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Patent Trials and Appeals Board

Nov 21, 2019

14497509 - (D) (P.T.A.B. Nov. 21, 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.
14/497,509 09/26/2014 Simon Blythe 16754-000048-US 6086
120493 7590 11/21/2019
Harness Dickey (Mastercard)
7700 Bonhomme
Suite 400
St. Louis, MO 63105
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/21/2019 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):
gwmefile@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIMON BLYTHE
____________

Appeal 2019-000348
Application 14/497,509
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–7, 10, 19–23, and 25–31, i.e., all pending claims. We
have jurisdiction 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
MasterCard International Incorporated. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “customised
interaction with computer equipment,” and more specifically “customisation
of interaction between . . . transaction cards or transaction card proxies” and
“automated teller machines (ATMs) or other terminals in a financial
transaction system.” Spec. ¶ 1.2 The Specification explains that “different
banks will typically use different ATM machine types, and some banks may
have many different models in service.” Id. ¶ 4. The Specification also
explains that “[t]his diversity in ATM ownership and ATM type means that
the customer experience is highly inconsistent between ATM machines” and
“may lead to slower use (as the customer works out how to use an unfamiliar
interface) and increased likelihood of error.” Id. ¶ 5. The Specification
further explains that “[t]he customer may also have preferences for ATM
use” and “[a]t present, there is no way to respect the preferences of an
individual customer.” Id. Hence, the invention endeavors to “address these
issues” for “ATMs and also for other terminal types” by “allow[ing] for
ready customization of a user interface in accordance with user preferences.”
Id. ¶¶ 5, 7.
According to the Specification, the invention allows for ready
customization of a user interface by (1) “establishing a local connection
between [a] mobile computing apparatus” and a terminal; (2) “providing

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November 3, 2014; “Final Act.” for the Final Office
Action, mailed July 13, 2017; “Appeal Br.” for the Appeal Brief, filed
February 7, 2018; “Ans.” for the Examiner’s Answer, mailed August 16,
2018; and “Reply Br.” for the Reply Brief, filed October 15, 2018.
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customized interaction code from the mobile computing apparatus for
storage in” the terminal’s memory; and (3) using “the customized interaction
code to provide a customized user interface” through the terminal’s “display
and . . . user input means during the local connection between the mobile
computing apparatus” and the terminal. Spec. ¶ 6.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method of customized interaction with computer
equipment comprising a processor, a display, a memory and a
user data entry device, the method comprising:
establishing a local connection between a mobile
computing apparatus and the computer equipment, wherein the
mobile computing apparatus includes a payment card or a
mobile telephone acting as a proxy for a payment card, and
wherein the computer equipment includes a terminal of a
financial transaction system;
providing customized interaction code from the mobile
computing apparatus for storage in the memory of the computer
equipment; and
executing, by the processor of the computer equipment,
the customized interaction code to provide a customized user
interface using the display and the user data entry device during
the local connection between the mobile computing apparatus
and the computer equipment.
Appeal Br. 38 (Claims App.).
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The Rejection on Appeal
Claims 1–7, 10, 19–23, and 25–31 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.3 Final Act. 2–5.
ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 2–5, 11–17; Ans. 4–9. We provide the following to address
and emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“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.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.

3 The statement of rejection also lists claims 11–14, which have been
canceled. Final Act. 2. We consider this a harmless error.
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Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
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to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are “directed to an abstract idea of
customizing a user interface in accordance with user preferences.” Final
Act. 3 (emphasis omitted); Ans. 5. The Examiner explains that “the abstract
idea of customizing a user interface in accordance with user preferences is
similar to cases found by the courts to be abstract idea, such as data
recognition and storage (Content Extraction), hedging in (Bilski) and
mitigating settlement risk in financial transactions (Alice Corps.).” Final
Act. 3–4 (emphasis omitted) (citing Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014); Bilski v.
Kappos, 561 U.S. 593 (2010); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208
(2014)).
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Appellant disputes that independent claims 1, 19, and 26 are directed
to an abstract idea. See Appeal Br. 7–24; Reply Br. 2–12. Appellant asserts
that the Examiner describes the claims at a high level of abstraction
untethered from the claim language. Appeal Br. 16–18; see id. at 19 n.2.
Appellant contends that the claims “go well beyond basic concepts such as
storing and recognizing data, fundamental economic practices, and
displaying results of gathered/analyzed information.” Id. at 17–18; see
Reply Br. 6. According to Appellant, the claims are directed to “a specific
way to effect a customized user interface.” Appeal Br. 18.
We disagree that the Examiner errs under Mayo/Alice step one. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 3–4; Ans. 5–6; see also SAP Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., “mental processes.” See 84 Fed. Reg. at 51–52. The 2019
Guidance describes “mental processes” as “concepts performed in the
human mind,” such as “an observation, evaluation, judgment, [or] opinion.”
Id. at 52 (footnote omitted). For the reasons explained below, each
independent claim recites a concept performed in the human mind.
For instance, method claims 1 and 19 each recite the following
limitation: “customized interaction code to provide a customized user
interface.” Appeal Br. 38, 40. System claim 26 recites a similar
“customized interaction code” limitation. Id. at 41.
The “customized interaction code” limitations encompass evaluations
practically performed by a human mentally or with pen and paper. The
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Specification does not limit “customized interaction code” to a computer
program. See, e.g., Spec. ¶¶ 6–19, 34, 48–49. That term encompasses a
code associated with a user.
Thus, a person employing pen and paper could create a table or index
by assigning different codes to different users who have different interface
preferences. When assigning different codes to different users, the person
could note in the table or index each user’s interface preferences, e.g., text
displayed in English or Spanish. Subsequently, upon receiving a particular
code associated with a particular user, someone could use the table or index
to determine that user’s interface preferences. Someone performs a similar
evaluation when using a telephone book to locate a telephone number based
on a name.
Further, the claims here resemble the claims in In re Brown,
645 F. App’x 1014 (Fed. Cir. 2016). There, the claims covered “methods
of cutting hair” by, among other things, (1) “defining a head shape,”
(2) “designating the head into at least three partial zones,” (3) “identifying at
least three hair patterns,” and (4) “assigning at least one of said at least three
hair patterns to each of the said partial zones.” Id. at 1015. For Mayo/Alice
step one, the Federal Circuit reasoned that “[i]dentifying head shape and
applying hair designs accordingly is an abstract idea capable . . . of being
performed entirely in one’s mind.” Id. at 1017.
Here, identifying information (“customized interaction code”) and
selecting user interfaces accordingly is an abstract idea capable of being
performed entirely in one’s mind. Also, the “tailoring of content based on
information about the user . . . is an abstract idea that is as old as providing
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different newspaper inserts for different neighborhoods.” Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016).
For these reasons, the “customized interaction code” limitations
encompass evaluations practically performed by a human mentally or with
pen and paper. The 2019 Guidance identifies an evaluation practically
performed by a human mentally or with pen and paper as a mental process,
and thus an abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“Symantec”) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”).
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites an abstract
idea, we consider whether each claim as a whole integrates the recited
abstract idea into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components. Appeal Br. 38, 40–41. Specifically, method claims 1
and 19 each recite a “mobile computing apparatus” and “computer
equipment comprising a processor, a display, a memory and a user data
entry device.” Id. at 38, 40. Similarly, system claim 26 recites a “mobile
computing apparatus” and a “terminal” with a “display” and a “memory.”
Id. at 41.
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The independent claims also recite data-collecting and data-presenting
limitations. Appeal Br. 38, 40, 41. For instance, claim 1 recites the
following data-collecting and data-presenting limitations:
● “establishing a local connection between a mobile
computing apparatus and the computer equipment”;
● “providing customized interaction code from the mobile
computing apparatus for storage in the memory of the
computer equipment”; and
● “provid[ing] a customized user interface using the
display and the user data entry device during the local
connection between the mobile computing apparatus and
the computer equipment.”
Appeal Br. 38. Claims 19 and 26 recite similar limitations. Id. at 40–41.
We determine that each independent claim as a whole does not
integrate the recited abstract idea into a practical application because the
additional elements do not impose meaningful limits on the abstract idea.
See 84 Fed. Reg. at 53–54; see also Final Act. 4–5; Ans. 5–11. Instead, the
claimed computer-system components constitute generic computer-system
components that perform generic computer functions. See Final Act. 4, 15
(citing Spec. ¶¶ 33–35); Ans. 5 (citing Spec. ¶¶ 31–36); Spec. ¶¶ 2, 11,
31–38, 47. Further, the data-collecting and data-presenting limitations
constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S.
at 79; Bilski, 561 U.S. at 611–12; Apple, 842 F.3d at 1241–42; OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989).
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As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning customer responses were
“conventional data-gathering activities that d[id] not make the claims patent
eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those
decisions, the Manual of Patent Examining Procedure (“MPEP”) identifies
“gathering data” as an example of insignificant pre-solution activity. MPEP
§ 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
2011) (analogizing “data gathering” to “insignificant extra-solution
activity”). In particular, the “establishing a local connection” and
“providing customized interaction code” limitations in claim 1 operate to
make data available for processing like the “conventional data-gathering
activities” in OIP Technologies. See OIP Techs., 788 F.3d at 1363–64.
Consistent with this, the Specification explains that an “application is used
to inject the code into a dedicated memory area in a payment terminal” for
processing. Spec. ¶ 33. Claims 19 and 26 also include limitations that
operate to make data available for processing, i.e., the “establishing” and
“receiving” limitations in claim 19 and the “establish” and “receive”
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limitations in claim 26. Hence, the data-collecting limitations in each
independent claim do not help integrate the recited abstract idea into a
practical application.
Further, in Flook the Supreme Court decided that adjusting an alarm
limit according to a mathematical formula was “post-solution activity” and
insufficient to confer eligibility. Parker v. Flook, 437 U.S. 584, 590, 596–98
(1978). Similarly, the Federal Circuit has held that printing menu
information constituted insignificant post-solution activity. Apple, 842 F.3d
at 1241–42. Consistent with those decisions, the MPEP identifies printing
“to output a report” as an example of insignificant post-solution activity.
MPEP § 2106.05(g).
Here, the data-presenting limitations require no particular presentation
tool and nothing unconventional or significant. Instead, they require nothing
more than a generic “display” presenting undefined information in some
unspecified way. Appeal Br. 38, 40–41. Consistent with this, the
Specification describes a terminal with a generic “display,” for example,
a touchscreen. Spec. ¶ 45; see id. ¶ 36. Just as printing menu information in
Apple constituted insignificant post-solution activity, presenting undefined
information in some unspecified way here constitutes insignificant post-
solution activity. Hence, the data-presenting limitation in each independent
claim does not help integrate the recited abstract idea into a practical
application.
Appellant contends that the claims provide “specific, unique, and
concrete operations and configurations to facilitate a customized interaction
with/at a financial system transaction terminal.” Appeal Br. 8. But
providing “specific, unique, and concrete operations and configurations”
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does not suffice for eligibility. For example, the claims in Flook, Bilski, and
Alice all provided “specific, unique, and concrete operations and
configurations,” but none of them satisfied § 101. See Flook, 437 U.S.
at 594–98; Bilski, 561 U.S. at 599, 611–13; Alice, 573 U.S. at 212–14 & n.2,
221–27.
Appellant asserts that the claims address “highly inconsistent
customer experiences between ATM machines of different types, slower use,
and increased likelihood for error.” Appeal Br. 19. Appellant then
characterizes those issues as “clearly technical problems that specifically
arise in the context of electronic financial transaction system terminals.” Id.
at 20. Further, Appellant asserts that the claims “are directed to
technological improvements: enhanced financial transaction system
terminals and methods of electronically interacting therewith.” Appeal
Br. 9; see Reply Br. 3–4.
We disagree that the claims are directed to technological
improvements. The claims present undefined information in some
unspecified way that purportedly permits a user to process information more
quickly. See Spec. ¶¶ 5–7; Appeal Br. 38, 40–41. Permitting a user to
process information more quickly “is not a technical solution to a technical
problem.” See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084,
1089–90 (Fed. Cir. 2019) (“Trading Techs. I”). Similarly, providing a user
“with new or different information in an existing” terminal “is not a
technical solution to a technical problem.” Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1378, 1383 (Fed. Cir. 2019) (“Trading Techs. II”).
Appellant asserts that the claims “‘allow[] for ready customisation of
a user interface,’ thereby improving financial transaction system terminal
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capabilities, and whereby a user can have the same preferred user experience
at virtually any transaction system terminal or ATM, without regard to the
type of terminal or owner thereof.” Appeal Br. 9 (alteration in original)
(quoting Spec. ¶ 7); see Reply Br. 3. Appellant similarly asserts that the
claims improve “financial transaction system terminal technology and
methods of electronically interacting therewith, which necessarily improves
the functioning of such computer-based terminals and interactions.” Appeal
Br. 24; see id. at 21; Reply Br. 6–7, 12.
We disagree that the claims improve the functioning of a terminal or
any other device. Presenting information according to a user’s preferences
“does not improve the functioning of the [terminal], make it operate more
efficiently, or solve any technological problem.” Trading Techs. II,
921 F.3d at 1385. Here, “the purported advance ‘is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions.’” Id. (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016)).
Further, the Examiner correctly finds that the claims do not improve
“the functioning of a computer itself” or “another technology or technical
field.” Final Act. 4, 13, 15, 17; Ans. 6, 8.
Appellant contends that the claims provide “non-routine and
unconventional operations and configurations” by “uniquely providing or
receiving actual customized interaction code from the mobile commuting
apparatus . . . that is executed by the computer equipment . . . to provide a
customized user interface, etc.” Appeal Br. 19; see Reply Br. 6–7.
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Appellant’s contention does not persuade us of Examiner error. The
Examiner correctly determines that the claims “are directed to the use of
conventional or generic technology in a well-known environment, without
any claim that the invention reflects an inventive solution to any computer
specific problem.” Final Act. 15–16; Ans. 6. As the Examiner explains, the
claims “do not require any nonconventional computer or database
components” and instead “merely call for performance of the claimed
customizing a user interface in accordance with user preferences ‘on a set of
generic computer components.’” Ans. 10 (quoting BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)).
Appellant analogizes the claims here to the claims in the following
cases: Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253
(Fed. Cir. 2017); Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299
(Fed. Cir. 2018); McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); and DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See, e.g., Appeal
Br. 11–15, 20–23; Reply Br. 5–7, 11–12. But the claims here do not
resemble the claims in any of those cases.
In Core Wireless, the “claims recite[d] a specific improvement over
prior systems,” i.e., a “particular manner of summarizing and presenting
information in electronic devices.” Core Wireless, 880 F.3d at 1362–63.
The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
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step one because the “invention improve[d] the efficiency of using the
electronic device.” Id. at 1363.
Unlike the claims in Core Wireless, the claims here do not improve
the efficiency of using a terminal or any other device. See Final Act. 4, 13,
15, 17; Ans. 6, 8. As claimed, a terminal operates no differently than
conventional terminals when presenting information according to a user’s
preferences. See Appeal Br. 38, 40–41.
In Enfish, the Federal Circuit decided that the claims satisfied § 101
under Mayo/Alice step one because they recited a “specific improvement to
the way computers operate,” i.e., an improved database configuration that
permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33,
1336, 1339. Further, the Federal Circuit has explained that the claims in
Enfish “did more than allow computers to perform familiar tasks with
greater speed and efficiency” and “actually permitted users to launch and
construct databases in a new way.” Finjan, 879 F.3d at 1305; see also
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 910
(Fed. Cir. 2017) (explaining that the claims in Enfish “focused on an
improvement to computer functionality”).
In Visual Memory, the claims also focused on an improvement to
computer functionality. Specifically, the Federal Circuit decided that the
claims satisfied § 101 under Mayo/Alice step one because they were
“directed to an improved computer memory system” that “enabl[ed]
interoperability with multiple different processors.” Visual Memory,
867 F.3d at 1259. That interoperability “obviate[d] the need to design a
separate memory system for each [different] type of processor.” Id.
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Similarly, in Finjan the claims recited “a system and method for
providing computer security by attaching a security profile to a
downloadable,” i.e., “an executable application program . . . downloaded
from a source computer and run on [a] destination computer.” Finjan,
879 F.3d at 1302–03. The claimed “security profile” included “details about
the suspicious code in the received downloadable,” such as “all potentially
hostile or suspicious code operations that may be attempted by” the
downloadable. Id. at 1304. The claimed “security profile” produced “a new
kind of file that enable[d] a computer security system to do things it could
not do before.” Id. at 1304–05. Thus, the Federal Circuit decided that the
claims satisfied § 101 under Mayo/Alice step one because they provided an
“improvement in computer functionality.” Id. at 1305–06.
Unlike the claims in Enfish, Visual Memory, and Finjan, the claims
here do not provide an improvement in computer functionality. For
instance, the claims do not recite an advance in hardware or software that
causes a processor itself or a memory itself to operate faster or more
efficiently. The claimed invention does not enable a terminal to do things
it could not do before. Further, as discussed above, the Examiner correctly
finds that the claims do not improve “the functioning of a computer itself” or
“another technology or technical field.” Final Act. 4, 13, 15, 17; Ans. 6, 8.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. The Federal Circuit decided that the claims
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satisfied § 101 under Mayo/Alice step one because “the incorporation of the
claimed rules” improved an existing technological process. Id. at 1314–16.
Similarly, in BASCOM the claims recited a “specific method of
filtering Internet content” requiring “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user.” BASCOM, 827 F.3d at 1345–46, 1350.
The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step two. Id. at 1349–51. The court reasoned that the claims covered “a
technology-based solution . . . to filter content on the Internet that overcomes
existing problems with other Internet filtering systems” and “improve[s] an
existing technological process.” Id. at 1351 (citing Alice, 573 U.S. at 223);
see Alice, 573 U.S. at 223 (explaining that “the claims in Diehr were patent
eligible because they improved an existing technological process”).
Unlike the claims in McRO and BASCOM, the claims here do not
cover a technology-based solution that improves an existing technological
process. See Final Act. 4, 13, 15, 17; Ans. 6, 8. As discussed above,
permitting a user to process information more quickly “is not a technical
solution to a technical problem.” See Trading Techs. I, 921 F.3d
at 1089–90. As also discussed above, providing a user “with new or
different information in an existing” terminal “is not a technical solution to a
technical problem.” Trading Techs. II, 921 F.3d at 1383.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied § 101 under Mayo/Alice step two because “the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem,” i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
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1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that
claims ‘directed to systems and methods of generating a composite web page
that combines certain visual elements of a “host” website with content of a
third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result . . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
“necessarily rooted in computer technology” that addressed a “problem
specifically arising in the realm of computer networks.” Id. at 1257.
According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). Unlike the patent-eligible
claims in DDR Holdings, the claims here do not attempt to solve a challenge
particular to the Internet. See Appeal Br. 38, 40–41. Among other things,
the claims do not require a network and instead recite “a local connection.”
Appellant contends that the claimed methods and systems “are tied to
a particular machine (e.g., terminal of financial transaction systems (e.g.,
ATMs, etc.)) and further effect a transformation in the running of the
terminal.” Appeal Br. 25. But “not every claim that recites concrete,
tangible components escapes the reach of” Mayo/Alice step one. TLI
Commc’ns, 823 F.3d at 611 (collecting cases); see ChargePoint, Inc. v.
SemaConnect, Inc., 920 F.3d 759, 770–73 (Fed. Cir. 2019). That claims
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“recite components more specific than a generic computer” does not save
them from abstraction. BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1286 (Fed. Cir. 2018).
Moreover, the claimed methods and systems in Alice effected a
transformation in the running of a computer. See Alice, 573 U.S. at 212–14
& n.2, 224–26. Yet the Supreme Court decided that they were directed to an
abstract idea. Id. at 225–27. Here, the alleged “transformation in the
running of the terminal” at most transforms user-preference data into user-
interface data. “A process that start[s] with data, add[s] an algorithm, and
end[s] with a new form of data [is] directed to an abstract idea.”
RecogniCorp, 855 F.3d at 1327.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract idea into a practical application. Thus, each claim is directed
to a judicial exception and does not satisfy § 101 under Mayo/Alice step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
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at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1353). An “inventive
concept” requires more than “well-understood, routine, conventional activity
already engaged in” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79–80). But a “non-conventional and non-generic arrangement
of known, conventional pieces” may provide an “inventive concept”
satisfying step two. BASCOM, 827 F.3d at 1350.
As discussed above, the independent claims recite computer-system
components, i.e., a “mobile computing apparatus,” “computer equipment
comprising a processor, a display, a memory and a user data entry device,”
and a “terminal” with a “display” and a “memory.” Appeal Br. 38, 40–41.
As also discussed above, the claimed computer-system components
constitute generic computer-system components that perform generic
computer functions. See Final Act. 4, 15 (citing Spec. ¶¶ 33–35); Ans. 5
(citing Spec. ¶¶ 31–36); Spec. ¶¶ 2, 11, 31–38, 47.
The Specification describes the claimed computer-system components
generically and evidences their conventional nature. See Spec. ¶¶ 2, 11,
31–38, 47. As an example, the Specification describes a “mobile computing
apparatus” as “a payment card, or a mobile telephone acting as a proxy for a
payment card,” such as “a smartphone.” Id. ¶¶ 11, 37; see id. ¶ 31. As
another example, the Specification describes a “terminal” as “any device that
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interfaces directly with” a “transaction card (e.g. an interface allowing user
entry of a personal identification number (PIN) such as a PIN pad or PIN
Entry Device (PED), or a [point-of-sale] POS terminal or Automated Teller
Machine (ATM) comprising means such as these, to allow interaction with a
transaction card).” Id. ¶ 2; see id. ¶ 32. According to the Specification,
“computer equipment” includes (1) a “terminal (such as an ATM),” (2) a
“payment card (such as an EMV card),” and (3) a “proxy for a payment card
(such as a mobile telephone running a suitable application).” Id. ¶ 47.
Further, the Specification explains that “computer devices” have “processors
and memories for storing information including firmware and applications
run by the respective processors,” just like conventional computer devices.
Id. ¶ 31.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
Moreover, the claimed computer-system components operate to
collect, manipulate, and display data. Appeal Br. 38, 40–41; see Final
Act. 4–5; Ans. 5–8. Court decisions have recognized that generic computer-
system components operating to collect, manipulate, and display data are
well understood, routine, and conventional to a skilled artisan. See, e.g.,
Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170;
Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015);
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Ultramercial, 772 F.3d at 715–16; buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “mobile computing apparatus” or “terminal”) with
a “communications controller” and a “data storage unit” (e.g., a “memory”).
Alice, 573 U.S. at 226. The Supreme Court decided that the system claims
failed to satisfy § 101 because “[n]early every computer” includes those
generic components for performing “basic calculation, storage, and
transmission functions” and the system claims simply implemented the same
abstract idea as the method claims. Id. at 226–27. The Court reasoned that
(1) “the system claims are no different from the method claims in
substance”; (2) “[t]he method claims recite the abstract idea implemented on
a generic computer”; and (3) “the system claims recite a handful of generic
computer components configured to implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. 38, 40–41; see Final Act. 4–5; Ans. 5–8. For
instance, nearly every computer system includes a “processor” for
manipulating data and instructions (e.g., executing code) along with
a “memory” for storing data and instructions (e.g., storing code). Hence,
those generic computer-system components do not satisfy the “inventive
concept” requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic
computer components such as an ‘interface,’ ‘network,’ and ‘database’” did
not satisfy the “inventive concept” requirement); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the
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claimed “microprocessor” and “user interface” as “generic computer
elements”); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014,
1016–17 (Fed. Cir. 2017) (describing the claimed “authentication server,”
“access server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting and
data-presenting limitations, e.g., claim 1’s “establishing” and “providing”
limitations. As discussed above, the data-collecting limitations amount to
mere data-gathering steps and require nothing unconventional or significant.
As also discussed above, the data-presenting limitations require no particular
presentation tool and nothing unconventional or significant. Consequently,
the claimed insignificant extra-solution activity does not satisfy the
“inventive concept” requirement. See, e.g., Mayo, 566 U.S. at 79–80; Flook,
437 U.S. at 590; Apple, 842 F.3d at 1241–42; OIP Techs., 788 F.3d at
1363–64; CyberSource, 654 F.3d at 1370.
Insofar as Appellant relies on the recited abstract idea to satisfy the
“inventive concept” requirement, Appellant wrongly does so. See, e.g.,
Appeal Br. 8–23; Reply Br. 3–8. A “claimed invention’s use of the
ineligible concept,” e.g., an abstract idea, “cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech, 899 F.3d at 1290. “[U]nder the Mayo/Alice
framework, a claim directed to a newly discovered” abstract idea “cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016).
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Appellant contends that the claimed combination of limitations “is
anything but routine and generic,” as “underscored by the Examiner’s failure
to cite any prior art disclosing these limitations.” Appeal Br. 24; see Reply
Br. 8–11. But the absence of anticipation and obviousness “does not resolve
the question of whether the claims embody an inventive concept” under
Mayo/Alice step two. Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d
at 1163. “The search for a § 101 inventive concept” differs “from
demonstrating § 102 novelty.” Synopsys, 839 F.3d at 1151; see Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017). “The ‘novelty’ of any element[s] or steps” in a claim or
even the claim itself “is of no relevance in determining whether the subject
matter of a claim” satisfies § 101. Diehr, 450 U.S. at 188–89.
Appellant quotes PTO guidance about Berkheimer.4 Reply Br. 9–10.
Appellant then asserts that the Examiner “cites no support (evidentiary or
otherwise) for its conclusion that the pending claims ‘merely amount to the
application or instructions to apply [customizing a user interface in
accordance with user preferences] on a computer . . . .’” Id. at 10; see id.
at 12–13.
But Appellant concedes that a “citation to one or more . . . court
decisions” may demonstrate that additional elements are well understood,
routine, and conventional to a skilled artisan. Reply Br. 9 (quoting Apr. 19,
2018 USPTO Mem. 4). As discussed above, court decisions have
recognized that generic computer-system components operating to collect,

4 USPTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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manipulate, and display data are well understood, routine, and conventional
to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d
at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Symantec,
838 F.3d at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d
at 715–16; buySAFE, 765 F.3d at 1355.
Appellant contends that “[t]he concern underlying the abstract idea
exception to § 101 is one of preemption.” Appeal Br. 7. Appellant then
asserts that the claims “do not seek to tie up any abstract idea (or even
customized interactions with/at computer equipment in general) such that
others cannot practice it.” Id. at 8; see Reply Br. 2–3.
Appellant’s preemption argument does not persuade us of Examiner
error. While preemption may denote patent ineligibility, its absence does
not establish patent eligibility. See FairWarning, 839 F.3d at 1098. For
claims covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer-system components that perform
generic computer functions and the claimed insignificant extra-solution
activity, we conclude that the combination of limitations in each independent
claim does not supply an “inventive concept” that renders the claim
“significantly more” than an abstract idea. Thus, each claim does not satisfy
§ 101 under Mayo/Alice step two.
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Summary for Independent Claims 1, 19, and 26
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
Dependent Claims 5–7, 10, 23, 25, and 29–31
We also sustain the § 101 rejection of dependent claims 5–7, 10, 23,
25, and 29–31 because Appellant does not argue eligibility separately for
them. See Appeal Br. 7–26; Reply Br. 2–13; 37 C.F.R. § 41.37(c)(1)(iv).
Dependent Claims 2–4, 20–22, 27, and 28
Claims 2–4 depend directly or indirectly from claim 1; claims 20–22
depend directly or indirectly from claim 19; and claims 27 and 28 depend
directly from claim 26. Appeal Br. 38–42. Appellant asserts that claims 2–4
recite “further operations providing for greater security” than claim 1.
Appeal Br. 10 (emphasis omitted). Appellant also asserts that claims 20–22,
27, and 28 recite “similar detail[s], limitation[s], and technological
improvement[s], whereby additional enhancements to financial transaction
system terminals and methods of electronically interacting therewith are
realized.” Id. at 11.
Appellant’s assertions do not persuade us of Examiner error because
the dependent claims merely narrow the abstract idea recited in each
independent claim. Dependent claims that merely narrow an abstract idea
“add nothing outside the abstract realm.” SAP Am., 898 F.3d at 1169.
Adding “a degree of particularity” does not save a claim from abstraction.
See Ultramercial, 772 F.3d at 715; see also BSG Tech, 899 F.3d at 1287
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(explaining that “a claim is not patent eligible merely because it applies an
abstract idea in a narrow way”).
Additionally, the dependent claims employ the same generic
computer-system components as the independent claims to perform generic
computer functions, i.e., collecting, manipulating, and displaying data.
Appeal Br. 38–42; see Final Act. 4–5, 15; Ans. 5–8, 11. As with the
independent claims, we conclude that the combination of limitations in each
dependent claim does not supply an “inventive concept” that renders the
claim “significantly more” than an abstract idea.
For the reasons discussed above, dependent claims 2–4, 20–22, 27,
and 28 fail to satisfy § 101 under Mayo/Alice step one and step two. Hence,
we sustain the § 101 rejection of these dependent claims.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–7, 10, 19–23,
and 25–31.
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–7, 10,
19–23, 25–31 101 Eligibility
1–7, 10,
19–23, 25–31
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