Nordyke, Eric et al.

Patent Trials and Appeals Board

Dec 10, 2019

14292496 - (D) (P.T.A.B. Dec. 10, 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.
14/292,496 05/30/2014 Eric Nordyke 51379-502F01US 9960
64046 7590 12/10/2019
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/10/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC NORDYKE, BEAU HALE, and
COREY BAGGETT

Appeal 2019-001279
Application 14/292,496
Technology Center 3600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JOHN G. NEW, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We
havejurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Midigator
LLC. Br. 2.
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STATEMENT OF THE CASE
Claims 1–22 stand finally rejected by the Examiner under 35 U.S.C.
§ 101 as directed to a judicial exception to patent eligibility. Final Act. 6.
Independent claim 11 is representative and reproduced below. For
reference, bracketed numbers have been added (this numbering is used
throughout the Decision to reference the claim limitations):
11. A method comprising:
[1] executing a first script for accessing a server
associated with a merchant [1a] to at least retrieve, from the
server associated with the merchant, one or more transaction
records, the one or more transaction records having one or more
transaction data values representing one or more purchases by
one or more purchasers from the merchant;
[2] executing a second script for navigating to a web
portal of a financial institution and [2a] retrieving, from the web
portal of the financial institution, one or more chargeback
records associated with the merchant, the one or more
chargeback records having one or more chargeback data values
representing a return of funds to the one or more purchasers;
[3] identifying, at a transaction server, a transaction
record that matches a chargeback record, the identifying based
at least on the one or more transaction data values and the one
or more chargeback data values;
[4] generating a user interface for displaying, to a user,
the transaction record matching the chargeback record, [4a] the
user interface further configured to receive, from the user, one
or more inputs with respect to the transaction record; and
[5] in response to receiving, via the user interface, an
input confirming the transaction record:
[5a] retrieving, from the server associated with the
merchant, a screenshot of a checkout page corresponding
to the transaction record that matches the chargeback
record,
[5b] generating, by the transaction server, a
package for contesting the chargeback record matching
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the transaction record, the package being generated to
include the screenshot of the checkout page, and
[5c] sending, to a server associated with the
financial institution, the package for contesting the
chargeback record.

Claims 1–10 and 12–22 are argued with claim 11 as a group.
Therefore, claims 1–10 and 12–22 fall with claim 11. 37 C.F.R.
§ 41.37(c)(1)(iv).

PRINCIPLES OF LAW
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.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 134 S. Ct. at
2355. If it is determined that the claims are directed to an ineligible concept,
then the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the
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patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’
Alice, 134 S. Ct. at 2355 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355.
The PTO has published revised guidance on the application of
35 U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“2019 Eligibility Guidance”). This guidance provides additional direction
on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims
are examined to identify whether there are additional elements in the claims
that integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
2019 Eligibility Guidance instructs us to determine whether there is a
claimed “inventive concept” to ensure that the claims define an invention
that is significantly more than the ineligible concept, itself. 84 Fed. Reg. 56.
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

DISCUSSION
Claim 11 recites that it is a “method.” Following the first step of the
Mayo analysis, we find that the claims therefore fall into one of the broad
statutory categories of patent-eligible subject matter under 35 U.S.C. § 101.
We thus proceed to Step 2A, Prong One, of the 2019 Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the 2019 Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the claims are directed to an abstract idea
which the Examiner identified as organizing human activity, and specifically
to a fundamental economic practice. Final Act. 4. The 2019 Eligibility
Guidance identify “organizing human activity” as one of the three listed
groupings of abstract ideas. We therefore will examine the steps in the
claimed method to determine whether the Examiner’s findings are correct.
Step [1] of the claim comprises executing a script to retrieve a
transaction record representing purchases by a purchaser from a merchant.
Step [2] of the claim comprises executing a script [2a] to retrieve chargeback
records from a financial institution. A “chargeback” is when a “customer is
unhappy with the purchase or simply does not recognize the charge, he/she
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may initiate a chargeback with a merchant processor or a card issuing bank
in order to dispute the charge or to request more information about the
charge.” Spec. ¶ 2. In step [3] of the claim, a transaction record of a
purchase that matches the chargeback data value is matched at a server.
Each of these steps is a financial transaction that organizes human activity
because they involving retrieving financial records and matching to a
chargeback to the merchant.
In step [4] of the claim, a user interface is generated that displays the
transaction record and chargeback record to a user. The interface is
configured in step [4a] to receive input from the user. This step is therefore
also part of organizing human activity because it presents the financial
activity to the user for review.
In response to step [5] of confirming the transaction record upon
receipt of user input, the claim further recites that [5a] “a screenshot of a
checkout page corresponding to the transaction record that matches the
chargeback record” is retrieved and [5b] “a package for contesting the
chargeback record matching the transaction record” is generated and [5c]
sent to a server associated with the financial institution. These steps, like
steps [1]–[4], are directed to organizing human activity in a financial
transaction because they enable a merchant to identify a chargeback to
contest and then obtain a package to do so.
Appellant argues:
The mere fact the resulting electronic data package may be used
for contesting a chargeback record does not render the
technique for generating the electronic package data a
“fundamental economic practice, certain methods of organizing

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human activity, and/or an idea of ‘itself,’” as alleged by the
Examiner. (Office Action, at p. 4).
Appeal Br. 16.
Appellant misunderstands the Examiner’s position. The Examiner
compared the rejected claims to claims from cases decided by the Federal
Circuit Court of Appeals. Final Act. 2–4. The Examiner determined that the
rejected claims as a whole embodied the same concepts described in those
cases of organizing human activity and fundamental economic practices. Id.
at 4. The Examiner did not state that electronic data package of step [5b] of
claim 11 comprising generating a package was the only step in the claim that
was responsible for categorizing the claim in the grouping of organizing
human activity.
We therefore conclude that the claim recites “methods of organizing
human activity” which is grouping (b) of the three categories of abstract
ideas set forth in the 2019 Eligibility Guidance. We therefore proceed to
Step 2A, Prong 2 of the analysis to determine whether the abstract ideas are
integrated into a practical application.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. As in the Mayo/Alice framework, we must look at the
claim elements individually and “as an ordered combination” to determine
whether the additional elements integrate the recited abstract idea into a
practical application. As discussed in the 2019 Eligibility Guidance, “[a]
claim that integrates a judicial exception in a practical application will apply,
rely on, or use the judicial exception in a manner that places a meaningful
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limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” 84 Fed. Reg. 54.
Integration into a practical application is evaluated by identifying whether
there are additional elements individually, and in combination, which go
beyond the judicial exception. Id. at 54–55. As explained in the October
2019 Update to Subject Matter Eligibility2 “first the specification should be
evaluated to determine if the disclosure provides sufficient details such that
one of ordinary skill in the art would recognize the claimed invention as
providing an improvement.” 2019 Oct. PEG Update 12. According to the
2019 Oct. PEG Update, the “specification need not explicitly set forth the
improvement, but it must describe the invention such that the improvement
would be apparent to one of ordinary skill in the art.” Id.
The Specification explains in the “Background” section that a
customer “may initiate a chargeback with a merchant processor or a card
issuing bank in order to dispute the charge or to request more information
about the charge.” Spec. ¶ 2. In response to merchants having a large
number of chargebacks, the Specification states that the merchant processor
or bank may levy a financial penalty on the merchants, making chargebacks
costly. Id.
The Specification describes “computer program products” for
matching chargeback records with transaction records. Spec. ¶ 3. Steps [1]–
[4] of claim 11 correspond to the computer-implemented method for
matching the transaction records with the chargeback records and displaying

2 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Nov. 15, 2019) (“2019 Oct. PEG Update.”)
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to a user. The Specification states that, “Transaction server 135 provides a
user friendly mechanism for managing and contesting chargebacks in an
automated manner and for alerting merchants of the same.” Spec. ¶ 34; see
Step [3] of claim 11. However, the Specification does not identify the
specific improvement in the way the records are matched, other than to
describe the automated steps. Spec. ¶¶ 33–36. For example, the
Specification describes the use of scripts to obtain chargeback data, but does
not disclose the script which was used. Spec. ¶¶ 41–42.
With respect to matching the records as recited in step [3] of claim 11,
the Specification discloses that the “transaction server 135 may compare the
downloaded chargeback records with the merchant's transaction records at
215” by matching various data values between the two records, but does not
specifically describe an algorithm for how the matching is accomplished.
Spec. ¶¶ 47–52.
The Specification further explains that the “transaction server 135
may generate a representation package” based on matches between
transaction and chargeback records. Spec. ¶ 54. This corresponds to step
[5] of claim 11. The package is used to contest a chargeback. Id. The
Specification explains the contents of the package, how certain details from
the transaction records maybe inserted into a cover letter which is part of the
package, and information regarding the mailing and delivery of the package.
Spec. ¶¶ 55–57. However, no specific details are provided as to how the
automation of the package is actually implemented, such as the scripts or
computer tools to do so.

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In sum, based on our review of the Specification, the improvement
appears to be in automating the process by a computer in which chargebacks
are ultimately contested by a merchant.
Appellant argues that “the Examined failed to recognize the
technology-based solution set forth in” in the claims “for addressing
technical problems that are endemic to transactions from an electronic
payment processing system.” The technical solution identified by Appellant
“includes generating an electronic data packet for use in an electronic
payment processing system that includes a screenshot of a checkout page
corresponding to a transaction record from the electronic payment
processing system.” Appeal Br. 14. Appellant also explains that “[t]he
generation of the electronic data packet requires the execution of one script
for accessing a server to retrieve transaction records and the execution of a
different script for navigating to a web portal to retrieve chargeback
records.” Id. Appellant contends that the Examiner’s rejection is an
“oversimplification of the claimed subject matter as merely being ‘directed
to contesting a chargeback record.’ (Office Action, at p. 6)” which “ignores
the numerous technical details recited in claims 1–22 including, for example,
the execution of scripts, the generation of a user interface, and the retrieval
of a screenshot from a server.” Appeal Br. 15.
Citing Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299 (Fed. Cir. 2018),
Appellant argues “claims that recite more than a mere result cannot be
directed to an abstract idea.” Appeal Br. 16. Appellant lists the steps in the
claim and then asserts that “[t]hese operations for accomplishing the
particular result of generating an electronic data package for use in an

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electronic payment processing system transcend any abstract ideas including
the mere contesting of a chargeback record.” Appeal Br. 17.
We are not persuaded that the improvement described by Appellant in
using a computer to automate the chargeback process is the type of
improvement that confers eligibility to the abstract idea of organizing human
activity. Appellant describes the use of scripts, user interfaces, and screen
shots (Appeal Br. 16), but neither the claims nor the Specification (as
discussed above) describe a specific way in which these are programmed to
improve the technology in which the chargeback is identified and presented
to the merchant to contest. As discussed in Finjan, 879 F.3d at 1305 (Fed.
Cir. 2018)
Even accepting that the claims are directed to a new idea, Blue
Coat argues that they remain abstract because they do not
sufficiently describe how to implement that idea. To support
this argument, Blue Coat points to Apple, Inc. v. Ameranth,
Inc., where we invalidated claims related to a computer system
that can generate a second menu from a first menu based on a
selection of items on the first menu. 842 F.3d 1229, 1240–41
(Fed. Cir. 2016). In that case, we held that the patents were
directed to an abstract idea because they “d[id] not claim a
particular way of programming or designing the software ... but
instead merely claim the resulting systems.” Id. at 1241. Blue
Coat also relies on Affinity Labs, where we held that a claim
related to wirelessly communicating regional broadcast content
to an out-of-region recipient was abstract and patent ineligible
because there was nothing in the claim “directed to how to
implement [the idea]. Rather, the claim is drawn to the idea
itself.” 838 F.3d at 1258.
In Finjan, claims directed to a “behavior-based” approach to computer
virus scanning were found eligible for a patent under 35 U.S.C. § 101
because the claimed method employed “a new kind of file that enables a
computer security system to do things it could not do before.” Finjan, 879
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F.3d at 1305. The court explained that the claimed “security profile
approach allows access to be tailored for different users and ensures that
threats are identified before a file reaches a user’s computer,” and therefor
constituted “a non-abstract improvement in computer functionality, rather
than the abstract idea of computer security writ large.” Id.
Appellant has not identified a particular way of programming or
designing software that enables a functionality that the computer could not
perform before. Rather, the Specification, as explained above, describes in
general terms how the claimed method is implemented, using generic
computer tools, such as scripts and computer interfaces. Spec. ¶¶ 33–36,
41–42, 47–52, and 54–57.
As held in Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876
F.3d 1372, 1379 (2017), “claims . . . directed to an ‘economic arrangement
implemented using ‘generic computer technology’” are ineligible for a
patent under § 101 because they are directed to the abstract idea “without
more.” See also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (2014)
(“The computer functionality is generic—indeed, quite limited: a computer
receives a request for a guarantee and transmits an offer of guarantee in
return. There is no further detail. That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.); OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (2015) (“At best, the claims describe the automation of the
fundamental economic concept of offer-based price optimization through the
use of generic-computer functions. Both the prosecution history and the
specification emphasize that the key distinguishing feature of the claims is
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the ability to automate or otherwise make more efficient traditional price-
optimization methods.”).
Appellant has not adequately identified what “more” is recited in the
claims than the ineligible concept, itself. Alice, 134 S. Ct. at 2355. To
reiterate, Appellant has not explained how the use of scripts, interfaces, and
screen shots, which appear to be generic computer functions, are significant
more than the abstract idea embodied by the steps of the claimed method.
While Appellant asserts that the Examiner did not establish that these
components are generic (Appeal Br. 18), we find this contention to be
insufficient in view of their description or explanation in the Specification.
For example, the Specification states that certain steps may be “automated
using a script” (Spec. ¶ 38), indicating that the use of a script is a generic
computer tool. A “script” is defined as “an executable section of a code that
automates a task.”3 The Specification does not disclose the code nor explain
how it improves the computer function as in Finjan.
Appellant also cites Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(2016) as establishing “that software-based solutions implemented on
general-purpose computer components can qualify as improvements to
computer functionality.” Appeal Br. 19. This holding is not in dispute in
this appeal. Rather, the issue is whether the software implementation is
more than just automating the economic practice of matching transaction
reports and chargebacks, and the sending of a package to contest the
chargeback record. While the steps of the method are performed on a
computer, the implementation of a method on a generic computer “fail[s] to

3 https://www.dictionary.com/browse/script (last accessed Nov. 15, 2019).
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transform that abstract idea into a patent-eligible invention.” Alice, 134 S.
Ct. at 2357.
Appellant points to the statement in the Specification that
“Transaction server 135 provides a user friendly mechanism for managing
and contesting chargebacks in an automated manner and for alerting
merchants of the same” (Spec. ¶ 34) as evidence of an improvement to
“satisfy the significantly more prong of subject matter eligibility and render
the claimed subject matter patent eligible.” Appeal Br. 19. The
Specification describes in general terms how the transaction server
functions, but does not identify with any specificity how the function is
implemented, and thus does add significantly more to the abstract idea.
Spec. ¶¶ 33–36, 38, 41–42, 47–52, and 54–57. See Finjan discussion above.
For example, the Specification teaches:
In the implementation of FIG. 3A, merchant 120 may have
accounts at Bank A and Bank B. In order to access chargeback
data for merchant 120, transaction server 135 may need to visit
each bank’s web portal. In some implementations, this process
may be automated using a script. Because each bank’s web
portal may have different web pages and, consequently,
different content, a different script can be written for each bank.
Transaction server 135 may be configured to execute this script
upon request (e.g., when merchant 120 requests a chargeback
report) or automatically based on a predetermined event.
Spec. ¶ 38.
The Specification does not explain how using the script adds
significantly more to the financial process other than enable it to be carried
out on a computer.
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For the reasons described above, we conclude that the judicial
exception recited in claim is not integrated into a practical application.
Thus, we conclude that the claim is directed to an abstract idea.

Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the 2019 Eligibility
Guidance, which asks whether there is an inventive concept. In making this
Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted). We must also consider whether the combination of steps
perform “in an unconventional way and therefore include an ‘inventive
step,’ rendering the claim eligible at Step 2B.” Id.
Appellant argues that the Examiner failed “to analyze the elements of
the claims holistically” which “constitutes another critical flaw in the
Examiner’s signi[fi]cantly more inquiry.” Appeal Br. 18. Appellant
identifies alleged flaws in the Examiner’s analysis, but does not provide
evidence that the claims “holistically” add significantly more to the recited
abstract idea. Appellant states the improvement in technology comprises
“scripting, networking, and user interfaces” (Appeal Br. 11), generating data
packages based on script execution (Appeal Br. 14), “the execution of
scripts, the generation of a user interface, and the retrieval of a screenshot
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from a server” (Appeal Br. 15), but Appellant has not provided persuasive
evidence that the steps are assembled in unconventional manner or that the
scripts operate in an unconventional way to perform the steps in the claim.
Appellant lists the elements recited in the claim without explaining how
these elements add significantly more to the abstract idea, itself. As
discussed above, we consulted the Specification but did not discern evidence
that system for “matching chargeback records with transaction records”
(Spec. ¶ 3), displaying user interfaces (Spec. ¶¶ 41, 42), and generating
packages to contest a chargeback (Spec. ¶¶ 54, 60) added more to the recited
abstract idea of organizing human activity and the fundamental economic
practice of “managing and contesting chargebacks in an automated manner
and for alerting merchants of the same” (Spec. ¶ 34). See also Spec. ¶¶ 33–
36, 38, 41–42, 47–52, and 54–57 as discussed above. Performing these steps
on a computer using generic and known computer tools is not sufficient to
establish an inventive concept. Consequently, we find that the claims do not
provide an inventive concept.
Summary
For the foregoing reasons, the rejection of claims 1–22 as ineligible
for a patent under 35 U.S.C. § 101 is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3 101 Eligibility 1–3

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED