Arthur D. KranzleyDownload PDFPatent Trials and Appeals BoardSep 3, 201914280247 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/280,247 05/16/2014 Arthur D. Kranzley 070457.2813 6290 21003 7590 09/03/2019 BAKER BOTTS L.L.P. 30 ROCKEFELLER PLAZA 44TH FLOOR NEW YORK, NY 10112-4498 EXAMINER OYEBISI, OJO O ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): DLNYDOCKET@BAKERBOTTS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ARTHUR D. KRANZLEY1 ____________________ Appeal 2018-005414 Application 14/280,247 Technology Center 3600 ____________________ Before JOHN A. JEFFERY, JOHN P. PINKERTON, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1–17, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 According to Appellant, the real party in interest is MasterCard International Incorporated. App. Br. 4. Appeal 2018-005414 Application 14/280,247 2 STATEMENT OF THE CASE The Invention Appellant’s disclosed embodiments and claimed invention relate to a method and system for controlling risk in a payment transaction. Title. Exemplary Claim Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for controlling risk in a payment transaction between a customer and a merchant using a secure payment token comprising: receiving transaction data related to said payment transaction; performing, by a risk analyzer belonging to a payment token issuer comprising a non-transitory computer readable medium including executable instructions thereon, a risk analysis, said risk analysis based at least in part on said transaction data, said risk analysis comprising: generating an observation based on at least in part said transaction data, determining whether said observation satisfies a condition, wherein said condition comprises one of at least a threshold payment amount, a list of fraudulent payment account number, a list of merchants, a transaction history associated with said merchant, a list of goods and services, and a transaction history associated with said secure payment token, and returning a result message by said risk analyzer sent from said risk analyzer to said merchant based on said determining, said result message comprising a code indicating that the secure payment token must be used to conduct said payment transaction based at least in part on the result of said risk analysis; and Appeal 2018-005414 Application 14/280,247 3 requiring said payment transaction to be conducted using said secure payment token based on said result message code, said secure payment token configured to generate dynamic data, wherein said dynamic data is required to complete the payment transaction. App. Br. 25 (Claims Appendix).2 Rejection on Appeal Claims 1–17 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2–4. PRINCIPLES OF LAW “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.3 However, the 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. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 2 This decision refers to the Appeal Brief filed on February 9, 2018 (“App. Br.”) and the Final Office Action mailed on September 14, 2017 (Final Act.”). 3 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the patent-eligibility inquiry under § 101. Appeal 2018-005414 Application 14/280,247 4 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). 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” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 “[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 Appeal 2018-005414 Application 14/280,247 5 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. (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.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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 (citation 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. Appeal 2018-005414 Application 14/280,247 6 The PTO recently published revised guidance in the Federal Register concerning the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf). Under the Revised Guidance, 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);4 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.6 See Revised Guidance. 4 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 5 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). 6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-005414 Application 14/280,247 7 ANALYSIS Based on Appellant’s arguments (App. Br. 14–23) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent- ineligible subject matter rejection of independent claims 1, 9, and 10 on the basis of representative claim 1. Contentions The Examiner determined that the claims are directed to an abstract idea, namely a fundamental economic practice, with respect to the recited functions for “receiving data; generating data; determining data; returning data.” Final Act. 2; Ans. 3. The Examiner determined that the claims do not include elements that add significantly more than the abstract idea, but merely “recite generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities [that] amount to no more than implementing the abstract idea with a computerized system.” Final Act. 3. Based on these determinations, the Examiner concluded that the claims are ineligible under § 101. Id. at 4. Appellant argues that the claimed invention is not directed to an abstract idea. App. Br. 15–18. According to Appellant, the Examiner failed to consider claim 1 as a whole, which includes a specific configuration of technological features. Id. at 17. Appellant further contends that the recited limitations amount to “a patentable improvement to electronic payment transactions technology.” Id. at 18. Appellant adds that the Examiner also did not identify any elements of the dependent claims, let alone explain why Appeal 2018-005414 Application 14/280,247 8 those elements are ineligible and, therefore, the Examiner failed to establish a prima facie case of ineligibility for those claims. App. Br. 21. Step 1 Claim 1, as a method (process) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether it is directed to a judicial exception without significantly more. Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 1 is recites a fundamental economic practice of “controlling risk in a payment transaction between a customer and a merchant using a secure payment token.” Final Act. 2. Here, apart from the recited (1) risk analyzer; (2) payment token issuer; (3) non-transitory computer readable medium including executable instructions thereon; and (4) secure payment token configured to generate dynamic data, every limitation of claim 1 recites a fundamental economic practice of controlling risk in a payment transaction using a secure payment token between a customer and a merchant using a secure payment token. Fundamental economic practices and commercial interactions fit squarely within the “certain methods of organizing human activity” category of the agency’s guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of organizing human activity, including fundamental economic practices and commercial interactions). In addition to falling in the methods of organizing human activity category as noted above, certain recited limitations also fall in the mental processes category of the agency’s guidelines as well. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observations, Appeal 2018-005414 Application 14/280,247 9 evaluations, and judgments). That is, apart from being performed by a risk analyzer belonging to a payment token issuer comprising a non-transitory computer readable medium including executable instructions thereon, the “generating” and “determining” steps can be performed entirely in the human mind or using pen and paper. We reach a similar conclusion regarding the steps of “returning a result message” and “requiring said payment transaction to be conducted using said secure payment token based on said result message code.” Claim 1 is silent with regard to how a result message is returned, or how said payment transactions are required to be conducted using secure payment tokens. Cf. Benson, 409 U.S. at 67 (noting that converting binary coded decimal numerals to pure binary numerals could be done mentally). Therefore, in addition to organizing human activity, the recited generating, determining, returning, and requiring functions, apart from their performance by a computer, also fall within the mental processes category of the agency’s guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observations, evaluations, and judgments); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Step 2A(ii): Judicial Exception Integrated into a Practical Application? Although the claim recites an abstract idea based on these methods of organizing human activity and mental processes, we nevertheless must still determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claim is more than a drafting effort designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54–55. To this end, we (1) identify whether Appeal 2018-005414 Application 14/280,247 10 there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application. See id. Here, the recited (1) risk analyzer; (2) payment token issuer; (3) non- transitory computer readable medium including executable instructions thereon; and (4) secure payment token configured to generate dynamic data are the only recited elements beyond the abstract idea, but those additional elements do not integrate the abstract idea into a practical application when reading claim 1 as a whole. First, we are not persuaded that the claimed invention improves the computer or its components’ functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016). See Final Act. 5. The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer's functionality or efficiency, or otherwise change the way that device functions (see App. Br. 20), there is no persuasive evidence on this record to substantiate such a contention. Appellant’s reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (App. Br. 20) is likewise unavailing. There, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with a clicked advertisement, the claimed invention in DDR generated and directed the visitor to a hybrid page that presented (1) product information Appeal 2018-005414 Application 14/280,247 11 from the third party, and (2) visual “look and feel” elements from the host website. DDR, 773 F.3d at 1258-59. Given this particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre-Internet world, but rather was necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, Appellant’s claimed invention, in essence, organizes human activity by controlling risk in a payment transaction between a customer and a merchant using a secure payment token. Despite Appellant’s arguments to the contrary, the claimed invention here is not necessarily rooted in computer technology in the sense contemplated by DDR where the claimed invention solved a challenge particular to the Internet. Although Appellant’s invention uses various computer-based components, including the recited (1) risk analyzer; (2) payment token issuer; (3) non-transitory computer readable medium including executable instructions thereon; and (4) secure payment token configured to generate dynamic data, the claimed invention does not solve a challenge particular to the computer or the network used to implement this functionality. Appellant’s reliance on McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br.16–18) is unavailing. There, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques—an improvement over manual three- Appeal 2018-005414 Application 14/280,247 12 dimensional animation techniques that was not directed to an abstract idea. Id. at 1316. Unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here merely uses generic computing components to control risk in payment transactions—a generic computer implementation that is not only directed to fundamental human activity organization and mental processes, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO). Appellant’s reliance on BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 20) is also unavailing. There, the court held eligible claims directed to a technology- based solution to filter Internet content that overcame existing problems with other Internet filtering systems by making a known filtering solution-- namely a “one-size-fits-all” filter at an Internet Service Provider (ISP)— more dynamic and efficient via individualized filtering at the ISP. BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution improved the computer system's performance and, therefore, was patent-eligible. See id. Unlike the filtering system improvements in BASCOM that added significantly more to the abstract idea in that case, the claimed invention here uses generic computing components to implement an abstract idea as noted previously. Appellant’s reliance on the decision in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (App. Br. 19–20) is unavailing. There, the court held that a claim directed to using accounting Appeal 2018-005414 Application 14/280,247 13 information with which a network accounting record is correlated to enhance the record was held eligible because the claim involved an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases). Although the court recognized that this solution used generic components, the recited enhancing function necessarily required these generic components to operate in an unconventional manner to achieve an improvement in computer functionality. Id. at 1300–01. Notably, the recited enhancement in Amdocs depended on not only the network's distributed architecture, but also on the network devices and “gatherers” working together in a distributed environment. Id. at 1301. In reaching its eligibility conclusion, the court noted the patent’s emphasis on the drawbacks of previous systems where all network information flowed to one location making it very difficult to keep up with massive record flows from network devices and requiring huge databases. Id. at 1300. The court also noted similar network-based drawbacks that were overcome by similar unconventional distributed solutions in other patents at issue. See id. at 1305–06. That is not the case here. Although the claimed invention uses conventional computing components that receive, generate, and return data, there is no persuasive evidence on this record to show that these generic components operate in an unconventional manner to achieve an improvement in computer functionality as in Amdocs. Although the claimed invention requires computer components, it is the incorporation of those components—not a claimed rule—that purportedly improves the existing process. Cf. FairWarning IP, LLC v. Appeal 2018-005414 Application 14/280,247 14 Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). In short, the claimed invention does not focus on improving computers as tools, but rather certain independently abstract ideas that use computers as tools. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(f)). For these reasons, we do not find that the claim recites additional elements improving (1) the computer itself, or (2) another technology or technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Rather, the above-noted additional elements merely (1) apply the abstract idea on a computer; (2) include instructions to implement the abstract idea on a computer; or (3) use the computer as a tool to perform the abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(f)). Therefore, the recited additional elements, namely the recited (1) risk analyzer; (2) payment token issuer; (3) non-transitory computer readable medium including executable instructions thereon; and (4) secure payment token configured to generate dynamic data, do not integrate the abstract idea into a practical application when reading claim 1 as a whole. We further note that the recited “returning” step not only uses generic computing components to perform the abstract idea as noted above, but its function of returning a result message is also insignificant post-solution activity that merely outputs a code based at least in part on the result of risk analysis. See Parker v. Flook, 437 U.S. 584, 590 (1978) (insignificant post- solution activity held insufficient to impart patentability); see also CyberSource, 654 F.3d at 1371 (discussing Flook). Accord Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). Similarly, the recited “receiving” step is insignificant pre-solution activity that amounts to mere data gathering. Routine data gathering does not transform the abstract idea Appeal 2018-005414 Application 14/280,247 15 into a patent-eligible invention. See CyberSource, 654 F.3d at 1370 (holding “[t]he mere collection and organization of data” patent-ineligible). In conclusion, although the claimed invention may be beneficial by using a secure payment token in payment transactions between a customer and a merchant, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa, 788 F.3d at 1379–80. We, therefore, agree with the Examiner that claim 1 is directed to an abstract idea. Step 2B – “Inventive Concept” or “Significantly More” Claim 1’s additional recited elements, namely the recited (1) risk analyzer; (2) payment token issuer; (3) non-transitory computer readable medium including executable instructions thereon; and (4) secure payment token configured to generate dynamic data—considered individually and as an ordered combination—do not provide an inventive concept such that these additional elements amount to significantly more than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted above, the claimed invention merely uses generic computing components to implement the recited abstract idea. To the extent Appellant contends that the recited limitations, including the additional elements’ particular recited functionality, add significantly more to the abstract idea to provide an inventive concept under Alice/Mayo step two (see App. Br. 19–21), these limitations are not additional elements beyond the abstract idea, but rather are directed to the abstract idea as noted previously. See Guidance, 84 Fed. Reg. at 56 (instructing that additional recited elements should be evaluated in Alice/Mayo step two to determine whether they (1) add specific limitations that are not well-understood, Appeal 2018-005414 Application 14/280,247 16 routine, and conventional in the field, or (2) simply append well-understood, routine, and conventional activities previously known to the industry (citing MPEP § 2106.05(d)). Rather, the (1) risk analyzer; (2) payment token issuer; (3) non- transitory computer readable medium including executable instructions thereon; and (4) secure payment token configured to generate dynamic data are the additional recited elements whose generic computing functionality is well-understood, routine, and conventional. Accord Final Act. 2–3 (finding that the claims’ additional recited computer-based elements provide routine computer functionality to implement the abstract idea). Appellant’s arguments in this regard (see App. Br. 20) are, therefore, unpersuasive. In conclusion, we do not find that the additional recited elements— considered individually and as an ordered combination—add significantly more to the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and independent claims 9 and 10 not argued separately with particularity. Dependent Claims We are, however, persuaded of error in the Examiner’s ineligibility rejection of dependent claims 2–8 and 11–17. The Examiner referenced the dependent claims in the Final Action only in the title of the § 101 rejection. Final Act. 2. The Examiner did not identify any limitations in the dependent claims, let alone explain why the claims are directed to an abstract idea in light of their additional limitations to establish a prima facie case of Appeal 2018-005414 Application 14/280,247 17 eligibility under § 101. Nor did the Examiner meaningfully respond to Appellant’s arguments (App. Br. 21–22) in this regard. See Ans. 3–7. The prima facie case is a procedural tool of patent examination, allocating the respective burdens between the Examiner and an applicant. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). First, the Examiner bears the initial burden of presenting a prima facie case of unpatentability. Id. (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). If the Examiner meets that burden, the burden then shifts to the applicant to rebut the prima facie case with evidence or argument. Oetiker, 977 F.2d at 1445. Then, patentability is determined on the totality of the record by a preponderance of evidence with due consideration of persuasiveness of argument. Id. As noted in MPEP § 2106.07, the initial burden of establishing a prima facie case of ineligibility is on the Examiner to explain clearly and specifically why claims are ineligible, so that the applicant has sufficient notice and can respond effectively. That did not happen here with respect to the dependent claims. To the extent that the Examiner finds that the additional limitations do not add significantly more to the abstract idea to provide an inventive concept under Alice/Mayo step two, we cannot say on this record, nor will we speculate in that regard here in the first instance on appeal. What we can say, however, is that the Examiner’s failure to address the dependent claims’ additional limitations falls short of establishing a prima facie case of ineligibility on this record. Appeal 2018-005414 Application 14/280,247 18 Accordingly, because the Examiner failed to establish a prima facie case of ineligibility for dependent claims 2–8 and 11–17, we are constrained by this record to reverse the Examiner’s rejection of those claims. CONCLUSION Under § 101, the Examiner did not err in rejecting claims 1, 9, and 10, but erred in rejecting claims 2–8 and 11–17. DECISION We affirm-in-part the Examiner's decision to reject claims 1–17. 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). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation