Kimberly Dunwoody

Patent Trials and Appeals Board

Jul 23, 2019

14225450 - (D) (P.T.A.B. Jul. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/225,450 03/26/2014 Kimberly Dunwoody 90945-903731 (015812US) 5208
20350 7590 07/23/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIMBERLY DUNWOODY
____________

Appeal 2018-003086
Application 14/225,450
Technology Center 3600
____________

Before JEAN R. HOMERE, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20, which are all the pending claims. See Br. 4–5 and Final Act. 1,
5–10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies The Western Union Company as the real party in
interest. Br. 2.
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Introduction
Appellant describes the invention as “relat[ing] to money transfers
utilizing smart phone technology.” Spec. ¶ 2.
Claims 1, 7, and 13 are independent; claims 1 and 7 are illustrative:
1. A mobile device for providing currency exchange,
the mobile device comprising:
a computer processor;
a memory device having sets of instructions stored
thereon;
a display screen; and
a camera device configured to photograph an image of
currency of a first country’s currency;
wherein the computer processor executes the sets of
instructions, which cause the computer processor to:
based on the image, determine a first amount and a
country of origin of the currency,
determine, using location services of the mobile
device, a current location of the mobile device,
based on the current location, determine a second
country’s currency, determine an exchange rate between
the first country’s currency and the second country’s
currency,
cause the exchange rate between the first country’s
currency and the second country’s currency to be
displayed [on] the display screen,
calculate a second amount in the second country’s
currency based on the first amount and the exchange rate,
and
cause, after calculation of the second amount, the
second amount to be displayed on the display screen.
7. A method of providing currency exchange, the
method comprising:
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receiving, from a camera device of a mobile device, an
image of currency of a first country’s currency;
based on the image, determining a first amount and a
country of origin of the currency;
determining, using location services of the mobile device,
a current location of the mobile device;
based on the current location, determining a second
country’s currency;
determining an exchange rate between the first country’s
currency and the second country’s currency;
causing the exchange rate between the first country’s
currency and the second country’s currency to be displayed [on]
a display screen;
calculating a second amount in the second country’s
currency based on the first amount and the exchange rate; and
causing, after calculation of the second amount, the
second amount to be displayed on the display screen.
Br. 7, 8 (Claims App’x).
Rejection
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as
ineligibly directed to a judicial exception. Final Act. 5–10.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions of reversible error. See Br. 4–5. We disagree with Appellant’s
conclusions. Instead, as consistent with our discussion below, we adopt the
Examiner’s findings and reasons as set forth in the Final Office Action from
which this appeal is taken and as set forth in the Answer. We highlight the
following for emphasis.
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§ 101 General Legal Framework and the USPTO Guidance
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, 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. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” in Diamond v.
Diehr, 450 U.S. 175, 191 (1981).
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 (internal citation
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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50–57 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look,
in step one of the Alice/Mayo analysis, 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) (“prong one”); and
(2) additional elements that integrate the judicial exception
into a practical application (“prong two”) (see MPEP
§ 2106.05(a)–(c), (e)–(h)).2
See Guidance, 84 Fed. Reg. at 52, 55–56. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds “significantly more”
under step two of the Alice/Mayo analysis, i.e., whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or simply appends well-understood,

2 All references to the MPEP are to the 9th Ed, Rev. 08.2017 (Jan. 2018).
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routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial
exception.
See Guidance, 84 Fed. Reg. at 56.
Alice/Mayo Step One, Guidance Step 2A, Prong One
(Do the Claims Recite a Patent-Ineligible Concept?)
Under the first prong of step 2A of the Guidance, we determine
whether the claims recite a patent-ineligible concept. As discussed below,
we agree with the Examiner that the claims recite an abstract idea—the
determining and displaying of exchange rates—which constitutes both a
mental process and a fundamental economic practice. See Final Act. 6–7;
see also Ans. 3 (noting Appellant does not contest the determination at step
one of Alice/Mayo).
In particular, for example, the first step of claim 7 recites “receiving
. . . an image of currency of a first country’s currency.” Under its broadest
reasonable interpretation, these limitations encompass human observation of
money (or a picture of money). As the Guidance explains, human
observation constitutes an abstract idea in the category of a mental process.
See 84 Fed. Reg. at 52 nn. 14–15. Similarly, claim 7’s second step of “based
on the image, determining a first amount and a country of origin of the
currency” recites an activity people routinely perform in their minds—i.e., a
mental process—e.g., looking at currency to identify its denomination and
where it comes from. Id. Additionally, the step of “based on the current
location, determining a second country’s currency” is a routine human
activity—people generally know where they are and what currency is in use
in the country where they are. The step of “determining an exchange rate
between the first country’s currency and the second country’s currency” is
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also a routine mental process, often performed by travelers who make such a
determination when passing by a display of currency exchange rates, e.g., at
an airport. The step of “calculating a second amount in the second country’s
currency based on the first amount and the exchange rate” is similarly an
activity that may be performed solely in the human mind.
Thus, claim 7 recites a process that may be performed mentally,
which the Guidance explains is one of the categories of ineligible abstract
ideas. See 84 Fed. Reg. at 52. Independent claims 1 and 13 recite
limitations analogous to those just discussed for claim 7 and, accordingly,
therefore also recite an abstract idea in the category of a mental process.
Further, as the Examiner alternatively determines, and we agree, exchanging
one country’s currency for another’s is a fundamental economic practice.
Final Act. 6. A fundamental economic practice is an abstract idea in the
category of certain methods of organizing human activity—for this reason
also the claims recite an abstract idea. See Guidance, 84 Fed. Reg. at 52.
Thus, because the independent claims recite a judicial exception, we
proceed to the second prong of step 2A of the Guidance, where we consider
if the claims integrate the recited exception into a practical application. See
Guidance, 84 Fed. Reg. at 54.
Alice/Mayo Step One, Guidance Step 2A, Prong Two
(Do the Claims Integrate the Abstract Idea into a Practical Application?)
To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added);
see also MPEP § 2106.05(a)–(c), (e)–(h).
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Here, independent claims 1, 7, and 13 recite “a mobile device,”
“a display screen,” “a camera device,” and “using location services of the
mobile device.” Claim 1 additionally recites “a computer processor” and
“a memory device,” and claim 13 additionally recites and “[a] non-transitory
computer-readable medium.” The following three steps from claim 7
illustrate how the claims combine these technology-related limitations
(shown in italics) with the limitations reciting the judicial exception:
receiving, from a camera device of a mobile device, an
image of currency of a first country’s currency;
determining, using location services of the mobile device,
a current location of the mobile device; and
causing the exchange rate between the first country’s
currency and the second country’s currency to be displayed
[on] a display screen.
These recitations add specificity to the claim and limit its use to
mobile devices, but none of these computer limitations serves to improve a
technology or technical field. Instead, the technological recitations
constitute routine uses of technology to automate the underlying method of
determining and displaying of exchange rates with the use of mobile
devices. Thus, they do not constitute an improvement to “the functioning of
the computer itself” or “‘any other technology or technical field.’” See
MPEP § 2106.05(a) (quoting Alice, 573 U.S. at 225). Neither do these
limitations qualify as applying the judicial exception with “a particular
machine,” because these components provide their conventional functions
and require no more than general purpose equipment. See MPEP
§ 2106.05(b); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,716–
17 (Fed. Cir. 2014); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319,
1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a
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meaningful limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be achieved more
quickly.”).
These uses of device limitations for implementing the abstract idea do
not serve to integrate the abstract idea into a practical application. The
Supreme Court has “rejected the argument that ‘implement[ing] a principle
in some specific fashion’ will ‘automatically fal[l] within the patentable
subject matter of § 101.’” Alice, 573 U.S. at 222 (quoting Flook, 437 U.S. at
593). The claims do not effect a particular transformation of the recited
articles, which are simply used for their ordinary purposes, or that it adds
any other meaningful (technological) limitations, i.e., limitations beyond
simply “linking the use” of the abstract idea to generic technology. See
MPEP § 2106.05 (c), (e)–(f); see also id. at (g)–(h) (use of well-known
limitations beyond the judicially excepted matter constitutes “insignificant
extra-solution activity” (g) and claim limitations “merely indicating a field
of use or technological environment in which to apply a judicial exception
do not amount to significantly more” (h)).
Accordingly, because the recited judicial exception is not integrated
into a practical application, the Examiner did not err in determining claim 1
is directed to an abstract idea. Thus, we proceed to step two of the Alice/
Mayo analysis (step 2B of the Guidance).
Alice/Mayo Step Two; Guidance Step 2B
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that, individually or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
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U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79). As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if the independent claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field; or whether, in
addition to the recited judicial exception, they recite only well-understood,
routine, conventional activities at a high level of generality. Id.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are beyond what was well-understood,
routine, and conventional. The Examiner finds, and we agree, that beyond
the limitations for the judicial exception, the technological limitations
recited in the independent claims constitute the use of technology that was
well known to those of ordinary skill prior to the invention. Final Act. 8–9;
see also Ans. 3–7. The disclosure in Appellant’s Specification of the
claimed technological features is at a generic level. See, e.g., Spec. ¶¶ 5,
27–29 (cited at Ans. 5). There is no discussion of any special functionality
or considerations for a technological aspect of any technological component
recited in the independent claims.
Appellant contends the independent claims recite significantly more
because they “recite complex interactions of multiple systems (i.e., mobile
devices, processors, location services, etc.).” Br. 4. We disagree. Appellant
does not explain (nor do we discern) what the “complex interactions” are.
Attorney arguments and conclusory statements that are unsupported by
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factual evidence are entitled to little probative value. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997). We agree with the Examiner that the
recited uses of processors, location services, etc., are routine uses of such
technology. Final Act. 8–9. For example, use of a processor for “analyzing
images, determining currency types from images, accessing location service
information,” etc. (Br. 4) are entirely routine, and, as discussed above
Alice/Mayo step one analysis, the functionality of the analyzing, determining
currency types, and determining location are part of the recited abstract idea.
Appellant contends the claims provide “greater security and
convenience.” Br. 4. Appellant does not explain (nor do we discern from
the Specification and claims) how or why the claims increase security.
Geisler, 116 F.3d at 1470. As for increased convenience from the claimed
invention, while we do not disagree on that point, it does not negate the
determination that using well-understood, routine or conventional
technology to facilitate or automate currency exchange does not constitute
significantly more than the abstract idea. See, e.g., Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1277–78 (Fed. Cir.
2012) (determining that automated performance of otherwise manual or
mental operations does not convert a claim directed to an abstract idea into
eligible subject matter).
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Appellant further contends “claims 2,[3] 12, and 18[4] recite particular
non-generic machines such as specifically configured processors and mobile
devices which are each particularly and specially configured in a certain
manner.” Br. 4–5 (citing Ex parte Ravenel, Appeal No. 2016-003604
(PTAB Apr. 1, 2016) for the proposition that “[t]herefore, there [sic]
machines are not generic, as they have been configured for a special
purpose”). This argument is unpersuasive. These dependent claims simply
recite the use of known location-based service and smartphone technology
that existed prior to the 2010 priority date of Appellant’s Specification. See,
e.g., U.S. Patent Nos. 6,816,711 B2 and 7,966,578 B2.
Finally, Appellant contends the claims must recite limitations that are
not well-understood, routine and conventional because there is no prior art
rejection under 35 U.S.C. §§ 102 and 103. Br. 5. We disagree. “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.” Diehr,
450 U.S. at 188–89. “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.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). Thus, merely because the Examiner has not

3 Claim 2 recites “[t]he mobile device for providing currency exchange as in
claim 1, further comprising, based on the location of the mobile device,
determining currency exchange provider locations.” Br. 7 (Claims App’x).
4 Claims 12 and 18 depend, respectively, from independent claims 7 and 13,
and add the limitation “wherein the mobile device comprises a Smartphone.”
Br. 9, 10 (Claims App’x).
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presented a rejection under 35 U.S.C. §§ 102 and 103 does not overcome a
35 U.S.C. § 101 rejection. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” See Alice, 573 U.S. at 217–18 (citation
omitted). Moreover, if the reason for a lack of prior art rejection stems from
the novelty of the claimed abstract idea itself, then such novelty is not
persuasive of subject matter eligibility of the claims. “[A] claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
Conclusion
For the reasons discussed supra, we are unpersuaded of reversible
error in the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101.

DECISION
We affirm the rejection of claims 1–20 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED