e2interactive, Inc. d/b/a e2Interactive, Inc.Download PDFPatent Trials and Appeals BoardMar 15, 20212020005757 (P.T.A.B. Mar. 15, 2021) 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. 14/276,543 05/13/2014 David A. Nelsen 62941.2675 4127 94551 7590 03/15/2021 Landmark Intellectual Property Law, PLLC 21515 HAWTHORNE BLVD SUITE 200 TORRANCE, CA 90503 EXAMINER GREGG, MARY M ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 03/15/2021 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): eofficeaction@appcoll.com gmurphy@landmarkip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID A. NELSEN and PHIL M. CHAKIRIS Appeal 2020-005757 Application 14/276,543 Technology Center 3600 Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3 and 5–12, all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as e2interactive, Inc. d/b/a e2Interactive, Inc. Appeal Brief filed April 7, 2020 (“Appeal Br.”) at 1. 2 Appellant canceled claims 4 and 13–20. Appeal Br. 10, 12. Appeal 2020-005757 Application 14/276,543 2 CLAIMED SUBJECT MATTER Invention Appellant’s invention relates generally to “encourag[ing] a customer to utilize any existing balance or residual value that may be present on a stored value card or virtual card” by presenting to the user “various offers and/or promotions that are relevant to the amount of residual value.” Spec. ¶ 8.3 Exemplary Claim Claims 1 and 7 are the independent claims. Claim 1 is exemplary of the claims on appeal and is reproduced below with bracketed lettering added for discussion purposes: 1. A method for using a virtual gift card having a value associated therewith, the method operable on a mobile computing device having a processor and memory, the mobile computing device operatively linked to a virtual gift card manager, the method comprising: [(a)] identifying by the processor of the mobile computing device a geographic identifier for the mobile computing device, indicating a geographic location of the mobile computing device; [(b)] determining a match by the processor of the mobile computing device between the geographic identifier with at least one virtual gift card stored on the mobile computing device; 3 In addition to the Appeal Brief noted above, we refer to: (1) the originally filed Specification filed May 13, 2014 (“Spec.”); (2) the Final Office Action mailed August 2, 2019 (“Final Act.”); (3) the Examiner’s Answer mailed July 13, 2020 (“Ans.”); and (4) the Reply Brief filed August 5, 2020 (“Reply Br.”). Appeal 2020-005757 Application 14/276,543 3 [(c)] determining a balance amount of value associated with the at least one virtual gift card, based at least in part on the processor of the mobile computing device accessing the memory of the mobile computing device; [(d)] identifying by the processor of the mobile computing device any offers or promotions to obtain specific goods or services for the balance amount of value, wherein a price for the specific goods or services is discounted to the balance amount; [(e)] displaying on the mobile computing device the at least one virtual gift card, the amount of value, and any offers or promotions to obtain the specific goods or services for the balance amount; and [(f)] selectively enabling by the processor of the mobile computing device a transaction utilizing the virtual gift card stored in the memory of the mobile computing device, the transaction based at least in part on the offers or promotions, the transaction including a manipulation of value associated with the at least one virtual gift card. Appeal Br. 10. REJECTION The Examiner rejects claims 1–3 and 5–12 under 35 U.S.C. § 101 as being directed to an exception to patent-eligible subject matter, without reciting significantly more. Final Act. 2–5, 9–15. OPINION We review the appealed rejection for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appeal 2020-005757 Application 14/276,543 4 Appellant appeals the Examiner’s rejection of claims 1–3 and 5–12 as being directed to an exception to patent-eligible subject matter under 35 U.S.C. § 101. Appeal Br. 5–6; Reply Br. 2–15. Appellant’s arguments address the claims as a group. Appeal Br. 5. As such, we select independent claim 1 as exemplary of all rejected claims in this appeal. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has held that § 101 includes implicit exceptions—laws of nature, natural phenomena, and abstract ideas—which are not patent-eligible. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In January 2019, the Office issued the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), which addresses the manner in which § 101 case law is to be applied by the Office. In October 2019, the Office issued an update to explain further the manner in which the Guidance should be implemented. See October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019); October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (“October 2019 Update”). The Board is required to adhere to these guidance documents as a matter of Office policy. Guidance, 84 Fed. Reg. at 51. The Guidance sets forth a four-part analysis for determining whether a claim is eligible subject matter under § 101; the four parts are labeled Step 1, Step 2A Prong 1, Step 2A Prong 2, and Step 2B. Id. at 53–56. Appeal 2020-005757 Application 14/276,543 5 Guidance Step 1 First, under “Step 1,” we consider whether the claimed subject matter falls within the four statutory categories set forth in § 101, namely “[p]rocess, machine, manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54; see 35 U.S.C. § 101. Appellant’s independent claims 1 and 7 each recite a method (i.e., a “process”). As such, the claims are directed to a statutory class of invention within § 101 and we proceed to the next step. Guidance Step 2A Prong 1 (Alice/Mayo–Step 1) (Judicial Exceptions) Second, under “Step 2A Prong 1,” we evaluate “whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216–17. The Examiner determines that claim 1 recites a judicial exception— specifically, an abstract idea. Final Act. 10; Ans. 4–5. According to the Examiner, the claim relates to steps for “identifying . . . a geographic identifier’, ‘determining a match . . . between the geographic identifier with . . . gift card stored’, ‘determining a balance amount of value associated with the . . . card’, [and] ‘identifying . . . any offers or promotions to obtain . . . good/services. . . .’” Ans. 4. The Examiner determines these “are processes which mimic mental processes such as analysis and retrieving information from memory” and that “other than using a device to display data and a processor to enable a transaction, nothing in the claimed limitations precludes the process from being performed in the mind.” Id. Appeal 2020-005757 Application 14/276,543 6 The Examiner further determines the claim recites steps relating to “sales activity[,] a subcategory of the abstract category of methods of organizing human activity.” Final Act. 11. Appellant argues that claim 1 is not a mental process because “the claims specifically recite a ‘virtual gift card’ –– something that can only reside in or on a technical device.” Appeal Br. 5. We are not persuaded the Examiner erred. Rather, we agree with the Examiner’s determination that claim 1 recites an abstract idea. Final Act. 2–3. Apart from additional elements and extra-solution activity discussed separately below, claim 1, under a broadest reasonable interpretation, recites steps focused on providing targeted advertising. That is, claim 1 encourages a user to spend a residual balance on a virtual gift card stored on a mobile computing device by displaying a promotion and reminding the user of an outstanding balance on the card. In particular, the claim causes the mobile computing device to display the virtual gift card, the amount of value on the card, and any offers or promotions to obtain specific goods or services for the balance amount. Storing customer-related data, and providing targeted advertisements based on the stored data, have long been common steps in marketing and selling products. Accordingly, these recited steps are for marketing or sales activities, a commercial interaction that falls within the category of Certain Methods of Organizing Human Activity. See Guidance, 84 Fed. Reg. at 52 (indicated as abstract “[c]ertain methods of organizing human activity” such as “commercial or legal interactions (including . . . advertising, marketing or sales activities”). Appeal 2020-005757 Application 14/276,543 7 We also agree with the Examiner’s determination that, under the Guidance, claim 1 recites at least one abstract idea in the form of a mental process or processes. Final Act. 10. Claim 1 includes steps of collecting customer-related information, analyzing the data, and displaying certain results of the collection and analysis, all of which can be performed entirely in the human mind, or with the aid of a pen and paper. October 2019 Update at 7, n.48. In particular, limitations (a) – (c) involve collecting and storing a geographic location of the mobile computing device and information about a virtual gift card including a balance amount of value associated with the virtual gift card. Limitation (d) recites, in relevant part, “identifying . . . any offers or promotions to obtain specific goods or services for the balance amount of value, wherein a price for the specific goods or services is discounted to the balance amount.” Appellant cites paragraphs 9, 13, 118, 137, 139, and 140 of the Specification in support of this limitation. Appeal Br. 2. The cited portions disclose identifying “one or more promotions or offers relevant to the current value of the virtual card.” Spec. ¶ 117. According to the Specification: Such promotions or offers may be specific to any number of factors, including but not limited to: the current value (or residual value) associated with the virtual card, the specific merchant, the specific merchant location, the time of day or year, and/or the stock of the specific merchant that is proximate to the user. Id. The cited portions of the Specification discloses no algorithm or technical detail to support a conclusion that this limitation could not be practically performed by the human mind. Id. Under a broadest reasonable Appeal 2020-005757 Application 14/276,543 8 interpretation, limitation (d) merely requires identifying a single product based on the balance amount of a virtual card, and discounting the product to the balance amount. A person could perform such a calculation mentally or with pencil and paper without analyzing a large amount of data and therefore this limitation can be practically performed in the mind. Limitation (f) recites, in relevant part, “selectively enabling . . . a transaction utilizing the virtual gift card stored in the memory of the mobile computing device, the transaction based at least in part on the offers or promotions, the transaction including a manipulation of value associated with the at least one virtual gift card.” Appellant cites paragraphs 13, 15, 40, 41, 44, 55, 79, 131, and 137–139 of the Specification in support of this limitation. Appeal Br. 2. The cited portions disclose, in relevant part, “an enablement module 30 configured to selectively enable a virtual card transaction.” Spec. ¶ 40. “[T]he enablement module may select an enabled or disabled state of a virtual card,” where an “enabled state may include a state in which a virtual card transaction between a virtual card and a corresponding card service provider is permitted and a disabled state may include a state in which a virtual card transaction between a virtual card and a corresponding card service provider is inhibited.” Id. Under a broadest reasonable interpretation, limitation (f) requires enabling or disabling a transaction. This represents a judgement that can be practically performed in the mind. The Guidance expressly recognizes mental processes, including judgments that can be performed in the human mind, as patent-ineligible abstract ideas. Guidance, 84 Fed. Reg. at 52. Appeal 2020-005757 Application 14/276,543 9 We, therefore, agree with the Examiner’s determination that claim 1 recites a mental process because “[t]he application of a processor for identifying, determining, and selectively enabling do no more than simply provide a technical relationship that can be performed mentally.” Final Act. 10; see October 2019 Update at 7 (indicating that “a claim to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind,” recites a mental process, citing Elec. Power Grp., LLC v. Alston, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). Appellant argues that claim 1 is not a mental process under the Guidance because “the claims specifically recite a ‘virtual gift card’ –– something that can only reside in or on a technical device.” Appeal Br. 5. According to Appellant, “while methods for organizing human activity are not patentable, methods that include steps some which may be performed manually, are not unpatentable.” Id. These arguments are not supported by evidence found in the record and are, instead, supported only by attorney argument which cannot take the place of evidence. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value.). Moreover, Appellant’s reliance on a virtual gift card is unpersuasive because under a broadest reasonable interpretation the claimed virtual gift card is merely data that is manipulated as part of the abstract idea. Spec. ¶ 10. In addition to determining that claim 1 recites at least one abstract idea under the Guidance, we note that our reviewing court has found claims Appeal 2020-005757 Application 14/276,543 10 reciting similar subject matter to be abstract. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1362–63 (Fed. Cir. 2020) (finding abstract claims drawn to “using a computer to deliver targeted advertising to a user”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding abstract claims drawn to collecting and analyzing information and notifying a user based on the analysis); Voter Verified, Inc. v. Election Systems & Software LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding claims reciting voting, verifying the vote, and submitting the vote for tabulation to be a certain method of organizing human activity). For the reasons discussed above, limitations (a) – (f) recite one or more judicial exceptions to patent-eligible subject matter in the form of a “certain method of organizing human activity” and a “mental process,” under step 2A, prong 1, of the 2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non- abstract.”); FairWarning, 839 F.3d at 1093–94 (patent-ineligible claims were directed to a combination of abstract ideas). Guidance Step 2A Prong 2 (Practical Application) Third, having determined that claim 1 recites an abstract idea, we proceed to “Step 2A Prong 2” of the Guidance, which requires that we evaluate whether “the claim as a whole integrates the recited judicial exception into a practical application of the exception.” Guidance, 84 Fed. Reg. at 54. “A claim that integrates a judicial exception into a practical application will 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.” Appeal 2020-005757 Application 14/276,543 11 Id.; see Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012). The Guidance specifies that this evaluation is conducted by first “[i]dentifying whether there are any additional elements recited in the claim beyond the judicial exception(s),” and then “evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” Guidance, 84 Fed. Reg. at 54–55. Claim 1 recites additional elements including “a mobile computing device having a processor and memory.” Appeal Br. 10. The Examiner determines the additional elements do not integrate the exception into a practical application “because the claims recite a process at a mobile device . . . and . . . [t]he functions are is [sic] recited at a high-level of generality such that it amounts to no more than applying the exception using generic computer components.” Final Act. 11. Appellant argues that claim 1 is directed to a practical application because “the present invention teaches identifying actual locations at which a gift card balance may be used, as well as determining and presenting to a user offers for the remainder of the gift card balance.” Appeal Br. 5. This argument is unpersuasive because even assuming the claimed technique for providing offers and promotions results in the benefits Appellant asserts, those benefits are achieved through an improvement to the abstract idea discussed above by “identifying . . . any offers or promotions to obtain specific goods or services for the balance amount of value.” Id. at 10. Appellant’s arguments improperly rely on the novelty of the ineligible concept to confer patent-eligibility. Our reviewing court has stated that it is not enough for eligibility that “the techniques claimed are Appeal 2020-005757 Application 14/276,543 12 ‘[g]roundbreaking, innovative, or even brilliant,’” or are “novel and nonobvious” because “‘a claim for a new abstract idea is still an abstract idea.’” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (citations omitted). Furthermore, the Specification does not provide additional details that would distinguish the claimed additional limitations from a generic implementation. See Final Act. 11 (“Taking the claim elements separately, the operation performed at the mobile device at each step of the process is purely in terms of results desired and devoid of implementation of details.”). We agree with the Examiner that there is no indication that the components used in the invention are anything other than generic computer components. See Spec. ¶ 31 (“Mobile computing device 12 may be any suitable computing device”). Thus, rather than improving computer technology, claim 1 uses a generic computing device as a tool to implement the improved abstract idea. Using generic computing device as a tool to perform an abstract idea does not integrate the judicial exception into a practical application or otherwise confer patent-eligibility. Guidance, 84 Fed. Reg. at 55. Although claim 1 recites storing particular data, such as the virtual gift card, in the memory of the mobile computing device, the claim does not recite any specific technical features of memory or database technology or use the memory in an unconventional way. In this regard, the claim uses the memory generically for data storage and retrieval. Consistent with the Guidance, the additional element of a memory, used generically, is not a practical application of a judicial exception. Guidance, 84 Fed. Reg. at 54. This is because a generic memory is included among additional elements Appeal 2020-005757 Application 14/276,543 13 that merely recite “apply it” or similar language, that merely include instructions to implement an abstract idea on a computing device, or that merely use a computing device as a tool to perform an abstract idea. Id. Also, our reviewing court has recognized that generic use of memory may not satisfy the inventive-concept requirement. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016). Limitation (e) recites “displaying on the mobile computing device the at least one virtual gift card, the amount of value, and any offers or promotions to obtain specific goods or services for the balance amount.” Even if we were to interpret this limitation narrowly such that the virtual gift card, the amount of value, and any offers or promotions are stored in the memory in an electronic format and are displayed by the mobile computing device, this limitation still would not integrate the recited abstract ideas into a practical application. Even under such a narrow interpretation, the display step of limitation (e) does not add any meaningful limits to the recited abstract idea because this limitation reasonably may be characterized as being directed to the insignificant post-solution activity of outputting data. Such broadly recited outputting of data that is not integrated into the claim as a whole is insignificant post-solution activity. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (“Nor does the claims’ recitation of ‘present[ing] [offers] to potential customers’ . . . provide a meaningful limitation on the abstract idea.”). As such, even if we consider limitation (e) as an additional element under prong 2 rather than Appeal 2020-005757 Application 14/276,543 14 as reciting an abstract idea under prong 1, limitation (e) recites at most the insignificant extra-solution activity of outputting data. Additionally, none of the remaining indicia of integration identified by the Guidance are present in the claim. Guidance, 84 Fed. Reg. at 55; see MPEP4 § 2106.05(a)–(c), (e)–(h). For example, the claim does not recite a particular machine and, instead, generically recites a “mobile computing device having a processor and memory.” Appeal Br. 10. Nor does the claim recite the “[t]ransformation and reduction of an article ‘to a different state or thing.’” Bilski v. Kappos, 561 U.S. 593, 604 (2010); MPEP § 2106.05(c). The claimed additional elements do not transform an article, i.e., some type of tangible or physical object, but instead transform an intangible concept, i.e., information, from one form to another. That is, the claim simply collects customer-related information, analyzes the data, and displays certain results of the collection and analysis in the form of promotions and a gift card value. See MPEP § 2106.05(c); see also Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (holding that a computer based algorithm that merely transforms data from one form to another is not patent-eligible). As such, claim 1 has no other meaningful limitations (see MPEP § 2106.05(e)), and merely recites instructions to execute an abstract idea on generic computer hardware (see MPEP § 2106.05(f)). In summary, the additional elements of claim 1 are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, i.e., generic computer components, such that the claim as a whole is more than a drafting effort designed to 4 The Manual of Patent Examining Procedure (“MPEP”) (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2020-005757 Application 14/276,543 15 monopolize the exception. We, therefore, determine claim 1 is not directed to a specific asserted improvement in computer-related technology or otherwise integrated into a practical application and thus is directed to a judicial exception. Guidance Step 2B (Alice/Mayo, Step 2) (Inventive Concept) Finally, having concluded that claim 1 is “directed to” an abstract idea, we turn to whether the claims provide an “inventive concept,” i.e., whether the additional elements, individually and as an ordered combination, amount to “significantly more” than the exceptions themselves. Guidance, 84 Fed. Reg. at 56. To determine whether the claim provides an inventive concept, the additional elements are considered—individually and in combination—to determine whether they (1) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or (2) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. The Examiner determines that claim 1 does “not include additional elements that are sufficient to amount to significantly more than the judicial exception.” Final Act. 13. Specifically, the Examiner notes that “[u]sing [conventional] technology to identify, determine, display and enable a transaction are some of the most basic functions of a computer.” Id. at 14; see Ans. 6 (citing Spec. ¶¶ 13, 33, 39, 61, 89). Additionally, the Examiner determined that “[c]onsidered as an ordered combination, the computer components of the method claims add nothing that is not already present when the steps are considered separately” because “[t]he sequence of data Appeal 2020-005757 Application 14/276,543 16 identifying-determining is equally generic and conventional.” Final Act. 14. According to the Examiner: The sequence of data identifying-determining is equally generic and conventional. The ordering of the steps is therefore ordinary and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). Final Act. 14–15. Appellant argues that the “present invention teaches systems and methods of using such residual value [on gift cards] for proximate retailers with promotions that may be set to the particular residual value of a specific gift card. These methods and systems require technology and provide for functionality not previously seen.” Appeal Br. 5–6. Appellant’s argument is unpersuasive because setting promotions to the particular residual value of the gift card focuses on the abstract idea. Appellant has not identified any additional element recited in claim 1 that is not well-understood, routine, and conventional. Appeal Br. 5. Claim 1 recites additional elements including “a mobile computing device having a processor and memory.” Appeal Br. 10. We agree with the Examiner that these additional elements are well-understood, routine, or conventional in the field, and fail to provide an “inventive concept,” when considered individually or as an ordered combination. Final Act. 13–14; Appeal 2020-005757 Application 14/276,543 17 Ans. 7; see Spec. ¶ 31 (“Mobile computing device 12 may be any suitable computing device that enables a user to store and maintain one or more virtual cards” such as “a smart phone, a hand-held computing device, an advanced PC-like capable mobile device, a laptop computer, a portable media player, etc.”). For the above reasons, we conclude that claim 1 does not set forth an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception, whether the claim elements are considered individually or as an ordered combination. Newly Presented Arguments in the Reply Brief Appellant presents new arguments in the Reply Brief that were not raised in the Appeal Brief. See generally Reply Br. 2–15. Appellant frames these new arguments as responsive to the January 2019 Guidance. Appellant’s Appeal Brief, however, was filed on April 7, 2020, well after publication of the January 2019 Guidance. These arguments are deemed waived, in the absence of a showing of good cause by Appellant, because the Examiner has not been provided a chance to respond. See 37 C.F.R. § 41.41(b)(2); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the Appeal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause). Appellant has provided no such showing of good cause. Appeal 2020-005757 Application 14/276,543 18 Accordingly, we are not persuaded that claim 1 recites patent-eligible subject matter. Therefore, we sustain the rejection of claims 1–3 and 5–12 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–3, 5–12 101 Eligibility 1–3, 5–12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation