MasterCard International Incorporated

Patent Trials and Appeals Board

Jun 26, 2020

14310061 - (D) (P.T.A.B. Jun. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/310,061 06/20/2014 Mark Lulic P01093-US-UTIL 6893
98665 7590 06/26/2020
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
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 MARK LULIC and ALEXANDER ANTUNOVIC
_____________

Appeal 2019-006932
Application 14/310,061
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JAMES W. DEJMEK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 7–12, and 17–25. Claims 3–6 and 13–16 are withdrawn. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is MasterCard International Incorporated. See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “bus rapid transit
ticketing.” Spec. 1, Title.

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Melis et al. 4,298,793 Nov. 3, 1981
Morrill, Jr. 5,991,749 Nov. 23, 1999
Bommarito et al. US 6,741,523 B1 May 25, 2004
Dixon et al. US 2011/0153495 A1 June 23, 2011

Rejections
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 11, 12,
17–19,
22–25
101 Eligibility
B 1, 2, 10–12,
19, 20,
22–24
102(a)(1) Dixon et al. (“Dixon”)
C 9, 17 103 Dixon
D 7, 8, 21 103 Dixon, Melis et al. (“Melis”)
E 18 103 Dixon, Melis, Morrill, Jr. (“Morrill”)

2 We herein refer to the Final Office Action, mailed July 13, 2018 (“Final
Act.”); Appeal Brief, filed Mar. 15, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed July 12, 2019 (“Ans.”); and the Reply Brief, filed Sept. 25,
2019 (“Reply Br.”).
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Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
F 25 103 Dixon, Bommarito et al.
(“Bommarito”), Official Notice

Rejection A of Claims 11, 12, 17–19, and 22–25 under § 101
At the outset, we note the PTO-90C communication that was mailed
on July 25, 2019, after the Examiner’s Answer was mailed on July 12, 2019.
In the PTO-90C communication, the Examiner clarifies the status of the
Section 101 rejection in this appeal:
The “Grounds of Rejection to be Reviewed” in the Examiner[’s]
Answer mailed July 12, 2019 mistakenly included claim
numbers for which the 101 rejection has been withdrawn.

The correct status is:
For claims 1, 2, 7-10, 20, and 21 the rejection made under 101 is
WITHDRAWN.

For claims 11, 12, 17-19, and 22-25 the rejection made under 101
is MAINTAINED.
Appellant responds and traverses the Examiner’s Rejection A under
35 U.S.C. § 101 of claims 11, 12, 17–19, and 22–25 in the Reply Brief
(2–14).
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
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Eligibility Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”).3 Under that
guidance, we first look to whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) 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) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).4
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 Memorandum Step 2B.

3 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” 2019 Memorandum, 84
Fed. Reg. at 51; see also October 2019 Memorandum at 1.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) Step 1, the 2019
Memorandum synthesizes, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the “abstract idea” exception includes the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
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1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
§ 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
ANALYSIS
2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce infra independent claim 11 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We
highlight and address specific findings and arguments for emphasis in our
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analysis below.5
Rejection A of Claims 11, 12, 17–19, and 22–25 under § 101
The Examiner concludes the claims recite an abstract idea, i.e., “the
abstract idea of formation of financial transactions in a particular field (i.e.,
mass transit) and data collection related to such transactions (as shown in the
recited functions of claims).” Final Act. 5.
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
Independent Claim 11
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim elements that we find are generic
computer components:
TABLE ONE 6

Independent Claim 11 2019 Memorandum
[a] A method comprising the steps
of: 7

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
6 We apply the Director’s 2019 Memorandum de novo.
7 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
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Independent Claim 11 2019 Memorandum
[b] dispatching, from a portable
electronic device of a prospective
transit rider, to a remote server, an
indication that said prospective
transit rider has come into
geographic proximity of a
particular transit boarding area;
dispatching, from a portable
electronic device of a prospective
transit rider, to a remote server, an
indication that said prospective
transit rider has come into
geographic proximity of a particular
transit boarding area is insignificant
extra-solution activity (i.e., data
transmission). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).
[c] obtaining, from said remote
server, a confirmation query
seeking to confirm whether said
prospective transit rider seeks to
board a certain transit mode, at a
certain fare, said confirmation
query having been determined
based on said indication;
obtaining, from said remote server,
a confirmation query seeking to
confirm whether said prospective
transit rider seeks to board a certain
transit mode, at a certain fare is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).
Abstract Idea: Determining said
confirmation query based on said
indication can be performed
alternatively by a person as a mental
process. See 2019 Memorandum, 84
Fed. Reg. at 52.
[d] dispatching, from said portable
electronic device of said
prospective transit rider, to said
remote server, an affirmative
response to said confirmation
query; and
dispatching, from said portable
electronic device of said prospective
transit rider, to said remote server, an
affirmative response to said
confirmation query is insignificant
extra-solution activity (i.e.,
transmitting data). See 2019

useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 11 2019 Memorandum
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).
[e] obtaining, from said remote
server, an electronic ticket;
obtaining, from said remote server,
an electronic ticket is insignificant
extra-solution activity (i.e., data
gathering). See 2019 Memorandum,
84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g).
Abstract Idea: Electronic ticketing is
a method of organizing human
activity, i.e., a fundamental
economic practice, including
commercial interactions, such as
agreements in the form of contracts
and legal obligations, sales activities,
and business relations. See 2019
Memorandum, 84 Fed. Reg. at 52.
[f] wherein said portable
electronic device of said
prospective transit rider is coupled
to said remote server via a
telecommunication network
comprising a transit network; and
This is an arrangement of generic
computer components — see 84 Fed.
Reg. at 52 n.14.
[g] wherein said confirmation
query and said electronic ticket are
obtained only if said prospective
transit rider is within said
geographic proximity of said
particular transmit [sic] boarding
area.8
obtaining said confirmation query
and said electronic ticket is
insignificant post-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

8 It appears “transmit” is a typographical error as recited in step “g” of claim
11. We understand Appellant to have likely intended the word “transit.”
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Abstract Idea
As identified above in Table One, we conclude step “e” of claim 11
recites an abstract idea, i.e., electronic ticketing is a method of organizing
human activity — a fundamental economic practice, including commercial
interactions, such as agreements in the form of contracts and legal
obligations (i.e., “an electronic ticket” is construed as a license to enter or
ride the transit vehicle or train), sales activities, and business relations. See
2019 Memorandum, 84 Fed. Reg. at 52.
As also identified above in Table One, we conclude step “c” of claim
11 recites an abstract idea (i.e., a mental process). In particular, we conclude
that determining said confirmation query based on said indication can be
performed alternatively by a person as a mental process.9 See 2019
Memorandum, 84 Fed. Reg. at 52.
Thus, we consider representative claim 11 to recite two categories of
abstract ideas: certain methods of organizing human activity, such as a

9 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011). “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson[, 409 U.S. 63
(1972)].” CyberSource, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016). Moreover,
“[u]sing a computer to accelerate an ineligible mental process does not make
that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”).

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fundamental economic practice, that could also be performed alternatively as
a mental process. But merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
Because independent claim 11 recites an abstract idea, as identified in
Table One, supra, and because independent claim 22 (as remaining rejected
under § 101 as clarified by the Examiner) recites similar language of
commensurate scope, we conclude claims 11, 12, 17–19, and 22–25 recite an
abstract idea, as identified above, under Step 2A, Prong One. Therefore, we
proceed to Step 2A, Prong Two.

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
The Examiner finds:
The additional elements recited in the independent and
dependent claims beyond further refinements of the abstract
idea identified above (and its attendant insignificant extra-
solution data-gathering and outputting functions) are known
and conventional generic computing elements (“remote server,”
“portable electronic device,” GPS, “computer readable storage
medium,” “hardware processor,” “transceiver module,”
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“memory,” “telecommunication network,” “transit network,”
“payment card network,” “bar code” see Specification pgs. 4-9,
12, 23-25, & 29-30 describing these variously as “well-known”
and “known in the art,” at a high level of generality.
Final Act. 7.
Additional Generic Computer Limitations
A preponderance of the evidence supports the Examiner’s findings
regarding the recitation of generic computer components. Id. As
emphasized in bold in Table One, supra, we note the additional generic
computer components recited in claim 11, for example:
[d] dispatching, from said portable
electronic device of said
prospective transit rider, to said
remote server, an affirmative
response to said confirmation
query; and
dispatching, from said portable
electronic device of said prospective
transit rider, to said remote server, an
affirmative response to said
confirmation query is insignificant
extra-solution activity (i.e.,
transmitting data). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).
[e] obtaining, from said remote
server, an electronic ticket;
obtaining, from said remote server,
an electronic ticket is insignificant
extra-solution activity (i.e., data
gathering). See 2019 Memorandum,
84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g).

We further note the supporting exemplary, non-limiting descriptions
of generic computer components in the Specification, for example, at page 4,
l. 22 (“System 100 can include one or more different types of portable
payment devices.”) and pages 2–7. See also, e.g., Spec. 7, ll. 8–15,
describing generic computer and network components:
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Network 138 could include, for example, the Internet, or a
proprietary network (e.g., a virtual private network (VPN) such
as is described with respect to FIG. 2 below). More than one
network could be employed to connect different elements of the
system. For example, a local area network (LAN) could connect
a terminal to a local server or other computer at a retail
establishment. A payment network could connect acquirers and
issuers. Further details regarding one specific form of payment
network will be provided below. Processing centers 140, 142,
144 can include, for example, a host computer of an issuer of a
payment device.
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016) guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra, Table One.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant contends “the technological processes, as well as the
improvement by embodiments of the claimed invention, are described by the
specification at, for example, page 1, lines 12-24.” Reply Br. 8. In further
support, Appellant points to the Specification at page 14, line 7 through page
15, line 17. See Reply Br. 8–9.
Appellant contends:
[T]he present claims are distinguishable from Smart Systems
because, as discussed above, the present claims provide a method
for processing data that improves technological processes.
Contrast Smart Systems Innovations, LLC v. Chicago Transit
Auth., 873 F.3d at 1372 (“The Asserted Claims are not directed
to a new type of bankcard, turnstile, or database, nor do the
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claims provide a method for processing data that improves
existing technological processes.”).
Reply Br. 10.
We disagree with Appellant that the claims on appeal are
distinguishable from the open-payment fare system considered by the court
in Smart Systems. In Smart Systems, the subject claims were directed to
“[a]n open-payment fare system [that] allow[ed] riders to conveniently and
quickly access mass transit by using existing bankcards,” such as debit and
credit cards, thereby “‘eliminat[ing] the need for, and added operational cost
of, dedicated fare-cards,’ paper tickets, and tokens.” Smart Sys. Innovations,
LLC v. Chicago Transit Auth., 873 F.3d 1364, 1368 (Fed. Cir. 2017) (last
alteration in original).
Here, Appellant’s claimed invention similarly eliminates the need for
the added operational cost of dedicated fare-cards, paper tickets, and tokens,
by providing an electronic ticket that is obtained from a remote server
wherein the electronic ticket and confirmation “are obtained only if said
prospective transit rider is within said geographic proximity of said
particular [transit] boarding area.” Claim 11.
Similar to the court’s holding in Smart Systems (873 F.3d at 1375), we
conclude Appellant’s independent claim 11 merely uses generic computer
and network components to collect and process data, in this case, proximity
data. Similar to Smart Systems (873 F.3d at 1372), and to the extent that
Appellant’s claimed invention arguendo improves prior systems of fare
collection by speeding up the process at the transit entry area, this is not
enough to confer patent eligibility, because “[u]sing a computer to accelerate
an ineligible mental process does not make that process patent-eligible.”
Bancorp, 687 F.3d at 1279.
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Regarding independent claims 11 and 22, our reviewing court guides
that the “‘mere automation of manual processes using generic computers’
. . . ‘does not constitute a patentable improvement in computer technology.’”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055
(Fed. Cir. 2017). Simply adding generic hardware and computer
components to perform abstract ideas does not integrate those ideas into a
practical application, because the “mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 223; see 2019 Memorandum, 84 Fed. Reg. at
55 n.30. See also 2019 Memorandum, 84 Fed. Reg. at 55 (“merely
includ[ing] instructions to implement an abstract idea on a computer” is an
example of when an abstract idea has not been integrated into a practical
application).
We emphasize that an improved abstract idea is still an abstract
idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
90 (2012) (holding that a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible). See also Synopsys, 839 F.3d
at 1151 (“[A] claim for a new abstract idea is still an abstract idea.”
(emphasis omitted)).
As set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
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perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
MPEP § 2106.05(a) (emphasis added).
Here, we find Appellant has not persuasively shown how the claims
that remain rejected under 35 U.S.C. § 101 “recite the details regarding how
a computer aids the method, the extent to which the computer aids the
method, or the significance of a computer to the performance of the
method.” Id. (emphasis added).
Accordingly, on this record, we conclude independent claim 11, and
independent claim 22, which recites similar limitations of commensurate
scope, do not recite an improvement to the functionality of a computer or
other technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b), 2106.05(c)
Appellant advances no arguments that any of the method claims that
remain rejected under 35 U.S.C. § 101 are tied to a particular machine, or
transform an article to a different state or thing. See MPEP § 2106.05(c).
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(holding that a claim does not pass the machine-or-transformation test if it is
“not tied to any particular novel machine or apparatus, only a general
purpose computer”).

MPEP § 2106.05(e) Meaningful Claim Limitations
The Examiner finds: “The claims [(11, 12, 17–19, and 22–25)] do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because there are no meaningful limitations
that transform the exception into a patent eligible application.” Final Act. 7.
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In response, Appellant advances no substantive, persuasive arguments
that any of claims 11, 12, 17–19, and 22–25 that remain rejected under
35 U.S.C. § 101 recite certain “meaningful” claim limitations, such as those
of the types addressed under MPEP § 2106.05(e), that impose meaningful
limits on the judicial exception.10
MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
merely using a computer as a tool
to perform an abstract idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One (above), and as supported in
Appellant’s Specification, for example, at pages 2–7, as discussed above.
Therefore, we conclude Appellant’s independent claims 11 and 22
merely use generic programmed computer components (e.g., “a remote
server” and “a portable electronic device” (independent claim 11), and “at
least one processor” and “a memory” (independent claim 22)) as tools to
perform an abstract idea.

10 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e):
“[A]ppl[ying] or us[ing] the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” (emphasis added).
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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception
As mapped in the right column of Table One, supra, we conclude that
independent claim 11 recites extra or post-solution activities that courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g); 2019
Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see Claim 11, Table One, supra, i.e., “dispatching” steps
“b” and “d,” and “obtaining” steps “c” and “e.” See 2019 Memorandum, 84
Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g). See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). These extra or post-
solution limitations use a generic computer component that performs a
generic computer function as a tool to perform an abstract idea. Thus, these
limitations do not integrate the abstract idea into a practical application. See
Alice, 573 U.S. at 223–24. Instead, these limitations merely perform
insignificant extra-solution activities. Cf. Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with the Board that printing and
downloading generated menus are insignificant post-solution activities). See
also Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d
1329, 1341 (Fed. Cir. 2017) (Streaming audio/visual data over a
communications system like the Internet held patent ineligible.).

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MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “[T]he prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–
12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
To the extent that Appellant advances arguments regarding a lack of
preemption in the Appeal Brief (27–28), our reviewing court provides
applicable guidance: “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at 1362–63 (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
Nor do claims 11, 12, 17–19, and 22–25 that remain rejected under
35 U.S.C. § 101 present any other issues as set forth in the 2019
Memorandum regarding a determination of whether the additional generic
computer elements integrate the judicial exception into a practical
application. See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 11, 12, 17–19, and 22–25 do not integrate the
judicial exception into a practical application. Therefore, we proceed to Step
2B, The Inventive Concept.
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The Inventive Concept – Step 2B
Under the 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).11 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
Appellant has not invoked Berkheimer in the Appeal Brief or in the
Reply Brief in support of any substantive, persuasive argument. Nor has
Appellant traversed the Examiner’s finding that “[a]part from having and
executing mere instructions to perform the abstract idea itself (e.g.,

11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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‘modules’) they only serve to perform well-understood functions (e.g.,
receiving, storing, retrieving, and transmitting data over network.”
Final Act. 7. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
BASCOM
Appellant contends:
Even assuming arguendo that “the limitations of the
claims, taken individually, recite generic computer, network and
Internet components, none of which is inventive by itself. . . .
The inventive concept inquiry requires more than recognizing
that each claim element, by itself, was known in the art. [A]n
inventive concept can be found in the nonconventional and non-
generic arrangement of known, conventional pieces.” BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349-50 (Fed. Cir. 2016).
Reply Br. 11 (alterations in original).
However, because Appellant has not advanced substantive, persuasive
arguments regarding any claimed nonconventional and non-generic
arrangement of known computer components, we likewise see no inventive
concept in any purported ordered combination of these limitations. Cf.
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016) (“[A]n inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”)
(emphases added).
In light of the foregoing, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 11, 12, 17–19, and 22–25
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application, and does not include an inventive
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concept. Therefore, we sustain the Examiner’s Rejection A under 35 U.S.C.
§ 101 of claims 11, 12, 17–19, and 22–25. 12

Anticipation Rejection B of Independent Claims 1 and 11 under § 102(a)(1)
Representative Independent Claim 1
1. A method comprising the steps of:
[L1] obtaining, at a remote server, an indication that a
prospective transit rider has come into geographic proximity of
a particular transit boarding area;
at the remote server, dispatching an authorization
request to an issuer of a payment card account associated with
said prospective transit rider, based on said remote server
accessing a database based on said indication;
obtaining, at said remote server, a response to said
authorization request, from said issuer;
if said response is affirmative, initiating dispatch of an
electronic ticket to a portable electronic device of said
prospective transit rider;
wherein said remote server is coupled to said portable
electronic device of said prospective transit rider via a first
telecommunication network comprising a transit network;
wherein said remote server is coupled to said issuer of
said payment card account via a second telecommunication
network comprising a payment card network; and
wherein said authorization request and said electronic
ticket are dispatched only if said prospective transit rider is
within said geographic proximity of said particular transmit
boarding area.

12 Regarding Rejection A under 35 U.S.C. § 101, grouped claims 12, 17–19,
and 22–25 (not argued separately) fall with representative independent claim
11. See 37 C.F.R. § 41.37(c)(1)(iv).

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Appeal Br. 62, “CLAIMS APPENDIX” (bracketed lettering added and disputed
limitation “L1” emphasized).
Representative Independent Claim 11
11. A method comprising the steps of:
dispatching, from a portable electronic device of a
prospective transit rider, to a remote server, an indication that
said prospective transit rider has come into geographic
proximity of a particular transit boarding area;
[L2] obtaining, from said remote server, a confirmation
query seeking to confirm whether said prospective transit rider
seeks to board a certain transit mode, at a certain fare, said
confirmation query having been determined based on said
indication;
dispatching, from said portable electronic device of said
prospective transit rider, to said remote server, an affirmative
response to said confirmation query; and
obtaining, from said remote server, an electronic ticket;
wherein said portable electronic device of said
prospective transit rider is coupled to said remote server via a
telecommunication network comprising a transit network; and
wherein said confirmation query and said electronic
ticket are obtained only if said prospective transit rider is within
said geographic proximity of said particular transmit boarding
area.
Appeal Br. 65–66, “CLAIMS APPENDIX” (bracketed lettering added and the
same disputed limitation “L2” emphasized).

Issues under § 102
Issues: Under 35 U.S.C. § 102(a)(1), we focus our analysis on the
following argued limitations that we find to be dispositive regarding
anticipation Rejection B of claims 1, 11, 20, and 22:
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Did the Examiner err by finding Dixon expressly or inherently
discloses contested, dispositive limitations “L1” and “L2:”
[L1] obtaining, at a remote server, an indication that a
prospective transit rider has come into geographic proximity of
a particular transit boarding area;
at the remote server, dispatching an authorization
request to an issuer of a payment card account associated with
said prospective transit rider, based on said remote server
accessing a database based on said indication; and

[L2] obtaining, from said remote server, a confirmation
query seeking to confirm whether said prospective transit rider
seeks to board a certain transit mode, at a certain fare, said
confirmation query having been determined based on said
indication,
within the meaning of representative independent claims 1 and 11,
respectively?13 Appeal Br. 62, 65–66 (emphasis added); see Final Act. 9–
10.
Appellant disputes the Examiner’s findings regarding limitation “L1”
of independent claim 1 and argues that “Dixon teaches away by suggesting
arrangements where a transit user can purchase tickets at locations outside a
geographic proximity of a particular transit boarding area.” Appeal Br. 35.
Appellant additionally disputes the Examiner’s findings regarding
limitation “L2” of independent claim 11:
Dixon fails to disclose seeking to confirm whether a
prospective transit rider seeks to board a certain transit mode at
a certain fare: i.e., the prospective transit rider confirming the
fare before boarding the certain transmit mode. Rather, Dixon
repeatedly and consistently teaches arrangements in which a

13 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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transit user is not provided with fare information until the user
has at least entered, if not also exited, a transit vehicle.
Appeal Br. 40. (emphasis added, underlining omitted).
Regarding the first contention, and based upon our review of the
record, the Examiner relies upon, inter alia, paragraph 47 of Dixon to teach
the disputed limitation “L1”, which Appellant does not traverse.
Therein we find the following description:
[T]ransactions, such as passage of a user at an access control
point and/or the wireless detection of a passenger’s ride on a
transit vehicle can be recorded and/or tracked by the central
ticketing system 112 and reconciled, on a per-transaction basis
and/or collectively with other transactions. Along these lines,
the central ticketing system 112 may reconcile payment for the
transactions with the funding source 165 as the transactions
are received.
Dixon ¶ 47 (emphasis added); see Final Act. 9.
We find Dixon’s description (Dixon ¶ 47) of a user passing through
“an access control point” and the “central ticketing system” reconciling
payment for such “transaction” discloses “obtaining, at a remote server, an
indication that a prospective transit rider has come into geographic
proximity of a particular transit boarding area,” and “at the remote server,
dispatching an authorization request . . . based on said indication,” as recited
in independent claim 1. (Emphases added.)
Accordingly, in reviewing the record, we find a preponderance of the
evidence supports the Examiner’s finding that Dixon expressly or inherently
anticipates disputed limitation “L1” of independent claim 1.
Regarding Appellant’s second contention, and based upon our review
of the record, the Examiner relies on, inter alia, paragraphs 88 and 93 of
Dixon to disclose the disputed limitation “L2” of independent claim 11,
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which Appellant does not traverse.
In Dixon paragraphs 88 and 93, we find the following descriptions:
[R]oute information may be used to send local information to a
transit user. As discussed above, local information can include
fare information . . . .

[A]fter communicating with a mobile device 250 and
performing any additional verification, a transit vehicle
computer 320 can send information to the mobile device 250
causing the mobile device 250 to show . . . a fare payment
indicator . . . .
Dixon ¶¶ 88, 93 (emphasis added); see Final Act. 10.
We find these descriptions of a transit user receiving fare information
and confirmation of fare payment, together with Dixon’s description of a
“transit vehicle computer 320 . . . [that] detect[s] the mobile device 250” and
then “send[s] information to the mobile device 250 requesting user input.”
Dixon ¶ 91 discloses disputed limitation “L2” of independent claim 11. In
particular, we find a “request confirmation by a transit user whether the
transit user has boarded a transit vehicle 310” (Dixon ¶ 91), describes
obtaining, from said remote server, a confirmation query
seeking to confirm whether said prospective transit rider seeks
to board a certain transit mode, at a certain fare, said
confirmation query having been determined based on said
indication,
as recited in independent claim 11 (emphasis added).
Therefore, in reviewing the record, we find a preponderance of the
evidence supports the Examiner finding that Dixon expressly or inherently
anticipates disputed limitation “L2” of independent claim 11.
Accordingly, we sustain the Examiner’s anticipation Rejection B of
independent representative claims 1 and 11. For essentially the same
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reasons, we also sustain the Examiner’s anticipation Rejection B of
independent claims 20 and 22, respectively, which recite similar limitations
of commensurate scope. See Final Act. 11.
Remaining grouped dependent claims 2, 10, 12, 19, and 24 that were
also rejected under the Examiner’s anticipation Rejection B, and were not
argued separately, fall with their respective representative independent claim
1 or 11. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the
Examiner’s anticipation rejection B of claims 1, 2, 10–12, 19, 20, 22, and 24
over Dixon. We address anticipation rejection B of dependent claim 23,
infra, because it was argued separately.

Anticipation Rejection B of Dependent Claim 23 under § 102(a)(1)
Appellant disputes the Examiner’s anticipation rejection of claim 23
and argues that
the relied-upon portions of Dixon fail to teach or suggest
storing, by said portable electronic device of said prospective
transit rider, at least one of a ride history and a purchase
history of said prospective transit rider.
Appeal Br. 44 (emphasis added, underlining omitted); see Final
Act. 11.
Turning to the evidence relied upon by the Examiner (Dixon ¶¶ 41–
42, 86–87, 102, cited in Final Act. 11), we find no express or inherent
disclosure of the limitation “storing, by said portable electronic device of
said prospective transit rider, at least one of a ride history and a purchase
history of said prospective transit rider,” as recited in dependent claim 23
(emphasis added).
Although in the Answer 8–9 the Examiner explains that “the portable
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device cannot collect and transmit . . . [GPS and accelerometer] data without
at least storing it temporarily” (emphasis added) (see Dixon ¶¶ 86–87), we
find some degree of speculation would be required to ascertain whether such
GPS and accelerometer data are expressly or inherently “stored” on the
“portable electronic device of said prospective transit rider.”
“A rejection . . . must rest on a factual basis . . . .” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” Id.
Here, we decline to engage in speculation.
On this point, we find the Examiner has not fully developed the record
to show that the ride or purchase history data is stored on the “portable
electronic device of said prospective transit rider,” as required by the
language of claim 23. Therefore, we are constrained on this record to
reverse the Examiner’s anticipation Rejection B of dependent claim 23.

Obviousness Rejection C of Dependent Claims 9 and 17 over Dixon
Under 35 U.S.C. § 103, we focus our analysis on the following argued
limitations that we find to be dispositive regarding the rejection of dependent
claims 9 and 17:
Issue: Did the Examiner err by finding Dixon teaches or suggests
“obtaining, at said remote server, from a portable electronic device of an
official, a validation query comprising a bar code generated by said portable
electronic device of said prospective transit rider,” as recited in dependent
claim 9, and “providing, by said portable electronic device of said
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prospective transit rider, to an official, a bar code . . . with which said
official can formulate a validation query, from a portable electronic device
of said official to said remote server,” as recited in dependent claim 17?
Appellant contends that in Dixon, “there is no teaching or suggestion
directed to any arrangement which includes obtaining, from fare inspector
device 330, a validation query comprising a bar code or other fare payment
indicator 620 displayed on user mobile device 250.” Appeal Br. 47.
Appellant further urges there is no teaching or suggestion in Dixon of “any
arrangement which includes formulating a validation query, from fare
inspector device 330, comprising a bar code or other fare payment indicator
620 displayed on user mobile device 250.” Appeal Br. 48.
In the Final Office Action, the Examiner finds:
Even if some of these functions are only disclosed specifically as
the vehicle or another computer in Dixon, one of ordinary skill
would have recognized that either the central remote server or
portable device is capable of performing these in the same
manner. It would have been prima facie obvious to do so
because it is merely the simple substitution of one computing
device in the network for another with the same or similar data
processing capabilities.
Final Act. 12–13.
However, turning to the evidence (Dixon ¶¶ 93–98), we find no
express teaching of “obtaining, at said remote server, from a portable
electronic device of an official, a validation query comprising a bar code” as
recited in dependent claim 9.
Our controlling case law recognizes that substitution of one known
element for another in a manner that yields predictable results to one of
ordinary skill in the art may support a conclusion that the claim would have
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been obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–21 (2007).
Here, however, we find the Examiner has not fully developed the
record to show that “a validation query comprising a bar code” is “generated
by the portable electronic device of said prospective transit rider,” and is
also “obtained at said remote server, from a portable electronic device of an
official, as required by the language recited in dependent claim 9.
In particular, the Examiner has not provided any evidence
demonstrating why an artisan would have been motivated to substitute “one
computing device in the network for another with the same or similar data
processing capabilities.” Final Act. 12–13. Therefore, we are constrained
on this record to reverse the Examiner’s obviousness Rejection C of
dependent claim 9 over Dixon.
Similarly, for essentially the same reasons argued by Appellant in the
Appeal Brief (48–49) we also reverse the Examiner’s obviousness Rejection
C of dependent claim 17 over Dixon.

Obviousness Rejection D of Dependent Claims 7 and 21
Regarding obviousness Rejection D of Dependent Claims 7 and 21,
Appellant argues the Examiner has not provided proper reasoning for
combining Dixon with Melis:
[T]he proffered rationale is improperly “focused on what a
skilled artisan would have been able to do, rather than what a
skilled artisan would have been motivated to do at the time of the
invention.”
Appeal Br. 50 (emphasis omitted).
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In the Final Office Action Examiner finds:
Dixon does not explicitly teach the bus is a rapid transit
bus; which is taught by Meils (col. 6, lines 60-64). It would
have been prima facie obvious to incorporate this element
because it is merely a substitution of the rapid bus in Melis for
the bus in Dixon. Both are disclosed as forms of transit used by
riders. The only difference is the specific mode of transit itself.
Based upon the level of skill displayed in the references, this
substitution could be performed by routine engineering
producing predictable results.
Final Act. 14 (emphasis added).
Here, in contrast to the Examiner’s previous proffered substitution of
“one computing device in the network for another with the same or similar
data processing capabilities” (Final Act. 12–13) (regarding Rejection C of
dependent claims 9 and 17, as discussed above), we reach a different result.
It is our view that the Examiner’s proffered modification of the
generic “bus” in Dixon (e.g., ¶¶ 41, 42, 54, 55, 57, 62, 87) with the “rapid”
bus in Melis (col. 6, ll. 60–64) would have merely realized a predictable
result—and thus we conclude it would have been obvious to one of ordinary
skill in the art to substitute Dixon’s bus with the rapid bus of Melis (if for no
other reason, a rapid bus takes less time). See KSR, 550 U.S. at 401.
Moreover, Appellant does not point to any evidence of record that
shows combining the teachings of Dixon and Melis in the manner proffered
by the Examiner (Final Act. 14–15) would have been “uniquely challenging
or difficult for one of ordinary skill in the art” or would have “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Regarding Appellant’s hindsight argument (Appeal Br. 50, last line),
Appellant has not identified knowledge gleaned only from the present
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application that was not within the level of ordinary skill at the time the
claimed invention was made. See In re McLaughlin, 443 F.2d 1392 (CCPA
1971). Moreover, Appellant has not provided any objective evidence of
secondary considerations (e.g., a long-felt need, commercial success, or
unexpected results), which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). See Appeal Br. 51.
Therefore, because we are not persuaded the Examiner erred, we
sustain the Examiner’s obviousness Rejection D of dependent claims 7 and
21 over the combined teachings and suggestions of Dixon and Melis.

Obviousness Rejection D of Dependent Claim 8
Appellant also disputes the Examiner’s findings that Dixon at
paragraphs 88, 91–93, 121, and 125 teaches or suggests the limitations of
claim 8. Specifically, Appellant contends, similar to arguments made
against disputed limitation “L2” of independent claim 11, that
Dixon repeatedly and consistently teaches arrangements in
which a transit user is not provided with fare information until
the user has at least entered, if not also exited, a transit vehicle.
Appeal Br. 52.
Based upon our review of the record, we find the Examiner also relies
upon, inter alia, paragraphs 88 and 93 of Dixon to teach the disputed
limitations of claim 8, which Appellant does not traverse.
Therefore, for essentially the same reasons discussed with respect to
the anticipation rejection of claim 11, we find Dixon’s descriptions of a
transit user receiving fare information and confirmation of fare payment
(Dixon ¶¶ 88, 93), together with descriptions of a “transit vehicle computer
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. . . detecting the mobile device 250” and “send[ing] information to the
mobile device 250 requesting user input. For example, . . . request
confirmation by a transit user whether the transit user has boarded a transit
vehicle 310” (id. ¶ 91), teaches or at least suggests the disputed limitations
of:
dispatching, from said remote server, to said portable
electronic device of said prospective transit rider, a
confirmatory query asking said prospective transit rider to
confirm accuracy of said associated rapid transit bus route,
said associated direction of travel, and said corresponding
fare; and
obtaining, at said remote server, an affirmative response
to said confirmatory query;
wherein said dispatch of said electronic ticket to said
portable electronic device of said prospective transit rider is
further responsive to said affirmative response to said
confirmatory query,
as recited in dependent claim 8 (emphasis added).
In reviewing the record, we find a preponderance of the evidence
supports the Examiner legal conclusion of obviousness regarding Rejection
D of dependent claim 8. Accordingly, we sustain the Examiner’s
obviousness Rejection D of dependent claim 8.

Rejection E of claim 18 under § 103
In view of the lack of any substantive, separate arguments directed to
Rejection E of dependent claim 18, we sustain the Examiner’s Rejection E
of claim 18. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Rejection F of claim 25 under § 103
Claim 25 recites:
The method of Claim 24, further comprising:

displaying, by said portable electronic device of said prospective
transit rider, said electronic ticket obtained from said remote
server;

displaying, by said portable electronic device of said prospective
transit rider, a dynamic countdown before said electronic ticket
expires; and

displaying, by said portable electronic device of said prospective
transit rider, a watermark after said electronic ticket expires.

In the Final Office Action the Examiner finds:
Bommarito [(Figs. 2, 3a, 3b; col. 28, line 64)] teaches teach
displaying a dynamic countdown before said ticket expires; and
displaying an indication after said ticket expires . . . . It would
have been prima facie obvious to incorporate this element for the
same reason it is useful in Bommarito—namely, so that users can
easily see the progression of a ticket validity period. Both Dixon
and Bommarito deal with admission tickets, and one skilled in
the art would have recognized that using this technique would
improve the system of Dixon due to their similar purposes and
functions.
Final Act. 16 (emphasis added).
Appellant traverses Examiner’s rejection of claim 25 and contends
that combining Dixon and Bommarito in the manner proposed in the Office
Action would render Dixon inoperable for its intended purpose, or at least
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would require changing the principle of operation of at least one of the
references. Appeal Br. 54.
In particular, Appellant persuasively argues: “In contrast to Dixon, the
purpose of which is to allow for a transit user's existing wireless mobile
device to be used in place of a traditional ticket, Bommarito is directed to an
article of the invention which implements a timer in which a fluid migrates
through channels of a microstructured substrate.” Appeal Br. 54 (citing
Bommarito’s Abstract).
Because we find Appellant’s point is persuasive (id.), we are
constrained on this record to reverse Examiner’s obviousness Rejection F of
dependent claim 25.

Conclusions
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that claims 11, 12, 17–19, and 22–25, as remaining
rejected on appeal under Rejection A under 35 U.S.C. § 101, are directed to
patent-ineligible subject matter.
The Examiner did not err with respect to anticipation Rejection B of
claims 1, 2, 10–12, 19, 20, 22, and 24, and obviousness Rejection D of
claims 7, 8, and 21, and obviousness Rejection E of claim 18.
The Examiner erred with respect to anticipation Rejection B of claim
23, and obviousness Rejection C of claims 9 and 17, and obviousness
Rejection F of claim 25.

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DECISION SUMMARY
Rej. Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
A 11, 12,
17–19,
22–25
101 Eligibility 11, 12,
17–19,
22–25

B 1, 2,
10–12,
19, 20,
22–24
102(a)(1) Dixon 1, 2,
10–12,
19, 20,
22, 24
23
C 9, 17 103 Dixon 9, 17
D 7, 8, 21 103 Dixon, Melis 7, 8, 21
E 18 103 Dixon, Melis,
Morrill
18
F 25 103 Dixon, Bommarito,
Official Notice
25
Overall
Outcome
1, 2, 7, 8,
10–12,
17–25
9

FINALITY AND RESPONSE
We have affirmed at least one rejection for every claim on appeal
(claims 1, 2, 7–12, and 17–25) except for dependent claim 9, in which we
reverse Rejection C of claim 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART