Mark Carlson et al.

Patent Trials and Appeals Board

Jan 8, 2020

11962836 - (D) (P.T.A.B. Jan. 8, 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.
11/962,836 12/21/2007 Mark Carlson 80083-731724(028540US) 8887
66945 7590 01/08/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/08/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK CARLSON, PATRICK STAN, and
PATRICK FAITH
____________

Appeal 2018-006398
Application 11/962,836
Technology Center 3600
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 7, 13, 14, 30–33, 37–39, 45–48,
and 50–55, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Visa
U.S.A. Inc. Appeal Br. 2.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The Appellant’s invention is generally “directed to improved
consumer notification systems and methods” (Spec. ¶ 5), and more
particularly to “[c]ustomized payment transaction notification systems and
methods . . . [that] can be used in the context of payment transactions using
payment processing systems, which are configured to process credit and
debit card transactions” (id. ¶ 18).
Claims 1 and 13 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below (with added bracketing
for reference):
1. A method comprising:
[(a)] receiving from a consumer, by a computer system in
a payment processing network via a user interface in a client
computer, a plurality of different user specified, customized
notification event triggers comprising threshold amounts, the
customized notification event triggers for determining when
alerts for transactions conducted on a plurality of accounts
associated with the consumer are sent, a plurality of different
user specified time periods for receiving transaction alerts
respectively associated with the different customized notification
event triggers, and a plurality of different user specified
communication modes respectively associated with the different
user specified customized notification event triggers, wherein the
different time periods and the different user specified
communication modes are applied across the plurality of
accounts;
[(b)] receiving, at the computer system in the payment
processing network, an authorization request message
comprising a transaction amount sent by an access device at a
merchant, the authorization request message requesting
authorization of a transaction utilizing a portable consumer
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device associated with one of the plurality of accounts associated
with the consumer, wherein the payment processing network is
configured to process credit and debit card transactions;
[(c)] analyzing, by the computer system, the authorization
request message to determine if the transaction is above a risk
threshold, wherein the computer system is programmed to send
alert messages if transactions are above the risk threshold but
does not send alert messages if the transactions are below the risk
threshold;
[(d)] determining, by the computer system, that the
transaction is above the risk threshold;
[(e)] in response to determining that the transaction is
above the risk threshold, evaluating, by the computer system in
the payment processing network, the authorization request
message and determining that the transaction that is occurring
meets a customized notification event trigger in the plurality of
different user specified customized notification event triggers,
wherein the customized notification event trigger includes a
threshold transaction amount;
[(f)] transmitting, by the computer system in the payment
processing network, an alert to a notification device operated by
the consumer according to the time and communication mode
associated with the user specified customized notification event
trigger;
[(g)] determining, by the computer system in the payment
processing network, that the consumer did not receive the alert;
[(h)] determining, by the computer system in the payment
processing network, that the alert should be escalated;
[(i)] sending, by the computer system in the payment
processing network, an escalated alert to the consumer;
[(j)] receiving, by the computer system in the payment
processing network and from the consumer, a response to the
escalated alert indicating that the transaction should not be
authorized; and
[(k)] determining, by the computer system in the payment
processing network, that the transaction should not be authorized
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based on the response to the escalated alert that indicates that the
transaction should not be authorized.
Appeal Br. 34–35 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Briancon et al. (“Briancon”) US 5,883,580 Mar. 16, 1999
Ahuja et al. (“Ahuja”) US 2002/0013711 A1 Jan. 31, 2002
Chesnais et al. (“Chesnais”) US 2002/0087704 A1 July 4, 2002
Shteyn US 2002/0133462 A1 Sept. 19, 2002
Fei et al. (“Fei”) US 2003/0040959 A1 Feb. 27, 2003
Antonucci US 2003/0212595 A1 Nov. 13, 2003
Malik et al. (“Malik”) US 2005/0097473 A1 May 5, 2005
Lipton et al. (“Lipton”) US 2005/0094788 A1 May 5, 2005
MCruz, “http://www. numbrx.net/2006/05/26/mt-bank-data-breach-
notification-letter/” (May 26, 2006) (“MCruz”)

REJECTIONS2
Claims 1, 4, 7, 13, 14, 30–33, 37–39, 45–48, and 50–55 stand rejected
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
Claims 1, 4, 7, 13, 14, 33, 37–39, 45, 48, and 50–55 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being obvious over Ahuja, Chesnais,
Shteyn, and Malik.
Claim 30 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Ahuja, Chesnais, Shteyn, Malik, and Lipton.

2 The Examiner withdraws the rejections of claims 1–16 under pre-AIA
35 U.S.C. § 112, first and second paragraphs. Ans. 2.
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Claim 31 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Ahuja, Chesnais, Shteyn, Malik, and MCruz.
Claim 32 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Ahuja, Chesnais, Shteyn, Malik, and Briancon.
Claim 46 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Ahuja, Chesnais, Shteyn, Malik, and Fei.
Claim 47 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Ahuja, Chesnais, Shteyn, Malik, and Antonucci.

OPINION
Patentable Subject Matter
35 U.S.C. § 101 Framework
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 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. 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 Supreme Court’s two-step 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)
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(“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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (185))); 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 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 176; 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. (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
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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-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 [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.
After the Appellant’s briefs were filed and the Examiner’s Answer
mailed, 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”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that are considered an abstract
idea; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
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or after January 7, 2019. Id.3 Under the 2019 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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
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.
See 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Reciting a Judicial Exception
Under the first step of the Mayo/Alice framework and Step 1 of Office
Guidelines (see 2019 Revised Guidance, 84 Fed. Reg. at 53–54), the
Examiner first determines “claims 1, 4, 7, 30–33, 37–39, 45–48 and 50–54

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).
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are directed to a process and claims 13, 14 and 55 are directed toward a
system or device,” i.e., a process and a machine, two of the categories of
statutory subject matter. Final Act. 3.
Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidance, 84 Fed. Reg. at 54, the Examiner
determines
the claims are directed towards alerting customers, based on
triggers or events, which is considered to be an abstract idea
inasmuch as receiving requests, evaluating those requests,
determining to send an alert and sending the alert, are activities
that are considered both fundamental economic or business
practices, an idea of itself, and a mathematical relationship or
formula (by providing an algorithm (formula) in the form of a
flowchart that dictates the step by step process steps to perform
the claimed invention). Specifically it is the business practice of
monitoring your customer’s transactions for specific events and
notifying the customer when those events occur, such as possible
fraudulent activity or misuse of a payment device such as a credit
card. Further as claimed the invention is directed toward
collecting information, comparing the information to previously
received information, using rules and determining options such
as when to send alerts based on these rules.
Id. When viewed through the lens of the 2019 Revised Guidance, the
Examiner’s analysis depicts the claimed subject matter as a “[c]ertain
method[] of organizing human activity—fundamental economic principles
or practices (including hedging, insurance, mitigating risk)” and a “[m]ental
process[]—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” 2019 Revised Guidance,
84 Fed. Reg. at 52 (footnotes omitted).
The Appellant contends that “the alleged abstract idea is untethered
from the language of the claims” and “the Examiner fails to take into
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account the specific combination of limitations in the claims.” Appeal
Br. 12. The Appellant does not state to what they consider the claims to be
directed.
Before determining whether the claims at issue are directed to an
abstract idea, we first determine to what the claims are directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, including the claim language, that
claims 1 and 13 focus on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “CUSTOMIZED PAYMENT
TRANSACTION NOTIFICATION.” Spec., Title. In the “Background”
section, the Specification provides consumers may want to be notified when
their credit cards are used, but they may not be at home, answer the phone
number on record, want to receive a call at certain hours, or want to wait a
few days for a letter to receive such notifications. See Spec. ¶ 3. “Thus,
conventional notification methods may not be very effective for notifying
the consumer of potentially fraudulent or unauthorized credit card activity.”
Id. The invention aims to address these problems by providing
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“[c]ustomized payment transaction notification systems and methods.” Id.
¶ 18.
Consistent with the disclosure, independent claim 1 is illustrative and
recites “[a] method comprising:” the steps of: (a) “receiving . . . customized
notification event triggers comprising threshold amounts”; (b) “receiving . . .
an authorization request message comprising a transaction amount” from a
merchant’s access device (c) “analyzing . . . the authorization request
message to determine if the transaction is above a risk threshold”;
(d) “determining . . . the transaction risk is above the risk threshold”;
(e) “evaluating . . . the authorization request message and determining that
the transaction that is occurring meets a customized notification event
trigger” from the received triggers and including a threshold amount;
(f) “transmitting . . . an alert to a notification device” according to time and
mode associated with the received triggers; (g) “determining . . . that the
consumer did not receive the alert”; (h) “determining . . . that the alert
should be escalated”; (i) “sending . . an escalated alert to the consumer”;
(j) “receiving . . . a response . . . indicating that the transaction should not be
authorized”; and (k) “determining . . . that the transaction should not be
authorized based on the response.” Appeal Br. 34–35. Independent
claim 13 recites a server computer comprising a processor and medium to
implement the method with steps as recited in claim 1. See id. at 36–37.
When considered collectively and under the broadest reasonable
interpretation of the claims’ limitations, we agree with the Examiner that the
claims recite a method for alerting customers of a potentially fraudulent
transaction in accordance with customized triggers of when, how, and where
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to be notified.4 Limitations (a), (b), and (j) are steps of receiving data, which
is an extra-solution activity. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity).
The limitations of analyzing, determining, and evaluating
(limitations (c), (d), (e), (g), (h), and (k)) are functionally recited without any
detail regarding how the results are accomplished, i.e., in what way(s)
technologically or by what algorithm. In light of the Specification, these
limitations comprise performing comparisons to see if data match and
checking/comparing data, i.e., some form of analysis of data. See Spec.
¶¶ 55, 68, 70. Analyzing/comparing data is a mental process. See Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(citing cases) (“we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes”).
The limitations of transmitting and sending alerts based on the
received and analyzed data (limitations (f) and (i)) are steps of providing
results of the analysis, a post-solution activity and ordinarily done in alerting
customers of potential fraud. See Flook, 437 U.S. at 590; FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (quoting
Elec. Power, 830 F.3d at 1353).

4 We note 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). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Alerting customers of a potentially fraudulent transaction in
accordance with customized triggers of when, how, and where to be notified
is similar to the concepts of collecting and analyzing information for the
purpose of preventing improper access in FairWarning, 839 F.3d at 1093–
94, of verifying the validity of a credit card transaction over the Internet in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011), and of identifying unwanted files in a computer network in
Intellectual Ventures I LLC v. Erie Indem. Co., 711 F. App’x 1012, 1015
(Fed. Cir. 2017). Accordingly, we conclude the claims recite a way of
alerting customers of potential fraudulent transactions based on customer-
provided preferences, which is a commercial interaction, one of the certain
methods of organizing human activity as identified in the 2019 Revised
Guidance, 84 Fed. Reg. at 52, and thus, an abstract idea. As such, we
disagree with the Appellant’s contentions that “the alleged abstract idea is
untethered from the language of the claims” and that “the Examiner fails to
take into account the specific combination of limitations in the claims.”
Appeal Br. 12; see also id. at 13.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claims “apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claims are more than a drafting effort designed to
monopolize the judicial exception,” i.e., “integrate a judicial exception into a
practical application.” Here, the only additional elements recited in the
independent claims beyond the abstract idea are “a computer system in a
payment processing network”; “a user interface”; “a client computer”; “an
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access device”; “a notification device”; and “[a] server computer
comprising: a processor; and [a] computer readable medium coupled with
the processor, the computer readable medium storing instructions for
implementing a method” — elements that, as the Examiner observes (Final
Act. 4–5), are described in the Specification as generic computer
components (see, e.g., Spec. ¶¶ 21–42, 78–80, Figs. 1, 2)). For example, the
computer system comprises a “server computer” that can be “a large
mainframe, a minicomputer cluster, or a group of servers functioning as a
unit. In one example, the server computer may be a database server coupled
to a Web server.” Id. ¶ 33. The payment processing network “may include
data processing subsystems, networks, and operations used to support and
deliver authorization services, exception file services, and clearing and
settlement services” (id. ¶ 32) and “may use any suitable wired or wireless
network, including the Internet” (id. ¶ 33). The consumer device “may be in
any suitable form,” such as “smart cards, ordinary credit or debit cards (with
a magnetic strip and without a microprocessor), keychain devices . . ., etc.[,]
. . . cellular or mobile phones, personal digital assistants (PDAs), pagers,
payment cards, security cards, access cards, smart media, transponders, and
the like” (id. ¶ 25), and the access device “can be in any suitable form,”
such as “point of sale (POS) devices, cellular or mobile phones, PDAs,
personal computers (PCs), tablet PCs, handheld specialized readers, set-top
boxes, electronic cash registers (ECRs), automated teller machines (ATMs ),
virtual cash registers (VCRs ), kiosks, security systems, access systems, and
the like” (id. ¶ 35). We find no indication in the Specification, nor does the
Appellant direct us to any indication, that the operations recited in claims 1
and 13 require any specialized computer hardware or other inventive
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computer components, i.e., a particular machine, invoke any asserted
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform the generically claimed
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
The Appellant contends that the claims
share substantial similarities to the claims of DDR Holdings, LLC
v. Hotels.com . . . . In DDR Holdings, the involved claims were
found to not be directed to an abstract idea because they were
necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
technology. Similarly, here, the recited claim elements clearly
improve the functioning of the computer and improve upon
conventional notification systems.
Appeal Br. 14; see also id.at 17 (“the recited claim elements clearly improve
the functioning of the computer. Appellant has already provided arguments
as to why embodiments of invention provide for improved alert systems.”).5
When viewed through the lens of the 2019 Revised Guidance, the Appellant
contends that under Prong Two, the elements of the claim integrate the
abstract idea into a practical application because the combination of the
elements “reflects an improvement in the functioning of a computer, or an

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate them under Step 1 of Alice (Step 2A of 2019 Revised Guidance).
See 2019 Revised Guidance, 84 Fed. Reg. at 55.
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improvement to other technology or technical field.” 84 Fed. Reg. at 55.
We disagree.
Specifically, the Appellant contends that the claims address the
problem of “conventional notification methods [being] . . . not particularly
effective for notifying the consumer of potentially fraudulent or
unauthorized credit card activity.” Appeal Br. 15. However, the Appellant
does not discuss why, technologically, they are not effective. And we note
that the Specification discusses that previous methods may not be effective
because “the consumer may not be at home or may not answer the phone
and a letter may take a few days to arrive at the consumer’s home,” and may
not want to receive a call at certain times. Spec. ¶ 3. There is no discussion
of any issues specifically related to computer technology. Notifying a
consumer of potential fraud or unauthorized transactions is not a problem
specifically arising in the realm of computer networks, but one that existed
prior to the Internet. See FairWarning, 839 F.3d at 1094–95 (claims asking
whether accesses of data met certain criteria asked “same questions (though
perhaps phrased with different words) that humans in analogous situations
detecting fraud have asked for decades, if not centuries.”).
Further, the purported solution of “allowing an alert to be sent at a
time specified by a user and a communication mode specified by a user,
when a customized notification event trigger comprising a threshold
transaction amount is met,” thereby “ensur[ing] that that the consumer will
not only receive the alert messages, but will also only receive alert messages
that are associated with objectively risky transactions in the manner
specified by the user” (Appeal Br. 15) is not rooted in computer technology.
This purported solution requires the use of a generic computer system, a
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generic payment network, generic devices, a generic user interface, a generic
computer, and a generic server operating in their ordinary and conventional
capacities. See supra; see also Alice, 573 U.S. at 224–26. The Appellant
does not, and cannot, claim to have invented the use of the system, network,
devices, interface, computer, or server. The “focus” of the claim is not “on
the specific asserted improvement in computer capabilities” (Enfish,
822 F.3d at 1336), but rather on using the computer components as tools to
implement the abstract idea in the particular field of electronic transactions
and notifications. See FairWarning, 839 F.3d at 1094–95, 1097 (“while the
patent may in fact require that the claimed data relate to ‘transactions or
activities that are executed in the computer environment,’ . . . limiting the
claims to the computer field does not alone transform them into a patent-
eligible application.”); Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court and [the Federal
Circuit] have repeatedly made clear that merely limiting the field of use of
the abstract idea to a particular existing technological environment does not
render the claims any less abstract.”). Any improvement to the
“conventional transaction fraud notification systems and methods” (Appeal
Br. 15) lies in when and where the notification is sent, an improvement in
the abstract idea itself, not to any technological improvement. See BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
The Appellant further argues “[l]ike the claims at issue in McRO, the
current claims are directed to ‘a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired results.’ In particular, embodiments of the [sic] improve upon
conventional notification systems.” Appeal Br. 21 (citing McRO, Inc. v.
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Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). In McRO,
the claims were directed to a specific improvement in computer animation
and used rules to automate a subjective task of humans to create a sequence
of synchronized, animated characters. See McRO, 837 F.3d at 1314–15.
Unlike Flook, Bilski, and Alice, it was not the use of the computer but the
incorporation of the rules that improved an existing technological process.
Id. at 1314. Here, as discussed above, there is no such improvement to
technology or a technological process. The Appellant also does not direct
our attention to anything in the Specification to indicate that the invention
provides a technical improvement in the steps of receiving data, analyzing
data, making determinations of the data, evaluating data, transmitting data,
and sending or not sending data, or that claims 1 and 13 incorporate rules to
automate a subjective task of humans, as in McRO. See FairWarning,
839 F.3d at 1394–95.
Thus, we are not persuaded of error in the Examiner’s determination
that claims 1 and 13 are directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the claims’ limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
exception and that “[t]he claims require no more than a generic computer to
perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.” Final Act. 4–5;
see also Ans. 18, 24.
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The Appellant “submits that the claims recite a number of features
that rise above that which is ‘well-understood, routine and conventional in
the field,’” recites limitations (c) through (i) of analyzing, determining,
evaluating, transmitting, and sending, and states that the combination of
these limitations “is not ‘well-understood, routine and conventional in the
field.’ And, the Examiner has provided no evidence to the contrary.”
Appeal Br. 16–17; see also Reply Br. 36. We are not persuaded of Examiner
error by this argument.
The Examiner cites to the Specification as support for the claimed
components being conventional (see Final Act. 4–5 (citing Spec. ¶¶ 25, 33))
and to case law as support for the claimed functions being well-understood,
routine, and conventional (see Ans. 19 (citing Elec. Power, 830 F.3d at
1354). In doing so, the Examiner followed “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir.
2018)],” USPTO Memorandum, Robert W. Bahr, Deputy Commissioner for
Patent Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is

6 The Appellant clarifies that this argument is “not [an] assert[ion] that the
claims should be patentable under § 101 because they are patentable under
§ 102 or §103.” Reply Br. 5.
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well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”). Here, the Specification
indisputably shows the claimed computing system in a payment processing
network, user interface, client computer, access device, notification device,
and server computer were conventional at the time of filing. See supra;
Spec. ¶¶ 21–42, 78–80, Figs. 1, 2. Accordingly, no genuine issue of material
fact exists as to the well-understood, routine, or conventional nature of the
systems, interface, devices and server computer as claimed.
We note that, as discussed above with respect to Step 1 of the
Alice/Mayo framework, the claims simply recite the functional results to be
achieved by a conventional computing system and server. The claims
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“provide[] only a result-oriented solution[] with insufficient detail for how a
computer accomplishes it. Our law demands more.” Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017)
(“Capital One”). Taking the claimed elements separately, the functions
performed by the computer are purely conventional. The claimed computing
components comprise generic computing devices (see supra) and operate in
their ordinary and conventional capacities to perform the well-understood,
routine, and conventional functions of receiving, analyzing, determining,
evaluating, transmitting, and sending data, . See Elec. Power, 830 F.3d at
1355 (gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); FairWarning, 839 F.3d at 1095 (generating a rule related to
accessing information, applying the rule, and storing and announcing the
result did not transform the abstract idea into a patent-eligible invention);
Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of receiving, analyzing (including
determining and evaluating), transmitting, determining, sending, receiving,
and determining data, is equally generic and conventional or otherwise held
to be abstract. See Elec. Power, 830 F.3d at 1354–56 (holding that the
sequence of receiving, detecting, analyzing, displaying, accumulating,
updating, and deriving data was abstract); Fair Warning, 839 F.3d at 1095
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(holding that sequence of receiving, generating, determining, and providing
data was abstract); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data
retrieval, analysis, modification, generation, display, and transmission was
abstract).
The Appellant further argues that the clams are analogous to claim 2
of Example 21 published by USPTO in the July 2015 Update (hereinafter
“2015 Update”). Appeal Br. 18–20. We disagree. Claim 1 of hypothetical
Example 21 was considered ineligible, and claim 2, which addressed “the
Internet‐centric challenge of alerting a subscriber with time sensitive
information when the subscriber’s computer is offline” by a transmission of
an alert to an application that “cause[d] the alert to display and enable[d] the
connection of the remote subscriber computer to the data source over the
Internet when the remote subscriber computer comes online,” was
considered eligible. See July 2015 Update, Appendix 1. Thus, claim 2 was
similar to DDR Holdings in solving an Internet-centric problem with a
solution necessarily rooted in computer technology. Id.; see also Appeal
Br. 20. Here, independent claims 1 and 13 contain no comparable limitation
and are similar to hypothetical claim 1. Further, as discussed above, the
claims do not solve a problem specifically arising in the realm of computer
networks with a solution necessarily rooted in computer technology.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claims 1 and 13 do not transform the claims into
significantly more than the abstract idea.
The Appellant also contends that the Examiner errs in not explaining
each claim individually. Appeal Br. 21; Reply Br. 12. However, there is no
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specific requirement that each claim be examined individually by the
Examiner in determining that the claims are directed to an abstract idea. See
Alice, 573 U.S. 208 at 217–21 (addressing the claims together). The
Examiner includes the dependent claims with the analysis of the independent
claims. See Final Act. 2, 3, 5. There is no indication that the Appellant was
not put on notice of the Examiner’s rejection regarding claims 4, 7, 14, 30–
33, 37–39, 45–48, and 50–55. Moreover, the Appellant does not provide
any individual argument against any of these dependent claims 4, 7, 14, 20,
32, 22, 37, 45–47, 51, and 53–55. See Appeal Br. 21–22.
The Appellant contends that “[d]ependent claims 31, 38, 39, 48, 50,
and 52 are patent eligible, since they depend from a patent eligible
independent claim.” Appeal Br. 22. But, we are not persuaded of error in
the Examiner’s rejection of the independent claims as patent ineligible. The
Appellant also argues that the dependent claims “provide further technical
advantages.” Id. However, the additional advantages of “the consumer
know[ing] that the alert is specifically directed towards activity that pertains
to them, and is not simply any random message that is being sent” (id.); “the
server computer . . . knowing whether to even send an additional alert, to
resend another alert through another communication channel or to another
device” so as to be more productive (id. at 23), “the issuer of the account . . .
[being able to] provide specific rules to a server computer to determine
whether or not to provide an alert” (id.), “providing more refined rules
regarding whether or not to provide an alert” (id.), and “ensuring that the
consumer is more likely to receive the alert by attempting to communicate
with the consumer through a different communication mode” (id. at 24) are
not technical advantages, but advantages to consumer convenience. As
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discussed above with reference to DDR Holdings, the purported solution is
not necessarily rooted in computer technology and does not overcome a
problem specifically arising in the realm of computer technology.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of claims 1, 4, 7, 13, 14, 30–33, 37–39, 45–48, and
50–55.
Obviousness
The Appellant contends, in relevant part, that the Examiner’s rejection
of independent claims 1 and 13 is in error because the prior art references
fail to teach analyzing the authorization request message to determine if the
transaction is above a risk threshold, not sending if the transaction is below
the risk threshold, and if the transaction is above the risk threshold,
evaluating the request message and determining that it meets a threshold
transaction amount customized event trigger, as recited in limitations (c),
(d), and (e) of limitation 1 and similarly recited in claim 13. See Appeal
Br. 27. We agree.
The Examiner finds that Ahuja teaches receiving from a computer
customized event triggers comprising a time period for receiving alerts,
communication modes, and specific trigger thresholds for account
notifications; receiving a payment authorization request message; analyzing
the request message to determine if the transaction is above a risk threshold;
determining that the transaction is above the risk threshold; and in response
to that determination and a determination that the transaction meets an event
trigger, transmitting an alert to a consumer device according to the time,
communication mode, and triggers, as recited in limitations (a) through (f) of
claim 1, and similarly recited in claim 13. See Final Act. 6–10 (citing Ahuja
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¶¶ 32–34, 36, 37, 39–41, 53, 62, 66). The Examiner relies on Chesnais to
correct Ahuja’s deficiency of “the communication modes are for different
times during the day,” as recited in limitation (a), and to teach “detecting
failure of delivery, and determining an alternate communication channel to
deliver the message.” Id. at 10–12. The Examiner relies on Shteyn to
correct the deficiency in the combination of Ahuja and Chesnais of “the
authorization request message requesting authorization of a transaction
utilizing a portable consumer device associated with one of the plurality of
accounts associated with the consumer,” as recited limitation (b) (see id.
at 12–13), and for teaching receiving a response to the alert and determining
the transaction should not be authorized, as recited in limitations (j) and (k)
(see id. at 13–15). The Examiner finds that the combination does not
explicitly teach limitations (g), (h), and (i) of determining that the consumer
did not receive the alert indicating that the transaction is occurring and that
the alert should be escalated, and sending an escalated alert to the consumer,
for which the Examiner relies on Malik. See id. at 15–17.
Thus, the Examiner appears to rely solely on Ahuja for teaching the
limitations regarding analyzing the message, determining whether the
transaction is above the threshold, and sending an alert only if it is. In
particular, the Examiner finds that Ahuja “discloses that the user can specify
specific trigger thresholds for each of their account notifications including
how often they can or should be alerted for a particular event based on the
trigger thresholds” and that “the threshold value is identified and compared
to the current value thus if it is greater than the threshold value the user is
notified.” Id. at 8–9 (citing Ahuja ¶¶ 62, 66, Table 2). The Examiner also
finds that Ahuja teaches that the user can set the trigger threshold “to notify
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if it is lower, thus the user can be alerted only if it is greater or only if it is
less than or if it is the same, each of these is selectable by the user.” Id. at 9.
Ahuja provides for a “METHOD AND SYSTEM FOR NOTIFYING
CUSTOMERS OF TRANSACTION OPPORTUNITIES.” Ahuja, Title.
Alert message generators access databases comprising customer preferences,
alert messages, rates and other information to generate, store, and send alert
messages to the customer’s selected message gateway, e.g., email, text
message, pager, etc. See id. ¶¶ 32, 36. The message generators analyze the
customer’s preferences against current rates, product information, and host
handoff data to create alert messages that are based on the customer’s
specified preferences and rates and information content. See id. ¶¶ 34, 35.
Member customer data are collected, the data including “content to be
notified on 72, preferred channel of contact 74, and a preferred time for
notification 76.” Id. ¶ 41. The content to be notified on can include interest
rates, past-due reminders, overdrafts, specific credit charges, and credit fraud
warnings that can be based on the amount of charges. Id. The customer can
select “a threshold flag data field for indicating whether a particular updated
value is the same, greater, or lesser than a customer indicated threshold
value (e.g., interest rates, stock quotes).” Id. ¶ 66. A comparison is made
between the current rate and the customer indicated threshold value to
determine whether an alert is sent. See id. Table 2.
However, we do not see where or how Ahuja teaches analyzing a
message and determining if the transaction is above a risk threshold.
Although Ahuja teaches a customer specifying a rate threshold value, using
that threshold value to compare against another rate value, and sending the
alert based on that comparison, the Examiner does not explain how Ahuja’s
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teaching of notifying of possible credit card fraud meets the claimed
analyzing the message and determining if the transaction is above a risk
threshold. The Examiner further does not explain how Ahuja’s comparison
of current rate information to determine if a rate, such as an interest rate or
stock quote, is above or below a specified threshold meets the claimed
determination of a transaction being above or below a risk threshold.
To the extent the Examiner relies on the combination of Ahuja and
Shteyn (see Final Act. 13–15), the Examiner does not adequately explain
how the combination teaches determining if the transaction is above a risk
threshold and taking further actions based on that determination. The
Examiner finds that Shteyn and/or Ahuja teaches that it is “known in a credit
card system . . . to determine fraud in a transaction” (id. at 13), but does not
explain how that teaches determining if a transaction is above a user-
specified threshold and sending appropriate notifications accordingly.
For at least the reasons above, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of independent claims 1 and 13. For the
same reasons, we also do not sustain the rejection of dependent claims 4, 7,
14, 33, 37–39, 45, 48, and 50–55. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
For the rejections under 35 U.S.C. § 103(a) of claims 30–32, 46, and
47, the Examiner does not rely on the teachings of Lipton, MCruz, Briancon,
Fei, or Antonucci in any manner that would remedy the deficiency in the
Examiner’s rejection of independent claim 1 as discussed above. Thus, for
the same reasons we do not sustain the Examiner’s rejection of claim 1, we
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also do not sustain the Examiner’s rejections of claims 30–32, 46, and 47,
which depend from claim 1.

CONCLUSION
The Examiner’s decision to reject claims 1, 4, 7, 13, 14, 30–33, 37–
39, 45–48, and 50–55 under 35 U.S.C. § 101 is sustained.
The Examiner’s decision to reject claims 1, 4, 7, 13, 14, 30–33, 37–
39, 45–48, and 50–55 under 35 U.S.C. § 103 is not sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 7, 13, 14,
30–33, 37–39,
45–48, 50–55
101 Eligibility 1, 4, 7, 13, 14,
30–33, 37–39,
45–48, 50–55

1, 4, 7, 13, 14,
33, 37–39, 45,
48, 50–55
103 Ahuja, Chesnais,
Shteyn, Malik
1, 4, 7, 13,
14, 33, 37–
39, 45, 48,
50–55
30 103 Ahuja, Chesnais,
Shteyn, Malik,
Lipton
30
31 103 Ahuja, Chesnais,
Shteyn, Malik,
MCruz
31
32 103 Ahuja, Chesnais,
Shteyn, Malik,
Briancon
32
46 103 Ahuja, Chesnais,
Shteyn, Malik, Fei
46
47 103 Ahuja, Chesnais,
Shteyn, Malik,
Antonucci
47
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1, 4, 7, 13, 14,
30–33, 37–39,
45–48, 50–55

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)(l)(iv).

AFFIRMED