Hirson, Ron

Patent Trials and Appeals Board

Mar 11, 2020

13177133 - (D) (P.T.A.B. Mar. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/177,133 07/06/2011 Ron Hirson BOKU-P037 5866
17169 7590 03/11/2020
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/11/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ariana@matterlightip.com
stephen@matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RON HIRSON
__________________

Appeal 2018-007503
Application 13/177,133
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, JAMES P. CALVE, and
AMEE A. SHAH, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–19 and 21. Final Act. 2; Appeal Br. 34.
Claim 20 is cancelled. Final Act. 2; Appeal Br. 41 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a New Ground of Rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Boku, Inc. as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 1 and 19 are independent with claim 1 reproduced below.
1. A method, comprising:
receiving, in a computing device that is connected to
(i) an account server of a funding source (ii) at least one user
terminal, the at least one user terminal including a mobile
phone having a source phone number, and (iii) a mobile phone
having a destination phone number, the source phone number
and an account identifier of the funding source from the user
terminal;
storing, in the computing device in response to receiving
the account identifier of the funding source, the account
identifier of the funding source in association with a source
phone number;
receiving, in the computing device after receiving and
storing the account identifier of the funding source, a request
from the user terminal including an amount to be transferred
identifying the source phone number and the destination phone
number;
identifying, by the computing device in response to the
reception of the request, the account identifier of the funding
source associated with the source phone number based on the
source phone number in the request;
communicating, by the computing device in response to
the identification of the account identifier, with the account
server of the funding source using the account identifier of the
funding source that has been identified to charge an account of
the account server of the funding source based on the account
identifier for an amount of funds based on the amount to be
transferred;
obtaining, by the computing device in response to the
communication with the account server, funds for the amount
from the funding source, in accordance with the charge;
storing, by the computing device in response to obtaining
of the funds, data representing the amount of funds that has
been obtained against the source phone number;
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storing, by the computing device in response to obtaining
of the funds, data representing the amount provided from the
source phone number to the destination phone number based on
the charge; and
transmitting, from the computing device, a message to
the mobile phone at the destination phone number, the message
indicating availability of funds for the amount.
REJECTIONS
Claims 1–19 and 21 are rejected as directed to patent-ineligible
subject matter under a judicial exception to 35 U.S.C. § 101.
Claims 1–4, 8, 9, 11, 13, 14, and 19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Hamzeh (US 2008/0133403 A1, pub. June 5,
2008).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hamzeh and Official Notice.
Claims 6, 7, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamzeh and Levchin (US 7,089,208 B1, iss. Aug. 8,
2006).
Claims 10, 12, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamzeh and Pousti (US 2007/0260556 A1, pub. Nov. 8,
2007).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hamzeh and Milberger (US 2002/0111908 A1, pub. Aug. 15, 2002).
Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamzeh, Milberger, and Chong (US 2009/0055292 A1,
pub. Feb. 26, 2009).

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ANALYSIS
Claims 1–19 and 21
Directed to Patent-Ineligible Subject Matter
Appellant argues the claims of this rejection as a group. Appeal Br.
8–22. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that claim 1 recites the abstract idea of
obtaining funds from a funding source using a phone number received as
part of a transfer request from one phone number to another phone number.
Id. at 7; Ans. 34. The Examiner determines that this concept is organizing
human activity and a fundamental economic practice. Final Act. 8.
The Examiner also determines that claim 1 does not include additional
elements that amount to significantly more than the judicial exception. Id.
The Examiner determines a computer device, mobile device, and computer-
readable storage medium are generic computer components used to perform
generic computer functions of storing, retrieving, processing, and displaying
information to implement the recited abstract ideas in a system that does not
improve computers or computer-related technology. Id. at 8–9; Ans. 34–35.
Appellant argues that the claims recite a technical solution to obtain
funds from a funding source using a phone number that is received as part of
a transfer from one phone number to another phone number as “in-funding
based on a phone number to phone number transfer.” Appeal Br. 9, 13–15.
Appellant argues that this “algorithm” operates differently than conventional
databases and is distinguishable from claims that add conventional computer
components to well-known business practices. Id. at 15–17. Appellant also
argues that the claimed in-funding is a specific type of process designed to
improve the way a computer functions. Id. at 18.
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Section 101 of the Patent Act defines patent-eligible-subject matter as:
Whoever 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 (2012). However, “[l]aws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
as an ordered combination, to determine if additional elements transform the
claim into a patent-eligible application, e.g., by providing an “inventive
concept” that ensures the patent amounts to significantly more than a patent
on the ineligible concept. Id. at 217–218.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under the Revised Guidance, to determine whether a
claim is “directed to” an abstract idea, we evaluate whether the claim recites
(1) any judicial exceptions, including certain groupings of abstract ideas
listed in the Revised Guidance (i.e., mathematical concepts, certain methods
of organizing human activities such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. at 52–55.
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Only if a claim (1) recites a judicial exception and also (2) does not
integrate that exception into a practical application, do we then consider
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 (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Id. at 56.
Do the Claims Recite Judicial Exceptions?
We agree with the Examiner that claim 1 recites an abstract idea of
organizing human activity and a fundamental economic practice. See Final
Act. 7–8. The Revised Guidance describes this concept as certain methods
of organizing human activity––fundamental economic practices, commercial
interactions between people. See Revised Guidance, 84 Fed. Reg. at 52.
Appellant’s Specification describes this idea as using mobile phones
to make financial transfers from a financial account, e.g., for online goods or
services. Spec. ¶¶ 2, 63–71, 108. As claimed, the financial transaction is an
electronic funds transfer from a payor account to a third party intermediary,
which then notifies a payee of the availability of the funds to facilitate the
funds transfer. See id. ¶¶ 384–95; Appeal Br. 15–16 (citing Spec. ¶ 384)).
Such a “method of exchanging financial obligations between two
parties using a third-party intermediary to mitigate settlement risk, without
more, recites a fundamental economic practice of intermediated settlement.”
Alice, 573 U.S. at 219–20 (intermediate settlement is an abstract idea).
The intermediary “computing device” 101 interfaces between mobile
phones 117 and servers 113 of a funding account “to confirm and/or approve
transactions and to operate on the account identified.” Spec. ¶ 64.
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The first steps of “receiving” and “storing” recite this abstract idea.
To exchange financial obligations or transfer funds, the intermediary
“computing device” obtains an identifier of the payor (source), the payor’s
account identifier, and an identifier of the payee. This occurs by
receiving, in a computing device that is connected to (i) an
account server of a funding source (ii) at least one user terminal
. . . including a mobile phone having a source phone number,
and (iii) a mobile phone having a destination phone number, the
source phone number and an account identifier of the funding
source from the user terminal.
Appeal Br. 35 (Claims App.).
The next step stores the account identifier of the funding source in
association with the payor’s (source’s) phone number. Id.
These steps simply organize the human activity of an electronic funds
transfer in a financial transaction to transfer funds, which is an abstract idea.
The use of a mobile phone number to identify the payor (source) and
the payee (destination) is another aspect of the abstract idea discussed above.
The phone numbers are used to identify each party.
Appellant’s characterization of the “invention” as a mobile phone-to-
mobile phone financial transfer or “in-funding” is misleading because there
is no financial transfer of value or funds from a mobile phone device of one
party to a mobile phone device of another party. In other words, the phones
do not contain electronic purses or accounts to dispense or receive funds.
Instead, the claim language makes clear that payor (source) funds are
taken from an account server of a funding source of the payor. The funding
source of the payor is an account server of a financial institution such as a
bank, credit union, credit card company, etc. Spec. ¶ 62. The mobile phone
number is simply a payor’s identifier number linked to the funding account.
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Similarly, the intermediary computing device (interface 101) delivers
the funds from its own account to an account of the payee (destination). The
phone number of the payee (destination) is simply an identifier of the payee.
The intermediary interface 101 provides the amount of funds received from
the payor to a destination account associated with the destination phone such
as a credit card account, a debit card account, a prepaid card account, a bank
account, a checking account, or a stored value account. Id. ¶ 393.
Therefore, claim 1 merely recites a financial transaction between two
parties in which funds are transferred electronically using mobile phone
numbers as identifiers of each party by linking the phone number identifiers
to respective existing financial accounts of each party.2
The mobile phone numbers are codes that identify each party. Such
identification techniques, without more, recite an abstract idea of organizing
human activity. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d
1322, 1326 (Fed. Cir. 2017) (“This method reflects standard encoding and
decoding, an abstract concept long utilized to transmit information.”); see
also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1368 (Fed. Cir. 2015) (using a profile keyed to a user identity to track
financial transactions over the Internet and telephone networks is an abstract
idea); Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882,
887 (Fed. Cir. 2019) (steps of retrieving “a persistent device identifier
associated with the network access device,” “retrieving” information
associated with the identifier, “analyzing” the information, and “placing
directed media” based on the analysis recites an abstract idea).

2 Notably, claim 1 does not include the further step of the intermediary
computing device actually transferring funds to a destination account.
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The next steps of “receiving,” “identifying,” “communicating,” and
“obtaining” recite other steps of organizing the transaction activities. The
intermediary computing device receives “a request from the user terminal
[payor phone] including an amount to be transferred identifying the source
phone number and the destination phone number.” The computing device
identifies “the account identifier of the funding source associated with the
source phone number based on the source phone number in the request,”
communicates “with the account server of the funding source using the
account identifier of the funding source . . . to charge an account of the
account server of the funding source based on the account identifier for an
amount of funds based on the amount to be transferred,” and obtains “funds
for the amount from the funding source.” Appeal Br. 35 (Claims App.).
Finally, the computing device stores “data representing the amount of
funds . . . obtained” and “the amount provided from the source phone
number” and transmits “a message to the mobile phone at the destination
phone number . . . indicating availability of funds for the amount.” Id.
We determine claim 1 recites an abstract idea of certain methods of
organizing human activity as fundamental economic practices or commercial
interactions of people. Inventor Holdings LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (“The idea that a customer may pay
for items ordered from a remote seller at a third-party’s local establishment
is the type of fundamental business practice that, when implemented using
generic computer technology, is not patent-eligible under Alice.”); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1352–54 (Fed. Cir. 2014) (transaction
performance guaranty service by a safe transaction service provider for an
online commercial transaction recited a fundamental economic practice).
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Are the Claims Integrated Into a Practical Application?
We next consider whether claim 1 recites additional elements that
integrate the abstract idea into a practical application. Revised Guidance, 84
Fed. Reg. at 54 (Revised Step 2A, Prong Two).
We agree with the Examiner that claim 1 uses existing technology to
implement an abstract idea with generic computer components that perform
generic functions. Ans. 3. Claim 1 does not include additional elements that
are sufficient to amount to significantly more than the judicial exception.
The mobile device and wireless store transmitter are recited at high levels of
generality to perform generic functions of computer applications. Final Act.
3–4, 8–9. We find no improvement to databases, computer technology,
mobile phones, networks, or financial transactions recited in claim 1. At
best, the claim recites a business solution to transfer funds by associating a
mobile phone number with an existing financial account through a third-
party intermediary. The method is recited at such a high level of generality
with generic computer components performing generic functions that it fails
to integrate the abstract ideas into a practical application.
The use of computer interchange 101 as an intermediary with its own
bank account to receive funds from a funding source of the payor and pay
the funds to a destination (payee) ensures that “the financial information of
the user [payer/source] is not revealed to the merchant.” Spec. ¶¶ 56, 63,
108, 116, 147. Intermediary interchange 101 also protects the source phone
number of the payor from being disclosed to the merchant at the destination
phone number. See id. ¶ 304. Thus, it is a business solution. It protects the
payor’s financial information when the payor engages in a funds transfer or
financial transaction using existing technology.
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It is well-settled that reciting generic computer components that
perform generic computer tasks to carry out an abstract idea does not make
the abstract idea patent-eligible.
Moving to step two of the Alice framework, it is clear that the
claims contain no inventive concept. The recited elements, e.g.,
a database, a user profile (“a profile keyed to a user identity,”
’137 patent col. 10 l. 5), and a communication medium, are all
generic computer elements. Instructing one to “apply” an
abstract idea and reciting no more than generic computer
elements performing generic computer tasks does not make an
abstract idea patent-eligible. See Alice, 134 S.Ct. at 2359–60
(holding patent-ineligible claims that “amount to nothing
significantly more than an instruction to apply the abstract idea
. . . using some unspecified, generic computer” and in which
“each step does no more than require a generic computer to
perform generic computer functions”

Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1368 (Fed. Cir. 2015); buySAFE, 765 F.3d at 1354 (“The Court in Alice
made clear that a claim directed to an abstract idea does not move into
section 101 eligibility territory by ‘merely requir[ing] generic computer
implementation.’”).
Appellant’s Specification indicates that “mobile devices” may be
cellular phones or mobile phones 117. Spec. ¶¶ 54, 55. The interchange 101
computing device “is configured to communicate with the mobile phones
through the different controllers to provide security and convenience for
online transactions.” Id. ¶¶ 54, 58. The payor source “accounts are hosted
on the account servers (125) of financial institutions, such as banks, credit
unions, credit card companies, etc.” Id. ¶ 62.
Therefore, not only does claim 1 recite these elements generically, but
the Specification also describes them in similar terms.
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Essentially, Appellant argues that the abstract idea recited in claim 1,
namely in-funding based on a phone number to phone number transfer, is a
technological improvement. See Appeal Br. 18–19. However, “[i]t 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.” BSG Tech LLC
v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Merely reciting an abstract idea in a physical environment, without
more, is insufficient to make the abstract idea patent-eligible. See SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“Here, in
contrast, the focus of the claims is not a physical-realm improvement but an
improvement in wholly abstract ideas—the selection and mathematical
analysis of information, followed by reporting or display of the results.”).
Any innovation resides in the realm of the abstract ideas recited in
claim 1 rather than in any technical improvement to a particular technology
that is integral to the claim. The computing device initiates a funds transfer
in response to a request to transfer an amount from an account associated
with a source phone number to an account associated with a destination
phone number. RecogniCorp (“Adding one abstract idea (math) to another
abstract idea (encoding and decoding) does not render the claim non-
abstract.”); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an
abstract idea.”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (claims that improved an abstract idea, but not a
computer’s performance, were held unpatentable).
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Even if we assume that the techniques claimed are “[g]roundbreaking,
innovative, or even brilliant,” that is not enough for eligibility. Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013);
accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014).
Nor is it enough that a claimed abstract technique is novel and nonobvious
over prior art. SAP Am., 898 F.3d at 1162.
McRO and BASCOM, cited in the Appeal Brief, support the foregoing
analysis and illustrate why claim 1 is not patent-eligible. See Appeal Br. 19–
22. In McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016), the claims recited a specific improvement in the field of
computer animation, and, therefore, were not directed to an abstract idea.
The process used a combined order of specific rules that render information
into a specific format used and applied to create a desired result––a sequence
of synchronized, animated characters. McRO, 873 F.3d at 1314–15. The
claims recited a process of automated lip-synchronization of 3-D characters
resulting from a specific order of rules as sub-sequences of phonemes,
timing, and weight of visual expression at a particular timing by a morph
weight set. Id. at 1315; see SAP Am., 898 F.3d at 1167 (“The claims in
McRO were directed to the creation of something physical—namely, the
display of ‘lip synchronization and facial expressions’ of animated
characters on screens for viewing by human eyes.”).
Here, receiving, storing, and communicating financial transaction data
is not inventive. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (using off-the-shelf, conventional computer, network,
and display technology to gather, send, and present desired information is
not an inventive concept); see Revised Guidance, 84 Fed. Reg. at 55 n.31.
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The court in BASCOM found an inventive concept in an improved
filtering tool provided at a central location, remote from end-users, and also
customizable with filtering features specific to each end user. This tool thus
provided the benefits of a dual filter on an end user’s local computer and on
an ISP server. BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016).
Here, claim 1 implements the abstract ideas on generic computers,
interfaces, and networks used as tools without improving their functionality.
Selecting a financial account by matching a phone number to the associated
account is an abstract idea involving methods of organizing human activity
discussed above.
For the foregoing reasons, we determine that claim 1 does not
integrate the abstract idea identified in Step 2A Prong One above into a
practical application.
Do the Claims Include an Inventive Concept?
We next consider whether claim 1 recites any elements, individually,
or as an ordered combination, that provide an inventive concept. Alice, 573
U.S. at 217–18. “The second step of the Alice test is satisfied when the
claim limitations involve more than performance of well-understood, routine
[and] conventional activities previously known to the industry.” Berkheimer
v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal quotations and
citation omitted); see also Revised Guidance, 84 Fed. Reg. at 56 (explaining
that the second step of the Alice analysis considers whether a claim adds a
specific limitation beyond a judicial exception that is not “well-understood,
routine, conventional” activity in the field).

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We agree with the Examiner that claim 1 recites generic components
and functions of storing, retrieving, processing, and displaying data. Ans. 6;
Elec. Power, 830 F.3d at 1353–54. The components gather and analyze
information of a specified content without inventive technology. Ans. 35.
USPTO Memorandum of April 19, 2018, ‘‘Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/ files/documents/memo-berkheimer-
20180419.PDF (Berkheimer memo) indicates that the Specification may
describe additional elements in a manner indicating that elements are
sufficiently well-known that the specification need not describe their
particulars to satisfy 35 U.S.C. § 112(a). Berkheimer memo at 3–4. This is
such a case as discussed above. See Spec. ¶¶ 12, 42–64, Figs. 1–4.
There is nothing unconventional about the “ordered combination” that
is not merely the sum of the parts. See In re TLI Commc’ns Patent Lit. v. AV
Automotive, LLC, 823 F.3d 607, 615 (Fed. Cir. 2016) (holding the “recited
physical components behave exactly as expected according to their ordinary
use,” through “steps that generically spell out what it means to ‘apply it on a
telephone network’ also cannot confer patent eligibility”); Two-Way Media
Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (“Nothing in the claims or their constructions, including the use
of ‘intermediate computers,’ requires anything other than conventional
computer and network components operating according to their ordinary
functions.”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (Sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction.); Ans. 7.
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We, therefore, determine that claim 1 does not recite any elements,
considered individually, or as an ordered combination, that provide an
inventive concept sufficient to transform the abstract idea into patent eligible
subject matter. Accordingly, we sustain the rejection of claims 1–21.
Claims 1–4, 8, 9, 11, 13, 14, and 19
Rejected as Anticipated by Hamzeh
Appellant argues the claims as a group. Appeal Br. 23–30. We select
claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Regarding claim 1,
the Examiner sets forth detailed findings explaining how Hamzeh discloses
each limitation of claim 1. Final Act. 9–13. The findings include Hamzeh’s
disclosure of payment server 306 transferring funds from payor’s account
310 to payee’s account 312 in response to messages from payor’s mobile
phone 302 and payee’s mobile phone 304. Hamzeh ¶¶ 6–8, 18–21, Fig. 3.
Appellant argues for each limitation of claim 1 that the account linked
to the phone number in Hamzeh is pre-funded, the use accounts are within or
held by the system, and there is no “account haled by a server of a funding
service.” See Appeal Br. 24–30. These arguments are not persuasive.
First, the claimed method obtains funds from an account server of a
funding source, which is an existing bank account, credit union account, or
credit card account of the payor. See Spec. ¶ 62. Thus, the claimed account
of a funding source is pre-funded. Claim 1 does not cover how the funding
source account is funded. Intermediary computer 101 also obtains funds
from this funded account (id. ¶¶ 108, 384, 391) but this feature is not argued.
Like the claimed intermediary computing device, Hamzeh obtains and
transfers funds from a payor’s account 310 to an account of a payee who is
notified of the transfer. See Hamzeh ¶¶ 6–8, 18–21, 26–30, Figs. 2, 3.
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The account held by an account server is “an account server of a
funding source” and refers to the server of a financial institution where the
payor’s account is located. See Spec. ¶ 62. Moreover, to the extent that this
argument challenges whether Hamzeh discloses an account server, Levchin,
which is applied in rejecting claims 6, 7, and 15, is evidence that financial
account servers used to transfer funds are well-known in the art. Levchin,
5:17–6:3, Fig. 1 (server 108). Indeed, Figure 3 of Hamzeh illustrates this
well-known technology as intermediary payment server 306 is connected to
payor account 310 at a financial institution. Hamzeh ¶¶ 20–22; see Ans. 32–
33 (discussing Levchin’s teaching of an account server); see also Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (Board must consider
critical background information that easily explains the knowledge and
perspective of a person of ordinary skill in the art).
Hamzeh also associates accounts with users via a mobile device ID or
telephone number in a database of payment server 306. Hamzeh ¶¶ 20–22,
26. Hamzeh tracks and stores the amount to be transferred from a payor’s
account to the account of a payee via a messaging application using data
stored in database 308 as claimed. Id. ¶¶ 22–30, Fig. 2 (step 212).
Accordingly, we sustain the rejection of claim 1 and claims 2–4, 8, 9,
11, 13, 14, and 19, which fall with claim 1.
Rejections of Claims 5–7, 10, 12, 15–18, and 21
Appellant argues that claims 5–7, 10, 12, 15–18, and 21 are allowable
for at least the same reasons as claim 1 form which they depend. Appeal Br.
31–33. Because we sustain the rejection of claim 1, this argument is not
persuasive, and we also sustain the rejection of claims 5–7, 10, 12, 15–18,
and 21.
Appeal 2018-007503
Application 13/177,133

18
NEW GROUND OF REJECTION
We enter a new ground of rejection of claim 19 as directed to non-
statutory subject matter because it recites “[a] computer-readable storage
medium storing instruction.” Appeal Br. 39 (Claims App.).
A broadest reasonable interpretation of “computer-readable medium”
encompasses transitory signals, which are non-statutory subject matter,
absent a disclaimer or an express definition in the Specification excluding
such signals and transitory matter. See Ex parte Mewherter, 107 USPQ2d
1857, 1859–60 (PTAB May 8, 2013) (precedential); In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007). We find no such disclaimer or definition in the
Specification. See Spec. ¶¶ 410–412; see also U.S. Patent & Trademark
Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such a computer
readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation ‘non-transitory’ to the claim.”); see also U.S. Patent & Trademark
Office, Evaluating Subject Matter Eligibility Under 35 USC § 101(August
2012 Update) (pp. 11–14), available at http:// www.uspto.gov/patents/
law/exam/101_training_aug2012.pdf (noting that while “non-transitory” is a
viable option for overcoming the presumption the media encompass signals
or carrier waves, merely indicating such media are “physical” or “tangible”
will not overcome such presumption); Nuijten, 500 F.3d at 1353, 1357
(physical properties of signal with tangible causes and effects are not
directed to statutory subject matter).

Appeal 2018-007503
Application 13/177,133

19
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–19, 21 101 Patent-
Eligibility
1–19, 21
19 101 Patent-
Eligibility
19
1–4, 8, 9, 11,
13, 14, 19
102(b) Hamzeh 1–4, 8, 9,
11, 13,
14, 19

5 103(a) Hamzeh,
Official
Notice
5
6, 7, 15 103(a) Hamzeh,
Levchin
6, 7, 15
10, 12, 21 103(a) Hamzeh,
Pousti
10, 12, 21
16 103(a) Hamzeh,
Milberger
16
17, 18 103(a) Hamzeh,
Milberger,
Chong
17, 18
Overall
Outcome

1–19, 21 19
This decision contains a new ground of rejection entered pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
Appeal 2018-007503
Application 13/177,133

20

(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PATENT EXAMINING PROCEDURE § 1214.01 (9th
Ed., Rev. 08.2017, Jan. 2018).
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; 37 C.F.R. § 41.50(b)