e2interactive, Inc. d/b/a e2Interactive, Inc.

Patent Trials and Appeals Board

Mar 15, 2021

2020005757 (P.T.A.B. Mar. 15, 2021)

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.
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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.”).
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[(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).
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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.

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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.
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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”).
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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
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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.

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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
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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.”
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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
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‘[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
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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
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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).
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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
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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;
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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.
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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