Sarah Owen et al.

Patent Trials and Appeals Board

Oct 24, 2019

12194724 - (D) (P.T.A.B. Oct. 24, 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.
12/194,724 08/20/2008 Sarah Owen 87188-748083 (089600US) 7140
20350 7590 10/24/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHOI, PETER H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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 SARAH OWEN, VIRGINIA G. SAYOR, MATT WITHEY,
TODD R. NUZUM, and BARBARA C. GAINES
____________

Appeal 2018-004415
Application 12/194,724
Technology Center 3600
____________

Before BIBHU R. MOHANTY, AMEE A. SHAH, and
MATTHEW S. MEYERS. Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Examiner’s
final decision to reject claims 1, 3–14, 17, 19–30, and 33–38. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “First Data
Corporation.” Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates generally to mobile commerce, and
specifically to “methods and systems for filtering marketing messages sent
to a mobile device.” Spec. ¶ 1.
Claims 1 and 17 are the independent claims on appeal. Independent
claim 1, which we reproduce below, is illustrative of the subject matter on
appeal (with added bracketing for reference):
1. A method of filtering marketing offers sent to a mobile
device, the method comprising:
[(a)] receiving, at a host computer system having a
processor, preference information from a user of the mobile
device through a consumer-side services module, the preference
information indicating marketing offers the user considers to be
relevant;
[(b)] generating, with the processor, one or more delivery
rules and one or more storage rules based on the preference
information, the one or more delivery rules defining conditions
for marketing offers to be sent to the mobile device, the one or
more storage rules defining how marketing offers will be stored
at the mobile device;
[(c)] saving the one or more delivery rules and the one or
more storage rules at the host computer;
[(d)] receiving at the host computer system through a
merchant-side services module an indication from at least one
merchant of redemptions of past marketing offers by the user to
create a history of redemptions, and updating the one or more
delivery rules based on the history of redemptions, such that the
user receives marketing offers for same or similar products, for
same or nearby purchase locations, or for same or similar times
of purchase with the merchant;
[(e)] wherein the host computer system is operated by an
acquirer system, the acquirer system connected to one or more
point-of-sale devices at which the user may conduct transactions
with the merchant using the mobile device to access an account
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at an issuing financial institution, the acquirer system being an
intermediary between the merchant and the issuing financial
institution for processing card transactions, and the acquirer
system receiving transaction information from the merchant and
sending an authorization request to the issuing financial
institution, receiving back an authorization code if the
transaction is authorized, and forwarding the authorization code
to the merchant; and
[(f)] wherein the acquirer system receives information
about redemptions of marketing offers by the user at the point-
of-sale devices using the mobile device, for creating the history
of redemptions received at the host computer that is used as the
basis for updating the one or more delivery rules;
[(g)] receiving at the host computer marketing information
related to at least one marketing offer;
[(h)] applying at the host computer the one or more
delivery rules to the marketing information; and
[(i)] sending the marketing offer from the host computer
to the mobile device based on applying the one or more delivery
rules to the marketing information, for storage of the marketing
offer at the mobile device at a location at the mobile device based
on the one or more storage rules saved at the host computer;
[(j)] wherein sending the marketing offer includes sending
an indication of the location at the mobile device where the
marketing offer is to be stored based on the storage rules saved
at the host computer.
Appeal Br. 17–18 (Claims App.).

THE REJECTION
Claims 1, 3–14, 17, 19–30, and 33–38 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.

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OPINION
Appellant argues all of the claims as a group. See Appeal Br. 6–15.
We select claim 1 as representative of that group with the remaining claims
standing or falling therewith.

35 U.S.C. § 101 Framework
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted).
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“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
After Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on the application of § 101. 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”). That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) providing 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

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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Under the 2019 Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 54, 56.

Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
incorporates the New Ground of Rejection made by the Board in the
Decision mailed December 21, 2016 and determines that “the claimed
subject matter is directed to the concept of filtering marketing offers sent to
a device. In that context, filtering marketing offers is a fundamental
economic and conventional business practice.” Final Act. 3. When viewed
through the lens of the 2019 Revised Guidance, the Examiner depicts the
claimed subject matter as “[c]ertain methods of organizing human activity—
fundamental economic principles or practices (including hedging, insurance,
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mitigating risk); [and] commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations)” under
Prong One of Revised Step 2A. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Appellant contends that the Examiner’s characterization is “at an
impermissibly high level of abstraction and also does not properly reflect the
concept recited in the claims” (Appeal Br. 7), which Appellant characterizes
as a concept that “includes various features relating to methods and systems
managing marketing offers sent to a mobile device and, more specifically,
relating to delivery rules ‘defining conditions for marketing offers to be sent
to the mobile device,’ and storage rules ‘defining how marketing offers will
be stored at the mobile device’” (id. at 8) (emphasis omitted).
Before determining whether the claims at issue are directed to an
abstract idea, we first determine to what the claims are directed. 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 the
claims focus on an abstract idea, and not on any improvement to technology
and/or a technical field.
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The Specification provides for “FILTERING MOBILE
MARKETING OFFERS.” Spec., Title. In the “Background” section, the
Specification discusses that as the use of coupons and other marketing offers
stored in and used with a mobile device “becomes more commonplace, there
is an increasing risk of the offers becoming unmanageable” and as
consumers become “inundated with marketing offers that cannot be
controlled, managed, organized, etc., the marketing offers can become less
relevant to the user and are less likely to be used.” Id. ¶ 4. The claimed
invention addresses the need for a user to “control the marketing offers sent
to the user’s mobile device in a way to provide only offers that may be
relevant or useful to that user and manage or organize them in a way that
makes them easy to use” by providing “improved methods and systems for
filtering marketing messages sent to a mobile device.” Id.
Consistent with the disclosure, claim 1 recites “[a] method of filtering
marketing offers sent to a mobile device, the method comprising:” the steps
of: (a) “receiving, at a host computer system having a processor, preference
information” indicating relevant marketing offers from a user through a
module on a mobile device; (b) generating, with the processor and based on
the preference information, at least one delivery rule defining conditions for
sending offers and at least one storage rule defining how offers will be
stored at the device; (c) saving the rules at the system; (d) receiving, at the
system, an indication of past marketing offers from a merchant through a
module to create a redemption history and updating the delivery rule(s)
based on the history for the purpose of the user receiving offers for similar
products, locations, or times; (e) receiving, by an acquirer system that is an
intermediary between the merchant and credit card processing institution,
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transaction information and sending a request, conditionally receiving a
code, and conditionally forwarding the code by the acquirer system to the
merchant; (f) receiving, by the acquirer system, marketing offer redemption
information for the purpose of creating the redemption history; (g) receiving,
at the host computer, marketing information related to a marketing offer;
(h) applying, at the host computer, the delivery rule(s) to the marketing
information; and (i) and (j) sending, from the host computer, the marketing
offer based on applying the delivery rules for the purpose of storing the offer
of the device based on the storage rules, and including the location of device
where the offer is to be stored. See Appeal Br. 17–18 (Claims App.). We
note that actually creating a history and storing the offer are not positively
recited, but are claimed as intended uses of receiving steps (d) and (f) and
sending step (i).
The host computer system operated by an acquirer system can
comprise general purpose computers comprising modules to perform
functions that is connected via a network to other general purpose computers
and databases. See Spec. ¶¶ 44–47, 64–66. The mobile device can be “any
small, likely handheld, electronic device that can be used to initiate or
otherwise participate in a financial transaction. For example, a mobile
device can include, but is not limited to a cellular telephone, a Personal
Digital Assistant (PDA), a smart card or other contactless device, etc.” Id.
¶ 25; see also id. ¶ 65. An acquirer is “an entity that receives purchase
transaction information from a merchant or other entity and, based on
account identifier information, routes the transaction information over an
electronic funds transfer network to an issuer of the account being used for
payment.” Id. ¶ 22.
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When considered collectively and under the broadest reasonable
interpretation of the claim’s limitations, claim 1 recites a method, performed
by conventional computing devices, for sending filtered marketing offers
determined by applying delivery and storage rules.3 Limitations (a), (d), (e),
(f), and (g) comprise receiving data, which is an extra-solution activity. See
In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom
Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity). Limitation (b) recites generating rules
based on received data and limitation (h) recites applying rules to received
marketing information, but they do not recite how, technologically or by
what algorithm, the rules are generated or applied, and the Specification
provides no further details. See Spec. ¶¶ 63, 77, 78, 83, Figs. 5, 9). Based
on a plain reading of the claim, generating and applying rules involve some
analysis of the received information, which is a mental process. See Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(citing cases) (“we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes”). Limitation (c) of saving the generated rules
is an extra-solution generic activity. See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611–12 (Fed. Cir. 2016). Limitation (d) of updating the
rules based on received data is a post-solution activity recited without any
implementation details. See Electric Power, 830 F.3d at 1352–53. Based on

3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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a plain reading of the claim, applying rules to data involves some analysis of
the received preference information, which can be a mental process. See
Electric Power, 830 F.3d at 1354 (citing cases). Limitations (i) and (j) of
sending the offer and an indication of storage location based on applying the
rules simply recite outputting the results of the analyses, a post-solution
activity. See id.; Bilski, 561 U.S. at 610–11 (“Flook stands for the
proposition that the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.”’)
(quoting Diehr, 450 U.S. at 191–92); Electric Power, 830 F.3d at 1354.
Sending filtered marketing offers determined by applying delivery and
storage rules is a way of provided targeted marketing and similar to the
concepts of customizing and tailoring web page content based on navigation
history and known user information in Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir. 2015), of customizing
a user interface to have targeted advertising based on user information in
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016), of providing personalized recommendations in Personalized
Media Commc’ns, LLC v. Amazon.Com, Inc., 161 F. Supp. 3d 325, 338 (D.
Del. 2015), aff’d sub nom., 671 F. App’x 777 (Fed. Cir. 2016), and of
targeting advertisements to particular users in Morsa v. Facebook, Inc., 77
F. Supp. 3d 1007, 1014 (C.D. Cal. 2014), aff'd, 622 F. App’x 915 (Fed. Cir.
2015). Accordingly, we conclude the claim recites a way of filtering
marketing offers based on rules to provide targeted advertising, which is a
commercial interaction of advertising, marketing, or sales activities, one of
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the certain methods of organizing human activity as identified in the 2019
Revised Guidance, 84 Fed. Reg. at 52, and thus an abstract idea.
As such, we disagree with Appellant’s contention that the Examiner’s
characterization is “at an impermissibly high level of abstraction and also
does not properly reflect the concept recited in the claims.” Appeal Br. 7
(emphasis omitted). Further, Appellant’s characterization of the claim as a
concept that “includes various features relating to methods and systems
managing marketing offers sent to a mobile device and, more specifically,
relating to delivery rules ‘defining conditions for marketing offers to be sent
to the mobile device,’ and storage rules ‘defining how marketing offers will
be stored at the mobile device’” (id. at 8) (emphasis omitted), is similar to
the Examiner’s and our characterization but described at a different level of
abstraction, and still recites a commercial interaction and, thus, an abstract
idea. We also disagree that the claim “involves the operation of various
systems within a network in order to control and manage where data is
stored and used within the system.” Reply Br. 2. As discussed above, there
are no limitations positively reciting any control or managing of where data
is stored. We further disagree with Appellant’s contention that “the
Examiner has not considered ‘the requirements of the individual steps,’ nor
considered the claims as a whole” (Appeal Br. 9), and direct attention to the
Final Action, at pages 4 through 7, that specifically discuss all of claim’s
limitations. And, we disagree with Appellant’s contention that the claimed
concept is not “similar to at least one concept that the courts have identified
as an abstract idea.” Id.; see also id. at 10–13; Reply Br. 2.
Under Step 2A, Prong 2 of the 2019 Revised Guidance (84 Fed. Reg.
at 54), we look to whether claim 1 “appl[ies], rel[ies] on, or use[s] the
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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,” i.e., “integrates a judicial exception
into a practical application.” Appellant contends
the focus of the claimed advance over the prior art includes both
the specifically recited delivery rules “defining conditions for
marketing offers to be sent to the mobile device,” and storage
rules “defining how marketing offers will be stored at the mobile
device,” where the delivery and storage rules are based on
preference information received from a user and are generated
by a processor/system “operated by an acquirer system” that is
“an intermediary between the merchant and the issuing financial
institution for processing card transactions.”
Appeal Br. 9. We note that, as stated above, the question is whether the
claims as a whole “focus on a specific means or method that improves the
relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). Here, as discussed above, the Specification provides that the
invention addresses the need for a user to control the marketing offers sent to
their devices so as to provide only relevant offers that can be organized in a
way to make it easier to use. See Spec. ¶ 4. The only additional elements
recited in claim 1, beyond the abstract idea, is the claimed “mobile device,”
“host computer system having a processor,” and “acquirer system connected
to one or more point-of-sale devices” — elements that, as the Examiner
observes (Final Act. 3–4), is described in the Specification at a high level of
generality, i.e., as generic computer components (see supra and, e.g., Spec.
¶¶ 22, 25, 44–47, 64–66).
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The elements that form the system or any particular arrangement that
may comprise host and acquirer systems are not the central focus. As also
discussed above, the claim uses generic computer devices to perform the
steps, the results of which are functionally recited without implantation
details. Thus, the focus of the claim does not purport to improve the devices
themselves, but merely uses the generic devices as a tool to perform the
abstract idea of filtering offers determined by applying delivery and storage
rules. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
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.”). It is not
sufficient that the computer may be “a special purpose computer
programmed to perform the unique functions and algorithms recited.”
Appeal Br. 14; cf. Spec. ¶ 44 (“the system can include one or more server
computers 105, 110, 115 which can be general purpose computers and/or
specialized server computers (including, merely by way of example, PC
servers, UNIX servers, mid-range servers, mainframe computers rack-
mounted servers, etc.)” (emphasis added)). What Appellant characterizes as
a “special purpose computer” —a “mobile device,” “host computer system
having a processor,” or “acquirer system connected to one or more point-of-
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sale devices,” for example — is purely functional and generic. Nearly every
mobile device, processor, and system is capable of performing the basic
receiving, analyzing, saving, and sending functions required by the method
claim. See Alice, 573 U.S. at 226; see also EON Corp. IP Holdings LLC v.
AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special
programming’ does not denote a level of complexity. On this point, the
district court erred in holding that ‘special programming’ does not
encompass commercially available off-the-shelf software. To the contrary,
and as originally described in Katz, ‘special programming’ includes any
functionality that is not ‘coextensive’ with a microprocessor or general
purpose computer.”)
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 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.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.

Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the claim’s limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
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exception, that the “computer implementation here is purely conventional
and performs basic functions” (Final Act. 4), that “[t]he data storage claim
elements have been recognized by a controlling court as ‘well-understood,
routine and conventional computing functions’ when claimed generically as
they are” (id. at 5), and that “[w]hen the claims are considered as a whole,
the additional elements noted above, appear to merely apply the abstract
concept to a technical environment in a very general sense - i.e. a generic
computer receives information from another generic computer and then
sends information back” (id.). As such, we disagree with Appellant’s
contention that “the Examiner has not considered the claims as an ordered
combination and as a whole.” Appeal Br. 14.
Appellant argues that the steps of the claim “[a]dd[] a specific
limitation or combination of limitations that [is] not well-understood,
routine, conventional activity in the field” (2019 Revised Guidance, 84 Fed.
Reg. at 56) because “the Examiner has neither (1) identified any prior art
that discloses or suggests the recited features as a whole (the claims have no
rejections based on prior art under either 35 U.S.C. §102 or 35 U.S.C. 103),
nor (2) identified court decisions which have found the features (beyond the
characterized abstract idea) as well-understood, routine and conventional.”
Appeal Br. 14; see also id. at 13. Regarding the lack of a prior art rejection
under 35 U.S.C. § 102 or § 103, an abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 566 U.S. at 89–90. “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the
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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.” Diehr, 450 U.S. at 188–89; see also Mayo, 566 U.S. at 91
(rejecting “the Government’s invitation to substitute §§ 102, 103, and 112
inquiries for the better established inquiry under § 101”).
Regarding the lack of “identified court decisions which have found
the features (beyond the characterized abstract idea) as well-understood,
routine and conventional” (Appeal Br. 14; see also Reply Br. 3), the
Examiner cites to the Specification and case law to show that it discloses
that the claimed systems and devices are conventional (see Final Act. 4, 7
(citing Spec. ¶¶ 25, 38–40, 44, Alice and Electric Power). In doing so, the
Examiner followed “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
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If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
additional evidence must be considered—the default being a legal
determination.”). Here, the Specification indisputably shows the claimed
mobile device, host computing system, and acquirer system were
conventional at the time of filing. Accordingly, no genuine issue of material
fact exists as to the well-understood, routine, or conventional nature of the
device and systems as claimed.
Appellant also argues that the claim elements amount to significantly
more than the abstract idea because, like BASCOM Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), “an inventive
concept can be found in the nonconventional and non-generic arrangement
of known, conventional pieces.” Appeal Br. 14. Specifically, Appellant
argues “the claimed invention involves a unique and novel arrangement of
computer hardware components and functions that, in combination, perform
novel functions.” Id. However, it is not clear how the features of the host
computer that receives, analyzes, saves, and sends data, a mobile device that
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sends and receives data, and an acquirer system that somehow operates the
host computer and, as an intermediary, receives and sends data is similar to
BASCOM’s “non-conventional and non-generic arrangement of known,
conventional pieces.” BASCOM, 827 F.3d at 1350.
In BASCOM, the Federal Circuit determined that “its particular
arrangement of elements is a technical improvement over prior art ways of
filtering such content.” Id. The patent at issue “claim[ed] a technology-
based solution (not an abstract-idea-based solution implemented with
generic technical components in a conventional way) to filter content on the
Internet that overcomes existing problems with other Internet filtering
systems.” Id. at 1351. The court determined that “[b]y taking a prior art
filter solution (one-size-fits-all filter at the ISP server) and making it more
dynamic and efficient (providing individualized filtering at the ISP server),
the claimed invention represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id.
Here, there is no such improvement to the claimed computer
components themselves. And, Appellant provides no further arguments how
the claim's particular arrangement and/or integration of elements is a
technical improvement or is otherwise similar to BASCOM. We note that, as
discussed above, the claim simply recites the functional results to be
achieved by a conventional computer. The claim merely recites sending
indications of how and where the offer is to be stored without actually
claiming storing the offer based on the information and how that would be
performed. Cf. Reply Br. 3. The claim “provides only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
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law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Capital One”).
Considered as an ordered combination, the components of Appellant’s
claim add nothing that is not already present when the steps are considered
separately. The sequence of receiving data, generating/analyzing data,
saving generated data, applying rules, and sending results of the applying
and somewhere authorizing data is equally generic and conventional or
otherwise held to be abstract. See Capital One, 850 F.3d at 1341 (holding
that the sequence of collecting, organizing, identifying, mapping, organizing,
defining, and detecting was abstract); Electric Power, 830 F.3d at 1354–56
(holding that the sequence of gathering, analyzing, and displaying in real-
time was abstract); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1095 (Fed. Cir. 2016) (holding that sequence of generating a rule
related to accessing information, applying the rule, and storing and
announcing the results was abstract).
Finally, as to the question of preemption, Appellant asserts “it is clear
that the claims at issue do not attempt to preempt every application of the
abstract idea as characterized by the Examiner (‘filtering marketing offers
sent to a device’).” Appeal Br. 15. Although the Supreme Court has
described “the concern that drives this exclusionary principle[, i.e., the
exclusion of abstract ideas from patent eligible subject matter,] as one of
pre-emption” (see Alice, 573 U.S. at 216), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. Although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” FairWarning, 839 F.3d at 1098.
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Because we find the claimed subject matter covers patent-ineligible subject
matter, the pre-emption concern is necessarily addressed. “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216); cf. Reply Br. 2–3.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 1 and claims 3–14, 17, 19–30,
and 33–38, the rejection of which stands with claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–14, 17,
19–30, 33–38
101 Eligibility 1, 3–14, 17,
19–30, 33–38

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)(l)(iv).
AFFIRMED