EURONET WORLDWIDE, INC.

Patent Trials and Appeals Board

Oct 5, 2020

2019004042 (P.T.A.B. Oct. 5, 2020)

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.
14/194,337 02/28/2014 RICHARD GRAMLING 160111-2.2 8573
97242 7590 10/05/2020
Kutak Rock LLP
2300 Main Street, Suite 800
Kansas City, MO 64108
EXAMINER
ROSEN, ELIZABETH H
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
10/05/2020 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):
patents@kutakrock.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD GRAMLING
Appeal 2019-004042
Application 14/194,337
Technology Center 3600
Before BENJAMIN D. M. WOOD, FREDERICK C. LANEY, and
BRENT M. DOUGAL, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–32. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined by 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Euronet Worldwide, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a dynamic payment authorization system
and method. Claims 1, 9, 17, 23, and 27 are independent. Appeal Br. 16–
25. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A non-transitory computer-readable storage medium with a
computer program for facilitating electronic payment processing
stored thereon, wherein the computer program instructs one or
more processors to perform the following steps: generate a user
interface displayable on a display of a computing device of a
user;
receive payment terminal information from the computing
device of the user;
request, via the user interface, payment authorization
information from the user, wherein the payment authorization
information comprises information that confirms that the user
intends to complete an electronic payment transaction at a
payment terminal;
receive the payment authorization information from the
computing device of the user;
create a link between the user and a payment instrument
associated with the payment terminal;
receive transaction information from the payment terminal,
wherein the transaction information is indicative of the payment
transaction being initiated at the payment terminal;
compare the payment authorization information with the
transaction information;
and based on the result of the comparison, either allowing or
disallowing the electronic payment transaction to be completed,
wherein the payment instrument is configured to be utilized at
the payment terminal to initiate the payment transaction, and
wherein the payment terminal does not receive protected
information pertaining to the user.

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REFERENCES
Name Reference Date
Hanson US 2012/0330788 A1 Dec. 27, 2012
Godsey US 2014/0006184 A1 Jan. 2, 2014
REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–32 101 Eligibility
1–32 103 Hanson, Godsey
OPINION
A. Claims 1–32: Rejected as Directed to Ineligible Subject Matter
1. Legal Principles
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation
Proprietary LTD. v. CLS Bank International, 573 U.S. 208 (2014). For the
first Alice step (Step 2A of the USPTO’s Patent Subject Matter Eligibility
guidance, MPEP § 2106), we determine whether the claims at issue are
directed to a patent-ineligible concept such as an abstract idea, law of nature,
or natural phenomenon. Alice, 573 U.S. at 217 (citing Mayo, 566 U.S. at
78–79). If so, we advance to the second Alice step (Step 2B of the USPTO’s
Patent Subject Matter Eligibility guidance) where “we consider the elements
of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application” of the otherwise patent-ineligible
concept. Id. (quoting Mayo, 566 U.S. at 78–79).
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We also follow the USPTO’s additional guidance on applying Step
2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 The Revised Guidance
establishes a “two-prong inquiry” for determining whether a claim is
directed to a judicial exception. Id. at 54. In prong one, we determine
whether the claim recites a judicial exception, such as a law of nature,
natural phenomenon, or abstract idea. Id. If so, we look to whether the
claim recites additional elements that integrate the judicial exception into a
practical application. Id. at 50. Thus, a claim is directed to a judicial
exception only if the claim recites a judicial exception and does not integrate
that exception into a practical application. Id.
If we determine that the judicial exception is not integrated into a
practical application, we proceed to Step 2B and determine whether the
claim adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional activity in the field, or,
alternatively, whether the claim simply appends well-understood, routine,
and conventional activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 56.
Appellant argues claims 1–32 as a group. Appeal Br. 9–11. We
select claim 1 as representative of the group, and decide the appeal of this
rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). We
have carefully considered Appellant’s arguments for the patent eligibility of
claim 1, but find them unpersuasive of Examiner error. Accordingly, we

2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
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sustain the Examiner’s rejection for essentially those reasons expressed in
the Final Action and Answer, and add the following primarily for emphasis.
2. Step 2A, Prong 1
We first consider whether claim 1 recites a judicial exception.
According to the preamble, claim 1 recites a non-transitory computer-
readable storage medium with a computer program for “facilitating
electronic payment processing.” Appeal Br. 16 (Claims App.). Claim 1 also
recites steps for processing information in order to determine whether the
electronic payment transaction is to be completed, without requiring a
consumer to provide protecting information to the payment terminal. Id.
Claim 1 thus recites steps for engaging in a commercial interaction/sales
activity, which is one of the certain methods of organizing human activity
recognized as an abstract idea. Final Act. 6; Ans. 5; Revised Guidance, 84
Fed. Reg. at 52; see Inventor Holdings, LLC. v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that “local processing of
payments for remotely purchased goods” is an abstract idea).
Claim 1 also recites “compar[ing] the payment authorization
information with the transaction information” to determine whether to allow
the electronic payment transaction to be completed. Appeal Br. 16 (Claims
App.). This step is an evaluation or judgment that can be performed in the
human mind, and is thus a mental process recognized as an abstract idea.
Final Act. 6–7; Revised Guidance, 84 Fed. Reg. at 52; see Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (holding that
“analyzing information by steps people [can] go through in their minds, or
by mathematical algorithms, without more . . . [are] mental processes within
the abstract-idea category”).
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We determine that claim 1 recites an abstract idea, and proceed to
Step 2A, Prong 2.
3. Step 2A, Prong 2
Having determined that claim 1 recites a judicial exception, we next
consider whether claim 1 recites additional elements that integrate the
judicial exception into a practical application. Here, beyond the judicial
exception, the claim recites limitations directed to transmitting and receiving
data (e.g., “receiv[ing] payment terminal information,” “request[ing] . . .
payment authorization information from the user,” “receiv[ing] the payment
authorization information,” etc.). These limitations are drawn to the sending
and receiving of data, which is insignificant extra-solution activity that does
not integrate the judicial exception into a practical application. See MPEP
§ 2106.05(g); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (finding abstract steps for “gathering and analyzing
information of a specified content, then displaying the results”).
Claim 1 also recites the use of a “non-transitory computer-readable
storage medium” with a “computer program” that instructs “processors”; and
“generat[ing] a user interface” displayable on a “display” of “a computing
device of a user.” Final Act. 7–8; Ans. 5. Neither the claim nor the
Specification imposes any particular structural limitations on these generic
computer components and processes. Implementing a judicial exception on
a computer or with generic computer technology does not integrate the
judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. at 55; MPEP § 2106.05(f); DDR Holdings, LLC v. Hotels.com
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (holding that “recitation of
generic computer limitations does not make an otherwise ineligible claim
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patent-eligible”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1096 (Fed. Cir. 2016) (holding that “the use of generic computer elements
like a microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter”).
Claim 1 further recites “creat[ing] a link between the user and a
payment instrument associated with the payment terminal.” Appeal Br. 16
(Claims App.). The claim does not elaborate on what the link is or how it is
created. The Specification does not expressly define what is meant by
creating a link between the user and a payment instrument associated with
the payment terminal, but describes an embodiment in which the linking “is
accomplished by linking an identifier for the consumer user’s mobile wallet
and/or funding account (e.g., bank account number) with the merchant’s
payment card 108 identification code in a server device 102 (or associated
database) or otherwise in a temporary memory or database for use by the
authorization host.” Spec. ¶ 46. In other words, a consumer user’s identifier
information is stored with the merchants payment card 108 identification
code on a server or in an associated database. Data storage is a generic
computer operation. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015). As such, it cannot integrate the abstract idea
into a practical application.
Appellant argues, inter alia, that its invention “improves the
functioning of a computer at least by eliminating risks associated with data
breaches by facilitating an electronic payment transaction while not
requiring protected information of the user.” Appeal Br. 10. When
considering claims purportedly directed to “an improvement to computer
functionality,” we “ask whether the focus of the claims is on the specific
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asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016). Here, the improvement cited by Appellant, “eliminating risks
associated with data breaches,” is achieved by “facilitating an electronic
payment transaction while not requiring protected information of the user.”
Reply Br. 3 (emphasis omitted). But facilitating an electronic payment
transaction without requiring the user’s protected information is not an
improvement of computer capabilities, but rather part of the judicial
exception itself. Needless to say, a judicial exception cannot integrate itself
into a practical application. Further, we find nothing in claim 1 that
specifically addresses computer capabilities. Therefore, claim 1 merely
instructs the practitioner to implement the abstract idea using conventional
computer components and activities, which is insufficient to transform the
abstract idea into a practical application. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (finding that claimed steps merely
instruct practitioner “to implement the abstract idea with routine
conventional activities, which is insufficient to transform the patent-
ineligible abstract idea into patent-eligible subject matter”) (internal citation,
quotation marks, and alterations omitted).
In sum, having reviewed the additional limitations individually and as
an ordered combination, we agree with the Examiner that claim 1 is directed
to a judicial exception.
4. Step 2B
Having determined that claim 1 is directed to a judicial exception, we
next consider under Step 2B whether claim 1 includes additional elements or
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a combination of elements that provide an “inventive concept,” i.e., whether
claim 1 includes specific limitations beyond the judicial exception that are
not “well-understood, routine, conventional” in the field. Revised Guidance,
84 Fed. Reg. at 56. In doing so, we recognize that “[t]he inventive concept
inquiry requires more than recognizing that each claim element, by itself,
was known in the art,” because “an inventive concept can be found in the
non-conventional and non-generic arrangement of known, conventional
pieces.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1350 (Fed. Cir. 2016).
Viewing the additional limitations in claim 1 individually and as an
order combination, we agree with the Examiner that they do not provide an
inventive concept that renders the judicial exception patent eligible. Final
Act. 7–8; Ans. 5. As discussed above, claim 1 recites the use of generic
computer components and computer operations. Such limitations,
considered both individually and as an ordered combination, are well-
understood, routine, and conventional in the field, and therefore do not
provide an inventive concept. See Fair Warning, supra. Appellant does not
identify any specific arrangement of computer software or hardware, or
otherwise specify technical details that would indicate the use of computer
technology beyond that which is well-understood, routine, and conventional.
Appellant argues that its invention “includes at least the inventive
concept of facilitating an electronic payment transaction without requiring
protected information of the user, shifting the paradigm from traditional
electronic payment transactions in which such information is required.”
Appeal Br. 10. Although Appellant does not specifically identify the
limitations on which this argument is based, the argument appears to largely
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rely on limitations directed to the judicial exception itself. Even if the
judicial exception could be considered novel and nonobvious, it would not
be sufficient to save it from ineligibility. Solutran, Inc. v. Elavon, Inc., 931
F.3d 1161, 1169 (Fed. Cir. 2019).
B. Claims 1–32: Rejected as Unpatentable over Hanson and
Godsey
1. Claims 1–16
Appellant argues claims 1–16 as a group. Appeal Br. 12–13. We
select claim 1 as representative of the group, and decide the appeal of these
claims on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Hanson teaches all of the limitations of claim
1, except that it does not teach “receiving authorization information from a
user, receiving a transaction information indicative of payment transaction
being initiated at a payment terminal, wherein the payment instrument is
configured to be utilized at the payment terminal to initiate the payment
transaction; comparing the authorization information with the transaction
information; and, wherein the payment terminal does not receive
information pertaining to the user.” Final Act. 9–10 (citing Hanson ¶¶ 8, 19,
42, 45, 80–83, Figs. 8, 9). The Examiner further finds that Godsey teaches
“the use of a mobile application that can scan a QR code on the merchant
POS terminal, and push a payment to the merchant.” Id. at 10 (citing
Godsey ¶¶ 31, 40–48, Fig. 5). The Examiner determines that “it would have
been obvious to a person having ordinary skill in the art at the time of this
invention to incorporate the use of a push payment transaction at a merchant
location because push payments were a known way for customers to make
secure transactions.” Id.
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We have considered Appellant’s arguments for the patentability of
claim 1 over Hanson and Godsey, but find them unpersuasive of Examiner
error. For example, Appellant asserts that “Godsey teaches a ‘push’ system
in which a transaction is completed by ‘pushing’ funds to a merchant’s
account,” and “the present invention is nothing like” such a system. Appeal
Br. 13. This argument, however, is inconsistent with the Specification,
which states that “[t]he Embodiments of the present invention described [in
the Specification] are considered to be a form of a push type payment.”
Spec. ¶ 59. Appellant’s remaining arguments amount to describing the
benefits of the claimed system, without distinguishing claim 1 from the cited
art. Appeal Br. 12–13. Therefore, we sustain the Examiner’s rejection of
claims 1–16 as unpatentable over Hanson and Godsey.
2. Claims 17–19 and 22
Appellant’s arguments in support of the patentability of claim 17 are
identical to those made with respect to claim 1 (Appeal Br. 13–14), which
we found unpersuasive. Appellant does not separately address the
patentability of claims 18, 19, and 22, which ultimately depend from claim
17. Therefore, we sustain the Examiner’s rejection of claims 17–19 and 22
as unpatentable over Hanson and Godsey.
3. Claims 20 and 21
Claim 20 depends from claim 1, and additionally recites, “wherein
linking the user to the payment instrument enables the user to utilize a first
payment source to facilitate the transaction and wherein the payment
terminal is not otherwise provisioned to accept payments associated with the
first payment source.” Appeal Br. 23 (Claims App.). Claim 21 depends
from claim 9 and contains a similar limitation. Id. For both claims,
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Appellant asserts, without elaboration, that “[n]othing in the prior art teaches
such capabilities.” Id. at 14. But merely restating claim limitations and
asserting that the limitations are not found in the prior art does not
substantively identify error in an examiner’s rejection. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37 “to require more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
Therefore, we sustain the Examiner’s rejection of claims 20 and 21 as
unpatentable over Hanson and Godsey.
4. Claims 23 and 27–29
Appellant asserts that “claim 23 pertains to a system and recites a
payment instrument being issued to a first user (such as a merchant) that is
capable of being temporarily linked to a funding source of [a] second user
(such as a consumer),” but “nowhere in the Office Action does Examiner
argue that the prior art teaches or suggests such limitations.” Appeal
Br. 14–15. The Examiner responds that “[t]hese limitations are taught by
Godsey.” Ans. 11 (citing Godsey ¶ 27). Appellant did not dispute this
contention in the Reply Brief. Accordingly, we sustain the Examiner’s
rejection of claim 23.
Appellant next asserts that “the Office Action fails to address
limitations of claim 27 pertaining to linking a payment instrument of a first
user to a funding source of a second user so as to complete a payment
transaction.” Appeal Br. 15. The Examiner responds that it addressed claim
27 with claim 1. Ans. 11. Appellant does not dispute this contention and,
indeed, the Examiner addresses claim 27 with claim 1 in the Final Office
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Action. Final Act. 9. Accordingly, we sustain the Examiner’s rejection of
claim 27.
Appellant further asserts that “the Office Action fails to provide any
arguments, whatsoever, to support the rejection of claims 28 and 29,
claim 28 reciting unlinking the payment instrument of the first user from the
funding source of the second user and claim 29 reciting linking the payment
instrument of the first user to a funding source of a third user.” Appeal Br.
15. The Examiner responds that claims 28 and 29 are “made obvious by the
prior art references for the same reasons as claim 1.” Ans. 11. The
Examiner characterizes claim 28 as including the limitation of “unlinking
the payment instrument of the first user from the funding source of the
second user,” that the “‘linking’ is taught by Godsey as described above,”
and “[o]nce the payment is complete, the payment instrument and the
funding source are clearly and obviously unlinked.” Id. at 11–12. For claim
29, the Examiner states that it “includes a method similar to the independent
claim, except that the payment transaction is between the first user and a
funding source of a third user (as opposed to a second user).” Id. at 12.
According to the Examiner, “[t]his claim is merely repeating the process of
the independent claim with another payor,” and “[i]t is clear that the
inventions of both references are intended to be used for more than one
payment from more than [one] payor.” Id. In reply, Appellant asserts that
the subject matter of claim 29 “enables a first user (i.e. vendor) to link a
payment instrument [to] a funding source of a second user (i.e. a first
customer) and then later link the same payment instrument to a funding
source of a third user (i.e. a second customer),” and the “prior art fails to
teach or suggest such systems or methods.” Reply Br. 5.
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Appellant does not dispute the Examiner’s argument with respect to
claim 28, and we therefore sustain the Examiner’s rejection of that claim.
As for claim 29, Appellant does not show error in the Examiner’s
characterization of claim 29 as merely repeating the method of claim 27 for
two different customers. Appellant does not explain how repeating the same
method for two different customers renders the method patentable.
Accordingly, we also sustain the Examiner’s rejection of claim 29.
5. Claims 24–26 and 30–32
Appellant does not address the patentability of claims 24–26 and 30–
32 over Hanson and Godsey. Accordingly, we sustain the Examiner’s
rejection of these claims on that basis.
C. Appellant’s Request to Reopen Prosecution
Appellant requests that prosecution be reopened because the
“Examiner has still not clearly articulated the 101 rejection,” and “has not
adequately addressed each of [Appellant’s] 103 arguments” or “provided
analysis for each of the 103 rejections.” Appeal Br. 7–8 (emphasis omitted).
The relief sought by Appellant, however, is by way of petition to the
Technology Center Director rather than by appeal to the Board. MPEP
¶ 1002(c), item 1; see also id. § 1201 (the Board will not ordinarily hear a
question that is reviewable by petition). Accordingly, we do not separately
address this issue here.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–32 101 Eligibility 1–32
1–32 103 Hanson, Godsey 1–32
Overall
Outcome
1–32

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED