GLOBAL PAYMENTS INC.

Patent Trials and Appeals Board

Mar 31, 2020

14222129 - (D) (P.T.A.B. Mar. 31, 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.
14/222,129 03/21/2014 Dean A. DECRISTOFORO 052664-0258 5611
22428 7590 03/31/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DEAN A. DECRISTOFORO
________________

Appeal 2018-008086
Application 14/222,129
Technology Center 3600
________________

Before JASON J. CHUNG, JOYCE CRAIG, and
STEPHEN E. BELISLE, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–34. An Oral Hearing was held on March 10, 2020. A transcript
of the hearing will be made of record in due course. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to facilitating transactions for making funds
readily available. Spec. ¶ 1. Claims 1 and 7 are illustrative of the invention
and are reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Global Payments Inc. is the real
party in interest. Appeal Br. 4.
Appeal 2018-008086
Application 14/222,129
2
1. A system for making a patron’s funds available to
the patron at a gaming establishment, the system comprising:
a handheld device including a card data receiver and a
display, the handheld device being configured to process patron
information, thereby allowing the patron to select at least one of
a plurality of transactions;
at least one input device coupled to or formed in the
handheld device, the at least one input device being configured
to capture an electronic endorsement from the patron and to
generate an image therefrom;
an output device coupled to or formed in the handheld
device, the output device being configured to create a negotiable
instrument for a transaction selected by the patron,
wherein the transaction culminates in making the patron’s
funds available to the patron,
wherein the card data receiver is configured to acquire data
from a card having an EMV chip,
wherein the handheld device provides access to unique
identifiable data of the patron,
wherein the display comprises a touch screen including at
least one touch screen button configured to be touched by the
patron to signify selection of an option indicated by text for the
at least one touch screen button, and
wherein the handheld device includes a keypad or a digital
image of a keypad.

Appeal Br. 57 (Claims Appendix) (emphases added).

7. A method for making funds available for
entertainment, the method comprising:
reading or receiving card or account information by a
handheld mobile device within an entertainment area, the
handheld mobile device including a card data receiver configured
to acquire data from a card having an EMV chip, and a printer;
allowing a customer to select a transaction at the handheld
mobile device and generating an order authorizing the
transaction when the customer selects the transaction;
retrieving the order and information verifying an identity
of the customer on the handheld mobile device;
displaying an option to the customer, when the identity of
Appeal 2018-008086
Application 14/222,129
3
the customer is verified, on a display of the handheld mobile
device that allows the customer to select, at the customer’s
option, after the identity of the customer is verified, (1) an
electronic endorsement from the customer and placement of the
electronic endorsement in an electronic image or (2) a printout
of a hard copy of an electronic image, which represents a
negotiable instrument and which, at the customer’s election, may
be printed for presentment for cash, casino chips, a ticket in,
ticket out (“TITO”) slip, whether printed from a gaming device
or a cage or any equivalent thereof;
wherein the display includes a customer input device and
the customer input device asks the customer to select (1) or (2)
and receives the customer’s selection of (1) or (2) as input,
wherein the display comprises a touch screen including at
least one touch screen button configured to be touched by the
customer to signify selection of an option indicated by text for
the at least one touch screen button;
wherein the handheld mobile device includes a keypad or
a digital image of a keypad;
wherein if the customer chooses the hard copy, the
handheld mobile device is configured to print or issue an
instruction to the printer to print the hard copy, and
wherein if the customer chooses the electronic
endorsement, the display is configured to ask the customer if the
transaction is acceptable and to initial the display with a stylus
or finger such that after the customer makes the electronic
endorsement, the handheld mobile device is configured to insert
the endorsement on the display into the electronic image, and the
handheld mobile device is further configured to transfer the
electronic image to an image repository.

Id. at 58–59 (Claims Appendix) (emphases added).

REJECTIONS2
Claims 1–34 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 2–4.

2 The rejection under 35 U.S.C. § 112 has been overcome. Final Act. 11.
Appeal 2018-008086
Application 14/222,129
4
Claims 1–34 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of DeCristoforo (US 8,140,434 B2;
issued Mar. 20, 2012), Calman (US 2012/0265679 A1; published Oct. 18,
2012), McKelvey (US 2012/0095867 A1; published Apr. 19, 2012), and
Iversen (US 2013/0304593 A1; provisional application No. 61/415,454 filed
Nov. 19, 2010). Final Act. 5–12.

ANALYSIS
I. Claims 1–34 Rejected Under 35 U.S.C. § 101
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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,
Appeal 2018-008086
Application 14/222,129
5
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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory 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 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.”).
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-
Appeal 2018-008086
Application 14/222,129
6
eligible application.” Alice, 573 U.S. at 221 (quotation marks 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 [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 Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
Appeal 2018-008086
Application 14/222,129
7
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Final Act. 4, 6; Ans. 4, 9–10. The Examiner
also determines the present claims do not amount to significantly more than
an abstract idea itself because the abstract idea is implemented on additional
elements that are well-understood, routine, and conventional. Final Act. 4–
6; Ans. 5 (citing Alice, 573 U.S. at 225–26).
Appellant argues the present claims do not recite an abstract idea
because they include a distinct hardware/software combination that readily
creates a negotiable instrument. Appeal Br. 20, 26, 28, 30, 32, 34, 36–38;

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2018-008086
Application 14/222,129
8
Reply Br. 23. Appellant argues that the present claims recite an
unconventional solution to a technical problem by making funds available
for gaming to solve a cash availability problem faced in gaming
establishments such as casinos. Appeal Br. 21–22, 24–39 (citing Amdocs
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016); Spec. ¶¶ 3, 15,
41, 44, 48); Reply Br. 24–34. Appellant argues the present claims do not
preempt any abstract idea. Appeal Br. 20; Reply Br. 24. Appellant argues
the present claims recite a non-conventional and non-generic arrangement of
known, conventional elements, which results in an inventive concept.
Appeal Br. 22, 25, 27, 29–32, 34, 36, 38–39 (citing BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)); Reply Br. 26–34. Appellant argues that the Examiner fails to
provide factual evidence to support the determination that the present claims
represent a well-understood, routine, or conventional activity. Reply Br. 20,
26. We disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We conclude the emphasized portions of claims 1 and 7,5
reproduced above (see supra at 1–3), recite commercial interactions
including sales activities or business relations because claims 1 and 7 require

5 Claims 1 and 7, reproduced above with emphases, recite similar features as
claims 4, 10, 15, 18, 23, 26, 33, and 34. Appellant does not argue the
dependent claims separately with particularity. Appeal Br. 39–40. We,
therefore, group claims 1–34 together and refer to those claims as the
“present claims.”
Appeal 2018-008086
Application 14/222,129
9
making funds available for gaming by providing a handheld device that
allows for a negotiable instrument to be generated, as acknowledged by
Appellant (see Appeal Br. 22). According to the 2019 Revised Guidance,
commercial interactions including sales activities or business relations fall
into the category of certain methods of organizing human activity. See
2019 Revised Guidance. Moreover, those certain methods of organizing
human activity are a type of an abstract idea. See id.
We, therefore, disagree with Appellant’s argument that the present
claims do not recite an abstract idea because they include a distinct
hardware/software combination that readily creates a negotiable instrument.
Appeal Br. 20, 26, 28, 30, 32, 34, 36–38; Reply Br. 23. We agree with the
Examiner’s conclusion that the present claims recite certain methods of
organizing human activity. Final Act. 4, 6; Ans. 4, 9–10.
Because the present claims recite commercial interactions, including
sales activities or business relations that fall into the category of certain
methods of organizing human activity (i.e., an abstract idea), we proceed to
prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that,
similar to Amdocs, the present claims recite an unconventional solution to a
technical problem by making funds available for gaming to solve a cash
availability problem faced in gaming establishments such as casinos.
Appeal Br. 21–22, 24–39 (citing Amdocs, 841 F.3d at 1288; Spec. ¶¶ 3, 15,
41, 44, 48); Reply Br. 24–34.
Appellant does not identify persuasively how the Specification sets
Appeal 2018-008086
Application 14/222,129
10
forth an improvement in technology. The Update, addresses how we
consider any evidence that is presented to us. The Update states:
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
change treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.”
Update, 11 (emphases added). The Update further states:
[d]uring examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
We disagree with Appellant’s argument that the present claims recite
an unconventional solution to a technical problem by making funds available
Appeal 2018-008086
Application 14/222,129
11
for gaming to solve a cash availability problem faced in gaming
establishments such as casinos. Appeal Br. 21–22, 24–39 (citing Amdocs
841 F.3d at 1288; Spec. ¶¶ 3, 15, 41, 44, 48); Reply Br. 24–34. In this case,
the Examiner concludes that the present claims do not recite an improvement
to technology. Final Act. 4; Ans. 12–14. Consequently, we focus on any
evidence Appellant cites as discussed in the Update.
The paragraphs relied upon by Appellant merely discuss making
funds available for gaming designed to solve a cash availability problem
faced in gaming establishments such as casinos. Spec. ¶¶ 3, 15, 41, 44, 48
(cited at Appeal Br. 21–22, 24–39). This alleged unconventional solution to
a technical problem is a solution in making funds available quickly in a
casino or gaming environment, which falls within the category of an abstract
idea, as discussed supra, not an unconventional solution to a technical
problem.
We are not persuaded Appellant’s citation to Amdocs demonstrates
the present claims recite a technical solution. Appeal Br. 21–22, 24–
39. The subject claim considered by the Amdocs court related to distributed
architecture that led to load distribution, which was an advantage over the
prior art because it made it easier to keep up with record flows, allow for
smaller databases, and minimize impact on network and system
resources. Amdocs, 841 F.3d at 1303. Additionally, the court construed the
claim limitation “enhance” to mean “to apply a number of field
enhancements in a distrusted fashion.” Id. at 1292, 1300. In contrast to the
claims of Amdocs, the present claims do not pertain to field enhancement in
a distributed network.
Instead, the present claims recite an abstract idea as discussed supra,
in § D.1. or at best, improving an abstract idea—not a technological
Appeal 2018-008086
Application 14/222,129
12
improvement. The Specification indicates the additional elements (i.e.,
“handheld device,” “card data receiver,” “display,” “input device,” “output
device,” “EMV chip,” “touch screen,” “touch screen button,” “keypad”
“stylus,” “image repository,” “handheld mobile device,” “gaming device,”
“cage,” “customer input device,” “printer,” “interface unit,” and “Automated
Clearing House”) recited in the present claims are merely generic computer
components used to implement the abstract idea. Spec. ¶¶ 14–28. Further,
the generic computer components, individually or in combination, do not
integrate the judicial exception into a practical application.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellant’s argument that the present claims do not preempt any
abstract idea does not persuade us that the claims are eligible. Appeal
Br. 20; Reply Br. 24. Although preemption may denote patent ineligibility,
its absence does not demonstrate patent eligibility. See FairWarning, IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
Appeal 2018-008086
Application 14/222,129
13
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented with additional elements that are well-understood, routine, and
conventional. Final Act. 4–6; Ans. 5 (citing Alice, 573 U.S. at 225–26); see
also USPTO Commissioner for Patents Memorandum dated Apr. 9, 2018,
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision” (Berkheimer v. HP, Inc.)
(explaining that citing relevant cases is one way to support this finding).
The Specification supports the Examiner’s determination in this regard
because it explains that “handheld device,” “card data receiver,” “display,”
“input device,” “output device,” “EMV chip,” “touch screen,” “touch screen
button,” “keypad” “stylus,” “image repository,” “handheld mobile device,”
“gaming device,” “cage,” “customer input device,” “printer,” “interface
unit,” and “Automated Clearing House” recited in the present claims are
generic computer components. Spec. ¶¶ 14–28. Appellant’s Specification
indicates these additional elements were well-understood, routine, and
conventional components because it describes them at a high level of
generality and in a manner that indicates that they are sufficiently well-
known. Id. Moreover, the additional elements recited in the present claims,
analyzed individually or in combination, do not result in the claims, as a
whole, amounting to significantly more than the judicial exception.
We, therefore, disagree with Appellant’s argument that the Examiner
fails to provide factual evidence to support the determination that the present
claims represent a well-understood, routine, conventional activity. Reply
Br. 20, 26. We also disagree with Appellant’s argument that the present
claims recite a non-conventional and non-generic arrangement of known,
Appeal 2018-008086
Application 14/222,129
14
conventional elements, which results in an inventive concept. Appeal
Br. 22, 25, 27, 29–32, 34, 36, 38–39 (citing BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016));
Reply Br. 26–34.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (Emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional,” (emphasis added)).
In BASCOM, the claims were directed to “a filter implementation
versatile enough that it could be adapted to many different users’ preferences
while also installed remotely in a single location.” BASCOM, 827 F.3d at
1348–51. The inventive concept was “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user” that “gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server.” Id. at 1350. Thus, when considered as an ordered combination, the
Appeal 2018-008086
Application 14/222,129
15
court concluded the claims provided “an inventive concept can be found in
the non-conventional and non-generic arrangement of known, conventional
pieces.” Id. Here, the present claims recite an abstract idea using additional
elements that are generic computer components as discussed supra, in
§§ I.D.1. and I.D.2. or at best, improving an abstract idea—not an inventive
concept for the reasons discussed in § I.D.2. Accordingly, Appellant’s
assertion fails to identify error in the Examiner's findings.
Independent claims 4, 10, 15, 18, 23, 26, 33, and 34 recite similar
features as independent claims 1 and 7. Appellant does not argue the
dependent claims separately with particularity, but asserts the § 101 rejection
of those claims should be withdrawn for at least the same reasons as argued
for the independent claims. Appeal Br. 39–40. Accordingly, we sustain the
Examiner’s rejection of: (1) independent claims 1, 4, 7, 10, 15, 18, 23, 26,
33, and 34; and (2) dependent claims 2, 3, 5, 6, 8, 9, 11–14, 16, 17, 19–22,
24, 25, and 27–32 under 35 U.S.C. § 101.
II. Claims 1–34 Rejected Under 35 U.S.C. § 103
A. Claims 1–9 and 15–22
The Examiner finds DeCristoforo teaches receiving an electronic
signature from a patron and printing receipts or checks to create a negotiable
instrument for the patron at a gaming environment. Final Act. 5–6 (citing
DeCristoforo, 2:10–41); Ans. 10 (citing DeCristoforo, 2:45–47). The
Examiner finds Calman teaches executing ATM transactions at a handheld
mobile device. Final Act. 6 (citing Calman, Abstract, ¶ 39). The Examiner
finds McKelvey teaches receiving a credit card swipe and an electronic
signature from a customer to execute a financial transaction at a handheld
mobile device. Ans. 11, 16 (citing McKelvey, Fig. 15). The Examiner finds
Iversen teaches EMV smartcards are equivalent to bank cards. Final Act. 6
Appeal 2018-008086
Application 14/222,129
16
(citing Iversen ¶¶ 1, 17). The Examiner concludes that it would have been
obvious to a person having ordinary skill in the art at the time of the
invention (“PHOSITA”) to combine DeCristoforo, Calman, McKelvey, and
Iversen as the advantages of mobility are common to all financial
transactions. Final Act. 6; Ans. 15–17.
Appellant argues DeCristoforo fails to teach a “handheld device” as
recited in claim 1. Appeal Br. 41, 48, 50; Reply Br. 6. Appellant argues
Calman fails to generate a negotiable instrument and achieve carrying out a
transaction at a handheld device. Appeal Br. 41–42, 44–45, 48–50; Reply
Br. 6–7. Appellant argues there is no reason a skilled artisan would look to
McKelvey so as to make a patron’s own funds available to that patron.
Appeal Br. 42, 45. McKelvey fails to teach employing a read head device to
allow a customer to select “(1) an electronic endorsement from the customer
and placement of the electronic endorsement in an electronic image, or (2) a
printout of a hard copy of an electronic image, which represents a negotiable
instrument” as recited in claim 18 (and similarly recited in claim 15).
Appeal Br. 48–50. Appellant argues Iversen fails to teach EMV smartcards
that are bank cards. Appeal Br. 42–43. Appellant argues the Examiner’s
rationale relies on impermissible6 hindsight and falls short of the requisite
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Appeal Br. 43, 45–46, 50; Reply Br. 4–5.
Appellant argues Calman’s system requires a user to go up to an ATM to
initiate a transaction, but omitting the ATM in Calman would render Calman
unsuitable for its intended purpose. Reply Br. 7, 11–12. We disagree with

6 Although Appellant repeatedly refers to this as merely “hindsight”
throughout the Briefs, we construe Appellant to mean “impermissible
hindsight.”
Appeal 2018-008086
Application 14/222,129
17
Appellant.
As for the first five arguments above, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). In this case, the Examiner relies on DeCristoforo to teach receiving
an electronic signature from a patron and printing receipts or checks to
create a negotiable instrument at a gaming environment. Final Act. 5–6
(citing DeCristoforo, 2:10–41); Ans. 10 (citing DeCristoforo, 2:45–47).
Calman teaches executing ATM transactions at a handheld mobile device.
Calman, Abstract, ¶ 39 (cited at Final Act. 6). McKelvey teaches receiving
a credit card swipe and an electronic signature from a customer to execute a
financial transaction at a handheld mobile device. McKelvey, Fig. 15 (cited
at Ans. 11, 16). Iversen teaches EMV smartcards are equivalent to bank
cards. Iversen ¶¶ 1, 17 (cited at Final Act. 6).
As for Appellant’s hindsight argument (Appeal Br. 43, 45–46, 50;
Reply Br. 4–5), in reviewing the record here, we find Appellant has not
identified any knowledge relied upon by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of application filing. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the Examiner
relies on various passages from DeCristoforo, Calman, McKelvey, and
Iversen to support their underlying factual findings that lead to a conclusion
that a PHOSITA would have combined those references. Final Act. 6; Ans.
15–17. Therefore, we find Appellant’s hindsight argument unpersuasive.
Moreover, Appellant has not provided persuasive evidence that
combining the respective teachings of the references (as concluded by the
Appeal 2018-008086
Application 14/222,129
18
Examiner —Final Act. 6; Ans. 15–17) would have been “uniquely
challenging or difficult for one of ordinary skill in the art,” or that such a
combination would have “represented an unobvious step over the prior art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007). Nor has Appellant provided any objective evidence of secondary
considerations, which, as our reviewing court explains, “operate[] as a
beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
We disagree with Appellant’s argument that omitting the ATM in
Calman would render Calman unsuitable for its intended purpose. Reply
Br. 7, 11–12. Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art, and are therefore ineffective to rebut the Examiner’s prima
facie case of obviousness. The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. “The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007).
Accordingly, constrained by the current record, we sustain the
Appeal 2018-008086
Application 14/222,129
19
Examiner’s rejection for: (1) independent claims 1, 4, 7, 15, 18;7 and (2)
dependent claims 2, 3, 5, 6, 8, 9, 16, 17, 19–22 under 35 U.S.C. § 103.
B. Claims 23–25 and 30–32
The Examiner finds Calman teaches a handheld mobile device is
voice-activatable as required by claims 23 and 30. Ans. 12 (citing Calman,
Brief Summary).
Appellant argues none of the cited references teach a handheld mobile
device is voice-activatable. Appeal Br. 51; Reply Br. 13, 31. We agree with
Appellant.
The cited portions of Calman relied upon by the Examiner fail to
teach a handheld mobile device is voice-activatable as required by claims 23
and 30. Ans. 12 (citing Calman, Brief Summary).
Accordingly, we do not sustain the Examiner’s rejection for:
(1) independent claim 23; and (2) dependent claims 24, 25, and 30–32 under
35 U.S.C. § 103.
C. Claims 10–14, 26–29, 33, and 34
Appellant argues the Examiner fails to support a conclusion that the
claim would have been obvious to one of ordinary skill in the art because the
Examiner fails to articulate any of findings (1)–(5) as required by MPEP
§ 2143(I)(F). Reply Br. 9–10, 14–18.8 We agree with Appellant.

7 Claims 7 and 15 are method claims and recite conditional limitations. In
the event of further prosecution, the Examiner may want to consider whether
claims 7 and 15 invoke Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792 (PTAB Apr. 28, 2016) (precedential).
8 Although Appellant argues this for the first time in the Reply Brief, this
argument is timely because the Examiner makes the “market forces”
conclusion for the first time in the Answer. Comp. Final Act. (lacking an
explanation for limitations and a rationale to combine references for
independent claims 10, 26, 33, and 34) with Ans. 18, 20.
Appeal 2018-008086
Application 14/222,129
20
The Examiner concludes a person having ordinary skill in the art
would have combined DeCristoforo, Calman, McKelvey, and Iversen
as set forth in the MPEP “Known Work in One Field of
Endeavor May Prompt Variations of it for Use in Either the
Same Field or a Different One Based on Design Incentives or
Other Market Forces if the Variations Are Predictable to One of
Ordinary Skill in the Art.”
Ans. 18, 20.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v.
State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation
marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp.,
814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative
agency, the PTAB “must articulate logical and rational reasons for [its]
decisions” (internal quotation marks and citation omitted)). We will not
resort to speculation or assumptions to cure the deficiencies in the
Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
MPEP § 2143(I)(F) requires that when a rejection is based on a
market forces rationale, Office personnel must resolve the Graham factual
inquiries. MPEP § 2143(I)(F). Then, Office personnel must articulate the
following:
(1) a finding that the scope and content of the prior art, whether
in the same field of endeavor as that of the applicant's invention
or a different field of endeavor, included a similar or analogous
device (method, or product);
(2) a finding that there were design incentives or market forces
which would have prompted adaptation of the known device
(method, or product);
Appeal 2018-008086
Application 14/222,129
21
(3) a finding that the differences between the claimed invention
and the prior art were encompassed in known variations or in a
principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the
identified design incentives or other market forces, could have
implemented the claimed variation of the prior art, and the
claimed variation would have been predictable to one of ordinary
skill in the art; and
(5) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
Id.
In this case, the Examiner does not articulate any factors. Instead, the
Examiner gives a conclusory motivation by copying and pasting the heading
in MPEP § 2143(I)(F). Ans. 18, 20. At best, the Examiner leaves us to
speculate as to how or why one of ordinary skill in the art would modify the
combination of DeCristoforo, Calman, McKelvey, and Iversen to meet the
limitations recited in claim 10, 26, 33, and 34. Ans. 18, 20. We will not
resort to speculation or assumptions to cure the deficiencies in the
Examiner’s fact finding and reasoning. See In re Warner, 379 F.2d at 1017;
Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished)
(“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the
examiner . . . invite[s] the [B]oard to examine the application and resolve
patentability in the first instance.”). As such, based on the record before us,
we find that the Examiner (i) improperly relies upon the combination of
DeCristoforo, Calman, McKelvey, and Iversen to teach or suggest the
limitations as set forth in claims 10, 26, 33, and 34; and thus, (ii) has not
properly established factual determinations and articulated reasoning with a
rational underpinning to support the legal conclusion of obviousness for
claims 10, 26, 33, and 34, resulting in a failure to establish a prima facie
Appeal 2018-008086
Application 14/222,129
22
case of obviousness.
Accordingly, we do not sustain the Examiner’s rejection for:
(1) independent claims 10, 26, 33, and 34; and (2) dependent claims 11–14
and 27–29 under 35 U.S.C. § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION

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. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–34 101 Eligibility 1–34
1–34 103 DeCristoforo,
Calman,
McKelvey, Iversen
1–9, 15–22 10–14, 23–
34
Overall
Outcome
1–34