Anh Vazquez et al.

Patent Trials and Appeals Board

Nov 7, 2019

13572191 - (D) (P.T.A.B. Nov. 7, 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.
13/572,191 08/10/2012 Anh Vazquez 074259.0280 7870
31625 7590 11/07/2019
Baker Botts L.L.P.
98 San Jacinto Blvd
Suite 1500
Austin, TX 78701
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
crystle.garbade@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANH VAZQUEZ, PREET CHHOKAR,
and ANDREW WAYMAN
___________

Appeal 2018-002969
Application 13/572,191
Technology Center 3600
_________________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as NetSpend
Corporation. Appeal Br. 3.
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STATEMENT OF THE CASE
Invention
Appellant’s recited claims relate to aggregating the value of a cash
source and a non-cash source, such as frequent flyer miles, and presenting
the combined value for payment. See Spec. 6:5–7 (“Provide[s] instant
payments from a user associated with an account to a payee, wherein the
payments are derived from accounts with currency and non-currency
components.”).2

Exemplary Claim
Claims 1, 10, and 19 are independent. Independent claim 1 is
exemplary of the claimed subject matter and is reproduced below with claim
element labels added in brackets:
1. A method for unified payment, comprising:
[a] identifying, with a server including a processor
executing on an electronic device, a unified account;
[b] determining, through the server, a cash source of the
unified account;
[c] determining, through the server, a non-cash source of
the unified account different from the cash source of the unified
account;
[d] presenting, through the server, a combined value of
the cash source and the non-cash source, wherein:

2 We refer to: the originally filed Specification filed August 10, 2012
(“Spec.”); the Non-Final Office Action mailed February 13, 2017 (“Non-
Final Act.”); Appellant’s Appeal Brief filed July 10, 2017 (“Appeal Br.”);
and the Examiner’s Answer mailed October 13, 2017 (“Ans.”).
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the combined value is expressed in terms of cash;
and
the combined value is greater than a single one of
either the cash source or the non-cash source.
Appeal Br. 12 (Claims Appendix).

REJECTION
The Examiner rejects claims 1–27 under 35 U.S.C. § 101 as reciting
patent-ineligible subject matter. Non-Final Act. 2–5.

ANALYSIS
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

I. 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 US Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. 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 Court’s two-step framework, described in Alice and Mayo.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
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566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim recites. 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.”).
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “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 Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Guidance”).3 Under the Guidance, in
determining whether a claim falls within an excluded category, we first look
to whether the claim recites:
(1) Step 2A — Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain

3 This Guidance supersedes previous guidance memoranda. Guidance, 84
Fed. Reg. 51 (“All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.”).
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methods of organizing human activity, such as a fundamental
economic practice, or mental processes); and
(2) Step 2A — Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP4
§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). 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 (Step 2B):
(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.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

II. The Examiner’s § 101 Rejection
The Examiner determines that exemplary5 claim 1 is directed to a
judicial exception: an abstract idea. Non-Final Act. 2–3; Ans. 3–4.
According to the Examiner, claim 1 is “directed to an abstract idea of
managing a transaction and a contractual relationship,” which “is interpreted
as managing certain human activities.” Non-Final Act. 4. The Examiner
also determines that considering the limitations individually “[t]he additional

4 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
5 Appellant argues claims 1–27 as a group with respect to the § 101
rejection. Appeal Br. 6. We, thus, select independent claim 1 as
representative of claims 2–27. See 37 C.F.R. § 41.37(c)(1)(iv).
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elements of the processor, an electronic device and the sever [sic] do not
perform steps that are significantly more” and “[v]iewing the limitations as
an ordered combination does not add anything further than looking at the
limitations individually.” Id.

III. Appellant’s Arguments
We summarize Appellant’s arguments in favor of eligibility as
follows: (1) claim 1 is unlike the claims in buySAFE6 because “Applicants’
invention does not relate to a contractual relationship but instead relates to a
method and system for a unified payment account (Br. 7); (2) “unlike
Electric Power Group7, “Applicants’ claims do recite a particular tool for
presentation,” e.g., “Claim 1 recites ‘presenting, on an electronic device, a
combined value of the cash value source and the non-cash value source.’”
(id.); (3) “the Office Action fails to ‘explain why the courts have recognized,
or those in the relevant field of art would recognize, those claim limitations
as being well-understood, routine, conventional activities.’” (Appeal Br. 8);
(4) “the Office Action fails to meaningfully consider the combination of the
elements recited in Applicants’ claims” (id.) and (5) “there is no evidence at
all that Applicants’ claims –– with its specific limitations –– create any risk
of tying up any building block of human ingenuity.” (Appeal Br. 10).

6 Appellant cites buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014)
7 Appellant cites Elec. Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016).
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IV. Our Review, Guidance, Step 1
We analyze the exemplary claim and the Examiner’s rejection in view
of the Guidance, and we adopt the nomenclature for the steps used in the
Guidance. As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of
manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Appellant’s independent claims 1, 10, and 19 recite a method (i.e., a
“process”), a non-transitory computer readable medium (i.e., an “article of
manufacture”), and an apparatus (i.e., a “machine”). Thus, the pending
claims recite a recognized statutory category of § 101 and we turn to the
two-step Alice/Mayo analysis applied in accordance with the Office
Guidance.

V. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether claim 1, being directed to a statutory
class of invention, nonetheless falls within a judicial exception. Guidance,
84 Fed. Reg. 51.
Apart from additional elements discussed separately below, claim 1
recites “a method for unified payment” including the steps of: [a]
“identifying a unified account”; [b] “determining . . . a cash source of the
unified account”; [c] “determining . . . a non-cash source of the unified
account different from the cash source of the unified account” ; and [d]
“presenting . . . a combined value of the cash source and the non-cash
source.”

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At a high level, we agree with the Examiner that these claimed steps
describe the concept of “managing a transaction” by “combining accounts to
generate a payment amount.” Non-Final Act. 4. Aside from the computer
components, the claimed invention is analogous to pre-Internet commercial
transactions between humans in which a buyer attempts to barter by
aggregating cash and non-cash resources. We therefore agree with the
Examiner that these limitations recite certain methods of organizing human
activity (id.), and more specifically a fundamental economic practice.
Appellant’s argument that claim 1 is not abstract because it “does not relate
to a contractual relationship” is unpersuasive because a claim need not relate
to a contractual relationship to be determined as reciting a fundamental
economic practice. See Guidance, 84 Fed. Reg. 52. Claim 1, therefore,
recites a judicial exception, i.e., an abstract idea.

VI. Step 2A, Prong Two in the Guidance
(Integration into a Practical Application)
Because claim 1 recites an abstract idea, we now determine whether
the claim is directed to the abstract idea itself or whether it is instead
directed to some technological implementation or application of, or
improvement to, this idea, i.e., is integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223, discussing Diehr, 450 U.S. at 175. We
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception or
exceptions; and (b) evaluating those additional elements individually and in
combination to determine whether they integrate the exception into a
practical application.
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The Examiner determines claim 1’s additional elements include a
processor executing on an electronic device and a server. Non-Final Act. 4.
Appellant argues that, unlike the claims in Electric Power,
“Applicants’ claims do recite a particular tool for presentation,” i.e.,
“‘presenting, on an electronic device, a combined value of the cash value
source and the non-cash value source, wherein the combined value is
expressed in terms of cash.’” Appeal Br. 7.
As an initial matter we note Appellant’s argument mischaracterizes
claim 1 because the claim does not recite “‘presenting, on an electronic
device’” as argued by Appellant. Appeal Br. 12. Rather, claim 1 recites
“presenting, through the server, a combined value.” Id. Regardless, we are
unpersuaded, because claim 1 merely recites presenting a combined value
through the “server” but fails to recite any details regarding how the server is
configured to operate as a particular tool in presenting the combined value.
Moreover, Appellant’s Specification discloses that the method only requires
a server with generic hardware such as processors capable of performing
basic functions. Spec. 10:13–15, 6:8–9. Thus, similar to the claims in
Electric Power, Appellant’s claim 1 merely presents the results of abstract
processes of collecting and analyzing information, without more. SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(citing Electric Power, 830 F.3d at 1353 (“claims focused on ‘collecting
information, analyzing it, and displaying certain results of the collection and
analysis’ are directed to an abstract idea”)).
We are not persuaded that the claimed abstract idea is integrated into a
practical application. Aside from the abstract idea, claim 1 additionally
recites “a server including a processor executing on an electronic device.”
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Appeal Br. 12. An additional element may integrate a judicial exception
into a practical application when, for example, the “additional element
implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim.” Guidance, 84 Fed. Reg. 55; see MPEP § 2106.05(b) (“determin[ing]
whether the judicial exception is applied with, or by use of, a particular
machine”). In this case, as discussed in the preceding paragraph, claim 1
lacks such a machine. At best, the claimed server simply executes the
abstract idea described above. Notably, the recited server includes a
general-purpose processor. Spec. 10:3–6 (“Processor 144 may comprise, for
example a microprocessor, microcontroller, digital signal processor (DSP),
application specific integrated circuit (ASIC), or any other digital or analog
circuitry configured to interpret and/or execute program instructions and/or
process data.”). But a general-purpose processor that merely executes the
judicial exception is not a particular machine. Ultramercial Inc. v. Hulu,
LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014), cited in MPEP § 2106.05(b)(I);
see also MPEP § 2106.05(a)(II) (instructing examiners that a “commonplace
business method being applied on a general purpose computer” may not be
sufficient to show an improvement). For these reasons, the claimed method
does not use the processor in a way that indicates that the judicial exception
has been integrated into a practical application.
Alternatively, a claim may integrate the judicial exception into a
practical application when, for example, it reflects an improvement to
technology or a technical field. Appeal Br. 10. Here, the described
improvement is to provide “a unified payment service.” Spec 1:9. In this
way, claim 1 relates to a fundamental economic process. Appellant fails to
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establish claim 1 is like the other technology-based integrations cited by
Appellant. Considering the claim as a whole, Appellant’s invention lacks a
technical solution to a technical problem.
That is, rather than addressing a problem unique to the technology in
which the solution is implemented, Appellant’s claim 1 merely facilitates,
using generic hardware, an economic process of providing “a unified
payment service.” Spec 1:9. The mere presence of a server with a processor
here does not necessarily indicate a technical solution.
In addition, Appellant’s claim 1 does not transform matter; but at best,
transforms information. That is, the claim simply manipulates and outputs
data such as by determining a cash and non-cash source and “presenting,
through the server, a combined value of the cash source and the non-cash
source.” Appeal Br. 12; see MPEP § 2106.05(c); see also Gottschalk v.
Benson, 409 U.S. 63, 71–72 (1972) (holding that a computer based
algorithm that merely transforms data from one form to another is not
patent-eligible). As such, the claim has no other meaningful limitations (see
MPEP § 2106.05(e)), and merely recites instructions to execute an abstract
idea on generic hardware (see MPEP § 2106.05(f)).
We, therefore, determine claim 1 is not directed to a specific asserted
improvement in computer technology or otherwise integrated into a practical
application and thus is directed to a judicial exception.

VII. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive Concept)
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
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U.S. at 72–73). To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and in
combination—to determine whether they (1) add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance, 84 Fed. Reg. 56.
The Examiner determines that considering the limitations
individually, “[t]he additional elements of the processor, an electronic device
and the sever [sic] do not perform steps that are significantly more” and
“[v]iewing the limitations as an ordered combination does not add anything
further than looking at the limitations individually.” Non-Final Act. 4.
Appellant argues “the Office Action fails to ‘explain why the courts
have recognized, or those in the relevant field of art would recognize, those
claim limitations as being well-understood, routine, conventional
activities.’” Appeal Br. 8.
We find this argument unpersuasive. Claim 1’s method uses a server
including a processor executing on an electronic device, for determining a
cash and non-cash source and “presenting, through the server, a combined
value of the cash source and the non-cash source.” Appeal Br. 12. The
Examiner, citing Flook8 and Bancorp9, finds that the processor is well-
understood, routine, and conventional in the field. Non-Final Act. 4; Ans. 4.

8 See Parker v. Flook, 437 U.S. 584 (1978).
9 See Bancorp Servs. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012)( Using a processor “only for its most basic
function, the performance of repetitive calculations,” may not impose
meaningful limits on the claim’s scope.).
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Thus, the Examiner cites relevant case law to determine that “[a] processor
used for performing the steps of determining and computing values has been
found routine and conventional by the courts.” Non-Final Act.4; Ans. 4.
Moreover, as noted above in Section VI, Appellant’s Specification discloses
that the claimed server with processor is well-understood, routine, and
conventional in the field. Spec. 10:13–15, 6:8–9. We, therefore, agree with
the Examiner that, apart from the abstract idea, the claimed server including
a processor executing on an electronic device recites generic components
configured to perform well-understood, routine, and conventional activities
previously known in the field. Non-Final Act. 4.
The Examiner further determines that “[v]iewing the limitations as an
ordered combination does not add anything further than looking at the
limitations individually” because “[a]s a combination the claims do not
impose a meaningful limit than what they do individually. The claims recite
elements of identifying, collecting information, determining a value, a
combined value and presenting it.” Ans. 6 (citing Electric Power, 830 F.3d
at 1353).
Appellant argues “the Office Action fails to meaningfully consider the
combination of the elements recited in Applicants’ claims.” Appeal Br. 8.
Appellant’s argument is unpersuasive, however, because Appellant
fails to specifically address the Examiner’s determination that exemplary
claim 1 is similar to the claims in Electric Power. Moreover, Appellant does
not direct our attention to anything in the Specification that indicates the
claimed components, as an ordered combination, perform anything other
than well-understood, routine, and conventional processing functions, such
as manipulating and generating data for display. See Inventor Holdings,
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LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that considering claims reciting data retrieval, analysis,
modification, generation, display, and transmission as an “‘ordered
combination”’ reveals that they “amount to ‘nothing significantly more’ than
an instruction to apply [an] abstract idea” using generic computer
technology) (internal citation omitted); Fair Warning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic
computing components like a microprocessor or user interface does not
transform an otherwise abstract idea into eligible subject matter). In short,
as previously noted, claim 1 does no more than use generic hardware to
implement the claimed abstract idea.
Appellant next argues that “there is no evidence at all that Applicants’
claims –– with its specific limitations –– create any risk of tying up any
building block of human ingenuity, much less disproportionately doing so.”
Appeal Br. 10.
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). “[Q]uestions on preemption are inherent in and resolved by the § 101
analysis,” which has been applied here. Id. Claim 1 simply appends well-
understood, routine, conventional components previously known to the
industry, specified at a high level of generality, to the claimed abstract idea.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is argued as
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representative of the other claims, we also conclude that independent claims
10 and 19 and dependent claims 2–9, 11–18, and 20–27, do not recite
patent-eligible subject matter. Therefore, we sustain the rejection of claims
1–27 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–27 101

1–27
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED