EBAY INC.

Patent Trials and Appeals Board

Jun 9, 2021

2021000063 (P.T.A.B. Jun. 9, 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.
14/256,795 04/18/2014 Max Edward Metral 70481.1284_82053 3293
132906 7590 06/09/2021
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
EXAMINER
KERITSIS, DENNIS G
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/09/2021 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAX EDWARD METRAL
____________

Appeal 2021-000063
Application 14/256,795
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Max Edward Metral (Appellant2) seeks review under 35 U.S.C. § 134
of a non-final rejection of claims 1–13, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a part of processing online and/or mobile
payments and more particularly monitoring unauthorized transfers in a
distributed crypto currency system that may be used to make online and/or
mobile payments. Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 7, which is reproduced below (bracketed matter and some
paragraphing added).
7. A method for monitoring unauthorized crypto currency
transfers, comprising:
[1] receiving,
by a system provider device from a first payee
device over a network,
a first payer public address3 that is associated with a first
current crypto currency transaction;

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed May 18, 2020) and the Examiner’s Answer (“Ans.,” mailed July
16, 2020), and Non-Final Action (“Non-Final Act.,” mailed December 19,
2019).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Paypal,
Inc. (Appeal Br. 1).
3 When two people enter into an agreement where one sends the other tokens
or coins, they reveal their public addresses to each other. The public
address is like a bank account number. The sender needs the number to be
able to send the funds to the recipient who will then be able to spend or
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[2] accessing,
by the system provider device,
a plurality of unauthorized previous transaction public
addresses that are stored in an unauthorized crypto
currency transfer database;
[3] determining,
by the system provider device,
that the first payer public address previously received a
first unauthorized crypto currency transfer
in a first unauthorized previous crypto currency
transaction
from a first unauthorized previous transaction
public address
that is included in a plurality of
unauthorized previous transaction public
addresses
that are stored in the unauthorized
crypto currency transfer database;
and
[4] sending,
by the system provider device
to a first payee device
over the network
based on determining that
the first payer public address previously
received the first unauthorized crypto
currency transfer in the first unauthorized
previous crypto currency transaction from

withdraw it with his private key. https://www.investopedia.com/
terms/p/public-key.asp (last visited ).
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the first unauthorized previous transaction
public address,
a first message to the first payee
to not proceed with the first crypto currency
transaction.
The Examiner relies upon the following prior art:
Name Reference Date
Rosen US 5,920,629 July 6, 1999
Ki US 7,499,714 B2 Mar. 3, 2009
Kim US 2011/0307388 A1 Dec. 15, 2011
Loh US 2014/0164251 A1 June 12, 2014
Claims 1–13 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–13 stand rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure.
Claims 1–13 stand rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention.
Claims 1–3, 5–9, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Rosen, Loh, and Kim.
Claims 4 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosen, Loh, Kim, and Ki.4
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.

4 There is no art rejection against claim 11.
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The issues of written description matter turn primarily on whether the
Specification supports the claims.
The issues of indefiniteness turn primarily on whether one of
ordinary skill understood the metes and bounds of the claims.
The issues of obviousness turn primarily on whether the argued
limitations are deserving of patentable weight, and if so, whether they were
described in the art or otherwise predictable to one of ordinary skill.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Rosen
01. Rosen is directed to an electronic monetary system for
implementing electronic money transactions as an alternative
medium of economic exchange to cash, checks, credit and debit
cards, and electronic funds transfer. Rosen 1:10–13.
02. Rosen describes money modules being blocked (e.g., placed on
the bad ID list) if duplicated or counterfeit notes are tied back to
them. Rosen 6:31–32.
03. Rosen describes the bad id list as containing the identities of the
money modules, customer service modules, and security servers
which are blocked from transacting. Rosen 8:63–64.
04. Rosen describes the list of bad id’s as being maintained by a
designated primary server. The list is accumulated from
interactions with participating banks, law enforcement authorities,
and subscribers to the system. Rosen 9:21–24.
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05. Rosen describes Public Key Y verifying the validity of note(s)
signatures if transfer id’s are not on the bad id list. If any of the
signatures are not valid, then the transaction is aborted. If the
signatures are valid, then Verifier Y checks if the note(s) bodies
match note bodies that are stored by the Notes application or
located in the Tran Log. Rosen 16:13–27.
Loh
06. Loh is directed to user generated autonomous digital tokens.
Loh para. 2.
07. Loh describes Bitcoin as a cryptocurrency where the creation and
transfer of bitcoins is based on an open-source cryptographic
protocol that is independent of any central authority. Loh para. 5.
08. Loh describes a serial number being expressed in a human
readable form that includes printed characters and can also be
expressed in a machine readable form. The representation of
value includes a private key of a public key and private key pair.
The public key (a) can be provided by a paid party to a paying
party in connection with a transaction and (b) can form the basis
of an address in a digital currency network to which the paying
party can assign units of value for use by the paid party. The
representation of value includes fifty-one ASCII encoded
characters representing a base encoding of a private key part of a
key pair associated with a Bitcoin-type network. Loh para. 66.
Kim
09. Kim is directed to payment processing based on a mobile phone
number. Kim para. 2.
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10. Kim describes notifying the consumer whether a transaction was
successfully completed or failed. Kim para. 45.
ANALYSIS
Initially, we note that Appellant requests that a restriction requirement
be reversed. Appeal Br. 5. This matter relates to a petitionable matter and
not to an appealable matter. See In re Schneider, 481 F.2d 1350, 1356–57
(CCPA 1973) (“Nor do we agree that the Administrative Procedure Act
confers jurisdiction upon this court where it otherwise would not lie.”); In re
Mindick, 371 F.2d 892, 894 (CCPA 1967). See also the MPEP
§ 1002.02(c), item 3(a) and § 1201. Thus, the relief sought by the Appellant
would have been properly presented by a petition to the Commissioner under
37 C.F.R. § 1.181 instead of by appeal to this Board.

Claims 1–13 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 15
Claim 7, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that

5 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us?” To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
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STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 7 recites receiving and accessing address data, determining that data
was received, and sending message data. Accessing data is another form of
receiving data. Sending data is transmitting data. Determining that data was
received is rudimentary data analysis. Thus, claim 7 recites receiving,
transmitting, and analyzing data. None of the limitations recites
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 7 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,6 (2) certain methods of organizing
human activity,7 and (3) mental processes.8 Among those certain methods of
organizing human activity listed in the Revised Guidance are commercial or

6 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
7 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
8 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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legal interactions. Like those concepts, claim 7 recites the concept of
managing commercial currency transactions. Specifically, claim 7 recites
operations that would ordinarily take place in advising one not to proceed
with a crypto currency transaction based on determining that historical
unauthorized transfer data criteria are met. To advise one not to proceed
with a crypto currency transaction based on determining that historical
unauthorized transfer data criteria are met involves advising to not proceed
with the first crypto currency transaction, which is an economic act, and
sending a message not to proceed with a transaction, which is an act
ordinarily performed in the stream of commerce. For example, claim 7
recites “to not proceed with the first crypto currency transaction,” which is
an activity that would take place whenever one is managing whether to
perform a transaction. Similarly, claim 1 recites “sending . . . a first message
. . . to not proceed with the first crypto currency transaction,” which is also
characteristic of transaction management.
The Examiner determines the claims to be directed to verifying a user
against a blacklist. Non-Final Act. 7. The preamble to claim 7 recites that it
is a method for monitoring unauthorized crypto currency transfers. The
steps in claim 7 result in managing commercial currency transactions by
advising one not to proceed with a crypto currency transaction based on
determining that historical unauthorized transfer data criteria are met absent
any technological mechanism other than a conventional computer for doing
so.
As to the specific limitations, limitations 1 and 2 recite receiving data.
Limitations 3 and 4 recite generic and conventional transmitting and
analyzing of transaction data, which advise one to apply generic functions to
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get to these results. The limitations thus recite advice for advising one not to
proceed with a crypto currency transaction based on determining that
historical unauthorized transfer data criteria are met. To advocate advising
one not to proceed with a crypto currency transaction based on determining
that historical unauthorized transfer data criteria are met is conceptual advice
for results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
online and/or mobile payments and more particularly to monitoring
unauthorized transfers in a distributed crypto currency system that may be
used to make online and/or mobile payments. Thus, all this intrinsic
evidence shows that claim 7 recites managing commercial currency
transactions. This is consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing commercial
transactions is a commercial interaction with transaction parties. The
concept of managing commercial currency transactions by advising one not
to proceed with a crypto currency transaction based on determining that
historical unauthorized transfer data criteria are met is one idea for deciding
on a transaction. The steps recited in claim 7 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (tracking and
storing information relating to a user’s purchases).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, transmitting, and
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analyzing data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 7, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
analysis and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 7 recites receiving, transmitting, and analyzing data, and not
a technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 7 recites
managing commercial currency transactions by advising one not to proceed
with a crypto currency transaction based on determining that historical
unauthorized transfer data criteria are met, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 7 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.9

9 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “‘to a new and useful end,’” we have said, remain
eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the “‘buildin[g] block[s]’”
of human ingenuity and those that integrate the building blocks
into something more . . . .
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 4
is insignificant post solution activity, such as storing, transmitting, or
displaying the results. Step 3 recites generic computer processing expressed
in terms of results desired by any and all possible means and so present no
more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellant’s claim 7 simply recites the concept of
managing commercial currency transactions by advising one not to proceed
with a crypto currency transaction based on determining that historical
unauthorized transfer data criteria are met as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
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concept and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
Claim 7 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 23 pages of specification only spell out
different generic equipment10 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of managing commercial currency transactions
by advising one not to proceed with a crypto currency transaction based on
determining that historical unauthorized transfer data criteria are met under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. In particular, all recitations as to
cryptocurrency refer to data describing generic memory and data transfers of
data said to represent cryptocurrency, and not to cryptocurrency or its
implementation details itself. The claims are not directed to technology
underlying cryptocurrency or how it is technologically transacted.
Instead, claim 7 at issue amounts to nothing significantly more than an
instruction to apply managing commercial currency transactions by advising
one not to proceed with a crypto currency transaction based on determining
that historical unauthorized transfer data criteria are met using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–26.

10 The Specification describes a personal computer, smart phone, laptop
computer, wearable computing device, and/or other types of computing
devices. Spec. para. 50.
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None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 7 is directed to achieving the result of
managing commercial currency transactions by advising one not to proceed
with a crypto currency transaction based on determining that historical
unauthorized transfer data criteria are met, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 7 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
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Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly 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.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, transmitting, and analyzing data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”). None of
these activities is used in some unconventional manner nor does any produce
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some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 7 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-transmission-
analysis is equally generic 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 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). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 7 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 7 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
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are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101 “in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing commercial currency transactions by advising
one not to proceed with a crypto currency transaction based on determining
that historical unauthorized transfer data criteria are met, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from the Non-Final Action 7–10 and Answer
3–4 and reach similar legal conclusions. As there is no Reply Brief, we
particularly note the following.
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We are not persuaded by Appellant’s argument that “Appellant
submits that the claims are analogous to Example 42, claim 1 in the subject
matter eligibility examples.” Appeal Br. 6. First, the facts differ
substantially, and so the instant claims are not analogous. Second, nothing
in the instant claims recites a technological operation such as in the real time
conversion between underlying technological formats by a specialized server
recited in Example 42. Appellant argues only that the instant limitations are
analogous to those in Example 42 with no evidence or analysis to support
this conclusion.
We are not persuaded by Appellant’s argument that
each of the amended independent claims as a whole are more
than a drafting effort designed to monopolize the exception, as
one of skill in the art in possession of the present disclosure in
the art would recognize that there are numerous other ways to
use any abstract idea that the Office Action is contending is
present.
Appeal Br. 8. This is a preemption argument. “Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the Mayo
[/Alice] framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015).
We are not persuaded by Appellant’s argument that “the independent
claims are more properly construed as being directed to crypto currency
transaction warning systems.” Appeal Br. 9. Even this construction is
consistent with our determination that the claims are directed to the judicial
exception of the abstract idea of certain methods of organizing human
activity as exemplified by the commercial and legal interaction of managing
commercial currency transactions by advising one not to proceed with a
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crypto currency transaction based on determining that historical
unauthorized transfer data criteria are met. To the extent Appellant means to
contend that the claims are directed to some form of systems technology, as
we determine above, no such technological implementation details are
recited.

Claims 1–13 rejected under 35 U.S.C. § 112(a) as lacking a supporting
written description within the original disclosure
The Examiner determines that the limitation “receiving a first payer
public address” (Claim 7, limitation 1) has a breadth substantially beyond
that supported by the Specification. Non-Final Act. 10. Appellant argues
that “the present application clearly describes the system provider device
receiving a payer public address, such as at paras. [0021]-[0024].” Appeal
Br. 10. As receiving data per se is of established scope, the rejection must
be based on the object of such reception, the public address. We agree with
Appellant that in the context of currency transactions, the scope of this term
is also established and circumscribed. See definition above in footnote 3.
The Examiner also rejects claims 3 and 9 because they recite
“receiving a respective unauthorized crypto currency transfer report.” Non-
Final Act. 10. This is a similar issue as to a reception step and is equally
unpersuasive here.
The Examiner also makes new matter rejections. Non-Final Act. 11.
We are persuaded by Appellant’s argument that the Specification supports
these limitations. Appeal Br. 10.
The Examiner also rejects claim 13 because there is no disclosed
algorithm for the limitation “facilitating . . . a crypto currency transfer.”
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Non-Final Act. 11. We are persuaded by Appellant’s argument that no
algorithm is required for merely facilitating data transmission. Appeal Br.
11.

Claims 1–13 rejected under 35 U.S.C. § 112(b) as failing to particularly
point out and distinctly claim the invention
As to claims 1 and 7, the Examiner determines that is unclear whether
the claims are solely directed towards the monitoring system or a
combination of the monitoring system with the device of the payer public
address. Non-Final Act. 11–12.
As to claims 2 and 8, the Examiner determines that is unclear whether
the claims are solely directed towards “second payer public address has not
received” or a combination of with the device of the payer public address.
Non-Final Act. 12.
As to claims 6 and 12, the Examiner determines that is unclear
whether the claims are solely directed towards “previously received” or a
combination of with the device of the payer public address. Non-Final Act.
12.
As to claim 11, the Examiner recites “forwarding, by the system
provider device over the network to a plurality of other system provider
devices, the at least one respective unauthorized previous transaction public
address” but does not explain why this is cause for rejection. Non Final Act.
12.
As to claim 4, the Examiner determines that is unclear whether “each
respective unauthorized crypto currency transfer is stored in the authorized”
is an operation or a further limitation. Non Final Act. 12.
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As to claim 10, the Examiner determines that is unclear whether
“public address . . . is stored in” is redundant with claim 9. Non Final Act.
12.
As to claims 1, 3, and 4, the Examiner recites several step limitations
and determines the claims do not recite structure performing the steps. Non
Final Act. 12–13.
We are persuaded by Appellant’s arguments to all of these rejections.
Appeal Br. 11–12.

Claims 1–3, 5–9, 12, and 13 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosen, Loh, and Kim
Claim 1 recites receiving an identifier, accessing a list of comparable
identifiers in a database, determining that the address meets recited criteria,
and if so, sending a message. Rosen describes the same at this level of
description based on an identifier blacklist. The distinction is in what the
identifier represents and the criteria applied. The applied art does not
describe what the identifier represents and the criteria applied identically
with the claims. See Br. 13–16. The issue is whether such differences
deserve patentable weight and/or were otherwise predictable to one of
ordinary skill.
As to using the recited public address for the identifier rather than
Rosen’s module id, this is simply substituting the pertinent identifier for
cryptocurrency. Loh suggests as much in explaining that the public address,
based on a public key, identifies a party using a digital currency network.
FF 08. See also the definition of a public address in footnote 3 above.
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As to determining whether the criteria applied are met, that is the very
purpose of Rosen’s blacklist. The claim does not recite populating its list
using the criteria, but only having such a list based on such criteria. Rosen
describes the identifier blacklist.
As the only recited operation of the claimed list is searching for an
identifier match, which Rosen does, the particular criteria used to populate
the list prior to the beginning of the claimed process is non-functional, but
rather is aspirational. The particular criteria do not affect the process and the
process does not affect the criteria.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’” (citations omitted)).
The rationale behind this lack of patentable weight is preventing the
repeated patenting of essentially a known product by the mere inclusion of
novel non-functional descriptive material. King Pharm., 616 F.3d at 1279
(“The rationale behind this line of cases is preventing the indefinite
patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations.”). Cf. In re Ngai, 367 F.3d at 1339 (“If
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we were to adopt Ngai’s position, anyone could continue patenting a product
indefinitely provided that they add a new instruction sheet to the product.”).
Here, the process in no way depends on the actual mental
interpretation of the criteria, and the mental interpretation of such data is not
dependent on the process. Were the recited blacklist criteria to be given
weight, an applicant could obtain patents on the exiting prior art described
by Rosen by simply applying different non-functional blacklist criteria.

Claims 4 and 10 rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosen, Loh, Kim, and Ki
This rejection is not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1–13 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1–13 under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure is improper.
The rejection of claims 1–13 under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention is improper.
The rejection of claims 1–3, 5–9, 12, and 13 under 35 U.S.C. § 103(a)
as unpatentable over Rosen, Loh, and Kim is proper.
The rejection of claims 4 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Rosen, Loh, Kim, and Ki is proper.

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CONCLUSION
The rejection of claims 1–13 is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13 101 Eligibility 1–13
1–13 112(a) Written
Description
1–13
1–13 112(b) Indefiniteness 1–13
1–3, 5–9, 12,
13
103 Rosen, Loh, Kim 1–3, 5–9, 12,
13

4, 10 103 Rosen, Loh, Kim,
Ki
4, 10
Overall Outcome 1–13

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) (2011).

AFFIRMED