Charles Lee. Oakes et al.

Patent Trials and Appeals Board

Aug 22, 2019

14225090 - (D) (P.T.A.B. Aug. 22, 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.
14/225,090 03/25/2014 Charles Lee Oakes III US-0152.03 | 14538/224 1007
16530 7590 08/22/2019
BGL
P.O. Box 10395
Chicago, IL 60611
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
08/22/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES LEE OAKES III, RANDY RAY MORLEN,
MICHAEL FRANK MORRIS, REYNALDO MEDINA III,
GREG ALAN HARPEL, GABRIEL GLENN GAVIA,
BHARAT PRASAD, FRANK KYLE MAJOR, and
JEFFREY NEAL POLLACK
____________

Appeal 2018-0049721
Application 14/225,0902
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2–15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
November 20, 2017) and Reply Brief (“Reply Br.,” filed April 9, 2018), and
the Examiner’s Answer (“Ans.,” mailed February 8, 2018) and Final Office
Action (“Final Act.,” mailed May 18, 2017).
2 Appellants identify United Services Automobile Association (“USAA”) as
the real party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellants describe that the invention “contemplate[s] a system,
method and computer-readable medium with computer-executable
instructions for remotely redeeming a negotiable instrument” (Spec. ¶ 8).
Claims 2 and 9 are the independent claims on appeal. Claim 2,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
2. A remote deposit system comprising:
electronic circuitry configured to:
[(a)] deliver a deposit control component to a user
device and assume control of the user device via the
deposit control component to:
[(a1)] initiate capture of an image comprising a
front side of a financial instrument for a deposit
transaction by the user device according to
predefined criteria; and
[(a2)] initiate transmission of the image
comprising the front side of the financial
instrument to the remote deposit system;
[(b)] receive the image from the user device via the
deposit control component;
[(c)] analyze the image to determine whether the image
meets an image criterion;
[(d)] when the image meets the image criterion, perform
optical character recognition on the image to extract
financial instrument data from the image;
[(e)] perform an error analysis to determine whether the
financial instrument was previously deposited, and when
a previous deposit of the financial instrument is
identified, flag the deposit transaction for review; and
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[(f)] initiate deposit of the financial instrument into a
financial account specified in the financial instrument
data, regardless of whether the deposit transaction is
flagged for review.
REJECTION
Claims 2–15 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to making “a remote deposit” and
“provisional settlement,” i.e., “to financial or fundamental economic
practices,” certain methods of organizing human activity, and “an idea of
itself” and, therefore, to an abstract idea similar to other concepts that the
courts have held abstract (Final Act. 3–4 (citing Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343
(Fed. Cir. 2014)). The Examiner also determined that the claims do not
include additional elements or a combination of elements that is sufficient to
transform the nature of the claims into a patent eligible application (id. at 5).
After Appellants’ briefs were filed, and the Examiner’s Answer
mailed, the U. S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that is considered an abstract idea;
and (2) clarifying that a claim is not “directed to” a judicial exception if the
judicial exception is integrated into a practical application of that exception.
Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.3
Independent Claim 2 and Dependent Claims 3–8, 14, and 15
Step One of the Mayo/Alice Framework (USPTO Guidance Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, “that integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate

3 This guidance supersedes previous guidance memoranda. See
2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance
issue prior to prior to the Ninth Edition, R-08.2017 of the MPEP (published
Jan. 2018) should not be relied upon.”). Appellants’ arguments challenging
the sufficiency of the Examiner’s rejection will not be addressed to the
extent those arguments are based on now superseded USPTO guidance.
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that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded by Appellants’ argument that the Examiner
overgeneralized the concept to which claim 2 is directed (App. Br. 10–11)4
or that the Examiner otherwise erred in determining that claim 2 is directed
to an abstract idea (id. at 5–11). The Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that the claims focus on an

4 The Examiner’s characterization of claim 2 is, in our view, fully consistent
with the Specification, including the claim language. That the claim
includes more words than the phrase the Examiner used to articulate the
abstract idea, and that the Examiner, thus, articulates the abstract idea at a
higher level of abstraction than would Appellants is an insufficient basis to
persuasively argue that the claim language has been mischaracterized. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”).
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abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification is entitled “SYSTEMS AND METHODS FOR
REMOTE DEPOSIT OF CHECKS,” and, in the Background section,
describes that although checks have certain advantages over other forms of
payments (e.g., cash) in terms of security, receiving a check may impose
certain burdens on the payee (Spec. ¶¶ 4, 6). For example, “depositing a
check typically involves going to a local bank branch and physically
presenting the check to a bank teller” (id. ¶ 6). The payee also may not have
access to the funds from the check until after the check has cleared and the
funds have been credited to the payee’s account (id. ¶ 7).
The claimed invention is ostensibly intended to address these issues
by providing “a system, method and computer-readable medium with
computer-executable instructions for remotely redeeming a negotiable
instrument” (id. ¶ 8) and “a computer readable medium bearing instructions
that can configure a customer’s general purpose computer to facilitate a
check deposit” (id. ¶ 9). Claim 2, thus, recites a remote deposit system
comprising electronic circuitry configured to: (1) capture and upload an
image of a financial instrument with a user device, i.e.,
deliver a deposit control component to a user device and
assume control of the user device via the deposit control
component to:
initiate capture of an image comprising a front side
of a financial instrument for a deposit transaction by the
user device according to predefined criteria; and
initiate transmission of the image comprising the
front side of the financial instrument to the remote
deposit system
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(steps (a), (a1), and (a2)); (2) receive the image from the user device, i.e.,
“receive the image from the user device via the deposit control component”
(step (b)); (3) “analyze the image to determine whether the image meets an
image criterion” (step (c)); (4) “when the image meets the image criterion,
perform optical character recognition on the image to extract financial
instrument data from the image” (step (d)); (5) “perform an error analysis to
determine whether the financial instrument was previously deposited, and
when a previous deposit of the financial instrument is identified, flag the
deposit transaction for review” (step (e)); and (6) deposit the financial
instrument into the user’s account, i.e., “initiate deposit of the financial
instrument into a financial account specified in the financial instrument data,
regardless of whether the deposit transaction is flagged for review”
(step (f)).
Simply put, claim 2 broadly encompasses (1) receiving an image of a
financial instrument from a user for deposit in a user account; (2) analyzing
the received image of the financial instrument (i.e., determining whether the
image meets an image criterion, if the image meets the image criterion,
extracting financial instrument data from the image, determining whether the
financial instrument was previously deposited, and if the financial
instrument was previously deposited, flagging the deposit transaction for
review); and (3) depositing the financial instrument into the user account. In
other words, claim 2, given its broadest reasonable interpretation, recites
depositing a financial instrument, i.e., a fundamental economic practice,
which is a method of organizing human activity and, therefore, an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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The Federal Circuit has held similar concepts to be abstract. Thus, for
example, in Content Extraction, the Federal Circuit considered the patent
eligibility of a method claim for “processing information from a diversity of
types of hard copy documents.” Content Extraction, 776 F.3d at 1345.
Applying step one of the Mayo/Alice framework, the Federal Circuit
determined that the claim was “drawn to the abstract idea of 1) collecting
data, 2) recognizing certain data within the collected data set, and 3) storing
that recognized data in a memory” –– concepts that the court noted were
“undisputedly well-known.” Id. at 1347. The court also noted that “banks
have, for some time, reviewed checks, recognized relevant data such as the
amount, account number, and identity of account holder, and stored that
information in their records.” Id.
Having concluded that claim 2 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
“additional elements that integrate the judicial exception into a practical
application” (Step 2A, Prong 2).
The only additional elements recited in claim 2, beyond the abstract
idea, are the claimed “remote deposit system,” “electronic circuitry,”
“deposit control component,” and “user device” — elements that, as the
Examiner observes (Final Act. 5), are described in the Specification at a high
level of generality, i.e., as generic computer components (see, e.g., Spec.
¶¶ 19–34). We find no indication in the Specification, nor do Appellants
direct us to any indication, that the operations recited in claim 2 require any
specialized computer hardware5 or other inventive computer components,

5 See, e.g., Spec. ¶ 21 (“The term ‘general purpose computer’ specifically
excludes specialized equipment as may be purchased by a business or other
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i.e., a particular machine, invoke any assertedly inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.6
Appellants argue that claim 2 is not directed to an abstract idea
because the claim focuses on a “specific means or method that improves a
computer-related technology” (App. Br. 5). More particularly, Appellants
assert that claim 2 addresses “a technological problem in digital image
processing and automated remote deposit technology,” namely “[h]ow to
allow a remote deposit system to more efficiently perform the processing of

commercial enterprise, for example, for the specialized purpose of high-
speed, high-volume check deposits.”)
6 The 2019 Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in describing
the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Id. at 55. If the recited judicial exception
is integrated into a practical application, as determined under one or more of
these MPEP sections, the claim is not “directed to” the judicial exception.
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an image of a financial instrument and automatically remotely deposit the
financial instrument” (id. at 6). But, we are not persuaded that remotely
depositing checks is a technical problem, as opposed to a business problem,
or that the claimed solution of, at best, using generic computer components
to capture and analyze check images, is a technical improvement, where, as
described above, there is no indication here that the operations recited in
claim 2 require any specialized computer hardware or other inventive
computer components, invoke any assertedly inventive programming, or that
the claimed invention is implemented using other than generic computer
components to perform generic computer functions, e.g., receiving, storing,
processing, and transmitting information.
Appellants further assert that “in conventional systems, the user is
responsible for controlling aspects of image creation and transmission,
which introduces the possibility of human error that may produce an image
that is unsuitable for processing or that requires additional preprocessing for
the deposit transaction to proceed” (App. Br. 6 (citing Spec. ¶¶ 19 and 20)).
And Appellants argue that by shifting control of the capture and
transmission process to the remote deposit system, claim 2 “improves digital
image processing technology by reliably capturing and transmitting
satisfactory images in an automated manner that reduces the potential for
human error” (id. at 9; see also id. at 7 (describing that the technology
implements a deposit control component that “reduces issues associated with
human error in generating and transmitting images to the remote deposit
system”); id. at 8 (describing that by delivering the deposit control
component to the user device and thereby assuming control of the user
device to initiate capture of an image by the user device according to
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predefined criteria, “the remote deposit system of the claim 2 is able to
ensure that the image is appropriately captured in the first instance.”)).
That argument similarly fails at least because it is not commensurate
with the scope of the claim. We find nothing in claim 2 that excludes a
human user’s involvement in the image creation or transmission process. In
fact, the Specification expressly contemplates user involvement.7
Claim 2 also does not recite any mechanism for ensuring, before
transmitting an image, that the image is “satisfactory” or “satisfactory for
further processing” (App. Br. 9). Claim 2 requires the system to “initiate
capture of an image” (via the deposit control component) and to “analyze the
image to determine whether the image meets an image criterion,” and further
recites that the system is configured to “perform optical character
recognition on the image” “when the image meets the image criterion.” But,
claim 2 does not specify any action that the system is configured to perform
when the image is not satisfactory (i.e., when the image does not meet the
image criterion). And as for Appellants’ argument that efficiency is
improved by reducing human error, we note that “relying on a computer to

7 See, e.g., Spec. ¶ 69 (“at any step along the way, the customer can be
instructed to perform certain functions using software 531 or component
432, if such functions are better performed, or more conveniently performed
by a human.”); Id. ¶ 74 (“the customer may be instructed for example to
place the check face-down in a top left corner of a scanner bed. The
customer may further be instructed to place the check in a certain
orientation.”); Id. ¶ 76 (“the image may be presented to the customer and the
customer may be asked if the image is right side up and legible. If so, the
customer may approve the image, for example by selecting an appropriate
approval button in the user interface.”); Id. ¶ 78 (“an image as scanned may
be presented to the customer, and the customer may be asked to select a
bottom right corner of the check in the image”).
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perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d at 1363 (Fed. Cir. 2015).
Appellants also argue that “conventional technology for determining
duplicate deposits is prone to false positives, which may delay or prevent
automated deposit of the financial instrument, thus further reducing the
efficiency of the remote deposit system” and that “[t]he inventors recognized
[and addressed] these deficiencies in conventional technology” (App. Br. 6–
7). Yet we do not see how, and Appellants do not adequately explain how,
the system of claim 2 reduces false positives.
Claim 2 does not include, for example, any details regarding how the
“error analysis to determine whether the financial instrument was previously
deposited” is performed. And the solution set forth in claim 2 for avoiding
delays associated with the review of a flagged deposit transaction (i.e., a
potential duplicate deposit) is to simply initiate the deposit “regardless of
whether the deposit transaction is flagged for review.” Initiating a deposit
regardless of whether the deposit transaction is flagged may represent an
improvement to a business practice, but we are not persuaded that it amounts
to a technological improvement.
We also are not persuaded by Appellants’ argument that claim 2 is not
directed to an abstract idea because the claim elements “are sufficiently
specific to prevent claim 2 from preempting all manners” of remotely
depositing checks (id. at 7–8). There is no dispute that the Supreme Court
has described “the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption.” Alice Corp., 573 U.S.
at 216. But, characterizing preemption as a driving concern for patent
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eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We also note, to the extent Appellants maintain that claim 2 is not
abstract because the claim is “sufficiently specific” (App. Br. 8), that a
specific abstract idea is still an abstract idea. Thus, for example, “cases have
not distinguished among different laws of nature according to whether or not
the principles they embody are sufficiently narrow.” Mayo, 566 U.S. at 88–
89 (citing Parker v. Flook, 437 U.S. 584 (1978) (holding a narrow
mathematical formula unpatentable))). See also, e.g., Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (“A narrow
claim directed to an abstract idea, however, is not necessarily patent-
eligible.”); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed.
Cir. 2018) (“[A] claim is not patent eligible merely because it applies an
abstract idea in a narrow way.”)
Responding to the Examiner’s Answer, Appellants argue in the Reply
Brief that the present claims are similar to the patent eligible claims in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) in that the claimed deposit control component does not have “an
apparent conventional nontechnical analogue” (i.e., because it is an
“unconventional technical component that is delivered to a user device and
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used to assume control of the user device in an unconventional manner”)
(Reply Br. 5). Yet, the Federal Circuit did not hold in McRO that the claims
were patent-eligible because there was no “conventional non-technical
analogue.” Rather, the court held that an improvement in computer
animation was realized by using “rules, rather than artists [i.e., human
animators], to set the morph weights and transitions between phonemes”
(837 F.3d at 1313), i.e., in McRO, the invention used “rules to automatically
set a keyframe at the correct point to depict more realistic speech, achieving
results similar to those previously achieved manually by animators.” Id.
at 1307. The rules in McRO, thus, allowed the computer to produce
accurate and realistic synchronization in animated characters that could only
previously be produced by humans. See SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) (explaining that “[t]he claims in
McRO were directed to the creation of something physical – namely, the
display of ‘lip synchronization and facial expressions’ of animated
characters on screens for viewing by human eyes” and thus “[t]he claimed
improvement was to how the physical display operated (to produce better
quality images).”).
Moreover, and contrary to Appellants’ assertion, we are not convinced
that no “conventional non-technical analogue” exists for the claimed remote
deposit system. As the Federal Circuit noted in Content Extraction, “banks
have, for some time, reviewed checks, recognized relevant data such as the
amount, account number, and identity of account holder, and stored that
information in their records.” 776 F.3d at 1347.
Appellants further argue in the Reply Brief that the pending claims are
similar to the claims held patent eligible in Finjan, Inc. v. Blue Coat Sys.,
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Inc., 879 F.3d 1299 (Fed. Cir. 2018) (Reply Br. 5–8). However, we find no
parallel between claim 2 and the claims at issue in Finjan.
There, the claims were directed to a behavior-based virus scanning
method that scans a received downloadable and attaches the virus scan
results to the downloadable in the form of a newly generated file, i.e., a
security profile that identifies suspicious code in the downloadable. Finjan,
879 F.3d at 1304. The claimed behavior-based scans, in contrast to prior art
systems which searched for matching code, enabled more “nuanced virus
filtering” in analyzing whether “a downloadable’s code . . . performs
potentially dangerous or unwanted operations,” id. at 1304, and employed a
“new kind of file [i.e., the security profile] that enables a computer security
systems to do things it could not do before,” i.e., tailor access for different
users and identify threats before a file reaches a user’s computer. Id.
at 1305. The Federal Circuit, thus, held that the claims were “directed to a
non-abstract improvement in computer functionality, rather than the abstract
idea of computer security writ large.” Id.
Appellants assert that “the deposit control component is like the ‘new
kind of file’ in the eligible claims in Finjan, as the deposit control
component is a new kind of component that enables the remote deposit
system ‘to do things it could not do before’” e.g., “automatically control
image capture and transmission in a way that reduces or eliminates the need
for the remote deposit system, when a user captures and transmits an
unacceptable image, to perform additional pre-processing . . . or to request
that the user capture and transmit another image” (Reply Br. 7). Yet,
claim 2 does not recite detecting “an unacceptable image” or otherwise
taking any action to identify unacceptable images and thereby reduce or
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eliminate the need to “perform additional pre-processing . . . or to request
that the user capture and transmit another image.” And Appellants’
argument in that regard is not persuasive at least because it is not
commensurate with the scope of the claim.
The Specification does not contain the phrase “deposit control
component,” other than in the claims, and Appellants have not proffered any
claim construction of “deposit control component.” In the “Summary of
Claimed Subject Matter” section of the Appeal Brief, Appellants point to
paragraphs 54, 57, 67, 69, 71–75, and 80, and Figures 5 and 6 of the
Specification as disclosing the “deposit control component” (App. Br. 2).
Paragraph 54, for example, discloses that “while the computer 530 may be
customer-controlled, the customer downloads component 532 to facilitate a
deposit, thereby allowing a financial institution to effectively control certain
aspects of the image generation and delivery process.” Paragraph 67
describes “a software component 532” that “may be executed by computer
530 in connection with carrying out the invention.” Paragraphs 72–75
describe “an exemplary software component 600” that “may comprise a
variety of functional subsystems 601-609” as depicted in Figure 6.
Paragraph 73 discloses that “the component 600 may also be designed to
interoperate with a virtual machine framework 620.” But, Appellants do not
contend that the “deposit control component” of claim 2 should be construed
to require any of the particular details disclosed in the Specification, such as
the details of exemplary software component 532 or software component
600.8

8 Features disclosed in the Specification and not recited in the claims cannot
be relied on in the eligibility analysis. See Accenture Global Servs., GmbH
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The system of claim 2 comprises “electronic circuitry configured to:”
“deliver a deposit control component to a user device and assume control of
the user device via the deposit control component.” As recited in claim 2,
the deposit control component performs two functions: (1) to “initiate
capture of an image” and (2) to “initiate transmission of the image.” We do
not see how, and Appellants do not persuasively explain how, using
“electronic circuitry” to download a software component to a user device
and using the software to capture and upload images amounts to an
improvement to computer technology.
The Specification makes clear that the recited components, including
the “electronic circuity,” “user device,” and “deposit control component,”
merely provide a generic environment in which to carry out the abstract idea
of facilitating deposit of financial instruments. Indeed, the Specification
notes that “[a] particular advantage of embodiments of the invention is its
[sic] ability to operate in conjunction with electronics that today’s
consumers actually own or can easily acquire, such as a general purpose
computer, a scanner, and a digital camera” (Spec. ¶ 21). Cf. In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“the
telephone unit itself is merely a conduit for the abstract idea of classifying an

v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“[T]he
complexity of the implementing software or the level of detail in the
specification does not transform a claim reciting only an abstract concept
into a patent-eligible system or method.”); see also Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1322 (Fed. Cir. 2016) (“The district
court erred in relying on technological details set forth in the patent’s
specification and not set forth in the claims to find an inventive concept.”
(citing Accenture, 728 F.3d at 1345, and Content Extraction, 776 F.3d
at 1346)).
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image and storing the image based on its classification” and “the server is
described simply in terms of performing generic computer functions such as
storing, receiving, and extracting data”); Alice Corp., 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”).
We conclude, for the reasons outlined above, that claim 2 recites a
fundamental economic practice, which is a method of organizing human
activity, i.e., an abstract idea, and that the additional elements recited in the
claim are no more than generic computer components used as tools to
perform the abstract idea of depositing a check. As such, they do not
integrate the recited abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional feature[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 2 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 2 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 2 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
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Citing the Federal Circuit’s holding, in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that
an inventive concept can be found in the non-conventional and non-generic
arrangement of known conventional pieces, Appellants argue that even if
claim 2 is directed to an abstract idea, claim 2 is nonetheless patent eligible
because “it includes significantly more than any abstract idea” (App. Br. 12).
Appellants note that claim 2 recites “electronic circuitry” that is configured
to “(1) deliver a deposit control component . . . ,” “(2) perform an error
analysis . . . ,” and “(3) initiate deposit of the financial instrument” (id.).
And Appellants argue that these features, “as they are individually defined
and specifically and unconventionally arranged in association with each
other,” are one or more “inventive concepts” at least because they “provide
one or more special technical features that help to achieve the desired result
and that are not available in prior remote deposit systems” (id.).
Appellants ostensibly maintain that claim 2 is analogous to the claims
in BASCOM because these highlighted features and their arrangement in
association with the other claim features provide a technical improvement
over conventional ways of delivering information via a computer network”
(id. at 13). Yet again, Appellants’ argument is unpersuasive at least because
it is not commensurate with the scope of the claim.
Claim 2 recites “[a] remote deposit system” comprising “electronic
circuitry configured to” “deliver a deposit control component to a user
device.” Claim 2 does not recite any “computer network”; nor does claim 2
require any particular arrangement of the “remote deposit system,”
“electronic circuitry,” or “user device” beyond the ability to transmit and
receive information via some unspecified form of communication. Indeed,
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the Specification makes clear that the recited components, including the
“remote deposit system,” “electronic circuity,” and “user device,” merely
provide a generic environment in which to carry out the abstract idea of
facilitating deposit of financial instruments (see, e.g., Spec. ¶ 19
(“Customer 110 may use the image capture device 112 to generate an image
of a negotiable instrument such as a check, and may send the image, along
with any other data as appropriate, via a publicly accessible network 120 to
financial institution 130 electronics such as server 131.”); id. ¶ 54 (“the
customer downloads component 532 to facilitate a deposit”)). Cf. buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network – with no further
specification – is not even arguably inventive.”).
Appellants further maintain that claim 2 contains an “inventive
concept” because it includes “an unconventional solution to the technical
problem of allowing a remote deposit system to more efficiently perform the
processing of an image of a financial instrument and automatically remotely
deposit the financial instrument” (App. Br. 13; see also Reply Br. 6 (arguing
that the pending claims do not simply recite well-understood, routine and
conventional functions in (1) performing an error analysis to determine
whether the financial instrument was previously deposited, and when a
previous deposit of the financial instrument is identified, flagging the deposit
transaction for review, and (2) initiating deposit of the financial instrument
into a financial account specified in the financial instrument data, regardless
of whether the deposit transaction is flagged for review). Yet, that argument
is not persuasive, at least because “the relevant inquiry is not whether the
claimed invention as a whole is unconventional or non-routine.” BSG Tech,
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899 F.3d at 1290. Instead, the question under step two of the Mayo/Alice
framework (i.e., step 2B) is whether the claim includes additional elements,
i.e., elements other than the abstract idea itself, that “‘transform the nature of
the claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217
(quoting Mayo, 566 U.S. at 79, 78). See also Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added)).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the claimed “remote deposit system,”
“electronic circuitry,” “deposit control component,” and “user device,” i.e.,
generic computer components used to perform generic computer functions
(Final Act. 5) — a determination amply supported by, and fully consistent
with the Specification (see, e.g., Spec. ¶¶ 19–34).9 Appellants cannot
reasonably contend that there is a genuine issue of material fact regarding
whether the operation of these components is well-understood, routine, or

9 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.pdf, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is not well-understood, routine or conventional with “[a] citation to an
express statement in the specification . . . that demonstrates the well-
understood, routine, conventional nature of the additional element(s)” (id.
at 3).
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conventional, where, as here, there is nothing in the Specification to indicate
that the operations recited in claim 2 require any specialized hardware or
inventive computer components, invoke any assertedly inventive software,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
receiving, processing, and transmitting information.
Citing Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016), Appellants argue that even if claim 2’s features are
considered individually generic, the deposit control component “necessarily
requires that the other individual features operate in an unconventional
manner” (App. Br. 13–14). Again, Appellants’ argument is not persuasive at
least because it is not commensurate with the scope of the claim. We do not
see how, and Appellants have not adequately explained how, the steps
performed by the deposit control component – i.e., capturing and
transmitting an image – have any effect on any other components in claim 2
or cause them to operate differently than they would in the absence of the
deposit control component. Rather, as set forth in claim 2, the deposit
control component merely causes the user device to gather and transmit
image data that are received and analyzed by the remote deposit system.
Cf. Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas).
We also are not persuaded by Appellants’ argument that claim 2
contains an inventive concept because “‘the claimed solution is necessarily
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rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer’ analysis” (App. Br. 14 (citing DDR
Holdings, 773 F.3d at 1257)). Appellants assert that the pending claims
address a problem that specifically arises in the realm of computer analysis,
at least because the problem involves “processing inefficiencies that arise in
capturing an image of a financial instrument and automatically processing
the captured image to deposit the financial instrument,” and that the solution
is necessarily rooted in computer technology because “a deposit control
component that can be delivered to a user device and used to assume control
of the user device in the claimed manner is necessarily rooted in computer
technology” (id.).
We are not persuaded that capturing an image of a financial
instrument and automatically processing the captured image to deposit the
financial instrument is a problem particular to, or arising from, computer
networks and/or the Internet. The problem of processing a check presented
for deposit existed before, and still exists, outside of computer technology
and computer networks.
Although electronic deposit of a check may be network-centric, the
Federal Circuit, in DDR Holdings, expressly cautioned that “not all claims
purporting to address Internet-centric challenges are eligible for patent.”
DDR Holdings, 773 F.3d at 1258. The court, thus, distinguished the claims
in DDR Holdings from those at issue in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014), in that, in DDR Holdings, the computer
network was not operating in its “normal, expected manner” and the claims
did not “recite an invention that is . . . merely the routine or conventional use
of the Internet.” Id. at 1258–59.
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Here, we do not find, and Appellants do not identify, any analogous
modification to the routine and conventional functioning of computer
network technology. At best, the claimed invention appears to use generic
computer components to perform an abstract business practice (i.e.,
facilitating deposit of a check by capturing and transmitting an image of the
check). Although software can make non-abstract improvements to
computer technology, the mere fact that claim 2 requires “a deposit control
component,” i.e., software, to control a user device to gather and transmit
image data – and the fact that the captured image data correspond to an
image of a financial instrument – do not persuade us that the invention is
“necessarily rooted in computer technology” or that the claim otherwise
contains an inventive concept under step two of Alice. Cf. BSG Tech,
899 F.3d at 1286 (noting that the Federal Circuit has “consistently held,
however, that claims are not saved from abstraction merely because they
recite components more specific than a generic computer” and holding that
“the recitation of a database structure slightly more detailed than a generic
database does not save the asserted claims at step one”); id. at 1291 (“At
Alice step two, it is irrelevant whether considering [a particular type of]
information while inputting data may have been non-routine or
unconventional as a factual matter.”).
Appellants also misapprehend the controlling precedent to the extent
Appellants maintain that claim 2 includes significantly more than an abstract
idea (i.e., that the claim does not “merely automate a previously employed
[manual] method” and “includes unconventional technical features”)
because the Final Office Action “includes no rejection of claim 2 that is
based on prior art” (App. Br. 9–10; see also Reply Br. 5 (arguing that the
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claims are patent eligible because the deposit control component is an
“unconventional technical component”)). Neither a finding of novelty nor a
non-obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent-eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 2 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection. We also sustain the Examiner’s rejection
of dependent claims 3–8, 14, and 15, which are not argued separately except
based on their dependence from claim 2 (App. Br. 15).
Independent Claim 9 and Dependent Claims 10–13
Appellants argue that independent claim 9 is patent eligible for the
same reasons set forth with respect to independent claim 2 (id.). We are not
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persuaded for the reasons set forth above that the Examiner erred in rejecting
independent claim 2 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 9 for the same reasons. We also sustain the
Examiner’s rejection of dependent claims 10–13, which are not argued
separately except based on their dependence from claim 9 (id.).
DECISION
The Examiner’s rejection of claims 2–15 under 35 U.S.C. § 101 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED