Mikko VAANANEN

Patent Trials and Appeals Board

Oct 2, 2020

2019006774 (P.T.A.B. Oct. 2, 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.
15/060,659 03/04/2016 Mikko VAANANEN P150605US 5160
26290 7590 10/02/2020
PATTERSON + SHERIDAN, L.L.P.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
PSDocketing@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKKO VAANANEN
____________

Appeal 2019-006774
Application 15/060,659
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 5, 7, 9, 10, 14, 16, 18, 19, 23, 25, and 27. An oral
hearing was held on September 24, 2020. We have jurisdiction under
35 U.S.C. § 6(b).

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 June 13, 2019), Correction of Non-Compliant Appeal Brief (“Corrected
Claims,” filed July 2, 2019), Reply Brief (“Reply Br.,” filed Sept. 13, 2019),
and Published Specification (US 2017/0169407 A1, pub. June 15, 2017),
and the Examiner’s Answer (“Ans.,” mailed Aug. 14, 2018) and Final Office
Action (“Final Act.,” mailed May 31, 2019). Appellant identifies the
inventor as the real party in interest. See, e.g., Reply Br. 6.
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We AFFIRM.
CLAIMED INVENTION
Appellant describes that the claimed invention relates “to the field of
making online payments by integrating social networks and payment
networks to a seamless network.” Spec. ¶ 1.
Claims 1, 10, and 19 are the independent claims on appeal. Claim 10,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
10. A method for transacting payments in an electronic social
payment network, wherein,
[(a)] a customer account in said social payment network
system sends a payment to a vendor via social network user
account of said customer with a mobile social network app
installed on the mobile phone of the customer and payment detail
data is collected from the social network user account data of
customer or vendor, and,
[(b)] a vendor account in said social payment network
system receives a payment from a customer via social network
user account of said vendor and payment detail data is collected
from the social network user account data of the customer or
vendor, and
[(c)] a currency payment from a first central bank currency
to a second central bank currency is settled with a currency
exchange within the said social payment network system without
money being deposited to a commercial bank account or credit
card, and payments are facilitated by social network messaging.

REJECTIONS
Claims 1, 5, 7, 9, 10, 14, 16, 18, 19, 23, 25, and 27 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
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Claims 1, 5, 10, 14, 19, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Doran (US 2012/0143761 A1, pub. June 7, 2012), Hahn-
Carlson (US 2008/0086397 A1, pub. Apr. 10, 2008), Khilnani
(US 2014/0279509 A1, pub. Sept. 18, 2014), and Pourfallah
(US 2012/0239417 A1, pub. Sept. 20, 2012).
Claims 7, 9, 16, 18, 25, and 27 are rejected under 35 U.S.C. § 103 as
unpatentable over Doran, Hahn-Carlson, Khilnani, Pourfallah, and further in
view of Official Notice.

ANALYSIS
Patent-Ineligible Subject Matter
Appellant does not separately argue the claims. We select claim 10 as
representative. Claims 1, 5, 7, 9, 14, 16, 18, 19, 23, 25, and 27 will stand or
fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. 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 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
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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
(Jan. 7, 2019) (the “Revised Guidance”). 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 Revised Guidance,
by its terms, “applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019.” Id. The USPTO
issued further guidance on October 17, 2019, clarifying the Revised
Guidance. USPTO, October 2019 Update: Subject Matter Eligibility
(“October 2019 Update”), https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf.
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Applying the Revised Guidance in rejecting the claims under 35
U.S.C. § 101, the Examiner determined that steps (a) through (c), as recited
in claim 10, are directed to “sending and collecting data and settling
payment,” which is a certain method of organizing human activity, i.e., an
abstract idea. Final Act. 3; see also Revised Guidance, 84 Fed. Reg. at 52
(describing commercial interactions as a certain method of organizing
human activity). The Examiner found that the additional elements include a
“network computer” and “memory medium” to perform the steps of
receiving, collecting, and settling, and an app installed on a mobile phone to
perform the step of sending. Id.; see also claims 1, 19. The Examiner
determined that the additional elements are recited “at a high-level of
generality (i.e., as a generic processor performing generic computer
functions) such that it amounts to no more than mere instructions to apply
the exception using generic computer components.” Id. The Examiner
determined that the generic computer components perform generic computer
functions that are well-understood, routine and conventional. Id. at 4
(citations omitted). The Examiner, thus, concluded that the additional
elements do not integrate the abstract idea into a practical application or
amount to significantly more than the abstract idea. Id.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is 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:
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(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. Revised Guidance, 84 Fed.
Reg. at 52. If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, “that integrate the [judicial]
exception into a practical application,” i.e., that 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 (“Step 2A, Prong Two”). 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. If the claim is
directed to an abstract idea, we then look to whether the claim “[a]dds a
specific limitation or combination of limitations” that is not “well-
understood, routine, conventional activity in the field” or simply “appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception”
(“Step 2B”). Id. at 56.
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
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qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
We are not persuaded by Appellant’s arguments that the claims are
not directed to an abstract idea. Appeal Br. 6; Reply Br. 2–3. Here, the
Specification is titled “METHOD AND MEANS FOR SOCIAL
NETWORK PAYMENTS.” Appellant’s Specification describes that even
though online purchases have become more popular, banks often decline
completely valid credit card transactions when those transactions are
conducted on-line due to security concerns. Spec. ¶¶ 2–3. Another problem
with online payments is they are very expensive, particularly when the sale
or withdrawal is in another currency. Id. ¶ 3. Payments through social
websites like Facebook “incurs both wire and/or credit card fees.” Id. ¶ 5.
The Specification describes that payments via Facebook Messenger are
“nothing but glorified credit card transactions, as the money is drawn via the
standard payment methods of [the] credit card/bank account.” Id. PayPal
allows sending a money order to e-mail, but this incurs normal bank fees,
credit card fees, and PayPal charges, and provides almost no counterparty
trust authentication. Id. ¶ 6.
With this context in mind, Appellant’s claim 10 recites a method for
transacting payments involving a customer, a vendor, and a currency
exchange. The method recites the following three steps: (a) “a customer
account . . . sends a payment to a vendor . . . and payment detail data is
collected . . .”; (b) “a vendor account . . . receives a payment from a
customer . . . and payment detail data is collected . . .”; and (c) “a currency
payment from a first central bank currency to a second central bank currency
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is settled . . . without money being deposited to a commercial bank account
or credit card . . . .”.
We agree with the Examiner that these limitations, when given their
broadest reasonable interpretation, recite a method of sending and collecting
data and settling payment, which is a fundamental economic practice and a
commercial interaction. A fundamental economic practice and commercial
interaction are two of the specified certain methods of organizing human
activity, i.e., an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong Two)
Having concluded that claims recite a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claims
recite additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong Two). See Revised Guidance, 84 Fed. Reg.
at 54.
Beyond the abstract idea, independent claim 10 additionally recites
“electronic social payment network,” “social payment network system,”
“mobile social network app,” “mobile phone,” “currency exchange,” and
“social network messaging.” However, these additional elements are recited
and described at a high level of generality. See, e.g., Spec. ¶¶ 39–43. See 84
Fed. Reg. at 55; see also October 2019 Guidance Update, 11–12 (recitation
of generic computer limitations for implementing the abstract idea “would
not be sufficient to demonstrate integration of a judicial exception into a
practical application”), DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
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Appellant argues that the claimed invention “describe[s] payment
processing technology for multicurrency payments configured to operate
with a mobile social network app on the smartphone of the user”; is “limited
to a mobile social network app implementation”; “[t]he payment is
facilitated by social network messaging”; and has “very specific . . . software
implementation.” Appeal Br. 6. Similarly, in the Reply Brief, Appellant
contends that
[t]he invention is integrated into a practical
application whereby consumers and businesses
process the payment by the consumer sending the
payment via his mobile social network app and
social network account, for example Facebook app
and account, and a vendor account is used to receive
the payment. Both the claims and the description
provide meaningful limits to the mobile social app-
based payment system.
Reply Br. 2. However, these additional limitations, considered alone and as
an ordered combination, at best provide a particular technological
environment (i.e., mobile social network app) or field of use (i.e.,
multicurrency payments made with social network messaging). See Revised
Guidance, 84 Fed. Reg. at 55.
Moreover, claim 10 recites that the customer account “sends” a
payment to a vender “via social network user account of said customer” and
the vendor account “receives” a payment from a customer “via social
network user account of said vendor.” Claim 10 also recites that payment
detail data is collected “from the social network user account data of
customer or vendor.” But these limitations specify the sources and content
of the information being processed for settling the payment. And “[a]s many
cases make clear, even if a process of collecting and analyzing information
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is ‘limited to particular content’ or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
In contrast to Appellant’s assertion that the claimed invention “is very
specific about the software implementation of the invention” (Appeal Br. 6),
claim 10 does not recite technological implementation details for any of the
claimed limitations. For example, limitation (a) recites that the customer
account “sends” a payment and data “is collected,” limitation (b) recites that
the vendor account “receives” a payment and data “is collected,” and
limitation (c) recites that a currency payment “is settled” “without money
being deposited to a commercial bank account or credit card, and payments
are facilitated by social network messaging.” Claim 10 does not recite how
the method sends a payment, how the method collects data, how the method
receives a payment, how the method settles a currency payment without
money being deposited to a commercial bank account or credit card, or how
the method “facilitates” payments. For each of the steps, claim 1 merely
recites functional results to be achieved. See Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“[T]he claim
language here provides only a result-oriented solution with insufficient detail
for how a computer accomplishes it. Our law demands more.”).
Appellant further argues that the claimed invention “benefits the
global consumer” (Appeal Br. 6), allows “currencies [to] become irrelevant
to the global consumer” (Reply Br. 3), and provides an “improvement in
ease of use and the savings in bank service fees” (id.). Appellant’s claimed
invention may well provide benefits to the global consumer. However, we
are not persuaded that these improvements constitute a technological
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improvement, as opposed to an improvement to the abstract idea. In
particular, Appellant does not persuade us that any additional element or
combination of additional elements recited in the claim improves computer
functionality, technology and/or a technical field, or that otherwise integrates
the abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.2
We conclude, for the reasons outlined above, that the claim recites a
certain method of organizing human activity, i.e., an abstract idea, and that
the additional elements recited in the claim do no more than generally link
the abstract idea to a particular technological environment and use generic
computers and components as tools to implement the abstract idea.
Therefore, the additional elements do not integrate the abstract idea into a
practical application. Accordingly, we are not persuaded that the Examiner
erred in determining that the claim, as a whole, is directed to an abstract
idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined that claim 10 is directed to an abstract idea, we
consider whether the claim includes any additional elements, alone or in
combination, that are not well-understood, routine, conventional activity in
the field. Revised Guidance, 84 Fed. Reg. at 56.

2 The Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Revised Guidance, 84 Fed. Reg. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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This step of the analysis considers additional elements, as limitations
reciting a judicial exception cannot supply an inventive concept. See Mayo,
566 U.S. at 72–73 (requiring “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)); BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”); Berkheimer v. HP Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) (Moore, J., concurring) (“[A]nd Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.”), cert. denied, 140 S. Ct. 911 (2020).
Thus, to the extent Appellant argues that the combination of steps,
such as limitations (a)–(c) of claim 10, are not well-understood, routine, or
conventional in the field of payment processing, that argument is not
persuasive at least because those limitations are part of the abstract idea
itself. See Reply Br. 3 (asserting that “[t]he invention is a technological
breakthrough in consumer payment processing”). As set forth above, the
only additional elements recited by the claims are elements described in the
Specification at a high level of generality. See Alice, 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.”).
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Here, Appellant has not identified any additional elements recited in
the claim that, individually or in combination, provides significantly more
than the abstract idea.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 10 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of 10 under 35 U.S.C. § 101, and claims 1, 5, 7, 9, 14,
16, 18, 19, 23, 25, and 27, which fall with claim 10.

Obviousness
Independent claims 1, 10, and 19, and Dependent Claims 5, 14, and 23
Appellant does not separately argue the claims. We select claim 1 as
representative. Claims 5, 10, 14, 19, and 23 will stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the Examiner erred in rejecting independent
claims 1, 10, and 19, because Pourfallah’s medical insurance claims “are
notoriously domestic, private single currency transactions, which would not
be combined to a social network, or facilitated by social network
messaging.” Appeal Br. 7; see also Reply Br. 5. Appellant’s argument is
not persuasive, at least because the Examiner does not propose bodily
incorporating Pourfallah’s medical insurance claims into the social network
of Doran. Instead, the Examiner determines that it would have been obvious
to modify Doran’s invention so that the app is installed on the mobile phone,
as taught by Pourfallah. Ans. 11.
Appellant argues that
[b]ased on paragraph 137 of Pourfallah et al.,
and Doran, Hahn-Carlson, Khilnani et al., the
multicurrency payment of the invention made by a
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US or EU tourist with Japanese Yen in Tokyo to
purchase a double espresso via a social network
app, and pay to the social network account of the
café with a social network message is not only non-
obvious, it is indeed unimaginable.
Appeal Br. 7; see also Reply Br. 5–6. Appellant’s argument is not
persuasive of Examiner error, at least because it does not address the
findings and rationales set forth by the Examiner in rejecting the claims.
The Examiner does not rely on paragraph 137 of Pourfallah to teach a U.S.
or E.U. tourist with Japanese Yen in Tokyo to purchase a double espresso
via a social network app, and pay to the network account of the café with the
social network message. See Ans. 11.
Appellant’s assertion that the combination of Doran, Khilnani, Hahn-
Carlson, and Pourfallah does not teach or suggest a “mobile social network
app that can perform multicurrency transactions from the mobile phone
using multiple central bank currencies without depositing to bank account,
and where social network messaging to and from the app facilitates . . .
payments” (Appeal Br. 8), is not persuasive, at least because it does not
identify or explain any alleged errors in the findings and rationales set forth
by the Examiner. See Appeal Br. 8; see also Reply Br. 5.
In the Reply Brief, Appellant presents arguments for the first time that
are not responsive to an argument raised in the Examiner’s Answer. See
Reply Br. 4–5. Appellant has not shown good cause for not presenting these
arguments in the Appeal Brief. Therefore, we will not consider Appellant’s
belated argument. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the
reply brief which was not raised in the appeal brief, or is not responsive to
an argument raised in the examiner’s answer . . . will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”)
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Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103, we also sustain the rejections of claims 5, 10,
14, 19, and 23, which fall with claim 1.
Dependent Claims 7, 9, 16, 18, 25, and 27
Appellant does not separately argue the rejection of dependent claims
7, 9, 16, 18, 25, and 27. Therefore, we affirm the rejection of claims 7, 9,
16, 18, 25, and 27 under 35 U.S.C. § 103 for the same reasons described
above with respect to the independent claims.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 5, 7, 9, 10,
14, 16, 18,
19, 23, 25,
27
101 Eligibility 1, 5, 7, 9,
10,14, 16,
18, 19, 23,
25, 27

1, 5, 10, 14,
19, 23
103 Doran, Hahn-
Carlson,
Khilnani,
Pourfallah
1, 5, 10, 14,
19, 23

7, 9, 16, 18,
25, 27
103 Doran, Hahn-
Carlson,
Khilnani,
Pourfallah,
Official
Notice
7, 9, 16, 18,
25, 27

Overall
Outcome
1, 5, 7, 9,
10, 14, 16,
18, 19, 23,
25, 27

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). See
37 C.F.R. § 41.50(f) (2018).
AFFIRMED