THE WESTERN UNION COMPANY

Patent Trials and Appeals Board

Sep 2, 2020

2020000406 (P.T.A.B. Sep. 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.
13/777,733 02/26/2013 Lance W. Gruner 90945-860328 (027000US) 5983
20350 7590 09/02/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LANCE W. GRUNER
Appeal 2020-000406
Application 13/777,733
Technology Center 3600
Before ST. JOHN COURTENAY III, JOYCE CRAIG, and
SCOTT E. BAIN, Administrative Patent Judges.
CRAIG, 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, 2, 7, 8, 16, 17, 22, 23, 28, 30, 31, 33–
40, and 42–44. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Western Union
Company of Denver, Colorado. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to performing on-line money transfers from a
remote location, such as by ship crew members while off-shore. Spec. 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for processing a transfer requested from a remote
mobile location, comprising:
receiving, at a host computer system, a transfer request
from a remote computer system operating at a mobile off-shore
location, wherein the request is received over a first transmission
path including an Internet Protocol (IP) network and a first
satellite system router configured to receive and route Internet
messages transmitted from the mobile off-shore location to the
host computer system, wherein the transfer request corresponds
to a request from a first user of the remote computer system
requesting a value transfer between the first user and a second
user, and wherein transfer request includes at least:
(i) a first user identifier corresponding to the first user;
(ii) a device identifier of the remote computer system from
which the transfer request was transmitted; and
(iii) path data of the transfer request, the path data
comprising a plurality of network addresses appended to the
request, each of the plurality of network addresses corresponding
to a network node in the first transmission path over which the
transfer request was transmitted from the remote computer
system to the host computer system;
receiving and storing, by the host computer system, one or
more data feeds comprising data identifying (a) a plurality of
eligible users, (b) device identifiers corresponding to each of the
eligible users, and (c) path data identifiers corresponding to each
of the eligible users, wherein at least one of the one or more data
feeds is received over a network path different from the first
transmission path;
determining, by the host computer system, whether or not
to process the received transfer request, wherein said
determining comprises:
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(a) determining that the first user identifier corresponding
to the first user matches a first eligible user of the plurality of
eligible users identified in the received data feed data;
(b) comparing, by the host computer system, the device
identifier of the remote computer system, to the one or more
stored device identifiers in the received data feed data
corresponding to the first eligible user; and
(c) comparing, by the host computer system, the path data
of the received transfer request, to the path data identifiers
corresponding to the first eligible user, wherein said comparing
comprises extracting two or more of the network addresses
appended to the received transfer request, and comparing each of
the two or more network addresses to the path data identifiers
corresponding to the first eligible user; and
processing the received transfer request, in response to
determining that (i) the first user identifier received in the request
matches the first eligible user (ii) the device identifier of the
remote computer system from which the request was received
matches one or more of the stored device identifiers
corresponding to the first eligible user, and (iii) that the network
addresses appended to the received request matches the one or
more path data identifiers corresponding to the first eligible user.
REJECTION
Claims 1, 2, 7, 8, 16, 17, 22, 23, 28, 30, 31, 33–40, and 42–44 stand
rejected under 35 U.S.C. § 101 because the claimed invention is directed to a
judicial exception, without significantly more. Final Act. 2–7.
Claims 1, 2, 7, 8, 16, 17, 22, 23, 28, 30, 31, 33–40, and 42–44 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Oskolkov et al., (US 2013/0060708 A1, published Mar. 7, 2013)
(“Oskolkov”), Turanyi et al., (US 2008/0316956 A1, published Dec. 25,
2008)(“Turanyi”), and Bardalai et al., (US 2007/0230362 A1, published Oct.
4, 2007) (“Bardalai”). Final Act. 7–16.
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ANALYSIS
Rejection of Claims Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To
the extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 1, 2, 7, 8, 16, 17, 22, 23, 28 30,
31, 33–40, and 42–44 as a group. See Appeal Br. 18. Given our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1,
2, 7, 8, 16, 17, 22, 23, 28 30, 31, 33–40, and 42–44 based on representative
claim 1.
Principles of Law
“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 Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
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(“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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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)
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(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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “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:

2 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.p
df).
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(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”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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.
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).

3 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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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites an abstract fundamental
economic practice. Ans. 6; Final Act. 5. In particular, the Examiner
determined that the claimed invention recites the abstract idea of funds
transfer between on-shore and off shore locations, which is a fundamental
economic practice. Ans. 4. Because claim 1 has been amended to no longer
recite that the requested transfer is a “money transfer,” on the record before
us, we do not agree with the Examiner that claim 1 recites a fundamental
economic practice involving the transferring of funds. See Amendment
Accompanying Request for Continued Examination, Amendments to the
Claims (claim 1), dated Apr. 2, 2018.
We nevertheless conclude that claim 1 recites an abstract idea.
Consistent with Appellant’s description of the claims (Spec. ¶¶ 4–5), the
“determining” and “comparing” steps, as recited in Appellant’s claim 1,
could be performed by a person as a mental process, which is a category of
abstract idea identified by the 2019 Revised Guidance. See CyberSource
Corp. v. Retail Decisions, 654 F.3d 1366, 1372–73 (“[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.”); see also In re Comiskey, 554 F.3d 967, 979
(Fed. Cir. 2009) (“[M]ental processes—or processes of human thinking—
standing alone are not patentable even if they have practical application.”);
Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, . . .
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.” (Emphasis
added)).
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Mental processes are concepts performed in the human mind
(including an observation, evaluation, judgment, opinion). 2019 Revised
Guidance at 52. Mental processes remain unpatentable even when automated
to reduce the burden on the user of what once could have been done with
pen and paper. CyberSource, 654 F.3d at 1375 (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson”).
Here, the step of determining whether or not to process the received
transfer request could be performed in the human mind, or practicably with
pen and paper, and involves observation, evaluation, judgment, and opinion.
Similarly, determining that a first user identifier corresponding to a first user
matches a first eligible user of the plurality of eligible users identified in the
received data feed data requires at least observation and evaluation. With
regard to the remaining “determining” and “comparing” steps, courts have
held that collecting and comparing/analyzing information, in a way that can
be performed mentally, or is analogous to human mental work, fall within
the realm of abstract ideas. See, e.g., Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (“we have treated analyzing
information by steps people go through in their minds . . . without more, as
essentially mental processes within the abstract-idea category”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (collecting and analyzing information are mental processes within the
abstract-idea category); CyberSource, 654 F.3d at 1372 (holding claims to
obtaining and comparing data as unpatentable mental processes, because the
steps can be performed in the human mind, or by a human using a pen and
paper).
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Based on the forgoing, claim 1 fits squarely into the Guidance’s
subject-matter grouping of mental processes and therefore recites an abstract
idea. We now proceed to Prong 2 to determine whether the claims are
directed to the abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next 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.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
2019 Revised Guidance at 55 n.24. In claim 1, the additional elements
include the limitations “host computer system,” “remote computer system,”
the “receiving” limitation, the “receiving and storing” limitation, and the
“processing” limitation. We note that the “receiving” and “storing”
limitations, as recited in claim 1, amount to mere data gathering and thus are
insignificant extra-solution processing that cannot integrate the abstract idea
into a practical application. 2019 Revised Guidance, 55 n.31; see also MPEP
§ 2106.05(g). Similarly, the “processing” step amounts to insignificant post-
processing activity. See id.
To integrate the exception into a practical application, the “host
computer system” or “remote computer system” must, for example, improve
the functioning of a computer or any other technology or technical field (see
MPEP § 2106.05(a)), apply the judicial exception with a particular machine
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(see MPEP § 2106.05(b)), affect a transformation or reduction of a particular
article to a different state or thing (see MPEP § 2106.05(c)), or apply or use
the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment (see MPEP § 2106.05(e)). See 2019 Revised Guidance.
The Examiner determined that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because the additional computer elements “do not purport to improve the
functioning of a computer or effect an improvement in any other technology
or technical field.” Final Act. 5. The Examiner determined that “the claims
do not amount to significantly more than an instruction to apply the abstract
idea of processing transactions between users using generic computers in a
network.” Id.
Appellant argues that “claim 1 meaningfully limits the processing of
any transfer request according to a user identifier, device identifier, and path
data associated with the request. At least these limits meaningfully limit
transfer request processing by specific means of authorization of said
transfer request.” Appeal Br. 11–12 (citing McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appellant also argues that
claim 1 recites “an improvement to the technology of Internet-based
communication security” by expressing the technical solution of verifying an
electronic communication via device identifier and message path to prevent
fraudulent transactions. Appeal Br. 12–14.
Appellant’s arguments are not persuasive because they rely on claim
limitations that are part of the abstract idea. Appellant has not shown that
either of the additional elements in the claim (“host computer system” and
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“remote computer system”) integrates the abstract idea into a practical
application.
Moreover, Appellant’s claim 1 is unlike the technology-based
integrations cited by Appellant. See Appeal Br. The patent-eligible claim in
McRO focused on a specific asserted improvement in computer animation.
The McRO court determined that McRO’s claim was not directed to an
abstract idea because it “uses the limited rules in a process specifically
designed to achieve an improved technological result” over “existing,
manual 3-D animation techniques.” McRO, 837 F.3d at 1316. The claims in
McRO recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub sequences of phonemes, timings,
and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In
McRO, “the incorporation of the claimed rules, not the use of the computer,”
improved an existing technological process. Id. at 1314. Appellant does not
direct us to any evidence that the claimed steps correspond to
unconventional rules that are specifically designed to achieve an improved
technological result.
Rather, claim 1 addresses determining whether or not to process the
received transfer request by collecting, analyzing, and comparing data. See
Spec. 4–5. Additionally, the claims in McRO were drawn to improvements
in the operation of a computer at a task, rather than applying a computer
system to perform generic data manipulation steps, as in Appellant’s claim
1. See McRO, 837 F.3d at 1314.
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in McRO. Claim 1
as a whole merely uses instructions to implement the abstract idea on a
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computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea. Here, the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field; (ii) a “particular machine” to apply or use the
judicial exception; (iii) a particular transformation of an article to a different
thing or state; or (iv) any other meaningful limitation. See 84 Fed. Reg. at
55. Rather, claim 1 recites an abstract ideas as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. In Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
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The Examiner determined that “the limitations—receiving and storing
data feeds, determining user eligibility, comparing device identifier, path
identifiers, and processing transfer request—recite no more than well-
understood, routine, and conventional activities previously known in the
industry.” Final Act. 7.
We agree with the Examiner. Paragraphs 51–55 of Appellant’s
Specification describe computer systems upon which embodiments of the
present invention may be implemented. See Spec. ¶ 51. The recited
limitations “host computer system” and “remote computer system,” are
described generically, and as containing generic components. See Spec.
¶¶ 51–55. Because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Berkheimer Memo4 § III.A.1; Spec. ¶¶ 51–
55. We conclude claim 1 does not have an inventive concept because the
claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.

4 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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Appellant argues that claim 1 “adds specific limitations or a
combination of limitations that are not conventional activity in the field,
which is indicative that an inventive concept is present.” Appeal Br. 14.
Appellant argues that, “[i]n contrast to well-understood and conventional
methods of the past, claim 1 provides an unconventional method for
authorizing a received transfer request (i.e. electronic communication)
according to various security parameters including a user identifier, a device
identifier, and a data path identifier.” Id. at 15.
Appellant’s argument is unpersuasive. Appellant does not direct our
attention to anything in the Specification that indicates the computer
components perform anything other than well-understood, routine, and
conventional functions, such as receiving data, storing data in a database,
comparing data, and processing a request. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner's § 101 rejection of independent
claim 1 and grouped claims 2, 7, 8, 16, 17, 22, 23, 28 30, 31, 33–40, and 42–
44, not argued separately with particularity.

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Rejection of Claims Under 35 U.S.C. § 103(a)
We have reviewed the obviousness rejections of claims 1, 2, 7, 8, 16,
17, 22, 23, 28, 30, 31, 33–40, and 42–44 in light of Appellant’s arguments
that the Examiner erred. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
Appellant could have made, but chose not to make, in the Briefs are waived.
See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s arguments are not persuasive of
error. We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We provide the following explanation for emphasis.
Appellant argues claims 1, 2, 7, 8, 16, 17, 22, 23, 28 30, 31, 33–40,
and 42–44 as a group.5 See Appeal Br. 20. Given our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the rejection of claims 1, 2, 7, 8, 16,
17, 22, 23, 28 30, 31, 33–40, and 42–44 based on representative claim 1.
Appellant contends the cited portions of Oskolkov, Turanyi, and
Bardalai do not teach or suggest
receiving, at a host computer, a transfer request from a remote
computer system operating at a mobile off-shore location, and
receiving and storing, by the host computer system, one or
more data feeds comprising data identifying ... (c) path
identifiers corresponding to each of the eligible users, where at
least one of the data feeds is received over a network path
different from the first transmission path,

5 With regard to dependent claim 8, which ultimately depends from claim 1,
Appellant relies on arguments made with regard to claim 1 to further argue
that “the cited documents cannot teach the path data comprising of specific
data points as described in claim 8 and ultimately making the comparison
based upon these specific data points as described claim 8.” Appeal Br. 21.
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as recited in claim 1. Appeal Br. 18. According to Appellant, the method of
claim 1 recites that a transfer request is sent over a first transmission path
and at least one data feed containing path data identifiers is sent over a
network path different from the first transmission path. Id.
We are not persuaded that the Examiner erred. Appellant has not
persuasively rebutted the Examiner’s findings. For example, while Appellant
addresses Turanyi paragraphs 46 and 47 in the Appeal Brief, Appellant did
not address the Examiner’s responses and additional findings, made in the
Answer. See Ans. 12–16 (citing Turanyi ¶¶ 33, 35, 36, 46, 47, 62, 76, 78, 79,
and 94); Reply Br. 5.
Because Appellant has not persuasively rebutted the Examiner’s
findings, we are not persuaded that the Examiner erred in finding that
Oskolkov, Turanyi, and Bardalai teaches or suggests the disputed
“receiving” limitation, set forth above.
Appellant further argues that the Examiner erred because the
combination of Oskolkov, Turanyi, and Bardalai fails to teach or suggest
(c) comparing, by the host computer system, the path data of
the received transfer request, to the path data identifiers
corresponding to the first eligible user, wherein said comparing
comprises extracting two or more of the network addresses
appended to the received transfer request, and comparing each
of the two or more network addresses to the path data
identifiers corresponding to the first eligible user . . . iii) that the
network addresses appended to the received request matches the
one or more path data identifiers corresponding to the first
eligible user,
as recited in claim 1. Appeal Br. 19–20.
We are not persuaded that the Examiner erred. Again, Appellant did
not address the Examiner’s responses and additional findings, made in the
Appeal 2020-000406
Application 13/777,733

18
Answer. See Ans. 16–18 (citing Turanyi ¶¶ 19, 36, 46, 47, 78, 94); Oskolkov
¶ 143); Reply Br. 5.
Because Appellant has not persuasively rebutted the Examiner’s
findings, we are not persuaded that the Examiner erred in finding that the
combination of Oskolkov, Turanyi, and Bardalai teaches or suggests the
disputed “comparing” limitation, set forth above.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 1, as well as the Examiner’s § 103(a) rejection of
independent claims 16 and 37, not argued separately with particularity.
Appeal Br. 18. We also sustain the Examiner’s § 103(a) rejection of
dependent claims 2, 7, 8, 17, 22, 23, 28, 30, 31, 33–36, 38–40, and 42–44,
argued as a group with claim 1. Id. at 20.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 7, 8, 16, 17,
22, 23, 28, 30, 31, 33–40, and 42–44.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 7, 8, 16, 17,
22, 23, 28, 30,
31, 33–40, 42–44
101 Eligibility 1, 2, 7, 8, 16, 17,
22, 23, 28, 30, 31,
33–40, 42–44

1, 2, 7, 8, 16, 17,
22, 23, 28, 30,
31, 33–40, 42–44
103(a) Oskolkov,
Turanyi,
Bardalai
1, 2, 7, 8, 16, 17,
22, 23, 28, 30, 31,
33–40, 42–44

Overall
Outcome:
1, 2, 7, 8, 16, 17,
22, 23, 28, 30, 31,
33–40, 42–44

Appeal 2020-000406
Application 13/777,733

19
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