Apple Inc.

Patent Trials and Appeals Board

Nov 3, 2020

14870793 - (D) (P.T.A.B. Nov. 3, 2020)

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.
14/870,793 09/30/2015 Marcel VAN OS P27540USC2/77770000423202 5758
150004 7590 11/03/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
JACOB, WILLIAM J
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCEL VAN OS, GREGG SUZUKI, LAWRENCE Y. YANG,
PETER ANTON, and DONALD W. PITSCHEL
Appeal 2018-007340
Application 14/870,793
Technology Center 3600
BEFORE JEREMY J. CURCURI, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. We have jurisdiction under
35 U.S.C. § 6(b). We heard the appeal on October 15, 2020.
We REVERSE.

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 Apple Inc. Appeal
Br. 4.
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Application 14/870,793

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CLAIMED SUBJECT MATTER
The claims are directed to “techniques for computer user interfaces for
loyalty accounts and payment accounts.” Spec. ¶ 3. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A non-transitory computer-readable storage
medium comprising one or more programs for execution by one
or more processors of a first electronic device with a display
and one or more wireless communication elements, the one or
more programs including instructions for:
displaying, on the display, an enrollment user interface
for linking payment accounts to the first electronic device that
includes displayed instructions for user input that will cause the
first electronic device to initiate a process for linking a payment
account to the first electronic device;
receiving a sequence of one or more inputs that conforms
to the instructions and corresponds to a first request to link the
payment account associated with a payment card to the first
electronic device;
in response to receiving the sequence of one or more
inputs that conforms to the instructions and corresponds to the
first request, initiating a process for linking the payment
account to the first electronic device;
after successfully linking the payment account to the first
electronic device, concurrently displaying, on the display:
an indication that the payment account has been
successfully linked to the first electronic device; and
a selectable affordance for linking the payment
account to a second electronic device that is different from the
first electronic device and is paired to the first electronic device;
receiving activation of the selectable affordance; and
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in response to receiving activation of the selectable
affordance, initiating a process for linking the payment account
to the second electronic device that is different from the first
electronic device and is paired to the first electronic device,
wherein the process for linking the payment account to the
second electronic device includes displaying, on the display of
the first electronic device, instructions for user input at the first
electronic device to link the payment account to the second
electronic device.
REJECTIONS
Claims 1–19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 2–4.
OPINION
The Judicial Exception Rejection of Claims 1–19
The Examiner determines claims 1–19 are directed to a judicial
exception without significantly more. Final Act. 2–4; see also Ans. 6–13. In
particular, the Examiner determines the claims recite a “fundamental
economic practice” because “the claims recite inventions directed to
executing financial transactions across mobile devices, and linking a mobile
device to one or more payment accounts.” Final Act. 3. In particular, the
Examiner further determines the claims do not amount to significantly more
than the abstract idea. Final Act. 4.
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 U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(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. (alterations in original) (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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
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2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than 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) (quoting Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and Alice, 573
U.S. at 225). “Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
We have reviewed Appellant’s claims and contentions in detail and in
light of current precedent and guidance (supra). We find Appellant has
raised a dispositive issue with respect to the Examiner’s Step 2B eligibility
analysis. Accordingly, we need not present a detailed claim construction or
analysis under the 2019 Revised Guidance Step 2A. We need address only
whether the Examiner has provided a proper rejection under Step 2B.
Among other arguments, Appellant presents the following principal
argument:
Appellant’s claim is patent-eligible for similar reasons as
the Berkheimer claim. Claim 1 does not merely recite an alleged
abstract idea of “receiving input in accordance with
instructions,” “presenting an indication, and a selectable
affordance,” and “displaying confirmation (e.g., that a device has
been successfully linked)” is also well-known, routine, and
conventional.[] Instead, claim 1 entails an unconventional
technological solution (linking a payment account to a first
electronic device and after successfully linking the payment
account to the first electronic device, providing an indication on
the first electronic device to link the payment account to a second
[electronic device] that is paired with the first electronic device)
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to technological problems (e.g., provisioning a payment account
onto multiple electronic devices, user friendly interfaces, easier
to use interfaces, conserving power, reducing the cognitive
burden on a user, providing more efficient user interfaces).
Further, claim 1 is not entirely composed of known, conventional
elements. Accordingly, individually and in combination, the
specific and detailed elements of claim 1 amount to
“significantly more” than any alleged abstract idea.
Reply Br. 20; see also Reply Br. 21 (“[T]he Examiner failed to provide in
writing any evidence as to how an element or combination of elements from
claim 1 is ‘is well-known, routine and conventional.’”).
We agree with Appellant because the Examiner has not provided
sufficient evidence required by Berkheimer to support the “routine and
conventional” factual findings. See Berkheimer, 881 F.3d at 1369. In
particular, the Memorandum of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”) requires
the information listed below:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the additional
element(s). . . .
Berkheimer Memorandum at 3–4.
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But the Examiner has not provided any of the four categories of
support for the disputed finding required by the Berkheimer Memorandum.
Rather, the Examiner merely provides conclusory and high-level general
statements (Final Act. 4; Ans. 11–13), which are insufficient for meeting the
requirements to support a finding that the “indication” and the “selectable
affordance” as recited in claim 1 was well-understood, routine, and
conventional. See Berkheimer, 881 F.3d 1369–70.
In particular, we determine
after successfully linking the payment account to the first
electronic device, concurrently displaying, on the display:
an indication that the payment account has been
successfully linked to the first electronic device; and
a selectable affordance for linking the payment
account to a second electronic device that is different from the
first electronic device and is paired to the first electronic device
as recited in claim 1 is not completely encompassed by the “fundamental
economic [] practice,” which is the abstract concept of “[c]ertain methods of
organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52.
With respect to the “indication” and the “selectable affordance,” as recited in
claim 1, the Examiner has not provided any of the four categories of
information required by the Berkheimer Memorandum.
Because, on this record, the Examiner erred with respect to Step 2B of
the Guidance and Berkheimer requirements, we do not sustain the
Examiner’s rejection of independent claim 1.
We also do not sustain the Examiner’s rejection of claims 2–16 and
19, which depend from claim 1.
We also do not sustain the Examiner’s rejection of independent claims
17 and 18 for the same reason.
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CONCLUSION
The Examiner’s decision to reject claims 1–19 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19 101 Eligibility 1–19

REVERSED