Ernest Betancourt et al.

Patent Trials and Appeals Board

Aug 30, 2019

14153843 - (D) (P.T.A.B. Aug. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/153,843 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.
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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).
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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.
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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
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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).
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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.
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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
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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
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[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)”).
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(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.
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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.
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(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.
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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
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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”).
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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.
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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.
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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
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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).
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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).
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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).
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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.”
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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
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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
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(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
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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,
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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.
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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
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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
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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).
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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
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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.
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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
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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”).
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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)?
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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
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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).
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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.
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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.
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(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
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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