RetailMeNot, Inc.

Patent Trials and Appeals Board

Nov 17, 2020

15208128 - (D) (P.T.A.B. Nov. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/208,128 07/12/2016 Aaron Dragushan 034250-0447251 7943
909 7590 11/17/2020
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/17/2020 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AARON DRAGUSHAN and SHAUN F. DUBUQUE
____________

Appeal 2020-004551
Application 15/208,128
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 9, 2020) and Reply Brief (“Reply Br.,” filed June 1, 2020), and
the Examiner’s Answer (“Ans.,” mailed April 1, 2020) and Final Office
Action (“Final Act.,” mailed April 4, 2019). Appellant identifies
RetailMeNot, Inc. as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The claimed invention “relates generally to combinatorial
optimization problems that scale poorly” and, more specifically, to
“techniques to relatively quickly approximate a combinatorial optimization
of allocation of stored value card balances in relatively large inventories of
such cards in stored-value-card exchanges” (Spec. ¶ 2).
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method, comprising:
[(a)] obtaining, with one or more computers, a repository
of stored value card records, each record corresponding to a
stored value card, and each record including an identifier of a
merchant accepting the respective stored value card and a
balance of value remaining on the respective stored value card,
each stored value card having at least one previous user
possessor;
[(b)] receiving, with one or more computers, a request for
a stored value card from a remote client computing device;
[(c)] inferring, with one or more computers, based on the
request, a transaction balance of a transaction in which the
requested stored value card is to be used;
[(d)] inferring, with one or more computers, based on the
request, a merchant to participate in the transaction;
[(e)] identifying, with one or more computers, a subset of
the stored value card records in response to determining that the
subset of stored value cards are accepted by the inferred
merchant, the subset having more than 20 stored value cards with
more than 15 different balances;
[(f)] selecting, with one or more computers, one or more
stored value cards from among the identified subset based on a
comparison between the inferred transaction balance and the
value remaining on the selected one or more stored value cards;
and
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[(g)] sending, with one or more computers, balance-
access information by which the selected one or more stored
value card balance or balances can be spent at a point of sale
terminal.
REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
ANALYSIS
Independent Claims 1 and 20 and Dependent Claims 2–8, 10–17, and 19
Appellant argues claims 1–8, 10–17, and 19, and 20 as a group
(Appeal Br. 7–15). We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
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ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”).2 That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself. Only then,
is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined here that the claims recite “sending
balance-access information,” i.e., a method of organizing human activity
and, therefore, an abstract idea, and that the recited abstract idea is not
integrated into a practical application (Final Act. 2–4, 6). The Examiner also
determined that the claims do not include additional elements sufficient to
amount to significantly more than the abstract idea itself “because the
additional elements are simply a generic recitation of a computer and a
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computer network performing their generic computer functions” (id. at 4, 6–
8).
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 17–25). 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 claims 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.
The Specification is titled “LOW-LATENCY APPROXIMATION
OF COMBINATORIAL OPTIMIZATION OF RESIDUAL AMOUNTS
WHEN ALLOCATING LARGE COLLECTIONS OF STORED VALUE
CARDS,” and describes, in the Background section, that online exchanges
have arisen where those in possession of stored value cards (e.g., gift cards,
rebate cards, payroll cards) sell these cards, often at a discount relative to the
card balance (Spec. ¶ 4). Access to the value of the card is, in some cases,
conveyed by sending the card and pin numbers, without transferring
possession of the card itself; a buyer may, thus, receive information, e.g., an
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email, text, or in-app data, that the buyer can present on his or her mobile
device to a retailer to buy goods or services with the value remaining on the
card (id.). In some cases, the buyer may later sell the card (including the
remaining balance) back to an exchange, or the exchange may authorize the
user to only use a portion of the value stored on the card (id.).
The Specification describes that “[o]ne consequence of granting
access to cards via networks, e.g., with mobile computing devices, without
transferring a physical token, is that each party having access to the card . . .
could potentially retain the information needed to spend the remaining
balance on the card, even after the card has been sold on the exchange or
returned to the exchange” (Spec. ¶ 5). For example, “the first buyer could
use part of the card’s balance, return the card to the exchange, and then
spend the remaining balance on the card before the card is sold again on the
exchange (or after the card is sold but before it is used by the second buyer)”
(id.). Thus, this approach, although relatively convenient for users, can, give
rise to certain types of fraud (id.).
The claimed invention is intended to address this issue by providing a
method for mitigating the likelihood of fraud by inferring certain
information (rather than merely accessing the information directly from a
request or a database), and thereby reducing the number of people who have
access to the information needed to spend the remaining card balance. The
Specification, thus, describes that some embodiments may infer register
balances and select gift cards to match the inferred balance to expedite card
exhaustion (Spec. ¶ 79). For example, some embodiments estimate a
register balance based on a distribution of previously known balances for a
given retailer and for users who have a profile similar to that of the user
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requesting a card (id.). A set of candidate cards is then obtained, and cards
are selected from among the candidate cards based on (1) a current balance
on the card; and (2) its risk score (e.g., based on the number of users who
have had access to the card; whether these users have a relatively long
history of non-fraudulent card use recorded in the system; the value
remaining on the card; the amount of time since a previous user returned or
provided the card; and the risk score associated with the merchant(s) at
which the card is redeemable) (id.; see also id. ¶ 82). Some embodiments
will select the card closest to the inferred register balance having a risk score
above a threshold; other embodiments calculate a weighted combination of
the risk score and an inverse of the difference between the inferred register
balance (or an actual balance) and the card balance, rank the cards based on
this weighted combined score, and select a highest scoring card (id.). Still
other embodiments may select a riskiest card having a balance expected to
be exhausted by the inferred register balance (id. ¶ 79). In some cases,
stored value cards also may be associated with a demand score, e.g., an
estimated time to exhaustion for each respective stored value card, which
may be based on the number of merchants that accept the card (id. ¶ 83).
The Specification discloses a process, with reference to Figure 4, for
allocating stored value cards, and describes that the method begins with
obtaining a repository of stored value card records (Spec. ¶ 88).3 Thereafter,
when a request for a stored value card is received from a remote client

3 The records may include a list of user identifiers of users who previously
possessed balance-access information of the stored value card; dates and
users who provided or returned the stored value card; dates and users who
consumed the stored value card; and indications of changes in balance of the
stored value card caused by the respective users (id.).
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computing device, the system infers, based on the request, a balance of a
transaction in which the requested card is to be used and, if the request does
not identify a merchant, also infers a merchant that will participate in the
transaction (id. ¶ 91). Transaction amounts are inferred, in some
embodiments, based on the merchant, e.g., by interrogating historical
records and calculating a mean, median for the merchant, or based on other
information provided by the user (id. ¶¶ 91–97). And the merchant may be
inferred based, for example, on a geolocation associated with the request or
based on a profile of the user associated with the computing device that
issued the request (id. ¶¶ 96, 97). Next, a subset of stored value cards that
may be accepted by the inferred merchant is identified, and one or more
stored value cards are selected from the identified subset according to
various criteria, e.g., ranking the subset according to the demand score or the
risk score or a weighted combination thereof and selecting those with a rank
that satisfies a threshold ranking; calculating a difference between each of
the values remaining on the cards in the subset and the inferred transaction
balance, ranking the stored value cards according to the difference, and
selecting a smallest difference less than the inferred transaction amount, a
smallest difference greater than the inferred transaction amount, or a
smallest difference in absolute value relative to the inferred transaction
amount (id. ¶ 99–105). The method concludes by sending balance-access
information to the requesting user by which the selected stored value card
balances can be spent (id. ¶¶ 106).
Consistent with this disclosure, claim 1 recites a method comprising:
(1) obtaining a repository of stored value card records, i.e.,
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obtaining, with one or more computers, a repository of
stored value card records, each record corresponding to a stored
value card, and each record including an identifier of a merchant
accepting the respective stored value card and a balance of value
remaining on the respective stored value card, each stored value
card having at least one previous user possessor
(step (a)); (2) receiving a request for a stored value card and, based on the
request, inferring a transaction balance and a merchant to participate in the
transaction, i.e.,
receiving, with one or more computers, a request for a
stored value card from a remote client computing device;
inferring, with one or more computers, based on the
request, a transaction balance of a transaction in which the
requested stored value card is to be used; [and]
inferring, with one or more computers, based on the
request, a merchant to participate in the transaction
(steps (b), (c), and (d)); (3) identifying a subset of the stored value cards that
are accepted by the inferred merchant and selecting one or more of the
stored value cards based on a comparison between the inferred transaction
balance and the value remaining on the card, i.e.,
identifying, with one or more computers, a subset of the
stored value card records in response to determining that the
subset of stored value cards are accepted by the inferred
merchant, the subset having more than 20 stored value cards with
more than 15 different balances; [and]
selecting, with one or more computers, one or more stored
value cards from among the identified subset based on a
comparison between the inferred transaction balance and the
value remaining on the selected one or more stored value cards
(steps (e) and (f)); and (4) “sending . . . balance-access information by which
the selected one or more stored value card balance or balances can be spent
at a point of sale terminal” (step (g)).
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Appellant argues that the rejection of claim 1 cannot be sustained at
least because the claim does not recite subject matter that falls within any of
the three enumerated groupings of abstract ideas (Appeal Br. 17–20). But,
we agree with the Examiner that the claim limitations, when given their
broadest reasonable interpretation, recite forwarding, in response to a user
request, a stored value card number and pin, i.e., balance-access information.
This information, as is clear from the Specification, is sent to satisfy a
pending sales transaction balance, e.g., at a point of sale location. Indeed,
the Specification describes that to minimize the likelihood of fraud, a user’s
ability to obtain the sensitive balance-access information is limited based
whether the user is presenting the card legitimately, e.g., whether the user is
at a place where there is a legitimate use for the card, i.e., at a retail store
that accepts the card, as opposed to at home with a card only usable for in-
store transactions, whether the user device is exhibiting movement/rotations
or positioned in a particular orientation consistent with using the card in a
retail setting (see, e.g., Spec. ¶¶ 23, 42, 50). Simply put, the sending of
balance-access information is integral to a commercial interaction, which is
a method of organizing human activity and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.4

4 Claim 1, specifically steps (a) through (f), also can characterized
reasonably as reciting a mental process and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52; CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (holding that method
steps that can be performed in the human mind, or by a human using a pen
and paper, are unpatentable mental processes). Although claim 1 recites that
the method steps are performed “with one or more computers,” the
underlying processes are all acts that could be performed by a human
mentally or manually, using pen and paper, without the use of a computer or
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We also are not persuaded by Appellant’s argument that claim 1
recites additional elements that integrate the judicial exception, i.e., the
recited abstract idea, into a practical application under Step 2A, Prong Two
(Appeal Br. 10–13).
The 2019 Revised Guidance references MANUAL OF PATENT
EXAMINING PROCEDURE, Ninth Edition (rev. Jan 2018) (available at
https://mpep.uspto.gov/RDMS/MPEP/E9_R-08.2017.) § 2106.05(a)–(c) and
(e) in non-exhaustively listing considerations indicative that an additional
element or combination of elements may have integrated the recited judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. In particular, the Guidance describes that an additional element may
have integrated the judicial exception into a practical application if the
additional element (1) reflects an improvement in the functioning of a
computer or an improvement to other technology or technical field;
(2) applies or uses the judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition; (3) implements the judicial
exception with, or uses the judicial exception with, a particular machine or
manufacture integral to the claim; (4) effects a transformation or reduction
of an article to a different state or thing; or applies; or (5) applies or uses the
judicial exception in some other meaningful way beyond generally linking

any other machine. A person could, for example, obtain a repository of
stored value card records and receive a request from a user via written or
oral communication, and also could infer, based on the request, a transaction
balance and a merchant to participate in the transaction, as a mental exercise.
Such a person also could mentally, or using pen and paper, identify and
select one or more cards based on a comparison of the inferred transaction
balance and the value remaining on each selected card, and could send
balance-access information, again via oral or written communication.
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the use of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception. Id. At the same time, the Guidance makes clear
that merely including instructions to implement an abstract idea on a
computer, or merely using a computer as a tool to perform an abstract idea;
adding insignificant extra-solution activity to the judicial exception; or only
generally linking the use of the judicial exception to a particular
technological environment or field are not sufficient to integrate the judicial
exception into a practical application. Id.
Citing paragraph 5 of the Specification, Appellant asserts that a
problem with exiting online gift card exchanges is that sensitive information
is leaked more broadly than is desirable (Appeal Br. 11). And Appellant
argues that “the claims recite, with specific technical features, how a specific
technical prior [sic] in prior computer-implemented approaches is
mitigated,” i.e., by inferring, not merely obtaining, certain information (id.
at 12–13).
Appellant maintains, “[f]or at least this reason, the claims integrate the
alleged abstract idea into a practical application” (id. at 13). But, we are not
persuaded that inferring certain information (e.g., a transaction balance and a
merchant) and selecting a gift card to match the inferred information, is a
technological improvement as opposed to an improvement to the abstract
idea of sending balance-access information, which is not enough for patent
eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed.
Cir. 2018) (“[P]atent law does not protect such claims [i.e., claims to an
asserted advance in the realm of abstract ideas], without more, no matter
how groundbreaking the advance.”). This is particularly true, where, as
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here, there is no indication that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
invoke any allegedly 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.”).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea, i.e., one or
more computers, are no more than generic computer components used as
tools to perform the recited abstract idea. As such, they do not integrate the
abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–
24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
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combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant notes that the Examiner acknowledged in the Final Office
Action that the prior art does not disclose “identifying . . . a subset of the
stored value card records in response to determining that the subset of stored
value cards are accepted by the inferred merchant, the subset having more
than 20 stored value cards with more than 15 different balances”; “selecting.
. . one or more stored value cards from among the identified subset based on
a comparison between the inferred transaction balance and the value
remaining on the selected one or more stored value cards”; or “sending . . .
balance-access information by which the selected one or more stored value
card balance or balances can be spent at a point of sale terminal,” i.e.,
steps (e), (f), and (g), as recited in claim 1 (Appeal Br. 14). And Appellant
asserts, “clearly, at least [these] features are not well-understood, routine,
and conventional” (id.).
Yet, Appellant misapprehends the controlling precedent to the extent
Appellant contends, by that assertion, that claim 1 is patent eligible, i.e., that
the claim includes an inventive concept, because the Examiner has indicated
that claim 1 is allowable over the prior art. Neither a finding of novelty nor
a non-obviousness determination automatically leads to the conclusion that
the claimed subject matter is patent eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
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analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “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). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
It also is significant here that the features that Appellant ostensibly
identifies as the inventive concept are, in the case of steps (e) and (f), part of
the abstract idea itself and, therefore, not additional elements to be
considered in determining whether claim 1 includes additional elements or a
combination of elements sufficient to amount to significantly more than the
judicial exception, and in the case of step (g), i.e., “sending . . . balance-
access information by which the selected one or more stored value card
balance or balances can be spent at a point of sale terminal,” no more than
insignificant post-solution activity, which cannot be relied on for patent
eligibility.5

5 See Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (“Flook [i.e., Parker v.
Flook, 437 U.S. 584 (1978)] stands for the proposition that the prohibition
against patenting abstract ideas ‘cannot be circumvented by attempting to
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It could not be clearer from Alice, 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
Corp., 573 U.S. at 217 (citation omitted); see 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 patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and 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) (Moore, J.,
concurring); 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.”).

limit the use of the formula to a particular technological environment’ or
adding ‘insignificant post-solution activity.”’) (quoting Diamond v. Diehr,
450 U.S. 175, 191–92 (1981)); Elec. Power Grp., LLC v. Alstom, S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (pointing out that “merely presenting
the results of abstract processes of collecting and analyzing information,
without more (such as identifying a particular tool for presentation), is
abstract as an ancillary part of such collection and analysis”).
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Here, the Examiner determined and we agree, that the only additional
elements recited in claim 1 beyond the abstract idea are “one or more
computers,” i.e., generic computer components used as tools to perform the
recited abstract idea (Final Act. 6–8) — a determination amply supported by
and fully consistent with the Specification (see, e.g., Spec. ¶¶ 24–29, 132–
140). Appellant cannot reasonably maintain that there is insufficient factual
support for the Examiner’s determination that the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components,
invoke any allegedly inventive programming, or that the claimed invention
is implemented using other than generic computer components to perform
generic computer functions, e.g., receiving, processing, and transmitting
information. Indeed, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims 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, 890 F.3d at 1373 (Moore, J., concurring) (internal citations
omitted); see also BSG Tech LLC, 899 F.3d at 1291 (“BSG Tech does not
argue that other, non-abstract features of the claimed inventions, alone or in
combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
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sustain the Examiner’s rejection of claim 1, and claims 2–8, 10–17, 19, and
20, which fall with claim 1.
Dependent Claim 9
Citing hypothetical claim 1 of Example 37 of the USPTO’s “Subject
Matter Eligibility Examples: Abstract Ideas,”(“Examples”)6 Appellant
asserts that “[t]he USPTO issued Examples state that an alleged abstract idea
is integrated into a practical application if ‘the additional elements recite a
specific manner of [implementing the idea] which provides a specific
improvement over prior systems’” (Appeal Br. 15). And Appellant argues
that “claim 9 integrates the alleged abstract idea into a practical application
(and is, thus, patent eligible) because the claim recites a specific manner
(i.e., a specific greed[y] selection algorithm) of that [sic] provides a specific
improvement over prior systems” (id. at 17).
Appellant’s argument is not persuasive at least because “selecting one
or more stored value cards . . . according to a greedy selection algorithm that
accounts for an amount of times at least some of the stored value cards are
possessed by users,” as recited in claim 9, is not an additional element;
instead, it is part of the abstract idea itself.7 The only additional elements
recited in independent claim 1 beyond the abstract idea, and the only
additional elements recited in dependent claim 9, are “one or more
computers,” i.e., generic computer components used as tools to perform the

6 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf.
7 Claim 9 depends from independent claim 1, and recites that “selecting one
or more stored value cards is performed according to a greedy selection
algorithm that accounts for an amount of times at least some of the stored
value cards are possessed by users.”
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recited abstract idea. And, as 2019 Revised Guidance makes clear, merely
using a computer as a tool to perform an abstract idea is not sufficient to
integrate the judicial exception, i.e., the abstract idea, into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellant cites hypothetical claim 1 of Example 37 for support
(Appeal Br. 15). Yet, rather than paralleling hypothetical claim 1 of
Example 37, claim 9 is akin to hypothetical claim 3 of Example 37.8 Similar
to claim 9, hypothetical claim 3 recites one additional element — a
processor recited at a high level of generality, i.e., as a generic processor
performing a generic computer function of processing data — that the Office
determines “does not integrate the abstract idea into a practical application
because it does not impose any meaningful limits on practicing the abstract
idea.” Examples at 5. In contrast, the Office determines that hypothetical
claim 1 of Example 379 integrates the recited abstract idea, i.e., a mental

8 Claim 3 recites:
A method of ranking icons of a computer system, the method
comprising:
determining, by a processor, the amount of use of each icon over a
predetermined period of time; and
ranking the icons, by the processor, based on the determined amount
of use.
Examples at 4.
9 Claim 1 recites:
A method of rearranging icons on a graphical user interface (GUI) of
a computer system, the method comprising:
receiving, via the GUI, a user selection to organize each icon based on
a specific criteria, wherein the specific criteria is an amount of use of each
icon;
determining, by a processor, the amount of use of each icon over a
predetermined period of time; and
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process, into a practical application because the additional elements (i.e.,
receiving, via a GUI, a user selection to organize each icon based on the
amount of use of each icon, a processor for performing the determining step,
and automatically moving the most used icons to a position on the GUI
closest to the start icon of the computer system based on the determined
amount of use) “recite a specific manner of automatically displaying icons to
the user based on usage[,] which provides a specific improvement over prior
systems, resulting in an improved user interface for electronic devices.” Id.
at 2–3.
Claim 9 does not provide an improvement comparable to that of
hypothetical claim 1. Instead, claim 9, at best, provides an improvement to
the abstract idea of sending balance-access information, which, as described
above, is not enough for patent ineligibility.10
Appellant’s reliance on the Federal Circuit decision in Koninklijke
KPN NV v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019)
(“Gemalto”) is similarly misplaced (Appeal Br. 15; see also Reply Br. 6–7).
In Gemalto, the Federal Circuit reiterated that, in cases involving software
innovations, the inquiry as to whether a claim is directed to an abstract idea
“often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities . . . or, instead, on a process that

automatically moving the most used icons to a position on the GUI
closest to the start icon of the computer system based on the determined
amount of use.
Examples at 2.
10 Appellant’s reliance on the Federal Circuit decision in Koninklijke KPN
NV v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019) (“Gemalto”) is
similarly misplaced
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qualifies as an abstract idea for which computers are invoked merely as a
tool,”’ Gemalto, 942 F.3d at 1150 (quoting Finjan, Inc. v. Blue Coat System,
Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (internal quotation marks
omitted)); and the court determined there that the claims are not directed to
an abstract idea because they are directed to a non-abstract improvement in
an existing technological process (i.e., error checking in data transmissions).
Id. The court explained that, by requiring that a permutation applied to
original data be modified “in time,” the claims recite a specific
implementation of varying the way check data are generated that improves
the ability of prior art error detection systems to detect systematic errors. Id.
And the court determined that “the claims sufficiently capture the inventors’
asserted technical contribution to the prior art by reciting how the solution
specifically improves the function of prior art error detection systems.” Id.
at 1151.
We are not persuaded that claim 9 provides a comparable
improvement or that it otherwise provides a technical improvement to the
functioning of a computer or to another technology. Instead, as described
above, claim 9, at best, provides an improvement to the abstract idea of
sending balance-access information, and merely using a computer as a tool
to implement the abstract idea is not sufficient to integrate the abstract idea
into a practical application.
We are not persuaded on the present record that the Examiner erred in
rejecting dependent claim 9 under 35 U.S.C. § 101. Therefore, we sustain
the Examiner’s rejection.
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Dependent Claim 18
Claim 18 depends from claim 13, which, in turn, depends from
independent claim 1. Claim 13 recites that selecting one or more stored
value cards, as recited in claim 1, comprises, inter alia, “determining
balances associated with more than 500 candidate responses.” And claim 18
recites that “determining balances associated with more than 500 candidate
responses is performed in advance of receiving the request [for a stored
value card from a remote client computing device].”
Appellant asserts that “[c]laim 18 mitigates problems like those . . .
with respect to claim 9, except with a different (though complementary)
specific approach recited in the claim: precomputing a population of
candidate responses to afford lower-latency selections” (Appeal Br. 18).
And Appellant maintains that “claim 18 integrates the alleged abstract idea
into a practical application because the claim recites a specific manner (i.e.,
precomputing candidate responses) of addressing a specific technical
problem (i.e., providing low-latency responses to selection requests) in prior
computer-implemented techniques” (id. at 19).
Appellant’s argument is not persuasive for much the same reasons
outlined above with respect to claim 9. Like claim 9, claim 18, at best,
provides an improvement to the abstract idea of sending balance-access
information, which is not enough for patent ineligibility.
We are not persuaded that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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