Thomas Purves

Patent Trials and Appeals Board

Apr 15, 2021

2020006459 (P.T.A.B. Apr. 15, 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.
14/804,191 07/20/2015 Thomas Purves 079900-0948770 6294
66945 7590 04/15/2021
Visa / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
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 THOMAS PURVES
____________

Appeal 2020-006459
Application 14/804,191
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 20, 2020) and the Examiner’s Answer (“Ans.,” mailed June 8,
2020) and Final Office Action (“Final Act.,” mailed October 21, 2019).
Appellant identifies Visa International Service Association as the real party
in interest (Appeal Br. 3).
Appeal 2020-006459
Application 14/804,191

2
CLAIMED INVENTION
The Specification states, “[e]mbodiments of the invention enable a
seamless user experience for users shopping at multiple online resource
providing entities and utilizing accounts associated with multiple
authorization computers” (Spec. ¶ 5).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] receiving, by a server computer from a resource
provider server computer, user data of a user conducting a
transaction with a computing device;
[(b)] determining, by the server computer, account data
of the user by comparing the user data and enrollment data
without receiving account information from the user during the
transaction;
[(c)] sending, by the server computer to a first mobile
application executing upon the computing device, account
identifiers for the account data, each of the account identifiers
associated with a respective mobile application of a plurality of
mobile applications installed upon the computing device;
[(d)] causing, upon selection of an account identifier
from the account identifiers, a second mobile application
associated with the selected account identifier of the plurality of
mobile applications to be executed, the second mobile
application being provided with information specific to the
transaction;
[(e)] causing the second mobile application associated
with the selected account identifier to present information
specific to the transaction to the user of the computing device
within a request for verification;
Appeal 2020-006459
Application 14/804,191

3
[(f)] causing the second mobile application associated
with the selected account identifier to, upon receiving
verification data from the user, verify the user of the computing
device by comparing the received verification data to verification
data stored in relation to the user;
[(g)] causing the second mobile application associated
with the selected account identifier to, upon verifying the user of
the computing device, provide an indication that the user has
been verified via the second mobile application to the first mobile
application;
[(h)] receiving, by the server computer from the first
mobile application executing upon the computing device, the
selection of the account identifier from the account identifiers
and the indication that the user has been verified via the second
mobile application; and
[(i)] sending, by the server computer, at least a portion
of the account data corresponding to the selected account
identifier to the resource provider server computer to utilize for
the transaction.
REJECTION
Claims 1–22 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues claims 1–22 as a group (Appeal Br. 11–29). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
Appeal 2020-006459
Application 14/804,191

4
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
Appeal 2020-006459
Application 14/804,191

5
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
Appeal 2020-006459
Application 14/804,191

6
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that independent claims 1, 8, and 15 recite “verifying a
user of a computing device for a financial transaction,” i.e., a method of
organizing human activity and, therefore, an abstract idea, and that the
abstract idea is not integrated into a practical application (Final Act. 3,
8–10). The Examiner also determined that claims 1, 8, and 15 do not
include additional elements sufficient to amount to significantly more than
the abstract idea itself, and that dependent claims 2–7, 9–14, and 16–22 are
patent ineligible for substantially the same reasons (id. at 10–11).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 11–22). The Federal Circuit has explained that “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.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on an
improvement to technology and/or a technical field.
Appeal 2020-006459
Application 14/804,191

7
The Specification is titled “SEAMLESS TRANSACTION
MINIMIZING USER INPUT,” and describes, in the Background section,
that online transactions traditionally involve one or more instances in which
a user enters account information (Spec. ¶ 1). The Specification, thus,
describes, for example, that when a user is using an application providing
services associated with multiple entities, each entity may require its own
authorization process (id.). “This can result in the user entering multiple sets
of credentials (e.g., username and password) during each transaction” — a
process that can be cumbersome inasmuch as it can be difficult for the user
to keep track of multiple credentials and also may take an unnecessarily long
time (id.).
The claimed invention is ostensibly intended to address these issues
by providing a method and system that “enable a seamless user experience
for users shopping at multiple online resource providing entities and
utilizing accounts associated with multiple authorization computers” (Spec.
¶ 5). The Specification, thus, describes that a user may register his or her
accounts with an alias identifier at an intermediary server computer and, at a
later time, may request access to information stored at the intermediary
server computer to conduct a transaction with a resource providing entity
(id.). The resource providing entity retrieves stored user data associated
with the user and forwards the user data to the intermediary server computer,
which determines accounts of the user based on the received user data and
provides account options to the user for the transaction (id.); this eliminates
any need for the user to enter account information during the transaction
(id.).
Appeal 2020-006459
Application 14/804,191

8
Consistent with this disclosure, claim 1 recites a method comprising:
(1) receiving, from a resource provider server computer, user data of a user
conducting a transaction with a computing device, i.e., “receiving, by a
server computer from a resource provider server computer,3 user data4 of a
user conducting a transaction with a computing device” (step (a));
(2) determining user account data by comparing the user data to enrollment
data, i.e., “determining, by the server computer, account data of the user by
comparing the user data and enrollment data without receiving account
information from the user during the transaction” (step (b)); (3) sending
account identifiers for the account data to a first mobile application
executing on the user computing device, i.e., “sending, by the server
computer to a first mobile application executing upon the computing device,
account identifiers for the account data,5 each of the account identifiers
associated with a respective mobile application of a plurality of mobile
applications installed upon the computing device” (step (c)); (4) upon the
user selecting one of the account identifiers, executing a second mobile
application associated with the selected account identifier, the second mobile

3 The Specification explains that a “resource providing entity” may be an
entity that makes resources available to a user, e.g., a merchant, vendor
supplier, and that a “resource provider server computer” may include any
system associated with a resource providing entity (Spec. ¶¶ 34, 35).
4 “User data” refers to any information surrounding a user conducting a
transaction, including alias identifiers, e.g., email address, phone number,
associated with the user and device identifiers, e.g., cookies, associated with
a mobile device operated by the user (Spec. ¶ 38).
5 An “account identifier” is any series of characters, numbers, graphics,
symbols or other information that uniquely represents an account
(Spec. ¶ 40).
Appeal 2020-006459
Application 14/804,191

9
application presenting transaction information to the user and requesting that
the user verify his or her identity, i.e.,
causing, upon selection of an account identifier from the
account identifiers, a second mobile application associated with
the selected account identifier of the plurality of mobile
applications to be executed, the second mobile application being
provided with information specific to the transaction; [and]
causing the second mobile application associated with the
selected account identifier to present information specific to the
transaction to the user of the computing device within a request
for verification
(limitations (d) and (e)); (5) comparing verification data received from the
user with stored verification data, and providing a verification indication to
the first mobile application if the data match, i.e.,
causing the second mobile application associated with the
selected account identifier to, upon receiving verification data
from the user, verify the user of the computing device by
comparing the received verification data to verification data
stored in relation to the user; [and]
causing the second mobile application associated with the
selected account identifier to, upon verifying the user of the
computing device, provide an indication that the user has been
verified via the second mobile application to the first mobile
application
(limitations (f) and (g)); and (6) receiving, by the server computer from the
first mobile application, the selected account identifier and verification
indication, and sending account data corresponding to the selected account
identifier to the resource provider server computer for use in the transaction,
i.e.,
Appeal 2020-006459
Application 14/804,191

10
receiving, by the server computer from the first mobile
application executing upon the computing device, the selection
of the account identifier from the account identifiers and the
indication that the user has been verified via the second mobile
application; and
sending, by the server computer, at least a portion of the
account data corresponding to the selected account identifier to
the resource provider server computer to utilize for the
transaction
limitations (h) and (i)). We agree with the Examiner that these limitations,
when given their broadest reasonable interpretation, recite verifying a user of
a computing device for a financial transaction, i.e., a commercial interaction,
which is a method of organizing human activity and, therefore, an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Appellant ostensibly does not dispute that claim 1 recites an abstract
idea — Appellant, in fact, seemingly admits as much (Appeal Br. 12–13
(noting, “the claim involves a step in which the user of a computing device
is verified” and, thus, involves an abstract idea)). Instead, Appellant argues,
as best understood, that, even if claim 1 involves an abstract idea, claim 1 is
nonetheless patent eligible because it is not directed to the abstract idea (id.
at 11–14).
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 Fed. Cir. 2016), and Finjan, Inc. v. Blue Coat Systems, Inc.,
879 F.3d 1299 (Fed. Cir. 2018) to support its position, Appellant argues that
the Federal Circuit has held claims, similar to those at issue here, patent
eligible (Appeal Br. 10–17). Yet, we can find no parallel between claim 1
and the patent-eligible claims at issue in any of DDR Holdings, McRO, and
Finjan.
Appeal 2020-006459
Application 14/804,191

11
In DDR Holdings, the claims were directed to retaining website
visitors, and in particular to a system that modified the conventional web
browsing experience by directing a user of a host website, who clicks an
advertisement, to a “store within a store” on the host website, rather than to
the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257–58.
The court determined that “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id. In particular, the claimed invention
manipulated interactions with the Internet “to yield a desired result – a result
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” Id. at 1258.
Appellant maintains that “the present claims are necessarily rooted in
systems that perform transaction authorization and are directed to a technical
solution to a problem of such systems,” i.e., “enabling the ability . . . , in a
remote transaction between a user and a remote merchant, [to] use local
mobile applications to perform verification of a user for remote transactions,
even in scenarios in which the user is not enrolled with the remote
merchant” (Appeal Br. 15). Appellant argues that the claimed invention
clearly improves “the technology field of online transaction processing” in
that it allows a user to be authenticated by a trusted entity before conducting
an online transaction with a merchant and without providing private data to
Appeal 2020-006459
Application 14/804,191

12
the merchant, which may not be a trusted party (id. at 15–16). Yet, unlike
the situation in DDR Holdings, there is no indication here that the computer
components, i.e., “a server computer”; “a resource provider server
computer”; “a computing device,” and “mobile applications,” recited in
claim 1 are used other than as tools operating in their normal and ordinary
capacity to receive, process, and transmit information. DDR Holdings,
773 F.3d at 1256.
Appellant’s reliance on McRO is similarly misplaced. Appellant
asserts that the court in McRO found that “the claims at issue ‘use[ ] a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results’”; that the court
determined that the specific structure of the claimed rules would prevent
broad preemption of all rule-based means of automating lip synchronization;
and that the court, “based on the fact that ‘[t]he concern underlying the
exceptions to § 101 is not tangibility, but preemption,’ held . . . the claims
. . . patent eligible” (Appeal Br. 16–17). Appellant argues that the current
claims, “[l]ike the claims at issue in McRO, . . . are directed to ‘a combined
order of specific rules that renders information into a specific format that is
then used and applied to create desired results,’” and that this “combined
order of specific rules” also prevents preemption of any abstract concept (id.
at 17). Appellant, thus, concludes, “[a]ccordingly, the claims are limited to a
specific embodiment that improves upon the underlying technology and does
not preempt any abstract concept, and are therefore directed to patent
eligible subject matter” (id.).
Although Appellant ostensibly contends otherwise, the Federal Circuit
did not premise its determination that the claim in McRO was patent eligible
Appeal 2020-006459
Application 14/804,191

13
merely on the specificity of the claimed animation scheme. Nor, for that
matter, did the court rely solely on the lack of any risk of preemption. See
McRO, 837 F.3d at 1315 (“The limitations in claim 1 prevent preemption of
all processes for achieving automated lip-synchronization of 3–D
characters. . . . Even so, we have recognized that ‘the absence of complete
preemption does not demonstrate patent eligibility.’ Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).”). Instead, the
court determined that the claim there at issue was patent eligible because,
when considered as a whole, the claim was directed to a technological
improvement over existing, manual 3-D animation techniques and used
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice. Id. at 1316. In
particular, the Federal Circuit found that the claimed rules allow computers
to produce accurate and realistic lip synchronization and facial expressions
in animated characters that previously could only be produced by human
animators. Id. at 1313.
Appellant asserts here that the claimed invention enables a seamless
user experience for users shopping at multiple online resource providing
entities and utilizing accounts associated with multiple authorization
computers while eliminating the need for the user to enter any account
information into a device during the transaction (Appeal Br. 17). Yet,
although this may well improve a user’s shopping experience, we are not
persuaded that it achieves an improved technological result analogous to that
obtained in McRO.
Appellant’s reliance on Finjan is similarly unavailing. In Finjan, the
claims were directed to a behavior-based virus scanning system. There, the
Appeal 2020-006459
Application 14/804,191

14
Federal Circuit noted that the claimed method “employs a new kind of file”
(in the form of a security profile, created by scanning a downloadable6 and
attaching the virus scan results to the downloadable) that “enables a
computer security system to do things it could not do before,” i.e., “[t]he
security profile approach allows access to be tailored for different users and
ensures that threats are identified before a file reaches a user’s computer.”
Finjan, 879 F.3d at 1305. In holding the claims patent eligible, the court,
thus, determined, “[t]he asserted claims are . . . directed to a non-abstract
improvement in computer functionality, rather than the abstract idea of
computer security writ large.” Id. Noting no need to proceed to step two of
the Mayo/Alice framework, the court also remarked:
Here, the claims recite more than a mere result. Instead, they
recite specific steps—generating a security profile that identifies
suspicious code and linking it to a downloadable—that
accomplish the desired result. Moreover, there is no contention
that the only thing disclosed is the result and not an inventive
arrangement for accomplishing the result. There is no need to
set forth a further inventive concept for implementing the
invention. The idea is non-abstract and there is no need to
proceed to step two of Alice.
Id. at 1305–06.
Appellant asserts that, in Finjan, the court concluded that the claims
are patent eligible “because they are not directed to a produced result, which
by itself would not be patent-eligible, but instead . . . recite a specific way of
achieving that result which is patent-eligible” (Appeal Br. 18). And

6 The parties in Finjan agreed, at claim construction, that the term
“downloadable” should be construed to mean “an executable application
program, which is downloaded from a source computer and run on the
destination computer.” Finjan, 879 F.3d at 1303.
Appeal 2020-006459
Application 14/804,191

15
Appellant argues that because the current claims likewise “recite a specific
way of providing the ability to use local mobile applications to perform
verification of a user for remote transactions,” the claims are “patent eligible
for the same reasons pointed out by the court in Finjan” (id.).
Appellant’s argument is not persuasive because, among other reasons,
the Federal Circuit did not determine that the claims in Finjan are patent
eligible simply because the claims recite a specific way of achieving a
desired result. Instead, as described above, the court, in Finjan, held that the
claims are patent eligible because they are directed to an improvement in
computer functionality. No such improvement is present here. Indeed,
“[t]he specification is silent as to any specific structural or inventive
improvements in computer functionality” that are attributable to the claimed
method, as recited in claim 1. See Customedia Techs., LLC v. Dish Network
Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
We also are not persuaded of Examiner error by Appellant’s argument
that claim 1 includes additional elements that integrate the recited abstract
idea into a practical application (Appeal Br. 19–20).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/
pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated a recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In
particular, the Guidance describes that an additional element may have
integrated the judicial exception into a practical application if the additional
element (1) reflects an improvement in the functioning of a computer or an
Appeal 2020-006459
Application 14/804,191

16
improvement to other technology or technical field; (2) applies or uses the
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition; (3) implements the judicial exception with, or uses the
judicial exception with, a particular machine or manufacture integral to the
claim; (4) effects a transformation or reduction of an article to a different
state or thing; or (5) applies or uses the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. Id. At the
same time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
Paraphrasing the language of claim 1, Appellant argues that even if
the claims involve the general concept of “verifying the user of a computing
device,” the claims are “limited to a specific manner of implementing such a
concept, which results in a practical application (e.g., the ability to use local
mobile applications to perform verification of a user for remote
transactions)” (Appeal Br. 19). But, that argument is not persuasive at least
because the relevant question under Step 2A, Prong 2 is not whether the
claimed invention itself, i.e., using local mobile applications to verify a
user’s identity for remote transactions, is a practical application; instead, the
question is whether the claim includes additional elements beyond the
judicial exception that integrate the judicial exception into a practical
Appeal 2020-006459
Application 14/804,191

17
application. The Examiner determined here, and we agree, that the only
additional elements recited in claim 1 beyond the abstract idea are “a
resource provider server computer”; “a computing device”; and “mobile
applications” installed on the computing device — elements that, as the
Examiner observes, are recited at a high level of generality, i.e., as generic
computer components (Final Act. 9); they also are described as such in
Appellant’s Specification (see, e.g., Spec. ¶¶ 27, 31, 32, 35, 47, 48, 64).
“And, after Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”
DDR Holdings, 773 F.3d at 1256.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible because “any abstract
concepts involved in the claim[ ] are involved in a specific way which does
not monopolize the abstract concept” (Appeal Br. 20). Although the
Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption,”
Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern
for patent eligibility is not the same as characterizing preemption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S.
at 216). “[P]reemption may signal patent ineligible subject matter, [but] the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Appeal 2020-006459
Application 14/804,191

18
Appellant attempts to draw an analogy between claim 1 and
hypothetical claim 1 of Example 42 of the USPTO’s 2019 Subject Matter
Eligibility Examples: Abstract Ideas (the “Eligibility Examples”), which the
Office determined is patent eligible (Appeal Br. 21–22).7 But, we can find
no parallel between hypothetical claim 1 of Example 42 and pending claim 1
here at issue.
The USPTO describes in the “Background” section of Example 42
that patients with chronic or undiagnosed illnesses often must visit several
different medical providers for diagnosis and treatment, and that these
physicians may be physically separate from, and unaware of each other.
Eligibility Examples 17. During a visit, each medical provider records
information about the patient’s condition in the provider’s local patient
records. Id. However, because these records often are stored in a non-
standard format (i.e., a format based on the particular hardware or software
platform in use in the medical provider’s office), it is difficult for a medical
provider to share updated information about a patient’s condition with other
health care providers. Id. To address this problem, the hypothetical
applicant in Example 42 invented a network-based patient management
method that “collects, converts[,] and consolidates patient information from
various physicians and health-care providers into a standardized format,
stores [the information] in network-based storage devices, and generates
messages notifying health care providers or patients whenever that
information is updated.” Id.

7 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf.
Appeal 2020-006459
Application 14/804,191

19
Applying the 2019 Revised Guidance, the Office determines that
hypothetical claim 18 recites a method of organizing human activity and,
therefore, an abstract idea, i.e., that “[t]he claimed invention is a method that
allows for users to access patients’ medical records and receive updated
patient information in real time from other users, which is a method of
managing interactions between people.” Eligibility Examples 18. However,
the Office determines that claim 1 is nonetheless patent eligible because it
integrates the recited abstract idea into a practical application, i.e.,
[t]he claim recites a combination of additional elements
including storing information, providing remote access over a

8 Claim 1 of Example 42 recites:
A method comprising:
a) storing information in a standardized format about a patient’s
condition in a plurality of network-based non-transitory storage devices
having a collection of medical records stored thereon;
b) providing remote access to users over a network so any one of
the users can update the information about the patient’s condition in the
collection of medical records in real time through a graphical user
interface, wherein the one of the users provides the updated information
in a non-standardized format dependent on the hardware and software
platform used by the one of the users;
c) converting, by a content server, the non-standardized updated
information into the standardized format,
d) storing the standardized updated information about the
patient’s condition in the collection of medical records in the
standardized format;
e) automatically generating a message containing the updated
information about the patient’s condition by the content server
whenever updated information has been stored; and
f) transmitting the message to all of the users over the computer
network in real time, so that each user has immediate access to up-to-
date patient information.
Eligibility Examples 18.
Appeal 2020-006459
Application 14/804,191

20
network, converting updated information that was input by a user
in a non-standardized form to a standardized format,
automatically generating a message whenever updated
information is stored, and transmitting the message to all of the
users. . . . Specifically, the additional elements recite a specific
improvement over prior art systems by allowing remote users to
share information in real time in a standardized format
regardless of the format in which the information was input by
the user.
Id. at 18–19 (emphasis added).
Appellant maintains here that, similar to Example 42, claim 1 is patent
eligible because the claim includes additional elements that “recite a specific
improvement over prior art systems by enabling the ability to use local
mobile applications to perform verification of a user for remote transactions”
(Appeal Br. 22). But, that argument is not persuasive at least because the
features that Appellant identifies as additional elements (i.e., determining
account data of a user by comparing user data and enrollment data without
receiving account information from the user during the transaction; receiving
account identifiers for the account data, each of the account identifiers
associated with a mobile application installed on the user computing device;
executing a mobile application associated with the selected account
identifier with information specific to the transaction; causing the mobile
application associated with the selected account identifier to present
information specific to the transaction to the user of the computing device
within a request for verification by the user; and transmitting the selected
account identifier and the indication that the user has been verified to the
intermediary server computer) are part of the abstract idea; they are not
additional elements to be considered in determining whether claim 1
Appeal 2020-006459
Application 14/804,191

21
includes elements beyond the abstract idea that integrate the recited abstract
idea into a practical application.
It also is significant here that hypothetical claim 1 of Example 42 was
deemed patent eligible because it provided a specific improvement over
prior systems by allowing remote users to share information in real time in a
standardized format regardless of the format in which the information was
originally input (see Eligibility Examples 18–19). Hypothetical claim 1,
thus, addressed technological difficulties related to incompatible computer
formats, disparate geographic locations, and the untimely sharing of
information (see id. at 17). We are not persuaded that a comparable
improvement is present here.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
Appeal 2020-006459
Application 14/804,191

22
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Again paraphrasing the language of claim 1, Appellant charges that
the § 101 rejection cannot be sustained because the Examiner has failed to
provide evidence that the cited features (i.e., determining account data of a
user by comparing user data and enrollment data without receiving account
information from the user during the transaction; receiving account
identifiers for the account data, each of the account identifiers associated
with a mobile application installed on the user computing device; executing
a mobile application associated with the selected account identifier with
information specific to the transaction; causing the mobile application
associated with the selected account identifier to present information specific
to the transaction to the user of the computing device within a request for
verification by the user; and transmitting the selected account identifier and
the indication that the user has been verified to the intermediary server
computer) are “well-understood, routine, conventional activities,” as
required by the Berkheimer Memorandum”9 (Appeal Br. 23–26). That

9 Appellant references the USPTO’s April 19, 2018 Memorandum to the
Patent Examining Corps entitled, “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Appeal 2020-006459
Application 14/804,191

23
argument is not persuasive at least because, as described above, the features
that Appellant identifies are part of the abstract idea itself; they are not
additional elements to be considered in determining whether claim 1
includes additional elements or a combination of elements sufficient to
amount to significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply

Decision (Berkheimer v. HP, Inc.),” available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF.
Appeal 2020-006459
Application 14/804,191

24
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Here, the Examiner determined and we agree, that the only additional
elements recited in claim 1 beyond the abstract idea are generic computer
components, i.e., “a resource provider server computer”; “a computing
device”; and “mobile applications,” used as tools to perform the recited
abstract idea — a determination amply supported by and fully consistent
with the Specification (see, e.g., Spec. ¶¶ 27, 31, 32, 35, 47, 48, 64).10
Appellant cannot reasonably maintain that there is insufficient factual
support for the Examiner’s determination that the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
receiving, processing, and transmitting information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC,

10 The Berkheimer Memorandum expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
Appeal 2020-006459
Application 14/804,191

25
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
Finally, we are not persuaded by Appellant’s argument that any
analogy exists between claim 1 and the claims at issue in BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016) (Appeal Br. 27–29). In BASCOM, the court determined that the
claims at issue described an inventive concept in the non-conventional and
non-generic arrangement of known, conventional pieces. BASCOM,
827 F.3d at 1350. Specifically, the Federal Circuit determined that the
claimed installation of a filtering tool at a specific location, remote from the
end-users, with customizable filtering features specific to each end user
provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server. Id.
Appellant maintains here that claim 1 provides an inventive concept in
the non-generic and non-conventional arrangement of the recited computer
components, which enable a merchant to authenticate consumers for online
purchases even if the merchant does not have an existing relationship with
those consumers (Appeal Br. 28–29). But, we are not persuaded that
BASCOM is sufficiently analogous to control the outcome here.
In BASCOM, the Federal Circuit held that the second step of the
Mayo/Alice framework was satisfied because the claimed invention
“represents a ‘software-based invention[ ] that improve[s] the performance
Appeal 2020-006459
Application 14/804,191

26
of the computer system itself.”’ BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, where the patent “claimed a technical solution to a
problem unique to the Internet,” the patent in BASCOM claimed a
“technology-based solution . . . to filter content on the Internet that
overcomes existing problems with other Internet filtering systems . . .
making it more dynamic and efficient”) (citations omitted). We are not
persuaded that a comparable situation is presented here.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–22, which fall with
claim 1.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22
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