O'Neill, Darryl S.

Patent Trials and Appeals Board

Sep 27, 2019

12880212 - (D) (P.T.A.B. Sep. 27, 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.
12/880,212 09/13/2010 Darryl S. O'Neill 09-700.00 8682
107681 7590 09/27/2019
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DARRYL S. O’NEILL1
____________________

Appeal 2018-007700
Application 12/880,212
Technology Center 3600
____________________

Before DEBORAH KATZ, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
server based method of registering banking and customer information as part
of enrollment for electronic banking services, which have been rejected as
being directed to a judicial exception to patent-eligible subject matter
without significantly more. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the Real Party in Interest as NCR Corporation.
(Appeal Br. 2.)
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STATEMENT OF THE CASE
According to the Specification,
[r]egistering a bank account for electronic banking
services, such as electronic deposits or electronic
payments, is typically performed by a financial
institution requesting a customer wishing to register to
send a void check. The financial institution extracts
information from this void check (account number and
bank number) and uses the extracted information to
enroll that customer.
(Spec. 1:5–9.) The Specification states that “[i]t would be desirable to make
this process quicker, easier, and/or more efficient.” (Id. at 10–11.)
Claims 1–7 and 16–24 are on appeal. Claim 1 is illustrative and
reproduced below:
1. A server based method of registering banking and
customer information as part of enrolment for electronic
banking services, the method comprising:
receiving from a customer seeking to enroll for the
electronic banking services a transmitted image of a blank
check of the customer by the server, wherein receiving further
includes receiving the image as two images in a sent-message
from the customer with a first image being a front image of the
blank check and a second image being a rear image of the blank
check;
locating the banking information from a portion of the
transmitted image containing a magnetic ink character
recognition line by the server;
performing optical character recognition to automatically
extract the banking information by the server;
locating customer name and customer address
information for the customer from a customer field of the image
identifying a payer of the blank check;
performing optical character recognition to automatically
extract a customer name and a customer address from the
customer name and customer address information by the server;
marking the front image with a word “VOID”; and
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processing the banking information and the customer
name and the customer address for enrolling the customer for
the electronic banking services by the server by interacting with
an enrollment program downloaded on a device of the customer
that prompts the customer to take an image of the blank check
using a camera of the device and in response thereto correctly
orienting the image of the check, and interacting, by the server,
with the customer through the enrollment program for obtaining
a Uniform Resource Locator (URL) link from the customer for
sending, by the server, subsequent check images, captured by
the enrollment program, wherein at least one electronic banking
service includes registering a particular check of the customer
to a third party account, and wherein the URL link is an address
to the at least one electronic banking service.
(Appeal Br. 12 (Claims App.).)
The Examiner rejects claims 1–7 and 16–24 under 35 U.S.C. § 101 as
being directed to a judicial exception to patent-eligible subject matter
without significantly more. (Ans. 3.)

DISCUSSION
Issue
The Examiner concludes that claim 1 is directed to
enrolling the customer for the electronic banking services
by interacting with an enrollment program that prompts
the customer to take an image of the blank check,
sending subsequent check images using a Uniform
Resource Locator (URL) link addressed to the at least
one electronic banking service, and registering a
particular check of the customer to a third party account.
(Ans. 4.) The Examiner concludes that claim 1 is thus directed to subject
matter similar to those previously found by courts to be abstract ideas in,
e.g., Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
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and FairWarning IP LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016).
(Id. at 4–6.) The Examiner further finds that the additional elements of
claim 1, whether taken individually or as an ordered combination, are “well-
understood, routine, and conventional elements that amount to no more than
implementing the abstract idea . . . with a computerized system.” (Id. at 6.)
Appellant contends that claim 1 is not directed to an abstract idea
because the “claim[] recite[s] a specific means or method for determining
how to enroll a customer for a service and not directed to the effect, which is
enrollment in the service.” (Appeal Br. 8–9; see also Reply Br. 2, 3–4.)
Appellant contends that “the features recited in claim 1 present an
improvement ‘in computers as tools.’” (Appeal Br. 9; see also Reply Br. 2–
3.) Appellant also contends that, to the extent claim 1 is directed to an
abstract idea, claim 1 “recites ‘significantly more,’” because (1) “the
improvements recited by claim 1 address problems that arise with existing
computing processing associated with enrolling a customer in a banking
service”; (2) the Examiner has not made any prior art rejections; and (3)
“there was no existing human-based activity that was performing the
[claimed] method.” (Appeal Br. 9–10; see also Reply Br. 2, 4.)
Appellant does not separately argue the claims. We therefore limit
our analysis to claim 1 as representative. The issues with respect to this
rejection are (1) whether claim 1 is directed to a patent-ineligible concept
(i.e., a law of nature, a natural phenomenon, or an abstract idea) and, if so,
(2) whether claim 1 contains elements that, individually or as an ordered
combination, transform the nature of the claim into a patent-eligible
application.

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Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 101 (Final Act. 2–6; Ans. 3–11) and agree that claim 1 is unpatentable as
being directed to a judicial exception without significantly more. Only those
arguments timely made by Appellant in the briefs have been considered;
arguments not so presented in the briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”). We highlight
the following points for emphasis.
We analyze this case under the framework the Supreme Court set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012) and applied in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208 (2014). As the Supreme Court explained in Alice:
In Mayo . . . , we set forth a framework for distinguishing
patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, we determine
whether the claims at issue are directed to one of those
patent-ineligible concepts. . . . If so, we then ask,
“[w]hat else is there in the claims before us?” . . . To
answer that question, we consider the elements of each
claim both individually and “as an ordered combination”
to determine whether additional elements “transform the
nature of the claim” into a patent-eligible application.
. . . We have described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that
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the patent in practice amounts to significantly more than
a patent upon the [ineligible concept] itself.”
Id. at 217–218.
Whether Claim 1 Is Directed to Patent-Ineligible Concept
We begin with the first step of the Mayo test, namely whether a claim
is “directed to” a patent-ineligible concept. On January 7, 2019, the Director
of the USPTO issued the “2019 Revised Patent Subject Matter Eligibility
Guidance” (“Revised Guidance”), which provides further details regarding
how the Patent Office analyzes patent-eligibility questions under 35 U.S.C.
§ 101. 84 Fed. Reg. 50–57 (Jan. 7, 2019). Under the Revised Guidance, the
first step of the Mayo test (i.e., Step 2A of the Revised Guidance) is “a two-
pronged inquiry.” Id. at 54. In prong one, we evaluate whether the claim
recites a judicial exception, such as laws of nature, natural phenomena, or
abstract ideas. Id. If the claim recites a judicial exception, the claim is
further analyzed under prong two, which requires “evaluat[ion of] whether
the claim recites additional elements that integrate the exception into a
practical application of that exception.” Id. The Revised Guidance explains
that, “[i]f the recited exception is integrated into a practical application of
the exception, then the claim is eligible at Prong Two of . . . Step 2A [of the
Revised Guidance].” Id.

Prong One of Step 2A of Revised Guidance
Following the Revised Guidance, we first consider whether claim 1
recites a judicial exception such as an abstract idea. We agree with the
Examiner that claim 1 recites an abstract idea. (Ans. 4.)
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Courts have held that patent-ineligible abstract ideas include certain
methods of organizing human activity, such as fundamental economic
practices, commercial or legal interactions, and managing personal behavior
or relationships or interactions between people. See, e.g., Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611. Abstract ideas also include mental
processes, including subject matter that covers performance in the mind but
for the recitation of generic computer components. Gottschalk v. Benson,
409 U.S. 63, 69 (1972); Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that computer-
implemented method for “anonymous loan shopping” was an abstract idea
because it could be “performed by humans without a computer).
We find that all the steps of claim 1, collectively as an ordered
combination, recite a method of “registering banking and customer
information as part of enrolment for electronic banking services,” which is a
method of organizing human activity (e.g., commercial interactions) similar
to other concepts that have been identified by the courts as abstract. See,
e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed.
Cir. 2017) (citing Alice and Bilski and holding that claims directed
processing an application for financing a purchase to be patent-ineligible).
In particular, claim 1 on appeal is similar to the claims at issue in
Bilski and Alice, in that it is directed to a computer-implemented method for
carrying out a process that was widespread long before computers, the
Internet, and electronic banking: the process of enrolling a customer for a
banking service. For instance, the Specification states that, prior to the
claimed invention, registering a bank account for electronic banking services
involves a financial institution “requesting a customer wishing to register to
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send a void check, . . . extract[ing] information from this void check . . . [,]
and us[ing] the extracted information to enroll that customer,” which are
essentially the steps recited in claim 1, performed manually.
In other words, as in Mortgage Grader, “[t]he series of steps covered
by [claim 1] . . . could all be performed by humans without a computer.”
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324 (Fed. Cir. 2016). More particularly, the steps of claim 1 correspond to
the electronic versions of:
• asking for and receiving a blank check from a customer wishing to
enroll in a banking service (“prompt[ing] the customer to take an
image of the blank check,” “receiving . . . a transmitted image of a
blank check of the customer,” and “orienting the image of the
check”);
• reading the banking and personal information from the check
(“locating” and “extract[ing]” the “banking information” and
“customer name and customer address information”);
• voiding the check (“marking the front image with a word
‘VOID’”);
• receiving address information regarding the bank (“obtaining a
Uniform Resource Locator (URL) link from the customer . . .
wherein the URL link is an address to the at least one electronic
banking service” );
• sending the blank checks and/or the banking and personal
information to the bank (“sending . . . subsequent check images”);
and
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• enrolling the customer in the banking service (“processing banking
information and the customer name and . . . address for enrolling
the customer,” “registering a particular check of the customer to a
third party account”).
Furthermore, we note that among the above steps there are also those that
may be performed entirely in the human mind, for instance “locating” and
“extract[ing]” the “banking information” and “customer name and customer
address information.”
Thus, we agree with the Examiner that claim 1 recites an abstract
idea: the claimed method recites mental processes that can be performed by
humans without a computer and is also among the “methods of organizing
human activity”—specifically, “commercial interactions” such as “business
relations” —that have been recognized as abstract ideas. See 84 Fed. Reg. at
52.
Prong Two of Step 2A of Revised Guidance
Although claim 1 recites an abstract idea, it would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception”; i.e., whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception.” 84 Fed. Reg. at 54. This
analysis includes “[i]dentifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
One of the “examples in which a judicial exception has not been
integrated into a practical application” is when “[a]n additional element . . .
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merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” Id. at 55. See
also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2015)
(stating that “[t]he Court in Alice made clear that a claim directed to an
abstract idea does not move into section 101 eligibility territory by ‘merely
requir[ing] generic computer implementation’”) (alteration in original).
We agree with the Examiner that claim 1 does not integrate the recited
abstract idea into a practical application, because the recited functions of
“receiving . . . transmitted image[s],” “locating . . . information . . . from . . .
the transmitted image,” “extract[ing] . . . information,” “marking the . . .
image,” “processing . . . information,” “interacting with [a remote
program],” “orienting the image,” “sending . . . image,” and “registering” an
image/information to an account are all conventional functions of a
computer.
Claim 1 itself recites only generic hardware and software elements
such as a server, “a device of the customer” having a camera, and an
“enrollment program.” Consistent with claim 1, the Specification does not
describe the claimed method as requiring any unconventional computer
functionality. See, e.g., Spec. 8–12. Thus, the claimed method does not use
the recited abstract idea in conjunction with a particular machine or
manufacture, nor does it reflect a technical improvement to the recited
computer functions: receiving, sending, and manipulating images; locating,
extracting, and processing information from the images; and interacting with
remote devices.
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In summary, claim 1 recites an abstract idea and does not integrate the
abstract idea into a practical application. Therefore, claim 1 is directed to an
abstract idea.
Whether Claim 1 Amounts to “Significantly More”
Finally, the Revised Guidance directs us to consider whether claim 1
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known in the industry, specified
at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
Here, the only elements recited in claim 1, other than the abstract idea
itself, are a server, a “sent-message from the customer with a first image
being a front image of the blank check and a second image being a rear
image of the blank check,” information encoded in a magnetic ink character
recognition line and the extraction of information by optical character
recognition, and an enrollment program downloaded onto a device of the
customer, which device contains a camera.
The Specification makes clear that no unconventional technology is
required for the device of the customer used in this method. For instance,
the Specification states that the device of the customer described in claim 1
may be a cell phone comprising “conventional cell phone components.”
(Spec. 8:19–24.) The Specification also suggests that no unconventional
technology is required for server and other claim elements recited above.
The Specification describes the server and the enrollment program only in
functional terms (id. at 8–12) and also states that “[s]oftware is available that
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can perform” the function of “extract[ing] the . . . check image from the
image captured by the camera [of the customer’s device] and correctly
orient[ing] the . . . check image” (id. at 9:15–21).
Thus, the Specification does not describe any unconventional features
of either the server, the customer device, or the enrollment program. And, as
discussed above, claim 1 does not recite, and the Specification does not
describe, any unconventional computer hardware or software as being
needed for the claimed method. Therefore, claim 1 requires using only a
generic computer system, and “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 223. The combination of elements recited in
the method of claim 1 does not amount to significantly more than the
judicial exception itself, and under 35 U.S.C. § 101 the claimed method is
ineligible for patenting.
Appellant’s Arguments
Appellant contends that claim 1 is not abstract because it is “not
directed to the result (enrollment in a service)” but rather “recites specific
features, limitations, and processing context for an improved way in which a
device terminal is operated by a customer and provided real-time specific
information for enrolling in the banking service.” (Appeal Br. 8–9.)
Appellant contends that “[r]ead in its entirety, the features recited in claim 1
present an improvement ‘in computers as tools.’” (Id. at 9.)
We are not persuaded. The fact that a claim is directed to more than a
result does not remove the claim from the realm of abstract ideas. The claim
found to be patent-ineligible in Alice, for instance, does not merely recite the
result of intermediated settlement but also recites specific steps such as
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“creating a shadow credit record and a shadow debit record” for each
stakeholder party, “obtaining . . . a start-of-day balance for each shadow
credit record and shadow debit record,” “for every transaction resulting in an
exchange obligation . . . adjusting each . . . shadow credit record or shadow
debit record” and allowing only transactions meeting certain requirements,
and instructing an exchange institution to “exchange credits or debits to the
credit record and debit record of the respective parties in accordance with
the adjustments of . . . permitted transactions.” Alice, 573 U.S. at 213, n. 2.
Appellant’s citation to Enfish, McRO, and NVIDIA is inapposite.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2018);
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).
Appellant contends that, as in these cases, Appellant’s claims “recite a
specific means or method for determining how to enroll a customer for a
service and not directed to the effect, which is enrollment in the service.”
(Appeal Br. 8–9; see also Reply Br. 3.) However, the claims in those cases
were found to be patent eligible not merely because they recite specific steps
for achieving a result, but because they recite improvements to the way
computers operate or improvements to a relevant technology: The claims in
Enfish are directed to a “self-referential” model of a database that provides
advantages over the traditional “relational” model, Enfish, 822 F.3d at 1333,
1336; McRO’s claims are directed to “automatic use of rules of a particular
type” that do not merely “use a computer as a tool to automate conventional
activity” but “allowed computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters,’” McRO, 873
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F.3d at 1313–1314; and the claims in NVIDIA are directed to an improved
computer memory system, NVIDIA, 867 F.3d at 1259.
In contrast, Appellant’s alleged improvement is not to the functioning
of a computer or other technology or technical field, but to the abstract
method of registering information for purposes of enrolling a customer in a
banking service. Such an improvement does not confer patentability to an
otherwise patent-ineligible claim. See Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (affirming unpatentability of
claims that use a computer to improve the performance of price
determination but does not improve the computer’s performance).
In the Reply Brief, Appellant contends that “[a]n improvement does
not have to be only directed to the performance of the computer” and that
adding “[a] new feature function to a computer is not ‘use of a computer as a
tool[]’ but is rather . . . an ‘improvement in a computer as a tool.’” (Reply
Br. 2–3.) Appellant contends that “[t]he present claims provide an
improvement in a device/system as a tool by providing new feature function
that provides a mechanism for enrolling a customer with services through
processing an image of a blank check provided by a device of the customer.”
(Reply Br. 3.)
We are not persuaded. We agree that an improvement that confers
patent eligibility is not limited to an improvement to computer performance
and include improvement to other technology or technical field. However, it
remains the case that any alleged improvement in claim 1 is not to a
technology or technical field. Rather, the improvement is to an abstract
method using conventional computer equipment – i.e., the improvement is
using generic computers (e.g., conventional servers and cell phones) to make
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a previously manual process “quicker, easier, and/or more efficient.” (Spec.
1:5–11.)2
In the Reply Brief, Appellant also complains that the Examiner
changed the alleged abstract idea and that, by “reciting a specific
implementation and copying a large portion of the claim language, the
Examiner has transformed a previously-asserted abstract idea into a specific
implementation which is not an abstract idea.” (Reply Br. 1–2.) Appellant
also contends that, in any event, the claims “still recite additional specific
details that further limit the alleged abstract idea” and that there is thus no
concern of pre-emption. (Id. at 3.)
We are not persuaded. As we discussed above, the fact that a claim
recites specific steps of arriving at a result does not confer patent eligibility
on the claim where these steps merely recite abstract ideas and performance
using conventional computer equipment.3 As to Appellant’s argument

2 Appellant’s citation to McRO, Core Wireless Licensing, Enfish, and
NVIDIA in the Reply Brief remain inapposite. We have already discussed
McRO, Enfish, and NVIDIA above. The claims in Core Wireless Licensing
are directed to “an improved user interface for computing devices, not to the
abstract idea of an index,” because the specific limitations recited in the
claims “disclose[d] a specific manner of displaying a limited set of
information to the user, rather than using conventional user interface
methods to display a generic index on a computer.” Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1362–1363 (Fed.
Cir. 2018) (emphasis added). In contrast, claim 1 uses conventional
computer equipment to perform the steps of the abstract method for
enrolling a customer in a banking service.
3 To the extent Appellant’s complaint is that the Examiner has made a new
ground of rejection in the Answer without designating it as such, we note
that such a complaint is a matter petitionable to the Director, rather
than appealable to the Board. Compare 37 C.F.R. § 1.181 and 37 C.F.R.
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regarding the lack of preemption, we note that, although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant contends that claim 1 does not “simply automate an existing
process” because “enrollment in banking service is not done in real time and
is not done entirely by the customer at a customer operated device.”
(Appeal Br. 10.) Appellant contends that claim 1 is thus “similar to the
situation presented in McRO where there was no existing human-based
activity that was performing the method.” (Id.)
We are not persuaded. As the Specification explains, “[r]egistering a
bank account for electronic banking services . . . is typically performed by a
financial institution requesting a customer wishing to register to send a void
check” and “[t]he financial institution extract[ing] information from this
void check . . . to enroll that customer.” (Spec. 1:5–9.) Such a process
would be performed in “real time” where the customer is enrolling in the
banking service at the bank with the help of a bank teller or at an
intermediary institution. As to Appellant’s argument that prior to the
invention the enrollment would not be done “entirely by the customer at a
customer operated device,” we note that claim 1 does not describe a process
that is done entirely by the customer at a customer operated device – for

§ 41.40(a). Failure to timely file a petition waives any arguments that a
rejection must be designated as a new ground of rejection. 37 C.F.R.
§ 1.181. Furthermore, assuming that the Examiner has made a new ground
of rejection in the Answer, Appellant responded in the Reply Brief to the
substance of the rejection as formulated in the Answer. Accordingly, we
address all the arguments timely presented in the Answer and the Reply
Briefs.
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instance a server is required to receive the information sent by the customer,
which in turn sends the information to the electronic banking service.
Indeed, claim 1 does simply “automate” an existing process, by using
computer equipment (i.e., the customer device such as a cell phone) to
perform a function that would have previously been done manually, i.e., by
the customer handing a voided check to a teller or sending the voided check
to the financial institution through the mail.
Appellant contends that claim 1 also recites “significantly more” than
the alleged abstract idea because “the improvements recited by claim 1
address problems that arise with existing computing processing associated
with enrolling a customer in a banking service.” (Appeal Br. 9.) Appellant
contends that the lack of prior art rejections “evidences that the claims have
to be significantly more.” (Id. at 9–10.) Finally, in the Reply Brief,
Appellant contends that the claims are significantly more than the abstract
idea because they “recite more than the abstract idea itself” and “require
specific data and elements (front and rear images, a single sent message,
etc.) that is processed in a specific manner . . . for purposes of achieving one
limited sub-species of the newly-asserted abstract idea in a specific and
limited implementation.” (Reply Br. 4.)
We are not persuaded for many of the reasons already discussed.
Appellant has not specified what problems in computer processing are
addressed by claim 1.4 Instead, as discussed above and as made clear from

4 As discussed above, Appellant states in the Reply Brief that “[t]he present
claims provide an improvement . . . by providing new feature functions that
provides a mechanism for enrolling a customer with services through
processing an image of a blank check provided by a device of the customer.”
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the Specification, the alleged improvements recited in the claim are at best
improvements to the abstract method of registering information for purposes
of enrolling a customer in a banking service, not improvements to computer
processing. Spec. 1:5–11 (stating that it would be desirable to make the
process of registering a bank account for electronic banking services
“quicker, easier, and/or more efficient”).
We are likewise unpersuaded by Appellant’s argument that the claims
have to be “significantly more” in light of the lack of prior art rejections.
The fact that Appellant’s claim may be novel and nonobvious does not make
the claim eligible for a patent under § 101 where the novelty or inventive
concept is grounded in an abstract idea. See, e.g., Parker v. Flook, 437 U.S.
584, 591–92 (1978).
Finally, we remain unpersuaded by Appellant’s contention that the
claims are significantly more than the abstract idea because they “require
specific data and elements . . . that [are] processed in a specific manner . . .
for purposes of achieving one limited sub-species of the newly-asserted
abstract idea in a specific and limited implementation.” (Reply Br. 4.) As
discussed above, recitation of specific elements do not automatically render
a claim patent-eligible: a step that is abstract (e.g., a mental process) remains
patent-ineligible even if it is “specific”; recitation of elements in addition to
the abstract idea does not confer patent eligibility on an otherwise ineligible
claim, even if the elements are non-abstract and specific, if the elements are
well-understood, routine, and conventional individually and as an ordered

(Reply Br. 3.) This, however, is not a solution to a problem in computer
processing.
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combination; and “the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa, 788 F.3d at 1379.
In the Reply Brief, Appellant also cites Berkheimer v. HP, Inc., 881
F.3d 1360 (Fed. Cir. 2018) and the April 19, 2018 PTO Memorandum
regarding that case (Berkheimer Memorandum) for the proposition that
“whether claims are conventional . . . is a question of fact” and to argue that
“the record does not reflect any factual evidence to support the Examiner’s
opinions and conclusions that the claims are conventional.” (Reply Br. 2.)
More specifically, Appellant contends that “[i]t is not conventional [to] send
two images as a single sent message for both a front and rear of a check, and
it is not conventional to mark a front image of the check with ‘VOID.’” (Id.
at 4.) Appellant further asserts that “the claim as a whole is unconventional
because it is not conventional to enroll a customer in banking services
through a device operated by the customer with interaction to a server,
where that server is not the banking service; rather, a URL link provided is
the banking services.” (Id.)
As an initial matter, these arguments are waived because they were
not presented in the opening brief, thereby denying the Board the benefit of
the Examiner’s response, and no showing of good cause was made by
Appellant to explain why the late argument should be considered by the
Board.5 See 37 C.F.R. § 41.41(b)(2); cf. Optivus Technology, Inc. v. Ion

5 We note that although the Berkheimer Memo was issued on April 19,
2018, after the Appeal Brief was filed on March 23, 2018, Berkheimer itself
was issued February 8, 2018. Furthermore, as to Appellant’s arguments that
certain claim elements are not well-known, routine, and conventional, it has
long been the law that the second step of Section 101 patent eligibility
analysis requires a determination as to whether the claim contains an
inventive concept sufficient to transform the claimed abstract idea into a
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Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief that could have been raised in the
opening brief is waived).
In any event, we are not persuaded by Appellants’ arguments. As
discussed above, the only elements recited in claim 1, other than the abstract
idea itself, are a server, a “sent-message from the customer with a first image
being a front image of the blank check and a second image being a rear
image of the blank check,” information encoded in a magnetic ink character
recognition line and the extraction of information by optical character
recognition, and an enrollment program downloaded onto a device of the
customer, which device contains a camera, and the Specification evidences
that no unconventional technology is required for these elements. (Spec.
8:19–24 (customer device may be a cell phone comprising “conventional
cell phone components”); 8–12 (functional description of server and
enrollment program); 9:15–21 (“[s]oftware is available that can perform” the
function of “extract[ing] the . . . check image from the image captured by the
camera [of the customer’s device] and correctly orient[ing] the . . . check
image”).)
We are likewise unpersuaded by Appellant’s arguments that specific
elements of claim 1 are not well-understood, routine, and conventional. As
to Appellant’s argument that it is not conventional to mark a front image of
the check with “VOID” (Reply Br. 4), we note that the Specification states
that, even prior to the invention, registering a bank account for electronic

patent-eligible application, including whether additional claim elements are
merely well-understood, routine, and conventional activities previously
known to the industry. See, e.g., Alice, 573 U.S. at 221, 225.
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banking services typically involved a financial institution requesting a void
check from the customer (Spec. 1:5–7).
As to Appellant’s argument that “[i]t is not conventional [to] send two
images as a single sent message for both a front and rear of a check” (Reply
Br. 4), we note that sending and receiving information, including images, are
a well-known, routine, and conventional function of a generic computer.
See buySAFE, 765 F.3d at 1355 (“[t]hat a computer receives
and sends information over a network—with no further specification—is not
even arguably inventive”); In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept). The particular
content of the information sent – images of the front and rear of a check –
does not render the step unconventional.
Finally, enrolling a customer in banking services through an
intermediary (e.g., a server) does not confer patent eligibility. Using a
server as an intermediary is well-understood, routine, and conventional.
Merriam-Webster, for instance, defines a server as “a computer in a network
that is used to provide services (such as access to files or shared peripherals
or the routing of e-mail) to other computers in the network.”6
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claim 1. Claims 2–7 and 16–24, which are not separately argued, fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

6 “server.” MERRIAM-WEBSTER, https://www.merriam-
webster.com/dictionary/server (last visited Sept. 13, 2019.)
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TIME PERIOD FOR 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).

AFFIRMED