SHAKKARWAR, Rajesh G.

Patent Trials and Appeals Board

Jan 24, 2020

14326357 - (D) (P.T.A.B. Jan. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/326,357 07/08/2014 Rajesh G. SHAKKARWAR VERI/0006USD1 6331
107456 7590 01/24/2020
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
LIU, I JUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
algdocketing@artegislaw.com
jmatthews@artegislaw.com
kcruz@artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH G. SHAKKARWAR
Appeal 2019-001913
Application 14/326,357
Technology Center 3600
Before JASON V. MORGAN, ADAM J. PYONIN, and
SCOTT RAEVSKY, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. 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(a). Appellant identifies the real party in interest as Verient,
Inc. See page 3 of Supplemental Appeal Brief, filed Oct. 9, 2018 (“Appeal
Br.”).
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STATEMENT OF THE CASE
Introduction
The application is directed to “generating a personal identification
number (PIN) debit child product for use in performing a debit payment
transaction with a merchant entity.” Spec. ¶ 9. Claims 1–29 are pending;
claims 1, 15, and 29 are independent. Appeal Br. 20–24. Claim 1 is
reproduced below for reference:
1. A computer-implemented method implemented by a
payment processing platform, the method comprising:
receiving, via a remote software application, a user
selection of a financial institution that is separate and distinct
from the payment processing platform;
receiving a user selection of a core account held with the
financial institution, wherein the core account provides financial
backing for a personal identification number (PIN) debit child
product;
generating the PIN debit child product, wherein the PIN
debit child product is associated with the core account and
includes a virtual PIN, a debit child card number, and a bank
identification number (BIN), and the BIN identifies the payment
processing platform as an issuer of the PIN debit child product;
and
translating the debit child card number into a debit card
number associated with the core account by using a customer ID.
References and Rejections
Claims 1–29 stand rejected under 35 U.S.C. § 101 as patent ineligible
for being directed to a judicial exception without significantly more. Final
Act. 2, 5, 7.
Claims 15–28 stand rejected under 35 U.S.C. § 101 as patent
ineligible for covering a signal per se. Final Act. 4.

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

Signal Per Se
The Examiner rejects claims 15–28 because “the broadest reasonable
interpretation [of the recited] computer readable medium covers forms of
non-transitory tangible media and transitory propagating signals per se,” and
is thus “non-statutory subject matter.” Final Act. 4. Appellant does not
challenge this rejection. See Appeal Br. 10. Accordingly, we summarily
sustain this rejection.

Judicial Exception
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are “directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Final Act. 2, 5, 7; see also Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.”).
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See, e.g., USPTO 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”); USPTO October 2019 Update: Subject Matter
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Eligibility (Oct. 17, 2019) (“Update”), noticed at 84 Fed. Reg. 55942 (Oct.
18, 2019).
Under Step 2A of the Guidance, the Office looks to whether the claim
recites:
(1) Prong One: 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) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–
(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look, under Step
2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, conventional in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 54–56.
Appellant does not separately argue the claims. See Appeal Br. 11–
18. We select claim 1 as representative. See 37 C.F.R. §41.37(c)(1)(iv).
We are not persuaded the Examiner’s rejection is in error. We adopt the
Examiner’s findings and conclusions as our own, and we add the following
primarily for emphasis and clarification with respect to the Guidance.

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A. Step 2A, Prong One
Claim 1 describes creating and managing a debit child product based
on a core financial account, where such a child product includes a virtual
personal identification number (PIN) and can be “used to make payment
transactions” that “are processed as though the payment transactions were
made using the core account.” Spec. ¶ 20. Pursuant to Step 2A, Prong One
of the Guidance, we agree with the Examiner that claim 1 recites a judicial
exception. See Ans. 3, 4.
Specifically, claim 1 recites the following receiving steps: “receiving
. . . a user selection of a financial institution that is separate and distinct from
the payment processing platform,” and “receiving a user selection of a core
account held with the financial institution, wherein the core account provides
financial backing for a personal identification number (PIN) debit child
product.” These steps recite receiving certain data, and under the broadest
reasonable interpretation, such receipt of information can be reasonably
characterized as “[m]ental processes” that entail steps of “observation.” See
Memorandum 84 Fed. Reg. at 52; Update page 9; Spec. ¶ 5 (“the customer
may hand the debit card to the cashier”); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“But merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental
processes.”).
Claim 1 further recites the steps of “generating the PIN debit child
product” and “translating the debit child card number into a debit card
number associated with the core account by using a customer ID,” wherein
“the PIN debit child product is associated with the core account and includes
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a virtual PIN, a debit child card number, and a bank identification number
(BIN), and the BIN identifies the payment processing platform as an issuer
of the PIN debit child product.” These are steps of “observation, evaluation,
judgment, opinion” and under the broadest reasonable interpretation, can
also be reasonably characterized as “[m]ental processes.” Memorandum 84
Fed. Reg. 52; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1376 (Fed. Cir. 2011) (“one could mentally perform the fraud detection
method . . . of only the general approach of obtaining information about
credit card transactions utilizing an Internet address and then using that
information in some undefined manner to determine if the credit card
transaction is valid.”).
Additionally, the above-quoted limitations are steps of managing an
account used for payment transactions, and under the broadest reasonable
interpretation, can be reasonably characterized as reciting “mitigating risk,”
“agreements in the form of contracts; legal obligations; . . . business
relations,” and “following rules or instructions.” Memorandum, 84 Fed Reg.
at 52; Final Act. 2, 3; see also Spec. ¶¶ 20, 63. The claim thus recites
“fundamental economic principles or practices,” “commercial or legal
interactions,” and “managing personal behavior or relationships or
interactions between people,” which are “[c]ertain methods of organizing
human activity.” Memorandum, 84 Fed Reg. at 52; Update at 5; Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1371–72 (Fed.
Cir. 2017) (determining abstract claims that associate financial information
and allow access to a transit system based on the information); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (“[T]he claims of the ’582 patent are manifestly directed to an abstract
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idea, which the district court accurately described as ‘local processing of
payments for remotely purchased goods,’” and “is the type of fundamental
business practice that, when implemented using generic computer
technology, is not patent-eligible.”); Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (“[T]he abstract idea of
‘processing an application for financing a purchase’”); Innovation Scis., LLC
v. Amazon.com, Inc., 778 F. App’x 859, 863 (Fed. Cir. 2019) (“We agree
with the district court that claim 17 is directed to the abstract idea of
securely processing a credit card transaction with a payment server.”).
Accordingly, we conclude the claims recite a judicial exception under
Prong One of the Guidance. See Memorandum, 84 Fed Reg. at 54.

B. Step 2A, Prong Two
Appellant argues “the present claims recite the specific limitations
that effect a useful result or technological improvement.” Appeal Br. 11.
According to Appellant, the “technological improvement . . . enhance[es]
security when processing an online transaction by providing a way to
generate and process a child product associated with the user’s core account
while limiting exposure of the user’s core account information.” Id. at 12.
Appellant contends the claimed approach secures transactions “by adding a
payment processing platform to the online processing system” and
“generat[ing] a child product, which is a new[2] form of an electronic

2 We note the novelty of the recited abstract idea is of no moment in the
eligibility analysis. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec
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financial product, that includes a virtual PIN in place of the PIN associated
with a user’s core account.” Id. at 13.
We are not persuaded the Examiner errs in determining claim 1 is
directed to the recited judicial exception. See Final Act. 11–13. The
features relied on by Appellant are part of the judicial exception discussed
above in Prong One, and do not comprise additional elements, individually
or in combination, that integrate the exception into a practical application.
See Memorandum, 84 Fed. Reg. at 54–55; SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1170 (Fed. Cir. 2018) (The abstract idea itself cannot supply
the inventive concept, “no matter how groundbreaking the advance.”). That
is, claim 1 further recites “a computer-implemented method . . . via a remote
software application,” in addition to the limitations reciting the judicial
exception. These “additional element[s] merely recite[] the words ‘apply it’
(or an equivalent) with the judicial exception, or merely include[]
instructions to implement an abstract idea . . . on a computer, or merely uses
use[] a computer as a tool to perform an abstract idea.” Memorandum, 84
Fed. Reg. at 55; see also Spec. ¶ 25; Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d at 1372–73 (Fed. Cir. 2017) (Determining the claims
“invoke computers in the collection and arrangement of data. Claims with

Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness). As
discussed supra, the claimed debit child product and virtual PIN is part of
the recited judicial exception. We further note that child financial accounts
were known in the prior art. See, e.g., US 5,350,906 (issued Sept. 27, 1994)
at 11:8–10 (“portion of the PIN number is utilized to identify the subaccount
(database location) within the sponsor account (database)”); US 5,883,810
(issued Mar. 16, 1999) (“When the customer desires to conduct an online
transaction, the customer asks the issuing institution to issue a transaction
number for a single transaction.”).
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such character do not escape the abstract idea exception.”). This is not
enough to integrate the underlying abstract idea into a practical application.
See Memorandum, 84 Fed. Reg. at 55.
Even considered as additional elements, we disagree with Appellant
that claim 1 produces a specific technological improvement. See Appeal Br.
15; Reply Br. 4, 5; see also Ans. 5–7. Claim 1 does not recite a transaction;
rather, the claim recites the generation—but not use—of account
information. That is, the claim does not preclude a transaction using core
account information. We also find unpersuasive Appellant’s assertion that
the claim improves transaction security because it is not commensurate with
the scope of the claim.3 See Appeal Br. 14; Am. Axle & Mfg., Inc. v. Neapco
Holdings LLC, 939 F.3d 1355, 1363 (Fed. Cir. 2019) (“features that are not
claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis”).
Appellant further argues “the claims pose no danger of preempting an
abstract idea.” Appeal Br. 17. We are not persuaded of Examiner error, and
we agree with the Examiner that the question of preemption in the instant
case has been resolved by the rejection itself. See Ans. 8, 9; see also Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339
(Fed. Cir. 2017) (“[W]here a patent’s claims are deemed only to disclose

3 Separately, we determine that any security benefits, as claimed, do not
provide a technological improvement (as opposed to a financial benefit),
because preventing misuse by hiding financial information is similar to “the
same questions (though perhaps phrased with different words) that humans
in analogous situations detecting fraud have asked for decades, if not
centuries.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095
(Fed. Cir. 2016).
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patent ineligible subject matter under the Alice framework, as they are in this
case, preemption concerns are fully addressed and made moot.”).
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the “claim recites a judicial exception and fails to integrate the
exception into a practical application” (id. at 51), “the claim is directed to
the . . . judicial exception” (id. at 54).

C. Step 2B
Appellant argues claim 1 is eligible pursuant to Step 2 of Alice (Step
2B of the Guidance): “the present claims recite limitations specific to
implementing the functionality of the claimed approach. These specific
limitations are novel and non-obvious over the references cited by the
Examiner. The present claims therefore cannot be considered conventional,
routine, or well understood.” Appeal Br. 16. Appellant further contends
“the Examiner has not cited any evidence that these particular limitations are
well-known, conventional, or routine operations.” Id.
We are not persuaded of Examiner error. As discussed above, the
implementation limitations of claim 1 are part of the recited judicial
exception; they are not “additional elements individually and in
combination” that may “provide an inventive concept” amounting to
“significantly more than the exception itself.” Memorandum, 84 Fed. Reg.
at 55–56; see also id. at 55 n.24. Moreover, the Examiner has identified
portions of the Specification supporting the determination that “the
additional elements when considered both individually and as an ordered
combination do not amount to significantly more than the abstract idea.”
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Final Act. 3; Ans. 7, 8 (citing Spec. ¶¶ 3, 4, 40, 48). We find the Examiner’s
determination to be reasonable. See, e.g., Spec. ¶ 19 (“the invention may be
employed with any system that is configured to facilitate a PIN debit
transaction.”); see also id. ¶¶ 22, 25, 53, 64; Alice, 573 U.S. at 226 (“Nearly
every computer will include a ‘communications controller’ and ‘data storage
unit’ capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”). Thus, we determine
independent claim 1’s claim elements, individually and as an ordered
combination, do not provide significantly more than the recited judicial
exception.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–29 101 Judicial Exception to
Eligibility
1–29
15–28 101 Non-Statutory Subject
Matter
15–28
Overall
Outcome
1–29

TIME PERIOD FOR RESPONSE
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