The Government of the United States of America, as Represented by the Secretary, Department of Homel

Patent Trials and Appeals Board

May 1, 2020

14487598 - (D) (P.T.A.B. May. 1, 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.
14/487,598 09/16/2014 David Maher DHS-088 7564
15614 7590 05/01/2020
U.S. Department of Homeland Security, S&T/OGC
Assistant General Counsel, Intellectual Property
Mail Stop 0205
245 Murray Lane
Washington, DC 20528
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
Kelly.Hyndman@hq.dhs.gov
Megan.Smith1@associates.hq.dhs.gov
lavanya.ratnam@hq.dhs.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MAHER
Appeal 2019-005990
Application 14/487,598
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27. 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 the Government
of the United States of America, as represented by the Secretary of
Homeland Security. Appeal Br. 3.
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Application 14/487,598
2
INTRODUCTION
Appellant’s Specification describes the invention as relating to
“collection and authentication of user supplied information in a mobile
environment.” Spec. ¶ 2. As background, Appellant’s Specification
describes:
Travelers arriving from foreign countries provide information
to customs officials to ensure compliance with the laws of the
nation to which they are arriving. For example, a family
returning to the United States provides the U.S. Customs and
Border Protection (CBP) and its personnel with information used
to ensure the family complies with United States (U.S.) laws. The
information, while targeted to security and law enforcement
topics, can vary greatly depending on the family’s situation. In
the previous example, one adult parent or guardian may fill out
a CPB form, 6059B on behalf of the other member of the
family, e.g., for the children, as well as, other adults such as a
spouse. U.S. Form 6059B is used to collect information from
travelers arriving from abroad. Form 6059B, while familiar to
some travelers, can pose issues to inexperience[d] travelers or
travelers with uncommon situations. These problems typically
manifest themselves when the traveler meets with a customs
officer for a brief interview. For example, it is not uncommon
for CBP personnel to note errors or omissions on Form 6059B
as part of interviewing travelers arriving in the U.S. Trained
CBP personnel can aid the traveler to resolve these issues, but
it may delay other travelers or take CBP personnel away from
other duties. In some cases, travelers undergo additional
screening to resolve these issues. Secondary screening, which is
more in-depth, is time consuming but it ensures compliance with
the relevant laws. These situations increase the overall time it
takes to properly screen groups of travelers. This can result in
traveler delay and/or involve more CBP personnel to minimize
wait times. Sources of delay include, but are not limited to,
travelers failing to provide full and accurate information,
providing misleading information, providing inconsistent
information, and so on.
Spec. ¶ 3 (emphasis added).
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Appellant’s Specification summarizes the invention as “systems,
techniques, devices, methods, and approaches” that are used to “obtain,
validate and vet information, such as customs information, in a mobile
environment.” Spec. ¶ 5.
CLAIMED SUBJECT MATTER
Claims 1, 5, 6, 9, and 10 are illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
1. A method comprising:
[A]. receiving, by a database, information input via a mobile
device, the information having been encapsulated by an
intermediate to escort the information through a firewall to
the database;
responsive to vetting the information to determine if it meets
one or more criteria,
[B]. creating a record associated with a unique identifier,
information that bio-identifies the user, or an indication of
a determination that results from the vetting;
[C]. generating an electronic receipt for communication to the
mobile device, the electronic receipt including the unique
identifier; and
[D]. sending the receipt to the mobile device based on routing
the electronic receipt through at least one intermediate that
collects information from third parties for the mobile
device, and that supports distributed validation of the
information, wherein the validation is distributed between
the mobile device and the at least one intermediate.
5. The method according to claim 1, wherein
[E]. information comprises one or more of customs
information associated with the user, customs information
associated with a person in the user’s travel party, or
information that is useable to bio-identify at least one of the
user or a person in the user’s travel party.
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6. The method according to claim 5, wherein
[F]. the electronic receipt comprises the unique identifier, an
image of the user, and the user’s name.
9. The method according to claim 1, wherein
[G]. vetting is not performed until a vehicle identified in the
information is determined to have physically reached a
territory to which the user has traveled.
10. The method of claim 9, further comprising
[H]. performing a determination by querying a manifest to
make the determination that the vehicle physically
reached the territory.

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Ortiz US 2014/0108263 A1 Apr. 17, 2014
Molloy US 2010/0051679 A1 Mar. 4, 2010
Goldberg US 2003/0085808 A1 May 8, 2003
Daniel US 9,396,595 B1 July 19, 2016

REJECTIONS2
A.
The Examiner rejects claims 1–27 under 35 U.S.C. § 101 because “the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more” i.e., the

2 All citations to the “Final Act.” are to the Final Action mailed on March
12, 2018.
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claimed invention is directed to patent-ineligible subject matter. Final
Act. 4–7.
We select claims 1 and 15 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv). Except for arguments regarding the Examiner’s prima
facie case, which we address below, Appellant does not otherwise separately
argue claims 2–14 and 16–27. Except for our ultimate decision, we do not
otherwise discuss the § 101 rejection of claims 2–14 and 16–27
further herein.
B.
The Examiner rejects claims 1–9, 11–15, and 17–25 under 35 U.S.C.
§ 103 as being unpatentable over Ortiz and Molloy. Final Act. 7–14.
We select claims 1–3, 6, 13–15, 18, 24, and 25 as representative.
Appellant does not separately argue claims 4, 5, 7–9, 11, 12, 17, and 19–23.
Except for our ultimate decision, we do not discuss the § 103 rejection of
claims 4, 5, 7–9, 11, 12, 17, and 19–23 further herein.
C.
The Examiner rejects claims 10, 16, and 27 under 35 U.S.C. § 103 as
being unpatentable over Ortiz, Molloy, and Goldberg. Final Act. 14–18.
D.
The Examiner rejects claim 26 under 35 U.S.C. § 103 as being
unpatentable over Ortiz, Molloy, and Daniel. Final Act. 18–19.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We concur with the conclusions
reached by the Examiner. We highlight the following points.
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A. Section 101
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 U.S. 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. E.g., 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 Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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
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” (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.
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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
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 187; 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 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. (citation omitted)
(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 part
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 (quotation marks 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.
(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.
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B. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
claim 1 recites an abstract idea:
The limitations of “responsive to vetting the information to
determine if it meets one or more criteria, creating a record
associated with a unique identifier, information that bio-
identifies the user, or an indication of a determination that results
from the vetting; generating an electronic receipt for
communication to the mobile device, the electronic receipt
including the unique identifier,” as drafted, is a process that,
under its broadest reasonable interpretation, covers organizing
human activities--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) but for the recitation of generic computer
components (Step 2A Prong 1). That is, other than reciting
“electronic receipt,” and the “mobile device” nothing in the
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claim elements precludes the step from the methods of
organizing human interactions grouping. For example, but for
the “electronic receipt,” and the “mobile device” in the context
of this claim encompasses the user manually creating a record
responsive to vetting information. Similarly, the limitation of
“receiving, by a database, information input via a mobile device,
the information having been encapsulated by an intermediate to
escort the information through a firewall to the database,” as
drafted, is a process that, under its broadest reasonable
interpretation, of simply receiving input by a database from a
mobile device that has already been “encapsulated by an
intermediate to escort the information through a firewall to the
database.” This portion of the claim is simply extra-solution
data gathering activities, despite Appellants arguments. Here,
Appellants are arguing much more narrowly than actually
claimed. Per the claim construction, and in light of the
specification, the “encapsulation” has already occurred so the
method step is simply receiving the information through a
firewall to the database. Looking to the specification, there is no
specific method of “encapsulating” simply that it is done in order
for information to pass through a firewall. Similarly, the
“sending the receipt to the mobile device based on routing the
electronic receipt through at least one intermediate that collects
information from third parties for the mobile device, and that
supports distributed validation of the information, wherein the
validation is distributed between the mobile device and the at
least one intermediate” is simply [extra-solution] data gathering
activities which, under broadest reasonable interpretation is
simply the instruction of where to send the electronic receipt. If
a claim limitation, under its broadest reasonable interpretation,
covers organizing human activities, such as the instructions or
rules for how to generate an electronic receipt responsive to the
vetting of user information, but for the recitation of generic
computer components, then it falls within the “organizing human
activities” grouping of abstract ideas. Accordingly, the claim(s)
recite(s) an abstract idea.
Ans. 4–5 (emphasis added).
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C.2. 2019 Revised Guidance Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
This judicial exception is not integrated into a practical
application (Step 2A Prong Two). In particular, the claim only
recites the use of a database to receive information from a mobile
device that has been previously encapsulated by an
“intermediate;” a mobile device for receiving the generated
receipt and the “intermediate” which routes the electronic receipt
“that collects information from third parties for the mobile
device, and that supports distributed validation of the
information, wherein the validation is distributed between the
mobile device and the at least one intermediate” which is simply
the statement of the intended use or what the “intermediate” is
capable of “support[ing].” The database, mobile device, and
intermediate in the steps are recited at a high-level of generality
such that it amounts [to] no more than mere instructions to apply
the exception using a generic computer component. Specifically
the claims amount to nothing more than an instruction to apply
the abstract idea using a generic computer or invoking
computers as tools by adding the words “apply it” (or an
equivalent) with the judicial exception, or mere instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea - see MPEP
2106.05(f). The claims recitation of the “electronic receipt,”
“firewall” and “mobile device” only generally [link] the use of
the judicial exception to a particular technological
environment or field of use - see MPEP 2106.05(h).
Accordingly, this additional element does not integrate the
abstract idea into a practical application because it does not
impose any meaningful limits on practicing the abstract idea. The
claim is directed to an abstract idea.
Ans. 5–6 (emphasis added).
C.3. 2019 Revised Guidance Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
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The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception (Step 2B). As discussed above with respect to
integration of the abstract idea into a practical application (Step
2A Prong 2), the additional elements of using database, mobile
device, and intermediate to perform the steps amounts to no
more than mere instructions to apply the exception using a
generic computer component. Mere instructions to apply an
exception using a generic computer component cannot provide
an inventive concept. The claim(s) is/are not patent eligible.
Ans. 6 (emphasis added).
C.4. Claim 15
Applying the Alice/Mayo analysis, the Examiner determines that
claim 15 recites the same abstract idea recited in claim 1, does not integrate
the abstract idea into a practical application, and does not provide an
inventive concept:
The claim recites the additional limitations of “man-trap device,”
which is configured to or via a non-human operated to permit the
user to exit the customs area (mere instructions to apply. . .). The
man-trap device appears to be functional generic computer
components that perform the generic functions of querying
data. The ability to permit a user to exit the customs area are
recited at a high level of generality and are recited as performing
generic computer functions routinely used in computer
applications (i.e. the query of whether or not the user is allowed
to exit the area)is not an inventive concept that meaningfully
limits the abstract idea. Again, as discussed with respect to
claims 1 and 18, the claims are simply limitations which are no
more than mere instructions to apply the exception using a
computer or with computing components.
Ans. 10 (emphasis added).

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D. Appellant’s § 101 Arguments & Board’s Analysis
D.1. Prima Facie Case
Appellant contends:
The Examiner did not treat each claim individually and
even goes so far as to tacitly admit that he did not do so. The
Examiner’s grouping of claims result in confusion as to what is
claimed and failing in his responsibility under § 101. As a result,
a prima facie case under § 101 does not exist and the rejection
should be reversed.
. . .
[The] failure to treat each and every claim independently makes
the § 101 rejection untenable. This failure is even more egregious
because it lumps different statutory classes together. For
example, the Examiner groups a method (claim 1) with computer
readable media including instructions (claims 18 and 20).
. . .
This results in the Examiner confusing what is claimed and to
what statutory class the claims belong. . . . For example, while
claim 1 recites “responsive to vetting” claim 18 does not recite
“vetting” or any colorable variation thereof.
. . .
The Examiner now contends that claims 1, 18, and 27 recite “vets
the input” which is incorrect as claim 1 does not “vet,” rather
responsive to vetting it “creates a record.”
. . .
As a result, the Examiner failed to follow MPEP §707.07(g)
(among other portions of the MPEP), which requires the
Examiner to state every major rejection “with a full development
of reasons rather than by a mere conclusion coupled with some
stereotyped expression.”
. . .
The Examiner’s rejection of claims 1-27 under § 101 was wrong
under the MPEP when he issued in the September 15, 2017
Action, wrong when he issued in the Final Office Action, and is
even more wrong today in light of the Office's § 101 guidance.
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. . .
The Examiner failed to establish the broadest reasonable
interpretation (BRI) of the claims as a whole as required under
MPEP 2106(II). This failure is evident throughout the § 101
rejection in the Final and Advisory Actions.
. . .
[The rejection] misses claim features, conflates elements
between claims, and highlights the Examiner’s failure to
establish a BRI. For example, Claim 1 does not recite a
“receipt,” rather it recites an “electronic receipt” with a unique
identifier.
. . .
[I]f page 5, item 13 [of the Final Office Action] is referencing
claim 18, this claim does not recite “vetting” or a variant thereof.
And, “received from a mobile device” makes little sense as claim
18 recites CRM “on” a mobile device.
With respect to claim 27, nowhere does it recite a “receipt” or
“electronic receipt.” The Examiner offers no explanation how
claim 27, that does not recite an “electronic receipt,” can be
abstract as being directed to an “electronic receipt.”
. . .
The Examiner even admits that he is not considering the whole
claim (i.e. establishing a BRI for the claim), “[c]laims 1, 18, and
27 recite, in part, a method and on or more tangible computer-
readable media. . .” That the Final Rejection omits the terms
“electronic receipt,” and “encapsulation” to “escort the
information through a firewall” shows the Examiner has failed to
meet his responsibility under § 101. Aspects of claims 18 and 27
are also missed. As such, the pending rejection fails under § 101
and should be reversed.
Appeal Br. 10–18 (Appellant’s emphasis and citations omitted; panel’s
emphasis added), see also Reply Br. 2–8.
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Appellant’s argument is not persuasive. We conclude the Examiner is
merely required to provide Appellant reasonable notice as to the basis of the
§ 101 rejection. The notice requirement is set forth by 35 U.S.C. § 132.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). We further conclude the
Examiner has met this requirement. See Final Act. 5–7; see also Ans. 3–11.
D.2. 2019 Revised Guidance Step 2A, Prong 1
Appellant contends:
[T]he Examiner does nothing to explain how the steps of claim
1, including generating an electronic receipt, and the CRM of
claims 18 and 27 meet “organizing human activity” under Step
2A.
. . .
[A method of organizing human activity does not] cover, for
example in the case of claim 1, “receiving, by a database,
information input via a mobile device,” “information having
been encapsulated . . .to escort the information through a
firewall,” “creating a record associated with a unique identifier,
information that bio-identifies the user, or an indication of a
determination that results from the vetting” and “generating an
electronic receipt . . . including the unique identifier” among
other limitations.
. . .
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[F]or example, claim 1 recites among other technical features
(including features that have no equivalent outside of a
computing environment):
• “Encapsulated” information “to escort the
information through a firewall”,
• Creating record associated with “a unique
identifier;” “information that bio-identifies the
user;” or “an indication of a determination that
results from the vetting.”
• Generating an electronic receipt.
All of these features clearly indicate that the claimed subject
matter is not “directed to a judicial exception” and even if it
were (solely for the sake of argument) it is integrated into a
“practical application” as it implements certain technologies.
. . .
[The Examiner’s characterization of “receives an input, vets the
input, creates a record of the vetted input, and outputs a receipt”]
is far from what is claimed in for example claim 1, which recites
technologies such a firewall, database, electronic receipt, mobile
device in a particular combination. Accordingly, the Examiner
has failed to conduct a proper analysis under Step 2A and instead
intentionally over generalizes what is claimed.
. . .
[T]he Examiner’s rejection fails under the 2019 Guidance as
none of the claims recite, “electronic record keeping of
documentation required for traveling.” The Examiner offers no
substantive explanation why he thinks the claim recites
organizing human behavior including citing to specific
portions of a particular claim.
. . .
Take for example, claim 1 that in-part recites information that is
encapsulated to escort it “through a firewall to a database.” This
has no analog outside of the context of technologies/devices.
And, according to the 2019 Guidance makes it a “practical
application”—although other parts of claim 1 do so as well.
Likewise an electronic receipt does not have an analog outside
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of technologies/devices. See Core Wireless Licensing v. LG
Electronics, Inc. The only way an “electronic receipt” and a
“receipt” are akin to one another is to read-out the term
“electronic.” The other claims all contain subject matter that lack
analogs that encompass abstract concepts.
Appeal Br. 18–24 (Appellant’s emphasis and citations omitted; panel’s
emphasis added), see also Reply Br. 9–11.
Independent claim 1 recites the following steps:
[A] “receiving . . . information input . . . the information having been
encapsulated by an intermediate to escort the information”;
[B] “creating a record associated with a unique identifier, information
that bio-identifies the user, or an indication of a determination that results
from the vetting”;
[C] “generating [a] receipt . . . the . . . receipt including the unique
identifier”; and
[D] “sending the receipt . . . based on routing the . . . receipt.”
Consistent with the Examiner’s findings, the steps ([A]–[D]) recite a
method including the steps of obtaining information (e.g., customs
information), sending the obtained information to be validated (or validating
the obtained information), vetting the obtained information, and receiving a
receipt that confirms the obtained information has been validated and vetted.
See Final Act. 5; see also Ans. 4–5. Such a method is a method of
organizing human activity (e.g., validating and vetting customs information
of an individual), which is one of the enumerated categories of abstract ideas
in the 2019 Revised Guidance.
Further, the aforementioned method is similar to the concept
identified as an abstract idea in Voter Verified, Inc. v. Election Systems &
Software LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018). In Voter Verified, the
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court held the claimed method of voting, verifying the vote, and submitting
the vote for tabulation was a “fundamental activity that forms the basis of
our democracy for hundreds of years” and characterized the aforementioned
steps as “human cognitive actions.” Similar to Voter Verified, the method of
validating and vetting customs information had previously been performed
by humans, as described in Appellant’s Specification. See, e.g., Spec. ¶ 3
(“[t]ravelers arriving from foreign countries provide information to customs
officials to ensure compliance with the laws of the nation to which they are
arriving”).
Thus, the method of claim 1 recites a method of organizing human
activity, and, accordingly, recites a judicial exception – an abstract idea. See
2019 Revised Guidance at 52.
Appellant’s argument that the Examiner failed to consider certain
elements of the claims that recite technical features that cannot be
considered an abstract idea is not persuasive. As the Examiner explained,
the failure to reproduce the claim language does not mean that the Examiner
failed to consider all the elements of claim 1. See Ans. 4. Further, we
consider Appellant’s argument regarding Core Wireless Licensing S.A.R.L.
v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) in evaluating Step
2A, Prong 2 of the 2019 Revised Guidance, as discussed below.
D.3. 2019 Revised Guidance Step 2A, Prong 2
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
Appellant contends:
As an initial matter, the Examiner failed to meet his burden
under Step 2B because he has failed to consider the elements
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individual and in combination as a claim as required under
MPEP § 2106.5. “Evaluating additional elements to determine
whether they amount to an inventive concept requires
considering them both individually and in combination. . .” The
Examiner does not do this, rather he groups all the independent
claims together and ignores that the claims contain different
elements.
Appellant disagrees with the Examiner’s general assertion that
“the instant claims focus not on such an improvement to the
computers as tools ...” This does not meet the requirement of
Step II as laid out in MPEP § 2106.04(II). The Examiner’s
comment emphasize he is considering each element separately
not as a whole. Moreover, he failed to consider that the claims
include technological improvements[.]
. . .
[T]he Examiner failed to address Appellant’s previous comments
with regard to the question of “something more” that like Enfish,
the claims recite an [sic] improvements that make the claimed
subject matter operate in an improved manner. For example, by
using an intermediary (which can handle some tasks in certain
cases) to avoid multiple, if not millions of (untrusted mobile
devices) directly interacting with for example a computing
system implementing the storage media of claim 18. This is not
just saying “apply it” to a problem, rather it is configuring the
claimed subject matter in such a way that it can operate in a
particular way that happens to be better than other approaches.
For example, the use of encapsulation is preferable to
uncontrolled access or other methods used to control access to a
computing resource. This way the computing resource is not
burdened by every mobile device that wishes to communicate
with it, it only has to deal with communications that are
encapsulated such that they can make it through a firewall. This
is clearly better under § 101 than a resource, such as a server that
takes “all comers” who send communications. Moreover, use of
“encapsulation” permits the firewall to ensure safety (such as by
rejecting information that is not encapsulated) while permitting
encapsulated information to pass. The claims recite patentable
subject matter which improve performance and avoid other
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approaches that are more resource intensive, such as by tying
up communication bandwidth. This is far from simply saying
“apply it.” For at least the foregoing reasons the pending § 101
rejection is improper and Applicant request reversal of the
rejection.
Appeal Br. 24–25 (Appellant’s emphasis and citations omitted; panel’s
emphasis added); see also Reply Br. 11–12.
Consistent with the Examiner’s findings, the recitation of “database,”
“mobile device,” “firewall,” “electronic,” and “intermediate,” merely
generally link the method of organizing human activity recited in claim 1 to
a computer-implemented operating environment to perform the recited
method of organizing human activity. See Final Act. 5; see Ans. 5–6.
Further, we agree with the Examiner that “the information having been
encapsulated by an intermediate to escort the information through a
firewall,” as recited in claim 1, is merely extra-solution activity that does not
provide significantly more than the abstract idea. See Final Act. 6; see also
Ans. 5. Similarly, we also agree with the Examiner that “at least one
intermediate that collects information from third parties for the mobile
device, and that supports distributed validation of the information, wherein
the validation is distributed between the mobile device and the at least one
intermediate” is also merely extra-solution activity that does not provide
significantly more than the abstract idea. See Ans. 5.
Further, contrary to Appellant’s argument that claim 1 includes a
technological improvement, we also agree with the Examiner that claim 1
does not improve the performance of the computer-implemented operating
environment or other technology, but instead improves problems associated
with implementing the underlying method of organizing human activity
manually (e.g., delays in vetting travelers due to information that is
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incomplete, inaccurate, inconsistent, or misleading) by implementing the
underlying method on a computer-implemented system. See Final Act. 6;
see also Spec. ¶ 3. Similarly, we do not agree with Appellant’s argument
that claim 1 is similar to the claims at issue in Core Wireless. Instead, we
agree with the Examiner’s finding that, in Core Wireless, the claims were
directed to an improved user interface for electronic devices that improved
the efficiency of the electronic devices. See Core Wireless, 880 F.3d at
1363; see also Ans. 10–11. In contrast, as correctly found by the Examiner,
claim 1 does not improve an underlying general-purpose computer. See
Ans. 11. Instead, claim 1 merely recites a method of validating and vetting
customs information that is generally linked to a computer-implemented
operating environment (i.e., “database,” “mobile device,” “firewall,”
“electronic,” and “intermediate”) that implements the method. See id.
In light of the above, and consistent with the Examiner’s
determinations, we conclude that claim 1 does not integrate the judicial
exception into a practical application. We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 1 is directed to a judicial exception, and does not integrate the judicial
exception into a practical application.
D.4. 2019 Revised Guidance Step 2B
We agree with the Examiner’s finding that the recitation of
“database,” “mobile device,” “firewall,” “electronic,” and “intermediate,”
does not amount to anything more than mere instructions to apply the
underlying method of organizing human activity using generic computer
components. See Final Act. 6; see also Ans. 6. Evidence of the well-
understood, routine, and conventional nature of the aforementioned elements
can be found in Appellant’s Specification, which describes example systems
and hardware for implementing the customs information collection,
validation, vetting, and routing, and also identifies that the example systems
and hardware can be combined, adjusted, and manipulated as contemplated
by one of ordinary skill in the art. See, e.g., Spec. ¶¶ 19–97.
Appellant argues that claim 1 includes technological improvements.
See Appeal Br. 24–25; see also Reply Br. 11–12. This argument has been
previously addressed with respect to Revised Guidance Step 2A, Prong 2. In
light of the above, and consistent with the Examiner’s determinations, we
determine that beyond the abstract idea, claim 1 does not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or adding
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. Other § 101 Arguments
Appellant also contends:
The Examiner failed to address any of the claim [sic] individually
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other than the limitation of a “man-trap” (claims 15 and 25),
which the Examiner gets wrong.
. . .
The Examiner also fails to ascertain a BRI for claims 15 and 25.
. . .
Rather than consult a reference to determine the meaning of
“man-trap” the Examiner (wholly incorrectly) presumes it is
“functional generic computer components that perform the
generic functions of querying data.”
Appeal Br. 13, 17 (emphasis added).
Appellant’s argument is not persuasive. While Appellant argues the
Examiner’s finding that the claimed “man-trap device” of claim 15 is
significantly more than a generic computer component performing a generic
function, Appellant fails to identify a definition of “man-trap device” either
in the claims or Appellant’s Specification that distinguishes the claimed
“man-trap device” from a generic computer component.
F. Examiner’s § 103 Rejection
Regarding independent claim 1, the Examiner found the combination
of Ortiz and Molloy teaches or suggests all the limitations of claim 1:
As per claim 1, Ortiz discloses a method comprising (method,
Ortiz Abstract):
a. receiving, by a database, information input via a mobile
device, the information having been encapsulated by an
intermediate to escort the information through a firewall to the
database (firewalled, Ortiz ¶128; packet exchange, ¶138;
suitably formatted cryptograms for secure communications
packages, verifications, ¶141-¶142; secured database, ¶80);
b. generating an electronic receipt for communication to the
mobile device, the electronic receipt including the unique
identifier (receipt on mobile device, Ortiz ¶161) and:
c. sending the receipt to the mobile device based on routing the
electronic receipt through at least one intermediate that collects
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information from third parties for the mobile device and that
supports distributed validation of the information, wherein the
validation is distributed between the mobile device and the at
least one intermediate (Third party service provider system(s)
120, 122 “Partners”, comprising, e.g., communications and
payment/transaction processing service provider system(s),
provide telecommunications, transaction processing, and any
other required/desired third-party service functions, Ortiz ¶103
and ¶127; third party server, ¶108; see also ¶233-¶234).
Ortiz does not expressly disclose responsive to vetting the
information to determine if it meets one or more criteria, creating
a record associated with a unique identifier, information that bio-
identifies the user, or an indication of a determination that results
from the vetting.
However, Molloy teaches responsive to vetting the information
to determine if it meets one or more criteria, creating a record
associated with a unique identifier, information that bio-
identifies the user, or an indication of a determination that
results from the vetting (receiving code from the government
computer, Molloy ¶16; ¶33; codes change, ¶47, based upon
answers, ¶49) (Examiner notes the codes changing from a
government computer and being based upon answers as the
equivalent to the unique code).
At the time of the effective filing date of the invention, it would
have been obvious to a person of ordinary skill in the art to use
Molloy’s method of providing codes for inspection of travelers
in Ortiz’s virtualization and secure processing of data system
to improve the system and method with reasonable expectation
that this would result in a system which is able to more
effectively process secure data.
The motivation being that there is a need for improved border
protections, improved customer service, more effective and
efficient use of government resources, increased facility
capacity, and future portability and adaptability (Molloy ¶11).
In addition, the Examiner asserts that claim scope is not limited
by claim language that suggests or makes optional but does not
require steps to be performed, or by claim language that does not
limit a claim to a particular structure. However, examples of
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claim language, although not exhaustive, that may raise a
question as to the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses;
and (C) “whereby” clauses (See MPEP 2111.04). In the instant
case, the recited “responsive to vetting the information to
determine if it meets one or more criteria, creating a record
associated with a unique identifier, information that bio-
identifies the user, or an indication of a determination that
results from the vetting; and generating an electronic receipt
for communication to the mobile device, the electronic receipt
including the unique identifier” is not a positive method step as
it does not require any actual positive recited claim steps to be
performed; nor does it modify any of the positively claimed
method steps (if the determination of meeting the criteria is not
met, the method steps would end).
Final Act. 8–9 (emphasis added). The Examiner further found the
combination of Ortiz and Molloy teaches or suggests all the limitations of
claims 2, 3, 6, 13–15, 18, 24, and 25. See Final Act. 9–14. The Examiner
also found the combination of Ortiz, Molloy, and Goldberg teaches or
suggests all the limitations of claims 10, 16, and 27. See Final Act. 14–18.
The Examiner further found the combination of Ortiz, Molloy, and Daniel
teaches or suggests all the limitations of claim 26. See Final Act. 18–19.
G. Appellant’s § 103 Arguments & Board’s Analysis
G.1. Independent Claim 1
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
With respect to claim 1, while the Examiner is correct that
Ortiz does not teach “responsive to vetting the information to
determine if it meets one or more criteria” this is not the only
element that Ortiz fails to teach. Take for example the feature of,
“receiving information encapsulated by the intermediate to
escort the information through a firewall,” the Examiner is
incorrect that Ortiz teaches this feature either in the cited portions
or anywhere else for that matter. The Examiner cited Ortiz
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paragraphs [0128], [0138], and [0141]-[0142] for these
teachings. These passages of Ortiz do not teach
“encapsulation” by an intermediate that passes the
“encapsulated information” on to for example in the case of
claim 1 a “database”, rather the very passages the Examiner
cites teach away from encapsulation as they teach the use of an
adjudication server 110 that provides a “secure session ID” so
a mobile device 102 and a point of sale terminal 114 can
establish a “secure session.” Put another way, the “secure
session ID” of Ortiz is not from an intermediate to the
communication, it is from adjudication server 110 that never
receives the “encapsulated information” as part of the POS-
mobile device communication.
. . .
In addition, Ortiz only teaches using a session ID, so the
receiving computer can tell that received data is from a “known”
originating/transmitting computer, i.e. the identity of the
receiving/transmitting computers. Ortiz gives an example of this
by explaining this can be accomplished by using “near field
communication” (NFC) to establish a connection between two
devices that are physically very near one another. This fails to
teach information “encapsulation” information to ensure it
can pass through a firewall. Rather, Ortiz teaches a session ID
can be used to identify one computing device to another.
. . .
Thus, not only does Ortiz fail to teach “encapsulating”
information it teaches away from encapsulation by including
the session ID “in” the data packet. Additionally, the Examiner
fails to explain how the “session ID” could be used to escort
the information through a firewall as it (session ID) is the data
it does not “encapsulate” the data. The Examiner did not cite
Molloy for these features nor does Molloy actually correct this
defect in Ortiz.
Appeal Br. 25–27 (Appellant’s emphasis and citations omitted; panel’s
emphasis added); see also Reply Br. 12–13.
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Appellant’s argument is not persuasive. As the Examiner correctly
found, Ortiz discloses a system where a customer’s mobile communication
device 102, 202 effects secure payment for a transaction with a merchant
Point of Sale (POS) terminal 114. See Final Act. 8; see also Ortiz ¶¶ 134–
35. Ortiz further discloses that, after input of suitable account information,
the customer’s mobile device 102, 202 transmits the customer’s selection to
an adjudication server 110 for lookup into the customer’s securely stored
purchaser financial data and other credentials. See Ortiz ¶¶ 136, 151. Using
a secure cryptogram, the adjudication server 110 sends encrypted data or
program code that provides a complete instruction set for the POS terminal
114 to clear the transaction with an issuing financial institution with a
selected method of payment. See Ortiz ¶¶ 141, 151–52. Ortiz further
discloses that the adjudication server 110 is a financial institution (FI)
system comprising multiple servers including third-party service provider
systems 120, 122. See Ortiz ¶ 103. Further, Ortiz discloses that the
adjudication server 110 stores and secures application data in a firewalled
environment. See Ortiz ¶ 128. In light of Ortiz’s disclosure of the
adjudicating server encapsulating an instruction set within a secure
cryptogram and transmitting the instruction set via a firewall to the mobile
device 102, 202, we agree with the Examiner that Ortiz teaches or suggests
“the information having been encapsulated by an intermediate to escort the
information through a firewall.” See Ans. 12–13. Although Appellant
argues that the claimed encapsulation is distinct from Ortiz’s secure
cryptogram, neither claim 1, nor Appellant’s Specification defines
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encapsulation in such a manner that distinguishes the claimed encapsulation
from Ortiz’s usage of a secure cryptogram.5
Appellant also raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
With respect to the Examiner’s arguments discussing
“responsive to vetting,” the Examiner is wrong that this [is]
“optional” and it shows the Examiner’s failure to comprehend
the claims. What claim 1 recites is that the steps of creating,
generating, and sending are done in response to “vetting.” This
is to say that “responsive to vetting” is a temporal limitation that
tells when the steps are performed, e.g., the steps occur in
response vetting that checks the information to “determine if it
meets one or more criteria.” This is not expressing optional
language. “Responsive to” is distinguishable from “optional”
or conditional language because the claim does not condition
whether or not the subsequent steps are performed based on the
existence or non-existence of the condition.
Appeal Br. 27 (Appellant’s emphasis and citations omitted; panel’s
emphasis added).
We are not persuaded by this argument either. As correctly found by
the Examiner, the Examiner examined claim 1 by giving all the limitations
patentable weight (including the limitations that the Examiner characterized
as optional) and found that the combination of Ortiz and Molloy taught or
suggested each and every limitation of claim 1. See Ans. 6.
Appellant further raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.

5 Although Appellant’s Specification describes an example of encapsulation
as adding header information to a packet so that the packet is escorted
through a firewall, disclosed features of Appellant’s Specification are not
imported into the claim where the claim does not require them. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
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The Examiner’s motivation to combine Ortiz with Molloy is
flawed as the Examiner provides no reason why a POSITA
knowing of both Ortiz and Molloy (presuming solely for the
sake of argument this would be within the knowledge of a
POSITA) would make the combination.
. . .
As can be seen, the Examiner’s asserted rational for the
combination is a description of the benefits of the Molloy
invention. Thus, not only does the Examiner’s “motivation” fail
to point to Ortiz, the passage cited by the Examiner shows that
a POSITA knowing of Molloy would not look beyond Molloy
because Molloy’s invention solves all the “asserted problems.”
Appeal Br. 29 (Appellant’s emphasis and citations omitted; panel’s
emphasis added); see also Reply Br. 13–15.
This argument is not persuasive either. We agree with the Examiner
that Molloy discloses a motivation for the combination because Molloy
expressly discloses that an advantage of incorporating features of the
electronic kiosk system for processing incoming travelers having machine-
readable travel documents as disclosed in Molloy is improved border
protections, improved customer service, more effective and efficient use of
government resources, increased facility capacity, and future portability and
adaptability. See Final Act. 9 (citing Molloy ¶ 11); see also Ans. 16–17. In
light of this, we conclude the rationale provided by the Examiner for
combining Ortiz and Molloy is proper.
G.2. Other Claims
Appellant raises separate arguments in contending that the Examiner
erred in rejecting claims 2, 3, 6, 10, 13–16, 18, and 24–27 under 35 U.S.C.
§ 103. See Appeal Br. 29–43. In the Examiner’s Answer, the Examiner
responded to Appellant’s arguments. See Ans. 17–26. In Appellant’s Reply
Brief, Appellant fails to rebut the Examiner’s findings in the Examiner’s
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Answer. See generally Reply Br. Accordingly, Appellant has not shown
that the Examiner erred in rejecting claims 2, 3, 6, 10, 13–16, 18, and 24–27
under 35 U.S.C. § 103.
CONCLUSION
The Examiner has not erred in rejecting claims 1–27 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
The Examiner has not erred in rejecting claims 1–27 as being
unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 1–27 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejection of claims 1–27 as being unpatentable under
35 U.S.C. § 103 is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–27 101 Eligibility 1–27
1–9, 11–15,
17–25
103 Ortiz, Molloy 1–9, 11–
15, 17–25

10, 16, 27 103 Ortiz, Molloy,
Goldberg
10, 16, 27
26 103 Ortiz, Molloy, Daniel 26
Overall
Outcome

1–27

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