Ernest Betancourt et al.Download PDFPatent Trials and Appeals BoardAug 30, 201914153843 - (D) (P.T.A.B. Aug. 30, 2019) 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. 14/153,843 01/13/2014 Ernest BETANCOURT 007032.00022\US 9844 71822 7590 08/30/2019 BANNER & WITCOFF, LTD 1100 13th Street NW Suite 1200 Washington, DC 20005 EXAMINER BARTLEY, KENNETH ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/30/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PTO-71822@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERNEST BETANCOURT and VINCE PESCHIO ____________________ Appeal 2018-003641 Application 14/153,8431 Technology Center 3600 ____________________ Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1–6, 8–14, and 16–20, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Epona, LLC. App. Br. 2. Appeal 2018-003641 Application 14/153,843 2 STATEMENT OF THE CASE2 The Invention Appellants’ disclosed embodiments and claimed invention relate to “processing vehicle transactions using a communication device.” Spec. ¶ 1. Exemplary Claims Claims 1 and 16, reproduced below, are representative of the subject matter on appeal (italics added to contested prior-art limitation and to limitation considered to be indefinite; underlining added to contested written description limitation): 1. A method, comprising: monitoring, by a tag reader of a wireless system, for detection of a wireless tag of a vehicle within a predefined wireless service area of a service station associated with the wireless system; in response to detecting the wireless tag in the predefined wireless service area of the service station, determining, by the tag reader of the wireless system, whether the wireless tag of the vehicle is configured to request authorization through a point of sale of the service station; in response to determining that the wireless tag is configured to request authorization through the point of sale, triggering, by the tag reader of the wireless system, a communication device within proximity of the vehicle to display a user information request on a display of the 2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed Aug. 28, 2017); Reply Brief (“Reply Br.,” filed Feb. 21, 2018); Examiner’s Answer (“Ans.,” mailed Dec. 21, 2017); Final Office Action (“Final Act.,” mailed Jan. 27, 2017); and the original Specification (“Spec.,” filed Jan. 13, 2014; as amended Oct. 1, 2015). Appeal 2018-003641 Application 14/153,843 3 communication device, wherein the triggering comprises transmitting location information; receiving, by the tag reader of the wireless system via the wireless tag of the vehicle, user-provided user information originating from the triggered communication device responsive to receiving the location information; transmitting, by the tag reader of the wireless system to the point of sale, an authorization request comprising the user- provided user information; receiving, by the tag reader of the wireless system from the point of sale, an authorization indication responsive to the authorization request, wherein the authorization indication includes an authorized amount of fuel to be dispensed at a fuel pump; activating the fuel pump to dispense the authorized amount of fuel in response to receiving authorization of user information of a user associated with the vehicle; and transmitting, by the tag reader of the wireless system to the wireless tag of the vehicle, the authorization indication. 16. A method, comprising: receiving, by a communication device from a wireless tag, location information in response to arriving in a predefined wireless service area of a service station, wherein the location information is configured to trigger the communication device to display a user information request on a display of the communication device; displaying, by the communication device, the user information request in response to receiving the location information; receiving, by the communication device, user-provided user information from a user; and transmitting, by the communication device to a wireless tag, an authorization request comprising the user-provided user information directed to an authorization processing system. Appeal 2018-003641 Application 14/153,843 4 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Brookner US 2005/0174236 A1 Aug. 11, 2005 Betancourt et al. (“Betancourt”) US 2010/0088127 A1 Apr. 8, 2010 Rejections on Appeal R1. Claims 1–6, 8–14, and 16–20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 13–19. R2. Claims 1–6, 8–14, and 16–20 stand rejected under 35 U.S.C. § 112(a) as lacking written description support. Final Act. 19–21. R3. Claims 16–20 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 21–22. R4. Claims 16–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Betancourt and Brookner. Final Act. 22–31. CLAIM GROUPING Based on Appellants’ arguments (App. Br. 6–23) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 1–6 and 8–14 on the basis of representative claim 1, and Rejection R1 of claims 16–20 on the basis of representative claim 16; we decide the appeal of written description Rejection R2 of claims 1–6, 8–14, 16, and 18–20, on the basis of representative claim 1; we decide the appeal of indefiniteness Rejection R3 Appeal 2018-003641 Application 14/153,843 5 of claims 16–20 on the basis of representative claim 16; and we decide the appeal of obviousness Rejection R4 of claims 16–20 on the basis of representative claim 16. We decide written description Rejection R2 of separately argued claim 17, infra.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellants’ arguments with respect to indefiniteness Rejection R3 of claims 16–20 and subject matter eligibility Rejection R1 of claims 16–20 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellants’ arguments. However, based upon our review of the record, we find a preponderance of the evidence supports particular arguments advanced by Appellants with respect to written description Rejection R2 of claims 1–6, 8–14, and 16–20; obviousness Rejection R4 of claims 16–20; and subject 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2018-003641 Application 14/153,843 6 matter eligibility Rejection R1 of claims 1–6 and 8–14, for the specific reasons discussed below. We highlight and address specific findings and arguments regarding claims 1 and 16 for emphasis as follows. 1. § 101 Rejection R1 of Claims 1–6, 8–14, and 16–20 Issue 1 Appellants argue (App. Br. 7–16; Reply Br. 2–11) the Examiner’s rejection of claims 1 and 16 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue: Under the USPTO’s Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, are claims 1 and 16 patent-ineligible under § 101? Principles of Law A. 35 U.S.C. § 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., 4 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the USPTO’s patent- eligibility analysis under § 101. MPEP § 2106. Appeal 2018-003641 Application 14/153,843 7 Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held “[a] claim drawn to subject matter otherwise statutory Appeal 2018-003641 Application 14/153,843 8 does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘“inventive concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the Appeal 2018-003641 Application 14/153,843 9 [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO Revised Guidance The PTO recently published revised guidance in the Federal Register concerning the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes);5 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). Appeal 2018-003641 Application 14/153,843 10 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.7 See Revised Guidance. Step 2A(i) – Abstract Idea Informed by our judicial precedent, the Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity — fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent- 7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-003641 Application 14/153,843 11 eligible at Step 2A(i). This determination concludes the eligibility analysis, except in situations identified in the Revised Guidance.8 However, if the claim recites a judicial exception (i.e., an abstract idea enumerated above, a law of nature, or a natural phenomenon), the claim requires further analysis for a practical application of the judicial exception in Step 2A(ii). Step 2A(ii) – Practical Application If a claim recites a judicial exception in Step 2A(i), we determine whether the recited judicial exception is integrated into a practical application of that exception in Step 2A(ii) by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The seven identified “practical application” sections of the MPEP,9 cited in the Revised Guidance under Step 2A(ii), are: 8 In the rare circumstance in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in of the Guidance for analyzing the claim should be followed. See Revised Guidance, Section III.C. 9 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative of integration into a practical application, while sections 2106.05(f), (g), and (h) relate to limitations that are not indicative of integration into a practical application. Appeal 2018-003641 Application 14/153,843 12 (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field (2) MPEP § 2106.05(b) Particular Machine (3) MPEP § 2106.05(c) Particular Transformation (4) MPEP § 2106.05(e) Other Meaningful Limitations (5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception (6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity (7) MPEP § 2106.05(h) Field of Use and Technological Environment If the recited judicial exception is integrated into a practical application as determined under one or more of the MPEP sections cited above, then the claim is not directed to the judicial exception, and the patent- eligibility inquiry ends. If not, then analysis proceeds to Step 2B. Step 2B – “Inventive Concept” or “Significantly More” Under our reviewing courts’ precedent, it is possible that a claim that does not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.10 The Federal Circuit has held claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B) because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the additional elements were unconventional in combination).11 Therefore, if a 10 See, e.g., Diehr, 450 U.S. at 187. 11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. Appeal 2018-003641 Application 14/153,843 13 claim has been determined to be directed to a judicial exception under Revised Step 2A, we must also evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).12 Under the Revised Guidance, we must consider in Step 2B whether an additional element or combination of elements: (1) “Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, III.B.13 AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). 12 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 13 In accordance with existing Step 2B guidance, an Examiner’s finding that an additional element (or combination of elements) is well understood, routine, conventional activity must be supported with at least one of the four specific types of evidence required by the USPTO Berkheimer Memorandum, as shown above. For more information concerning evaluation of well-understood, routine, conventional activity, see MPEP § 2106.05(d), as modified by the USPTO Berkheimer Memorandum (USPTO Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in Appeal 2018-003641 Application 14/153,843 14 In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well- understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). . . . See Berkheimer Memo. The analysis in Step 2B further determines whether an additional element or combination of elements: (a) Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (b) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memo”). Appeal 2018-003641 Application 14/153,843 15 which is indicative that an inventive concept may not be present. Revised Guidance, and see Berkheimer Memo. If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements does not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. Analysis Based upon our de novo review of the record in light of the recent Revised Guidance with respect to patent-eligible subject matter rejections under 35 U.S.C. § 101, we reverse the rejection of claims 1–6 and 8–14 and sustain the rejection of claims 16–20 for the specific reasons discussed below. We highlight and address specific findings and arguments regarding claims 1 and 16 for emphasis as follows. Step 1 – Statutory Category Claims 1 and 16, as method (process) claims, recite one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether claims 1 and 16 are each directed to a judicial exception without significantly more. Appeal 2018-003641 Application 14/153,843 16 Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined the exemplary claims 1 and 16 “relate to economic and commerce practices of authorizing transactions for selling goods which is a fundamental economic practice.” Final Act. 14. We find claims 1 and 16 do not recite the judicial exceptions of either natural phenomena or laws of nature. We evaluate, de novo, whether claims 1 and 16 each recites an abstract idea based upon the Revised Guidance. The Specification provides context as to what the claimed invention is directed to. In this case, the Specification discloses the invention “relate[s] to processing transactions from a vehicle [and m]ore specifically . . . to processing vehicle transactions using a communication device.” Spec. ¶ 1. Appellants’ Abstract provides additional description of the invention: A transaction request may be initiated and completed using a vehicle based communication system. A vehicle may include a wireless tag or transponder, and a wireless system at a service station or fuel station can detect the presence of the wireless tag in a predefined wireless service area. The wireless system can transmit location information based on the detected location of the wireless tag or vehicle to the wireless tag. A communication device may establish a communication connection or link with a wireless tag or transponder, and through the communication connection, the wireless tag can transmit the location information received from the wireless system to the communication device. The requester may use the communication device to provide or enter transaction information. The communication device can transmit the transaction information for transaction authorization, and in response to authorization of the transaction, a transaction authorization indication may be transmitted to a point of sale. Appeal 2018-003641 Application 14/153,843 17 Spec. 29 (Abstract). Claim 1 recites “[a] method,” wherein the method includes the steps of: (1) “[M]onitoring . . . for detection of a wireless tag of a vehicle within a predefined wireless service area of a service station.” (2) “[I]n response to detecting the wireless tag in the predefined wireless service area of the service station, determining . . . whether the wireless tag of the vehicle is configured to request authorization.” (3) “[I]n response to determining that the wireless tag is configured to request authorization . . . triggering . . . a communication device within proximity of the vehicle to display a user information request . . . wherein the triggering comprises transmitting location information.” (4) “[R]eceiving . . . user-provided user information originating from the triggered communication device responsive to receiving the location information.” (5) “[T]ransmitting . . . an authorization request comprising the user-provided user information.” (6) “[R]eceiving . . . an authorization indication responsive to the authorization request, wherein the authorization indication includes an authorized amount of fuel to be dispensed at a fuel pump.” (7) “[A]ctivating the fuel pump to dispense the authorized amount of fuel in response to receiving authorization of user information of a user associated with the vehicle.” (8) “[T]ransmitting . . . the authorization indication.” Claims App’x. Claim 16 recites “[a] method,” that includes the steps of: (a) “[R]eceiving . . . location information in response to arriving in a predefined wireless service area of a service Appeal 2018-003641 Application 14/153,843 18 station, wherein the location information is configured to trigger the communication device to display a user information request.” (b) “[D]isplaying . . . the user information request in response to receiving the location information.” (c) “[R]eceiving . . . user-provided user information from a user.” (d) “[T]ransmitting . . . an authorization request comprising the user-provided user information.” Claims App’x. Under the broadest reasonable interpretation standard,14 and aside from the recited computer- and wireless-related communications aspects, we conclude claims 1 and 16 each recites steps that would ordinarily occur when “authorizing transactions for selling goods.” See Final Act. 14; Ans. 11. For example, aside from the computer- and wireless-related communications aspects, steps (3) through (5) of claim 1, as well as steps (b) through (d) of claim 16, would be steps used while initiating any location- based transaction. 14 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-003641 Application 14/153,843 19 Thus, under Step 2A(i), we generally agree with the Examiner that claims 1 and 16 recite an abstract idea, and we particularly conclude that claims 1 and 16 recite certain methods of organizing human activity. Specifically, claims 1 and 16 each recite a commercial interaction, i.e., sales activity, which we further note, aside from the computer and wireless communications-related aspects, may be performed without a computer using pen and paper. This type of activity, i.e., a commercial interaction in the form of an authorization request and approval, includes longstanding conduct that existed well before the advent of computers and the Internet, and could be carried out by a human with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).15 We conclude claims 1 and 16, as a whole, under our Revised Guidance, recites a judicial exception of certain method of organizing human activity, i.e., a commercial interaction (sales activity), and thus an abstract idea. 15 Our reviewing court recognizes that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. Moreover, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Appeal 2018-003641 Application 14/153,843 20 Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims recite a patent-ineligible concept, as we conclude above, we proceed to the “practical application” Step 2A(ii) in which we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Claim 1 As to claim 1, in addition to the abstract steps (3) through (5) identified in Step 2A(i), supra, claim 1 further recites limitations (1) “monitoring . . . for detection of a wireless tag of a vehicle within a predefined wireless service area of a service station; “ (2) “in response to detecting the wireless tag in the predefined wireless service area of the service station, determining . . . whether the wireless tag of the vehicle is configured to request authorization;” (6) “receiving . . . an authorization indication responsive to the authorization request, wherein the authorization indication includes an authorized amount of fuel to be dispensed at a fuel pump,” (7) “activating the fuel pump to dispense the authorized amount of fuel in response to receiving authorization of user information of a user associated with the vehicle,” and (8) “transmitting, by the tag reader of the wireless system to the wireless tag of the vehicle, the authorization indication.” With respect to the specific limitations, we conclude limitation (1) and limitation (2) recite insignificant data gathering. See MPEP § 2106.05(g). Appeal 2018-003641 Application 14/153,843 21 Data gathering, as performed by the steps or function in Appellants’ claims, is a classic example of insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappas, 561 U.S. 593 (2010). Further, we also find limitation (8) (“transmitting . . . the authorization indication”) recites insignificant post- solution activity. The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented’ [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92). However, for the reasons discussed below, we conclude limitations (6) and (7) integrate the abstract idea into a practical application as determined under at least one of the MPEP sections cited above.16 Appellants’ Specification discloses, “[t]o streamline and facilitate the process, the system 100 may provide the driver with the convenience of entering transaction information or identification information from within the vehicle, and the ease of using a device which is more suited to entry of information.” Spec. ¶ 17. Appellants argue: [C]laim 1 is directed to improvements in computer functionality that enable a vehicle transaction processing system to wirelessly detect the presence of a wireless tag of a vehicle in a predetermined area, trigger a communication device of the vehicle, through communication with the wireless tag, to display a user information request, and activate a fuel pump to dispense fuel to the vehicle based on the provided user 16 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field,” and § 2106.05(e) “Other Meaningful Limitations.” Appeal 2018-003641 Application 14/153,843 22 information. These improvements in computer functionality . . . enable a user to enter data through a dynamic user interface conducive for data entry. Indeed, the specification emphasizes that enabling entry of vehicle transaction data using a communication device provides a meaningful technological improvement in relation to conventional systems. App. Br. 10 (emphasis added). With respect to these other meaningful limitations, we find guidance in MPEP § 2106.05(e), which summarizes and relies upon our reviewing court’s holdings in Diehr, cited supra, and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (decision on remand from the Supreme Court, which had vacated the lower court’s prior holding of ineligibility in view of Bilski v. Kappos). In Diehr, the Court evaluated the additional non-abstract limitations, and found them to be meaningful, because they sufficiently limited the use of the (abstract idea) mathematical equation to the practical application of molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at 184, 187). In Classen, the Court held that, although the analysis step was an abstract mental process that collected and compared known information, the (practical application) immunization step was meaningful because it integrated the results of the analysis into a specific and tangible method that resulted in the method “moving from abstract scientific principle to specific application.” MPEP § 2106.05(e) (citing Classen, 659 F.3d at 1066–68). We find Appellants’ argument persuasive and that carrying out the steps of (6) “receiving, by the tag reader of the wireless system from the point of sale, an authorization indication responsive to the authorization request, wherein the authorization indication includes an authorized amount Appeal 2018-003641 Application 14/153,843 23 of fuel to be dispensed at a fuel pump;” and (7) “activating the fuel pump to dispense the authorized amount of fuel in response to receiving authorization of user information of a user associated with the vehicle” provide improvements to the underlying technology or technical field, namely, vehicle transaction processing systems. See MPEP § 2106.05(a) or, alternatively, § 2106.05(e) “Other Meaningful Limitations.” For these reasons, we conclude limitations (6) and (7) are meaningful, and sufficiently limit the use of the abstract idea present in claim 1 to the practical application of vehicle transaction processing systems, and thereby provide a technological improvement to vehicle transaction processing systems. App. Br. 10. Accordingly, we conclude, when the claim is considered as a whole, the recited judicial exception is integrated into a practical application as determined under either MPEP sections 2106.06(a) or 2106.05(e) cited above, such that the claim is patent-eligible. Because the claims are directed to a patent-eligible concept, this concludes the patent-eligibility inquiry of claim 1, such that we do not sustain the § 101 rejection of claim 1, and grouped claims 2–6 and 8–14 which stand therewith. See Claim Grouping, supra. Claim 16 Claim 16 recites limitations: (a) “receiving . . . location information in response to arriving in a predefined wireless service area of a service station, wherein the location information is configured to trigger the communication device to display a user information request;” (b) “displaying . . . the user information request in response to receiving the location information;” (c) “receiving . . . user-provided user information from a user;” and Appeal 2018-003641 Application 14/153,843 24 (d) “transmitting . . . an authorization request comprising the user-provided user information.” As discussed below, we conclude none of the limitations integrate the judicial exception of a commercial interaction, i.e., sales activity in the form of vehicle transaction processing systems, into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. We conclude limitation (b), “displaying . . . the user information request in response to receiving the location information,” recites an abstract idea. “[C]ollecting, displaying, and manipulating data” is an abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). As to the other specific limitations, we conclude limitations (a), i.e., “receiving . . . location information,” and (c), i.e., “receiving . . . user- provided user information from a user,” recite insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as performed by the steps or function in Appellants’ claims, is a classic example of insignificant extra- solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappas, 561 U.S. 593 (2010). We also conclude limitation (d), i.e., “transmitting an authorization request,” recites insignificant post solution activity. The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented’ [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92). On this record, we are Appeal 2018-003641 Application 14/153,843 25 of the view that Appellants’ claims do not operate the recited generic computer components in an unconventional manner to achieve an improvement in computer functionality. See MPEP § 2106.05(a). Therefore, claim 16, as a whole, merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Thus, on this record, Appellants have not shown an improvement or practical application under the guidance of Manual of Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e)(“Other Meaningful Limitations”). Nor do Appellants advance any arguments in the Brief(s) that are directed to the Bilski machine-or-transformation test, which would only be applicable to the method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular Transformation). Therefore, we conclude the abstract idea is not integrated into a practical application, and thus claim 16 and grouped claims 17–20 are directed to the judicial exception. Step 2B – “Inventive Concept” or “Significantly More” If the claims are directed to a patent-ineligible concept, as we conclude above with respect to claim 16, we proceed to the “inventive concept” step. For Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, Appeal 2018-003641 Application 14/153,843 26 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353). In applying step two of the Alice analysis, our reviewing court guides we must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well-understood, routine, conventional activity.” Mayo, 566 U.S. at 79. Limitations referenced in Alice that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words “apply it” (or an equivalent) with an abstract idea17; mere instructions to implement an abstract idea on a computer18; or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.19 17 Alice, 573 U.S. at 221–23. 18 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical principle on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84–85). 19 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust account balances, and issue automated instructions. Appeal 2018-003641 Application 14/153,843 27 Evaluating representative claim 16 under Step 2B of the Alice analysis, we conclude it lacks an inventive concept that transforms the abstract idea of a commercial interaction, i.e., sales activity using vehicle transaction processing systems into a patent-eligible application of that abstract idea. The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer, 881 F.3d at 1368. As evidence of the conventional nature of the recited “a communication device,” “a wireless tag,” “a display of the communication device,” and “an authorization processing system” in method claim 16, the Specification discloses: The transaction processing system 110 may establish a wireless network connection with truck 105 and/or a driver thereof to send and receive transaction related information such as driver identification information, trip identification information, trailer identification information, truck identification information, license number, load identification information (e.g., dispatch number, load number, order number), loyalty card information, and payment information. For example, the transaction processing system 110 may establish a wireless network connection through network 150 with the communication device 145. The wireless network connection may include a wireless wide area network (WAN), satellite communication network, cellular network and/or wireless Local Area Network (LAN) such as Wi-Fi. The transaction processing system 110 may include a transaction or fuel authorization system 120 and a carrier Appeal 2018-003641 Application 14/153,843 28 information system 125. The transaction processing system 110 may manage connections between the transaction authorization system 120 and the carrier information system 125 associated with truck 105. In particular, in one example, the transaction authorization system 120 may communicate with carrier information system 125 to access data stored therein and verify and authorize transaction requests. Additionally, in some arrangements, the transaction processing system 110 may be different from and/or located separately from carrier information system 125. For example, the transaction authorization system 120 may be located at or otherwise associated with the fueling station and in communication with the carrier information system through a wireless or wired communication connection over a network. The carrier information system 125, on the other hand, may be situated at a carrier location. The transaction authorization system 120 may also be located at the site of a third-party or under the same operator as the carrier information system 125. Communications between the transaction processing system 110, carrier information system 125 and fuel station 135 may be conducted using a variety of communication methods including wired and wireless communication solutions. Wired connections, for example, may include local area networks (LANs), Internet Protocol (IP) networks, satellite communication networks, cable networks and/or fiber optic communication links. Wireless connections, for example, may include a wireless wide area network (WAN), satellite communication network, cellular network and/or wireless Local Area Network (LAN) such as Wi-Fi. Spec. ¶¶ 20–22. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, we conclude claim 16 limitations may be broadly but reasonably construed as reciting conventional Appeal 2018-003641 Application 14/153,843 29 computer components and techniques, particularly in light of Appellants’ Specification, as quoted above.20 With respect to this step of the analysis, Appellants argue: [T]he fact that the claim is distinguishable over the documents cited in the Office Action . . . further suggests that the claim recites a “nonconventional and non-generic arrangement” of features. See BASCOM, 119 USPQ2d at 1242. Thus, even if claim [] is deemed to include an abstract idea, “an inventive concept can be found in the ordered combination of . . . that transform[s] the abstract idea . . . into a particular, practical application of that abstract idea.” App. Br. 15. In response, we note the Supreme Court emphasizes, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added). Our reviewing court further guides that “[e]ligibility and novelty are separate inquiries.” Two- Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed feature was novel does not “avoid the problem of abstractness”). 20 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-003641 Application 14/153,843 30 The Manual of Patent Examining Procedure, based upon precedential case law, provides additional considerations with respect to analysis of the well-understood, routine, and conventional nature of the claimed computer- related components. Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to transform a judicial exception into a patent-eligible application, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __, 134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”) . . . . In Alice Corp., the claim recited the concept of intermediated settlement as performed by a generic computer. The Court found that the recitation of the computer in the claim amounted to mere instructions to apply the abstract idea on a generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984. The Supreme Court also discussed this concept in an earlier case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972), where the claim recited a process for converting binary-coded decimal (BCD) numerals into pure binary numbers. The Court found that the claimed process had no substantial practical application except in connection with a computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The claim simply stated a judicial exception (e.g., law of nature or Appeal 2018-003641 Application 14/153,843 31 abstract idea) while effectively adding words that “apply it” in a computer. Id. MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”). With respect to the Step 2B analysis, we conclude, similar to Alice, the recitation of a method that includes “a communication device,” “a wireless tag,” “a display of the communication device,” and “an authorization processing system” (claim 16), as argued by Appellants, is simply not enough to transform the patent-ineligible abstract idea here into a patent- eligible invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention.”). We conclude the claims fail the Step 2B analysis because claim 16, in essence, merely recites various computer-based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. Therefore, in light of the foregoing, we conclude, under the Revised Guidance, that Appellants’ claim 16, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept. Accordingly, we sustain the Examiner’s § 101 rejection of independent claim 16, and grouped claims 17–20, not argued separately, and which fall therewith. See Claim Grouping, supra. Appeal 2018-003641 Application 14/153,843 32 2. § 112(a) Rejection R2 of Claims 1–6, 8–14, 16, and 18–20 Issue 2 Appellants argue (App. Br. 16–18; Reply Br. 11–12) the Examiner’s rejection of claim 1 under 35 U.S.C. § 112(a) as lacking written description support is in error. These contentions present us with the following issue: Did the Examiner err in rejecting claim 1 under § 112(a) as lacking written description support? Analysis The Examiner finds “[c]laim 1 has ‘wherein the triggering comprises transmitting location information[]’ where no written support can be found in the disclosure where triggering comprises transmitting location information.” Final Act. 20. Appellants contend the “specification and figures provide ample written description of such a feature. For example, in paragraphs [0030] and [0031].” App. Br. 16. Further, Appellants refer to paragraph [0050] in the “Summary of Claimed Subject Matter” section. See App. Br. 3. The Appellants’ Specification discloses: [50] In step 505, the RFID reader may determine whether the RFID tag 140 supports or is configured to request authorization through a point of sale 130. In response to a determination that the RFID tag 140 supports or is configured to request authorization through a point of sale 130, the RFID reader may write an arrival message on the RFID tag 140. The arrival message may include location information of the RFID tag based on the location detected by the RFID reader. In step 510, the vehicle based communication system may detect the arrival message on the RFID tag, and in response, the vehicle based communication system may prompt the driver for initial Appeal 2018-003641 Application 14/153,843 33 transaction information and any additional transaction information. Spec. ¶ 50 (emphasis added). We are persuaded by Appellants’ arguments and do not sustain the Examiner’s rejection because we find that the Appellants’ Specification, e.g., the italicized portion of paragraph [0050], above, provides adequate written description support for the recited “triggering comprises transmitting location information” limitation. For essentially the same reasons argued by Appellants (App. Br. 16–18), we reverse the Examiner’s rejection of independent claim 1, and grouped claims 2–6, 8–14, 16, and 18–20 which all include the disputed limitation in commensurate form.21 3. § 112(a) Rejection R2 of Claim 17 Issue 3 Appellants argue (App. Br. 18–20; Reply Br. 12–13) the Examiner’s rejection of claim 17 under 35 U.S.C. § 112(a) as lacking written description support is in error. These contentions present us with the following issue: Did the Examiner err in rejecting claim 17 under § 112(a) as lacking written description support for the step of “re-displaying the user information request in response to denial message,” as recited in claim 17? 21 Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). Appeal 2018-003641 Application 14/153,843 34 Analysis The Examiner finds “[c]laim 17 has ‘re-displaying the user information request in response to denial message’ where no re-displaying requests could be found in the disclosure.” Final Act. 21. Appellants contend their “specification and figures provide ample description of such a feature . . . [including] paragraphs [0055] and [0056].” App. Br. 19. Appellants’ Specification discloses: [55] If the denial indication is transmitted to the point of sale 130, the point of sale may communicate with the RFID system 115 to pass the denial indication to the communication device 145 through RFID tag 140. The denial indication may be in the form of a denial message which may be presented on the screen of the communication device 145. [56] If the denial of the transaction authorization was a result of a data error, the transaction authorization system 110 may issue an error message and prompt for correct data.” Spec. ¶¶ 55–56 (emphases added). We are persuaded by Appellants’ arguments, and do not sustain the Examiner’s rejection of claim 17 because we find Appellants’ Specification, for example, paragraphs 55 and 56, quoted above, provide adequate written support for the disputed limitation. 4. § 112(b) Rejection R1 of Claims 16–20 Issue 4 Appellants argue (App. Br. 20–21; Reply Br. 13–14) the Examiner’s rejection of claim 16 under 35 U.S.C. § 112(b) as indefinite is in error. These contentions present us with the following issue: Did the Examiner err in finding claim 16 indefinite under § 112(b)? Appeal 2018-003641 Application 14/153,843 35 Analysis The Examiner finds claim 16 recites “‘wherein the location information is configured to trigger the communication device to display[]’ where it is indefinite as to location information triggering a device. Trigg[er]ing a device would require a signal of some type of other device or software.” Final Act. 22. Appellants contend: [T]he Office Action provides no support for its conclusion, such as by showing an ambiguity in how the claim could be interpreted, or the factual or legal underpinnings justifying a rejection based on indefiniteness. Instead, the Office Action simply states that “[triggering] a device would require a signal of some type of other device or software.” App. Br. 21. Appellants further argue: [T]he Specification provides clear support for such a feature. As detailed above in, the specification teaches “location information may be written or stored on RFID tag 140,” “[t]he RFID tag 140 may begin the process of establishing a communication link with the wireless device in response to the writing of location information,” and “the RFID tag 140, upon and/or in response to communications from the fuel station ... may trigger the communication device 145 to prompt the driver to enter transaction information . . . .” See specification at paras. [0030] and [0031]., Appellant submit that, when the above noted feature of claim 16 is read in light of the Appellants’ Specification, one or ordinary skill in the art would understand the metes and bounds of the claim language. Id. We are not persuaded by Appellants’ argument, and decline to read limitations from the Specification into the claim. We are not persuaded because we determine, in agreement with the Examiner, that information, per se, i.e., “the location information,” cannot Appeal 2018-003641 Application 14/153,843 36 be “configured to trigger a device” alone, because “trigg[er]ing a device would require a signal of some type of other device or software.” Final Act. 22. While RFID tag 140 as described by Appellants with respect to their Specification may arguably provide the recited triggering function in response to receipt of location information, that is not what the claim recites, as interpreted under the broadest reasonable interpretation standard.22 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s conclusion that the disputed limitation is indefinite, and we sustain the Examiner’s rejection. 5. § 103 Rejection R4 of Claims 16–20 Issue 5 Appellants argue (App. Br. 21–23; Reply Br. 14–16) the Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as being obvious over the combination of Betancourt and Brookner is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, the step of “receiving . . . from a wireless tag, location information . . . configured to trigger the communication device to display a user information request on a display of the communication device,” as recited in claim 16? 22 “In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Appeal 2018-003641 Application 14/153,843 37 Analysis The Examiner finds Betancourt discloses “the location information is configured to trigger the communication device to display a user information request on a display of the communication device.” Final Act. 26 (citing Betancourt ¶ 44). Betancourt discloses: [0044] FIG. 2 is a flowchart illustrating a method for preauthorizing and processing a vehicle transaction request. In step 200, a vehicle's entry into a predefined wireless service area associated with a particular fuel and/or service station may be detected. In one example, a back office system such as back office 120 of FIG. 1 may detect a signal from a wireless communication device of a vehicle and/or a driver once they enter the wireless service area generated by the back office system. In response to detecting the entry of a vehicle and/or wireless communication device associated therewith into the wireless service area, a message may be transmitted to the vehicle and/or wireless communication device in step 205. The message may include a welcome message identifying the fuel and/or service station associated with the back office system. The message may further provide information regarding services and goods available at the station and/or that may be pre-purchased or pre-ordered. Betancourt ¶ 44 (emphasis added). Appellants contend, “[a]t best, paragraph [0044] of Betancourt describes transmitting a welcome message identifying a fuel and/or service station to a vehicle.” App. Br. 22. Appellants further allege “[n]owhere does Betancourt describe that the welcome message includes ‘location information,’ let alone that the ‘location information is configured to trigger the communication device to display a user information request on a display of the communication device’ as recited by independent claim 16.” Id. Appeal 2018-003641 Application 14/153,843 38 Appellants further assert, “Betancourt fails to teach or suggest the feature of ‘wherein the location information is configured to trigger the communication device to display a user information request on a display of the communication device’ as recited by independent claim 16.” App. Br. 22–23. We disagree with the Examiner because, based upon our review of the cited portions of Betancourt, we are unable to find any teaching or suggestion in Betancourt that the “welcome message” includes “location information” or involves the display of “a user information request,” as required by claim 16. Therefore, and for essentially the same reasons argued by Appellants (App. Br. 22–23), we reverse the Examiner’s obviousness rejection of independent claim 16, and grouped claims 17–20 that stand therewith. See Claim Grouping, supra. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2–16) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSIONS (1) Under our Revised Guidance, governed by relevant case law, claims 1–6 and 8–14 in Rejection R1 are patent-eligible under 35 U.S.C. § 101, and we do not sustain the rejection. Appeal 2018-003641 Application 14/153,843 39 (2) Under our Revised Guidance, governed by relevant case law, claims 16–20 in Rejection R1 are patent-ineligible under 35 U.S.C. § 101, and we sustain the rejection. (3) The Examiner erred with respect to written description Rejection R2 of claims 1–6, 8–14, and 16–20, under 35 U.S.C. § 112(a) and we do not sustain the rejection. (4) The Examiner did not err with respect to indefiniteness Rejection R3 of claims 16–20 under 35 U.S.C. § 112(b), and we sustain the rejection. (5) The Examiner erred with respect to obviousness Rejection R4 of claims 16–20 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we do not sustain the rejection. DECISION We reverse the Examiner’s decision rejecting claims 1–6 and 8–14. We affirm the Examiner’s decision rejecting claims 16–20. DECISION SUMMARY Claims Rejected Basis Affirmed Reversed 1–6, 8–14, 16–20 § 101 16–20 1–6, 8–14 1–6, 8–14, 16–20 § 112(a) 1–6, 8–14, 16–20 16–20 § 112(b) 16–20 16–20 § 103 16–20 Appeal 2018-003641 Application 14/153,843 40 FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation