Amit Dhingra et al.

Patent Trials and Appeals Board

Aug 13, 2019

14526327 - (D) (P.T.A.B. Aug. 13, 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.
14/526,327 10/28/2014 Amit Dhingra 37202/593001; 1408365US 9018
57956 7590 08/13/2019
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
HOUSTON, TX 77046
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AMIT DHINGRA
and BILLY YUEN1
__________________

Appeal 2018-006743
Application 14/526,327
Technology Center 3600
____________________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1–27. Appeal Br. 7. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Intuit Inc. is identified as the real party in interest. Appeal Br. 4.
Appeal 2018-006743
Application 14/526,327

2
CLAIMED SUBJECT MATTER
The claimed method and system allow users to send a payment to
satisfy an obligation by selecting an electronic funds transfer network to
complete the transfer based on a target time. See Spec. ¶¶ 2–4, 17–23.
Claims 1, 10, and 19 are independent. Claim 1 is reproduced below.
1. A method to send a payment to satisfy an obligation,
comprising:
receiving, by a payment service via a computer network,
a payment request to initiate the payment;
receiving, by a payment service via a computer network,
a target time request to complete the payment,
wherein the target time request comprises a first
target time for completing at least a first
portion of the payment, and
wherein the target time request is specified in a
user interface menu;
comparing, in response to receiving the target time
request, a current time and the first target time to
determine a first available payment processing
time;
selecting a first electronic funds transfer (EFT) network
from a plurality of EFT networks based on
matching the first available payment processing
time to a first estimated payment processing time
of the first EFT network; and
initiating, in response to selecting the first EFT network,
processing of the first portion of the payment using
the first EFT network.

REJECTION
Claims 1–27 are rejected as directed to patent-ineligible subject matter
under a judicial exception to 35 U.S.C. § 101.

Appeal 2018-006743
Application 14/526,327

3
ANALYSIS
Subject Matter Eligibility of Claims 1–27
Section 101 of the Patent Act defines patent-eligible subject matter as:
Whoever 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, subject to the
conditions and requirements of this title. 35 U.S.C. § 101.
However, “[l]aws of nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citation omitted).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
as an ordered combination, to determine if additional elements transform the
ineligible subject matter into a patent eligible application by providing an
“inventive concept.” Id. at 217–18.
Recently, the USPTO issued guidance about this framework. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”). Under the Revised Guidance, to determine
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim recites (1) any judicial exceptions, including certain groupings of
abstract ideas listed in the Revised Guidance (i.e., mathematical concepts,
certain methods of organizing human interactions such as a fundamental
economic practice, and mental processes); and (2) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. at 51.
Appeal 2018-006743
Application 14/526,327

4
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 is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)) or (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Id. at 56.
Revised Step 2A, Prong One: Judicial Exceptions Recited in the Claim
Appellants argue claims 1–27 as a group. See Appeal Br. 7 (arguing
that “[i]ndependent claim 1 is representative of the claims.”). Therefore, we
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that claim 1 recites a method2 of organizing
human activities in the subcategories of interpersonal activities, managing
relationships or transactions between people, social activities, or behaviors,
satisfying or avoiding a legal obligation, and advertising, marketing, and
sales activities or behaviors. Final Act. 3–4. The Examiner determines that
steps of “comparing” a current time to the first target time and “selecting”
based on matching are abstract ideas involving data collection, analysis,
display, and comparison. Id. at 4. The Examiner also determines that these
concepts relate to practices that manage monetary transactions between
people. Ans. 3. The Examiner further determines that the claim elements,
considered individually and in combination, are directed to abstract ideas or
instruct users to implement the abstract ideas with routine, conventional
activities that are not significantly more than the abstract ideas. Final Act. 4.

2 This finding satisfies Step 1 of the Revised Guidance. Revised Guidance,
84 Fed. Reg. at 53–54; Appeal Br. 4 (“Claim 1 is directed to a method.”).
Appeal 2018-006743
Application 14/526,327

5
We agree with the Examiner that claim 1 recites certain methods of
organizing human activity––commercial or legal interactions in the form of
contracts, legal obligations, behaviors, and business relations as well as
managing personal behavior or relationships or interactions between people
including following rules or instructions. See Revised Guidance, 84 Fed.
Reg. at 52. The Specification describes the invention as “a method to send a
payment to satisfy an obligation.” Spec. ¶¶ 2–4. Claim 1 also relates to
“selecting the most cost effective mechanism to move funds based on the
timeliness criteria.” Id. ¶ 12.
The steps of “receiving . . . a payment request to initiate payment” and
“a target time request to complete the payment” involve the abstract idea of
organizing human activity of commercial or legal interactions of contracts,
legal obligations, behaviors, and business relations and managing personal
behavior, relationships, and interactions between people by following rules
or instructions for paying an obligation, e.g., by receiving a payment request
and a target time request. See Revised Guidance, 84 Fed. Reg. at 52.
The further steps of “comparing . . . a current time and the first target
time to determine a first available payment processing time,” “selecting a
first electronic funds transfer (EFT) network . . . based on matching the first
available payment processing time to a first estimated payment processing
time of the first EFT network,” and “initiating . . . processing of the first
portion of the payment using the first EFT network” also involve organizing
the human activities discussed in the previous paragraph to occur within a
specified time. The “comparing” and “selecting” steps also involve mental
processes—concepts performed in the human mind including observation,
evaluation, and judgment. See id.
Appeal 2018-006743
Application 14/526,327

6
Revised Step 2A, Prong Two: Integration into a Practical Application
Appellants argue that claim 1 “recites detailed limitations for selecting
an EFT network based on payment processing times in accordance with a
target time specified in a user interface menu,” and Federal Circuit decisions
cited by the Examiner as examples of patent-ineligible subject matter are not
applicable because the claims in those cases differ from claim 1 in this case.
Appeal Br. 9–13. Appellants also argue that claim 1 is most similar to the
claim in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 800 F.3d 1356
(Fed. Cir. 2018). Id. at 13–14. Appellants further argue that claim 1
describes a software improvement to a computer’s usability and a network’s
performance and falls within the holding of McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Id. at 14–15.
Appellants argue that Ultramercial Inc. v. Hulu LLC, 772 F.3d 709
(Fed. Cir. 2014) involved different subject matter (a consumer viewing an
advertisement, an access grant by a content provider, and an exchange of
money) than claim 1 in this case. Appeal Br. 11. However, the Examiner
relies on Ultramercial’s holding that a claim that merely instructs a user to
implement an abstract idea with routine, conventional activity does not
transform the abstract idea into patent-eligible subject matter (Final Act. 4).
Ultramercial, 772 F.3d at 715. In Ultramercial, the court held that “the
concept embodied by the majority of the limitations describes only the
abstract idea of showing an advertisement before delivering free content”
and thus the ordered combination of steps recited an abstract idea “having no
particular concrete or tangible form.” Id. at 715. The court held that the
majority of claimed steps comprise the abstract idea of offering media
content in exchange for viewing an advertisement. Id. at 715–16.
Appeal 2018-006743
Application 14/526,327

7
Pertinent to claim 1 here, the court in Ultramercial held that adding
routine steps such as updating an activity log, requiring consumer requests to
view ads, restricting public access, and using the Internet did not transform
an otherwise abstract idea into patent-eligible subject matter. Id. at 716; see
Revised Guidance, 84 Fed. Reg. at 55. The claimed steps were conventional
and specified at a high level of generality as insignificant data-gathering
steps and pre-solution activity of no practical significance to the underlying
abstract idea and thus did not transform the abstract idea into patent-eligible
subject matter. Ultramercial, 772 F.3d at 716 (“[T]he Internet is not
sufficient to save the patent under the machine prong of the machine-or-
transformation test.” (citation omitted)). That “some of the eleven steps
were not previously employed in this art is not enough—standing alone—to
confer patent eligibility upon the claims [in Ultramercial].” Id.
Here, Appellants claim a generic computer network and describe it as
including a wireless or wired network, or a public or private data network
such as a wide area network, local area network, or the Internet. Spec ¶ 15.
Appellants claim a generic first electronic funds transfer (EFT) network and
describe it as including an Automated Clearing House (ACH) Network, an
intra-bank debit card network that credits or debits a debit card holder’s
account, and an intra-bank book transfer from one deposit account to another
at the same institution. Id. ¶¶ 1, 16. Reciting these additional features at a
high level of generality to perform generic functions and activities does not
tie the abstract ideas to a particular machine or special purpose computer.
Nor do these components transform the abstract ideas or a particular article
to a different state or thing. See Revised Guidance, 84 Fed. Reg. at 54;
MPEP §§ 2106.05(b), 2106.05(c).
Appeal 2018-006743
Application 14/526,327

8
Furthermore, the “user interface menu” is claimed generically. It
allows entry of a “target time request,” which is part of the abstract idea of
organizing human activity discussed above. The user interface menu allows
a payment sender or recipient to specify a target time. Spec. ¶¶ 12, 18, 35,
Fig. 3A. Like the claimed computer and EFT network, the user interface
menu is specified at a high level of generality and merely implements the
abstract ideas with generic user interface functions of allowing data entry.
See Revised Guidance, 84 Fed. Reg. at 54; MPEP § 2106.05(a).
The court in Ultramercial held that any transformation resulting from
the use of generic computers and components, or merely transferring content
between computers, is what computers do and therefore does not make a
claim patent eligible. Ultramercial, 772 F.3d at 717; Revised Guidance, 84
Fed. Reg. at 54 n.31 (explaining that mere data gathering such as a step of
obtaining information about credit card transactions for analysis to detect
fraud does not integrate abstract ideas into a practical application).
Core Wireless supports a determination that the abstract ideas recited
in claim 1 in the present case are not integrated into a practical application.
Unlike the generic “user interface menu” recited in claim 1, the claims in
Core Wireless were directed to an improved user interface for computers.
Core Wireless, 880 F.3d at 1362. The “application summary” specified a
particular manner to access a summary window, a particular type of data to
be displayed in the summary window, and a particular time to display the
summary window when an application is in an un-launched state. Id. at
1362–63. The claims recited a specific improvement to user interfaces that
displayed a limited set of information using unconventional user interface
methods. Id. at 1363. Here, the claimed user interface allows data entry.
Appeal 2018-006743
Application 14/526,327

9
Appellants fail to identify a similar improvement to computers, user
interfaces, or networks sufficient to integrate the abstract ideas of claim 1
into a practical application. Instead, Appellants cite Core Wireless regarding
the patent eligibility of claims directed to computer improvements and
assert, without explanation “[u]nder the holding in Core Wireless Licensing,
Appellants’ claim 1 should be patent-eligible.” Appeal Br. 14. Arguing that
“claim 1 recites detailed limitations for selecting an EFT network based on
payment processing times in accordance with a target time specified in a
user interface menu” (id. at 13) does not explain how claim 1 improves
computers, networks, or interfaces. These limitations recite abstract ideas.
As discussed above, we find no improvement to computers or other
technology in claim 1. Selecting a generic EFT network based on payment
processing times and a target time entered via a generic user interface menu
recites the abstract ideas identified above. Claim 1 implements the abstract
ideas on generic computers that perform generic functions. The computer
components are used as tools to implement the abstract ideas. Spec. ¶¶ 15–
20, 36–38, Fig. 3A. Claim 1 does not tie the abstract ideas to a particular
machine or transform anything. Revised Guidance, 84 Fed. Reg. at 55.
These features regarding selecting an EFT network based on payment
processing times also recite mental processes of observation, evaluation, and
judgment. They allow a payment recipient to set a target time to receive part
of a payment, compare the target time to the current time to determine a first
available payment processing time, and select an EFT network by matching
the first available payment processing time to a first estimated payment
processing time of the EFT network. The claimed method thus selects an
EFT network that can process a payment within a specified target time.
Appeal 2018-006743
Application 14/526,327

10
We find no improvement in computers, interfaces, or networks to
integrate the abstract ideas into a practical application. Instead, Appellants
rely on the abstract ideas recited in claim 1––selecting an EFT network
based on payment processing times in accordance with a target time
specified in a user interface menu––to support patent-eligibility of claim 1.
Even considered as a whole, claim 1 does not integrate the abstract ideas
into a practical application because claim 1 lacks a concrete application,
technological improvement, transformation, or implementation in a
particular machine that is integral to the claim. See Revised Guidance, 84
Fed. Reg. at 54; see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018) (“No matter how much of an advance in the finance
field the claims recite, the advance lies entirely in the realm of abstract ideas,
with no plausibly alleged innovation in the non-abstract application realm.
An advance of that nature is ineligible for patenting.”); RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract
idea (math) to another abstract idea (encoding and decoding) does not render
the claim non-abstract.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (“But, a claim for a new abstract idea is still an
abstract idea.”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (determining the claims “involve the normal, basic
functions of a computer” to perform the abstract ideas more quickly).
Arguing that “claim 1 describes a software improvement to both a
computer’s usability and a computer network’s performance” and “falls
within the holding from McRO” also is unpersuasive. Appeal Br. 15. In
fact, the holding in McRO establishes the patent-ineligibility of claim 1 here.
Appeal 2018-006743
Application 14/526,327

11
The claims in McRO focused on an improvement in the field of
computer animation. The process used a combined order of specific rules to
render information into a specific format used to create a desired result––a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
The claimed process of automated lip-synchronization of 3-D characters also
resulted from a specific order and structure of rules defining a relationship
between the sub-sequences of phonemes, timing, and the weight of visual
expression at a particular timing and morph weight set. Id. Here, claim 1
recites the abstract ideas discussed above without improving any computer
technology or tying the ideas to a particular machine. Instead, claim 1 uses
the recited computer components as tools to perform the abstract ideas.
Revised Guidance, 84 Fed. Reg. at 55, n.30; MPEP § 2106.05(f); see Alice,
573 U.S. at 222 (holding that more is required to transform abstract ideas
into a patent-eligible application than simply stating the abstract idea with
the words “apply it”) (citation omitted).
Revised Step 2B: Well-Understood, Routine, Conventional Activity
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, to provide an inventive concept. Alice, 573
U.S. at 217–18. This second step of the Alice test is satisfied when claim
limitations involve more than the performance of well-understood, routine,
and conventional activities previously known to the industry. Berkheimer v.
HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (citation omitted); see also
Revised Guidance, 84 Fed. Reg. at 56 (explaining that the second step of the
Alice analysis considers whether a claim adds a specific limitation beyond a
judicial exception that is not “well-understood, routine, conventional activity
in the field”).
Appeal 2018-006743
Application 14/526,327

12
Appellants argue that claim 1 is rooted in computer technology to
overcome a problem arising in the realm of computer networks by finding
the most cost-effective EFT network to move funds based on timeliness
criteria derived from a target time specified in a user interface menu. See
Appeal Br. 15–16. Appellants argue that an inventive concept can be found
in a non-conventional, non-generic arrangement of known, conventional
pieces, and claim 1 describes an inventive concept that is significantly more
than any judicial exception. Id. at 17 (quoting BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)).
Appellants’ argument regarding a method of finding the most cost-
effective network is not commensurate with the scope of claim 1 and thus is
not persuasive. Claim 1 selects a first EFT network based on matching the
first available payment processing time (determined by comparing a current
time and a first target time) to a first estimated payment processing time of
the first EFT network. See Reply Br. 4. Claim 1 does not require the first
EFT network to be the most cost-effective network.
The court in BASCOM found an inventive concept in an improved
filtering tool provided at a central location, remote from end-users but also
customizable with filtering features specific to each end user, thus providing
the benefits of a filter on a local computer and on an ISP server. BASCOM,
827 F.3d at 1350. Here, claim 1 implements the abstract ideas on generic
computers, interfaces, and networks used as tools without improving their
functionality. Selecting an EFT network by matching the available payment
processing time to an estimated payment processing time of a first EFT
network is an abstract idea involving methods of organizing human activity
and mental processes discussed above.
Appeal 2018-006743
Application 14/526,327

13
Therefore, it cannot supply an inventive concept even if the abstract
ideas are not well-understood, routine, or conventional. See 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 the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”); Berkheimer v. HP Inc.,
890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“[A]nd
Berkheimer . . . leave[s] untouched the numerous cases from [the Federal
Circuit] which have held claims ineligible because the only alleged
‘inventive concept’ is the abstract idea.).” Nor do the abstract ideas provide
a technical solution to technological problems of computers or EFT
networks. Ans. 4; Reply Br. 3–4.
As discussed above, the computer, EFT network, and user interface
menu are disclosed in the Specification as conventional features that perform
known functions. Users can enter data (target times) via the interface. No
inventive step is provided by these elements, individually or as an ordered
combination. Other limitations relate to the abstract ideas discussed above
and cannot supply an inventive step. See, e.g., SAP Am., 898 F.3d at 1163.
DECISION
We affirm the rejection of claims 1–27 as directed to patent-ineligible
subject matter under a judicial exception to 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED