Randy J. Templeton et al.

Patent Trials and Appeals Board

Jul 31, 2019

13987476 - (D) (P.T.A.B. Jul. 31, 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.
13/987,476 07/30/2013 Randy J. Templeton 50882 9683
22929 7590 07/31/2019
Sue Z. Shaper
1800 WEST LOOP SOUTH
SUITE 350
HOUSTON, TX 77027
EXAMINER
RACIC, MILENA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
07/31/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RANDY J. TEMPLETON and JOSE A. VERTIZ
____________________

Appeal 2018-002900
Application 13/987,4761
Technology Center 3600
____________________

Before: CARL W. WHITEHEAD JR., MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 48–59. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants’ Brief (“App. Br.”) identifies Noventis, Inc. as the real party in
interest. App. Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to “bill-pay/account-loading services, and in
particular in the field of bill-pay/account-loading services for consumers
paying bills with cash and occasionally requiring immediate bill payment or
account-loading.” Spec. 1, ll. 13–16. Claim 48, reproduced below, is
illustrative of the claimed subject matter:
48. A communication method of financial transaction
technology including messaging of a cash remission
substantially immediately upon a transaction at a Point of Sale
device (POS) to a computer system of a remote recipient of
settlement on the transaction (Payment Facilitator), the
communication method characterized by being substantially
immediate, essentially independent of specialized hardware and
software at a participating retailer and protected against fraud,
the method comprising:
by the Payment Facilitator computer system:
receiving from a software application (App)
supplied to a participating consumer mobile electronic
communication device (Device), at least an indication of
an amount and a participating retailer;
subsequently sending to the App a POS presentable
indicator structured to present to a POS information
regarding a cash amount to be remitted, the cash amount
related to the received indicated amount, and a Universal
Product Code (UPC); and
subsequently receiving from the Device and App,
substantially immediately after a cash remission
transaction, an indication of a presentation of the indicator
to the POS, an indication of a receipt from the retailer or
POS for the cash remission transaction, and an indication
of the cash remission transaction being for an amount
related to the received indicated amount and related to the
UPC.
App. Br. 22 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Englund
Rowen
Lee
US 2011/0231285 A1
US 2011/0238510 A1
US 2012/0278237 A1
Sept. 22, 2011
Sept. 29, 2011
Nov. 1, 2012

REJECTIONS
Claims 48–57 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 2–15.
Claims 48, 49, 51–54, and 56–59 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Englund and Lee. Final Act. 15–18.
Claims 50 and 55 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Englund, Lee, and Rowen. Final Act. 18.

REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The USPTO recently
published revised guidance on the application of § 101 consistent with Alice
and subsequent Federal Circuit decisions. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance
(“Memorandum”). Under that guidance, we first look to whether the claim
recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. 52 (Jan. 7, 2019).
Examiner’s Findings and Conclusion
The Examiner rejects claims 54 and 55 as being non-statutory because
they claim data structures per se, without any physical components or
physical structure.2 Final Act. 14–15.
The Examiner also rejects claims 48–57 as being directed to a judicial
exception under Alice.3 Final Act. 2–14. In the first step of the Alice
inquiry, the Examiner determines the claims “are directed to communication
of devices to facilitate [a] financial transaction,” (Final Act. 4) and recite

2 Appellants do not present arguments contesting this rejection. As a result,
we affirm the rejection of claims 54 and 55 under 35 U.S.C. § 101.
3 Claims 58 and 59 are not rejected under 35 U.S.C. § 101.
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various abstract ideas, including an idea of itself, a mental process, and a
certain method of organizing human activity, including a fundamental
economic practice. Final Act. 3–4. More specifically, the Examiner
determines Appellants’ invention is similar to those found abstract in prior
cases such as SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.
App'x 950 (Fed. Cir. 2014) (an idea of itself) (Final Act. 4), Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (certain method of
organizing human activity) (Final Act. 4), and buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014) (fundamental economic practice) (Final
Act. 5).
Under Alice step 2, the Examiner acknowledges “the recitation of
various additional elements within the claim (including a payment facilitator
computer system, a consumer mobile electronic communication device,
software application).” Final Act. 5. The Examiner finds these additional
elements do not amount to significantly more than the abstract idea “because
the additional elements are merely recited in a generic manner and operate
using well-understood, routine and conventional functions.” Final Act. 5.
The Examiner further finds any improvements made by Appellants claims
are made in the field of financial services, which is not a technical field, and
they “represent[] little more than an attempt to restrict use of the abstract
idea to a particular technological environment.” Final Act. 7.
Appellants’ Contentions
Appellants argue that there are several deficiencies in the rejection.
App. Br. 7–13. Appellants assert the claims “are directed [to] a control
system of a bill-pay technology that solves a problem in communication
technology.” App. Br. 8. More specifically, Appellants argue the
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“invention lies at an intersection of the fields of bill-pay technology and
communication technology,” and it comprises an “improved control system
[that] is immediate and protected against fraud while avoiding installing
specialized hardware and software at the POS.” App. Br. 10. Appellants
argue the claims provide a technical solution to a problem in bill-pay
technology because:
To summarize claim 48, the technical solution of claim 48
recites use of a Pay/Load amount and a retailer designation
sent to a PF/CS through an App supplied to a Device. The
PF/CS sends a “POS-presentable indicator,” carrying a
cash remission Amt and a UPC, to the App of the Device.
The indicator is “presented” by the App and Device to the
retailer POS. The consumer remits the indicated cash
amount to the retailer. The PF/CS receives from the
Device and App an indication of the presentation of the
indicator and a receipt from the retailer for the cash
remission, showing that the amount remitted is associated
with the UPC. Thus, claim 48 is “directed to a technical
solution of a technical problem, providing a control system
for bill-pay technology with fraud protection and
immediate bill-pay for a consumer remitting cash at a
selected retailer, without requiring specialized hardware
and software at the POS.
App. Br. 12.
Under Alice step 2, Appellants argue the additional elements in the
claims, “in combination and synchronization, yield a surprising and
unexpected result, the solution of the technical problem.” App. Br. 13.
Appellants assert this “surprising result . . . was not well understood nor
routine nor conventional,” and the Examiner “does not support its assertion
[that the additional elements are well-understood, routine, and convention]
with evidence.” App. Br. 13. Appellants assert the Examiner “points to no
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well understood, conventional routine transmission of a POS-presentable
indicator from a [payment facilitator computer system] to a Device supplied
with App, the indicator specifying a cash remission amount and a UPC.”
App. Br. 13.
Our Review
Applying the guidance set forth in the Memorandum, we conclude the
Examiner has erred in rejecting the claims as being directed to patent-
ineligible subject matter. The Memorandum instructs us first to determine
whether any judicial exception to patent eligibility is recited in the claim.
The guidance identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices or managing personal behavior or
relationships or interactions between people, and (3) mental processes. We
focus our analysis on the second grouping—certain methods of organizing
human activity such as fundamental economic practices.
Claim 48 recites the following limitations: (1) “receiving . . . at least
an indication of an amount and a participating retailer,” (2) “sending . . .
information regarding a cash amount to be remitted the cash amount related
to the received indicated amount,” (3) “receiving . . . an indication of a
receipt from the retailer or POS for the cash remission transaction.” App.
Br. 22 (Claims Appendix). We conclude that these limitations, under their
broadest reasonable interpretation, recite the fundamental economic practice
of conducting a third party payment transaction. This is so because the
limitations recite basic operations that would customarily and routinely take
place in conducting a third party payment transaction. For example,
limitation (1) recites the practice of telling a customer how much they owe
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and where to pay. Similarly, limitation (2) recites the basic practice of the
payment location requesting payment of the owed amount from the
customer. Limitation (3) describes basic and familiar practice of giving a
receipt after payment has been made. Like the concept of intermediated
settlement in Alice, and the concept of hedging in Bilski, the concept of
modeling and orchestrating an order fulfillment business process recited in
Appellants’ claims “is a fundamental economic practice long prevalent in
our system of commerce.” Alice, 573 U.S. at 216 (citations and internal
quotation marks omitted). Accordingly, we conclude the claims recite a
judicial exception of a fundamental economic practice.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See 84 Fed. Reg. at 54–55 (citing MPEP § 2106.05(a)–(c),
(e)–(h)). Appellants’ claim 48 recites various computer-related limitations,
including a “Point of Sale device,” a “computer system of a remote recipient
of settlement on the transaction (Payment Facilitator),” and a “software
application,” and “a consumer mobile electronic communication device
(Device).” Although these computer-related limitations are not entirely
generic in nature, they are described at a high level in the Specification, and
without detail about their structure or configuration. As such, we do not find
the computer-related limitations, standing alone, are sufficient to integrate
the judicial exception into a practical application.
Claim 48 recites additional limitations. These limitations primarily
relate to messaging and communications between the Payment Facilitator
computer system and the mobile device used to confirm that a customer has
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made a cash payment at a participating retailer. These limitations include
(1) “messaging of a cash remission substantially immediately upon a
transaction,” at the point of sale device, (2) the messaging “characterized by
being substantially immediate, essentially independent of specialized
hardware and software at a participating retailer,” (3) “the Payment
Facilitator computer system . . . sending to the App and POS presentable
indicator structured to present to a POS . . . a Universal Product Code
(UPC),” and (4) the Payment Facilitator computer system subsequently
receiving “from the Device and App, substantially immediately after a cash
remission transaction, an indication of a presentation of the indicator to the
POS . . . and an indication of the cash remission being for an amount related
to the received indicated amount and related to the UPC.”
We conclude that these limitations integrate the recited judicial
exception into a practical application. In particular, these additional claim
elements improve upon conventional third party payment transactions by
allowing for cash payments to be made and confirmed in real-time
(“substantially immediately”) without requiring specialized hardware to be
installed at the retailer (“essentially independent of specialized hardware and
software at a participating retailer”) by utilizing UPC’s which can be
processed by the existing POS infrastructure in a retail location (“sending to
the App and POS presentable indicator structured to present to a POS . . . a
Universal Product Code (UPC)”).
As explained in the Specification, “[c]losed loop direct
communication between a merchant receiving a consumer’s cash payment
and a payment facilitator significantly reduces the risk of consumer fraud for
the facilitator that is paying [the] consumer bills ‘immediately,’ such as
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within hours or minutes or at least on the same day.” Spec. 2, ll. 2–4.
However, “establishing an essentially real-time closed-loop communication
channel between each retail location and a payment facilitator involves
technological and logistic[al] undertakings that have become regarded by
many retailers as burdensome.” Spec. 2, ll. 8–10. At the same time, so
called “open-loop systems” could relieve the burden of installing dedicated
hardware, but involved higher costs and added complexity for the consumer.
Spec. 2, ll. 15–30. The additional limitations identified above improve
conventional third party payment schemes by allowing the advantages of the
“closed-loop direct communication” (such as speed and security for the
payment facilitator) without the associated burdens of requiring retailers to
modify their existing infrastructure. Because these additional limitations
recite technological improvements to the ability of payment facilitators to
receive confirmation of cash payments transactions from retailers, we
conclude the claims provide a technological improvement sufficient to
integrate the abstract idea into a practical application. MPEP § 2106.05(a).
Accordingly, we conclude the Examiner has erred in rejecting the claim 48
for lack of subject matter eligibility, and we do not sustain its rejection under
35 U.S.C. § 101. For the same reason, we also do not sustain the rejection of
claims 49–53, which depend therefrom.
We reach a different result with respect to the remaining claims
rejected under 35 U.S.C. § 101. Appellants argue the method claims (claims
48–53 and 56) as a group and assert that claim 48 is representative. App.
Br. 9. Appellants assert that apparatus claims 54 and 57 should be
considered separately. Id. However, Appellants offer no arguments with
respect to the specific limitations of claims 54, 56, and 57, each of which is
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differs substantially from claim 48. Because Appellants do not address
claims 54, 56 and 57 with specificity, and because the limitations in those
claim differ from the limitations in claim 48, Appellants have failed to
identify error in the Examiner’s determinations under Alice steps 1 and 2,
and we sustain their rejections under 35 U.S.C. § 101.

REJECTION UNDER 35 U.S.C. § 103
The Examiner rejects claims 48–49, 52–54, and 56–59 as
unpatentable over the combined teachings of Englund and Lee. Final
Act. 15–20. In setting forth the rejection, the Examiner finds that Englund
teaches all of the limitations except that the software application in Englund
is not supplied to the mobile device by the payment facilitator as recited in
claim 48. Final Act. 16–17. The Examiner introduces Lee to address this
deficiency, finding that it teaches the limitation missing from Englund
because it describes an “application provided and installed by the gift
certificate issuer.” Final Act. 17.
Appellants argue the cited art is deficient because it fails to teach or
suggest the recited limitation “by the Payment Facilitator computing system
receiving from a software application (App) supplied to a participating
consumer mobile electronic communication device (Device), at least an
indication of an amount and a participating retailer.” App. Br. 18.
Specifically, Appellants contend this limitation requires that (1) the Payment
Facilitator system receive the indicated amount and an identified retailer,
and (2) that the indicated amount and the identified retailer be sent by a
software application on a consumer mobile electronic communication
device. Id. Appellants assert that Englund meets neither of these two
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requirements because Englund’s pricing information is received at a retail
POS (and not the claimed Payment Facilitator computer system) and it is
received from a retailer purchase server (and not from an App on a consumer
mobile device). App. Br. 18. We agree with Appellants.
Englund relates to a mobile point of sale device which allows a
customer service clerk to move around a store during busy times and
conduct sales transactions without the need for a traditional retail checkout
counter. Englund ¶¶ 19–20. Englund’s operating environment includes a
mobile point of sale device which connects to a retail purchase server to
obtain product information when an item is scanned at the POS device.
Englund Fig. 1A, blocks 105–108. Englund describes a scenario in which a
customer may request to open a line of credit. Englund ¶ 26. In so doing,
the mobile POS sends a customer’s information to a credit facility, and the
facility may respond with a credit amount. Id. The Examiner finds that
Englund’s retailer point of sale device corresponds to the recited “consumer
mobile electronic communication device” (Ans. 12) and that the mobile
retail server and credit facility correspond to the recited “Payment Facilitator
computer system.” Ans. 13. The Examiner finds that the request for credit
and the response from the credit facility with a credit amount meets the
“indication of an amount” and “participating retailer.”
However, the credit amount described in Englund is not sent from the
mobile POS to the credit facility—it is the other way around: the credit
amount is sent from the credit facility to the mobile POS. We agree with
Appellants that the disputed limitation requires that the “indication of an
amount” be sent from a mobile device to the server. As such, we are
persuaded the Examiner has erred in finding that Englund teaches this
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limitation. We also do not observe any teaching in Lee which remedies this
deficiency. Accordingly, we do not sustain the rejection of claim 48 under
35 U.S.C. § 103, nor of its dependent claims 49–53. We also do not sustain
the rejection of claim 54 and its dependent claim 55 which also recite a
similar limitation. See App. Br. 23 (Claim 54 reciting “software structured
to communicate from the Device to a Payment Facilitator computer system
information indicating an amount and a participating retailer”). Independent
claims 56 and 57 each recite a similar limitation as well. Accordingly, we
also do not sustain their rejections under 35 U.S.C. § 103.
Claims 58 and 59 do not recite a limitation similar to the argued
limitation of claim 48. Appellants argue these claims are patentable
because:
Regarding System Claim 58 and Similar Method Claim
59, [the Examiner] presents no motive to structure Lee’s
consumer mobile electronic communication device and app, in
combination with Englund’s POS equipment, to include a PI
(presentable indicator) indicating by UPC a bill-pay product
offered by the retailer, and an amount, as claimed.
[The Examiner] presents no motive to structure Lee’s
consumer mobile electronic communication device and app, in
combination with Englund’s POS equipment to include a
“communicable indicia”, as claimed, of a presentation of a PI at
the POS. (The PI indicates by UPC a bill-pay product and
amount.) A communicable indicator is taught by spec and
drawing Fig 2A, 2B to be creatable by a consumer mobile
electronic communication device with [the] app, such as by using
its camera, microphone or gyroscope.
[R]egarding method claim 59, [the Examiner] presents no
motive to structure Lee’s consumer mobile electronic
communication device with [an] app, in combination, with
Englund’s POS equipment to present a PI to the POS equipment,
a PI related to a UPC and an amount and received from a third
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party Payment Facilitator, as claimed, and presenting indicia of
the presentation of the Pl, as claimed, to the POS.
App. Br. 20–21.
We do not find these arguments persuasive. As best understood,
Appellants argue that the Examiner has failed to provide a motivation to
combine the teachings of Englund and Lee to achieve the inventions recited
in claims 58 and 59. However, Appellants do not address the rationale
provided by the Examiner in the final Office Action. The Examiner finds
“[i]t would have been obvious to one with ordinary skill in the art before the
effective filing date of the claimed invention, to modify the method of
Englund, to include the above limitations, as taught by Lee, in order to easily
purchase the items, paragraph [0008].” Final Act. 17. As such, the
Examiner has articulated reasoning with a rational underpinning for the
combination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants do not provide any explanation for why the Examiner’s rationale
is deficient and therefore we are not persuaded the Examiner erred in
rejecting claims 58 and 59. We sustain the rejection of claims 58 and 59
under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s rejection of claims 54–57 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 58 and 59 under
35 U.S.C. § 103.
We reverse the Examiner’s rejection of claims 48–53 under 35 U.S.C.
§ 101.
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We reverse the Examiner’s rejection of claims 48–57 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART