Oliver S. C. Quigley et al.

Patent Trials and Appeals Board

Oct 17, 2019

15169260 - (D) (P.T.A.B. Oct. 17, 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.
15/169,260 05/31/2016 Oliver S. C. Quigley SQR-10795-3;SQ-0032-
US1C2
7468
129981 7590 10/17/2019
Mattingly & Malur, PC - Square
1800 Diagonal Road, Suite 210
Alexandria, VA 22314
EXAMINER
CHOO, JOHANN Y
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
cbarnitz@mmiplaw.com
ptomail@mmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER S. C. QUIGLEY, NATHAN MCCAULEY, and
BOB LEE
Appeal 2018-005781
Application 15/169,260
Technology Center 3600
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 22–34. Final Act. 1. Claims
7–21 were subject to a restriction requirement and have been canceled.
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(a) (2017). Appellant identifies the real party in interest as
Square, Inc. (App. Br. 1).
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CLAIMED SUBJECT MATTER
The claims are directed to a software PIN entry. The Specification
further discloses:
The PIN can be entered on a touch display of the mobile
computing device. This permits the mobile device to be a
common consumer device, e.g., an iPhone or iPad. When the
card reader is attached to the mobile device, e.g., plugged into
the audio port, an application installed on the mobile computing
device permits the mobile device to communicate with the card
reader in order to process transactions.
(Spec. ¶ 6).
Claim 28, reproduced below, is illustrative of the claimed subject
matter:
28. A method comprising:
displaying on a display of a merchant device, by a
merchant point-of-sale (POS) application, when executed by one
or more processors of the merchant device, a user interface for
entry of a personal identification number (PIN);
receiving, by the merchant POS application, when
executed by the one or more processors, input via the user
interface, wherein the input represents a PIN;
encrypting, by the merchant POS application, when
executed by the one or more processors, the PIN using a copy of
a first cryptographic key stored on the merchant device, wherein
the first cryptographic key is a symmetric key shared between a
card reader and the merchant POS application;
transmitting, by the merchant POS application, when
executed by the one or more processors, the encrypted PIN to the
card reader;
receiving, by the card reader, the encrypted PIN from the
merchant device;
decrypting, by the card reader, the encrypted PIN using a
copy of the first cryptographic key stored on the card reader;
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transmitting, by the card reader, the decrypted PIN to a
card coupled to the card reader;
receiving, by the card reader, from the card, an approval of
the PIN;
encrypting, by the card reader, using a second
cryptographic key stored on the card reader, a message for the
merchant device to generate an encrypted message for the
merchant device;
transmitting, by the card reader, an encrypted message to
the merchant device in response to receiving the approval of the
PIN from the card;
receiving, by the merchant POS application, when
executed by the one or more processors, the encrypted message
from the card reader; and
transmitting, by the merchant POS application, when
executed by the one or more processors, the encrypted message
to a payment processing server.

REFERENCES
The prior art relied upon by the Examiner is:
Kageyama US 2004/0096188 A1 May 20, 2004
Kohan et al. US 2005/0256742 A1 Nov. 17, 2005
Adams et al. US 2008/0017711 A1 Jan. 24, 2008
Tang et al. US 2012/0061467 A1 Mar. 15, 2012
Quigley et al. US 9,367,842 B2 June 14, 2016
(applied in the obviousness-type double patenting rejection)
REJECTIONS
Claims 1–6 stand rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1–6 and 9 of U.S.
Patent No. 9,367,842 (Quigley).
Claims 1–6 and 22–34stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter.
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Claims 1, 2, 6, 22, 23, 27, 28, 29, 33, and 34 stand rejected under
35 U.S.C. § 103 as being unpatentable over Tang in view of Adams.
Claims 3, 24, and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tang in view of Adams as applied to claim 1 in further
view of Kageyama.
Claims 4, 5, 25, 26, 31, and 32 stand rejected under 35 U.S.C. § 103
as being unpatentable over Tang in view of Adams as applied to claim 1 in
further view of Kohan.
OPINION
Obviousness-Type Double Patenting
With respect to claims 1–6, the Examiner generally maintains that
although the claims at issue are not identical, they are not patentably distinct
from each other because the claims of the current application are obvious
variations or are an obvious variation of a combination of the claims of
Patent No. 9,367,842. (Final Act. 13). The Examiner also maintains that
removing the “preventing” step from the patented claim 1 does not change
the overall process of the current claims and the current claims recite very
similar processes. (Ans. 9). The Examiner further maintains that:
all of these processes are found in the current claims with merely
obvious variations. Variations such as having the card
authenticate the PIN and send a response is merely a combination
of typical EMV processes, as already discussed above as being
conventional, and forwarding such information to the merchant
device, which already falls within the claimed step of receiving
further information form the card reader and continuing
communications.
(Ans. 9).
Appellant contends that the Examiner makes unsupported allegations
and conclusions based on, e.g., the claims allegedly “recit[ing] similar
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processes,” and the Examiner has failed to provide any evidence to support
the assertion that the differences between Appellant’s claims 1–6 and the
patented claims of are not patentably distinct. (App. Br. 14–15).
We agree with Appellant that the Examiner’s rejection is based upon
unsupported allegations where the Examiner has not provided evidence to
support the Examiner’s findings and obviousness conclusion. The Examiner
has relied upon the claims of the prior patent and not provided any additional
documentary evidence to support the Examiner’s factual findings and
obviousness conclusion. Also, the Examiner has rejected the claimed
“system” of the present claims based upon the “method” claims 1–6 and an
additional “system” in dependent claim 9 of the 9,367,842 patent where all
the limitations of the claims of the 9,367,842 patent are directed to process
limitations at the mobile device rather than the combination of a mobile
device and card reader as recited in the rejected claim 1.
Furthermore, the Examiner maintains “[v]ariations such as having the
card authenticate the PIN and send a response is merely a combination of
typical EMV processes, as already discussed above as being conventional.”
(Ans. 9) (emphasis added). The Examiner has not provided or relied upon
any additional teachings or disclosures to support the Examiner’s proffered
obvious modifications of the claims of the 9,367,842 patent.2 Additionally,

2 We leave it to the Examiner to further consider prior art of record in the
9,367,842 patent in consideration of any further obviousness-type double
patenting rejection or obviousness rejection. For example, “A Guide to
EMV-Version 1.0,” EMVCo LLC, dated May 2011, pp. 1–35; “MasterCard
PayPass, Terminal Implementation Requirements,” Mastercard Worldwide,
2007 v. 1, dated Sept. 10, 2015, pp. 1–62; and Fillmore, P., “Mobile and
Contactless Payment and Security,” v20111118, Witham Laboratories, dated
Nov. 18, 2011, pp. 1–39. (Filed in an IDS on December 14, 2015 in the
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the Examiner has not identified any specific correlation between any of the
rejected dependent claims and the patented claims. As a result, we do not
sustain the nonstatutory obviousness-type double patenting rejection of
claims 1–6.

35 U.S.C. § 101
With respect to the patent eligibility rejection of independent claims 1,
22, and 28, Appellant argues the claims together and addresses independent
claim 1. We select independent claim 28 as the representative claim for the
group because it more clearly shows the sequence of steps in order within
the claimed process and will address Appellant’s arguments thereto.
See 37 CFR 41.37 (c)(1)(iv).
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. (App. Br. 33–48; Reply
Br. 5–13). Appellant’s general contention is that the Examiner’s
characterization discounts the scope and character of Appellant’s
claims. Appellant respectfully submits that the Examiner has
failed to consider the claims as a whole and, in the above
analysis, has cherry picked some elements of Appellant’s claims
to support the Examiner’s position, while completely ignoring
other specific elements of Appellant’s claims that clearly direct
Appellant’s claims to an improvement in the function of a
computing system.

(App. Br. 37; Reply Br. 7–8). Appellant further contends that:

in the discussion of the rejections under 35 U.S.C. § 103, none
of these elements are taught or suggested by the prior art. Thus,
Appellant’s claim provides a non-conventional and non-generic

prosecution history of patent 9,367,842 and filed in an IDS in this
application on June 15, 2016).
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system and method for protecting a PIN from being capture by a
malicious actor, which improves the security of the system and
thereby provides a technical solution to a technical problem
rooted in computer technology. As stated in Enfish, “[s]oftware
can make non-abstract improvements to computer technology
just as hardware improvements can.” See Enfish, 822 F.3d at
1339.[3] Abstraction is avoided or overcome when a proposed
new application or computer-implemented function is not simply
the generalized use of a computer as a tool to conduct a known
or obvious process, but instead is an improvement to the
capability of the system as a whole. Id. at 1336.

(App. Br. 37; see generally Reply Br. 8–11). Appellant also contends that
“[t]he claimed invention is directed to an improvement in the security of
communications between a card reader, a mobile device, a payment card,
and a server when performing a payment transaction, and thereby improves
the security of the devices themselves and the data thereon.” (App. Br. 38;
see generally Reply Br. 11). Appellant argues that the claimed invention:
pertains to electronically encrypting and decrypting sensitive
information transmitted between a computing device, a card
reader, and a payment card during a transaction using encryption
of a personal identification number (PIN) to protect the PIN from
exposure to malware or other malicious code. Without the
techniques described in Appellant’s claims, the PIN may be
stolen or otherwise compromised. Thus, Appellant’s Claim 1
includes an improvement in the security function of the
computing device and the card reader.
(App. Br. 38; see generally Reply Br. 11). We find Appellant’s arguments
unpersuasive.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised

3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
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guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016) (internal citations omitted). Per Office Guidance,
this first inquiry has two prongs of analysis (i) does the claim recite a
judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim passes muster under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; 84 Fed. Reg. at 56.

Step 2A, Prong One
For the reasons discussed below, we conclude Appellant’s claim 28
recites an abstract idea. Appellant’s claims generally recite a “method”
comprising: i) encrypting the PIN; ii) decrypting, by the card reader, the
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encrypted PIN using a copy of the first cryptographic key stored on the card
reader; iii) encrypting, by the card reader, using a second cryptographic key
stored on the card reader, a message for the merchant device to generate an
encrypted message for the merchant device.4 This is consistent with how
Appellant describes the claimed embodiment of the invention. (See, e.g.,
description of Figures 3–6, 9–11; Spec. ¶¶ 3, 29, 30, 46, 49, 55, 56, 59, 60,
64, 77–81, 86). (See App. Br. 6–7 Summary of the Claimed Subject Matter).
The Examiner maintains that:
all of these limitations amount to merely sending/receiving
transaction data in a process that is utilized in smartcard financial
processes in a conventional manner with the added use of
encryption, which is also conventional for financial transactions.
That is, the claims are directed to managing financial data in
order to process a transactions, and this process is performed as
just a combination of abstract ideas, e.g. processing information
through a clearinghouse, comparing old and new data,
transforming one form of data to another, etc. such a combination
of abstract ideas does not cause the claims to overcome the
individual abstract ideas, as the combination of abstract ideas is
still abstract.

(Ans. 6).

Moreover, the Federal Circuit holds that claims broadly covering data
collection, communication, and processing are directed to abstract ideas.
See, e.g., Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916
F.3d 1363, 1366–68 (Fed. Cir. 2019); SAP Am., Inc. v. InvestPic LLC, 898

4 We further note that the language of independent claim 28 does not
expressly recite any of the additional processing performed at any of the
hardware devices beyond the encrypting and decrypting steps and the
receiving and transmitting steps.

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F.3d 1161, 1164–67 (Fed. Cir. 2018); Secured Mail Sols. LLC v. Universal
Wilde, Inc., 873 F.3d 905, 907–08, 910–11 (Fed. Cir. 2017); Credit
Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d
1100, 1108-09 (Fed. Cir. 2017); RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326–27 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1339–41 (Fed. Cir. 2017). As the Federal
Circuit has explained, “[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.
Claim 28 is reproduced below and includes the following claim
limitations, emphasized in italics, which recite a generic method encrypting
the PIN, decrypting the encrypted PIN and encrypting a message:
A method comprising:
displaying on a display of a merchant device, by a
merchant point-of-sale (POS) application, when executed by one
or more processors of the merchant device, a user interface for
entry of a personal identification number (PIN);
receiving, by the merchant POS application, when
executed by the one or more processors, input via the user
interface, wherein the input represents a PIN;
encrypting, by the merchant POS application, when
executed by the one or more processors, the PIN using a copy of
a first cryptographic key stored on the merchant device, wherein
the first cryptographic key is a symmetric key shared between a
card reader and the merchant POS application;
transmitting, by the merchant POS application, when
executed by the one or more processors, the encrypted PIN to the
card reader;
receiving, by the card reader, the encrypted PIN from the
merchant device;
decrypting, by the card reader, the encrypted PIN using a
copy of the first cryptographic key stored on the card reader;
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transmitting, by the card reader, the decrypted PIN to a
card coupled to the card reader;
receiving, by the card reader, from the card, an approval of
the PIN;
encrypting, by the card reader, using a second
cryptographic key stored on the card reader, a message for the
merchant device to generate an encrypted message for the
merchant device;
transmitting, by the card reader, an encrypted message to
the merchant device in response to receiving the approval of the
PIN from the card;
receiving, by the merchant POS application, when
executed by the one or more processors, the encrypted message
from the card reader; and
transmitting, by the merchant POS application, when
executed by the one or more processors, the encrypted message
to a payment processing server.

More particularly, the generic method of encrypting the PIN,
decrypting the encrypted PIN, and encrypting a message is a mathematical
concept and consistent with our Office Guidance and case law, we conclude
that encrypting the PIN, decrypting the encrypted PIN and encrypting a
message is a mathematical concept and, thus, an abstract idea.5 See 84 Fed.
Reg. at 52.

5 Our reviewing court recognizes 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). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[a]n abstract
idea can generally be described at different levels of abstraction . . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
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Step 2A, Prong Two
Because the claim recites an abstract idea, we next determine whether
the claim integrates the abstract idea into a practical application. 84 Fed.
Reg. at 54. To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
recognized practical application. 84 Fed. Reg. at 54–55 (emphasis added);

1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).

Thus, the patentability analysis in this Appeal does not turn on exactly
how various limitations are characterized as being abstract, i.e., as either an
abstract “mathematical concept,” “mental process,” or “certain methods of
organizing human activity.” For example, the decrypting and encrypting
limitations can alternatively be characterized as mathematical concepts
claimed at a high level, and can be characterized as reciting mental
processes. The end result remains the same in this Appeal. The claim
recites an abstract idea.

See also, SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical
calculations based on selected information’’ are directed to abstract ideas);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing
information through mathematical correlations’’ are directed to an abstract
idea); Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a
stable value protected life insurance policy by performing calculations and
manipulating the results’’ as an abstract idea).

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see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–
(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55.
Rather, the steps of “displaying on a display of a merchant device, by
a merchant point-of-sale (POS) application, when executed by one or more
processors of the merchant device, a user interface for entry of a personal
identification number (PIN),” “receiving, by the merchant POS application,
when executed by the one or more processors, input via the user interface,
wherein the input represents a PIN,” “transmitting,” and “receiving” indicate
such activity is the type of extra-solution activities (i.e., in addition to the
judicial exception) the courts have determined insufficient to transform
judicially excepted subject matter into a patent-eligible application. See
MPEP § 2106.05(g); see Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016) (explaining that “selecting information, by
content or source, for collection analysis, and display does nothing
significant to differentiate a process from ordinary mental processes”); Elec.
Power, 830 F.3d at 1354 (recognizing “that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis”); Bancorp Servs., L.L.C. v.
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Sun Life Assur. Co. of Can., 771 F.Supp.2d 1054, 1065 (E.D. Mo. 2011)
aff’d, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving,
and providing data . . . are inconsequential data gathering and insignificant
post solution activity”).
Contrary to Appellant’s arguments (see, e.g., Reply Br. 7–8), the
claims are not directed to a technological improvement or improvement in
the function of a computing system. Although Appellant characterizes the
claimed invention as “a nonconventional and non-generic system and
method for protecting a PIN from being capture[d] by a malicious actor,
which improves the security of the system and thereby provides a technical
solution to a technical problem rooted in computer technology,” Appellant
does not identify the technological “problem” being solved, but merely uses
conventional encryption in its usual manner. (See Reply Br. 8). The
purported improvement, however, relates to the abstract idea, and does not
improve a computer, technology, or a technical field. See McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
(“We . . . look to whether the claims in these patents focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.”) (citing Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016)). Further, Appellant does not explain
how the “method [for protecting a PIN]” recited in claim 28, for example, is
not merely the routine or conventional use of the encryption and decryption
(mathematical processing). See DDR Holdings, 773 F.3d at 1258–59 (“We
caution, however, that not all claims purporting to address Internet-centric
challenges are eligible for patent.”).
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Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not generic. Receiving or sending
information (e.g., the steps of “displaying on a display of a merchant device,
by a merchant point-of-sale (POS) application, when executed by one or
more processors of the merchant device, a user interface for entry of a
personal identification number (PIN),” “receiving, by the merchant POS
application, when executed by the one or more processors, input via the user
interface, wherein the input represents a PIN,” “transmitting,” and
“receiving”) merely requires the well understood function of a
computer/computer network. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”). In addition, we note Appellant describes the
components of the claimed invention at a high level of generality and the
components perform generic functions that are well-understood, routine, and
conventional. (See e.g., Spec. ¶¶ 87–96).
We further note that the Specification throughout discloses the use of
encrypting and decrypting data, but provides no corresponding disclosure
beyond “symmetric” and “asymmetric” encryption. (See generally Spec.
¶¶ 8, 50, 74, 80, and 82).
Moreover, Appellant’s Specification discloses “[p]rocessors suitable
for the execution of a computer program include, by way of example, both
general and special purpose microprocessors, and any one or more
processors of any kind of digital computer.” (See Spec. ¶ 92). Additionally,
the claims do not address a problem necessarily rooted in computer
technology or a problem in the software arts. (See App. Br. 38–42; see also
MPEP § 2106.05(a)).
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Here, unlike the claims at issue in DDR Holdings Appellant’s claims
do not address a specific problem arising in the realm of computer networks
(i.e., encrypting and decrypting data does not arise in the realm of computer
networks where the encrypting and decrypting of data is not detailed in the
claims), nor do they improve an existing technological process, but rather
merely use computers and computer devices that operate in their normal,
expected manner. See DDR Holdings, 773 F.3d at 1258–59; see also Enfish,
822 F.3d at 1335–36 (distinguishing between claims wherein the focus of the
claims is on an improvement in computer capabilities and those that invoke
a computer as a tool).
Here, Appellant’s claim 28 merely generally links the use of a judicial
exception to a particular technological environment. That is, although
Appellant’s claims recite hardware components (generic processors, display,
merchant device, user interface, card reader, and payment processing server)
the processors and other computer related devices, are configured to perform
functions a computer would normally be expected to perform, adding
nothing of substance to the underlying abstract idea. Thus, the claims’
limitations are not indicative of “integration into a practical application.”
Rather, the processors and computer devices are readily available computing
elements using their already available basic functions as tools in executing
the claimed process steps. See SAP Am., Inc. v. InvestPic LLC, 898 F.3d
1161 (Fed. Cir. 2018).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.

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Step 2B
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. As discussed above, sending or receiving information (e.g.,
the steps of “displaying on a display of a merchant device, by a merchant
point-of-sale (POS) application, when executed by one or more processors
of the merchant device, a user interface for entry of a personal identification
number (PIN),” “receiving, by the merchant POS application, when
executed by the one or more processors, input via the user interface, wherein
the input represents a PIN,” “transmitting,” and “receiving”) merely requires
the well-understood function of a computer/computer network. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
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a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”). Moreover,
Appellant’s recitation of the claim limitations and conclusory statement that
the features amount to “significantly more” than just an abstract idea
(see App. Br. 43–48) is not supported by persuasive evidence or reasoning.
It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence).
Because the Specification describes the additional element in general
terms, without describing the particulars, we conclude the claim limitation
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as discussed above.6
Additionally, to the extent Appellant contends the claims do not seek
to tie-up (i.e., preempt) an abstract idea (see App. Br. 48; Reply Br. 13), we
are unpersuaded of Examiner error. “‘[W]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.’” FairWarning IP, 839 F.3d at 1098 (Fed.
Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015)); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt

6 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). Further, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1– 6 and
22–34 under 35 U.S.C. § 101. See 37 CFR. § 41.37(c)(1)(iv).

35 U.S.C. § 103
With respect to independent claims 1, 22, and 28, we address
independent claim 1 as the illustrative claim for the group because it
correlates with Appellant’s arguments, and we address Appellant’s
arguments thereto.
With respect to illustrative claim 1, Appellant contends that the
Examiner has provided mere conclusory statements in an attempt to meet the
recitations of independent claim 1, but has not provided any objectively
verifiable evidence in support of the interpretation. (App. Br. 10).
Appellant further contends that “the Office has failed to cite any reference
that teaches or suggests a card reader that decrypts an encrypted PIN, let
alone a card reader that receives the encrypted PIN from a merchant device
and decrypts the encrypted PIN using a copy of a first cryptographic key
stored on the card reader.” (App. Br. 12; Reply Br. 2–3).
The Examiner merely identifies that the MCU in the Tang reference is
used to convert data that is originally in an encrypted format, and it would
have been received in an encrypted format. (Ans. 3–4). We agree with the
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Appellant that the Examiner has not shown that the card reader in the Tang
reference decrypts the PIN data or suggests decrypting the PIN data.
Additionally, Appellant contends that the Examiner fails to cite any
portion of the Tang or Adams references that teaches or suggests at least
“the card reader configured to ... transmit the PIN to a card coupled to the
card reader, [and] receive an approval of the PIN from the card.” (App.
Br. 18–19). Appellant further contends that “there are numerous different
types of EMV standards used by these companies, and these standards are
periodically being updated and changed. Appellant also contends that the
Examiner has failed to point to any particular EMV standard or any other
documentary evidence that actually teaches what the Examiner asserts to be
a conventional process.” (Reply Br. 5).
We agree with Appellant that the Examiner has not specifically
provided any documentary evidence to support the Examiner’s findings or
conclusion of obviousness.
Appellant argues that the Examiner has failed to cite any portion of
the Tang or Adams references that teaches or suggests at least “the card
reader configured to ... encrypt a message for the merchant device using a
second cryptographic key stored on the card reader to generate the encrypted
message, and transmit the encrypted message to the merchant device in
response to receiving the approval.” (App. Br. 21–22) (emphasis omitted).
Appellant also argues that the Tang reference merely describes a card reader
that receives a PIN via a keypad and sends the PIN to a device, and the
Examiner has failed to cite any document that teaches or suggests a
merchant device that sends a PIN to a card reader. Appellant further argues
that the Adams reference does not teach a merchant device and card taught
by Adams is not an EMV card and does not use EMV standards. Therefore,
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Appellant argues that the Examiner is making mere conclusions with any
supporting documentary evidence. (Reply Br. 6).
We agree with Appellant that the Examiner has not specifically
provided any documentary evidence to support the Examiner’s findings or
conclusion of obviousness.7
Here, the Examiner’s obviousness rejection is not well supported by
the express disclosures of the Tang and Adams references. Accordingly, we
agree with Appellant the Examiner’s determination that the claimed
invention would have been obvious to a person of ordinary skill in the art is
in error because it is not supported by a preponderance of the evidence. See
In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of
proving non-patentability is by a preponderance of the evidence); see also In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis.”). We will not resort to such speculation or assumptions to
cure the deficiencies in the factual basis in order to support the Examiner’s
obviousness rejection. Consequently, we reverse the obviousness rejection
of illustrative independent claim 1 and its dependent claims 2 and 6 based on

7 We note that the Examiner has identified paragraphs 104 and 105 of the
Tang reference which generally identify sending and receiving cash
payments with the use of a card reader and a cell phone, but the Tang
reference merely identifies “encoding” and “decoding” rather than
“encrypting” and “decrypting” these financial transactions. We leave it to
the Examiner to further consider the additional prior art references identified
above with respect to the obviousness-type double patenting rejection.

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obviousness.8 Independent claims 22 and 28 contain similar process
limitations as independent claim 1. As a result, we reverse the obviousness
rejection of claims 22 and 28 and their respective dependent claims 23, 27,
29, 33, and 34 based upon the noted deficiency in the Examiner’s
obviousness rejection.
With respect to dependent claims 3–5, 24–26, and 30–32, the
Examiner has not identified how the additional prior art references remedy
the deficiency in the obviousness rejection as noted above, and we cannot
sustain the obviousness rejection of these claims for the same reason.
DECISION
We reverse the Examiner’s obviousness-type double patenting and
obviousness rejections, but we affirm the Examiner’s patent-ineligible
subject matter rejection.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–6 Nonstatutory
obviousness-type
double patenting
1–6
1–6 and 22–
34
101 1–6, 22–34

8 We do not opine herein on whether the steps identified by the Examiner
would have been obvious based upon the proffered unsupported statements,
but find that the Examiner has not provided documentary evidence to
support this conclusion. We leave it to the Examiner to further consider this
issue in any further prosecution on the merits. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP § 1213.02.
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 6, 22,
23, 27, 28,
29, 33, 34
103 Tang and Adams 1, 2, 6, 22, 23,
27–29, 33, 34
3–5, 24–26,
30–32
103 Tang and Adams
in view of
Kageyama or
Kohan
3–5, 24–26,
30–32
Overall
outcome
1–6, 22–34

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