Patricia A. Frazier et al.Download PDFPatent Trials and Appeals BoardSep 4, 201912859092 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. Appeal 2018-005802 Application 12/859,092 2 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; Appeal 2018-005802 Application 12/859,092 3 [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; Appeal 2018-005802 Application 12/859,092 4 [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. Appeal 2018-005802 Application 12/859,092 5 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 Appeal 2018-005802 Application 12/859,092 6 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 Appeal 2018-005802 Application 12/859,092 7 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 Appeal 2018-005802 Application 12/859,092 8 (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. Appeal 2018-005802 Application 12/859,092 9 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 Appeal 2018-005802 Application 12/859,092 10 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 Appeal 2018-005802 Application 12/859,092 11 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. Appeal 2018-005802 Application 12/859,092 12 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. Appeal 2018-005802 Application 12/859,092 13 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”). Appeal 2018-005802 Application 12/859,092 14 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 Appeal 2018-005802 Application 12/859,092 15 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. Appeal 2018-005802 Application 12/859,092 16 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. Appeal 2018-005802 Application 12/859,092 17 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 Appeal 2018-005802 Application 12/859,092 18 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. Appeal 2018-005802 Application 12/859,092 19 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. . . . Appeal 2018-005802 Application 12/859,092 20 [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”). Appeal 2018-005802 Application 12/859,092 21 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 Appeal 2018-005802 Application 12/859,092 22 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. Appeal 2018-005802 Application 12/859,092 23 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 Appeal 2018-005802 Application 12/859,092 24 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 Appeal 2018-005802 Application 12/859,092 25 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 Appeal 2018-005802 Application 12/859,092 26 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. Appeal 2018-005802 Application 12/859,092 27 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 Appeal 2018-005802 Application 12/859,092 28 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.).” Appeal 2018-005802 Application 12/859,092 29 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. Appeal 2018-005802 Application 12/859,092 30 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 Copy with citationCopy as parenthetical citation