Volker Neuwirth

Patent Trials and Appeals Board

Sep 25, 2019

13731942 - (R) (P.T.A.B. Sep. 25, 2019)

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.
13/731,942 12/31/2012 Volker Neuwirth 24538.5 7602
122269 7590 09/25/2019
Brian Tucker
Kirton McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
btucker@kmclaw.com
ipdocket@kmclaw.com
klyon@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VOLKER NEUWIRTH
____________________

Appeal 2017-011046
Application 13/731,942
Technology Center 3600
____________________

Before MARC S. HOFF, JENNIFER S. BISK, CARL L. SILVERMAN,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellant filed a Request for Rehearing, filed June 4, 2019, pursuant to 37
CFR § 41.52, seeking reconsideration of our Decision on Appeal mailed
April 4, 2019, in which we affirmed the rejection of claims 1, 3–10, 21–25,
and 27–31. We have jurisdiction over the Request under 35 U.S.C. § 6(b).
PRINCIPLES OF LAW
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 Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. See, 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 Supreme Court’s two-step 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 (“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, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting Corning
v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 at 176; see also id. at 192 (“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 Supreme Court also indicated that a claim “seeking
patent protection for that formula in the abstract . . . is not accorded the
protection of our patent laws, . . . and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment.” Id. (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
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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. (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.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). 84 Fed. Reg. 50.
Under that guidance, we first look to whether the claim recites:
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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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are 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.
See Memorandum.

ANALYSIS
We note that a Request for Rehearing “must state with particularity
the points believed to have been misapprehended or overlooked by the
Board.” See 37 C.F.R. § 41.52(a)(1). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Briefs. Neither is it an
opportunity to merely express disagreement with a decision without setting
forth points believed to have been misapprehended or overlooked.
Arguments not raised in the Briefs before the Board and evidence not
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previously relied on in the briefs also are not permitted except in the limited
circumstances set forth in § 41.52(a)(2) through (a)(4). Id.

REJECTION UNDER 35 U.S.C. § 101
Appellant’a argument that the Board’s purported broadest reasonable
interpretation of the invention is “extremely inadequate” and “ignores the
majority of the claim language” is not persuasive. Req. for Reh’g 17. The
Board considered the entirety of representative independent claim 1 in
rendering a decision on subject matter eligibility. Dec. 7–8. In the interest of
clarity, we expand herein our § 101 analysis of the claimed invention.
DO THE CLAIMS RECITE AN ABSTRACT IDEA?
Representative claim 1 is reproduced below. We explicitly identify, in
italics, the steps considered to recite the abstract idea.
1. In a server computing system, a method for enabling
a merchant computing system to obtain user input from a user,
the method comprising:
providing, by the server computing system, an interface
to the merchant computing system, the interface configured to
receive communications from an application executing on the
merchant computing system, the server computing system
comprising memory that stores computer executable
instructions defining the interface and a processor that
executes the computer executable instructions to provide the
interface;
receiving, via the interface, one or more first
communications sent over the internet by the application
executing on the merchant computing system, the one or more
first communications including:
(1) a request to obtain user input to serve as
authorization for the merchant computing system to perform a
transaction to an account of the user,
(2) contact information for the user, and
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(3) information representing the transaction;
extracting the contact information and the information
representing the transaction from the one or more first
communications;
generating a webpage that includes an input area for
receiving the user input;
formatting the webpage to include the information
representing the transaction that was provided in the one or
more first communications;
transmitting a second communication over a network to
a client computing device associated with the user based on
the contact information that was provided in the one or more
first communications, the second communication including a
link which the user can select to cause the webpage to be
displayed;
in response to the user selecting the link included in the
second communication, transmitting the webpage to the client
computing device such that the webpage is displayed to the
user to allow the user to provide the user input into the input
area;
in response to the user providing the user input, receiving
one or more third communications that include the user input;
and;
sending the user input to the merchant computing system
to enable the merchant computing system to associate the user
input with the account for the user on the merchant computing
system such that the user input can serve as authorization from
the user to perform the transaction to the account.

As we stated in the Decision, the claims recite presenting information
to a user and obtaining “user input” in response to the presented information
– to wit, obtaining authorization for a purchase or other legal agreement to
be entered into by a user. Dec. 8. We regard this claimed concept, of
obtaining written authorization for a purchase or other legal agreement, as
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constituting a method of organizing human activity found by the courts to
constitute patent-ineligible subject matter. Id.
The representative claim recites enabling a merchant computing
system to obtain user input from a user, in which a server computing system
provides an interface to a merchant computing system. Subsequently the
server receives certain communications from the merchant. The specific
communications concern data (“information”) pertinent to the transaction at
issue.
The received information is extracted and then re-presented in the
form of a webpage which is presented to a client computing device so that a
user may view it, select a link, and supply user input. The user input is then
sent to the merchant computing system, which associates the user input with
the user’s account, such that the user input can serve as authorization for the
transaction.
Appellant’s claimed invention thus recites a plurality of steps, each
briefly noted supra, that constitute gathering data from a computing system,
presenting that data to a user, gathering further data (“authorization for the
transaction”) from that user, and associating that data with a user’s account
in order to confirm the user’s authorization of the transaction.
We maintain our conclusion that the claimed obtention of
authorization for such a transaction is analogous to commercial or legal
interactions, including agreements in the form of contract, and entering into
legal obligations, that the courts have found to be patent-ineligible.1 Dec. 8–

1 See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir.
2014) (holding that concept of “creating a contractual relationship—a
‘transaction performance guaranty’” is an abstract idea); In re Comiskey, 554
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9. Such commercial or legal interactions constitute one of certain methods of
organizing human activity identified in the Memorandum. 84 Fed. Reg. at
52. Pursuant to the Memorandum, we maintain our conclusion that the
claims recite an abstract idea.
Appellant presents argument on rehearing concerning certain
technical aspects of the claimed communications: that the merchant
computing system never communicates with the client computing device.
(Req. for Reh’g 17); how the merchant computing system communicates
with the server computing system (Req. for Reh’g 18); the functionality that
the server computing system performs in response to the merchant
computing system’s communications (Req. for Reh’g 20); how the server
computing system communicates with the client computing device (Req. for
Reh’g 21). The Board considered each of the limitations of the claimed
invention. We maintain our conclusion from the Decision that the claimed
invention nevertheless recites the abstract idea (in summary) of gathering
data, presenting data to a user, receiving user input (regarding the
transaction) in response, and associating that user input with the user’s
account. The technical aspects discussed by Appellant constitutes means for

F.3d 967, 981 (Fed. Cir. 2009) (claims directed to “resolving a legal dispute
between two parties by the decision of a human arbitrator” are ineligible);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding
that claim “describe[ing] only the abstract idea of showing an advertisement
before delivering free content’’ is patent ineligible); In re Ferguson, 558
F.3d 1359, 1364 (Fed Cir. 2009) (holding methods “directed to organizing
business or legal relationships in the structuring of a sales force (or
marketing company)” to be ineligible); Credit Acceptance, 859 F.3d 1044 at
1054 (“The Board determined that the claims are directed to the abstract idea
of ‘processing an application for financing a purchase.’ . . . We agree.”).
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applying the expressed abstract idea, previously known to be implemented
manually (on paper), to a computer environment through the employment of
generically disclosed computer components. Dec. 11.
We have further considered Appellant’s argument on rehearing that
the board must have misunderstood that the claimed invention is
“significantly more than obtaining user authorization.” Req. for Reh’g 24.
We have considered Appellant’s explanation of the Specification’s
description of the various functions of server system 101, merchant system
102, and client system 103. Req. for Reh’g 24–26. We nevertheless maintain
our conclusion that the disclosed and claimed invention does not amount to
more than the established, ‘manual’ process of obtaining user authorization,
adapted to generic computer components.” Dec. 11.
We maintain our conclusion that the invention recites an abstract idea.
INTEGRATION INTO A PRACTICAL APPLICATION
Appellant argues that the Board did not consider the claims as a
whole, nor consider what the claims actually recite, in concluding that the
recited abstract idea of gathering data, presenting data to a user, and
receiving user input from the user in response to the presented data is not
integrated into a practical application. Req. for Reh’g 27–36.
The Memorandum provides exemplary considerations that are
indicative that an additional element may have integrated the exception (i.e.,
the abstract idea recited in the claim) into a practical application:
(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
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(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See Memorandum, 84 FR at 55; MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant’s Request does not appear to make a specific argument that
the claimed invention includes an additional element that improves the
functioning of a computer. We maintain our conclusion in the Decision that
Appellant does not identify disclosure of a claimed specific process that
would constitute improvement to the functioning of a computer. Dec. 11.
Appellant further argued in the Appeal Brief that a series of steps in the
claimed invention “define[d] a process by which the server generates and
links together two types of network communications (the second
communication and the webpages) so that the user will ultimately be able to
provide user input in a simple manner . . . . [T]he actual claimed process
consists of an ordered combination of steps defining a unique way in which
the server can facilitate the receipt of the user input.” App. Br. 13. We find
that an improvement in the manner that the server can facilitate the receipt of
user input constitutes an advance in the underlying abstract idea of
presenting information to a user and receiving user input (“agreement”) in
response. The abstract idea itself cannot provide a practical application of
the abstract idea. Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084,
1093 (Fed. Cir. 2019) (“The abstract idea itself cannot supply the inventive
concept, ‘no matter how groundbreaking the advance.’” (quoting SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)).
Appellant’s Request, and the Appeal Brief, do not appear to present
specific argument that the claimed invention recites an additional element
that improves another technology or technical field.
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Appellant’s Request, and the Appeal Brief, do not appear to present
specific argument that the claimed invention recites an additional element
that applies the abstract idea with, or by use of, a particular machine.
Appellant’s Request, and the Appeal Brief, do not appear to present
specific argument that the claimed invention recites an additional element
that transforms a particular article to a different state or thing.
On the contrary, we maintain our conclusion in the Decision that the
claimed invention generally links user of the abstract idea to a particular
technological environment. As we stated in the Decision, Appellant does not
establish that the disclosed and claimed invention amounts to more than the
established, manual process of obtaining user authorization, adapted to
generic computer components. Dec. 11.
We maintain our conclusion that several claim limitations, including
(1) generating and formatting a webpage that includes information
representing the transaction, and (2) transmitting a second communication to
a client computing device such that the webpage is caused to be displayed
upon the user’s selection of a link, are claim limitations that constitute
insignificant extra-solution activity, specifically, data gathering steps. Dec.
11; see MPEP 2106.05(g). As we stated in the Decision, Appellant does not
explain why the combination of steps that “define[] a process by which the
server generates and links together two different types of network
communications . . . so that the user will ultimately be able to provide user
input” defines “a unique way in which the serve can facilitate the receipt of
user input.” Dec. 11–12.
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We maintain our conclusion that the claimed invention does not recite
additional elements that integrate the recited abstract idea into a practical
application.
INVENTIVE CONCEPT
The last step in evaluating subject matter eligibility is to determine
whether the claims express an inventive concept, i.e., whether any additional
claim elements “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). This
requires us to evaluate whether the additional claim elements add “a specific
limitation or combination of limitations that are not well-understood,
routine, and conventional activity in the field” or “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Memorandum, 84 Fed. Reg.
at 50, 56.
Appellant asserts on rehearing that the Board did not analyze whether
the configuration and interaction of merchant, server, and client computing
system could be unconventional. Req, for Reh’g 36. Appellant does not
present specific argument on rehearing as to points misapprehended or
overlooked in the Decision regarding the well-understood, routine, and
conventional nature of these elements. Appellant presented argument in the
Brief that the claims “define a process by which the server generates and
links together two different types of network communications . . . so that the
user will ultimately be able to provide user input in a simple manner.” App.
Br. 13. As we discussed supra, we find that these limitations constitute an
improvement to the abstract idea of presenting information to a user and
receiving user input. We find that these claim limitations do not constitute
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additional elements beyond the abstract idea that are not well-understood,
routine, or conventional activity in the field. We maintain our finding in the
Decision that Appellant discloses and claim generic computer components
used conventionally, as a tool to implement the abstract idea of obtaining
authorization from a user. Dec. 12–13; Spec. ¶¶ 34, 35, 36.
We maintain our decision that the claims do not recite additional
elements, not well-understood, routine, or conventional, beyond the recited
abstract idea.
HYPOTHETICAL CLAIM
We have considered Appellant’s argument that we misapprehended or
misunderstood Appellants’ remarks concerning a hypothetical patent-
eligible claim. Req. for Reh’g 39. We are not persuaded by Appellant’s
argument on rehearing. It is evident from our Decision that we considered
Appellant’s arguments in full. We maintain our conclusion that the outcome
in CBM2014-00170, from which the hypothetical claims are based, is not
controlling authority with respect to this proceeding. We maintain our
further conclusion that the patent eligibility of that hypothetical claim was
based on reasons not having to do with the subject matter of the claimed
invention: “primarily based on how the information is disseminated . . . the
Board found it significant that the patent addressed a way to disseminate
information to a user’s computing device when the device is not online.”
Dec. 13–14; see CBM2014-00170, Paper 13. Accordingly, we maintain our
conclusion that the hypothetical patent-eligible claim discussed in the Brief
does not suggest error by the Examiner or by the Board with respect to the
invention claimed herein.
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DUE PROCESS
Appellant’s argument on rehearing that the board did not address the
merits of its due process argument amounts to a re-argument that Appellant
is dissatisfied with the Board’s subject matter eligibility analysis. Req. for
Reh’g 41–42. Accordingly, we maintain our position in the Decision that
Appellant’s due process arguments lack factual support and are unpersuasive
of error.

PREEMPTION
Appellant argues that the Board overlooked the Appeal Brief’s
arguments concerning lack of preemption. Req. for Reh’g 42. The board
noted and responded to Appellant’s preemption argument in the Decision.
Dec. 14; see App. Br. 9. The board implied, without stating explicitly, that
we agree with Appellant that the claims do not pre-empt all possible ways of
obtaining authorization input from a user. That we agree does not, per
Ariosa Diagnostics, demonstrate that the claims under appeal are patent-
eligible.

Thus, in summary, we maintain our decision to reject claims 1, 3–10,
21–25, and 27–31 under 35 U.S.C. § 101.

CONCLUSION
In summary, we have granted Appellant’s request for rehearing to the
extent that we have reconsidered our decision affirming the rejection of
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claims 1, 3–10, 21–25, and 27–31, but we decline to modify the decision in
any way.

REHEARING DENIED