SWOOP IP HOLDINGS LLC

Patent Trials and Appeals Board

Oct 13, 2021

2021002685 (P.T.A.B. Oct. 13, 2021)

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.
15/286,143 10/05/2016 John P. KILLORAN JR. SWO-PT041.1 9320
3624 7590 10/13/2021
VOLPE KOENIG
30 SOUTH 17TH STREET, 18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN P. KILLORAN JR.,
PATRICK L. KILLORAN, and WAUKER MATTHEWS
____________

Appeal 2021-002685
Application 15/286,1431
Technology Center 3600
____________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 6–10. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held September 30, 2021.
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 Swoop IP
Holdings LLC. (Appeal Br. 4.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention is a system and method that aids management
of electronic gift cards, shared accounts and payment processor integration
with using email, SMS and social media based payments.” (Spec. ¶ 2.)
Claim 6 is the sole independent claim on appeal. It recites:
6. A method for improving security of an e-commerce
system utilizing Simple Mail Transfer Protocol (SMTP), the
method comprising:
transmitting, by a processor of the e-commerce system, a
gift offer message to a full-customer, wherein the gift offer
message includes a mailto link and a token;
receiving, by the processor, a response message via SMTP
that indicates a request to transmit a gift to a sub-customer,
wherein the response message is sent in response to activation of
the mailto link and includes the token;
authenticating, by the processor, an email address of a
sender of the response message;
on a condition that the email address of the sender is
authenticated:
validating parameters of the gift set by the full-
customer by decoding the token and
on a condition that the parameters are validated,
transferring the gift to an account of the sub-customer
from an account of the full-customer.

REJECTION2
Claims 6–10 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

2 The rejection of claims 6–10 under 35 U.S.C. § 112(a), the rejection of
claims 6–10 under 35 U.S.C. § 112(b), and the rejection of claim 9 under
35 U.S.C. § 112(d), were withdrawn. (Answer 5.)

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ANALYSIS
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
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is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 6 is “drawn to sending
messages, using a processor, in order for a customer to buy a gift card for
another customer.” (Final Action 4.) The Examiner determines that this
“covers a fundamental economic practice and managing interactions
between people” (id. at 5), and that the claimed improvement is not “to the
payment network but to the process of purchasing, sending and receiving
gift cards” (Answer 7–8).
Appellant argues that claim 6 is “expressly directed to a ‘method for
improving security of an e-commerce system utilizing Simple Mail Transfer
Protocol (SMTP)’” and that the claim is “patent-eligible because [it]
improve[s] computer security by applying a specific technique that departs
from earlier approaches.” (Appeal Br. 18 (emphasis omitted).)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, 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.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention is a
system and method that aids management of electronic gift cards, shared
accounts and payment processor integration with using email, SMS and
social media based payments.” (Spec. ¶ 2.) Claim 6 provides further
evidence. Claim 6 recites “transmitting . . . a gift offer message . . . wherein
the gift offer message includes a mailto link and a token,” “receiving . . . a
response message via SMTP . . . sent in response to activation of the mailto
link and includes the token,” “authenticating . . . an email address of a
sender of the response message,” on condition that the sender’s email
address “is authenticated: validating parameters of the gift set by the full-
time customer by decoding the token,” and on “condition that the parameters
are validated, transferring the gift to an account of the sub-customer.”
The intrinsic evidence shows that claim 6 recites transmitting data (a
message including a mailto link and a token), receiving data (a response
message via SMTP), analyzing data (authenticating an email address and
validating customer-set parameters), and modifying data (adjusting account
values by transferring the gift from one account to another). Transmitting
data, receiving data, analyzing data, and modifying data have been
determined to be directed to an abstract idea. See, e.g., Alice, 573 U.S.
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at 225 (using a computer-implemented system “to obtain data, adjust
account balances, and issue automated instructions” did not result in claim
being non-abstract), Bozeman Fin. LLC v. Fed. Reserve Bank of Atlanta, 955
F.3d 971, 978 (Fed. Cir. 2020) (determining claims to “a method of
receiving data from two financial records, storing that data, comparing that
data, and displaying the results” to be directed to an abstract idea); see also
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1280
(Fed. Cir. 2012) (managing an account by performing calculations and
manipulating the results determined to be directed to an abstract idea).
Claim 6 does not recite how the mailto link and token are created, how
the email address of the sender of the response is authenticated, how the
token is decoded,3 how the decoding of the token validates parameters of the
gift, or how the gift is transferred.4 Rather, claim 6 recites the functional
result of transmitting a message, receiving a response (albeit via a particular
transfer protocol, i.e., SMTP), authenticating the sender’s email address,
validating gift parameters, and transferring the gift. But there is “insufficient
detail for how [this is accomplished]. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed.
Cir. 2017).

3 We note that claim 6 does not recite whether the token decoded in the
validating step is the token as sent in the transmitting step or the token as
received in the receiving step. Nor does claim 6 recite setting gift
parameters.
4 It is unclear from claim 6 who or what performs the steps of (1) validating
parameters of the gift by decoding the token and (2) transferring the gift to
the sub-customer’s account.
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Appellant does not argue that Appellant invented the processor,
invented SMTP, or invented receiving messages via SMTP. (See, e.g.,
Spec. ¶¶ 81, 137.) Nor does Appellant’s invention improve SMTP. The
asserted improvement recited in claim 6 is not to a computer network, but
rather to sending and receiving a gift, i.e., authenticating the email address
of the sender of the response and validating gift parameters, before sending
the gift from one account to another.
The inquiry as to whether the claims are directed to an abstract idea
“often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an “abstract idea” for which computers are invoked merely as a
tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed.
Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). The sole computing
device recited in claim 6 is a generically recited processor of an e-commerce
system. (See Spec. ¶ 137.) Here, the processor is invoked merely as a tool
to perform the generic computer functions of transmitting, receiving, and
analyzing (authenticating) data.
“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018). The “character of [the] information simply invokes a separate
category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be
abstract for section 101 purposes simply because the claim confines the
abstract idea to a particular technological environment in order to effectuate
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a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed.
Cir. 2021).
Regardless, Appellant seeks to analogize Appellant’s claims to the
claims in SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295 (Fed.
Cir. 2019).5 (Appeal Br. 16–17.) In SRI, the court determined that “[t]he
claims are directed to using a specific technique ––using a plurality of
network monitors that each analyze specific types of data on the network
and integrating reports from the monitors––to solve a technological problem
arising in computer networks: identifying hackers or potential intruders into
the network.” SRI Int’l, Inc., 930 F.3d at 1303. The court further
determined that “the claims here are not directed to using the computer as a
tool.” Id. at 1304.
In the present case, however, claim 6 generically recites the steps of
transmitting and authenticating. At best, claim 6 recites that the response is
received via SMTP. But as noted above, Appellant does not argue that
Appellant invented SMTP or that receiving a message via SMTP is anything
other than conventional. In other words, “the claims recite ‘conventional
actions in a generic way’––e.g., authenticating a user using conventional
tools and generating and transmitting that authentication––without
‘improv[ing] any underlying technology.’” See Universal Secure Registry
LLC v. Apple Inc., 10 F.4th 1342, 1352 (Fed. Cir. 2021) (brackets in
original) (quoting Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed.

5 We note that Appellant cites to SRI International, Inc. v. Cisco Systems,
Inc., 918 F.3d 1368 (Fed. Cir. 2019). That opinion was withdrawn. SRI
Int’l, Inc. v. Cisco Sys., Inc., 773 F. App’x 620 (Fed. Cir. 2019). In its place,
the Federal Circuit issued a modified opinion. SRI Int’l, Inc. v. Cisco Sys.,
Inc., 930 F.3d 1295 (Fed. Cir. 2019). We refer to the modified opinion.
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Cir. 2019)); see also Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x
1014, 1017 (Fed. Cir. 2017).
Appellant also seeks to analogize Appellant’s claims to the claims in
Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir.
2018). (Appeal Br. 17–18.) But unlike Appellant’s claims, “[t]he claimed
method [in Ancora] specifically identifies how that functionality
improvement is effectuated in an assertedly unexpected way: a structure
containing a license record is stored in a particular, modifiable, non-volatile
portion of the computer’s BIOS.” See Ancora, 908 F.3d at 1348. In other
words, in Ancora, “[t]he asserted innovation of the patent relates to where
the license record is stored . . . . The inventive method uses a modifiable
part of the BIOS memory—not other computer memory—to store the
information that can be used.” Id. at 1345. The asserted innovation in
Ancora is not, as Appellant argues, simply “an improvement to computer
security.” (See Appeal Br. 18.)
Appellant argues that Appellant’s claims “recite an improvement in
the security of a computing system and are therefore not directed to a
judicial exception.” (Appeal Br. 19 (emphasis omitted).) We disagree. The
steps of “transmitting . . . a gift offer message,” “receiving . . . a response
message via SMTP,” and “authenticating . . . an email address of a sender of
the response message,” as a condition for “transferring the gift to an account
of the sub-customer” are, at best, “directed to the abstract idea of
‘collect[ing] and examin[ing] data to authenticate the user’s identity’” before
transferring the gift. See Universal Secure Registry LLC, 10 F.4th at 1352
(brackets in original) (quoting Universal Secure Registry LLC v. Apple Inc.,
469 F. Supp. 3d 231, 239 (D. Del. 2020)); cf. CosmoKey Sols. GmbH & Co.
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KG v. Duo Sec. LLC, No. 2021 WL 4515279, at *5 (Fed. Cir. Oct. 4, 2021)
(determining to be patent-eligible claims reciting “a specific improvement to
authentication [of a user to a transaction],” including the steps of “having the
authentication device check whether a predetermined time relation exists,”
“ensuring that the authentication function is normally inactive and is
activated by the user only preliminarily for the transaction,” “ensuring that
said response from the second communication channel includes information
that the authentication function is active,” and “thereafter ensuring that the
authentication function is automatically deactivated.”). Whether the steps of
Appellant’s claim 6 are described as mitigating risk, managing interactions
between the full-customer and the sub-customer, or a commercial
interaction, claim 6 falls under the rubric of certain methods of organizing
human activity. See 2019 Guidance at 52.6
We do not find any 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 computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] the 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.” (See 2019
Guidance at 54–55.)

6 Although we and the Examiner describe, at different levels of abstraction,
to what the claims are directed, it is recognized 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). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241.
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In view of the foregoing, under prong one of the two prong test in the
2019 Guidance, claim 6 recites an abstract idea, i.e., certain methods of
organizing human activity; and, under prong two, additional elements in
claim 6 do not “apply, rely on, or use the 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.”
(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
claim 6 is directed to an abstract idea, and we move to step two.
Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
Taking the claim elements separately, the functions performed in
claim 6 by the generic processor are purely conventional. Transmitting,
receiving, and analyzing data are well-understood, routine, and conventional
functions previously known to the industry. See Elec. Power Grp., 830 F.3d
at 1356 (The claims “do not include any requirement for performing the
claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept . . . .”); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(determining receiving, processing, and sending data to be well-known,
generic computer-implemented steps); Cyberfone Sys., L.L.C. v. CNN
Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (organizing,
storing, and transmitting information determined to be well-established).
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Considered as an ordered combination, the generic processor of the e-
commerce network of Appellant’s claimed invention adds nothing that is not
already present when the limitations are considered separately. For
example, claim 6 does not purport to improve the functioning of the
processor itself. Nor does it effect an improvement in any other technology
or technical field. Instead, claim 6 amounts to nothing significantly more
than an instruction to apply the abstract idea using a generic computer
component performing routine computer functions. That is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–26.
We are not persuaded that the Examiner erred in rejecting claim 6. In
the Appeal Brief, Appellant does not separately argue the remaining
dependent claims. However, in the Reply Brief, Appellant presents a new
argument regarding dependent claim 7. (See Reply Br. 6, 8.) We have
reviewed the Examiner’s Answer and determine that Appellant’s new
argument was not responsive to an argument raised in the Examiner’s
Answer. Under 37 C.F.R. § 41.41(b)(2), we need not consider such new
arguments absent a showing of good cause. No showing of good cause was
made and, in this case, we do not consider the new argument.7 For the
reasons discussed, claim 7–10 fall with claim 6. See 37 C.F.R.
§ 41.37(c)(1)(iv).

7 Nonetheless, with regard to claim 7, we note that merely “us[ing] a
combination of conventional components in a conventional way to achieve
an expected result” does not transform an abstract idea into patent-eligible
subject matter. See Universal Secure Registry LLC, 10 F.4th at 1350; see
also Spec. ¶ 79.
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CONCLUSION
The Examiner’s rejection of claims 6–10 under 35 U.S.C. § 101 is
affirmed.
Specifically:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
6–10 101 Eligibility 6–10

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