Matthew Hanmer

Patent Trials and Appeals Board

Oct 11, 2019

14500578 - (D) (P.T.A.B. Oct. 11, 2019)

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.
14/500,578 09/29/2014 Matthew Hanmer 16754-000049-US 7368
120493 7590 10/11/2019
Harness Dickey (Mastercard)
7700 Bonhomme
Suite 400
St. Louis, MO 63105
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
gwmefile@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW HANMER
____________

Appeal 2018-005511
Application 14/500,578
Technology Center 3600
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Matthew Hanmer (Appellant2) seeks review under 35 U.S.C. § 134 of
a final rejection of claims 1, 2, 4, 6, 9–15, and 17–25, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 30, 2018) and Reply Brief (“Reply Br.,” filed May 4,
2018), and the Examiner’s Answer (“Ans.,” mailed March 9, 2018), and
Final Action (“Final Act.,” mailed August 30, 2017).
2 We use the word “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. 3).

Appeal 2018-005511
Application 14/500,578

2

The Appellant invented a way of handling the recovery of refundable
taxes that have been levied during electronic transactions for the payment of
goods and services. Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for handling recovery of refundable taxes, the
method comprising:
[1] sending,
by a computing device,
a tax refund application
for a refund of a value added tax,
based on a prior purchase by a user from a merchant,
to a tax refund processor;
[2] receiving,
by the computing device,
a tax refund approval or rejection in response to the tax
refund application,
the tax refund approval or rejection based on comparison
of a risk score relating to the tax refund application to a
predetermined threshold value,
wherein the risk score is based on a risk associated with
the user submitting the tax refund application and a risk
associated with the merchant involved in the prior
purchase,
whereby the tax refund approval or rejection is based on a
historical pattern of risk associated with the user and/or the
merchant;
and
Appeal 2018-005511
Application 14/500,578

3

[3] sending,
by the computing device,
a tax refund instruction to an acquirer associated with the
merchant involved in the prior purchase,
in response to receiving the tax refund approval,
whereby tax associated with the prior purchase is refunded
to the user.
Claims 1, 2, 4, 6, 9–15, and 17–25 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.3
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is

3 A rejection under 35 U.S.C. § 103 (Final Act. 7) is withdrawn. Ans. 3.
4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
Appeal 2018-005511
Application 14/500,578

4

there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what
the claims are directed to. This begins by determining whether the claims
recite one of the judicial exceptions (a law of nature, a natural phenomenon,
or an abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg.
at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites sending application data, receiving refund approval or
rejection data, and sending tax refund instruction data. Sending data is
Appeal 2018-005511
Application 14/500,578

5

transmitting data. The limitation 2 recitation of the approval process is not a
step within the claim but is instead an aspirational characterization of how
the data so received originated. Thus, claim 1 recites receiving and sending
data. None of the limitations recite technological implementation details for
any of these steps, but instead recite only results desired by any and all
possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,5 (2) certain methods of organizing
human activity,6 and (3) mental processes.7 Among those certain methods of
organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts, claim 1 recites the concept of
refunding taxes. Specifically, claim 1 recites operations that would
ordinarily take place in advising one to send refund instructions after

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2018-005511
Application 14/500,578

6

receiving approval following sending an application. The advice to send
refund instructions after receiving approval following sending an application
involves refunding tax, which is an economic act, and deciding on the
refund, which is an act ordinarily performed in the stream of commerce. For
example, claim 1 recites “sending . . . a tax refund instruction,” which is an
activity that would take place whenever one is making a commercial tax
refund. Similarly, claim 1 recites “receiving . . . a tax refund approval,”
which is also characteristic of managing such commercial refunds.
The Examiner determines the claims to be directed to recovery of
refundable taxes through collecting information, analyzing it, and displaying
certain results of the collection and analysis. Final Act. 3.
The preamble to claim 1 recites that it is a method for handling
recovery of refundable taxes. The steps in claim 1 result in sending tax
refund instructions absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitation 2 recites data reception.
Limitations 1 and 3 recite insignificant sending of tax refund data, which
advise one to apply generic functions to get to these results. The limitations
thus recite advice for sending refund instructions after receiving approval
following sending an application. To advocate sending refund instructions
after receiving approval following sending an application is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
handling the recovery of refundable taxes that have been levied during
electronic transactions for the payment of goods and services. Thus, all this
Appeal 2018-005511
Application 14/500,578

7

intrinsic evidence shows that claim 1 is directed to refunding taxes. This is
consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because refunding taxes is a
commercial payment between parties and so a commercial interaction. The
concept of refunding taxes by sending refund instructions after receiving
approval following sending an application is one idea for how to pay a
refund. The steps recited in claim 1 are part of how this might conceptually
be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (claims
that implemented the abstract idea of generating tasks based on rules on the
occurrence of an event, held ineligible because they preempted all practical
uses of the abstract concept); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (tracking financial
transactions); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d at
1318 (screening of messages).
From this we conclude that at least to this degree, claim 1 is directed
to refunding taxes by sending refund instructions after receiving approval
following sending an application, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
Appeal 2018-005511
Application 14/500,578

8

some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such concepts
“ ‘to a new and useful end,’ ” we have said, remain eligible for
patent protection. Accordingly, in applying the § 101 exception,
we must distinguish between patents that claim the
“ ‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 2 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Steps 1 and 3
are generic, conventional activity, such as storing, transmitting, or displaying
the results. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
refunding taxes by sending refund instructions after receiving approval
following sending an application as performed by a generic computer. This
is no more than conceptual advice on the parameters for this concept and the

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2018-005511
Application 14/500,578

9

generic computer processes necessary to process those parameters, and do
not recite any particular implementation. Even granting weight to the
limitation of “the tax refund approval or rejection based on . . . historical
pattern of risk associated with the user and/or the merchant,” this is
conceptual advice for how to evaluate data by any and all means devoid of
technological implementation details.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 15 pages of Specification do not bulge
with disclosure, but only spell out different generic equipment9 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of refunding
taxes by sending refund instructions after receiving approval following
sending an application under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, claim 1
at issue amounts to nothing significantly more than an instruction to apply
refunding taxes by sending refund instructions after receiving approval
following sending an application using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses

9 The Specification describes a PC, a tablet computer, and the like. Spec.
para. 35.
Appeal 2018-005511
Application 14/500,578

10

a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses 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.
We conclude that claim 1 is directed to achieving the result of
refunding taxes by advising one to send refund instructions after receiving
approval following sending an application, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an abstract
idea “‘to a particular technological environment.’” Stating an
abstract idea while adding the words “apply it with a computer”
simply combines those two steps, with the same deficient result.
Thus, if a patent’s recitation of a computer amounts to a mere
instruction to “implemen[t]” an abstract idea “on . . . a
Appeal 2018-005511
Application 14/500,578

11

computer,” that addition cannot impart patent eligibility. This
conclusion accords with the preemption concern that undergirds
our § 101 jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not generally the sort
of “additional featur[e]” that provides any “practical assurance
that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving and sending data amounts to electronic data query
and retrieval—one of the most basic functions of a computer. The limitation
of “the tax refund approval or rejection based on . . . historical pattern of risk
associated with the user and/or the merchant” is not a step, but a recitation of
how the data originated, viz. a characterization of the data received, which is
aspirational rather than functional. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming”). None of these activities are used
in some unconventional manner nor do any produce some unexpected result.
Appellant does not contend he invented any of these activities. In short, each
Appeal 2018-005511
Application 14/500,578

12

step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., Inc. v. InvestPic LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (citation omitted).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data transmission-reception-
transmission is equally generic and conventional. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath
& Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claim 21 is
substantially similar at least as regards to this analysis. The remaining
method claims merely describe process parameters. We conclude that the
Appeal 2018-005511
Application 14/500,578

13

method claims at issue are directed to a patent-ineligible concept itself, and
not to the practical application of that concept.
There are no structural claims. As a corollary, the claims are not
directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of refunding taxes by sending refund instructions after
receiving approval following sending an application, without significantly
more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–6 and Answer 3–10 and
reach similar legal conclusions. In particular, Appellant is incorrect in
contending that “the Examiner’s Answer does not dispute . . .” Reply Br.
2–5. See Ans., id. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “the Examiner’s
continued failure to cite any evidence that the combination of operations
recited by the pending claims are well-understood, routine, or conventional
activities confirms that the pending claims are eligible under § 101 as
reciting something significantly more than an alleged abstract idea.” Reply
Br. 4. Such evidence is cited supra.
Appeal 2018-005511
Application 14/500,578

14

We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 8. The claims differ from those found patent eligible
in Enfish, where the claims were “specifically directed to a self-referential
table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir. 2016). The
claims thus were “directed to a specific improvement to the way computers
operate” rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to accelerate
the process of tax refund, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer “do[] not materially alter the patent eligibility of the
claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims
are more analogous to those in FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089 (Fed. Cir. 2016), wherein claims reciting “a few possible
rules to analyze . . . audit log data” were found directed an abstract idea
because they asked “the same questions (though perhaps phrased with
different words) that humans in analogous situations detecting fraud have
asked for decades.” 839 F.3d at 1094, 1095.
Appellant also attempts to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. id. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning v. Iatric Sys., 839 F.3d 1089, 1094 (Fed.
Appeal 2018-005511
Application 14/500,578

15

Cir. 2016) (differentiating the claims at issue from those in McRO). In
McRO, “[i]t [ was] . . . the incorporation of the claimed rules not the use
of the computer, that improved the existing technology process,” because
the prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” 837 F.3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making refund decisions in a new
environment. Appellant has not argued that the claimed processes of
selecting refunds apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon-holing the objects of decision
making to aid decision making is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead to “a specific asserted improvement in computer
animation, i.e., the automatic use of rules of a particular type.”
We explained that “the claimed improvement [was] allowing
computers to produce ‘accurate and realistic lip synchronization
and facial expressions in animated characters’ that previously
could only be produced by human animators.” The claimed rules
in McRO transformed a traditionally subjective process
performed by human artists into a mathematically automated
process executed on computers.
FairWarning, 839 F.3d at 1094 (citations omitted) (differentiating the
claims at issue from those in McRO).
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) and Trading Techs. Int’l,
Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (non-precedential).
Appeal 2018-005511
Application 14/500,578

16

Reply Br. 8. But the Court in the more recent Trading Techs. Int’l, Inc. v.
IBG LLC addressed Appellant’s Core Wireless argument.
Relying principally on Core Wireless . . . , TT argues the claimed
invention provides an improvement in the way a computer
operates. We do not agree. The claims of the ’999 patent do not
improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem. Instead, they
recite a purportedly new arrangement of generic information that
assists traders in processing information more quickly.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)
(citations omitted). The instant claims do not improve the functioning of the
computer, make it operate more efficiently, or solve any technological
problem. Instead, they recite a purportedly new arrangement of generic
information that assists users in processing information more quickly. This
also responds to the argument around the earlier non-precedential Trading
Techs. case.
Appellant argues that the asserted claims are akin to the claims
found patent-eligible in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d
1299 (Fed. Cir. 2018). Reply Br. 8. In Finjan, the Court held that claims to a
“behavior-based virus scan” were a specific improvement in computer
functionality and hence not directed to an abstract idea. 879 F.3d at 1304.
The claimed technique of scanning enabled “more flexible and nuanced
virus filtering” and detection of potentially dangerous code. Id. This was
done by “scanning a downloadable and attaching the results of that scan to
the downloadable itself in the form of a ‘security profile.’” Id. at 1303. The
security profile included the information about potentially hostile operations
produced by a “behavior-based” virus scan, as distinguished from
traditional, “code-matching” virus scans that are limited to recognizing the
Appeal 2018-005511
Application 14/500,578

17

presence of previously-identified viruses, typically by comparing the code in
a downloadable to a database of known suspicious code. Id. at 1304. This
behavior-based scan was a new type of file that when attached to a
downloadable allowed the computer to do more to protect itself than in the
past.
The instant claims present no such new type of processing to create a
file that improves computer performance. Instead, the claims are
conventional data processing of tax refund data. They may improve speed of
payment, but this is not an improvement to the computer.
We are not persuaded by Appellant’s argument that “there is no
requirement that a claim improve a computer as a tool to be eligible.” Reply
Br. 8. We agree, but this is unhelpful. Claims to devices and physical
processes routinely avoid improving a computer as a tool. There is a
requirement, however, that a claim drawn to an abstract idea, such as
commercial transactions, recite something significantly more. Merely
reciting an abstract idea that has beneficial effects is insufficient. “Claim 1
stands rejected under § 101 as ineligible for claiming unpatentable subject
matter, not for lack of utility. The method claims of Mayo and Ariosa
were apparently also useful, and also invalid. Utility is not the test for
patent-eligible subject matter.” Genetic Tech. Ltd. v. Merial L.L.C., 818
F.3d 1369, 1380 (Fed. Cir. 2016) (citations omitted). “The fact that an
identifier can be used to make a process more efficient, however, does not
necessarily render an abstract idea less abstract.” Secured Mail Solutions
LLC v. Univ. Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017).
We are not persuaded by Appellant’s argument that
the pending claims do necessarily improve computers as tools,
by setting forth specific computing operations that enable
Appeal 2018-005511
Application 14/500,578

18

computers, as tools, to solve problems attendant to prior
inefficient and problematic tax refund schemes. Moreover, while
the pending claims do allow, as contended by the Examiner, for
the automation of a refund practice that was previously
performed manually, that automation is not merely the result of
performing some known series of operations on a computer (for
example, a longstanding, fundamental economic practice, as in
Alice), whereby the only “improvement” is the addition of a
generic computer. As noted in the Appeal Brief, the pending
claims’ computing operations effect handling recovery of
refundable taxes in an entirely non-routine and unconventional
manner. Again, the pending claims have not merely taken a
process that was previously performed manually and sought to
automate that prior process with generic computing components,
but have instead set forth a new series of operations in order to
effect the refund electronically-and, indeed, a series of operations
which the Examiner agrees are found nowhere in the cited art.
Reply Br. 9. Claim 1 sends, then receives, and then sends data. This is
entirely conventional. Allowing automation of a previous manual operation
is not a technological improvement, but merely directing a computer to
perform a conceptual idea of replicating the manual process. This is not a
new series of operations.
Appellant contends that the ordered combination of known steps in
claim 1 was neither conventional nor routine. But patentability requires that
the claimed combination of elements amount to “significantly more than a
patent upon the ineligible concept itself.” Alice, 573 U.S. at 219 (quoting
Mayo, 566 U.S. at 73) (alterations omitted). The claims do not meet that
standard. Even as an ordered combination, the limitations of claim 1 recite
no more than a computer implementation of the abstract idea of using data
reception and transmission of data originating from some algorithm to
refund taxes, lacking anything “significantly more.” To the extent Appellant
Appeal 2018-005511
Application 14/500,578

19

refers indirectly to how the data originates in the second limitation, again,
this is not part of the step as recited, but an aspirational characterization of
how the data originated before it is received. And even that characterization
is conceptual.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
As to the Examiner determining the claim is not obvious, “a claim for
a new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellant’s argument that “Claim 1 includes
the generation of new data.” Reply Br. 10. But data transformation or
creation is not a physical transformation. “Schrader’s claims, except for
incidental changes to a ‘record,’ do not reflect any transformation or
conversion of subject matter representative of or constituting physical
activity or objects.” In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994).
Claims related to “customizing information based on (1) information known
about the user and (2) [specific] data” are directed to abstract ideas.
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d at 1369.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 4, 6, 9–15, and 17–25 under 35 U.S.C.
Appeal 2018-005511
Application 14/500,578

20

§ 101 as directed to a judicial exception without significantly more is proper.
CONCLUSION
The rejection of claims 1, 2, 4, 6, 9–15, and 17–25 is affirmed.
In summary:

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).

AFFIRMED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 6, 9–15,
17–25
101 Eligibility 1, 2, 4, 6, 9–15,
17–25