2020006203 (P.T.A.B. May. 26, 2021)

Performance Loyalty Group Inc.

Patent Trials and Appeals BoardMay 26, 2021

2020006203 (P.T.A.B. May. 26, 2021)

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. 14/012,641 08/28/2013 JEFFREY SHENK 17277.0001US01 5038 23552 7590 05/26/2021 MERCHANT & GOULD P.C. P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER NGUYEN, THUY N ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): USPTO23552@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY SHENK, MICHAEL GORUN, and MITAL BHATT ____________ Appeal 2020-006203 Application 14/012,641 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 1–3 and 6–23, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and ENTER a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Performance Loyalty Group, Inc. Appeal Br. 2. Appeal 2020-006203 Application 14/012,641 2 CLAIMED SUBJECT MATTER The Appellant’s invention relates to “systems and methods of tracking and allocating vendor-tracked benefits, including both loyalty incentives and prepaid goods/services.” Spec. ¶ 16. Claim 1 is the only independent claim on appeal, is representative of the subject matter on appeal, and is reproduced below (with lettered bracketing added for reference). 1. A system comprising: a benefits server comprising a database including stored customer accounts associated with at least two members, the at least two members being independent vehicle servicing entities each having at least one member server, the benefits server configured to: [(a)] communicate with the at least two member servers via a network; [(b)] retrieve a plurality of vehicle transaction records from each of the at least two member servers, each vehicle transaction record being specific to the member from which the transaction record was retrieved, each vehicle transaction record indicative of a good or service provided by the member to a customer of the member and relating to a vehicle associated with the customer, and at least some of the plurality of transaction records containing an operation code, the operation code being predefined by the member at the database prior to receipt of the vehicle transaction records and uniquely representing the member as well as a type of goods and/or services provided to a customer by the member associated with the vehicle, the vehicle transaction record identifying the customer and the operation codes being specific to the member; Appeal 2020-006203 Application 14/012,641 3 [(c)] determine, for each vehicle transaction record, a meaning of the operation code to the member from which the transaction record was retrieved, wherein the operation code and associated value are specific to the member; [(d)] extract customer information from each transaction record; [(e)] search the database for the customer information; [(f)] when the customer information is found in the database, update a customer account in the database with information from the vehicle transaction record, including adjusting an account balance in the customer account based on a predefined value of the goods and/or services as represented by the operation code included in the transaction record; and [(g)] in response to updating a customer account with information from a transaction record based at least in part on the operation code, automatically transmit a message to a member server associated with said customer account. Appeal Br. 23 (Claims App.) REFERENCES The prior art relied upon by the Examiner are: Name Reference Date Bortolin et al. (“Bortolin”) US 8,141,777 B2 Mar. 27, 2012 Berardi et al. (“Berardi”) US 2005/0160003 A1 July 21, 2005 Krajicek et al. (“Krajicek”) US 2009/0006212 A1 Jan. 1, 2009 Seven et al. (“Seven”) US 2009/0048923 A1 Feb. 19, 2009 White et al. (“White”) US 2010/0191594 A1 July 29, 2010 Georgi US 2011/0178861 A1 July 21, 2011 Hassan et al. (“Hassan”) US 2011/0238498 A1 Sept. 29, 2011 Reodica US 2011/0295675 A1 Dec. 1, 2011 LaPorte et al. (“LaPorte”) US 2011/0307318 A1 Dec. 15, 2011 Appeal 2020-006203 Application 14/012,641 4 Name Reference Date Paterson US 2012/0078695 A1 Mar. 29, 2012 Chandrasekaram et al. (“Chandrasekaram”) US 2012/0095820 A1 Apr. 19, 2012 Draper US 2012/0185399 A1 July 19, 2012 Basmajian et al. (“Basmajian”) US 2013/0110607 A1 May 2, 2013 Birsin et al. (“Birsin”) US 2014/0143086 A1 May 22, 2014 Kim et al. (“Kim”) US 2014/0143107 A1 May 22, 2014 Mason et al. (“Mason”) US 2014/0279312 A1 Sept. 18, 2014 REJECTIONS2 Claims 1–3 and 6–23 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Final Act. 3. Claims 1–3, 9–11, and 23 stand rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, and Reodica. Id. at 9. Claims 6 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, and Chandrasekaram. Id. at 21. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Basmajian, and Krajicek. Id. at 23. Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, and Berardi. Id. at 25. Claims 13 and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, and Paterson3. Id. at 18. 2 The rejections are listed in the order of the claims. 3 We consider the Examiner’s inclusion of claim 23 in the heading of this rejection as inadvertent error. Appeal 2020-006203 Application 14/012,641 5 Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Berardi. Id. at 27. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, Berardi, and LaPorte. Id. at 28. Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, Berardi, LaPorte, and Krajicek. Id. at 29–30. Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, Bortolin, and Mason. Id. at 34. Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Birsin. Id. at 30. Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Hassan. Id. at 32. Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Seven. Id. at 26. Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Kim. Id. at 36. OPINION 35 U.S.C. § 101 – Statutory Subject Matter The Appellant presents arguments for all the claims together. See Appeal Br. 8, 21. We thus group all the claims together and select claim 1 as representative of the group, with the rejection of the remaining claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-006203 Application 14/012,641 6 35 U.S.C. § 101 Framework Section 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India Appeal 2020-006203 Application 14/012,641 7 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citations omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2020-006203 Application 14/012,641 8 USPTO Section 101 Guidance We are also guided by U.S. Patent and Trademark Office (“USPTO”) Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update”), incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance,” the guidance “does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.” Id. The Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. at 50. Under USPTO guidance, we first look to whether the claim recites: (1) any judicial exceptions, including laws of nature, natural phenomena, and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong Two”).4 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a Appeal 2020-006203 Application 14/012,641 9 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)). Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56. Step One of the Mayo/Alice Framework Under the first step of the Mayo/Alice framework and Step 2A, Prong One of USPTO guidance, the Examiner determines that claim 1 recites the abstract ideas of communicat[ing,] . . . retriev[ing] a plurality of vehicle transaction records[,] . . . determin[ing], for each transaction record a meaning of the operation code[,] . . . “extract[ing] customer information from the customer transaction data[,] . . . search[ing] the database for the customer transaction data[,] . . . when the customer information is found . . . , updat[ing] a customer account in the database[,] . . . [and] in response to [the] updating . . . , transmit[ting] a message. practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–55; MPEP § 2106.04(d). Appeal 2020-006203 Application 14/012,641 10 Final Act. 4–5 (emphasis omitted). The Examiner determines that these abstract ideas “fall within ‘Certain Methods of Organizing Human Activity’ grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (advertising, marketing or sales activities or behaviors; business relations); . . . managing personal behavior or relationships or interactions between people (including following rules or instructions),” and the “‘Mental Processes’ grouping,” and thus, claim 1 recites an abstract idea. Id. at 5–6; see also Ans. 5, 7–8, 15–18. The Appellant disagrees and contends that under Prong One, the steps performed by the server are not and do not recite abstract ideas of mental processes or organizing human activity, but rather the steps recite technical details. See Appeal Br. 8–13; Reply Br. 4–5, 7. Under Prong Two of USPTO guidance, the Examiner determines that “[t]his judicial exception(s) is/are not integrated into a practical application,” because “[t]he additional element(s) in all of the steps is/are recited at a high-level of generality such that it amounts [to] no more than mere instructions to apply the judicial exception(s) using a generic computer component (i.e., [] a benefits server).” Final Act. 6; see also Ans. 21. The Appellant disagrees and contends that the claim provides “a technical solution to the problem presented in the context of vehicle [records].”5 Appeal Br. 9; see also id. at 11–12, Reply Br. 6–7. The Appellant further contends that the claim improves computer technology. See Appeal Br. 14–15; Reply Br. 7–8. 5 Although the Appellant presents these argument with respect to Prong One of UPSTO Guidance, we consider them under Prong Two of the Guidance. Appeal 2020-006203 Application 14/012,641 11 Under the first step of the Mayo/Alice framework and Step 2A of USPTO guidance, we first determine to what claim 1 is directed, i.e., whether the claim recites an abstract idea and if so, whether the claims are directed to that abstract idea. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claim is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification, including the claim language, that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. Reciting a Judicial Exception The Title of the Specification is “SYSTEMS AND METHODS FOR BENEFITS TRACKING AND ALLOCATION.” Spec. 1. The “BACKGROUND” section of the Specification discusses that problems with existing loyalty systems utilized by business for “rewarding repeat customers” include being “susceptible to fraud” and not “provid[ing] any convenient tracking operation to determine the effectiveness of such promotions.” Spec. ¶ 1. Further, problems associated with existing “systems to encourage customers to pre-pay for goods or services” include customers not “hav[ing] a convenient mechanism for tracking the status of any pre-paid goods or services” purchased, and “businesses hav[ing] limited Appeal 2020-006203 Application 14/012,641 12 ability to determine whether customers will redeem the remaining pre-paid goods or services.” Id. ¶ 2. “[T]his makes it difficult for such businesses to determine an appropriate time at which the business can realize any profit from unredeemed pre-paid goods or services.” Id. The invention ostensibly addresses these problems with “systems and methods of tracking and allocating vendor-tracked benefits, including both loyalty incentives and prepaid goods/services” (id. ¶ 16) that “allow for improved automation and aggregation of benefit programs” (id. ¶ 18) and “for offloading of such benefits (e.g. product incentive, loyalty, or prepayment) systems from members themselves, without incurring substantial non-automated (manual) processing at a central server” (id.). Benefits of the system and method include enabling members to: (1) “quickly track escrow account balances associated with prepaid goods/services”; (2) quickly “realize profit based on unclaimed prepaid goods/services based on such integration”; (3) “automatically adjust profit margins on prepaid goods/services based on the cost of such goods/services at the time each prepaid good or service is redeemed by a customer”; (4) “easily track large numbers of member customers, either at a particular location, across a collection of affiliated locations . . . , and across a wide variety of goods and services”; and (5) “specifically define different types and/or levels of benefits for each good or service provided by that member, irrespective of the identity or brand of the good or service.” Id. ¶ 87. In view of this disclosure, claim 1 recites a system comprising: a benefits server comprising a database, and at least two member servers, the benefits server configured to perform the functions of: (a) “communicat[ing] with the at least two member servers via a network”; (b) “retriev[ing] a Appeal 2020-006203 Application 14/012,641 13 plurality of vehicle transaction records”; (c) “determin[ing] . . . a meaning of the operation code to the member”; (d) “extract[ing] customer information from each transaction record”; (e) “search[ing] the database for the customer information”; (f) “when the customer information is found in the database, updat[ing] a customer account in the database with information from the vehicle transaction record, including adjusting an account balance”; and (g) “in response to [the] updating. . . automatically transmit[ting] a message to a member server.” Appeal Br. 23 (Claims App.). We consider claim 1 as a whole6 giving it the broadest reasonable construction7 as one of ordinary skill in the art would have interpreted it in light of the Specification8 at the time of filing. Limitation (a) of communicating between the benefit and member servers is an abstract idea. See ChargePoint, Inc. v. SemaCONNECT, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (identifying communicating requests between servers over a network as an abstract idea). Limitation (b) of retrieving data is an extra-solution activity of receiving data and an abstract idea of collecting data. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) 6 “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.” Diehr, 450 U.S. at 188. 7 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation . . . .”) (emphasis added). 8 “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, it is important to read the claims ‘in light of the specification.’” Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed. Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, 822 F.3d at 1335, among others). Appeal 2020-006203 Application 14/012,641 14 (characterizing data gathering steps as insignificant extra-solution activity); Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting information is an abstract idea). Limitations (c), (d), and (e) of determining a meaning, extracting information, and searching the database, respectively, are recited functionally without details on how, technologically or by what algorithm, they are performed. Regarding limitation (c), the Specification provides that “the received records are processed” by “translating the received operation codes into one or more universal operation codes associated with a particular good or service provided.” Spec. ¶ 78. The Specification further provides that determining a meaning can involve “translating proprietary operation codes.” Id. at 79. As such, determining a meaning as recited in limitation (c) can comprise analysis of data, such as translating information, which is a mental process and an abstract idea. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147 (Fed. Cir. 2016), cert. denied., 138 S. Ct. 71 (2017) (“method of changing one description of a level sensitive latch (i.e., a functional description) into another description of the level sensitive latch (i.e., a hardware component description) by way of a third description of that very same level sensitive latch (i.e., assignment conditions) . . . can be performed mentally or with pencil and paper”), and Novo Transforma Techs., LLC v. Sprint Spectrum L.P., 2015 WL 5156526, at *3 (D. Del. Sept. 2, 2015), aff’d, 669 F. App’x 555 (Fed. Cir. 2016) (translating information is an abstract idea). The Specification adds no further detail for limitation (d) of extracting data, but for providing that “the customer benefits server 204 extracts the customer information on the vehicle repair order.” Spec ¶ 60. Thus, the Appeal 2020-006203 Application 14/012,641 15 “extracting” comprises retrieving or collecting information, which is an extra-solution activity and an abstract idea. See Electric Power Grp., 830 F.3d at 1353 (Fed. Cir. 2016). Similarly, the Specification provides little further illumination for limitation (e) of searching the database but for providing that “the customer benefits server 204 next searches the list.” Spec. ¶ 48. As such, the searching comprising some analysis of matching data, which is a mental process. See Electric Power Grp., 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Limitation (f) of updating information in the database is also an abstract idea. See WhitServe LLC v. Dropbox, Inc., No. 2019-2334, 2021 WL 1608941, at *4 (Fed. Cir. Apr. 26, 2021) (maintaining data records by updating and deleting data is an abstract idea). Limitation (g) of transmitting a message to a member server is post-solution activity of transmitting a result of the analyses. See Electric Power Grp., 830 F.3d at 1354; Bilski, 561 U.S. at 610–11 (“Flook stands for the proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post-solution activity.”’). We note that if the information is not found in limitation (e), limitations (f) and (g) of updating and transmitting do not occur. The benefits server configured to perform limitations (a) through (g) (indicated as server 102 (Appeal Br. 3)) is a generic server. See Spec. ¶ 20. When considered collectively and under the broadest reasonable interpretation, the limitations of claim 1 recite a generic server performing Appeal 2020-006203 Application 14/012,641 16 the functions of collecting and analyzing transaction data, searching and conditionally updating customer data based on the results of the collecting and analyzing, and conditionally transmitting a message based on the updating for the purposes of tracking and adjusting vehicle transaction records.9 This is an abstract idea of “[c]ertain methods of organizing human activity . . . commercial or legal interactions (including . . . advertising, marketing or sales activities or behaviors)” comprising “[m]ental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP §§ 2106.04(a)(2)(II), 2106.04(a)(2)(III). Our reviewing court has held similar concepts to be abstract. For example, the Federal Circuit has held abstract the concepts of collecting, analyzing, and displaying the results in Electric Power Grp., 830 F.3d at 1354, collecting, analyzing, manipulating, and processing data and displaying the results of the analysis, manipulation, and processing in Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017), “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018), standardizing data to be conveyed to a bedside device for graphical display in University of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1366–68 (Fed. Cir. 2019), translating one description into another description in Synopsys, 839 F.3d at 1147, and 9 We note 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). The Board’s “slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. at 1241. Appeal 2020-006203 Application 14/012,641 17 “tracking users with personalized markings in order to serve advertisements” in Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 889 (Fed. Cir. 2019). We are unpersuaded by the Appellant’s argument that claim 1 does not recite an abstract idea because “the claims are much more specific regarding the technical details of how a benefits server interacts with member systems.” Appeal Br. 8; see also id. at 9. The claimed interactions between the server and member systems comprise communicating, retrieving, and transmitting data – extra-solution activities – and the determining performed by the server using certain data of a predefined code is, as discussed above, recited without technical details and comprises a mental process. We are also unpersuaded by the Appellant’s argument that the claim cannot be performed in the human mind because “the operation codes suggest that the transaction records would not be interpretable by a user.” Appeal Brief at 12–13 (citing SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019)); see also Ans. 5–6, 17–18. The Specification, including the claims, does not provide a particular definition for an “operation code,” but indicates that the “code” is some type of data that may be used in place of details (Reply Br. 7) and that is then translated in some unspecified manner. See Spec. ¶¶ 73, 74, 78, 79, 83. As discussed above, translating data is a mental process. We note that “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also Content Extraction & Transmission Appeal 2020-006203 Application 14/012,641 18 LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (in response to an argument that “human minds are unable to process and recognize the stream of bits output by a scanner,” the court noted that “the claims in Alice also required a computer that processed streams of bits, but nonetheless were found to be abstract.”). The translating of the codes as recited in claim 1 is unlike the claims in SRI International, in which the Federal Circuit determined “the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims” that “are not directed to just analyzing data from multiple sources to detect suspicious activity” but are “directed to an improvement in computer network technology.” 930 F.3d at 1303, 1304; see also Ans. 15–16. As more fully discussed below, claim 1 is not directed to an improvement in computer technology. Having concluded that claim 1 recites a judicial exception under the Guidance, Step 2A, Prong One, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. Integration into a Practical Application We look to whether the claims “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim[s are] more than a drafting effort designed to monopolize the judicial exception,” i.e., “integrate[] a judicial exception into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP § 2106.04(d). We note that, as stated above, the question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” Appeal 2020-006203 Application 14/012,641 19 or are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Here, the only additional elements recited in claim 1 beyond the abstract idea are the “benefits server,” “at least two member servers”, and “a network.” The benefits server is described in the Specification as a generic server. See supra; Spec. ¶ 20. The member servers (indicated as servers 106, 112 (Appeal Br. 3)) are described as general purpose computers. See Spec. ¶¶ 24 (“[t]he servers 106, 112 . . . could also be everyday computers”), 27 (describing the servers as part of a readily available computing device), 28 (providing examples of the computing device including “a desktop computer, a laptop computer, a tablet computer, a mobile phone device such as a smart phone or other devices”). The network is a generic network. See id. ¶ 21 (providing examples of a network including “a local area network and a wide area network, such as the Internet,” and the network comprising “a wireless communication system, a wired communication system, or a combination”). As is clear from the Specification, there is no indication that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Appeal 2020-006203 Application 14/012,641 20 We also find no indication in the Specification that the claimed invention as recited in claim 1 effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in USPTO Guidance. We disagree with the Appellant’s contention the claim 1 is similar to the claims of DDR Holdings in that although claim 1 “may address a business challenge (implementation of a benefit program for vehicle dealers), that challenge is particular to the shortcomings of dealer management systems” and claim 1 presents a solution that “is particularized to the nature of existing dealer management systems and dealer offerings.” Appeal Br. 11–12; see also id. at 9, Reply Br. 6–7. In DDR Holdings, the Federal Circuit determined that the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host’s website after clicking on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claim a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. The court cautioned that “not all claims purporting to address Internet-centric challenges are eligible for patent.” Id. at 1258. And the court contrasted the claims to those at issue in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in Appeal 2020-006203 Application 14/012,641 21 DDR Holdings, the computer network was not operating in its “normal, expected manner” and the claims did not “recite an invention that is . . . merely the routine or conventional use of the Internet.” DDR Holdings, 773 F.3d at 1258–59. The Appellant asserts that claim 1 addresses the “business challenge (implementation of a benefit program for vehicle dealers)” that “is particular to the shortcomings of dealer management systems, the natural heterogeneity of dealer offerings of various dealers, and the lack of standardized interfaces (or ability to perform such standardization) that is available.” Appeal Br. 11–12. However, as the Specification discusses (see Spec. ¶¶ 1, 2), implementing benefits/promotion programs is a challenge that existed prior to computer networks. And, the ability to standardize data between different members is also a challenge that existed prior to computer networks. See Novo Transforma, 2015 WL 5156526, at *3 (“[i]ncompatible communication types have existed since before the emergence of computers and the Internet”). Further, the purported solution comprises a generic server operating in its ordinary and conventional capacity to perform the functions of communicating, retrieving data, determining data, extracting data, searching for data, conditionally updating a data record, and conditionally transmitting data. See supra; see also Alice, 573 U.S. at 224–26; Ans. 12–14. The Appellant does not direct attention to, and we do not see, where the Specification provides that the benefits server acts in an abnormal manner or outside of its ordinary capacity. Rather, the claim recites an invention that is merely the routine or conventional use of a generic computer. See DDR Holdings, 773 F.3d at 1258–59. The Appellant does not contend that it Appeal 2020-006203 Application 14/012,641 22 invented any of the claimed components or their basic functions or that those components, claimed generally, were unknown in the art as of the time of the invention. See Affinity Labs of Texas v. Amazon.com, Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016). To the extent that Appellant asserts that the data of the code acts as an “interface” (Appeal Br. 13) and acts in an unconventional, non-routine manner (Appeal Br. 16; Reply Br. 6–7), we disagree. See Ans. 17. Claim 1 requires that the server retrieve code data, determine a meaning of that data, and conditionally update a data record based on the determination. Any solution presented is in the abstract idea itself. The “focus” of the claim is not “on the specific asserted improvement in computer capabilities” (Enfish, 822 F.3d at 1336), but rather on using a computer for “tracking and allocating vendor-tracked benefits.” Spec. ¶ 16; see Alice, 573 U.S. at 223 (holding that attempting to limit the use of an abstract idea to a particular technological environment does not make a claim patent-eligible) (quoting Bilski, 561 U.S. at 610–11); We also disagree with the Appellant’s contention that claim 1 recites an improvement to the functioning of a computer, or to technology or a technical field. See Appeal Br. 9–10, 13–15 (citing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018), Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017)); see also Reply Br. 5–8. The Appellant’s comparisons of claim 1 to those in Finjan and Visual Memory (Appeal Br. 9–10, 13; Reply Br. 6, 7–8) are unavailing. In Finjan, the court determined that the claims recited a specific improvement in computer technology — by “employ[ing] a new kind of file that enables a computer security system to do things it could not do before.” 879 F.3d at 1305. Appeal 2020-006203 Application 14/012,641 23 Similarly, in Visual Memory, the court determined that the claims “are directed to an improved computer memory system” and directed attention to the Specification’s discussion of an improvement in computer capabilities, as opposed to the claims merely reciting “generalized steps to be performed on a computer using conventional computer activity.” 867 F.3d at 1259–60. Here, as discussed above, there is nothing that the claimed server(s) could not have done before, technologically, nor is there a technologically unconventional solution to solve a problem rooted in computers. Communicating, retrieving, determining, extracting, searching, and conditionally updating and transmitting data do not comprise “an improvement to computer functionality” (Enfish, 822 F.3d at 1336) as they do not enable a server to do things it could not do before. Rather, claim 1 merely uses a conventional server in its ordinary capacity as a tool for implementing generic steps to track and allocate benefits. The claim’s focus is “not a physical-realm improvement but an improvement in [a] wholly abstract idea,” that is not eligible for patenting. SAP Am., 898 F.3d at 1168. We also find unpersuasive the Appellant’s argument that claim 1 provides an improvement to computer technology by “offload[ing] processing requirements associated with benefit programs from members’ dealer management systems.” Appeal Br. 11; see also id. at 14–15, Reply Br. 8. The Specification discusses the benefits of the claimed system in “allow[ing] for improved automation and aggregation of benefit programs [and] . . . for offloading of such benefits (e.g. product incentive, loyalty, or prepayment) systems from members themselves, without incurring substantial non-automated (manual) processing at a central server.” Spec. ¶ 18. However, we do not see, and the Appellant does not adequately Appeal 2020-006203 Application 14/012,641 24 explain, where the Specification discusses how the offloading of benefits programs and systems from members to a central server, “avoid[ing] both (1) having to implement individualized benefit management at member servers and (2) requiring those dealer management systems to be reconfigured” (Appeal Br. 11), or providing “integration benefits” to the members (Reply Br. 6), provides an improvement to technology of the server itself or to any other technology. Any improvement would be related to increased “efficiency of processing of customized transactions” over manual processing (Appeal Br. 13) and to “economic advantages” (id. at 15). “[O]ur precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015). We thus agree with the Examiner that the additional elements of claim 1 do not integrate the judicial exception into a practical application, as the term is used in USPTO guidance, because they “amount[] to no more than mere instructions to apply the exception using a generic computer component.” Final Act. 7; see also Ans. 20–21. Thus, we are not persuaded of error in the Examiner’s determination that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework Under the second step in the Mayo/Alice framework and USPTO guidance Step 2B, we “[e]valuat[e] additional elements to determine whether they amount to an inventive concept [which] requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” MPEP § 2106.05(I); Appeal 2020-006203 Application 14/012,641 25 see also Alice, 573 U.S. at 221. Here, we agree with and adopt the Examiner’s findings and conclusion that claim 1’s limitations, when considered individually and in combination, do not amount to significantly more than the abstract idea because the additional elements perform “generic computer functions routinely used in computer applications,” that these functions “are well-understood, routine[,] and conventional activities,” that “[t]he use of [a] generic computer to transmit/display/communicate information through an unspecified generic computer does not impose any meaningful limit on the computer implementation of the abstract idea,” and when “[v]iewed as a whole, even in combination,” the limitations of claim 1 “merely apply[] the abstract idea to a generic computer.” Final Act. 7–8 (citing cases); see also Ans. 24–25 (citing the MPEP and cases). We add the following for emphasis. We disagree with the Appellant’s contention that the Examiner “does not perform this analysis properly.” Appeal Br. 16. As discussed above, under Step 2B we look to whether the additional elements beyond the abstract idea, individually or in combination, provide an inventive concept. Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(I). Alice is clear, as described above, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the Appeal 2020-006203 Application 14/012,641 26 patent in practice amounts to significantly more than a patent upon the natural law itself”). In other words, the inventive concept under step two of the Mayo/Alice framework cannot be the abstract idea itself: “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer [v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (“Berkheimer”)] . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order, On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring) (Berkheimer II); see also BSG Tech LLC. v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Here, the Examiner properly considers the additional elements of claim 1 outside the abstract idea and determines they do not transform the nature of the claim into a patent-eligible application. See Final Act. 7–8. The elements to which the Appellant refers, i.e., the use of operation codes and responses to that use (see Appeal Br. 16), are, as also discussed above, abstract ideas themselves and part of the abstract idea as a whole. They are not additional elements to be considered when determining whether claim 1 includes additional elements or a combination of elements that is sufficient to amount to significantly more than the judicial exception. And, as discussed above, the only claim elements beyond the abstract idea are the “benefits server,” “at least two member servers,” and “a network,” recited generally, that the Specification indisputably shows were conventional at the Appeal 2020-006203 Application 14/012,641 27 time of the filing. See supra. Further, as discussed above, they do not provide technological improvements. Cf. Appeal Br. 16 (arguing that the “operations [that] are performed in response to use of operation codes . . . improve efficiency of transmission between devices, and processing of transaction records at a benefits server”) (emphasis omitted). The Appellant’s argument that claim 1’s “use of such operation codes does not preempt all other uses of the alleged abstract idea” (Appeal Br. 16; see also Reply Br. 8–9) does not persuade us that the claim amounts to significantly more than the abstract idea. Although the Supreme Court has described “the concern that drives this exclusionary principle [, i.e., the exclusion of abstract ideas from patent-eligible subject matter,] as one of pre-emption” (see Alice, 573 U.S. at 216), characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. To the extent the Appellant contends that claim 1 here is similar to those in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (see Appeal Br. 16; Reply Br. 8), we disagree. The Appellant does not show how the claim here is similar to BASCOM’s “particular arrangement of elements [that] is a technical improvement over Appeal 2020-006203 Application 14/012,641 28 prior art ways of filtering such content.” 827 F.3d at 1350. The patent at issue in BASCOM “claim[ed] a technology-based solution (not an abstract- idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems.” Id. at 1351. The court determined that “[b]y taking a prior art filter solution (one-size-fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’” Id. Here, there is no such improvement to the claimed servers or network itself or an unconventional arrangement of computer elements in that system that is a technical improvement. As discussed above, any improvement lies in the process of tracking and allocating benefits, i.e., the abstract idea itself. The Appellant’s argument that claim 1 recites elements that amount to significantly more than the abstract idea in that “to the extent the rejection under 35 U.S.C. § 103 is reversed, . . . the rejection under [35 U.S.C.] § 101 should similarly be reversed due to the same features representing significantly more than any abstract commercial or mental process identified by the Examiner” (Appeal Br. 17) misapprehends the controlling precedent. An abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 78. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance Appeal 2020-006203 Application 14/012,641 29 in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188– 89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). Indeed, in Ultramercial, the court ultimately held “[t]hat some of the eleven steps were not previously employed in this art is not enough—standing alone—to confer patent eligibility upon the claims at issue.” 772 F.3d at 716. We also disagree with the Appellant’s contention that “the rejection as stated in the Office Action is inadequate when considered relative to the requirements of the Office set forth in the Berkheimer Memorandum.” Appeal Br. 17 (citing USPTO Memorandum, Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, April 19, 2018). We note that the court in Berkheimer held that “[t]he patent eligibility inquiry may contain underlying issues of fact.” 881 F.3d at 1365 (quoting Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual issues.’”)). But, the court also held that “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well- understood, routine, [and] conventional to a skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d at 1368 (emphasis added). This qualification has been subsequently reiterated. If there is a genuine dispute of material fact, Rule 56 requires that summary judgment be denied. In Berkheimer, there was such a genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . . [I]n accordance with Alice, we have repeatedly Appeal 2020-006203 Application 14/012,641 30 recognized the absence of a genuine dispute as to eligibility for the many claims that have been defended as involving an inventive concept based merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality. Berkheimer II, 890 F.3d at 1371–73 (Moore, J., concurring); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (Reyna, J., dissenting) (“A factual allegation or dispute should not automatically take the determination out of the court’s hands; rather, there needs to be justification for why additional evidence must be considered— the default being a legal determination.”). Here, the Examiner cites to the MPEP and to court decisions to support the Examiner’s conclusion. Final Act. 8; see also Ans. 31. Further, the Specification clearly supports the Examiner’s conclusion by indisputably showing that the claimed additional elements were conventional at the time of filing. See supra; Spec. ¶¶ 21, 24, 27, 28. Accordingly, based on the Appellant’s description, we find these components to be well understood, routine, or conventional. Thus, we are not persuaded of error in the Examiner’s determination that the additional elements of claim 1, considered individually and as an ordered combination, do not amount to significantly more than the abstract idea itself. We sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claim 1 and thus also of claims 2, 3, and 6–23. Appeal 2020-006203 Application 14/012,641 31 35 U.S.C. § 103 - Obviousness The Appellant contends that the Examiner’s rejection of independent claim 1 is in error because the combination of Draper, White, Georgi, and Reodica does not “teach the operation codes and their use, as reflected in claim 1.” Appeal Br. 18; see also Reply Br. 2–4. Specifically, the Appellant contends that “claim 1 requires that the operation codes be ‘predefined by the member at the database prior to receipt of the vehicle transaction records’, ‘specific to the member’, and represent an ‘associated value [that is] specific to the member’” (Appeal Br. 18) and that “the operation codes are used for ‘adjusting an account balance in the customer account based on a predefined value . . . as represented by the operation code.’ Accordingly, the operation code represents a predefined value by which a customer account is adjusted” (Reply Br. 2–3). Conversely, the Examiner maintains that the combination of Draper, White, Georgi, and Reodica teaches those features of claim 1 and finds that the feature of “the opcodes represent[ing] a value associated with a specific dealer” is not recited nor required in claim 1. Ans. 33–34 (underlining omitted). Further, the Examiner interprets “a predefined value of the goods and/or service as represented by the operation code” as “‘a predefined value’ [that] is associated with ‘the goods and/or services’, wherein ‘the goods and/or services’ is/are represented by the operation code as recited in prior mentioned limitation in claim 1.” Id. at 34 (underlining omitted). The Examiner further finds “the underlined features upon which Applicant relies (opcodes define a value that is specific to the member .... , the opcodes represent a value associated with a specific dealer) above are also Appeal 2020-006203 Application 14/012,641 32 inconsistent with Applicant’s Specification.” Id. (citing Spec. ¶ 73); see also id. at 35 (citing Spec. ¶ 78). We determine, as discussed below, that this subject matter of claim 1 is indefinite. Thus, we are unable to determine the propriety of the Examiner’s prior art rejections of claims 1–3 and 6–23. The review of the rejections of these claims as obvious under 35 U.S.C. § 103 would require considerable speculation as to the scope and meaning of the claims. Such speculation would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We, therefore, reverse pro forma the prior art rejections under 35 U.S.C. § 103 of claims 1–3 and 6–23. We emphasize that this is a technical reversal of the rejections under 35 U.S.C. § 103, and not a reversal based upon the merits of the rejections. New Ground of Rejection – 35 U.S.C. § 112(b) Pursuant to 37 C.F.R. § 41.50(b), independent claim 1 is hereby rejected under 35 U.S.C. § 112(b) as being indefinite because the scope and meaning of the limitations of the claims cannot be determined. Because the same indefiniteness issue affects dependent claims 2, 3, and 6–23, they are also rejected on the same basis. The text of 35 U.S.C. § 112(b) requires “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the [Appellant] regards as the invention.” “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear — as opposed to ambiguous, vague, indefinite — terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (alterations in original). Claims are in compliance with 35 U.S.C. § 112(b) Appeal 2020-006203 Application 14/012,641 33 if “the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for determining the question of indefiniteness may be formulated as whether the claims “set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Claim 1 is indefinite because one of ordinary skill in the art cannot ascertain without considerable speculation what the inventor regards as the invention nor the scope and meaning of the claims. Claim 1 recites a server configured to, in relevant part, “determine, for each vehicle transaction record, a meaning of the operation code to the member from which the transaction record was retrieved, wherein the operation code and associated value are specific to the member” (limitation (c)) and to “update a customer account in the database with information from the vehicle transaction record, including adjusting an account balance in the customer account based on a predefined value of the goods and/or services as represented by the operation code included in the transaction record” (limitation (f)). Appeal Br. 23 (Claims App.). It is not clear to one of ordinary skill in the art from the claims or the Specification what the “associated value” and “a predefined value” comprise and how they are used. The Specification discusses a “benefits value” (Spec. ¶ 4), “the value of the pre-paid good/service” that is tracked (id. ¶ 54), a “new value” from the calculated benefits being added or subtracted from the customer account Appeal 2020-006203 Application 14/012,641 34 (id. ¶ 68), and “the prior benefits value” (id.). The Specification does not contain the terms “associated value” or “predefined value.” Operation codes are not specifically defined in the Specification, but are described as being “predetermined” (id. ¶ 73), “configured by a particular member” (id. ¶ 78), processed by “translating the received operation codes into one or more universal operation codes associated with a particular good or service” (id.), and that “can be used to track services that are declined by a member customer” (id. ¶ 79). Further, as discussed above with respect to the rejection under 35 U.S.C. § 101, claim 1 does not recite how, by what method/algorithm, the determining is performed, and the Specification merely provides that “the received records are processed” by “translating the received operation codes into one or more universal operation codes associated with a particular good or service provided” (id. ¶ 78) and that determining a meaning can involve “translating proprietary operation codes.” Id. at 79. The Specification does not indicate that the operation code in the transaction record contains a value or that a value is determined in some manner. Thus, one of ordinary skill in the art would not ascertain what the associated value comprises and whether it is used in determining a meaning. Further, one of ordinary skill in the art would not ascertain what predefined value is being used as the basis of adjusting an account balance, that is, whether the predefined value is the associated value or one of the other values discussed in the Specification. Therefore, independent claim 1 and thus also dependent claims 2, 3, and 6–23 have ambiguities such that they are unclear, and are thus indefinite. See In re Packard, 751 F.3d at 1314. Appeal 2020-006203 Application 14/012,641 35 CONCLUSION The Examiner’s decision to reject claims 1–3 and 6–23 under 35 U.S.C. § 101 is affirmed. The Examiner’s decision to reject claims 1–3 and 6–23 under 35 U.S.C. § 103 is reversed pro forma. We enter a NEW GROUND OF REJECTION of claims 1–3 and 6–23 under 35 U.S.C. § 112(b) as indefinite. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–3, 6–23 101 Eligibility 1–3, 6– 23 1–3, 9– 11, 23 103 Draper, White, Georgi, Reodica 1–3, 9– 11, 23 13, 17 103 Draper, White, Georgi, Reodica, Paterson 13, 17 6, 12 103 Draper, White, Georgi, Reodica, Chandrasekaram 6, 12 7 103 Draper, White, Georgi, Reodica, Basmajian, Krajicek 7 8 103 Draper, White, Georgi, Reodica, Berardi 8 14 103 Draper, White, Georgi, Reodica, Paterson, Berardi 14 15 103 Draper, White, Georgi, Reodica, Paterson, Berardi, LaPorte 15 Appeal 2020-006203 Application 14/012,641 36 Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 16 103 Draper, White, Georgi, Reodica, Paterson, Berardi, LaPorte, Krajicek 16 18 103 Draper, White, Georgi, Reodica, Paterson, Bortolin, Mason 18 19 103 Draper, White, Georgi, Reodica, Paterson, Birsin 19 20 103 Draper, White, Georgi, Reodica, Paterson, Hassan 20 21 103 Draper, White, Georgi, Reodica, Paterson, Seven 21 22 103 Draper, White, Georgi, Reodica, Paterson, Kim 22 1–3, 6–23 112(b) Indefiniteness 1–3, 6– 23 Overall Outcome 1–3, 6– 23 1–3, 6– 23 TIME PERIOD FOR RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise Appeal 2020-006203 Application 14/012,641 37 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R. § 41.50(b)