MasterCard International Incorporated

Patent Trials and Appeals Board

Dec 6, 2021

2021001776 (P.T.A.B. Dec. 6, 2021)

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.
14/857,976 09/18/2015 James C. Noe P01846-US-UTIL 4179
98665 7590 12/06/2021
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
ANDERSON, MICHAEL W.
ART UNIT PAPER NUMBER
3698
NOTIFICATION DATE DELIVERY MODE
12/06/2021 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):
CTOFFICE@OEKLAW.COM
admin1@oeklaw.com
docket@oeklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES C. NOE,
IAN D. A. MADDOCKS, and SOWMYA R. LAKKA
__________________

Appeal 2021-001776
Application 14/857,976
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 16, 18–23, and 27–29, which are all of the
pending claims.2 See Appeal Br. 1; Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Mastercard International Incorporated as the real party in interest.
Appeal Br. 3.
2 Claims 1–15 and 24–26 are withdrawn, and claim 17 is cancelled. See
Final Act. 2.
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CLAIMED SUBJECT MATTER
Claims 16 and 27 are independent. Representative claim 16 recites:
16. A method, at a mobile device, of prioritising a preferred
payment application stored on the mobile device, the method
comprising the steps of:
identifying an execution of a tap-in transaction in a
multiple-transaction payment, the multiple-transaction payment
utilizing tap-in and tap-out occurrences of identifying a
payment application;
determining which payment application was used to
perform the tap-in transaction;
assigning a highest priority value to a record which
contains an application identifier which identifies the
determined payment application used to perform the tap-in
transaction;
detecting that the mobile device is about to enter a low
power mode, wherein the step of assigning a highest priority
value to a record which contains an application identifier which
identifies the determined payment application used to perform
the tap-in transaction is performed when it is detected that the
mobile device is about to enter the low power mode; and
completing the execution of the tap-out transaction in the
low power mode using the determined payment application.
REJECTIONS
Claims 16, 18–23, and 27 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 16, 18–23, and 27 are rejected under 35 U.S.C. § 103 as
unpatentable over Li,3 NFC,4 and Spodak.5
Claims 28 and 29 are rejected under 35 U.S.C. § 103 as unpatentable
over Li, NFC, Spodak, and Airports.6

3 US 2015/0134428 A1, published May 14, 2015.
4 NFC in Public Transport, NFC Forum, Inc., January 2011.
5 US 2012/0191612 A1, published July 26, 2012.
6 Airports, Watch the Money ... There is a Lot of It, Parking Today, Apr. 2010.
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ANALYSIS
Eligibility of Claims 16, 18–23, and 27
Appellant argues the claims as a group. Appeal Br. 8–9. We select
claim 16 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Regarding claim 16, the Examiner determines that the limitations of
identifying an execution of a tap-in transaction, determining which payment
application was used, assigning a highest priority value to a record, detecting
that the mobile device is about to enter a low power mode, and completing
execution of the tap-out transaction are instructions to prioritize a preferred
payment application, which recites a method of organizing human activity
such as a fundamental economic practice and managing interactions between
people. Final Act. 3, 7; Ans. 3–4.
The Examiner determines that the only additional element is a mobile
device, and it is recited at a high level of generality as a generic processor
that performs generic computer functions that amount to mere instructions to
apply the exception without imposing a meaningful limitation on practicing
the abstract idea or integrating it into a practical application. Final Act. 3, 8;
Ans. 4. The Examiner also determines that considering the mobile device,
individually and in combination, does not amount to significantly more than
the abstract idea because the claims do not affect an improvement to another
technology or technical field, do not improve the functioning of a computer
itself, and do not do more than link the use of the abstract idea generally to a
particular technological environment without requiring more than a generic
computer that performs generic computer functions to apply the abstract idea
using a mobile device. Final Act. 3–4, 8. The Examiner determines that the
Specification describes contactless transactions performed by multi payment
application devices and other details as being conventional. Ans. 4–5.
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Principles of Law
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
35 U.S.C. § 101.
Laws of nature, natural phenomena, and abstract ideas are not
patentable. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the claim elements, individually and as an
ordered combination, to determine if any additional elements provide an
inventive concept sufficient to ensure that the claims in practice amount to
significantly more than a patent on the ineligible concept. Id. at 217–18.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). To determine if a claim is “directed to” an abstract
idea, we evaluate whether the claim recites: (1) any judicial exceptions,
including certain groupings of abstract ideas listed in the Revised Guidance
(i.e., mathematical concepts, certain methods of organizing human activities
such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a practical
application.7 Id. at 52–55.

7 “A claim that integrates a judicial exception into a practical application
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.” Revised
Guidance, 84 Fed. Reg. at 54.
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If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, we consider whether the claim
(3) provides an inventive concept such as by adding a limitation beyond a
judicial exception that is not “well-understood, routine, conventional” in the
field or (4) appends well-understood, routine, 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.
Step 1
Claim 16 recites a method, which is a statutory category of a process.
See 35 U.S.C. § 101; Final Act. 7.
Alice Step One / Revised Guidance Step 2A, Prong One:
Do the Claims Recite a Judicial Exception?
We agree with the Examiner that claim 16 recites certain methods of
organizing human activity such as a fundamental economic practice and
managing commercial interactions between people. See Revised Guidance,
84 Fed. Reg. at 52; Final Act. 3, 7; Ans. 3–4.
The claims focus on prioritizing payment credentials for transactions.
Spec. 1:9–14, 3:9–4:13, 22:10–24:6; claim 16 (preamble). The application
title reflects this focus on PAYMENT SYSTEMS AND METHODS FOR
MANAGING PAYMENT CARD USE. Payment transactions are a type of
fundamental economic practice. See Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (the local processing
of payments for remotely purchased goods is a fundamental business and
economic practice and an abstract idea as implemented on generic computer
technology); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed.
Cir. 2014) (creating contracts to exchange financial obligations by using a
transaction performance guaranty is a long-standing commercial practice).
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Performing financial transactions in the mass transit field using basic
data collection steps, without more in terms of a new bankcard, computer or
database, or method of processing data that improves existing technological
processes, is an abstract idea. See Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d 1364, 1371–73 (Fed. Cir. 2017); Spec. 3:19–4:4
(multi payment transactions include transit transactions where users tap-in
and tap-out with payment credentials). In Smart Systems, the method used a
prioritization rule to select one of multiple account balances to fund a transit
fare. 873 F.3d at 1369–70. Claim 16, here, similarly uses a rule to prioritize
a payment application as a highest priority payment application when it is
used for a tap-in transaction and then selects that highest priority payment
application for a tap-out transaction to pay the transit fare. See Spec. 3:19–
4:4. 16:10–17:16, 22:10–25:29, Fig. 5.
Similar to the claims in Smart Systems, here, the steps of “identifying
an execution of a tap-in transaction” and “detecting that the mobile device is
about to enter into a low power mode” recite basic data collection steps. The
steps of “determining which payment application was used to perform the
tap-in transaction” and “assigning a highest priority value to a record” of a
payment application used to perform a tap-in transaction recite data analysis
steps at a high level of generality. As such, they recite an abstract idea. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–52, 1355 (Fed.
Cir. 2016) (claims to detecting and analyzing events in real time “select[]
information, by content or source, for collection, analysis, and display
[which] does nothing significant to differentiate a process from ordinary
mental processes”); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract
idea (encoding and decoding) does not render the claim non-abstract.”).
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The claimed procedure prioritizes the payment application used to
tap-in as highest priority so that same application is used to tap-out in a low
power mode.8 See Spec. 3:19–4:4, 22:10–25:29. In view of the description,
title, and claim language to include the preamble, Appellant’s argument that
the application is not directed to prioritizing a preferred payment application
is not persuasive. See Reply Br. 9–10; see also Appeal Br. 8. Accordingly,
we determine that claim 16 recites an abstract idea as identified above.
Alice Step One
Revised Guidance Step 2A, Prong Two:
Is There an Integration into a Practical Application?
We next consider whether claim 16 recites additional elements that
integrate the abstract idea into a practical application. Revised Guidance,
84 Fed. Reg. at 54. We agree with the Examiner that “a mobile device” is
the only additional element recited. It performs generic computer functions
to apply the judicial exception without improving computer technology or
using a particular machine that is integral to the claim or transforming or
reducing a particular article to a different state or thing. It does not apply the
abstract idea in a meaningful way or integrate the judicial exception into a
practical application. See Final Act. 7–8; Ans. 4; Revised Guidance, 84 Fed.
Reg. at 55. Multi payment application devices include consumer devices,
conventional physical payment cards, mobile phones, watches, and any
suitable device that can support the credentials of multiple payment accounts
and perform transactions with multiple merchants. Spec. 9:19–22.

8 When a mobile device enters a low power mode, it defaults to the payment
application that is the “highest priority” payment credential in the wallet
application, and it disables the ability of the user to select another payment
application. If the tap-in payment credential is not the highest priority, users
must tap-out with a different payment application than was used for the tap-
in transaction and incur penalties or charges. See Spec. 3:19–4:4, 22:10–28.
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The use of such generic components does not transform an abstract
idea into a patent eligible application. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Stating an abstract idea ‘while
adding the words “apply it”’ is not enough for patent eligibility.”); see also
Bozeman Fin. LLC v. Fed. Reserve Bank of Atl., 955 F.3d 971, 979–80 (Fed.
Cir. 2020) (using well-known, off-the-shelf computer components to collect
and analyze financial transaction information to detect errors or fraud is an
abstract idea not a patent-eligible improvement to computers or technology).
Appellant argues:
In the present case, the assignment of “a highest priority value
to a record which contains an application identifier which
identifies the determined payment application used to perform
the tap-in transaction” and a detection that the mobile device is
about to enter a low power mode that enables completion of the
execution of the transaction in the low power mode using the
determined payment application is clearly an improvement to
computer functionality itself since it enables the computer to
complete a transaction involving multiple processing (such as
tap in and tap out) steps where the transaction began prior to the
device entering the low power mode but [is] completed after the
device entered the low power mode.
Appeal Br. 8 (emphasis omitted); see also Reply Br. 8–10.
Because these limitations are part of the abstract idea identified under
Prong One, they cannot be additional elements to integrate that abstract idea
into a practical application. See Revised Guidance, 84 Fed. Reg. at 55 (the
term “additional elements” refers to claim features, limitations, and/or steps
recited in a claim beyond the identified judicial exception); Alice, 573 U.S.
at 221 (a claim reciting an abstract idea must include “additional features” to
ensure that it does not monopolize the abstract idea).
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Even if we consider the steps as additional elements, they are recited
at a high level of generality without technical details of how a mobile device
is detected to be about to enter a low power mode or how a highest priority
value is assigned to a record that identifies the payment application used to
perform the tap-in transaction. Selecting a payment application by assigning
a highest priority value does not improve technology as implemented on a
generic mobile device. See Smart Sys., 873 F.3d at 1369–70, 1372 (selecting
a balance to pay a transit fare by using a prioritization rule to form financial
transactions in the mass transit field merely collects, stores, and recognizes
data as an abstract idea). The Specification describes this step without any
indicated improvements to computers or technology. See Spec. 23:18–22.
Assigning a highest priority value to a payment application that was
used to perform a tap-in transaction uses existing wallet protocols that select
particular payment applications in the order in which they are prioritized in
an ordered list starting with the payment application that has the highest API
(Application Priority Indicator). See id. at 13:24–14:2, 15:1–25, 16:26–17:3.
Even if the Specification described particular technical improvements for
this process, none of those details are claimed for setting a tap-in payment
application as a highest priority. See Ericsson Inc. v. TCL Commc’n Tech.
Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020) (“[T]he specification
may be ‘helpful in illuminating what a claim is directed to . . . [but] the
specification must always yield to the claim language’ when identifying the
‘true focus of a claim.’”); Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“[T]he complexity of
the implementing software or the level of detail in the specification does not
transform a claim reciting only an abstract concept into a patent-eligible
system or method.”).
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“[T]he claims here do not ‘ha[ve] the specificity required to transform
a claim from one claiming only a result to one claiming a way of achieving
it.’” Ericsson, 955 F.3d at 1328 (“Merely claiming ‘those functions in
general terms, without limiting them to technical means for performing the
functions that are arguably an advance,’ does not make a claim eligible at
step one.” (citations omitted)); see also SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1167–68 (Fed. Cir. 2018) (to avoid ineligibility, a claim must
have the specificity to transform it from one claiming only a result to one
claiming a way of achieving it); Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1344 (Fed. Cir. 2018) (software can make non-abstract
improvements to computer technology but software-based inventions that
did not pass § 101 muster failed because “they did not recite any assertedly
inventive technology for improving computers as tools and/or because the
elements of the asserted invention were so result-based that they amounted
to patenting the patent-ineligible concept itself”); Elec. Power, 830 F.3d at
1356 (noting that the essentially result-focused, functional character of the
claim language is a frequent feature of claims held ineligible under § 101).
To be patent eligible, claims must recite more than a result or effect
that itself is an abstract idea, or that merely invokes generic processes and
machinery. Thus, “detecting that the mobile device is about to enter a low
power mode” fails because it recites a result without any technical details of
how a low power mode is detected or how computers are improved thereby.
The Specification states that “[a]t step 503, the multi payment application
device 114 enters low power mode.” Spec. 25:19. As claimed, this step
recites data collection. See Revised Guidance, 84 Fed. Reg. at 55 n.31 (an
additional element that recites mere data gathering adds insignificant extra-
solution activity to a judicial exception).
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Similarly, in Electric Power, detecting events on a power grid in real
time from plural data streams for analysis merely collected information,
which is an abstract idea even when limited to particular content. Elec.
Power, 830 F.3d at 1352–53, 1355 (selecting information for collection,
analysis, and display can be performed as ordinary mental processes).
The final step of “completing the execution of the tap-out transaction
in the low power mode using the determined payment application” recites
extra-solution activity of the abstract idea identified above and therefore is
not sufficient to integrate the abstract idea into a practical application. See
Elec. Power, 830 F.3d at 1354 (“[M]erely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.”). The fare is paid following the abstract
prioritization of the tap-in application as the highest priority application.
Essentially, the method automates processes that mobile device users
perform to set a payment application as the highest priority application. See
Spec. 17:21–18:6 (noting the advantages of automating the selection of the
correct payment card without user interaction so “[a] user can specify which
payment cards should be used with which merchants, without needing access
to the wallet prior to the transaction, even in low power mode” or at transit
gates where users lack time to select which card to use as they approach the
gate); Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315–16 (Fed. Cir.
2019) (the need to perform tasks automatically, e.g., detecting, transferring,
and publishing data with a mobile device, is not a unique technical problem);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(automating the fundamental economic practice of offer-based price
optimization through generic computer functions was not patent eligible).
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Increased speed or accuracy from generic computers is not enough.
Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed.
Cir. 2020) (“The only improvements identified in the specification are
generic speed and efficiency improvements inherent in applying the use of a
computer to any task. . . . This is not an improvement in the functioning of
the computer itself.”); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1056 (Fed. Cir. 2017) (“But merely ‘configur[ing]’ generic computers
in order to ‘supplant and enhance’ an otherwise abstract manual process is
precisely the sort of invention that the Alice Court deemed ineligible for
patenting.” (alteration in original)); Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012) (“Using
a computer to accelerate an ineligible mental process does not make that
process patent-eligible.”). Here, the method computerizes and automates
processes that mobile device users otherwise would perform at mass transit
systems to select and prioritize a payment credential. See Spec. 17:21–18:6.
Thus, we determine that claim 16 does not recite additional elements
that are sufficient to integrate the abstract idea into a practical application.
Alice, Step Two and Revised Guidance Step 2B:
Do the Claims Include an Inventive Concept?
We next consider whether claim 16 recites any additional elements,
individually or as an ordered combination, to provide an inventive concept.
Alice, 573 U.S. at 217–18. This step is satisfied when the claim limitations
involve more than well-understood, routine, and conventional activities that
are known in the industry. See Berkheimer v. HP Inc., 881 F.3d 1360, 1367
(Fed. Cir. 2018). Individually, the mobile device is described as a known,
conventional computer component as discussed under Prong Two above.
See Spec. 9:19–22.
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The mobile device is used as a tool to implement the abstract idea
without improving computers. See Elec. Power, 830 F.3d at 1355 (the
claims required off-the-shelf, conventional computer, network, and display
technology to process information with no inventive concept). As an
ordered combination, the elements recite no more than when they are
considered individually. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1290–91 (Fed. Cir. 2018) (“If a claim’s only ‘inventive concept’ is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.”). Here, claim 16 uses a known technique of
wallet applications of setting a payment as highest priority and does so when
the mobile device is about to enter a low power mode without any technical
details or improvements to that process. See Smart Sys., 873 F.3d at 1372–
73, 1374–75 (generic computer implementation is not enough for eligibility).
Appellant criticizes the Examiner’s characterization of the claims as
directed to prioritizing a preferred payment application (see Reply Br. 9–10),
but the invention is described as selecting a payment application in multi
payment application devices and prioritizing a preferred payment application
on a mobile device. Spec. 1:9–14, 7:10–8:13. The preamble of claim 16
recites this purpose of prioritizing a preferred payment application.
The “[l]ow power mode is defined as a state the secure element and
NFC controller enter to use minimal power. Typically this mode is used
when a consumer electronics device reaches a low battery threshold and the
device automatically switches off many of its functions, except the clock and
a few remaining functions such as its NFC functionality.” Spec. 3:11–16
(low power mode is described in detail in the ETSI TS 102 613 and GSMA
NFC Handset Requirements). Low power mode is a known device state.
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Essentially, the known lower power mode maintains the status quo of
mobile device applications and settings that existed before the mobile device
entered into the low power mode. See id. at 3:19–29. The claimed method
sets the tap-in payment application of a multiple-transaction (e.g., a transmit
system) as the status quo (default) payment application for the low power
mode by making it the “highest priority” application. That way, it is used
for the tap-out payment of the transaction in a low power mode.
Thus, the asserted inventive concept involves the concept of finishing
a multiple-transaction payment with the same credential that was used to
start the multiple-transaction payment. It is claimed without any innovation
to computers or technology beyond this concept as embodied on a generic
mobile device. It is implemented conventionally by setting a tap-in payment
application as the “highest priority” application when the mobile device is
about to enter a low power mode. This setting acts as a flag or a software
setting for timing the setting rather than as an improvement to computers or
technology. Ans. 5. The Examiner’s determination is consistent with the
Specification’s description of prioritization. See Spec. 23:18–22. Thus, any
improvement is to the abstract idea rather than to computers or technology.
The Specification describes this process as using known capabilities
and conventional wallet functions that can be performed at various times, as
desired, so a payment application used to tap-in at a terminal is used to tap-
out to complete the transaction. See Spec. 23:8–24:19. Indeed, user input
can set a card as the default card. See id. at 24:16–26. If the multi payment
application device 114 detects a tap-in type transaction involves a variable
billing amount as used in transit systems or is an intermediary tap type that
is finished with a later tap-out transaction, the system sets the tap-in payment
credential to a highest priority so it is used to tap out in low power mode. Id.
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Setting a payment application as the “highest priority” at the time of
the tap-in of a multiple-payment transaction ensures that “if the device does
fall into a low power mode during transit, the default values have already
been set in the PPSE so that the correct card can be used when tapping out.”
Id. at 24:3–6. As claimed, device 114 may set the tap-in application as the
highest priority using conventional wallet processes when it is low on power
or when it will soon enter a low power mode. Id. at 24:8–10. A device’s
prioritization application (PPSE) could support two configurations: one
configuration for normal power mode and another configuration for a low
power mode that is set after detecting that a tap-in transaction has been
performed “in preparation for a low power mode event.” Id. at 24:8–14.
This description supports the Examiner’s findings that prioritizing a
tap-in payment application as highest priority can occur different ways and
at different times as a software setting. See Ans. 5. Such settings do not
improve the functioning of mobile devices. They use conventional wallet
procedures/rules to set a tap-in payment application as the highest priority so
it will be used for a tap-out transaction in a low power (or regular) mode as
desired. See Spec. 13:10–15:25, 23:8–24:26. As claimed, such settings
improve the abstract idea of managing financial transactions by prioritizing
payment applications. See BSG, 899 F.3d at 1291 (“As a matter of law,
narrowing or reformulating an abstract idea does not add ‘significantly
more’ to it.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016) (“An abstract idea can generally be described at different levels of
abstraction.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract
idea. The search of a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.”).
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As discussed under Prong Two, the method automatically sets a tap-in
payment application as the highest priority so a mobile device user does not
have to do so. See Spec. 16:16–18:6; see also Cellspin, 927 F.3d at 1316
(“But the need to perform tasks automatically is not a unique technical
problem.”); Smart Sys., 873 F.3d at 1374 (“When claims like the Asserted
Claims are ‘directed to an abstract idea’ and ‘merely requir[e] generic
computer implementation,’ they ‘do[] not move into section 101 eligibility
territory.’” (citation omitted)).
Here, the method adjusts wallet settings using conventional steps to
designate a tap-in payment application as the “highest priority” so it will be
used for a tap-out transaction. Without more, adjusting computer settings is
not an inventive concept. See Free Stream Media Corp. v. Alphonso Inc.,
996 F.3d 1355, 1366 (Fed. Cir. 2021) (“But even assuming the bypassing of
mobile device security mechanisms had not been done before, there is
nothing inventive disclosed in the claims that permits communications that
were previously not possible. Indeed, the claims simply recite the use of
generic features, as well as routine functions, to implement the underlying
idea.”); Credit Acceptance, 859 F.3d at 1057 (“Significantly, the claims do
not provide details as to any non-conventional software for enhancing the
financing process.”); Tranxition, Inc. v. Lenovo (U.S.) Inc., 664 F. App’x
968, 972 (Fed. Cir. 2016) (claims to the abstract idea of migrating and
transitioning computer configuration settings considered individually and as
an ordered combination described a generic computer implementation using
routine, conventional activities of the abstract idea to extract and transition
configuration settings to a new computer). Here, claim 16 prioritizes (sets) a
tap-in payment application as the highest priority so it is used in a low power
mode. See Smart Sys., 873 F.3d at 1374; Spec. 23:8–25, Fig. 5 (step 502).
Appeal 2021-001776
Application 14/857,976
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No inventive software programming is claimed to accomplish this
result. The claimed prioritization simply allows a user to perform a tap-out
transaction with the same payment application/credential that was used to
perform the tap-in transaction at the transit system to avoid a penalty.
Improvements to an abstract idea do not provide an inventive concept.
Bascom illustrates why claim 16 here lacks an inventive concept.
There, 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.” Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“This design
gives the filtering tool both the benefits of a filter on a local computer and
the benefits of a filter on the ISP server.”). Here, claim 16 does not recite a
similar unconventional arrangement. See Reply Br. 10. The mobile device
selects a payment application to perform a tap-in transaction and sets that
payment application as the highest priority when the mobile device is about
to enter a low power mode using known wallet prioritization procedures.
Payment application prioritization rules set the tap-in payment application as
the highest priority application automatically as users might do manually.
See Spec. 16:7–8 (users can change the priority of payment credentials in
known systems), 17:21–26 (users can select a preferred payment credential),
23:1–24:26 (automatically set a payment application as the highest priority
or in response to a user’s input); see also Smart Sys., 873 F.3d at 1373–75
(claims directed to an abstract idea of selecting an account balance to fund a
transit ride using a generic computer implementation are not patent eligible);
Elec. Power, 830 F.3d at 1356 (claims to gathering and analyzing specific
information from a power-grid field and displaying results in “real time”
using generic, conventional technology did not state an inventive concept).
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Application 14/857,976
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Performing such conventional data processing steps to facilitate multi-
transaction payments does not provide an inventive concept. See Alice, 573
U.S. at 225 (using a computer to maintain “shadow” accounts amounts to
electronic recordkeeping, one of the most basic functions of a computer, and
using a generic computer to obtain data, adjust account balances, and issue
automated instructions are computer functions that are well-understood,
routine, and conventional); Bozeman, 955 F.3d at 980–81 (collecting and
analyzing information for financial transaction fraud or error detection did
not include an inventive concept by using conventional computer technology
to collect and display financial transaction data and the ordered sequence of
receiving and storing information, analyzing that information, and sending a
notification upon completion of that analysis recited a logical sequence with
no inventive concept); Inventor Holdings, 876 F.3d at 1378 (sequence of
data retrieval, analysis, modification, generation, display and transmission is
not inventive and amounts to instructions to apply the abstract idea using
generic computer technology); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715–16 (Fed. Cir. 2014) (sequence of receiving, selecting, providing
media, restricting access, offering access, receiving a request to view,
allowing access, recording a transaction, and receiving payment to include
updating an activity log are conventional steps recited at a high level of
generality and insignificant data gathering steps that do not provide an
inventive concept individually or as an ordered combination); In re
Mohapatra, 842 F. App’x 635, 639–40 (Fed. Cir. 2021) (recording, storing,
and verifying the card security code and changes to that code implement the
abstract idea on a computer operating in a conventional manner).
Accordingly, we sustain the rejection of claims 16, 18–23, and 27 as
directed to an abstract idea without significantly more.
Appeal 2021-001776
Application 14/857,976
19
Claims 16, 18–23, and 27
Rejected over Li, NFC, and Spodak
Regarding independent claims 16 and 27, the Examiner relies on Li to
teach identifying execution of a tap-in transaction of a multiple transaction
payment, determining which payment application was used to perform the
transaction, and completing the transaction using the determined payment
application. Final Act. 10–11. The Examiner cites NFC9 to teach tap-in and
tap-out multi-transaction payments and determining a payment application
to use. Id. at 11–12. The Examiner cites Spodak to teach assigning highest
priority to a record, detecting a mobile device is about to enter a low power
mode, and assigning a highest priority to a record occurs when it is detected
that the mobile device is about to enter the low power mode. Id. at 12–14.
Appellant argues that Spodak detects whether universal card 110 is
about to enter a low power mode by sending a low batter signal to mobile
device 100, but Spodak is silent regarding a low power mode of the mobile
device as claimed. Appeal Br. 14. Appellant asserts that even if universal
card 100 is considered relevant to the claimed mobile device, Spodak does
not teach or suggest to assign a highest priority value to a record containing
an identifier of the payment application that was used to perform the tap-in
transaction “when it is detected that the mobile device is about to enter a low
power mode” as claimed. Id. at 14–15.
According to the Specification, multi payment application devices are
“consumer devices, conventional physical payment cards, mobile phones,
watches or any suitable device [that] can support the credentials of multiple
payment accounts and perform transactions with multiple merchants.” Spec.
9:19–22 (emphasis added).

9 The Examiner refers to this reference as “NPL1.” See Final Act. 11.
Appeal 2021-001776
Application 14/857,976
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Spodak’s universal card 110 may be configured to emulate traditional
credit cards, debit cards, transportation passes, building access cards, and
other types of cards. Spodak ¶ 34. “The universal card 110 may include
components such as a display 112, a power source 113, a processor 114, and
memory 115 [and] [e]ach of those components are similar in function to the
corresponding components of the mobile device 100, except that the
component[s] of the universal card 110 may be physically configured
differently so as to fit in the shape of the universal card 110.” Id. ¶ 38.
In view of these teachings of Spodak, the Examiner had a sound basis
to consider Spodak’s teachings of a low power mode of universal card 110
as relevant to the low power mode of the claimed mobile device under a
broadest reasonable interpretation consistent with Appellant’s Specification.
We agree with the Examiner that Spodak detects when universal card
110 is in a lower power mode due to a low battery and sends a low battery
signal to mobile device 100. Spodak ¶ 94; see Final Act. 13 (citing id.). We
also agree that Spodak allows a user to program universal card 110 to assign
different priorities to different cards so that universal card 110 can emulate a
particular card (e.g., a DISCOVER card) for a particular period of time and
then revert back to another card (e.g., a VISA card) that is set as the default
priority card. Spodak ¶ 94. It is not clear, however, how Spodak teaches or
suggests to assign a highest priority value to a particular payment application
“when it is detected that the mobile device [universal card 110] is about to
enter the low power mode” as recited in independent claims 16 and 27. We
find no teaching or suggestion in the cited portions of Spodak to assign a
highest priority to a particular payment application in response to/when it is
detected that universal card 110 is about to enter a low power (low battery)
state. See Spodak ¶¶ 79, 94, 108; see also Final Act. 13–14; Ans. 5–6.
Appeal 2021-001776
Application 14/857,976
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As a result, based on the record before us, we do not sustain the
rejection of claims 16 and 27 or claims 18–23, which depend from claim 16.
Claims 28 and 29
Rejected over Li, NFC, Spodak, and Airports
Claims 28 and 29 depend respectively from claims 16 and 27 and
recite additional aspects of the low power mode, the multiple-transaction
payment, and the step of assigning a highest priority value to a record. See
Appeal Br. 23 (Claims App.). The Examiner relies on Spodak to teach the
additional claimed features of the low power mode and the step of assigning
the highest priority value to the record when it is detected that the mobile
device is about to enter the low power to allow the user to tap out in the low
power mode. Final Act. 19–20 (citing Spodak ¶¶ 79, 94, 108); Ans. 6–7.
We agree with Appellant that Spodak does not teach or suggest to
assign a highest priority value to a record when it is detected that the mobile
device is about to enter the low power mode as recited in claims 16 and 27,
and the Examiner’s additional findings for claims 28 and 29 do not cure this
deficiency of Spodak as to claims 16 and 27 from which claims 28 and 29
depend. Accordingly, we do not sustain the rejection of claims 28 and 29.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
16, 18–23,
27
101 Eligibility 16, 18–23,
27

16, 18–23,
27
103 Li, NFC, Spodak 16, 18–23,
27
28, 29 103 Li, NFC, Spodak,
Airports
28, 29
Appeal 2021-001776
Application 14/857,976
22
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
Overall
Outcome
16, 18–23,
27
28, 29
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 IN PART