Patricia A. Frazier et al.

Patent Trials and Appeals Board

Sep 4, 2019

12859092 - (D) (P.T.A.B. Sep. 4, 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.
12/859,092 08/18/2010 Patricia A. Frazier 87188-789970 7258
20350 7590 09/04/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PATRICIA FRAZIER and KENNETH ALGIENE
____________________

Appeal 2018-005802
Application 12/859,092
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–3, 6–14, 17–23, 25–27, 38, and 39, which constitutes all the claims
pending in this application. Appellants have cancelled claims 4, 5, 15, 16,
24, and 28–37. Resp. to Notif. of Non-Compliant App. Br. 3–6 (Feb. 22,
2018). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 Appellants indicate the real party in interest is The First Data Corporation.
App. Br. 3.
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Illustrative Claim
Illustrative claim 1 under appeal reads as follows (emphasis,
formatting, and bracketed material added):
1. A method for notifying a wireless communication
device user regarding an account payment, the method
comprising:
[A.] receiving, electronically by a communications
system of a host computer system, account payment registration
information to permit the device user to receive automatic
payment notification from the host computer relating to a
recurring debt that requires payment, wherein:
[i.] the host computer system comprises a
processor, a storage device, at least one
input device, and at least one output device;
[ii.] the communications system comprises a text
messaging system configured to transmit
and receive text messages;
[iii.] the account payment registration information
comprises a phone number of a wireless
communication device where notices of the
recurring debt are to be sent, an account
identifier that is associated with an account
having a balance due; and
[iv.] the recurring debt comprises the balance due,
a due date for when the payment is due, and
a payment source that is to be debited an
amount of a payment toward the balance
due;
[B.] creating, by the host computer, a user identifier
associated with the wireless communication device user;
[C.] establishing, at the host computer system, a trigger
for sending a notice to the user that the payment is coming due,
wherein the trigger is based on a certain specified time frame
prior to the due date;
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[D.] triggering, by the host computer system, the trigger
when the specified time frame is reached;
[E.] following activation of the trigger that indicates that
the due date is within the specified time frame, establishing, by
the communications system of the host computer system, a
connection with the wireless communication device using the
phone number of the wireless communication device;
[F.] wirelessly transmitting, by the text messaging system
of the host computer system directly over a wireless network to
the wireless communication device, a text-based
communication that produces a textual message on a display of
the wireless communication device, the text-based
communication specifying the balance due for the account that
is associated with the account identifier and querying whether
the user wishes to pay the balance due using the payment
source, wherein the text-based communication further
comprises
(1) a query related to whether no payment of the
balance due is to be made, whether partial
payment of the balance due is to be made, and
whether full payment of the balance due is to
be made,
(2) an identification of a provider location where
payment may be made in-person, and
(3) a request for authorization of a new payment
source;
[G.] altering the user identifier based on a change made
by the wireless communication device;
[H.] receiving, at the text messaging system of the host
computer system, an input from the wireless communication
device regarding payment of at least a portion of the balance
due using the new payment source;
[I.] receiving, using the communications system, a
payment of at least the portion of the balance due using the new
payment source;
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[J.] generating a text-based payment receipt upon receipt
of the payment; and
[K.] electronically transmitting, by the text messaging
system of the host computer system, the text-based payment
receipt over the wireless network to the wireless
communication device using the phone number of the wireless
communication device as an [sic] destination address, wherein
the text-based payment receipt causes the text-based payment
receipt to display on the wireless communication device.

Rejection2
The Examiner rejects claims 1–3, 6–14, 17–23, 25–27, 38, and 39
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 an abstract
idea) and is non-statutory” (Non-Final Act. 3), i.e., because the claimed
invention is directed to patent-ineligible subject matter. Non-Final Act. 3–
11.
We select claim 1 as representative. Appellants do not separately
argue claims 2–3, 6–14, 17–23, 25–27, 38, and 39, noting only that “[c]laims
38 and 39, while differing in scope, include similar recitations” as claim 1.
App. Br. 9. Except for our ultimate decision, we do not discuss the § 101
rejection of claims 2, 3, 6–14, 17–23, 25–27, 38, and 39 further herein.

2 All citations to the “Non-Final Action” are to the Non-Final Action mailed
on August 10, 2017.
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Issue on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
patent-ineligible subject matter?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants. Except as noted below, we 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 set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief arguments.
We concur with the conclusions reached by the Examiner. We highlight the
following points.
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
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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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 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
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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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”). 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
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(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)).3
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.
C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 1
recites an abstract idea:
The claims recite plurality of steps for[:]
[A.] receiving account payment registration information,
[B.] creating a user identifier,
[C.] establishing a trigger for sending a notice,
[D.] triggering the trigger when the specified time frame
is reached,
[F.] transmitting a textual message on a display of the
wireless communication device specifying the

3 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See Memorandum 51.
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balance due and querying whether the user wishes
to pay the balance due using the payment source,
[G.] altering the user identifier based on a change made by
the wireless communication device,
[H. & I.] receiving an input and payment from the wireless
communication device regarding payment of at
least a portion of the balance due using the new
payment source,
[J.] generating a text-based payment receipt upon receipt
of the payment and
[K.] electronically transmitting the text-based payment
receipt and display on the wireless communication
device.
Non-Final Act. 5–6 (emphasis omitted; formatting and bracketed material
added).
The Examiner further determines:
The concept of triggering notification to user the payment is
coming due within the specified time frame prior to the due date
and displaying text message specifying the balance due for the
account that is associated with the account identifier and
generating and displaying a text-based payment receipt in
response to receiving input and payment from the wireless
communication device is considered to be a method of
organizing human activities and/or an idea “of itself”, that is
similar to other concepts that f1ave been identified as abstract by
the courts, such as collecting information, analyzing it,
displaying and deriving results from the collection and analysis
in Electric Power Group v. Alstom [830 F.3d 1350 (Fed. Cir.
2016)], or collecting, analyzing information based on specified
rule to detect misuse and notifying user when misuse is detected
in FairWarning v. Iatric; or organizing information through
mathematical correlations in Digitech [Image Techs., LLC v.
Elec. for Imaging, Inc., 758 F.3d 1344 (Fed.Cir.2014)]. The
procedures for establishing a trigger for sending a notice to the
user that the payment is coming due based on a certain specified
time frame prior to the due date; the activating the trigger when
the specified time frame is reached; and establishing a
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connection with the wireless communication device using the
phone number of the wireless communication device on
activation of the trigger that indicates that the due date is within
the specified time frame is a mathematical
formula/relationship, similar to updating alarm limits using a
mathematical formula in Parker v. Flook [437 U.S. 584 (1978)]
and generalized formulation of computer program to solve
mathematical problem in Gottschalk v. Benson [409 U.S. 63
(1972)], which have been found by the courts to be an abstract
idea.
Non-Final Act. 6–7 (some emphasis omitted).
C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
Unlike the eligible claims in Diehr, Enfish [LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016)], Bascom [Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)] and McRO[, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016)], in which the elements limiting the
exception were individually conventional but taken together
provided an inventive concept because they improved a technical
field or providing a technical solution to a problem, the claim
here does not invoke any of the considerations that courts have
identified as providing significantly more than an exception. The
claims as recited is simply a process in which computer are
invoked merely as a tool for implementing abstract ideas of
triggering notification of payment by displaying text message
specifying the balance due and generating displaying a text-
based payment receipt in response to receiving input and
payment from the wireless communication device rather than
specific asserted improvement in computer capabilities such as
the self-referrential [sic] table for computer database in the
Enfish or [“]remote filtering tool at a specific location
customizable filtering features specific to each end user” in
Bascom or “effect an improvement in technology or technical
field” in McRO. Claims as recited do not provide any particular
asserted inventive technology for performing those functions and
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therefore the claims are held patent ineligible (see Electric Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Non-Final Act. 8–9 (emphasis omitted).
C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
[T]he claim recites the additional limitation of computer system
comprising memory and processor, wireless device and
communication system for executing recited steps. A wireless
communication network and wireless device for displaying data,
memory for storing data and a processor for processing data are
well-understood, routine, conventional computer components,
which in this claim are recited at a high level of generality and
perform generic computer functions (e.g., storing and processing
information). Generic computer components performing generic
computer functions, alone, do not amount to significantly more
than the abstract idea. The wireless device, processor and
memory are is no more than a generic computer component, and
the steps as recited performed by the processor does not represent
any computer function beyond what processors typically
perform. Recitation of computer component with mere
instruction to implement an abstract idea would not impart patent
eligibility and claiming the improved speed or efficiency
inherent with applying the abstract idea on a computer would not
provide a sufficient inventive concept.
Non-Final Act. 7–8 (emphasis added).
Additionally, the Examiner determines:
The claims in the instant application are directed to an abstract
idea performed on generic computer components, “without
providing a specific technical solution beyond simply using
generic computer in a conventional way” in contrast to Bascom
which presented a “technology-based solution” of filtering
content on the Internet by providing customizable filter specific
to each user at specific location remote from end-user.
Non-Final Act. 9.
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D. Appellants’ § 101 Arguments & Panel’s Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
The Examiner correctly determines that claim 1 recites the following
limitations:
[A.] receiving account payment registration information,
. . .,
[C.] establishing a trigger for sending a notice,
[D.] triggering the trigger when the specified time frame is
reached,
[F.] transmitting a textual message . . . specifying the balance
due and querying whether the user wishes to pay the
balance due using the payment source,
. . .
[H. & I.] receiving an input and payment . . . regarding payment
of at least a portion of the balance due using the new
payment source,
[J.] generating a text-based payment receipt upon receipt of the
payment and
[K.] . . . transmitting the text-based payment receipt . . . .
Non-Final Act. 5–6 (emphasis omitted; formatting and bracketing added).
Appellants argue:
The present claims are not directed to a fundamental economic
practice. Any alleged involvement of an abstract idea is merely
incidental and has no bearing on the eligibility of the claims as
the claims are not directed to any abstract idea. Specifically, the
claims are directed to systems and methods for delivery of
graphical reports showing the effectiveness of a discount
program.
App. Br. 12 (emphasis added).
First, we do not find any mention in claim 1 (or elsewhere) of the
argued “for delivery of graphical reports showing the effectiveness of a
discount program.” We are unable to determine the relevance of Appellants’
argument that the claims are directed to this concept.
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Second, contrary to Appellants’ “not directed to a fundamental
economic practice” assertion, claim 1 recites a method of payment
processing which we determine to be a fundamental economic practice.4
A fundamental economic practice is one of certain methods of organizing
human activity identified in the 2019 Memorandum, and thus, an abstract
idea. 84 Fed. Reg. at 52.
D.2. 2019 Memorandum Step 2A, Prong 2
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
Appellants present numerous arguments as to why the judicial
exception is integrated into a practical application. For the reasons
discussed infra, we find all these arguments unpersuasive. However,
because the Examiner’s rejection analysis does not encompass all the
claim 1 limitations that we believe must be accounted for under Prong 2, we
do not limit our Prong 2 analysis to the points raised by Appellants. For
reasons we discuss infra, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of claim 1.
D.2.a. Rooted in Computer Technology
Appellants contend that the “[p]resent claims are not directed to an
‘abstract idea’.” App. Br. 11. Appellants particularly contend:

4 See, e.g., Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378–79 (Fed. Cir. 2017) (holding that the concept of “local
processing of payments for remotely purchased goods” is a “fundamental
economic practice, which Alice made clear is, without more, outside the
patent system”).
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The present claims recite features that firmly root the claimed
invention in computer technology, and thereby remove it from
the realm of abstract ideas. Specifically, the claims are directed
to the delivery of digital notifications to a user device. Such
delivery of electronic data requires computer elements that are
specially programmed to properly[:]
[C.] establish a trigger for sending a notice to the user that
the payment is coming due,
[D.] trigger or activate the trigger when the specified time
frame is reached,
[E.] establish a connection with the wireless
communication device using the phone number of
the wireless communication device,
[F.] wirelessly transmit directly over a wireless network to
the wireless communication device, a text-based
communication that produces a textual message on
a display of the wireless communication device,
[H.] receive an input from the wireless communication
device,
[J.] generate a text-based payment receipt upon receipt of
the payment, and
[K.] electronically transmit the text-based payment
receipt over the wireless network to the wireless
communication device using the phone number of
the wireless communication device as an
destination address, wherein the text-based
payment receipt causes the text-based payment
receipt to display on the wireless communication
device.
App. Br. 11 (emphasis, formatting, and bracketed material added).
Such recitations enable users to be alerted of amounts due,
change user ID and/or PIN identifiers, and receive and view
electronic receipts of payment in real-time or near real-time
from remote locations using a mobile device. These recitations
not only provide such benefits, but also limit the claims to
embodiments that require the use of data enabled mobile devices
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and wireless communications networks. Thus, the claims recite
limitations that necessarily require the use of computer
technology. The claimed recitations cannot be performed by a
general purpose computer, nor can these features be performed
by the human mind. Rather, the claimed recitations require a
host computing system that includes a text messaging system
configured to transmit and receive text messages. Such a text
messaging system requires hardware and software not found on
a general purpose computer to properly interface with mobile
devices using short messaging service (SMS) text messages.
Thus, the claims are necessarily rooted in computer technology
and are not within the realm of abstract ideas.
App. Br. 11–12 (emphasis added).
Moreover, the present claims do not recite processes that can be
performed merely using the human mind or pen and paper.
Rather, the present claims cannot be performed without the use
of computer technology due to the recitations related to wireless
connections and communications between remote devices.
Reply Br. 5 (emphasis added).
Appellants’ argument is not persuasive. Appellants’ argument sets
forth numerous limitations (e.g., host computing system, wireless
communication device, display thereof, phone number thereof, user ID
thereof, PIN identifiers, textual message, short messaging service (SMS))
that Appellants argue root the claims in computer technology. We disagree.
First, we do not find the argue PIN identifiers limitation recited in
claim 1 and the claimed “text-based” communications are not limited to
short messaging service (SMS). Therefore, as to these limitations, the
argument is not commensurate with the scope of the claim language. Claim
1 is not explicitly so limited, and Appellants do not explain how claim 1
would be inherently so limited. Nor do we find alternative language that
would similarly mandate this argued limitation.
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Second, as to Appellants’ real-time argument and argument that the
steps cannot be performed by the human mind (ostensibly, merely because a
computer is recited), it is well established that merely using a computer to
accomplish real-time processing is not sufficient to provide an inventive
concept in the realm of application of the information-based abstract ideas.
Elec. Power Grp., 830 F.3d at 1356 (“The claims in this case specify what
information in the power-grid field it is desirable to gather, analyze, and
display, including in ‘real time’; but they do not include any requirement for
performing the claimed functions of gathering, analyzing, and displaying in
real time by use of anything but entirely conventional, generic technology.”).
Further:
[M]ere automation of manual processes using generic computers
does not constitute a patentable improvement in computer
technology.”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017). These Appellants’ arguments are not persuasive.
Third, as to the argued limitations of a wireless communication
device, display thereof, phone number thereof, and user ID thereof, we are
not persuaded by Appellants’ argument.
The Supreme Court and [the Federal Circuit] have repeatedly
made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not
render the claims any less abstract.
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016). Merely reciting the standard features of the environment of
computer and telephone networks does not render eligible the ineligible
method of payment processing.
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Just as performance of an abstract idea on the Internet is abstract,
so too the performance of an abstract concept in the environment
of the telephone network is abstract, as Intellectual Ventures v.
Capitol One Bank recognized. Our recent decision in TLI
Communications involved a similar situation. There, we held
that a challenged claim was “drawn to the concept of classifying
an image and storing the image based on its classification.” 823
F.3d at 611. This was abstract because “[w]hile the [asserted
claim] requires concrete, tangible components such as ‘a
telephone unit’ and a ‘server,’ the specification makes clear that
the recited physical components merely provide a generic
environment in which to carry out the abstract idea of classifying
and storing digital images in an organized manner.” Id. Here,
the recitation of a “telephone network,” like the telephone unit
and server in TLI Communications, merely provides a “generic
environment” in which to carry out the well-known and abstract
idea of virus screening.
Intell. Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1320 (Fed. Cir.
2016) (citing Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363 (Fed. Cir. 2015); In re TLI Commc’n LLC Pat. Litig., 823 F.3d 607
(Fed. Cir. 2016)).
Fourth, as to the argued limitation of a textual message, we are not
persuaded by Appellants’ argument. Again, merely reciting a standard
feature of the environment of computer and telephone networks does not
render eligible the ineligible method of payment processing.
[C]laim 1 recites “sending a first set of electronic messages over
a network to devices,” the devices being “programmed to
communicate,” storing test results in a “machine-readable
medium,” and “using a computerized system ... to automatically
determine” an estimated outcome and setting a price. Just as in
Alice, “all of these computer functions are ‘well-understood,
routine, conventional activit[ies]’ previously known to the
industry.” Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at
1294) (alterations in original); see also [buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)] (“That a
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computer receives and sends the information over a network—
with no further specification—is not even arguably inventive.”).
OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(emphasis added).
D.2.b. Preemption
Appellants also contend:
The present claims are limited to specific systems and processes
for providing electronic notifications to a wireless
communication device, and do not preempt any conventional
methods of performing such functions, which use different
processes to provide distinct products. Thus, as a whole the
claims are directed to patentable, technological improvements
over existing techniques, which provide one-size fits all solutions
to communications that include decision-based components.
The present claim steps do not preempt all techniques for
providing electronic notifications to a wireless communication
device. Here, the specific claim recitations prevent broad
preemption of all techniques of producing and distributing
decision-based components, as there are numerous other
techniques available and currently in practice, such as those that
do not rely on altering user identifiers and providing text-based
notifications to mobile devices regarding balances due upon a
certain trigger being activated.
App. Br. 13 (emphasis added).
Appellants’ “preemption” argument is not persuasive because
although “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). We are instructed that “[w]here a patent’s claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework
. . . , preemption concerns are fully addressed and made moot.” Id.
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D.2.c. Technical Solution
Appellants further contend:
In the present case, the various components of the host
computing system perform a number of functions and thus, are
necessarily configured to perform such functions. As just one
example, the text messaging system is configured to transmit
and receive text messages and performs several of the various
method steps recited in the claims. Similarly, the host computing
system (necessarily directed by the processor) performs many of
the various method steps and must be configured to do so. As
such, the host computing system (and processor) is computer
programmed to carry out an algorithm. The disclosed structures
are not the general purpose computer, but rather the special
purpose computer programmed to perform the disclosed
algorithm as in [Ex parte] Ravenel [Appeal No. 2016-
003604 (PTAB Apr. 1, 2016)]. Thus, the claimed computing
systems are not general purpose computers as indicated by the
Office Action.
App. Br. 15 (emphasis added).
[T]he present claims require the use of particular devices.
Specifically, the claims require the use of a host computer
system, a communications system that includes a text messaging
system that is configured to transmit and receive text messages,
and a wireless communication device that are configured to
perform the various method (and method-like) steps of the
claims.
App. Br. 17 (emphasis added).
In the present application, while the claims may include
items that related to business practices, the claims are not so
directed. The particular way data is managed by the system of
interconnected devices should be controlling. Moreover, the
claims are directed to a necessarily technical solution for
notifying wireless devices.
. . .
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[As in Ravenel], the present method claims recite steps
performed by the host computing system and rely on specific
components of the host computing system to properly function.
Thus, the method claims are inextricably tied to articles of
manufacture/devices. The present method claims therefore
provide improvements to another technology or technical field,
as in Ravenel.
App. Br. 15–16 (emphasis added).
Appellants’ argument is not persuasive. First, the Panel’s decision in
Ravenel is notbinding on this appeal as the Director has not designated
Ravenel as precedential or informative.
Second, as Appellants state the “system is configured to transmit and
receive text messages.” This provides only a result-oriented solution, i.e., is
equivalent to the words “apply it” to perform the recited transmit and receive
functions. We determine that claim 1 does not “focus on a specific means or
method that improves the relevant technology,” but is “directed to a result or
effect that itself is the abstract idea and merely invoke[s] generic processes
and machinery.” McRO, 837 F.3d at 1314. This is not enough to transform
an abstract idea into patent-eligible subject matter. See, e.g., Alice, 573 U.S.
at 225–26 (explaining that claims that “amount to ‘nothing significantly
more’ than an instruction to apply the abstract idea . . . using some
unspecified, generic computer” “is not ‘enough’ to transform an abstract
idea into a patent-eligible invention” (quoting Mayo, 566 U.S. at 77, 79));
Intell. Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed.
Cir. 2017) (“[T]he claim language here provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it”).
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D.2.d. Internet Centric
Appellants furthermore contend:
[T]he claims include additional features that are similar to those
deemed eligible in Example 21 of the [USPTO] July 2015
Update. For example, claim 1, recites[:]
“generating a text-based payment receipt upon
receipt of the payment; and electronically
transmitting, by the host computer system, the text-
based payment receipt over the wireless network to
the wireless communication device using the phone
number of the wireless communication device as an
destination address, wherein the text-based payment
receipt causes the text-based payment receipt to
display on the wireless communication device.”
The claimed invention addresses the Internet-centric
challenge of enabling electronic billing and payment receipts
to a remotely located user. This is addressed by transmitting a
payment authorization and then a payment receipt over a wireless
communication channel to the user device, which causes the
receipt or authorization to display on the user device. The user
device may then use similar communications channels to
communicate with the generation engine, such as to change
billing preferences. These are meaningful limitations that add
more than generally linking the use of an abstract idea (the
general concepts of recognizing, storing, comparing, and
organizing data while relying mathematical functions to
manipulate data) to the Internet, because they solve an Internet-
centric problem with a claimed solution that is necessarily
rooted in computer technology, similar to the additional
elements in DDR Holdings and discussed in Example 21 of the
July 2015 Update.
App. Br. 16 (emphasis added).
Appellants’ argument is not persuasive. The challenge of transmitting
billing and payment receipts to a remotely located user is not particular to
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the Internet. Instead, it is a commonplace business problem. As Appellants
acknowledge:
The most common method of account payment is mail
delivery of a paper bill or coupon book by a billing party to a bill
payer. The bill payer in return writes a paper check for the
appropriate amount and mails the check along with the
associated account payment coupon to the billing party. This
method is labor intensive and time consuming for the bill payer.
Moreover, account payments must be done on multiple occasions
each month since bills do not normally arrive or become due on
the same date. In addition, the bill-payer has to absorb the cost
of postage in mailing the paper checks to the billing parties. In
short, the bill payer is required to inconveniently go through
multiple steps for account payment, including manually
receiving each bill, keeping track of account payments for a
variety of bills depending on when they arrive or become due,
and manually paying each bill as well as absorbing postage costs.
Spec. 3.
We agree with the Examiner who correctly determines that
Appellants’ claimed process is “payment processing” which is a business
problem and not a technological problem. We do not agree with Appellants
that “transmitting billing and payment receipts to a remotely located user” is
either a “technological field” or a “technological problem” or a
“technological solution.” Rather, we determine that this process is directed
to the field of customer billing and its problems and solutions. See Inventor
Holdings, 876 F.3d at 1378–79 (holding that the concept of “local
processing of payments for remotely purchased goods” is a “fundamental
economic practice, which Alice made clear is, without more, outside the
patent system”). Appellants’ argument is not persuasive.
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D.2.e. Concreteness
Appellants also further contend:
The CAFC found that portions of [Amdocs’] claim [1]
depend “upon the invention’s distributed architecture” and “upon
the network devices and gatherers - even though these may be
generic - working together in a distributed manner.” (Amdocs
[(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1301 (Fed.
Cir. 2016)]). The “network devices and gatherers” referred to in
this reasoning appeared in the specification of the patent in
question, and are not recited in the claim being analyzed.
Applicant [sic] respectfully submits that the present claims
are far, far more concrete than the claim from Amdocs given
above and found to be patent-eligible by the CAFC. Specifically,
Applicant’s [sic] claim[] 1 . . . recite[s] actual hardware systems
(namely the host computer system, the communications system
that includes the text messaging system, and the wireless
communication device). Moreover, the networked arrangement
of the host computing system, the communications system, the
text messaging system, and the wireless communication device
in the present invention is spelled out in the claims themselves,
and need not be inferred by reference to the specification as was
necessitated by the claim in Amdocs. As such, the present claims
are clearly more concrete and recite more concrete computer
structure than those held to be patent-eligible in Amdocs.
Applicant respectfully submits that the present claims are patent-
eligible in light of Amdocs.
App. Br. 17–18 (emphasis added).
Appellants’ argument is not persuasive. Essentially, Appellants argue
for a concreteness standard for § 101 determinations. This has been rejected
by our reviewing courts:
At one time, a computer-implemented invention was
considered patent-eligible so long as it produced a “useful,
concrete and tangible result.” This understanding rested, in large
part, on the view that such inventions crossed the eligibility
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threshold by virtue of being in the technological realm, the
historical arena for patented inventions.
While the Supreme Court in Bilski v. Kappos noted that
the machine-or-transformation test is a “useful and important
clue” for determining patent eligibility, it is clear today that not
all machine implementations are created equal. For example, in
Mayo, the Supreme Court emphasized that satisfying the
machine-or-transformation test, by itself, is not sufficient to
render a claim patent-eligible, as not all transformations or
machine implementations infuse an otherwise ineligible claim
with an “inventive concept.”
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255–56 (Fed. Cir.
2014) (citations omitted).
D.2.f. Section 102/103
Appellants also contend:
[A]s evidenced by the lack of a substantive rejection under
§ 102 or § 103, the presently amended claims include features
not disclosed in the cited references. This has two ramifications.
First, the Office Action’s conclusory characterization of all claim
elements being merely executed in well-understood, routine, and
conventional manners; or on a computer, is refuted, as the claims
are both novel and nonobvious. Second, and more importantly,
as the presently amended claims are distinguishable over the
cited references, the claims necessarily recite new possible ways
of implementing some alleged abstract idea over other possible
ways that came before it (i.e., the prior art). If the claim is
directed to one new way of implementing the abstract idea over
other possible ways that came before it, it must be true that that
allowing such a claim to proceed to allowance would not pre-
empt all implementations of the abstract idea itself.
App. Br. 18 (emphasis added).
Appellants’ “lack of a substantive rejection” argument lacks merit
because, even though the § 101 inquiry and the §§ 102/103 inquiry might
sometimes overlap, a novel and nonobvious claim directed to a purely
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abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 89
(rejecting the suggestion that §§ 102, 103, and 112 might perform the
appropriate screening function and noting that in Mayo such an approach
“would make the ‘law of nature’ exception . . . a dead letter”).

D.2.g. Claim 1 Limitation Not Argued – “Altering the user identifier . . .”
In terms of our ultimate conclusion as to whether claim 1 is directed
to a patent-ineligible abstract idea at step one of the Alice/Mayo analysis, we
must not express the idea to which the claim is directed in a way that is
“untethered from the language of the claims.” Enfish, 822 F.3d at 1337. In
particular, when we assess what the claims are directed to, we must do so at
the same level of generality or abstraction expressed in the claims
themselves. Id.; see also McRO, 837 F.3d at 1313 (cautioning to “‘be
careful to avoid oversimplifying the claims’ by looking at them generally
and failing to account for the specific requirements of the claims” (quoting
In re TLI Commc’ns, 823 F.3d at 611)). Thus, we look to whether: (1) the
claims focus on a specific means or method that improves the relevant
technology or (2) the claims are instead directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, 822 F.3d at 1335–36. That is, we look to whether
the claims are “specifically designed to achieve an improved technological
result in conventional industry practice.” McRO, 837 F.3d at 1316; see also
Alice, 573 U.S. at 223 (explaining that a claim reciting use of a generic
computer along with other ineligible subject matter nevertheless was patent
eligible because the claim employed those limitations “in a process designed
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to solve a technological problem in ‘conventional industry practice’”
(quoting Diehr, 450 U.S. at 178)).
Thus, in accordance with the 2019 Guidance, as part of our
Alice/Mayo analysis, we consider whether claim 1, which recites a patent-
ineligible abstract idea of payment processing, is directed to a practical
application, such that the claim is not patent-ineligibly directed to an abstract
idea. See 2019 Guidance 54–55.
Here, we look to claim 1 at step G,5 “altering the user identifier based
on a change made by the wireless communication device” (emphasis
added). The Examiner treats this claim 1 limitation as part of the method of
organizing human activities (Non-Final Act. 5–6) and does not further
discuss the limitation. Absent further explanation, we are not persuaded.
We determine that this limitation is not properly part of the judicial
exception identified by the Examiner and the Examiner’s rejection must
explain why this limitation does not integrate the judicial exception into a
practical application. Yet, the Examiner’s analysis is silent as to this
required analysis under prong 2. Therefore, on the record before us, we
determine that the Examiner’s articulated reasoning is insufficient, and we
reverse the Examiner’s rejection on procedural grounds.
Absent further analysis by the Examiner, we are constrained to
conclude that claim 1 recites additional elements beyond the abstract ideas
identified by the Examiner and the Examiner has not addressed whether
those additional elements integrate the abstract ideas into a practical

5 Although peripherally mentioned within Appellants’ unpersuasive
“preemption” argument (discussed supra), step G of claim 1 supra, is not
separately argued.
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application. Enfish, 822 F.3d at 1335–36. Accordingly, we do not sustain
the 35 U.S.C. § 101 rejection of claim 1.
D.3. 2019 Memorandum Step 2B
Although we do not sustain the Examiner’s rejection for the reason
supra, for completeness, we address the “entirety of each step” argument that
Appellants present as to why the claim provides “significantly more” than the
recited judicial exception (e.g., because the additional elements were
unconventional in combination). For the reasons discussed infra, we find this
argument unpersuasive.
The Examiner determines that:
In addition to the steps that describe the abstract idea . . . , the
claim recites the additional limitation of computer system
comprising memory and processor, wireless device and
communication system for executing recited steps. A wireless
communication network and wireless device for displaying data,
memory for storing data and a processor for processing data are
well-understood, routine, conventional computer components,
which in this claim are recited at a high level of generality and
perform generic computer functions (e.g., storing and processing
information)..
Non-Final Act. 7 (emphasis added).
The question in step two of the Alice framework under [35]
U.S.C[. §] 101 is not whether an additional feature is novel but
whether the implementation of the abstract idea involves “more
than the performance of ‘well-understood, routine, and
conventional activities previously known to the industry.[’”]
Content Extraction and Transmission LLC v. Wells Fargo Bank,
Nat. Ass’n, 776 F.3d 1343, 1347-48 (quoting Alice, 134 S. Ct. at
2359). . . . The Federal Circuit has also applied this principle, for
example, when holding the concept of using advertising as an
exchange or currency abstract in Ultramercial, despite the
patentee’s arguments that the concept was “new”. In the instant
application, the claim limitations simply narrow or limit the
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abstract idea without providing anything significantly more than
the abstract idea itself. The existence of such novel features
would still not cure the deficiencies with respect to the abstract
idea under the current 35 USC 101 examining practice.
Ans. 9–10 (emphasis modified).
Appellants reference the Office’s Berkheimer memorandum,6 and
argue the memorandum requires that the Examiner “provide[] a citation to
establish that the entirety of each step of the claimed process represents
well-understood, routine, conventional activity” (Reply Brief 3):
In the present case no such citation has been provided to
establish that any one of the full claim limitations is a well-
understood, routine or conventional element. As noted, by the
Memo, “[w]hether a particular technology is well-understood,
routine, and conventional goes beyond what was simply known
in the prior art. The mere fact that something is disclosed in a
piece of prior art, for example, does not mean it was well-
understood, routine, and conventional.” (citing Berkheimer, 881
F.3d at 1369) In the present case no such citation has been
provided to establish that the entirety of each step of the claimed
process represents well-understood, routine, conventional
activity within the relevant industry. Rather, the Answer has
improperly whittled the claim language down to a skeletal
structure that includes transmitting, storing, and receiving any
generic information, while ignoring all of the inventive
features of the presently claimed invention.
Reply Brief 3 (emphasis added).
We disagree with Appellants’ argument on two points. First, contrary
to Appellants’ assertion that no Berkheimer compliant citation has been

6 USPTO memorandum issued on April 19, 2018, titled “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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provided, as shown supra, the Examiner has provided such a citation to both
Content Extraction and Ultramercial. Ans. 9–10.
Second, as the Examiner correctly points out, “[t]he question in step
two of the Alice framework under [section] 101 is not whether an additional
feature is novel.” Ans. 9. Contrary to Appellants’ assertion, we find no
“full claim limitations” or “entirety of each step” requirement set forth in the
Berkheimer memorandum. Further, Appellants do not cite any other
authority for such a requirement. To the contrary, “[i]t has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–3, 6–14, 17–23, 25–27, 38, and 39 under 35 U.S.C. § 101, as being
directed to patent-ineligible subject matter without significantly more.
(2) Claims 1–3, 6–14, 17–23, 25–27, 38 and 39 have not been shown
to be unpatentable.
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DECISION
The Examiner’s rejection of claims 1–3, 6–14, 17–23, 25–27, 38, and
39 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter, is reversed.

REVERSED