) that allows a
customer to directly withdraw cash or request a cash advance by using a
credit card or ATM card and entering a personal identification number
(“PIN”). Id. The Specification lists a number of issued U.S. patents and
patent publications providing other options for providing funding. Id. ¶ 3.
The Specification discusses that these existing options have “various
disadvantages. For example, some of the arrangements may not comply
with applicable policies and/or rules of credit card companies or other
organizations involved in governing such transactions.” Id. ¶ 4. To address
these issues, the invention “provide[s] an improved way to obtain funds for
gaming activities.” Id. ¶ 5. The advantages of the invention include:
(1) “the funds received by an individual may (depending on the issuing
bank) not count against an individual’s daily ATM limit or their cash
advance limit”; (2) “certain additional charges/fees/interest (such as a higher
interest rate for cash advances) may be avoided”; and (3) “[b]ecause an
endorsement is obtained in electronic or hard copy form at the customer’s
option, the system and method complies with wire transfer money order (a
subset of quasi-cash) requirements for a signature in accordance with credit/
debit card company policies/rules.” Id. ¶ 23.
Consistent with the disclosure, claim 1 recites “[a] method for making
funds available for gaming, the method comprising:” the steps of:
(1) receiving and gathering customer information and selections, i.e.,
(a) reading customer information of a customer from a
card at a terminal;
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(b) allowing the customer to select a quasi-cash
transaction at the terminal,
(c) retrieving the order and information . . .
(d) receiving an electronic signature from the customer at
the station;
(g) wherein the display . . . receives the customer’s
selection of (1) or (2) as input;
(2) creating data based on received information, i.e.,
(b) generating an order authorizing the quasi-cash
transaction when the customer selects the quasi-cash transaction;
(3) entering or inserting data into a record, i.e.,
(e) placing the electronic signature on an image that
includes data of a bank account number, a transit routing number,
and a place to specify who the quasi-cash transaction is being
paid to;
(4) displaying data, i.e.,
(f) displaying an option to the customer on a display
included at the station,” the display of information that allows
and asks the customer to select, at the customer’s option, after
the identity of the customer is verified, (1) an electronic
endorsement from the customer and placement of the electronic
endorsement in an electronic image or (2) cancelling of the quasi-
cash transaction;
(g) wherein the display includes a customer input device
and the customer input device asks the customer to select (1) or
(2); and
(4) storing data, i.e.,
(h) wherein the electronic signature is stored separately
from transaction data of the quasi-cash transaction.
See Appeal Br. 45 (Claims App.). The limitations are recited functionally
without any implementation details, and without specifying what component
performs the functions as recited in limitations (a) through (e) and (h). We
note that although limitation (c) recites retrieving data “for verifying an
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identity of the customer at a station” and limitation (f) recites allowing the
customer to select an option “after the identity of the customer is verified,”
no step(s) or details for verifying the customer are recited.
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a method for allowing secure
and convenient payment transactions in a gaming environment.6 This is an
abstract idea of a “[c]ertain method[] of organizing human activity—
fundamental economic principles or practices (including hedging, insurance,
mitigating risk).” 2019 Revised Guidance, 84 Fed. Reg. at 52. This is
consistent with the Examiner’s and the Appellant’s characterizations.
The courts have held similar concepts to be abstract. For example,
our reviewing courts have held abstract the concepts of collecting and
analyzing information for the purpose of preventing improper access in
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016), verifying the validity of a credit card transaction over the Internet in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011), “crediting a merchant’s account as early as possible while
electronically processing a check” in Solutran, Inc. v. Elavon, Inc., 931 F.3d
1161, 1166 (Fed. Cir. 2019), cert. denied sub nom. SOLUTRAN, INC. v.
ELAVON, INC., ET AL., No. 19-1017, 2020 WL 1325880 (U.S. Mar. 23,
2020), “securely processing a credit card transaction with a payment server”
in Innovation Scis., LLC v. Amazon.com, Inc., 778 F. App'x 859, 863 (Fed.

6 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Cir. 2019), “[v]erifying financial documents to reduce transactional fraud” in
Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, No. 2019-1018, 2020
WL 1814311, at *5 (Fed. Cir. Apr. 10, 2020), and “the basic concept of
hedging, or protecting against risk” in Bilski v. Kappos, 561 U.S. 593,
611–612 (2010). As such, we disagree with the Appellant’s contentions that
the abstract idea recited in claim 1 is not one of the categories listed in the
2019 Revised Guidance. See Reply Br. 6.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] 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,” i.e., “integrates a judicial exception
into a practical application.” Here, the only additional elements recited in
claim 1 beyond the abstract idea are, as correctly identified by the Examiner,
the “terminal, quasi-cash transaction, electronic signature, image, display,
[and] electronic endorsement.” The elements of a quasi-cash transaction,
electronic signature, image, and electronic endorsement are essentially
electronic versions of standard cash, signatures, images, and endorsements.
For example, the Specification discusses that “[a] quasi-cash transaction is a
transaction where the customer is buying an item (e.g., a negotiable
instrument) that can directly be converted into cash.” Spec. ¶ 12. An image
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is a generic computer image. See id. ¶ 18. An electronic signature and
endorsement comprise handwritten signature or initials onto a signature pad
connected to a computer. See id. ¶¶ 14, 18, 23. As such, these elements are
standard financial elements of a negotiable instrument and endorsement in
the field of electronic transactions. The elements of a terminal, station,
display, and input device are described in the Specification as generic
computer components. For example, the Specification discusses that the
terminal is a kiosk terminal with a card insertion slot, a touch screen display,
and a keypad (id. ¶ 12), and is “connected to one or more servers 40 via one
or more networks” (id. ¶ 21). The station can be “a cashier station or cage”
that has “one or more personal computers”, each with a display and printer
and “connected to a signature pad 23, which has its own display.” Id. ¶ 14.
Further, the arrangement of components depicted in Figure 1, and described
in the Specification, “is only one example of one suitable arrangement and
many modifications and variations are possible.” Id. ¶ 21.
We disagree with the Appellant that the Examiner “simply
concatenates various nouns, specifically, ‘terminal, quasi-cash transaction,
electronic signature, image, display, electronic endorsement,’ and asserts
that these terms are elements that perform generic computer functions.”
Appeal Br. 31. Rather, the Examiner correctly identifies the elements
comprising the abstract idea, i.e., “the steps of reading, allowing, retrieving,
receiving, placing, and displaying” (Final Act. 6) and separately identifies
the additional elements beyond the abstract idea, i.e., “the additional
elements of: terminal, quasi-cash transaction, electronic signature, image,
display, electronic endorsement” (id. at 7), as outlined in the 2019 Revised
Guidance (see 84 Fed. Reg. at 54–55).
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We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
Here, the Appellant contends that “the claims should be found to
recite elements that achieve an improvement to another technology” in that
“the claims allow for a cardholder’s signature to be stored separately from
transaction data and for carrying out a quasi-cash transaction to allow a
patron access to the patron’s funds at a gaming establishment, as described
above (see paras. [0018] and [0023] of the specification as filed).” Reply
Br. 5 (citing 2019 Revised Guidance, 84 Fed. Reg. at 55). However, the
Appellant does not provide reasoning or evidence, and we do not see from
the claim, how storing certain data separately from other data improves the
claimed technology. See Innovation Scis. 778 F. App’x at 863 (“The fact
that communication is ‘switched’ from a website hosted on one server to a
website hosted on another server with better security does not mean the
invention is directed to ‘a specific improvement in the capabilities of
computing devices.’ Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356, 1361 (Fed. Cir. 2018).”). The Appellant argues that storing
the data separately keeps data confidential and “may be utilized in the event
that there is a chargeback or other activity requiring dispute resolution.”
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Reply Br. 4. The Appellant’s argument, put simply, is that storing the
electronic signature and transaction data separately reduces potential
fraudulent misuse of the signature while allowing authorized use. However,
reducing fraud and keeping information secure are issues that pre-date the
Internet. See, e.g., FairWarning, 839 F.3d at 1094–95. We note that the
claim does not recite a step for verifying identification. Cf. Appeal Br. 33
(arguing that the claim makes funds available in a secure manner by “using
specific techniques, including identify verification”).
Further, the solution does not comprise the computer components
operating in unconventional manners. Rather, the claim does not recite what
component stores the data or where the data are stored. The Appellant does
not contend to have improved the technical capture of an electronic signature
or the technical way of storing that data. The Appellant does not, and
cannot, claim to have invented the use of the terminal, station, display, or
input device. The “focus” of the claim is not “on the specific asserted
improvement in computer capabilities” (Enfish, 822 F.3d at 1335), but rather
on using the components as tools to implement the abstract idea in the
particular field of electronic transactions. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court
and [the Federal Circuit] have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.”). Cf. Reply
Br. 4–5 (emphasizing quasi-cash transactions and use of an electronic
signature). Any improvement in “allow[ing] a patron at an entertainment
establishment such as a casino to readily obtain funds” (Reply Br. 4) lies in
the abstract idea itself, not to any technological improvement. The location
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of storing the data does not detract from the conclusion that claim 1 is
directed to allowing secure and convenient payment transactions in a gaming
environment, which is an abstract idea. See Solutran, 931 F.3d at 1168.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that claim 1’s limitations, taken individually or as an ordered
combination, do not amount to significantly more than the judicial. See
Final Act. 7–9; Ans. 8–11. We agree.
The Appellant contends that the “tangible features” of claim 1 of the
terminal reading customer information, the interface allowing a customer to
select a quasi-cash transaction and generating an order, a station retrieving
the order and information, and a display with a customer input device in
which a customer’s electronic signature is stored separately from transaction
data “are not confined to well-understood, routine or conventional elements”
(Appeal Br. 32) because “not all computing implementations even have
quasi-cash transaction options, for example” (id. at 36, 38, 39, 40, 41, 42).
The Appellant also argues that the Examiner, in the Final Action, “does not
include a detailed analysis of actual claim language, as noted above, or
provide explicit support for conclusions of routine and conventional aspects
as prescribed by the Berkheimer memorandum dated April 19, 2018.” Id.
at 33 (citing USPTO Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
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Decision (Berkheimer v. HP, Inc.) (April 19, 2018) (“Berkheimer Memo”);
see also id. at 32, 34–42; Reply Br. 6.
To the extent the Appellant argues that claim 1 recites elements that
amount to significantly more than the abstract idea because having quasi-
cash transaction options is not well-understood, routine, or conventional
over prior art (see Appeal Br. 36, 38–42), an abstract idea does not transform
into an inventive concept just because the prior art does not disclose or
suggest it. See Mayo, 566 U.S. at 78. “Ground-breaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Indeed, “[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; see also Mayo, 566 U.S. at 91
(rejecting “the Government’s invitation to substitute §§ 102, 103, and 112
inquiries for the better established inquiry under § 101”).
The Appellant’s argument that the Examiner fails to provide adequate
support in accordance with the Berkheimer Memo is also not persuasive of
error. Alice is clear, as described above, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice,
573 U.S. at 217; see also Mayo, 566 U.S. at 72–73 (requiring that “a process
that focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an ‘inventive concept,’
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sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself”) (emphasis added). In other words,
the inventive concept under step two of the Mayo/Alice framework cannot be
the abstract idea itself: “It is clear from Mayo that the ‘inventive concept’
cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible because
the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP,
Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring)
(Berkheimer II); see also 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.”) (citation omitted).
Here, the claimed steps of reading customer information, allowing a
customer to select a quasi-cash transaction and generating an order,
retrieving the order and information, and storing a customer’s electronic
signature separately from transaction data are part of the abstract idea itself;
they are not additional elements to be considered when determining whether
claim 1 includes additional elements or a combination of elements that is
sufficient to amount to significantly more than the judicial exception.
The Examiner determines, and we agree, that the only claim elements
beyond the abstract idea are the terminal, quasi-cash transaction, electronic
signature, image, display, and electronic endorsement. See Final Act. 5;
Ans. 5–6. As discussed above, the transaction, signature, image, and
endorsement are electronic versions of standard cash, signatures, images,
and endorsements that the Specification discusses as being known. See
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supra; Spec. ¶¶ 12, 18, 19. And the Specification indisputably shows the
claimed hardware or computer elements of a terminal, station, display, and
input devices were conventional at the time of filing. See supra; Spec. ¶¶ 2,
12, 14, 15, 21. The Appellant does not provide any supported reasoning or
explanation that the functions are not well-understood, routine, and
conventional. That the transaction may be quasi-cash, i.e., “a transaction
where the customer is buying an item (e.g., a negotiable instrument) that can
directly be converted into cash” (Spec. ¶ 12), simply limits the abstract idea
to a quasi-cash environment.
The Appellant cannot reasonably maintain that there is a genuine issue
of material fact regarding whether operation of the claimed hardware or
computer elements is well-understood, routine, or conventional, where, as
here, there is nothing in the Specification to indicate that the operations
recited in claim 1 require any specialized hardware or inventive computer
components, or that the claimed invention is implemented using other than
generic hardware or computer components to perform the generic computer
functions as discussed above. Indeed, the Federal Circuit, in accordance
with Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer II, 890 F.3d at 1373 (Moore, J., concurring)
(citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and conventional database
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structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
Here, as discussed above, the elements other than the abstract idea are
the terminal, station, display, and input device, which are recited at a high
level of generality and are used in their ordinary and conventional capacities
to receive and gather data, generate data based on received data, enter data
into a record, displaying data, and store data. See Electric Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending,
monitoring, analyzing, selecting, and presenting information does not
transform the abstract process into a patent-eligible invention); Content
Extraction & Trans. LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (collecting data, recognizing data, and storing
recognized data was well-known); Solutran, 931 F. 3d at 1166–69
(electronic check processing by recording data, presenting check into a
digital format, and verifying accuracy of information stored against check
was common, and use of scanner and computer and routine data gathering
steps of receiving data were insufficient to constitute an inventive concept).
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 1 and of claims 2–6, 8–11,
13–22, 27, and 29, which fall with claim 1.
Claims 23–26, 28, and 30–32
For each of claims 23–26, 28, and 30–32, the Appellant argues that
the rejection under 35 U.S.C. § 101 is in error because the prior art does not
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disclose certain features of the claims and thus, “the Examiner has failed to
demonstrate that the above-noted features represent well-known, routine or
conventional elements.” Appeal Br. 42–43.
However, as discussed above with reference to claim 1, an abstract
idea does not transform into an inventive concept just because the prior art
does not disclose or suggest it. See Mayo, 566 U.S. at 78. Further, as also
discussed above, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer II, 890 F.3d at 1373. The Appellant merely states that the
failure of the prior art to disclose the limitations show that the Examiner fails
to demonstrate that the features are well-understood, routine, or
conventional. The Appellant does not present evidence, reasoning, or
argument that non-abstract features of the dependent claims are not well-
understood, routine, or conventional, or why the Examiner erred in
determining that these claims lack an inventive concept. See BSG Tech., 899
F.3d at 1291. The location of the terminal and station and the timing of
endorsement do not detract from the claims being directed to allowing
secure and convenient payment transactions in a gaming environment, which
is an abstract idea, and are insufficient to constitute an inventive concept.
See Solutran, 931 F.3d at 1168–69.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claims 23–26, 28, and 30–32.
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CONCLUSION
The Examiner’s decision to reject claims 1–6, 8–11, and 13–32 under
35 U.S.C. § 101 is sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 8–11,
13–32
101 Eligibility 1–6, 8–11,
13–32

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). See 37 C.F.R.
§ 1.136(a)(l)(iv).

AFFIRMED