Volker Neuwirth

Patent Trials and Appeals Board

Sep 26, 2019

14012005 - (R) (P.T.A.B. Sep. 26, 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.
14/012,005 08/28/2013 Volker Neuwirth 24538.6 2756
122269 7590 09/26/2019
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
09/26/2019 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 2017–011678
Application 14/012,005
Technology Center 3600
____________________

Before MARC S. HOFF, JENNIFER S. BISK and 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 1–14 and
18–23. 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
Appeal 2017-011678
Application 14/012,005

2
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
Appeal 2017-011678
Application 14/012,005

3
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) 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:

Appeal 2017-011678
Application 14/012,005

4
(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)).
(3)
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:
(4) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(5) 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
Appeal 2017-011678
Application 14/012,005

5
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’s 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 18. The
Board considered the entirety of representative independent claim 1 in
rendering a decision on subject matter eligibility. Dec. 8–9. 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
(3) information representing the transaction;
Appeal 2017-011678
Application 14/012,005

6
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 that 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;
in conjunction with receiving the one or more third
communications that include the user input, receiving
authenticating information from the client computing device;
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 transaction to be entered into by a
user. Dec. 7–8. We regard this claimed concept, of obtaining written
Appeal 2017-011678
Application 14/012,005

7
authorization for a transaction, as 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 and document are extracted and then re-
presented in the form of a webpage that is presented to a client computing
device so that a user may view it, select a link, and supply user input
authorizing a transaction. 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 to the
user’s account.
Appellant’s claimed invention thus recites a plurality of steps, each
briefly noted supra, that constitutes gathering data from a computing system,
presenting that data to a user, gathering further data (authorization for a
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. 9–

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
Appeal 2017-011678
Application 14/012,005

8
10. Such commercial or legal interactions constitute one of certain methods
of organizing human activity identified in the Memorandum. 84 Fed. Reg.
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 18); how the merchant computing system communicates
with the server computing system (Req. for Reh’g 19); 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 (“agreement”) in
response, and associating that user input with the user’s account. The

‘transaction performance guaranty’” is an abstract idea.); In re Comiskey,
554 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 conten” 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.”).
Appeal 2017-011678
Application 14/012,005

9
technical aspects discussed by Appellant constitutes means for 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. 12.
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 25.
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 25–27. 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. 12.
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 29-39.
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;
Appeal 2017-011678
Application 14/012,005

10
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.

See Memorandum, 84 FR 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. 12–13.
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. 14. 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 (authorization for a
transaction) 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.’”
Appeal 2017-011678
Application 14/012,005

11
(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.
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. 12–13.
We maintain our conclusion that several claim limitations, including:
(1) generating and formatting a webpage that includes the document; 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. 12; see also 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
Appeal 2017-011678
Application 14/012,005

12
will ultimately be able to provide user input” defines “a unique way in which
the serve can facilitate the receipt of user input.” Dec. 12.
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.
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 39. 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. 15. As we discussed supra, we find that these limitations constitute an
Appeal 2017-011678
Application 14/012,005

13
improvement to the abstract idea of presenting information to a user and
receiving user input. We find that these claim limitations do not constitute
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 claims generic computer components
used conventionally, as a tool to implement the abstract idea of obtaining
authorization from a user. Dec. 13–14; see also Spec. ¶¶ 41, 42, and 43.
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 Appellant’s remarks concerning a hypothetical patent-
eligible claim. Req. for Reh’g 40-41. 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. 14; see also CBM2014-00170 (Paper 13). Accordingly, we maintain
our conclusion that the hypothetical patent-eligible claim discussed in the
Appeal 2017-011678
Application 14/012,005

14
Brief does not suggest error by the Examiner or by the Board with respect to
the invention claimed herein.
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 42–43. Accordingly, we maintain our position in the Decision that
Appellant’s due process arguments lack factual support and are unpersuasive
of error. Dec. 15.

PREEMPTION
Appellant argues that the Board overlooked the Appeal Brief’s
arguments concerning lack of preemption. Req. for Reh’g 44. The board
noted and responded to Appellant’s preemption argument in the Decision.
Dec. 15; see also 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 1–14 and
18–23 under 35 U.S.C. § 101.
PRIOR ART REJECTIONS
On rehearing, we are persuaded by Appellant’s argument that we
misapprehended the interconnection between merchant computing system,
Appeal 2017-011678
Application 14/012,005

15
server computing system, and client computing device recited in the claimed
invention.
We agree with Appellant that the disclosed and claimed invention
requires that the merchant computing system, rather than the client
computing device, sends the claimed first communication with the recited
information to the server computing system. Req. for Reh’g 45. “Merchant
computing system 102 represents one or more servers or other computing
devices that a merchant uses to send requests to server system 101 over
network 104.” Spec. ¶ 34. “Server system 101 represents one or more
computing devices used to receive requests from merchant computing
system 102, and to send requests for signatures to client computing device
103.” Spec. ¶ 35. “Server system 101 acts as an intermediary between
merchant computing system 102 and client computing device 103 for
requesting and obtaining a signature.” Spec. ¶ 36.
We agree with Appellant’s argument on rehearing that we
misapprehended the claim requirement that “[i]n a server computing
system,” the server receives, “via the interface, one or more first
communications sent over the internet by the application executing on the
merchant computing system,” including the three enumerated items recited
in representative of claim 1. We agree with Appellant that the claimed
invention calls for “[i]n a server computing system,” “transmitting a second
communication over a network to a client computing device associated with
the user based on the contact information that was provided,” and
“transmitting the webpage to the client computing device.” We agree with
Appellant that Loomis does not teach the server communicating directly
with the consumer. Req. for Reh’g 49.
Appeal 2017-011678
Application 14/012,005

16
Therefore, we agree with Appellant that the combination of
Henderson and Loomis fails to teach or suggest all the limitations of
representative claim 1. Accordingly, we modify our decision, in that we do
not sustain the Examiner’s § 103(a) rejection of claims 1–7, 11, 14, and 18–
23 over Henderson and Loomis; we do not sustain the Examiner’s § 103(a)
rejection of claims 8–10 over Henderson, Loomis, and Lyon; and we do not
sustain the Examiner’s § 103(a) rejection of claims 12 and 13 over
Henderson, Loomis, and Davis.

CONCLUSION
In summary, we have granted Appellant’s request for rehearing and
modified our Decision so as to reverse the 35 U.S.C. § 103(a) rejections of
claims 1–14 and 18–23. In all other respects, Appellant’s Request is
DENIED.
No time period for taking any subsequent action in connection in this
appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED