MASTERCARD INTERNATIONAL INCORPORATEDDownload PDFPatent Trials and Appeals BoardOct 8, 20212021000690 (P.T.A.B. Oct. 8, 2021) Copy Citation 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. 15/633,935 06/27/2017 Max Alexander BELIN 0076412-000907 1761 125578 7590 10/08/2021 MASTERCARD C/O Buchanan Ingersoll & Rooney PC 1737 King Street, Suite 500 Alexandria, VA 22314-2727 EXAMINER SUBRAMANIAN, NARAYANSWAMY ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 10/08/2021 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): ADIPDOC1@BIPC.com charles.wieland@bipc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MAX ALEXANDER BELIN, DERRICK MICHAEL BRAGA, THERESA LAROSA, RICARDO PAREJA MULLER, DANIEL JASON GOODMAN, SCOTT J. PAGE, JILL BOYD BUGH, DENNIS HILL, DEEPANKAR BHAGAT, BARRY SETH KOLETSKY, and GLEN R. McMILLIN ____________ Appeal 2021-000690 Application 15/633,935 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-000690 Application 15/633,935 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED INVENTION The Specification states, “[t]he present disclosure relates to the cardless withdrawal of funds from an automated teller machine, specifically the use of unique data combinations distributed to an individual and input into an automated teller machine to accommodate for the disbursement of funds without the use of a card” (Spec. ¶ 1). Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method for cardless withdrawal from an automated teller machine, comprising: [(a)] receiving, by an input device of an automated teller machine (ATM), user input comprising at least: a first code transmitted to a computing device by a disbursing entity, a device identifier associated with the computing device, and a transaction amount; 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed August 19, 2020) and Reply Brief (“Reply Br.,” filed November 4, 2020), and the Examiner’s Answer (“Ans.,” mailed September 4, 2020), Advisory Action (“Adv. Act.,” mailed June 2, 2020), and Final Office Action (“Final Act.,” mailed February 21, 2020). Appellant identifies Mastercard International Incorporated as the real party in interest (Appeal Br. 2). Appeal 2021-000690 Application 15/633,935 3 [(b)] electronically transmitting, by a transmitting device of the ATM, at least the first code, the device identifier, and the transaction amount to a first computing system; [(c)] receiving, by a receiving device of the ATM, when the first code, the device identifier, and the transaction amount are authenticated by the first computing system, a transaction account number from the first computing system; [(d)] electronically transmitting, by the transmitting device of the ATM, a withdrawal request including at least the transaction account number and the transaction amount to an acquiring institution; [(e)] receiving, by the receiving device of the ATM, an indication from the acquiring institution that indicates approval of the withdrawal request; and [(f)] dispensing, by a dispensing module of the ATM, one or more payment instruments having a value equivalent to the transaction amount. REJECTIONS Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–9 and 11–19 are rejected under 35 U.S.C. § 103 as unpatentable over Crowell (US 2009/0078758 A1, published Mar. 26, 2009), Raja et al. (US 2016/0019537 A1, published Jan. 21, 2016) (“Raja”), and Bajaj et al. (US 2015/0199671 A1, published July 16, 2015) (“Bajaj”). Claims 10 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Crowell, Raja, Bajaj, and Official Notice. ANALYSIS Patent-Ineligible Subject Matter Appellant argues claims 1–20 as a group (Appeal Br. 4–8). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-000690 Application 15/633,935 4 Under 35 U.S.C. § 101, a claim 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 § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 Appeal 2021-000690 Application 15/633,935 5 (Jan. 7, 2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. 2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-000690 Application 15/633,935 6 If the claim is determined to be directed to a judicial exception under revised Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself. Only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. The Examiner determined here that the claim limitations, as recited in independent claim 1, when given their broadest reasonable interpretation, recite a commercial interaction, which is a method of organizing human activity and, therefore, an abstract idea (Final Act. 3). The Examiner also determined that the recited abstract idea is not integrated into a practical application; that claim 1 does not include additional elements sufficient to amount to significantly more than the abstract idea itself; and that the remaining claims, including independent claim 11 and dependent claims 2–10 and 12–20, are patent ineligible for substantially similar reasons (id. at 3–7). Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) We are not persuaded by Appellant’s arguments that the Examiner erred in determining that claim 1 is directed to an abstract idea (Appeal Br. 4–8). 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 claims is on a specific improvement in relevant technology or on a process that itself Appeal 2021-000690 Application 15/633,935 7 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 an improvement to technology and/or a technical field. The Specification is titled “METHOD AND SYSTEM FOR CARDLESS DISBURSEMENT FROM AN AUTOMATED TELLER MACHINE,” and describes, in the Background section, that although automated teller machines (“ATMs”) provide significant conveniences to card holders, existing ATM systems require the use of a payment card to perform their associated functions (Spec. ¶ 3). As a result, individuals who have a transaction account or access to funds associated with a transaction account, but have not been issued a payment card, may be unable to use the ATM to access their funds (id.). The claimed invention is ostensibly intended to address this issue by providing a system and method that enables the withdrawal of funds from an ATM without the use of a payment card (Spec. ¶¶ 4–5). Claim 1, thus, recites a method for cardless withdrawal from an ATM comprising: (1) receiving, by the ATM, user input, including at least a first code, a device identifier, and a transaction amount, i.e., “receiving, by an input device of an automated teller machine (ATM), user input comprising at least: a first code transmitted to a computing device by a disbursing entity, a device identifier associated with the computing device, and a transaction amount” (step (a)); (2) transmitting, by the ATM, the received user input to a first computing device for authentication, and receiving a transaction account number at the ATM when the user input is authenticated, i.e., Appeal 2021-000690 Application 15/633,935 8 electronically transmitting, by a transmitting device of the ATM, at least the first code, the device identifier, and the transaction amount to a first computing system; [and] receiving, by a receiving device of the ATM, when the first code, the device identifier, and the transaction amount are authenticated by the first computing system, a transaction account number from the first computing system (steps (b) and (c)); (3) “electronically transmitting, by . . . the ATM, a withdrawal request including at least the transaction account number and the transaction amount to an acquiring institution” (step (d)); and (4) upon, receiving approval of the withdrawal request from the acquiring institution, dispensing, by the ATM, payment instruments equivalent to the transaction amount, i.e., “receiving, by the receiving device of the ATM, an indication from the acquiring institution that indicates approval of the withdrawal request” and “dispensing, by a dispensing module of the ATM, one or more payment instruments having a value equivalent to the transaction amount” (steps (e) and (f)). Appellant argues that claim 1 does not embody certain methods of organizing human activity because “it does not involve interactions between humans and . . . only involves [an] interaction between a human and a machine . . . , and does not involve [a] commercial interaction” (Appeal Br. 5). Yet, by Appellant’s own admission, the claims involve dispensing a “specific type of item out of a particular type of vending machine, in this case money out of an ATM” (id.). We agree with the Examiner that an ATM is, in this context, representative of a human being, i.e., a bank teller (Ans. 3). And Appellant cannot reasonably deny that banking transactions conducted with a bank teller are commercial interactions, which are one of “[c]ertain methods of Appeal 2021-000690 Application 15/633,935 9 organizing human activities,” which are an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.3 We also are not persuaded of Examiner error to the extent Appellant maintains that claim 1 recites additional elements that integrate the recited abstract idea into a practical application (Appeal Br. 5–8). The 2019 Revised Guidance references MPEP, Ninth Edition (rev. Jan 2018) (available at https://www.uspto.gov/web/offices/pac/mpep/old/ mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in non-exhaustively listing considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if the additional element (1) reflects an improvement in the functioning of a computer or an improvement to other technology or technical field; (2) applies or uses the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements the judicial exception with, or uses the judicial exception with, a particular machine or manufacture integral to the claim; (4) effects a transformation or reduction of an article to a different state or thing; or (5) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Id. At the 3 We also agree with the Examiner that “[d]ispensing money out of an ATM . . . is . . . fulfilling agreements between the account holder and the financial institution” (Ans. 3), i.e., a commercial interaction. Appeal 2021-000690 Application 15/633,935 10 same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id. Appellant argues here that, even assuming for the sake of argument that the claims recite an abstract idea, the claims are nonetheless patent eligible because they “provide improvements to the functioning of a computer, or to any other technology or technical field” (Appeal Br. 5). Appellant asserts that withdrawal of cash from an ATM without the use of a payment card provides “a technological solution” that enables an individual to withdraw funds “without the need for the infrastructure and technology required to produce and distribute payment cards to recipients, particularly in situations where infrastructure may be lacking and time may be of the essence, such as in instances of aid distribution following a natural disaster” (id. (citing Spec. ¶ 5)). But, we are not persuaded that this amounts to a technological improvement, as opposed to an improvement to the abstract idea of dispensing funds to an intended recipient, which is not enough for patent eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance.”). This is particularly so, where, as here, we find no indication in the Specification that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, invoke any allegedly inventive programming, or that Appeal 2021-000690 Application 15/633,935 11 the claimed invention is implemented using other than generic computer components as tools operating in their normal and ordinary capacity. It also is significant here that the relevant question under Step 2A, Prong 2 is not whether the claimed invention itself, i.e., enabling the withdrawal of cash from an ATM without the use of a payment card, is a practical application; instead, the question is whether the claim includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application. The only additional elements recited in claim 1 beyond the abstract idea are “an automated teller machine (ATM)”; “an input device” of the ATM; “a transmitting device of the ATM”; “a receiving device of the ATM”; “a dispensing module of the ATM”; “a computing device”; and “a first computing system,” i.e., generic hardware and software computer components (Final Act. 3–4; see also Spec. ¶¶ 24, 40–43, 46, 48–50, and 88–99). “And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Appellant further argues that “the claims are implemented using a particular machine,” i.e., “an ATM, which is a specific purpose machine” (Appeal Br. 5–6; see also Reply Br. 4). But, that argument is likewise unavailing. The Federal Circuit has recognized that the machine-or- transformation test,4 although not the only test, “can provide a ‘useful clue’” 4 Under the machine-or-transformation test, a claimed process is patent eligible if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. In re Bilski, Appeal 2021-000690 Application 15/633,935 12 to patent eligibility under the Mayo/Alice framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski, 561 U.S. at 594). As such, satisfying either prong of that test may integrate an abstract idea into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 nn.27–28 (citing MPEP § 2106.05(b), (c)). At the same time, however, it is well settled that “whether a [recited] device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019) (quoting Alice Corp., 573 U.S. at 224). For a machine to impose a meaningful limit on the claimed invention, it must play a significant part in permitting a claimed method to be performed, rather than merely providing the generic environment in which to implement the recited abstract idea. Cf. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, “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”). Here, as described above, Appellant characterizes the ATM as a “specific purpose machine” (Appeal Br. 6). But, Appellant does not claim to have invented a new type of ATM. And we find no indication in the Specification that the recited ATM is other than a generic computer component. Rather than being tied to a particular machine, claim 1 merely implements an abstract idea using generic computer components, which is not enough to transform an otherwise patent-ineligible abstract idea into a 545 F.3d 943, 954 (Fed. Cir. 2008), aff’d sub nom. Bilski v. Kappos, 561 U.S. 593 (2010). Appeal 2021-000690 Application 15/633,935 13 patent-eligible invention. See Alice Corp., 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea”) (citation omitted). Appellant further attempts to draw an analogy here between claim 1 and hypothetical claim 1 of Example 42 of the USPTO’s 2019 Subject Matter Eligibility Examples: Abstract Ideas (the “Eligibility Examples”) (Appeal Br. 7 (“[T]he present independent claims integrate the alleged method of organizing human activity into a practical application similar to claim 1 of Example 42 in the Subject Matter Eligibility Examples: Abstract Ideas.”)).5 Yet, we can find no parallel between hypothetical claim 1 of Example 42 and pending claim 1 here at issue. The USPTO describes in the “Background” section of Example 42 that patients with chronic or undiagnosed illnesses often must visit several different medical providers for diagnosis and treatment, and that these physicians may be physically separate from, and unaware of each other. Eligibility Examples 17. During a visit, each medical provider records information about the patient’s condition in the provider’s own local patient records. Id. However, because these records often are stored in a non- standard format (i.e., a format based on the particular hardware or software platform in use in the medical provider’s office), it is difficult for a medical provider to share updated information about a patient’s condition with other 5 Available at https://www.uspto.gov/sites/default/files/documents/ 101_examples_37to42_20190107.pdf Appeal 2021-000690 Application 15/633,935 14 health care providers. Id. To address this problem, the hypothetical applicant in Example 42 invented a network-based patient management method that “collects, converts[,] and consolidates patient information from various physicians and health-care providers into a standardized format, stores [the information] in network-based storage devices, and generates messages notifying health care providers or patients whenever that information is updated.” Id. Applying the 2019 Revised Guidance, the Office determines that hypothetical claim 16 recites a method of organizing human activity and, 6 Claim 1 of Example 42 recites: A method comprising: a) storing information in a standardized format about a patient’s condition in a plurality of network-based non-transitory storage devices having a collection of medical records stored thereon; b) providing remote access to users over a network so any one of the users can update the information about the patient’s condition in the collection of medical records in real time through a graphical user interface, wherein the one of the users provides the updated information in a non-standardized format dependent on the hardware and software platform used by the one of the users; c) converting, by a content server, the non-standardized updated information into the standardized format, d) storing the standardized updated information about the patient’s condition in the collection of medical records in the standardized format; e) automatically generating a message containing the updated information about the patient’s condition by the content server whenever updated information has been stored; and f) transmitting the message to all of the users over the computer network in real time, so that each user has immediate access to up-to- date patient information. Eligibility Examples 18. Appeal 2021-000690 Application 15/633,935 15 therefore, an abstract idea, i.e., that “[t]he claimed invention is a method that allows for users to access patients’ medical records and receive updated patient information in real time from other users, which is a method of managing interactions between people.” Id. at 18. However, the Office determines that claim 1 is nonetheless patent eligible because it integrates the recited abstract idea into a practical application, i.e., [t]he claim recites a combination of additional elements including storing information, providing remote access over a network, converting updated information that was input by a user in a non-standardized form to a standardized format, automatically generating a message whenever updated information is stored, and transmitting the message to all of the users. . . . Specifically, the additional elements recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. Id. at 18–19 (emphasis added). Appellant maintains here that just as “[i]n Example 42, claim 1 was found to integrate the abstract idea into a practical application by reciting ‘a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user,’” in the present case, “the claims recite a specific manner for enabling users to perform ATM transaction without using a physical card or other instrument communicating directly with the ATM” (Appeal Br. 7). Yet, the Office did not premise its determination that the hypothetical claim 1 in Example 42 was patent eligible merely on the specificity of the claimed method. Instead, the claimed process was held patent eligible because, by enabling remote users to share information in real time in a standardized format regardless of the Appeal 2021-000690 Application 15/633,935 16 format in which the information was originally input (see Eligibility Examples 18–19), hypothetical claim 1 addressed technological difficulties, not present here, related to incompatible computer formats, disparate geographic locations, and the untimely sharing of information (see id. at 17). Appellant also misapprehends the controlling precedent to the extent Appellant maintains that claim 1 is patent eligible because it presents no risk of preemption (Reply Br. 4–5). Although the Supreme Court has described “the concern that drives [the exclusion of abstract ideas from patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. We conclude, for the reasons outlined above, that claim 1 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting Appeal 2021-000690 Application 15/633,935 17 effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. The Examiner determined here, and we agree, that claim 1 does not include additional elements or a combination of elements that provides an inventive concept (Final Act. 4–5). And Appellant provides no arguments to the contrary. Moreover, as described above, the Specification evidences that the additional elements recited in claim 1 beyond the abstract idea, and any ordered combination thereof, are well-understood, routine, and conventional (see Spec. ¶¶ 24, 40–43, 46, 48–50, and 88–99). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of independent claim 1, and claims 2–20, which fall with claim 1. Appeal 2021-000690 Application 15/633,935 18 Obviousness Independent Claims 1 and 11 and Dependent Claims 2–9 and 12–19 First, by of background, Crowell generally relates to cardless financial transactions, and discloses a method and system for performing a cardless transaction at an automated teller machine (Crowell ¶ 1). Crowell describes that, in accordance with the method, a customer first registers her cellular telephone number with a financial account (id. ¶ 19). Then, once the telephone number is successfully registered, the customer may go to an ATM, select a “cardless telephone number transaction option,” enter her telephone number, pin, and withdrawal amount, and, upon verification of this information, receive the funds without ever needing to present her ATM card (id. ¶ 20). Raja similarly discloses a system and method for securely withdrawing cash from a financial account without the use of a card (Raja ¶ 1). Raja, thus, describes that in one example, an application running on a client device provides a user with information about one or more available cash machines (id. ¶ 13). The user initiates a cash request using the application, and selects one of the identified machines (id.). A one-time authorization code is generated for the cash request and provided to the client device when the user is in front of the cash machine; the cash machine then automatically prompts the user for the one-time authorization code, and dispenses the requested cash and completes the transaction if the user- provided code matches the one-time authorization code (id. ¶ 14). Bajaj discloses yet another system and method for processing cardless financial transactions using a transaction device, e.g., an ATM (Bajaj Abstr.). Bajaj describes that in an example process, a user, via a mobile Appeal 2021-000690 Application 15/633,935 19 device, forwards user and account credentials to a credential issuer (id. ¶ 69). The credential issuer receives the credentials from the mobile device (or alternatively, from an intermediate credential processor), generates a substitute value corresponding to the received account credentials (id. ¶ 70), and forwards the account credentials and the substitute value to a payment network (id. ¶ 72). The payment network determines whether the account credentials or substitute value comprises a payment card number, also known as a PAN (Primary Account Number), or something other than a PAN, such as a routing transit number and account number (id. ¶¶ 72, 73). The payment network then validates the PAN or account credentials (e.g., by making small monetary deposits into an associated account and requesting the user to confirm the deposits.), and, if the PAN or account credentials are validated, sends confirmation to the credential issuer (id.). Bajaj discloses a process, with reference to Figures 3B and 3D for initiating a transaction using a mobile device, and describes that the mobile device first sends a request to the credential processor requesting a list of accounts associated with a particular user (Bajaj ¶ 75). The mobile device receives the account list and presents the list to the user for selection of an account with which to conduct the desired transaction; the process then continues to Figure 3D for processing the transaction using a transaction device and the credential processor (id. ¶¶ 76, 82). Bajaj describes, with reference to Figure 3D that the transaction device receives the substitute value and a transaction request, including the type of transaction desired by a user, e.g., a withdrawal, deposit, balance inquiry, bill payment, fund transfer, or the like (id. ¶ 83), and forwards the transaction request and substitute value to the payment network (id. Appeal 2021-000690 Application 15/633,935 20 ¶¶ 84–87). The payment network determines the account credentials that correspond to the received substitute value, and initiates communication with the applicable financial institution, which effects execution of the transaction against the account requested by the user (id. ¶¶ 90, 91). In rejecting independent claims 1 and 11 under 35 U.S.C. § 103, the Examiner cited Crowell as disclosing a method and system for cardless withdrawal from an automated teller machine (Final Act. 8–9). But, the Examiner acknowledged that Crowell does not explicitly teach the steps of a first code being transmitted to a computing device by a disbursing entity; electronically transmitting, by the transmitting device of the ATM, a withdrawal request including at least the transaction account number and the transaction amount to an acquiring institution; receiving, by the receiving device of the ATM, an indication from the acquiring institution that indicates approval of the withdrawal request; and dispensing, by a dispensing module of the ATM, one or more payment instruments having a value equivalent to the transaction amount [,] as called for in limitations (a), (d), (e), (f) of claim 1, and similarly recited in claim 11 (id. at 9).7 The Examiner cited Raja as disclosing a first code being transmitted to a computing device by a disbursing entity, i.e., as called for in limitation (a) of claim 1 (Final Act. 9 (citing Raja ¶¶ 57–58, Figs. 1 and 3 (element 308), Abstr.)). The Examiner, however, acknowledged that “Raja and Crowell combined” do not explicitly teach “electronically transmitting, by the transmitting device of the ATM, a withdrawal request including at 7 The Examiner found that “[a] system comprising a dispensing module of an automated teller machine (ATM), an input device of the ATM, a transmitting device of the ATM and a receiving device of the ATM are inherent in the disclosure of Crowell” (Final Act. 9). Appeal 2021-000690 Application 15/633,935 21 least the transaction account number and the transaction amount to an acquiring institution”; “receiving, by the receiving device of the ATM, an indication from the acquiring institution that indicates approval of the withdrawal request”; and “dispensing, by a dispensing module of the ATM, one or more payment instruments having a value equivalent to the transaction amount,” as called for in limitations (d), (e), and (f); and the Examiner relied on Bajaj to cure these deficiencies (id. at 10 (citing Baja ¶¶ 82–87, 96, Figs. 1 and 3D, Abstr)). The Examiner concluded that it would have been obvious to a person of ordinary skill in the art at the time of Appellant’s invention to modify the “known invention of Crowell” to include the steps taught by Raja and to “include the steps taught by Baja” in “the combined disclosures of Crowell and Raja” because “the claimed invention is merely a combination of old elements and in the combination each element . . . would . . . perform[ ] the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable” (Final Act 10, 11). The Examiner explained that “[t]he motivation to combine [Crowell and Raja] is that would have helped a user withdraw cash with a mobile phone or other device when a card is unavailable or when the user prefers not to carry a card” (id. (citing Raja ¶ 15)), and that the motivation to include Bajaj in the combination of Crowell and Raja “is that would have helped account holders perform withdrawal transactions without having to utilize an ATM owned or operated by the same bank that holds their account, without having to use a debit or bank card with a magnetic strip, and without the ATMs receiving an actual card number or account number” (id. at 11 (citing Baja ¶ 25)). Appeal 2021-000690 Application 15/633,935 22 Appellant argues, and we agree, that the Examiner has not sufficiently established that a person of ordinary skill in the art would have had an apparent reason to combine Crowell, Raja, and Bajaj, as the Examiner proposes, to arrive at the claimed invention (Appeal Br. 9–12). The Examiner posited, as described above, that a person of ordinary skill in the art would have been motivated to include the steps taught by Raja in the Crowell invention because this “would have helped a user withdraw cash with a mobile phone or other device when a card is unavailable or when the user prefers not to carry a card.” Yet, Crowell alone enables a user to withdraw funds using an ATM without presenting an ATM card, i.e., to withdraw cash using a cellular telephone number for identification “when a card is unavailable or when the user prefers not to carry a card.” The Examiner also does not adequately explain why a person of ordinary skill in the art would have been motivated to combine Crowell, Raja, and Bajaj to enable a user to utilize an ATM owned or operated by a bank or the bank that holds his or her account when, as Appellant observes, the claimed invention is concerned with enabling an intended recipient of funds to withdraw cash “without the need for the infrastructure and technology required to produce and distribute payment cards to recipients, particularly in situations where infrastructure may be lacking and time may be of the essence, such as in instances of aid distribution following a natural disaster” (Appeal Br. 12). The Examiner has not established, on this record, that a person of ordinary skill in the art at the time of Appellant’s invention would have had an apparent reason to combine Crowell, Raja, and Bajaj, as the Examiner proposes, to arrive at the claimed invention, as recited in independent Appeal 2021-000690 Application 15/633,935 23 claims 1 and 11. As such, the Examiner has failed to establish a prima facie case of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that a prima facie case of obviousness requires showing that one of ordinary skill in the art would have had both an apparent reason to modify the prior art and predictability or a reasonable expectation of success in doing so). Therefore, we do not sustain the Examiner’s rejection of independent claims 1 and 11 under 35 U.S.C. § 103. For the same reasons, we also do not sustain the rejection of dependent claims 2–9 and 12–19. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). Dependent Claims 10 and 20 Claims 10 and 20 depend from independent claims 1 and 11, respectively. The rejection of these dependent claims does not cure the deficiency in the Examiner’s rejection of independent claims 1 and 11. Therefore, we do not sustain the Examiner’s rejection of claims 10 and 20 under 35 U.S.C. § 103 for the same reasons set forth above with respect to the independent claims. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 1–9, 11–19 103 Crowell, Raja, Bajaj 1–9, 11–19 Appeal 2021-000690 Application 15/633,935 24 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10, 20 103 Crowell, Raja, Bajaj, Official Notice 10, 20 Overall Outcome 1–20 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation