Salmon, Diane et al.

Patent Trials and Appeals Board

Oct 10, 2019

14244488 - (D) (P.T.A.B. Oct. 10, 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.
14/244,488 04/03/2014 Diane Salmon P-41948US04/090426-30484 8649
113349 7590 10/10/2019
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
WONG, ERIC TAK WAI
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIANE SALMON, SUSAN FRENCH, VICTORIA GRAHAM,
AMIT BHARGAVA, SHIPRA JHA, and NANCY KIM
____________

Appeal 2018-008141
Application 14/244,488
Technology Center 3600
____________

Before JOSEPH L. DIXON, JOYCE CRAIG, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21–40. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies the
real party in interest as VISA International Service Association. App. Br. 2.
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention generally relates to “apparatuses, methods and
systems for rewards, points and currency exchange,” and more particularly,
to “universal value exchange multipoint transactions apparatuses, methods
and systems.” Spec. ¶ 3 (emphasis omitted).
According to the Specification, “[i]n some implementations, the user
may desire to convert purchasing power available in one currency ecosystem
to another currency utilized in a completely different ecosystem.” Spec.
¶ 46. As an example, “the user may desire to convert points from traditional
rewards programs into cash withdrawn from an ATM-linked account.”
Spec. ¶ 46. As another example, “the user may desire to convert rewards
points from an airline miles program into virtual currency that can be
utilized in an online social networking game, e.g., Farmville.” Spec. ¶ 46.
Claim 21, reproduced below, is representative of the subject matter on
appeal:
21. A processor-implemented method for identifying points
redemption eligibility to transform value equivalent exchange
instructions in cross-ecosystem currency exchanges, comprising:
obtaining, by one or more data processors, a cross-
ecosystem currency exchange instruction in response to a user
instruction, said instruction including the following information:
currency source types, source currency account numbers, source
currency access usernames, source currency access passwords,
currency destination types, destination currency account
numbers, destination currency access usernames, and destination
currency access passwords, said user instruction being provided
via user interface elements on a user mobile device for
interactions with a user;
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determining, by the one or more data processors, currency
types based on parsing the cross-ecosystem currency exchange
instruction;
identifying, by the one or more data processors, multiple
brokers based on parsing the cross-ecosystem currency exchange
instruction;
determining, by the one or more data processors, exchange
rates of the currency types;
obtaining, by the one or more data processors, currency
exchange restrictions and conditions associated with the multiple
brokers, wherein the currency exchange restrictions include a
restriction rule against converting rewards points into rewards
points of another rewards points program, wherein the currency
exchange conditions includes a condition rule defining a
threshold amount of rewards points for exchange;
generating, by the one or more data processors, based on
the rules from the currency exchange restrictions and conditions,
electronic currency exchange flow paths for exchange with the
multiple brokers;
issuing, by the one or more data processors, electronic
currency transfer requests messages in the generated electronic
currency exchange flow paths to the multiple brokers;
determining, by the one or more data processors, a points
redemption eligibility, from the multiple brokers through the
electronic currency exchange flow paths, for completing the
exchange on the cross-ecosystem currency exchanges, said
determining comprising identifying a source of points, a
destination of the points, a complementary exchange response
for the points redemption, and a liquidation response for the
redemption; and
generating, by the one or more data processors, an
adjustment of accounts associated with the issued electronic
currency transfer request to reflect the completed cross-
ecosystem currency exchange and the points redemption for
display on the user interface elements.
App. Br. 21–22 (Claims Appendix).
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The Examiner’s Rejection
The Examiner made the following rejection of the claims on appeal:
Claims 21–40 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 2–7.

ANALYSIS2
Appellant disputes the Examiner’s conclusion that claims 21–40 are
directed to patent-ineligible subject matter. App. Br. 8–20. Appellant
argues these pending claims as a group. See App. Br. 8–20. Thus, for
purposes of our analysis, we select independent claim 21 as the
representative claim, and any claim not argued separately will stand or fall
with our analysis of the rejection of claim 21. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2017).
Appellant argues the claimed invention “solv[es] a specific technical
problem associated with universal value exchange” (App. Br. 8), and asserts
that “[t]he technological problem in prior technology is the lack of uniform
way to technically address loyalty or rewards program in the same approach
to currencies in the real-world monetary system” (App. Br. 10). See App.
Br. 11 (“[T]he claims address a challenge (ability to perform value
exchanges across various ecosystems) particularly present in the digital
value exchange.”) (emphasis omitted). In particular, Appellant argues the
claimed invention solves this alleged problem “by providing a systematic

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed February 7, 2018 (“App. Br.”); the Examiner’s Answer mailed May 17,
2018 (“Ans.”); the Final Office Action mailed August 7, 2017 (“Final
Act.”); and Appellant’s Specification filed April 3, 2014 (“Spec.”).
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and uniform data instruction structure,” and that “[t]he technical solution
creates a new and novel GUI to address the technical problem
technologically and eliminate errors created using previous GUIs.” App.
Br. 10. Appellant argues the claimed invention also provides an improved
“user interface.” App. Br. 11. Appellant argues the claimed invention
“solve[s] a problem using a specific ordered combination of rules.” App.
Br. 13–14 (emphasis omitted); see App. Br. 17 (“[T]he recited claims solve
problems with desired results by generating a specific ordered combination
of rules to create currency exchange flow paths to facilitate the value
exchanges for a user in response to a request from the user.”). Appellant
also argues the Examiner oversimplifies the claims by failing “to consider
the recited specific combination of rules for enabling funds transfer for
prepaid accounts.” App. Br. 19. In the Answer, the Examiner maintained
and further clarified the Section 101 rejection (Ans. 4–12), and Appellant
did not file a reply brief.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
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inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 573 U.S. at 217;
84 Fed. Reg. at 56.
Here, we conclude Appellant’s independent claim 21 recites an
abstract idea. More specifically, Appellant’s claims are generally directed to
facilitating currency exchange, as found by the Examiner. See Final Act. 2.
This is consistent with how Appellant describes the claimed invention. See
Spec. ¶¶ 3 (“The present innovations are directed generally to apparatuses,
methods and systems for rewards, points and currency exchange.”), 6–7
(describing converting various types of currency into other various types of
currency, such as, for example, rewards points into cash withdrawn from an
ATM); App. Br. 8 (describing the claimed invention as focused on
“universal value exchange”). Consistent with our Office Guidance and case
law, we conclude that facilitating currency exchange, including among
various currency ecosystems, is a certain method of organizing human
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activity (e.g., a fundamental economic practice)—i.e., an abstract idea.
See 84 Fed. Reg. at 52; see also Alice, 573 U.S. at 219–20 (concluding that
use of a third party to mediate settlement risk is a “fundamental economic
practice” and thus, an abstract idea); Bilski v. Kappos, 561 U.S. 593, 611–12
(2010) (concluding hedging to be a fundamental economic practice and,
therefore, an abstract idea); Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1054 (Fed. Cir. 2017) (holding that “processing an application
for financing a purchase” falls within certain methods of organizing human
activities and is, therefore, an abstract idea).
Claim 21 is reproduced below with the claim limitations that recite
facilitating currency exchange in italics:
21. A processor-implemented method for identifying points
redemption eligibility to transform value equivalent exchange
instructions in cross-ecosystem currency exchanges, comprising:
obtaining, by one or more data processors, a cross-
ecosystem currency exchange instruction in response to a user
instruction, said instruction including the following information:
currency source types, source currency account numbers, source
currency access usernames, source currency access passwords,
currency destination types, destination currency account
numbers, destination currency access usernames, and
destination currency access passwords, said user instruction
being provided via user interface elements on a user mobile
device for interactions with a user;
determining, by the one or more data processors, currency
types based on parsing the cross-ecosystem currency exchange
instruction;
identifying, by the one or more data processors, multiple
brokers based on parsing the cross-ecosystem currency
exchange instruction;
determining, by the one or more data processors, exchange
rates of the currency types;
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obtaining, by the one or more data processors, currency
exchange restrictions and conditions associated with the
multiple brokers, wherein the currency exchange restrictions
include a restriction rule against converting rewards points into
rewards points of another rewards points program, wherein the
currency exchange conditions includes a condition rule defining
a threshold amount of rewards points for exchange;
generating, by the one or more data processors, based on
the rules from the currency exchange restrictions and conditions,
electronic currency exchange flow paths for exchange with the
multiple brokers;
issuing, by the one or more data processors, electronic
currency transfer requests messages in the generated electronic
currency exchange flow paths to the multiple brokers;
determining, by the one or more data processors, a points
redemption eligibility, from the multiple brokers through the
electronic currency exchange flow paths, for completing the
exchange on the cross-ecosystem currency exchanges, said
determining comprising identifying a source of points, a
destination of the points, a complementary exchange response
for the points redemption, and a liquidation response for the
redemption; and
generating, by the one or more data processors, an
adjustment of accounts associated with the issued electronic
currency transfer request to reflect the completed cross-
ecosystem currency exchange and the points redemption for
display on the user interface elements.
App. Br. 21–22 (emphasis added).
More particularly, the concept of facilitating currency exchange
comprises (i) obtaining a currency exchange request (i.e., the claimed step of
“obtaining . . . a cross-ecosystem currency exchange instruction”);
(ii) determining currency types (i.e., the claimed step of “determining . . .
currency types”); (iii) identifying brokers of the currency types (i.e., the
claimed step of “identifying . . . multiple brokers”); (iv) determining
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exchange rates (i.e., the claimed step of “determining . . . exchange rates of
the currency types”); (v) identifying any restrictions or conditions in the
requested exchange (i.e., the claimed step of “obtaining . . . currency
exchange restrictions and conditions”); (vi) contacting brokers (i.e., the
claimed steps of “generating . . . electronic currency exchange flow paths for
exchange with the multiple brokers” and “issuing . . . electronic currency
transfer requests messages . . . to the multiple brokers”); and
(vii) exchanging currencies using the brokers (i.e., the claimed steps of
“determining . . . a points redemption eligibility” and “generating . . . an
adjustment of accounts”).
Because claim 21 recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a practical application. 84 Fed. Reg. at
54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
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(see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. Rather, the step of
“provid[ing]” the user instruction “via user interface elements on a user
mobile device for interactions with a user” is the type of extra-solution
activities (i.e., in addition to the judicial exception) the courts have
determined insufficient to transform judicially excepted subject matter into a
patent-eligible application. See MPEP § 2106.05(g); Bancorp Servs., L.L.C.
v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011)
aff’d, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving,
and providing data . . . are inconsequential data gathering and insignificant
post solution activity”). Contrary to Appellant’s argument (App. Br. 11), the
invention of independent claim 21 does not improve a user interface.
Indeed, other than reciting that the “user instruction” is “provided via user
interface elements on a user mobile device,” claim 21 does not include any
limitation directed to any particular aspect of a user interface itself.
Also contrary to Appellant’s arguments (see, e.g., App. Br. 8–11, 16–
19), the invention of claim 21 is not directed to a technological
improvement. Although Appellant characterizes the claimed invention as
“solving a specific technical problem associated with universal value
exchange” (App. Br. 8), Appellant does not sufficiently identify the
technological “problem” being solved. See App. Br. 8–20. The purported
improvement or “specific approach” (“providing a systematic and uniform
data instruction structure”) (App. Br. 9–10), however, relates to the abstract
idea, and does not improve a computer, technology, or a technical field.
See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016) (“We . . . look to whether the claims in these patents focus
on a specific means or method that improves the relevant technology or are
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instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.”) (citing Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). Here, unlike in McRO and
Enfish, we find the invention of claim 21 uses computers, networking, and
currency exchange as tools, rather than improving upon those tools. Further,
Appellant does not explain persuasively how the steps recited in claim 21
are not merely the generic use of the Internet, computer networks, or “digital
value exchange[s].” See App. Br. 11–13; DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258–59 (2014) (“We caution, however,
that not all claims purporting to address Internet-centric challenges are
eligible for patent.”).
For at least the foregoing reasons, claim 21 does not integrate the
judicial exception into a practical application.
Because we determine the invention of claim 21 is directed to an
abstract idea or combination of abstract ideas, we analyze the claim under
step two of Alice to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
“significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing
Mayo, 566 U.S. at 72–73, 77–79). As stated in the Office Guidance, many
of the considerations to determine whether the claims amount to
“significantly more” under step two of the Alice framework are already
considered as part of determining whether the judicial exception has been
integrated into a practical application. 84 Fed. Reg. at 56. Thus, at this
point of our analysis, we determine if the claims add a specific limitation, or
combination of limitations, that is not well-understood, routine, conventional
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activity in the field, or simply appends well-understood, routine,
conventional activities at a high level of generality. 84 Fed. Reg. at 56.
Here, Appellant’s claim 21 does not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. Obtaining, determining, identifying, and generating data and
instructions from data as in claim 21, for example, merely requires the well-
understood function of a computer/computer network. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). In addition, we note
Appellant describes the components of the claimed invention at a high level
of generality and the components perform generic functions that are well-
understood, routine, and conventional. See, e.g., Claim 21 (“processor-
implemented;” “one or more data processors”); Spec. ¶ 276 (“The CPU
comprises at least one high-speed data processor adequate to execute
program components for executing user and/or system-generated requests.”);
Figs. 2A–2G.
Additionally, to the extent Appellant contends the claims do not seek
to tie-up (i.e., preempt) an abstract idea (see App. Br. 17–18), we are
unpersuaded of Examiner error. “‘[W]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.’” FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
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optimization in the e-commerce setting do not make them any less
abstract.”). Further, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 21 under 35 U.S.C. § 101. Further, we sustain the Examiner’s
rejection under 35 U.S.C. § 101 of claims 22–40, which were not argued
separately. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Basis Affirmed Reversed
21–40 101 Eligibility 21–40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
See 37 C.F.R. § 41.50(f).

AFFIRMED