Arthur D. Kranzley

Patent Trials and Appeals Board

Sep 3, 2019

14280247 - (D) (P.T.A.B. Sep. 3, 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.
14/280,247 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.
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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
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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.
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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
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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.
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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.
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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
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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,
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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
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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
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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-
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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
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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.
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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
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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,
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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
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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.
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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