STARKE, Christian et al.

Patent Trials and Appeals Board

Jan 2, 2020

14017092 - (D) (P.T.A.B. Jan. 2, 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.
14/017,092 09/03/2013 Christian STARKE 025018-0022 1094
115462 7590 01/02/2020
Diebold, Incorporated
c/o Black, McCuskey, Souers & Arbaugh, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
eofficeaction@appcoll.com
ip@bmsa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN STARKE and THORSTEN NEUMANN
____________

Appeal 2019–002445
Application 14/017,092
Technology Center 3600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims seek our review under 35 U.S.C.
§ 134(a) from the Examiner’s Final rejection of claims 1, 6, and 8, which
constitute all pending claims.1 See Final Act. 2; see also Appeal Br. 25–26
(Claims App.). Appellant has canceled claims 2–5, 7, and 9–13. Id. at 26.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies WINCOR NIXDORF INTERNATIONAL
GMBH as the real party in interest. Appeal Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
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STATEMENT OF THE CASE
The claims relate to “a method for the prevention of money
laundering attacks of a payment device and to a payment device for carrying
out a payment operation for carrying out a method for the prevention of
money laundering attacks.” Spec. 1:18–20.
Invention
Claim 1 is independent. An understanding of the invention may be
derived from a reading of claim 1, which is reproduced below.
1. A method for operating a payment device to
prevent money laundering, the method comprising:
determining, with a control device of the payment device,
a first amount to be paid in connection with a payment
operation;
detecting, with the control device of the payment device,
a paid, second amount by detecting either or both of a number
of delivered coins with a coin insertion device of the payment
device and a number of delivered bank notes with a bank note
insertion device of the payment device;
evaluating, with the control device of the payment
device, the first amount and the second amount with reference
to at least one monitoring criterion, wherein the at least one
criterion is at least one of the number of delivered coins, the
number of delivered bank notes, and a ratio between the second
amount and the first amount; and
initiating, with the control device of the payment device,
in response to said evaluating, a countermeasure, wherein the

refer to the Appeal Brief filed November 26, 2018, (“Appeal Br.”), the
Reply Brief filed February 1, 2019, (“Reply Br.”), the Examiner’s Answer
mailed January 14, 2018, (“Ans.”), the Advisory Action mailed September
6, 2018, (“Advisory”), the Final Office Action mailed March 27, 2018,
(“Final”), and the Specification filed September 3, 2013, (“Spec.”) for their
respective details.
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countermeasure is initiated if either or both of the number of
delivered coins and the number of delivered bank notes for a
denomination value exceeds a maximum admissible number for
the denomination value and the ratio of the second amount and
the first amount exceeds a maximum admissible overpayment
factor, wherein the maximum admissible number is not static,
but is controlled by the control device in dependence on the
first amount to be paid.
Appeal Br. 25 (Claims App.).
Rejection
Claims 1, 6, and 8 stand rejected under 35 U.S.C. § 101 as directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final 2–6.
ANALYSIS
We have reviewed the rejection of claims 1, 6, and 8 in light of
Appellant’s arguments. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
which Appellant could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We adopt as our
own the determinations and reasons set forth in the rejection from which this
appeal is taken and in the Examiner’s Answer, to the extent consistent with
our analysis below. We provide the following explanation to highlight and
address specific arguments and determinations primarily for emphasis.
Based upon our de novo review of the record in light of recent
Director Policy Guidance,3 with respect to patent-eligible subject matter

3 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance” or “Rev. Guid., 84
Fed. Reg.”).

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rejections under 35 U.S.C. § 101, we sustain the rejection of claims 1, 6,
and 8. “Whether a claim is drawn to patent-eligible subject matter is an
issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade
Commission, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
Appellant states that “[t]he claims stand or fall with claim 1.” See
Appeal Br. 8. Thus, we decide the appeal of the section 101 rejection of
claims 1, 6, and 8 with reference to representative claim 1.4 We refer to the
rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); see also In re Marco Guldenaar Holding B.V., 911 F.3d
1157, 1162 (Fed. Cir. 2018).
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief (pages 8–23), and Reply Brief (pages 2–6).

CLAIMS 1, 6, AND 8: INELIGIBLE SUBJECT MATTER.
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” See 35 U.S.C. § 101.5
The Supreme Court, however, has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “‘[l]aws of nature, natural phenomena, and
abstract ideas’ are not patentable.” Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr,

4 Our 35 U.S.C. § 101 analysis for claim 1 applies equally to claims 6 and 8.
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the patent-eligibility
inquiry under 35 U.S.C. § 101.
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450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See id. 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; see also Bilski, 561 U.S. at
611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Concepts determined to be patent-eligible include physical and
chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at
191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores” (id. at 183 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 “a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187, 191 (“We view respondents’ claims as
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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.” See 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.”), 191 (citing Benson, 409 U.S. at 63; Flook, 437 U.S. at 594).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance we must, therefore, ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (quotations and citations omitted). “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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requiring generic computer implementation fails to transform that
abstract idea into a patent-eligible invention.” Id. at 212.
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B. United States Patent and Trademark Office Revised Guidance
In 2019, the USPTO published Revised Guidance in the Federal
Register concerning the application of 35 U.S.C. § 101. See Rev. Guid., 84
Fed. Reg. 50–57; see also USPTO, October 2019 Update: Subject Matter
Eligibility, 84 Fed. Reg. 55942 (notice of update to the Revised Guidance in
response to comments received by the USPTO (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf)).
Under the Revised Guidance, we first look to whether the claim
recites any judicial exceptions, including certain groupings of abstract ideas
(“Step 2A(i)”). Informed by our judicial precedent, the Revised Guidance
extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

If the claim does not recite a judicial exception (a law of nature,
natural phenomenon, or subject matter within the enumerated groupings of
abstract ideas above), then the Revised Guidance provides that the claim is
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patent-eligible at Step 2A(i). This determination concludes the eligibility
analysis, except in rare situations identified in the Revised Guidance.
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application
(“Step 2A(ii)”).
The seven identified “practical application” sections of the MPEP,6
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application as determined under one
or more of the MPEP sections cited above, do we then determine whether
the additional elements of the claim, considered both individually and in
combination, provide an inventive concept (i.e., whether the additional

6 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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elements amount to significantly more than the exception itself) (“Step 2B”).
Rev. Guid., 84 Fed. Reg. 56.
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Rev. Guid., 84 Fed. Reg.
56; see also MPEP § 2106.05(d).
In the Step 2B analysis, the Examiner is tasked with providing an
evidentiary basis that the additional elements (or combination of elements)
are well-understood, routine or conventional by expressly supporting a
rejection in writing with one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s).
Robert W. Bahr, Changes in Examination Procedures Pertaining to Subject
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Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.), USPTO 1–5 (2018) (“Berkheimer Memo”); see also MPEP
§ 2106.05(d).
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1 is a method (process) claim by reciting one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more. Based upon our de novo review of the record in light of
the Revised Guidance, we affirm the rejection of claims 1, 6, and 8 under
35 U.S.C. § 101.

Step 2A(i): Does the Claim Recite a Judicial Exception?
The preamble of claim 1 recites: “[a] method for operating a payment
device to prevent money laundering.” Appeal Br. 25 (Claims App.). Table I
compares the remaining limitations of claim 1 to the organizing human
activities grouping of abstract ideas set forth in the Revised Guidance.

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Claim 1 Revised Guidance
[a]7 determining . . . a first amount
to be paid in connection with a
payment operation;

Organizing human activities, e.g.,
fundamental economic principles or
practices (including mitigating risk);
commercial interactions (including
sales activities or behaviors), managing
personal behavior. Rev. Guid., 84 Fed.
Reg. 52 n.13.
[b] detecting . . . a paid, second
amount by detecting either or both
of a number of delivered coins . . .
and a number of delivered bank
notes . . . ;
Organizing human activities, e.g.,
fundamental economic principles or
practices (including mitigating risk);
commercial interactions (including
sales activities or behaviors), managing
personal behavior. Rev. Guid., 84 Fed.
Reg. 52 n.13.
[c] evaluating . . . the first amount
and the second amount with
reference to at least one monitoring
criterion, wherein the at least one
criterion is at least one of the
number of delivered coins, the
number of delivered bank notes, and
a ratio between the second amount
and the first amount; and
Organizing human activities, e.g.,
fundamental economic principles or
practices (including mitigating risk);
commercial interactions (including
sales activities or behaviors), managing
personal behavior. Rev. Guid., 84 Fed.
Reg. 52 n.13.
[d] initiating . . . , in response to
said evaluating, a countermeasure,
wherein the countermeasure is
initiated if either or both of the
number of delivered coins and the
number of delivered bank notes for
a denomination value exceeds a
maximum admissible number for
the denomination value and the ratio
of the second amount and the first
Organizing human activities, e.g.,
fundamental economic principles or
practices (including mitigating risk);
commercial interactions (including
sales activities or behaviors), managing
personal behavior. Rev. Guid., 84 Fed.
Reg. 52 n.13.

7 Step designators, e.g., “[a],” added to facilitate discussion.
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amount exceeds a maximum
admissible overpayment factor,
wherein the maximum admissible
number is not static, but is
controlled . . . in dependence on the
first amount to be paid.

Thus, under Step 2A(i), we determine limitations [a]–[d] of claim 1
recite steps that the Revised Guidance categorizes within the “organizing
human activities” grouping of abstract ideas. In particular, these limitations
recite a fundamental economic practice in anti-money laundering similar to
long-standing practices of banks, other financial institutions, and merchants.
See, e.g., 31 U.S.C. § 5313 & 31 C.F.R. 103.22(a)(1) (Bank Security Act of
1970 and accompanying regulations, which require banks to track and report
currency deposits over $10,000); and James Gleick, Dead as a Dollar, NEW
YORK TIMES MAGAZINE (June 16, 1996), https://www.nytimes.com/1996/06/
16/magazine/dead-as-a-dollar.html (last visited Dec. 4, 2019) (“As cards
wax, currency wanes: $100 bills are legal tender, in theory, but in real life
many merchants will no longer take them — there is too much
counterfeiting, and too much plain uneasiness as the Mint switches over to
the odd-looking new-style bills.”). Limitations [a]–[d] are also similar to
additional concepts within the “organizing human activities grouping of
abstract ideas: mitigating risk, sales activities or behaviors, and managing
personal behavior. See Rev. Guid. 84 Fed. Reg. 52 n.13; see also Final 3–4
(citing Bilski, 561 U.S. at 611; Alice, 573 U.S. at 219); Ans. 4; and Advisory
2. These limitations may also be described as reciting steps within the
“mental processes” grouping of abstract ideas, including concepts performed
in the human mind such as an observation, evaluation, judgment, or opinion.
Rev. Guid., 84 Fed. Reg. 52; see also, e.g., Elec. Pwr. Grp., LLC v. Alstom
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S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (treating claims directed to
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” as an abstract idea within the mental processes
grouping).
Appellant contends the Examiner’s Step 2A analysis is deficient, thus
rendering the rejection under 35 U.S.C. § 101 improper. In particular,
Appellant argues the Examiner’s alleged abstract idea—making secure
payments and controlling spending by customers—does not relate to the
portions of claim 1 underlined by the Examiner. Appeal Br. 9–10.
Appellant further argues that the prior art of record describes a “secure”
payment in terms that are not consistent with the claim language. Id. at 10.
Appellant argues as well that the Examiner’s characterization of claim 1 as
“controlling spending by consumers” is overly broad and untethered from
the claim language because claim 1 is performed by a payment device, not a
human. Id. Appellant argues that, contrary to the Examiner’s
characterization, claim 1 relates to “preventing the use of the payment
device to perpetrate money laundering.” Id.
Appellant’s arguments do not persuade us of Examiner error. First, in
determining that the claim recites the abstract idea of “making secure
payments and controlling spending by customers” for the Step 2A analysis,
the Examiner properly identified each of the recited functions of claim 1.
Final 3–4. That the Examiner underlined certain portions of the claim does
not negate this fact.
Second, the Examiner’s characterization of claim 1 as reciting the
concept of “making secure payments” is reasonable in view of the claim
language, which recites “evaluating” of the amount of currency delivered
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against the amount to be paid and “initiating . . . a countermeasure” (e.g.,
triggering an alarm or not disbursing change) if the customer delivers
excessive currency. This is so because, in claim 1, only those payments that
are evaluated as free from the risk of money-laundering activity (i.e., “secure
payments”) are made without disruption. That a prior art reference may
have a different definition of “secure payment” does not compel a different
determination.
Third, the Examiner’s characterization of claim 1 as reciting the
concept of “controlling spending by consumers” is not overly broad or
untethered from the claim language. The recited functions of claim 1 may
reasonably be characterized as “controlling spending by consumers” because
only those customers whose payment behavior does not exceed a threshold
are able to complete the transaction freely. Appellant is correct that the
claim also recites a “payment device.” But, as is the case here, the
performance of claim limitations using generic technological elements does
not remove the claim from any of the identified groupings of abstract ideas.
See Rev. Guid., 84 Fed. Reg. 52 n.14. Moreover, consistent with judicial
precedent and the Revised Guidance, this additional element is analyzed in
Steps 2A(ii) and 2B to determine whether it integrates the recited abstract
idea into a practical application or provides an inventive concept. See Final
4–5; see also discussion infra.

Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because the claim recites a patent-ineligible concept, we proceed to
Step 2A(ii). For the reasons that follow, we determine that claim 1 does not
integrate the judicial exception into a practical application. See MPEP
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§§ 2106.05(a)–(c) and (e)–(h). We address the relevant “practical
application” MPEP sections below:
MPEP § 2106.05(a) “Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field”

“In determining patent eligibility, [E]xaminers should consider
whether the claim ‘purport(s) to improve the functioning of the computer
itself’” or “any other technology or technical field.” See MPEP § 2106.05(a)
(citation omitted).
Although claim 1 additionally recites that certain functions are
performed “with the control device of the payment device,” “with a coin
insertion device of the payment device,” or “with a bank note insertion
device of the payment device,” Appellant presents no persuasive evidence
that practicing the claim results in an improvement to the functioning of the
computer or any other technology. In particular, claim 1 is silent regarding
specific limitations describing an improved machine, apparatus, computer,
hardware processor, memory, non-transitory machine readable storage
medium, network, database, Internet, etc.
Appellant contends claim 1 solves a specific technological problem
and is directed to a technological improvement in “the operation of a
payment device by reducing the vulnerability of the payment device to being
used for fraudulent and criminal activity, specifically, to perpetrate money
laundering.” Appeal Br. 14, 16. We disagree.
Claim 1 does not improve the operation of the payment device, which
operates predictably regardless of whether a payment is being made for the
purpose of money-laundering. That different functions may be executed if
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the payment exceeds a threshold (and, thus, is potentially fraudulent) does
not amount to an improvement in the device itself.
Nor, is claim 1 like the patent-eligible claims in Enfish, which were
“specifically directed to a self-referential table for a computer database” and
“a specific improvement to the way computers operate.” Enfish, 822 F.3d at
1336–37. By contrast, Appellants’ claim 1 merely recites an anti-money
laundering scheme that uses generic computing elements and a payment
device as tools. Put another way, the claim does little more than apply
generic computing elements and functionalities to a known payment device
for providing a solution to a known problem (identifying and preventing
money laundering). See, e.g., Spec. 1:27–2:31 (describing a payment device
in no more than generic terms and citing German Patent DE 102007024301
A1 for a payment device as prior art).

MPEP § 2106.05(b) Particular Machine.
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to the method (process) claims on appeal. This section of
the MPEP guides: “When determining whether a claim recites significantly
more than a judicial exception, examiners should consider whether the
judicial exception is applied with, or by use of, a particular machine.” See
MPEP § 2106.05(b); see also Bilski, 561 U.S. at 604 (“[T]he machine-or-
transformation test is a useful an important clue, and investigative tool” for
determining whether a claim is patent eligible under 35 U.S.C. § 101.).
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
[A]s described in MPEP § 2106.05(f), additional elements that
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invoke computers or other machinery merely as a tool to
perform an existing process will generally not amount to
significantly more than a judicial exception. See, e.g., [Versata,
793 F.3d at 1335] ([E]xplaining that in order for a machine to
add significantly more, it must “play a significant part in
permitting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly.”).

Although claim 1 includes a payment device including a control
device, Appellant does not persuade us of specific limitations directed to a
particular machine in the claim or Specification. There lacks sufficient
evidence that the payment device and its components are non-generic or
perform non-generic functions. Thus, because the claim is not directed to a
particular machine and merely implements an abstract idea using generic
computer components, it fails to satisfy the “tied to a particular machine”
prong of the Bilski machine-or-transformation test. See Alice, 573 U.S. at
223; see also Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,,
827 F.3d 1341, 1348 (Fed. Cir. 2016).

MPEP § 2106.05(c) Particular Transformation.
This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing.” “Transformation and reduction of an article ‘to a different state or
thing’ is the clue to patentability of a process claim that does not include
particular machines.” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S. at
70).
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Claim 1 recites a series of steps for operating a payment device to
prevent money laundering. These data operations are not a transformation
or reduction of an article into a different state or thing constituting patent-
eligible subject matter. “The mere manipulation or reorganization of data
. . . does not satisfy the transformation prong.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). Applying this
guidance here, we determine claim 1 fails to satisfy the transformation prong
of the Bilski machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations & MPEP
§ 2106.05(h) Field of Use and Technological Environment.
The MPEP guides:
For a claim that is directed to a judicial exception to be
patent-eligible, it must include additional features to ensure that
the claim describes a process or product that applies the
exception in a meaningful way, such that it is more than a
drafting effort designed to monopolize the exception. The
claim should add meaningful limitations beyond generally
linking the use of the judicial exception to a particular
technological environment to transform the judicial exception
into patent-eligible subject matter.
See MPEP § 2106.05(e). Further, the Supreme Court has stated that, even if
a claim does not wholly preempt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or post-solution
activity—such as identifying a relevant audience, a category of use, field of
use, or technological environment. Ultramercial, Inc. v. Hulu, LLC, 722
F.3d 1335, 1346 (Fed. Cir. 2013); see also MPEP § 2106.05(h).
We determine claim 1 does not add meaningful limitations beyond
generally linking the use of the judicial exception to a particular
technological environment. As discussed above, the recited payment device,
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including a control device, coin insertion device, and bank note insertion
device, are nothing more than generic components performing generic
functions, which does not amount to significantly more than an abstract idea.
We also note that, although claim 1 relates to preventing money laundering
and is implemented in a computer-based payment device, such recitations do
no more than generally link the use of a judicial exception to a particular
field of use or technological environment. See Rev. Guid., 84 Fed. Reg. 55.

MPEP § 2106.05(f) “Mere Instructions To Apply An Exception.”
“[T]ransformation into a patent-eligible application requires more
than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’”
See Alice, 573 U.S. at 221 (quotations and citation omitted); see MPEP
§ 2106.05(f). Because Appellant’s claimed technological elements appear to
be merely generic elements being used in their ordinary capacity, we
determine the additional elements of claim 1 do not amount to more than a
recitation of the words “apply it” and are no more than mere instructions to
implement an abstract idea on a computerized device. See, e.g., TLI
Communications LLC v. AV Automotive LLC, 823 F.3d 607, 615 (Fed. Cir.
2016) (Concluding that claims reciting the abstract idea of “classifying and
storing images in an organized manner” were directed to patent-ineligible
subject matter because they did no more than “generically spell out what it
means to ‘apply [the recited abstract idea] on a telephone network’” such
that “the recited physical components behave[d] exactly as expected
according to their ordinary use.”)
In view of the foregoing, we determine claim 1 does not recite
additional elements that integrate the judicial exception into a practical
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application and, thus, is “directed to” a judicial exception, namely an
abstract idea.

C. Well-understood, routine, conventional; specified at a high level of
generality.
Because claim 1 recites a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that, when considered individually or as an ordered combination, is not
“well-understood, routine, conventional” in the field. Rev. Guid., 84 Fed.
Reg. 56. It is indicative of the absence of an inventive concept where the
claim simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Id.
The Examiner determines that claim 1’s “additional elements are
simply a generic recitation of a processor performing its generic computer
functions . . . that are routine, conventional, and well understood.” Final 4–5
(citing Spec. 9, Fig. 3 (items 1, 3)); see also Advisory 2 (citing Fig. 1). The
Examiner explains that claim 1 “does not indicate that specialized computer
hardware is necessary to implement the claimed systems,” nor does it
“require any nonconventional computer, network, or database components,
or even a nonconventional and non-generic arrangement of known,
conventional pieces, but merely call[s] for performance of the claimed
preventing money laundering and controlling customers spending.” Ans. 9
(citation and quotations omitted). The Examiner adds that “[n]othing in the
claims, understood in light of the specification, requires anything other than
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off-the-shelf, conventional computer, network, and database technology”
and notes that “[t]he Courts have repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
‘insufficient to pass the test of an inventive concept in the application’ of an
abstract idea.” Id at 9–10 (citing buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1353, 1355 (Fed. Cir. 2014)).
We agree with the Examiner and determine that, beyond the
limitations describing the abstract idea, claim 1 does not recite any
limitations (or combination of limitations) that are not well-understood,
routine, and conventional. Consistent with the Examiner’s determinations,
the Specification describes the claimed technological features at a generic
level. See, e.g., Spec. 1:27–2:31, 6:12–7:2, and 9:18–10:20. For example,
the Specification broadly discloses that the recited “payment device” may be
a “so-called self-checkout machine, at which a customer e.g. in a retail shop
can pay goods automatically” or any other device that provides a payment
operation with cash, such as “ticket machines, cigarette machines, vending
machines, drinks dispensers or the like.” Id. at 1:27, 10–17–20. The
Specification even cites a German Patent, DE 102007024301 A1, to show
that such a payment device was known in the prior art. Id. at 2:29–31.
There is no discussion of any special functionality or considerations for a
technological aspect of any technological component recited in claim 1.
Appellant argues that the Examiner’s Step 2B analysis was improper
because the Examiner considered substantially the same claim language in
both Step 2A and Step 2B. Appeal Br. 16–20. Appellant’s argument is not
persuasive. Step 2A requires analysis of the recited claim functions, whereas
Step 2B requires analysis of both the additional claim limitations (e.g., the
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payment device) as well as the functions they perform, considered both
individually and as an ordered combination. Therefore, because both Step
2A and Step 2B require consideration of the recited claim limitations, it was
entirely appropriate for there to be overlap in the claim language from
Step 2A to Step 2B of the Examiner’s analysis. See Final 3–5.
Appellant’s reliance on Berkheimer as evidence of Examiner error is
also misplaced. Appeal Br. 20–23 (citing Berkheimer v. HP Inc., 882 F.3d
1360, 1369 (Fed. Cir. 2018)). The exemplary claim limitation at issue in
Berkheimer was “storing a reconciled object structure in the archive without
substantial redundancy,” which the court found was “directed to [an]
arguably unconventional inventive concept described in the [S]pecification.”
881 F.3d at 1370. There was no evidence in the record that this limitation
described well-understood, routine, and conventional technology. Id. at
1368. The court held there was a “genuine issue of material fact” and that
“fact questions created by the [S]pecification’s disclosure” precluded
summary judgment of invalidity under step two of the Alice/Mayo
framework. Id. Here, by contrast, the Examiner has determined—and cited
the Specification and case law as evidence—that the additional technological
limitations of claim 1 are merely generic and perform functions that are
well-understood, routine, and conventional. Final 4–5; see also Advisory 2–
3; and Ans. 8–10. And as discussed above, a complete review of the
Specification amply supports such a determination. See, e.g., Spec. 1:27–
2:31, 6:12–7:2, and 9:18–10:20.
Therefore, because the additional elements of claim 1 recite only well-
understood, routine, and conventional technology, we determine that claims
1, 6, and 8, viewing their limitations “both individually and as an ordered
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combination,” do not recite significantly more than the judicial exception to
transform the claim into patent-eligible subject matter. See Alice, 573 U.S.
at 217 (quoting Mayo, 566 U.S. at 79). We decline to determine otherwise
merely because the Examiner’s determinations may: (1) cite case law
pertaining to elements that are similar to—but not the same as—the
additional elements of claim 1; and (2) lack a complete listing of
Specification disclosures showing that the additional elements are
“well-understood, routine, and conventional.”
In the Reply Brief, Appellant “submits that the Examiner should
reopen prosecution to apply the Revised Guidance to the claims of the
present application and also submits that the Revised Guidance indicates that
the present claims are patent eligible under [35 U.S.C. §] 101.” Reply Br. 6.
This issue is addressable by petition to the Director, not appeal to the Board.
See 37 C.F.R. §§ 41.40(a), 1.181; see also MPEP § 1207.03(b). Moreover,
Appellant waived this argument by failing to petition the Director “within
two months from the entry of the examiner’s answer and before the filing of
any reply brief.” See 37 C.F.R. § 41.40(a).
In view of the foregoing, we sustain the rejection of claims 1, 6, and 8
under 35 U.S.C. § 101.

CONCLUSION
The rejection of claims 1, 6, and 8 under 35 U.S.C. § 101 is affirmed.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 8 101 Eligibility 1, 6, 8
Overall
Outcome
1, 6, 8

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).

AFFIRMED