MasterCard International Incorporated

Patent Trials and Appeals Board

Jun 24, 2020

14921284 - (D) (P.T.A.B. Jun. 24, 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.
14/921,284 10/23/2015 Rohit CHAUHAN P02290-US-
UTIL (M01.387)
8582
125619 7590 06/24/2020
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
MARTINEZ-HERNAND, EDGAR R
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT CHAUHAN
Appeal 2020-000814
Application 14/921,284
Technology Center 3600
Before ELENI MANTIS-MERCADER, JAMES R. HUGHES, and
LARRY J. HUME,Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all rejections pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as MasterCard
International Incorporated. Appeal Br. 2.
Appeal 2020-000814
Application 14/921,284

2
STATEMENT OF THE CASE2
The claims are directed to a biometric verification systems and
methods for payment transactions. See Spec. (Title). In particular,
Appellant’s disclosed embodiments and claimed invention relate to “systems
and methods described herein [that] provide a framework to identify people
who attempt to make ATM and/or merchant POS transactions based on
biometric information (that is not stored or transmitted over a network) and
information associated with payment accounts.” Spec. 4:19–22.
Exemplary Claims
Claim 11, reproduced below, is representative of the subject matter on
Appeal (emphasis added to contested prior-art limitation):
11. A computer-implemented method, comprising:
reading, by a point of sale device, biometric information
of the user;
executing, by the point of sale device, an encryption
algorithm on the biometric information read from the user to
create a token key value, said token key value being a character
string generated by applying the encryption algorithm to the
biometric information;
receiving, by the point of sale device from the user, a
personal identification number value;
transmitting the token key value and the personal
identification number value from the point of sale device to an
authentication server;

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
July 2, 2019); Reply Brief (“Reply Br.,” filed Nov. 8, 2019); Examiner’s
Answer (“Ans.,” mailed Sept. 9, 2019); Final Office Action (“Final Act.,”
mailed Nov. 29, 2018); and the original Specification (“Spec.,” filed
Oct. 23, 2015).
Appeal 2020-000814
Application 14/921,284

3
receiving the token key value and the personal
identification number value at the authentication server;
determining that the received token key value and the
personal identification number value match a reference token
key value and a reference personal identification number value
in a user database; said determining not including decrypting
said received token key value; and
transmitting a signal, from the authentication server to
the point of sale device, indicating that the received token key
value and the personal identification number value match the
reference token key value and the verified personal
identification number value in the registered user database.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
von Mueller et al. (“von Mueller”) US 2008/0091944 A1 Apr. 17, 2008
Yi et al. (“Yi”) US 2015/0026479 A1 Jan. 22, 2015
Hu et al. (“Hu”) US 2015/0066651 A1 Mar. 5, 2015
Webber et al. (“Webber”) US 9,330,511 B2 May 3, 2016
REJECTIONS
R1. Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or abstract idea) without significantly more. Ans. 11–
14; see also Final Act. 2–7.
R2. Claims 1–4, 6–14, and 16–20 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of von Mueller,
Yi, and Webber. Final Act. 8.
Appeal 2020-000814
Application 14/921,284

4
R3. Claims 5 and 15 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of von Mueller, Yi,
Webber, and Hu. Final Act. 16.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7–13) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–20 on the basis of representative
claim 11; and we decide the appeal of obviousness Rejection R2 of claims
1–4, 6–14, and 16–20 on the basis of representative claim 11.
Remaining claims 5 and 15 in Rejection R3, not argued separately,
stand or fall with the respective independent claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with particular arguments made by Appellant with respect
to Rejection R1 of claims 1–20 under 35 U.S.C. § 101.

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2020-000814
Application 14/921,284

5
However, we disagree with Appellant’s arguments with respect to the
obviousness rejection of claim 11 (Rejection R2) and, unless otherwise
noted, we incorporate by reference herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s
Answer in response to Appellant’s arguments. We highlight and address
specific findings and arguments regarding claim 11 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1–20
Issue 1
Appellant argues (Appeal Br. 7–10; Reply Br. 2–3) the Examiner’s
rejection of claim 11 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 11 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
Appeal 2020-000814
Application 14/921,284

6
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
Appeal 2020-000814
Application 14/921,284

7
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). While a claim limitation to a process that “can be performed in the
human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
Appeal 2020-000814
Application 14/921,284

8
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.5
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that

5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375–
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int'l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
Appeal 2020-000814
Application 14/921,284

9
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf). “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
Appeal 2020-000814
Application 14/921,284

10
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.8
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) 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); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
Appeal 2020-000814
Application 14/921,284

11
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
Appeal 2020-000814
Application 14/921,284

12
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See id. at 54. If not, then analysis proceeds to Step
2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
Appeal 2020-000814
Application 14/921,284

13
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.11 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).12 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Appeal 2020-000814
Application 14/921,284

14
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.14
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .

14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
Appeal 2020-000814
Application 14/921,284

15
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to claims 1–20 for the specific reasons discussed below. We highlight and
address specific findings and arguments regarding claim 11 for emphasis as
follows.
Step 1 – Statutory Category
Claim 11, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
Under the Revised Guidance, the Examiner determined claims 1–20
are directed to the abstract idea “of a commercial transaction that is part of a
certain methods of organizing human activity.” Ans. 12; contrast with Final
Act. 4 (“Claims 1 and 11 were found to be directed to the concept of ‘a
Appeal 2020-000814
Application 14/921,284

16
multi-credential authentication process’” and Final Act. 6 (“The concept as
described defines a judicial exception, an abstract idea of ‘An Idea of Itself’,
which is similar to the concepts found by the courts to be abstract, such as
‘Collecting information, analyzing it, and displaying certain results of the
collection and analysis’ (Electric Power Group) and very closely related to
‘Providing restricted access to resources’ (Prism Techs.).” We disagree with
the Examiner’s conclusion, as discussed below. We evaluate, de novo,
whether claim 11 recites an abstract idea based upon the Revised Guidance.
The Examiner continues to rely upon analysis pertinent under the
previous subject matter eligibility guidance, as well as attempting to fit that
analysis under the current Revised Guidance. See Ans. 6 (“The abstract
concept of a ‘multi credential authentication process’ is found in the recited
limitations, where the biometric information of a user is scanned and a PIN
is entered. The abstract idea of authentication was defined as An Idea of
Itself, which was still part of the analysis of Step 2A in the previous
guidance, and which fits as a similar process to the process in the case of
Electric Power Group (Collecting information, analyzing it, and displaying
certain results of the collection and analysis).”). Ans. 6.
In response to the Examiner’s conclusion in the Answer (cited above)
that the claims are directed to the abstract idea of a “multi-credential
authentication process,” Appellant contends:
In coming to this conclusion, however, the Examiner cites and
relies upon numerous technologically-based claim elements,
including “reading biometric information (by a point of sale
device)”, “receiving a PIN (by the point of sale device)”,
“executing an encryption algorithm”, and “sending a signal (to
indicate verification)”. Only by completely ignoring the content
Appeal 2020-000814
Application 14/921,284

17
of these claim limitations can the Examiner reach a conclusion
that the claims are directed to “abstract” subject matter. The
Examiner's own analysis undermines his conclusion, and should
lead to the result that the claims are held patent-eligible.
Reply Br. 2 (citing Ans. 5–6). With respect to “the Examiner’s purported
application of the January 2019 guidance, the Examiner concludes-as to
‘Prong One’ of Step 2A-that the claims are directed to the alleged abstract
idea of a ‘commercial transaction’. . . . The Examiner reaches this erroneous
conclusion only by ignoring numerous technologically-based claim
elements.” Reply Br. 3.
For the reasons discussed below, we disagree with the Examiner’s
conclusion that the claimed invention is directed to an abstract idea,
particularly the abstract idea of a commercial transaction.
We conclude various limitations in claim 11 may be construed as
reciting post or extra-solution activity as delineated in the Revised Guidance,
e.g., “reading . . . biometric information of the user” and “receiving . . . from
the user, a personal identification number value” (data gathering); and
“transmitting the token key value and the personal identification number
value from the point of sale device to an authentication server” (extra-
solution activity, i.e., a computer sends and receives data).
However, given the October 2019 Update to the Revised Guidance,
based upon relevant case law, we conclude as a matter of claim construction,
that claim 11 is not directed to the abstract idea of a certain methods of
organizing human activity in the form of a commercial interaction, but
instead is directed to the non-abstract idea of an improved encryption and
Appeal 2020-000814
Application 14/921,284

18
authentication system, that happens to be carried out in the context of a
point-of-sale (POS) system.
In particular, we reach our conclusion of non-abstractness of claim 11
as a whole because we determine that the recitations of “executing, by the
point of sale device, an encryption algorithm on the biometric information
read from the user to create a token key value, said token key value being a
character string generated by applying the encryption algorithm to the
biometric information,” and “determining that the received token key value
and the personal identification number value match a reference token key
value and a reference personal identification number value in a user
database; said determining not including decrypting said received token key
value” recite non-abstract, technology based, concrete implementations of
encryption techniques that could not reasonably be construed as being
performed in the human mind or by pen and paper as a mental process. See
Synopsys, 839 F.3d at 1149 (distinguishing TQP Development, 2014 WL
651935, at *4) (the specific data encryption method “could not conceivably
be performed in the human mind or with pencil and paper”). While a claim
limitation to a process that “can be performed in the human mind, or by a
human using a pen and paper” qualifies as a mental process, a claim
limitation that “could not, as a practical matter, be performed entirely in a
human’s mind” (even if aided with pen and paper) would not qualify as a
mental process.15

15 CyberSource, 654 F.3d at 1372, 1375–76 (distinguishing Research Corp.
Techs., 627 F.3d 859, and SiRF Tech., 601 F.3d 1319).
Appeal 2020-000814
Application 14/921,284

19
Accordingly, based upon the claim language, in light of the
Specification (e.g., see Spec. 19 (Abstract)), we conclude claim 11 is
directed to the non-abstract idea of an improved encryption and
authentication system, and not the abstract idea of a commercial interaction
as determined by the Examiner in the Answer. We reach a similar
conclusion with respect to independent system claim 1 which is of
commensurate scope to method claim 11.
Because the claim does not recite a judicial exception (a law of nature,
natural phenomenon, or subject matter within the enumerated groupings of
abstract ideas above), in accordance with the Revised Guidance as amplified
by the October 20190 Update, we conclude the claim is patent-eligible at
Step 2A(i). This determination concludes the eligibility analysis. Thus, we
do not affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
2. § 103(a) Rejection R2 of Claims 1–4, 6–14, and 16–20
Issue 2
Appellant argues (Appeal Br. 11–13; Reply Br. 3–4) the Examiner’s
rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious over the
combination of von Mueller, Yi, and Webber is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a computer-implemented method that includes, inter alia, the
step of “determining that the received token key value and the personal
identification number value match a reference token key value and a
reference personal identification number value in a user database; said
Appeal 2020-000814
Application 14/921,284

20
determining not including decrypting said received token key value,” as
recited in claim 11 (emphasis added)?
Analysis
The Examiner finds (Final Act. 9) von Mueller in paragraph 225
teaches or suggests “determining that the received token key value and the
personal identification number value match a reference token key value and
a reference personal identification number value in a user database
(interpreted as comparing received data with stored data for a match . . .),”
and finds Webber teaches or suggests matching without decryption, i.e.,
“Webber does teach determining a match without decrypting said received
token key value (before carrying out this process and as a double security
check, the previously stored fingerprint template is also encrypted with the
newly derived encryption key and, utilising compare module 168, it is
compared with encrypted fingerprint templates stored in the Blocks 1 to n of
the encrypted template register 190, to determine if a match can be found.)”
Final Act. 12 (quoting Webber 16:52–17:22) (original quotes omitted).
Appellant admits Webber’s teaching of comparison of data in
encrypted form. Appeal Br. 12 (“To add additional security, the current
fingerprint scan template and the template stored in the verification device
database are compared in encrypted form.”). However, Appellant contends
“the Examiner departs from what would reasonably be understood from the
prior art—taken as a whole—by a person of ordinary skill.” Appeal Br. 11.
Instead, Appellant argues the Examiner’s reference combination is
based upon impermissible hindsight. Appeal Br. 12 (“the proposed
combination of Von [sic] Mueller with both Yi and Webber is not logical or
Appeal 2020-000814
Application 14/921,284

21
supported by the teachings of the references, and further is based on
hindsight derived from the teachings of the present application.”).16 “[T]he
Examiner states it would have been ‘an obvious security feature to preserve
the biometric information, including lack of transmission of keys.’
However, these advantages are not stated in Webber or in the other
references. Rather, it is a teaching of the present application, that storing the
reference token key as an encrypted version of the biometric information,
never to be decrypted, enhances security of the biometric-based
authentication system.” Id.
In Webber, the fingerprint reader is associated with a modem in
the verification device 10, and all the storage of biometric
information, including encrypted versions thereof, is local-in
the verification device 10--and would not be subject to the risks
addressed in the present application. By contrast, both Von [sic]
Mueller and Yi involve authentication by a remote facility. Yi,
which is more pertinent than Webber, explicitly teaches
decrypting the biometric information to be authenticated. The
context of Webber is so different from that of the Yi reference
that those who are skilled in the art would have no reason to

16 Appellant further alleges, in a conclusory fashion, without analysis or
evidence that “Webber essentially teaches away from Yi, in that Webber
teaches local fingerprint verification employing a user-dedicated verification
device, whereas Yi teaches central storage of biometric reference data. One
of ordinary skill, approaching Von Mueller, Yi and Webber, might select
Yi’s approach to biometric verification, or Webber’s, but would have no
reason to combine both references with Von [sic] Mueller, unless guided by
hindsight from the teachings of this present application.” Appeal Br. 13.
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). “Argument in the brief does not take the place of evidence
in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re
Cole, 326 F.2d 769, 773 (CCPA 1964)).
Appeal 2020-000814
Application 14/921,284

22
apply the extra security check of Webber to the contexts of Von
[sic] Mueller and Yi, and-unless guided by hindsight from the
present application-would have no reason to believe that the
benefits asserted by the Examiner would result from the
proposed combination.
Id.
The Examiner clearly reiterates the teachings relied upon in each of
the von Mueller, Yi, and Webber references, and recaps the motivational
reasons for combining von Mueller with Yi, and for combining Webber with
von Mueller/Yi. Final Act. 8–12; Ans. 16–17. In particular, the Examiner
identifies that von Mueller in view of Yi lacks a teaching or suggestion of
performing an authorization by “determining a match between received data
and stored data, without decrypting the token key value,” but confirms the
finding that Webber teaches comparison of received encrypted fingerprints
with stored encrypted fingerprint templates. Ans. 16 (citing Webber 16:52–
17:22).
We agree with the Examiner’s finding that the combination of von
Mueller, Yi, and Webber teaches or suggests the disputed limitation, as
recited in claim 11, and we disagree with Appellant’s contention that the
combination of von Mueller with Yi and Webber is based upon hindsight
reasoning, and add the following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appeal 2020-000814
Application 14/921,284

23
We agree because our review of the record establishes that the
Examiner’s case for obviousness is only based on knowledge which was
within the level of ordinary skill at the time of Appellant’s invention and
does not include knowledge gleaned only from Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Final Act. 8–
12; Ans. 16–17. To the extent that the Examiner relies on the knowledge of
one of ordinary skill in the art to combine the teachings of the references,
this practice is consistent with current case law. For example, the Supreme
Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness”). As our
precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
Appeal 2020-000814
Application 14/921,284

24
the references of record. See Final Act. 8–12; Ans. 16–17. Thus, we agree
with the Examiner’s findings and conclusions.
With further regard to Appellant’s contention that there is no
motivation to combine the references except by impermissible hindsight, we
disagree because the Supreme Court stated that an explicitly stated
motivation to combine the references is seen as “helpful insight,” KSR, 550
U.S. at 418, but that the combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results. Id. at 416.
Moreover, Appellant has not demonstrated that the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 11, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 11, and grouped
claims 1–10 and 12–20 which fall therewith. See Claim Grouping, supra.
Appeal 2020-000814
Application 14/921,284

25
3. § 103(a) Rejection R3 of Claims 5, 15
In view of the lack of any arguments directed to obviousness
Rejection R3 of claims 5 and 15 under § 103(a), we sustain the Examiner’s
rejection of these claims. Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–4) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–20 are patent-eligible under 35 U.S.C. § 101, and we do not sustain
the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1–20 under 35 U.S.C. § 103(a) over the
cited prior art combinations of record, and we sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
Appeal 2020-000814
Application 14/921,284

26
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–20 101
Subject
Matter
Eligibility
1–20
1–4, 6–14,
16–20 103(a)
Obviousness
von Mueller,
Yi, Webber
1–4, 6–14,
16–20
5, 15 103(a)
Obviousness
von Mueller,
Yi, Webber,
Hu
5, 15
Overall
Outcome 1–20
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED