Mohammad Khan et al.

Patent Trials and Appeals Board

Aug 23, 2019

14986592 - (D) (P.T.A.B. Aug. 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.
14/986,592 12/31/2015 Mohammad Khan 2181-007 2109
27820 7590 08/23/2019
WITHROW & TERRANOVA, P.L.L.C.
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOHAMMAD KHAN, ASHOK NARASIMHAN and
WILIAM N. MELTON1
___________

Appeal 2018-005451
Application 14/986,592
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and
BETH Z. SHAW, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–5 and 7–31, which constitute all the claims
pending in this application. Claim 6 is canceled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is NeuPay, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE2
Appellants’ claimed invention relates to “systems for performing
secure mobile payment and non-payment transactions with integrated
loyalty, rewards and promotions.” Spec. ¶ 2.

Representative Claim
1. A system for performing secure mobile payment
and non-payment transactions with integrated loyalty, rewards,
and promotions, the system comprising:

a mobile backend server that:

stores and maintains payment and non-payment account
information for a user;

receives, from a mobile device of the user, first
information associated with a first physical location proximate to
a physical location of the user, and uses the first information to
establish a digital communication with a merchant backend
system associated with the first physical location;

presents a list of available payment and non-payment
instruments to the user via the mobile device of the user prior to
the user’s interaction with the merchant backend system via the
digital communication for shopping, item selection, or checkout;
and

detects a shopping, item selection, or checkout interaction
between the user and the merchant backend system, and, in
response to that detection:

2 We refer to the Final Office Action, mailed December 14, 2016 (“Final
Act.”); Appeal Brief, filed July 14, 2017 (“Appeal Br.”); Examiner’s
Answer, mailed Nov. 20, 2017 (“Ans.”); and the Reply Brief, filed May 2,
2018 (“Reply Br.”).
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[L1] determines incentives that are available to the user,
wherein the incentives comprise at least one of loyalty points,
rewards, discounts, coupons, or promotions and presents the
available incentives to the user for selection prior to initiation of
a payment or non-payment transaction with the merchant;

determines which of the available incentives are selected
by the user; and

determines a transaction amount associated with the
shopping, item selection, or checkout interaction and presents
the determined transaction amount to the user;

[L2] wherein at least one of the incentives or the
transaction amount presented to the user via the mobile device
of the user is dynamically updated based on at least one of
an incentive selection or a payment instrument selection by the
user prior to initiation of the payment or non-payment
transaction.

Appeal Br. 32 (Claims Appendix) (Emphasis added regarding the disputed
limitations L1 and L2).

Rejections 3
A. Claims 1–5 and 7–31 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. Final Act. 6.
B. Claims 1–5, 7–29, and 31 are rejected under 35 U.S.C.
§ 102(a)(1) and 102(a)(2) as being anticipated by Hammad et al. (US
2012/0209749 A1; published August 16, 2012; filed Feb. 16, 2012
(hereinafter “Hammad”)). Final Act. 15.
C. Claim 30 is rejected under 35 U.S.C. § 103 as being obvious over

3 The Examiner withdrew the rejection under 35 U.S.C. § 112, second
paragraph. Ans. 3.
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Hammad. Final Act. 28.

Issues on Appeal
1. Did the Examiner err in rejecting claims 1–5 and 7–31 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
2. Did the Examiner err in rejecting claims 1–5, 7–29, and 31 under 35
U.S.C. § 102(a)(1) and 102(a)(2), as being anticipated by Hammad?
3. Did the Examiner err in rejecting claim 30 under 35 U.S.C. § 103, as
being obvious over Hammad?
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv) (2017). In our analysis below, we highlight
and address specific findings and arguments for emphasis.

Rejection A of Claims 1–5 and 7–31 under 35 U.S.C. § 101
Issue: Under 35 U.S.C. § 101, did the Examiner err in rejecting claims
1–5 and 7–31 under 35 U.S.C. § 101, as being directed to a judicial
exception, without significantly more?

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Principles of Law — 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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
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. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). 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.” (emphasis omitted)); 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 of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
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(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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 (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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.

Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);4 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5 6
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019

4 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
5 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).

6 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
7
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using 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
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a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea — see
MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use
— see MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Revised Guidance, Step 2A, Prong One 8
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes claims 1–5 and 7–31 recite: “an abstract idea
of “using an idea of itself and using certain methods of organizing human
activity.” Final Act. 7. In support, the Examiner concludes the claims are
similar to the subject claims considered by the Federal Circuit in:

8 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Cybersource (Cybersource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)), which
obtains and compares intangible data, the current invention
obtains shopping or checkout information and compares the
information to stored payment and non-payment account
information and determines applicable incentives available to
the user for the transaction [and] Affinity (Affinity Labs of
Texas, LLC v. Amazon.com, _F.3d_, 120 U.S.P.Q.2d 1210 (Fed.
Cir. 2016)) which communicates targeted information[.] [T]he
current invention communicates targeted incentives to the user
to be used during a transaction. Therefore an abstract idea is
present in the claims.
Final Act. 10.
Turning to the claims, we conclude representative independent
claim 1 recites the following identified types or categories of abstract ideas,
as mapped below in TABLE ONE:
TABLE ONE
Independent Claim 1 Revised 2019 Guidance
[a] A system for performing
secure mobile payment and
non-payment transactions
with integrated loyalty,
rewards, and promotions, the
system comprising:
A machine (system) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“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.”).

[b] a mobile backend server
that:

We construe “a mobile backend
server” under BRI as a machine.
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[c] stores and maintains
payment and non-payment
account information for a
user;

Adding insignificant extra-solution
activity to the judicial exception —
see MPEP § 2106.05(g); i.e., data
gathering and storage. See Rev.
Guid. 55, n.31.

[d] receives, from a mobile
device of the user, first
information associated with a
first physical location
proximate to a physical
location of the user, and uses
the first information to
establish a digital
communication with a
merchant backend
system associated with the
first physical location;

Adding insignificant extra-solution
activity to the judicial exception —
see MPEP § 2106.05(g); i.e., data
gathering. See Rev. Guid. 55, n.31.

[e] presents a list of available
payment and non-payment
instruments to the user via the
mobile device of the user
prior to the user’s interaction
with the merchant
backend system via the
digital communication for
shopping, item selection, or
checkout; and

Adding insignificant extra-solution
activity to the judicial exception —
see MPEP § 2106.05(g); i.e., data
gathering See Rev. Guid. 55, n.31.

[f] detects a shopping, item
selection, or checkout
interaction between the user
and the merchant backend
system, and,

Abstract idea, detection can be
performed alternatively as a mental
process. See Rev. Guid. 52.
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[g] in response to that
detection: determines
incentives that are available
to the user, wherein the
incentives comprise at least
one of loyalty points,
rewards, discounts, coupons,
or promotions and presents
the available incentives to the
user for selection prior
to initiation of a payment or
non-payment transaction with
the merchant;

Abstract idea, i.e., “determines
incentives” can be performed
alternatively as a mental process.
See Rev. Guid. 52.

Incentives such as “loyalty points,
rewards, discounts, coupons,
or promotions” claim 1 recite a
fundamental economic practice,
including advertising, marketing or
sales activities or behaviors and
business relations. Id.
[h] determines which of the
available incentives are
selected by the user; and
determines a transaction
amount associated with the
shopping, item selection, or
checkout interaction and
Abstract idea, i.e., determining and
selecting can be performed
alternatively as a mental process.
See Rev. Guid. 52.
Incentives such as “loyalty points,
rewards, discounts, coupons,
or promotions” claim 1 recite a
fundamental economic practice,
including advertising, marketing or
sales activities or behaviors and
business relations. Id.
[i] presents the determined
transaction amount to the
user;

[j] wherein at least one of the
incentives or the transaction
amount presented to the user
via the mobile device of the
user is dynamically updated
based on at least one of
an incentive selection or a
payment instrument selection
Adding insignificant post-solution
activity to the judicial exception —
see MPEP § 2106.05(g); i.e.,
presenting the incentives or
transaction amount See Rev. Guid.
55, n.31.

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by the user prior to initiation
of the payment or non-
payment transaction.

Incentives such as “loyalty points,
rewards, discounts, coupons,
or promotions” claim 1 recite a
fundamental economic practice,
including advertising, marketing or
sales activities or behaviors and
business relations. Id.

“dynamically updated” could be
performed alternatively as a mental
process, and thus recites an abstract
idea.

Considering the language of representative claim 1 as a whole, we
conclude that at least the claim limitations of detecting “a shopping, item
selection, or checkout interaction between the user and the merchant
backend system, and, in response to that detection: determin[ing] incentives
that are available to the user, wherein the incentives comprise at least one of
loyalty points, rewards, discounts, coupons, or promotions[,] and
present[ing] the available incentives to the user for selection prior to
initiation of a payment or non-payment transaction with the merchant,” fall
into the category of a method of organizing human activities, including the
subcategory of a fundamental economic practice, which includes, inter alia,
advertising, marketing or sales activities or behaviors and business relations
under the 2019 Revised Guidance. Moreover, we conclude the functions of
detecting, determining, selecting, and dynamically updating (emphasized in
italics above in Table One), could be performed alternatively as mental
processes under the Revised Guidance. See 2019 Revised Guidance, 84 Fed.
Reg. at 52.
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If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016).
We note the additional non-abstract generic computer components
recited in claim 1: “a mobile backend server,” “a mobile device,” and
“merchant backend system.” The recited “user” and “merchant” of claim 1
are persons. Independent claim 31 recites the same additional non-abstract
limitations of generic computer components. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
We emphasize the supporting description of generic computer and
network components in the Specification, for example:
In embodiments where the mobile device 106 is being used to
browse an ecommerce site 114, for example, the
web page being displayed by the ecommerce site 114 may
include the QR code 302 as a graphic element, in which the
browser or mobile application that the user 104 is using
may include the ability to detect and capture the embedded QR
image. Information may be conveyed to the mobile device 106
via other mechanisms as well, including via wireless
communication, such as Wi-Fi, Bluetooth, and near field
communication (NFC), via wired communication, via
removable memory device, via manual entry, via scanning
other visual images like barcodes, text, etc., and via audio files,
which are received or recorded by the mobile device 106.
Spec. ¶ 60.
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Given this context in the Specification (id.), McRO, Inc. v. Bandai
Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)) provides
applicable guidance: “[t]he abstract idea exception prevents patenting a
result where ‘it matters not by what process or machinery the result is
accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62,
113 (1854)) (emphasis added).
As noted above, remaining independent system claim 31 recites
similar functions of commensurate scope that also fall into the same abstract
idea categories mapped above in Table One for independent system claim 1.
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55. We have identified supra the additional non-abstract
elements recited in independent claim 1, e.g., “a mobile backend server,” “a
mobile device,” and “merchant backend system.” The “user” and
“merchant” are persons.
Under MPEP § 2106.05(a) (“Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”), Appellants
contend the claims amount to significantly more than an abstract idea:
Appellant[s] respectfully submit[] that, like the subject matter at
issue in both Enfish and the more recent Trading Technologies,
the subject matter of the present disclosure is indisputably
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an improvement to the capability of the system as a whole.
By providing merchants with the opportunity to provide loyalty,
rewards, promotions, or other enticements to the consumer, and
by providing consumers with the opportunity to make decisions
based on such enticements, prior to making the payment or
otherwise concluding the transaction, when such transactions
are made using a mobile device, the methods and systems
described herein provide electronic transaction systems that
allow a merchant and a consumer to engage in a high degree
of interaction prior to conclusion of the transaction. The
methods and systems at issue in the instant specification impart
a specific functionality to the process of performing a merchant
transaction that was not even possible prior to the advent of
mobile devices, computer networks, and ubiquitous network
access via cellular and other wireless technologies.
Appeal Br. 29.
Enfish, LLC v. Microsoft Corp
Appellants are referring to Enfish, LLC v. Microsoft Corp., 822 F.3d
1337 (Fed. Cir. 2016). We note the Enfish court held the subject claims
were “not directed to an abstract idea within the meaning of Alice.” Enfish,
822 F.3d at 1336. The court concluded the claims were directed to “a
specific improvement to the way computers operate, embodied in the self-
referential table.” (emphasis added). Id.
We emphasize that the self-referential database table considered by
the Enfish court was found to be a specific type of data structure that was
designed to improve the way a computer stores and retrieves data in
memory. Id. at 1339. Because the Enfish court found the claimed self-
referential database table improved the way the computer stored and
retrieved data, the court concluded the Enfish claims were not directed to an
abstract idea, and thus ended the analysis at Alice step one. Id. at 1336.
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Here, Appellants have not shown that any of the features of the claims
before us on appeal improve the way the recited generic “mobile backend
server,” “mobile device,” and “merchant backend system” store and retrieve
data, in a manner analogous to that found by the court in Enfish. See
independent claims 1 and 31. Further, Appellants’ claims are silent
regarding any mention of a database storage device that includes a self-
referential database table of the type found by the Enfish court to improve
the way a computer stores and retrieves data in memory.

Trading Technologies International
Appellants advance arguments in the Appeal Brief (28–29) regarding
Trading Technologies International. We observe Trading Technologies is
non-precedential and thus is not a controlling authority that we must
consider in this appeal.
Therefore, on this record, we agree with the Examiner: “[t]here is no
indication that the [claimed] combination of elements improves the
functioning of the computer or improves any other technology. Their
collective functions merely provide conventional computer implementation.”
Final Act. 11–12 (emphasis added).
Accordingly, we conclude claim 1 does not recite an improvement to
the functionality of a computer or other technology or technical field. See
MPEP § 2106.05(a).
We note there are no method claims on appeal that might be analyzed
under either MPEP § 2106.05(b), as being tied to a particular machine, or
under MPEP § 2106.05(c), as transforming physical subject matter to a
different state or thing.
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System claim 1 has no other argued meaningful limitations. See
MPEP § 2106.05(e). Instead, the system of claim 1 merely executes
instructions on the recited “a mobile backend server,” “mobile device,” and
“merchant backend system” to perform the recited system functions.
See also MPEP § 2106.05(f). “Flook stands for the proposition that
the prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610–11 (2010), (quoting Diamond v. Diehr, 450 U.S.
175, 191–92 (1981)).
Here, we agree with the Examiner that “‘stor[ing]’ and ‘present[ing]’
[are] merely extra-solution activit[ies] and generic computer function[s]
[that do] not meaningfully limit the claim.” Final Act. 14. As depicted in
the right column of Table One above, we conclude the recited functions of:
(c) storing “payment and non-payment account information,” and (d),
receiving “first information” are a type of extra or post-solution activity that
courts have determined to be insufficient to transform judicially excepted
subject matter into a patent-eligible application. See MPEP § 2106.05(g); 84
Fed. Reg. at 55, 55, n.31.
As also indicated in Table One, we conclude the recited functions of
presenting are insignificant extra or post solution activity to the judicial
exception — see MPEP § 2106.05(g) (“An example of post-solution activity
is an element that is not integrated into the claim as a whole, e.g., a printer
that is used to output a report of fraudulent transactions”); See Rev. Guid.
55, n.31.

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Moreover, we conclude the claims on appeal are silent regarding
specific limitations directed to an improved “mobile backend server,”
“mobile device,” and “merchant backend system.” See independent system
claims 1 and 31. Thus, we agree with the Examiner that “the additional
elements of the claim do not add a meaningful limitation to the abstract idea
because they would be generic computer functions in any computer
implementation.” Final Act. 11. Therefore, we find Appellants’ claimed
invention does not provide a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” as considered by the court in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis added).
Nor do claims 1–5 and 7–31 on appeal present any other issues as set
forth in the 2019 Revised Guidance regarding a determination of whether the
additional generic elements integrate the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–5 and 7–31 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
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well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note Berkheimer was decided by the Federal Circuit on February
8, 2018. On April 19, 2018, the PTO issued the Memorandum titled:
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(hereinafter “Berkheimer Memorandum”).9 Because Appellants filed the
Reply Brief on May 2, 2018, Appellants had the benefit of both the
Berkheimer Federal Circuit decision and the USPTO Berkheimer
Memorandum.
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements (or a
combination of elements) are well-understood, routine, or conventional.
However, because Appellants fail to traverse the Examiner’s specific
factual findings that “receiving and transmitting data over a network such as
the Internet are each generally recognized as well-understood, routine, and
conventional activity when claimed generically” — Final Act. 14), on this
record, we are not persuaded the Examiner erred. (emphasis added).
Further regarding the use of the recited generic “mobile backend
server,” “mobile device,” and “merchant backend system” (independent
claims 1 and 31), the Supreme Court has held “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing court
provides additional guidance: See FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter.”); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims
reciting, inter alia, sending messages over a network, gathering statistics,
using a computerized system to automatically determine an estimated
outcome, and presenting offers to potential customers found to merely recite
“‘well-understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellants have not shown that the claims on appeal add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, and conventional” in the field. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants’ claims 1–5 and 7–31, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the Examiner’s
Rejection A under 35 U.S.C. § 101 of claims 1–5 and 7–31.10

10 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

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Anticipation Rejection B of Representative Independent Claim 1
Issue: Under 35 U.S.C. § 102(a)(1), did the Examiner err by finding
Hammad anticipates the disputed limitations L1 and L2:
a mobile backend server that: . . .

detects a shopping, item selection, or checkout interaction
between the user and the merchant backend system, and, in
response to that detection:

[L1] determines incentives that are available to the
user, wherein the incentives comprise at least one of loyalty
points, rewards, discounts, coupons, or promotions and presents
the available incentives to the user for selection prior
to initiation of a payment or non-payment transaction with the
merchant; . . . [and]

[L2] wherein at least one of the incentives or the
transaction amount presented to the user via the mobile
device of the user is dynamically updated based on at least one
of an incentive selection or a payment instrument selection by the
user prior to initiation of the payment or non-payment
transaction.

within the meaning of representative independent claim 1? 11 (Emphasis
added). We note limitations L1 and L2 of claim 1 are recited in identical
form in claim 31.
Appellants focus on the determining of incentives that are available to
the user during checkout and the transaction amount being updated in
response to the incentive selection, within the meaning of claim 1. See
Appeal Br. 22–25.

11 See supra, n.8. We give the contested claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See
Morris, 127 F.3d at 1054.
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Specifically, Appellants acknowledge that “Hammad discloses
that incentives may be presented to a user for selection.” Appeal Br. 24.
However, Appellants aver that Hammad “does not disclose, teach, or suggest
that this occurs in response to a shopping, item selection, or checkout
interaction between the user and the merchant backend system, as recited in
claim 1.” Id.
In support, Appellants argue:
Hammad discloses shopping, item selection, or checkout
interaction (e.g., a user may scan a bar code, QR [(“Quick
Response” ¶ 21)] code, etc., to get information about an item ),
and that in response to this activity, the merchant server
may generate a QR pay code [(¶ 74)], but does not disclose,
teach, or suggest that such activity triggers determining which
incentives are available to the user, determining which
incentives have been selected by the user, determining a
transaction amount, and presenting the transaction amount to
the user, as recited in claim 1.
Appeal Br. 24–25.
The Examiner’s Answer
The Examiner disagrees. The Examiner further explains the basis for
the rejection. The Examiner finds:

Hammad clearly teaches that based on transaction information
being received, the user interface provides a number of options
for paying for the transaction via the wallet mode. [The] [u]ser
interface may clearly identify the amount in the currency for the
transaction. The user may select the funds tab to select one or
more forms of payment which may include various credit, debit,
gift, rewards etc. The user interface shows the number of points
available that can be used for the current transaction ([0097-
98], at least Fig. 9B, "935", Fig. 9E, "951/952/953"). The user
interface also includes an offers tab that provides real-time offers
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that are relevant to items in the user's card for selection by the
user. The user may select one or more offers from the list of
applicable offers for redemption. Offers that are
recommended by the wallet applications recommendation engine
may be identified by an indicator ([0106]). Based on these
minimal teachings taken from the entirety of Hammad clearly
shows that incentives are presented to a user for selection based
in response to a shopping, item selection or checkout interaction
between the user and the merchant backend system and
a transaction amount based on incentives selected by the user just
as claimed.
Ans. 7–8 (emphasis added).
The Examiner refers to the mapping of the claimed incentives
available to the user prior to checkout to the virtual wallet application in a
payment mode found in Hammad. See Hammad, ¶¶21–25, 40–41, 45, 49,
54, 58, 64, 97–98, 106, 119–123, as set forth in the Final Office Action 17.
See also Ans. 7–8. The Examiner addresses Appellants’ arguments (Appeal
Br. 24–25), based upon the incentives (reward points) available to the user
during the checkout transaction. See Ans. 7–8. See Claim 1.
We begin our analysis with claim construction.12 Claim 1 [L1]
recites: “in response to that detection: determines incentives that are

12 Claim construction is an important step in a patentability determination.
“Both anticipation under § 102 and obviousness under § 103 are two-step
inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” See Medichem, S.A. v. Rolabo,
S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted)). Under
the second step, the Board must compare the construed claim to one or more
prior art references and make factual findings regarding the limitations
contested by Appellants. See In re Crish, 393 F.3d 1253, 1256
(Fed. Cir. 2004).

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available to the user, wherein the incentives comprise at least one of loyalty
points, rewards, discounts, coupons, or promotions and presents the
available incentives to the user for selection prior to initiation of a payment
or non-payment transaction with the merchant.” (emphasis added).
We turn to the Specification for context regarding the claimed
incentives:
As used herein, the term “incentive” refers to loyalty points,
rewards, discounts, or promotions. As used herein, the term
“promotion” refers to coupons, offers, advertising, marketing
materials, free or complementary items, or other tangible
or intangible items provided by the merchant, the
manufacturers, or any other third party to promote a sale of
products or services associated with the promotion.
Spec. ¶ 10 (emphases added).
Given this supporting description of incentives (id.), we turn to the
evidence relied upon by the Examiner. (Final Act. 15–17; Ans. 7–8). The
Examiner finds limitation L1 of claim 1 is disclosed by Hammad, at ¶¶ 25,
41, 97, 98, 106 and Fig. 9B, 9E. Ans. 7–8.
We reproduce the pertinent cited portions of Hammad below:
With reference to FIG. 1B, in some implementations,
e.g., 110, a user 111 may wish to checkout items stored in a
(virtual) shopping cart in a (online) shopping store, e.g.,
112, using a reverse snap mobile payment procedure. … Upon
indicating that the user wishes to check out the items in the
virtual shopping cart, the user may generate, e.g., 114, a QR
code 115b via a mobile app on the user's mobile device
including information on the user payment methods, offers,
rewards, and/or other aspects connected to the user's virtual
wallet.
Hammad ¶ 25 (emphasis added).
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In some implementations, the app may allow the user to utilize
rewards points, airline miles, hotel points, electronic coupons,
printed coupons (e.g., by capturing the printed coupons similar
to the product identifier) etc., to pay for the purchase
transaction, e.g., 317–318.
Hammad ¶ 41 (emphasis added).
With reference to FIG. 9E, in one embodiment, the offers tab
951 may provide real-time offers that are relevant to items
in a user's cart for selection by the user. The user may select
one or more offers from the list of applicable offers 952 for
redemption. In one implementation, some offers may be
combined, while others may not. When the user selects an offer
that may not be combined with another offer, the unselected
offers may be disabled. In a further implementation, offers that
are recommended by the wallet application's recommendation
engine may be identified by an indicator, such as the one shown
by 953.
Hammad ¶ 106 (emphasis added).
FIGS. 9A-F show user interface diagrams illustrating example
features of virtual wallet applications in a payment mode, in
some embodiments of the SNAP. . . . The amount may be the
amount payable and the currency may include real currencies
such as dollars and euros, as well as virtual currencies such as
reward points. The amount of the transaction 914 may also be
prominently displayed on the user interface. The user may
select the funds tab 916 to select one or more forms of
payment 917, which may include various credit, debit, gift,
rewards and/or prepaid cards. The user may also have the
option of paying, wholly or in part, with reward points. For
example, the graphical indicator 918 on the user interface
shows the number of points available, the graphical indicator
919 shows the number of points to be used towards the amount
due 234.56 and the equivalent 920 of the number of points in a
selected currency (USD, for example).
Hammad ¶ 97 (emphasis added).

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In one implementation, the user may combine funds
from multiple sources to pay for the transaction. The
amount 915 displayed on the user interface may provide an
indication of the amount of total funds covered so far by the
selected forms of payment (e.g., Discover card and rewards
points). The user may choose another form of payment or
adjust the amount to be debited from one or more forms of
payment until the amount 915 matches the amount payable 914.
Hammad ¶ 98 (emphasis added).
As reproduced above, limitation L1 requires: “in response to that
detection: determines incentives that are available to the user, wherein the
incentives comprise at least one of loyalty points, rewards, discounts,
coupons, or promotions and presents the available incentives to the user for
selection prior to initiation of a payment or non-payment transaction with
the merchant.” (emphasis added).
Regarding the use of “or” language, when a claim covers several
alternatives, the claim may be anticipated (or obvious) if any of the
alternatives within the scope of the claim are taught by the prior art. See
Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). Moreover, anticipation
“is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990) (citing Akzo N.V. v. United States Int'l Trade Comm’n, 808 F.2d 1471,
1479 & n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not
duplicate word for word what is in the claims.” Standard Havens Prods. v.
Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
In reviewing the record, we find Hammad, discloses the emphasized
language of limitation L1, mapped as follows:
“detects a shopping, item selection, or checkout interaction between
the user and the merchant backend system, and, in response to that
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detection” (See Hammad ¶ 25: “a user 111 may wish to checkout items
stored in a (virtual) shopping cart in a (online) shopping store)… Upon
indicating that the user wishes to check out the items in the virtual shopping
cart, the user may generate, e.g., 114, a QR code 115b via a mobile app on
the user's mobile device including information on the user payment methods,
offers, rewards, and/or other aspects connected to the user's virtual
wallet.”):
determines incentives that are available to the user (See Hammad
¶ 106: “With reference to FIG. 9E, in one embodiment, the offers tab 951
may provide real-time offers that are relevant to items in a user's cart for
selection by the user. The user may select one or more offers from the list of
applicable offers 952 for redemption.” Here, the offers are the incentives
available to the user.),
wherein the incentives comprise at least one of loyalty points,
rewards, discounts, coupons, or promotions (See Hammad ¶ 41: “In some
implementations, the app may allow the user to utilize rewards points,
airline miles, hotel points, electronic coupons, printed coupons (e.g., by
capturing the printed coupons similar to the product identifier) etc., to pay
for the purchase transaction, e.g., 317–318.”) and
presents the available incentives to the user for selection prior
to initiation of a payment or non-payment transaction with the merchant
(See Hammad ¶¶ 97–98: “… Virtual wallet application …. The user may
select the funds tab 916 to select one or more forms of payment 917, which
may include various credit, debit, gift, rewards and/or prepaid cards. The
user may also have the option of paying, wholly or in part, with reward
points. For example, the graphical indicator 918 on the user interface shows
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the number of points available, the graphical indicator 919 shows the
number of points to be used towards the amount due 234.56 and the
equivalent 920 of the number of points in a selected currency (USD, for
example). In one implementation, the user may combine funds from multiple
sources to pay for the transaction.”) (emphasis added).
Based upon a preponderance of the evidence, and because Appellants
fail to address the Examiner’s specific findings regarding Hammad ¶¶ 25,
41, 106 and 97–98 (Final Act. 17), on this record, we are not persuaded of
error regarding the Examiner’s finding that Hammad discloses limitation
L1. See Final Act. 15–17.

Contested Limitation L2 of Independent Claim 1 under 102 Rejection B
wherein at least one of the incentives or the transaction
amount presented to the user via the mobile device of the user is
dynamically updated based on at least one of an incentive
selection or a payment instrument selection by the user prior to
initiation of the payment or non-payment transaction.
Claim 1 (emphasis added). See Appeal Br. 32.

The Examiner maps the claimed “dynamically updated” term to the
virtual wallet application updating the transaction amount based on
incentives or reward points, as described in Hammad (¶¶ 21–25, 40–41, 45,
49, 54, 58, 64, 97–98, 106, 119–123), as set forth in the Final Office Action
17. See Ans. 7–8. The Examiner addresses Appellants’ arguments (Appeal
Br. 24–25), based on the updated payment amount. See Ans. 7–8. See
Claim 1.
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Turning to the evidence found by the Examiner, we find Hammad
¶¶ 40–41 and 97–98 describe the “dynamically updated payment” claim
limitation, as follows:
FIGS. 3A-E show application user interface diagrams
illustrating example features of a snap mobile payment app for
capturing product barcodes, securing user data and preventing
fraud in some embodiments of the SNAP. … In some
implementations, the user may be provided with information
about products, user settings, merchants, offers, etc. in list form
(see, e.g., 309) so that the user may better understand the
user's purchasing options. Various other features may be
provided for in the app (see, e.g., 310).
Hammad ¶ 40 (emphasis added).

The app may provide an indication of a pay amount due for the
purchase of the product, e.g., 312. In some implementations,
the app may provide various options for the user to pay the
amount for purchasing the product(s). … For example, the
user may choose from a number of cards (e.g., credit cards,
debit cards, prepaid cards, etc.) from various card providers,
e.g., 313. In some implementations, the app may provide the
user the option to pay the purchase amount using funds
included in a bank account of the user, e.g., a checking,
savings, money market, current account, etc., e.g., 314. In
some implementations, the user may have set default options
for which card, bank account, etc. to use for the purchase
transactions via the app. … In some implementations, the app
may allow the user to utilize other accounts (e.g., Google.TM.
Checkout, Paypal.TM. account, etc.) to pay for the purchase
transaction, e.g., 316. In some implementations, the app may
allow the user to utilize rewards points, airline miles, hotel
points, electronic coupons, printed coupons (e.g., by capturing
the printed coupons similar to the product identifier) etc., to pay
for the purchase transaction, e.g., 317–318.
Hammad ¶ 41 (emphasis added).
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FIGS. 9A-F show user interface diagrams illustrating example
features of virtual wallet applications in a payment mode, in
some embodiments of the SNAP. With reference to FIG. 9A,
in one embodiment, the wallet mobile application may provide
a user with a number of options for paying for a transaction via
the wallet mode 910. In one implementation, an example user
interface 911 for making a payment is shown. The user
interface may clearly identify the amount 912 and the currency
913 for the transaction. The amount may be the amount
payable and the currency may include real currencies such as
dollars and euros, as well as virtual currencies such as reward
points. The amount of the transaction 914 may also be
prominently displayed on the user interface. The user may
select the funds tab 916 to select one or more forms of payment
917, which may include various credit, debit, gift, rewards
and/or prepaid cards. The user may also have the option of
paying, wholly or in part, with reward points. For example, the
graphical indicator 918 on the user interface shows the number
of points available, the graphical indicator 919 shows the
number of points to be used towards the amount due 234.56 and
the equivalent 920 of the number of points in a selected
currency (USD, for example).
Hammad ¶ 97 (emphasis added).

In one implementation, the user may combine funds from
multiple sources to pay for the transaction. The amount 915
displayed on the user interface may provide an indication of the
amount of total funds covered so far by the selected forms of
payment (e.g., Discover card and rewards points). The user
may choose another form of payment or adjust the amount to be
debited from one or more forms of payment until the amount
915 matches the amount payable 914. Once the amounts to be
debited from one or more forms of payment are finalized by the
user, payment authorization may begin.
Hammad ¶ 98 (emphasis added).
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As reproduced above, limitation L2 requires: “wherein at least one of
the incentives or the transaction amount presented to the user via the mobile
device of the user is dynamically updated based on at least one of
an incentive selection or a payment instrument selection by the user prior to
initiation of the payment or non-payment transaction.” (emphasis added).
In reviewing the record, we find Hammad, discloses the emphasized
language of limitation L2, mapped as follows:
wherein at least one of the incentives (See Hammad ¶ 106: …the
offers tab 951 may provide real-time offers that are relevant to items in a
user's cart for selection by the user. The user may select one or more offers
from the list of applicable offers 952 for redemption.), or
the transaction amount (See Hammad ¶ 41: The app may provide an
indication of a pay amount due for the purchase of the product, e.g., 312. In
some implementations, the app may provide various options for the user to
pay the amount for purchasing the product(s).).
presented to the user via the mobile device of the user is dynamically
updated (See Hammad ¶ 98: In one implementation, the user may combine
funds from multiple sources to pay for the transaction. The amount 915
displayed on the user interface may provide an indication of the amount of
total funds covered so far by the selected forms of payment (e.g., Discover
card and rewards points).)
based on at least one of an incentive selection (See Hammad ¶ 41: In
some implementations, the app may allow the user to utilize rewards points,
airline miles, hotel points, electronic coupons, printed coupons (e.g., by
capturing the printed coupons similar to the product identifier) etc., to pay
for the purchase transaction, e.g., 317-318.) or
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a payment instrument selection by the user prior to initiation of
the payment or non-payment transaction (See Hammad ¶ 97: The user may
select the funds tab 916 to select one or more forms of payment 917, which
may include various credit, debit, gift, rewards and/or prepaid cards. The
user may also have the option of paying, wholly or in part, with reward
points.).
Given this evidence (id.), and on this record, we are not persuaded of
error regarding the Examiner’s finding of anticipation by Hammad of both
limitations L1 and L2 of claim 1. Therefore, for at least the aforementioned
reasons, and based upon a preponderance of the evidence, we are not
persuaded the Examiner erred regarding anticipation Rejection B of
representative independent system claim 1.
For similar reasons, we find a preponderance of the evidence supports
the Examiner’s finding of anticipation for Rejection B of system claim 31,
which recites identical limitations L1 and L2 to those contested by
Appellants for claim 1. See Final Act. 30 (“Newly added claim 31 has been
addressed as part of the rejection of claim 1, and the particular variation of
an ‘ecommerce session’ feature was individually addressed in view of
Hammad.”). Therefore, grouped claims 2–5, 7–29, and 31, also rejected
under anticipation Rejection B (and not argued separately), fall with
representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, we sustain the Examiner’s anticipation Rejection B of
claims 1–5, 7–29, and 31.

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Rejection C of Remaining Dependent Claim 30 under §103
Dependent claim 30 recites: “The system of claim 1 wherein the
mobile backend server or mobile device determines that a shopping list for
the user includes an item that was not processed during checkout, and in
response to that determination, provides the user with the opportunity to pay
for the item at checkout and have the item delivered to the user or made
available for pickup by the user after the transaction is completed.” Claims
Appendix, Appeal Br. 37 (emphasis added).
Regarding claim 30 rejected under § 103, Appellants contend that
Hammad says nothing at all to suggest the recited negative limitation:
“determining that a shopping list for the user includes an item that was not
processed during checkout, and in response to that determination,
providing the user with the opportunity to pay for the item at checkout.” See
Appeal Br. 25–27 (emphasis added).
However, we find no deficiencies with Hammad for the similar
reasons discussed above regarding anticipation Rejection B of claim 1.
Similar to our discussion above, there is no requirement in an obviousness
analysis for the prior art to “contain a description of the subject matter of the
appealed claim in ipsissimis verbis.” In re May, 574 F.2d 1082, 1090
(CCPA 1978).
In reviewing the record, we find Hammad ¶ 112, expressly describes a
wish list which has items that are not processed during checkout and the user
is given an opportunity to purchase them later:
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For example, the virtual wallet application may be able to snap
and identify a purchase invoice 1103, a coupon 104, money
(e.g., sent in a person-to-person transfer) 1105, a bill (e.g.,
utilities, etc.) 1106, a receipt (e.g., for storing, expense
reporting, etc.) 1107, a pay account (e.g., to add a new
credit/debit/prepaid card to the virtual wallet application) 1108.
The user may be able to return to a shopping screen at any time
by activating a graphical user interface element 1102. In some
embodiments, the user may be able to set a name of a cart or
wishlist stored within the user's virtual wallet application to
which the item snapped should be sent (see 1109). In some
embodiments, the virtual wallet application may allow a user to
create a new cart or wishlist to which the snapped items should
be added.
Hammad ¶ 112 (emphasis added).
Our reviewing court provides applicable guidance: “[T]he question
under 35 USC 103 is not merely what the references expressly teach but
what they would have suggested to one of ordinary skill in the art at the time
the invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)); see also MPEP § 2123.
Accordingly, based upon a preponderance of the evidence, we sustain
the Examiner’s obviousness Rejection C of dependent claim 30 over the
teachings and suggestions of Hammad.

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CONCLUSIONS
The Examiner did not err in rejecting claims 1–5 and 7–31 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1–5, 7–29, and 31 under
35 U.S.C. § 102(a), as being anticipated by Hammad.
The Examiner did not err in rejecting claim 30 under 35 U.S.C. § 103,
as being obvious over Hammad.

DECISION
We affirm the Examiner’s decision rejecting claims 1–5 and 7–31
under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1–5, 7–29, and 31
under 35 U.S.C. § 102(a)(1).
We affirm the Examiner’s decision rejecting claim 30 under 35 U.S.C.
§ 103.
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).
AFFIRMED