Ronald Scott. Alcorn et al.

Patent Trials and Appeals Board

Oct 21, 2019

14487652 - (D) (P.T.A.B. Oct. 21, 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.
14/487,652 09/16/2014 Ronald Scott Alcorn 90850-916190(002900US) 4646
20350 7590 10/21/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
10/21/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONALD SCOTT ALCORN, JIE HE, and TONY SELWAY
____________

Appeal 2018-002569
Application 14/487,652
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, 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, 3–8, 10, 12, 14–19, and 21. 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 September 15, 2017) and Reply Brief (“Reply Br.,” filed January 9,
2018), and the Examiner’s Answer (“Ans.,” mailed November 9, 2017) and
Final Office Action (“Final Act.,” mailed May 8, 2017). Appellant identifies
the real party in interest as Early Warning Services, LLC of Scottsdale,
Arizona. Appeal Br. 3.
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CLAIMED INVENTION
Appellant’s claimed invention relates to a system and method for
mapping and monitoring deposit channels (Spec., Title).
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for monitoring presentation of
instruments to a financial institution, comprising:
[(a)] receiving, at a channel mapping/monitoring system
from a financial institution, reference deposit channel
information for each of a plurality of instruments presented to the
financial institution, the reference deposit channel information
representing instrument presentations into different deposit
channels at the institution over each of a plurality of reference
time periods, wherein the financial institution is
communicatively coupled to the channel mapping/monitoring
system through a network, and wherein the financial institution
is further communicatively coupled through the network to a
duplicate transaction detection system, the duplicate transaction
detection system alerting the financial institution in the event of
possible fraud from the presentation of a same instrument for
deposit on more than one occasion;
[(b)] mapping, at the channel mapping/monitoring
system, the reference deposit channel information for the
plurality of reference time periods, to derive data reflecting the
relative number of instrument presentations into each of the
deposit channels for each of the plurality of reference time
periods;
[(c)] calculating, at the channel mapping/monitoring
system, from the mapped reference deposit channel information
for the plurality of reference time periods, prediction interval
information representing an expected range of instrument
presentations for each deposit channel that would reflect
expected variations in deposit channel information;
[(d)] receiving, at the channel mapping/monitoring
system, deposit channel information from the institution for a
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given time period under review, for monitoring the deposit
channel information for that time period under review;
[(e)] comparing, at the channel mapping/monitoring
system, for each deposit channel, the deposit channel
information for the time period under review to the predicted
interval information in order to determine if any deposit channel
during the time period under review falls outside the expected
range of instrument presentations; and
[(f)] assessing, at the financial institution and based on
determining that any deposit channel during the time period
under review falls outside expected range of instrument
presentations, whether possible fraud from the presentation of a
same instrument for deposit on more than one occasion, as
provided in an alert from the duplicate transaction detection
system, comprises a false positive.
REJECTIONS
Claims 1, 3–8, 10, 12, 14–19, and 21 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1, 3–8, 10, 12, 14–19, and 21 are rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 7–16).
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, an invention 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
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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
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).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “verifying possible fraud based on
irregular deposit channel activity and duplicate transaction identification,”
which the Examiner concluded is an abstract idea similar to other concepts
that the courts have held abstract (Final Act. 5–6). The Examiner also
determined that the claims do not include additional elements that are
sufficient to amount to significantly more than the abstract idea itself (id.
at 7).
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After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance 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”). 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 is 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 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain 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 consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the clam is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). 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.
We are not persuaded, as an initial matter, that the Examiner
overgeneralized the claims as directed to “verifying possible fraud based on
irregular deposit channel activity and duplicate transaction identification” or
that the Examiner otherwise failed to consider the claims as a whole (Appeal
Br. 8–10). Instead, Examiner’s characterization of claim 1 is, in our view,
fully consistent with the Specification. Cf. Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.”).
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Appellant asserts that the claims are directed to specially programmed
computer systems and methods that evaluate data from
a duplicate transaction detection system (providing an alert to a
financial institution of possible fraud from duplicate presentation
of an instrument) and from a channel mapping/monitoring
system (providing information on deposit channels that fall
outside an expected range) in order to determine that an alert of
duplicate presentation (suggesting possible fraud) is a false
positive
(Appeal Br. 9). Appellant, thus, maintains that “rather than ‘verifying
possible fraud based on irregular deposit channel activity and duplicate
transaction identification,’ Appellant’s system and method does the
opposite, namely finding that an alert based on duplicate presentation is a
false positive and is not an indication of fraud” (id.). That, in our view, is a
distinction without a difference.
Claim 1 calls for “assessing . . . based on determining that any deposit
channel . . . falls outside expected range of instrument presentations, whether
possible fraud . . . as provided in an alert from the duplicate transaction
detection system, comprises a false positive.” Yet, in determining, based on
whether a deposit channel falls outside expected range, whether or not a
false indication of fraud has been detected, one is, in essence, also
determining whether or not an actual fraud has occurred, i.e., “verifying
possible fraud based on irregular deposit channel activity and duplicate
transaction identification.”
We also do not agree with Appellant that the Examiner erred in
determining that claim 1 is directed to an abstract idea (Appeal Br. 8–12).
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
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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 the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled “SYSTEM AND METHOD FOR
MAPPING AND MONITORING DEPOSIT CHANNELS,” and describes,
in the “Background” section, that banks and other institutions often use
information on deposit channels (i.e., the manner in which a check is
presented to a bank for payment) to “reduce the risk from fraudulent use of
duplicate checks and other negotiable instruments” (Spec. ¶ 1). However,
according to the Specification, assessing risk based on deposit channel
information can sometimes be made difficult by systems and processes
maintained within the banks (id. ¶ 3). For example, a bank may have an
internal practice of designating an ACH transaction both as an electronic
ACH transaction and as a presentment of a paper check at a teller window so
that the bank can track the transaction both electronically and in paper; also,
in some cases, channel deposit designations may be ambiguous such that a
single check may be entered twice with different deposit channel
information and, thus, appear to be duplicate presentments, even though only
one item has actually been presented (id.). This then results in a “false
positive” (i.e., an alert falsely suggesting potential fraud), which not only
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may inconvenience the bank and its customer, but also may lead to “time
and cost for the bank in order to resolve the false positive, and loss of
goodwill among customers affected by a false positive” (id.).
The claimed invention is ostensibly intended to address these issues
by providing a method and system for monitoring deposit channels so as to
avoid false positives by mapping deposit channel information over reference
time periods and using the mapped information to determine if an apparent
duplicate presentation has resulted in a “false positive,” i.e., a false alert to
the bank of a duplicate presentation. Claim 1, thus, recites a method for
monitoring the presentation of instruments to a financial institution by:
(1) receiving reference deposit channel information representing instrument
presentations into different deposit channels over each of a plurality of
reference time periods, i.e.,
receiving, at a channel mapping/monitoring system from a
financial institution, reference deposit channel information for
each of a plurality of instruments presented to the financial
institution, the reference deposit channel information
representing instrument presentations into different deposit
channels at the institution over each of a plurality of reference
time periods, wherein the financial institution is
communicatively coupled to the channel mapping/monitoring
system through a network, and wherein the financial institution
is further communicatively coupled through the network to a
duplicate transaction detection system, the duplicate transaction
detection system alerting the financial institution in the event of
possible fraud from the presentation of a same instrument for
deposit on more than one occasion
(step (a)); (2) mapping the reference deposit channel information to derive
data reflecting the relative number of instrument presentations into each of
the deposit channels for each of the reference time periods, i.e.,
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mapping, at the channel mapping/monitoring system, the
reference deposit channel information for the plurality of
reference time periods, to derive data reflecting the relative
number of instrument presentations into each of the deposit
channels for each of the plurality of reference time periods
(step (b)); (3) calculating prediction interval information representing an
expected range of instrument presentations for each deposit channel, i.e.,
calculating, at the channel mapping/monitoring system, from the
mapped reference deposit channel information for the plurality
of reference time periods, prediction interval information
representing an expected range of instrument presentations for
each deposit channel that would reflect expected variations in
deposit channel information
(step (c)); (4) receiving deposit channel information for a given time period
under review, i.e.,
receiving, at the channel mapping/monitoring system, deposit
channel information from the institution for a given time period
under review, for monitoring the deposit channel information for
that time period under review
(step (d)); (5) comparing the deposit channel information for the time period
under review to the predicted interval information to determine if the deposit
channel information falls outside the expected range of instrument
presentations, i.e.,
comparing, at the channel mapping/monitoring system, for each
deposit channel, the deposit channel information for the time
period under review to the predicted interval information in order
to determine if any deposit channel during the time period under
review falls outside the expected range of instrument
presentations
(step (e)); and (6) assessing whether an alert received from the duplicate
transaction detection system is a false positive, i.e.,
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assessing, at the financial institution and based on determining
that any deposit channel during the time period under review falls
outside expected range of instrument presentations, whether
possible fraud from the presentation of a same instrument for
deposit on more than one occasion, as provided in an alert from
the duplicate transaction detection system, comprises a false
positive
(step (f)). Simply put, claim 1 recites (1) collecting information, i.e., deposit
channel information; (2) analyzing the information, i.e., sorting (mapping)
the deposit channel information to determine a percentage of instruments
falling within each deposit channel and calculating a prediction interval for
each channel, i.e., a variance that would be considered normal or expected;
(3) collecting additional information, i.e., deposit channel information for a
period under review; (4) analyzing the additional information, i.e.,
comparing, for each deposit channel, the deposit channel information for the
time period under review to the predicted interval information to determine
if any deposit channel falls outside the expected range; and (5) reporting the
results of the collection and analysis, i.e., assessing, based on whether any
channel data fall outside the expected range, whether fraud has been
detected. These limitations, given their broadest reasonable interpretation,
recite receiving and analyzing deposit channel information to determine an
expected range of deposit channel activity, and detecting and assessing
significant variations from the expected deposit channel activity to, thus,
verify the detection of a fraudulent transaction, i.e., a fundamental economic
practice, which is a method of organizing human activity and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Fraud detection is a long-standing economic practice,
see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
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2016) (“These are the same questions (though perhaps phrased with different
words) that humans in analogous situations detecting fraud have asked for
decades, if not centuries.”), and assessing whether a false positive has been
detected by comparing deposit channel information for a time period under
review to expected deposit activity, as recited in claim 1, also is substantially
similar to other practices that the courts have held abstract. See, e.g., id.
at 1093–94 (collecting and analyzing information, according to one of
several rules, to detect misuse and notifying a user when misuse is detected);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (detecting credit card fraud based on information relating past
transactions to a particular Internet address). See also, e.g., Berkheimer v.
HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) (concluding that parsing,
comparing, storing, and editing data are abstract ideas); SmartGene, Inc. v.
Advanced Biological Labs., 555 F. App’x 950 (Fed. Cir. 2014) (comparing
new and stored information and using rules to identify options is an abstract
idea). That the data being compared are deposit channel information as
opposed to another type of data does not make the claim any less abstract.
See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
(“As many cases make clear, even if a process of collecting and analyzing
information is ‘limited to particular content’ or a particular ‘source,’ that
limitation does not make the collection and analysis other than abstract.”
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353, 1355
(Fed. Cir. 2016) (citing cases)).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
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additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional element recited in claim 1, beyond the abstract
idea, is the claimed “channel mapping/monitoring system” — an element
that, as the Examiner observes (Final Act. 7), is recited at a high level of
generality, i.e., as comprising generic computer components (see also, e.g.,
Spec. ¶¶ 30–33). We find no indication in the Specification, nor does
Appellant direct us to any 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 assertedly 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 also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, 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 the 2019 Revised Guidance.3

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
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Appellant argues that the combined features of the claimed invention
“improve the operational results of duplicate transaction detection systems
by making such systems operate more accurately and further avoid the
inconvenience to and loss of goodwill among customers that results from
such false positives” (Appeal Br. 9–10). But, we are not persuaded that this
is a technological improvement, as opposed to an improvement in a business
practice, i.e., detecting duplicate presentation of an instrument, where, as
described above, there is no indication in the Specification that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions.
We conclude, for the reasons set forth above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
channel mapping/monitoring system recited in the claim is no more than a
generic computer component used as a tool to perform the abstract idea of
“verifying possible fraud based on irregular deposit channel activity and
duplicate transaction identification.” As such, it does not integrate the
recited 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

idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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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 the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
We note at the outset that Appellant misapprehends the controlling
precedent to the extent Appellant argues that claim 1 is patent eligible (i.e.,
that claim 1 amounts to “significantly more” than an abstract idea and
includes elements or functions that are not well-understood, routine, or
conventional) because the claim is allegedly novel and/or non-obvious in
view of the prior art (Appeal Br. 13–14). 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
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
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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.”).
Appellant points to the Federal Circuit’s holding, in BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), that an inventive concept can be found in the non-conventional and
non-generic arrangement of known conventional pieces (Appeal Br. 14).
And Appellant summarily asserts that even assuming that the system used to
implement Appellant’s invention includes generic computer elements, “the
claimed invention involves a unique and novel arrangement of computer
hardware components and functions that, in combination, perform novel
functions” (id.). But, Appellant does not identify the allegedly “non-
conventional and non-generic” arrangement of elements that provides the
inventive concept. Nor does Appellant otherwise explain how BASCOM
impacts the patent eligibility of the present claims.
Appellant further argues that “computer elements configured for a
special-purpose (as is the case here) are not a general purpose computer, but
rather are a special purpose computer programmed to perform the unique
functions and algorithms recited” (Appeal Br. 15). But, as described above,
we find no indication in the Specification that the operations recited in
claim 1 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any assertedly
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inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. Appellant also offers no evidence or technical reasoning to
demonstrate that the “receiving,” “mapping,” “calculating,” “comparing,”
and “assessing” steps recited in claim 1 are not well-understood, routine, and
conventional computer activities, i.e., generic computer functions. Cf. In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011) (“Katz has not claimed a specific function performed by a
special purpose computer, but has simply recited the claimed functions of
‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed
below, those functions can be achieved by any general purpose computer
without special programming.”). Nor does Appellant identify any detail or
property that would transform the otherwise generic computer components
into a specialized or special purpose machine.
Simply programming a general-purpose computer to perform an
abstract idea does not provide an “inventive concept” such that the claim
amounts to significantly more than that abstract idea. See Alice, 573 U.S.
at 221–27 (applying an abstract idea, such as an algorithm, on a general
purpose computer is not enough to transform a patent-ineligible abstract idea
into a patent-eligible invention.); EON Corp. IP Holdings LLC v. AT&T
Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A general purpose
computer is flexible — it can do anything it is programmed to do.”).
Finally, we are not persuaded of Examiner error by Appellant’s
argument that claim 1 poses no risk of preemption (Appeal Br. 15–16).
There is no dispute that the Supreme Court has described “the concern that
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drives [the exclusion of abstract ideas from patent-eligible subject matter] as
one of pre-emption.” Alice Corp., 573 U.S. at 216. Yet, 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 Corp., 573 U.S. at 216). “[P]reemption may signal patent
ineligible subject matter [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 1, and claims 3–8, 10, 12, 14–19, and 21,
which fall with claim 1.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph (now 35 U.S.C. § 112(a)), is
a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue
Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The
disclosure, as originally filed, need not literally describe the claimed subject
matter (i.e., using the same terms or in haec verba) in order to satisfy the
written description requirement. But the specification must convey with
reasonable clarity to those skilled in the art that, as of the filing date, the
inventor was in possession of the claimed invention. See id.
Appeal 2018-002569
Application 14/487,652

19
In rejecting the pending claims under 35 U.S.C. § 112(a), the
Examiner noted that the claims recite “assessing . . . based on determining
that any deposit channel . . . falls outside expected range of instrument
presentation, whether possible fraud from the presentation of a same
instrument for deposit on more than one occasion” comprises a false positive
(Final Act. 4). And the Examiner concluded that the Specification does not
disclose that the assessment step is “based on both the irregular deposit
channel activity and the presentation of a same instrument for deposit on
more than one occasion” (id. at 5).
We agree with Appellant that a person of ordinary skill would
understand from the Specification, including at least paragraphs 2–4, 13, 14,
and 24, that Appellant was in possession of the claimed invention, including
“the use of deposit channel information (and deviation from expected ranges
of presentation activity) to determine that an apparent duplicate presentment
may be a ‘false positive’ in suggesting possible fraud,” at the time the
present application was filed (Appeal Br. 6).
Therefore, we do not sustain the Examiner’s rejection of claims 1, 3–
8, 10, 12, 14–19, and 21 under 35 U.S.C. § 112(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–8, 10,
12, 14–19,
21
101 Eligibility 1, 3–8, 10,
12, 14–19,
21

Appeal 2018-002569
Application 14/487,652

20
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–8, 10,
12, 14–19,
21
112(a) Written
Description
1, 3–8, 10,
12, 14–19,
21
Overall
Outcome
1, 3–8, 10,
12, 14–19,
21

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