Paul Jonathan. Ungerland et al.

Patent Trials and Appeals Board

Sep 19, 2019

13547560 - (D) (P.T.A.B. Sep. 19, 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.
13/547,560 07/12/2012 Paul Jonathan Ungerland II 40842.0001USU1 3783
23552 7590 09/19/2019
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
GAW, MARK H
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/19/2019 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):
USPTO23552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL JONATHAN UNGERLAND II, DANIEL R. MICALE,
and MARK B. LAU
____________

Appeal 2017-0070001
Application 13/547,560
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–6, 8–17, and 19–23. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on May 8, 2019.

SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify Netqash LLC as the real party in interest. App. Br. 3.
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THE INVENTION
Appellants describe “[e]mbodiments of the present disclosure relate to
using mobile communication devices to complete transactions in person-to-
person, person-to-business, and business-to business transactions.” Spec.
¶ 3.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for securely processing a transaction using
a requesting device, the method comprising:
receiving, at the requesting device, one or more
transaction details for the transaction;
sending, from the requesting device to a server, a request
to create a secure transaction image, wherein the request does
not include sensitive personal information for a responding
party to the transaction;
receiving, at the requesting device, the secure transaction
image from the server, wherein the secure transaction image is
a unique image that represents the one or more transaction
details;
providing the secure transaction image to a responding
device, wherein the responding device is associated with the
responding party; and
in response to providing the secure transaction image to
the responding device, receiving, at the requesting device,
status information related to the transaction from the server.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Williams
Forzley
US 2006/0095959 A1
US 2008/0114657 A1
May 4, 2006
May 15, 2008
Merkow

US 2009/0057393 A1 Mar. 5, 2009

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iTipping.com, How Much Should I Tip for Services? (accessed Apr. 6,
2015), http://web.archive.org/web/20060901152754/ http://
www.itipping.com/tip-guide-services.htm
Masabi, Ideas for Interoperability of Secure Barcode Tickets (accessed April
6, 2015), http://www.masabi.com/2008/04/13/ideas-for-interoperability-of-
secure-barcode-tickets/
The following rejections are before us for review.
Claims 1, 8, 15, and 23 under pre-AIA 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Ans. 3.
Claims 1–6, 8–17, and 19–23 are rejected under pre-AIA 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 14.
Claims 1–6, 8–11, 13–17, 19, and 21–23 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Merkow, Masabi, and
Forzley. Final Act. 18.
Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Merkow, Masabi, and Forzley in view of iTipping.com.
Final Act. 31.
Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Merkow, Masabi, and Forzley in view of Williams. Final
Act. 32.

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FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–8, 14–18 in
the Final Office Action2 and on pages 4–15 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 112(a) REJECTION
The Examiner rejects claims 1, 8, 15, and 23 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. Specifically,
the Examiner finds, “Claims 1, 8, 15, and 23 include the phrase ‘wherein the
request does not include sensitive personal information’. The element
‘sensitive personal information’ is not supported by the original abstract,
specification or drawings. Introduction of new matter is not allowed in
amendments to the Claims (MPEP 2163.06).” (Ans. 3).
Appellants argue that the Specification at paragraphs 28 and 35
“provides ample description of the type of information referred to by
‘sensitive personal information.’” (Reply Br. 7, 8).
We agree with Appellants because we find that the Specification at
paragraph 28 describes allowing “parties to complete financial transactions
without reliance upon credit and debit cards and without exposing
potentially sensitive financial information” (emphasis added). As such, we
find that the Specification at least inherently, if not explicitly, describes that
the “request does not include sensitive personal information.” An applicant
shows possession of the claimed invention by describing the claimed

2 All references to the Final Office Action refer to the Final Office Action
mailed on June 27, 2016.
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invention with all of its limitations using such descriptive means as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997).
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–6, 8–17, and 19–23 under
35 U.S.C. § 101.
The Appellants argue claims 1–6, 8–11, 13–17, 19, and 21–23 as a
group (App. Br. 20), and we select claim 1 as the representative claim for
this group, and so the remaining claims stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv) (2015).
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 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)
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(“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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 176; 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. (citing Benson and Flook); see, e.g., Diehr, 450 U.S.
at 187 (“It is now commonplace that an application of a law of nature or
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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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
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
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(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 Guidance, 84 Fed. Reg. at ____.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
analysis to the first step of the Alice analysis: 1) evaluate whether the claim
recites a judicial exception, and 2) if the claim recites a judicial exception,
evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53; see also
MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
Embodiments of the present disclosure relate to using mobile
communication devices to complete transactions in person-to-
person, person-to-business, and business to-business
transactions. The transactions may be performed by a human
interacting with a device or two or more devices interacting
with each other. In embodiments, the transactions may be
financial transactions; however, other types of transactions may
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be performed using the systems and methods disclosed herein.
Specification ¶ 3. The Specification at paragraph 5 states, “a method
performed by a payee, or merchant, device may begin a transaction by
receiving transaction details and initiating the creation of a secure image.”
The Specification at paragraph 6 also states, “a method performed by a
payor, or customer, device may initiate the completion of a transaction by
receiving the secure image.” The preamble says it is for “securely
processing a transaction.” Claim 1. Understood in light of the Specification,
claim 1, recites, in pertinent part:
receiving, . . . one or more transaction details for the
transaction; sending, . . . a request to create a secure transaction
image, wherein the request does not include sensitive personal
information for a responding party to the transaction; receiving,
. . . the secure transaction image . . ., wherein the secure
transaction image is a unique image that represents the one or
more transaction details; providing the secure transaction image
. . .; and in response to providing the secure transaction image .
. ., receiving, . . . status information related to the transaction . .
. .
Accordingly, the Examiner found that the claims are directed to
“performing secured commercial transactions.” (Final Act. 15).
We agree with the Examiner that claim 1 is a way of performing
secured commercial transactions for the reasons supported by the intrinsic
evidence set forth above. Commercial interactions, such as transactions, are
a certain method of organizing human activity which is patent-ineligible.
Accordingly, we find that claim 1 recites a patent ineligible certain method
of organizing human activity. Guidance, 84 Fed. Reg. at 52, citing Alice,
573 U.S. at 219–220.
In addition, we find that, because claim 1 also recites “creat[ing] a
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secure transaction image, wherein the request does not include sensitive
personal information for a responding party to the transaction;” and a
“secure transaction image [that] is a unique image that represents the one or
more transaction details,” the claims are also describing concepts performed
in the human mind, i.e., mental processes. These steps mimic human
thought processes of selecting certain information over others, i.e.,
evaluation, and creating perhaps with paper and pencil, graphic data
interpretation perceptible only in the human mind. See In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). The Federal
Circuit has held similar concepts to be abstract. Thus, for example, the
Federal Circuit has held that abstract ideas include the concepts of collecting
data, analyzing the data, and reporting the results of the collection and
analysis, including when limited to particular content. See, e.g., Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340–41 (Fed.
Cir. 2017) (identifying the abstract idea of organizing, displaying, and
manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas).
Thus, under the first prong, claim 1 also recites the patent ineligible judicial
exception of a mental process.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a requesting device,” “a server,” and “responding
device.” These components are described in the Specification at a high level
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of generality. See Spec. ¶¶ 30–33, Fig. 1. We fail to see how the generic
recitations of these most basic computer components and/or of a system so
integrates the judicial exception as to “impose[] a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We
also find no indication in the Specification that the claimed invention effects
a transformation or reduction of a particular article to a different state or
thing.
Thus, we find that the claim recites the judicial exceptions of
organizing human activity and a mental process that are not integrated into a
practical application.
That the claim does not preempt all forms of the abstraction or may be
limited to transaction processing, does not make it any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015) (“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claim 1 is directed to abstract ideas/judicial exceptions, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step, the Examiner found the following:
The elements of the instant process, when taken alone, each
execute in a manner routinely and conventionally expected of
these elements. The elements of the instant process, when taken
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in combination, together do not offer substantially more than
the sum of the functions of the elements when each is taken
alone. That is, the elements involved in the recited process
undertake their roles in performance of their activities
according to their generic functionalities which are well-
understood, routine and conventional. The elements together
execute in routinely and conventionally accepted coordinated
manners and interact with their partner elements to achieve an
overall outcome which, similarly, is merely the combined and
coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities
previously known to the industry.
Final Act. 16–17.
We agree with the Examiner. “[T]he relevant question is whether the
claim[] here do[es]more than simply instruct the practitioner to implement
the abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. It does
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, send, provide, and respond by applying decision
criteria to data as a result amounts to electronic data query and retrieval—
one of the most basic functions of a computer. All of these computer
functions are well-understood, routine, conventional activities previously
known to the industry. See Elec. Power Grp., 830 F.3d at 1354; see also In
re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. The claim does not, for example, purport to improve
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the functioning of the computer itself. In addition, as we stated above, the
claim does not effect an improvement in any other technology or technical
field. The Specification spells out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
information access under different scenarios (see, e.g., Specification ¶ 29).
Thus, claim 1 amounts to nothing significantly more than instructions to
apply the abstract ideas of organizing human activity and a mental process
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 226.
Considered as an ordered combination, the computer components of
Appellants’ claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis (retrieve,
send, provide and respond by applying decision criteria to data as a result)
and storing is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 20–30; Reply Br. 3–5). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue, “[t]he pending claims are not directed towards
agreements between people or performance of financial transactions. The
claims do not relate to creating a contractual relationships [sic] or
performing fundamental practices like hedging or mitigating settlement
risk.” (App. Br. 23).
Appellants’ argument is not persuasive as to error in the rejection.
The Examiner found that “[t]he claims are directed to performing secured
commercial transactions.” (Final Act. 15). The Specification and claims
support this finding. That is, the Specification states: “[e]mbodiments of
the present disclosure relate to using mobile communication devices to
complete transactions in person-to-person, person-to-business, and business
to-business transactions. The transactions may be performed by a human
interacting with a device” Specification ¶ 27. Claim 1 begins by reciting a
method for, “securely processing a transaction.” Thus, the Examiner’s
finding is reasonable in light of what Appellants describe in the
Specification.
Appellants also argue, “Applicants respectfully disagree with the
Office Action’s simplistic characterization of the claims. To be sure, the
Office Action completely disregards the claim language and the teachings
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provided in Applicants’ specification by providing this overly broad
characterization of the claims.” (App. Br. 22).
We disagree with Appellants because again, as we have shown above,
the Specification supports by intrinsic evidence the Examiner’s finding that
“[t]he claims are directed to performing secured commercial transactions.”
(Final Act. 15). Second, we do not find error in the degree of specificity by
which the Examiner characterizes a judicial exception because “[a]n abstract
idea can generally be described at different levels of abstraction.” Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). To these ends,
as we found above, the claim is also directed to yet a further judicial
exception which is, concepts performed in the human mind. Thus, we find
no error in the how the claims have been characterized because each
determination has been supported by Appellants’ own words from the
Specification and the claims.
Appellants further argue,
Application of the Office Action’s position would render any
system related to electronic communication an unpatentable
abstract idea. For example, application of the Office Action’s
reasoning would render credit card chip readers, locks for bank
vault doors, and components for an armored vehicle used to
securely transfer funds unpatentable subject matter.
(App. Br. 23). Appellants then argue, “[a]spects recited in the disclosure
make use of three separate devices acting in coordination in order to
securely complete a transaction. As such, the various claimed aspects
amount to a greater deal more than an uninstantiated concept, plan or
scheme.” (App. Br. 24).
We disagree with Appellants first, because on its face, claim 1 recites
“[a] method for securely processing a transaction using a requesting device.”
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Thus, the preamble itself specifies a method of securely processing a
transaction, and not a device. Concerning Appellants’ argument that the
claims “make use of three separate devices acting in coordination,” we note
that claim 1 only inferentially recites devices, e.g., “a server” and “a
responding device,” as part of the transaction process. Whereas, in the case
of credit card chip reader, or a lock for a bank vault, those items would be
positively recited as the items themselves, which is not the case in the claims
here.
Second, although we agree with Appellants that the claims must be
read, as a whole (App. Br. 27), we nevertheless find, on balance, that claim 1
is directed at least to concepts performed in the human mind as mental
processes. These steps mimic human thought processes of selecting certain
information over others, i.e., evaluation, and creating perhaps with paper and
pencil, graphic data interpretation perceptible only in the human mind. As
found supra, claim 1 only generically requires “a requesting device,” “a
server,” and “responding device.” What remains in the claim after
disregarding the device recitations, are abstractions, e.g., “request does not
include sensitive personal information for a responding party to the
transaction,” and creating “a secure transaction image [that] is a unique
image.” “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (citing Mayo, 566 U.S. at 90). To the extent Appellants are arguing
that the device recitations are additional elements constituting an inventive
concept, such features cannot constitute the “inventive concept.”
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be
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the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous
cases from this court which have held claims ineligible because the only
alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech. LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It 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.”).
Appellants’ arguments directed to now-superseded USPTO guidelines
(App. Br. 22–28, 29–30), have been considered but are not persuasive of
error. (See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance
issued prior to the Ninth Edition, R–08.2017, of the MPEP (published Jan.
2018) should not be relied upon.”))).
Citing to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) Appellants argue,
[t]he pending claims, however, recite specific and inventive
systems and methods capable of providing secure
communication over an open network, such as the Internet. In
doing so, the claimed technology does two things. It solves a
problem that arises specifically due to the Internet, similar to
the claims found allowable in DDR and provide an
improvement to the functioning of a network.
(App. Br. 28).
We fail to see the similarities asserted by Appellants between the
claims on appeal here and those adjudicated in DDR Holdings. (App.
Br. 28.) In DDR Holdings, the court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host’s website after
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‘clicking’ on an advertisement and activating a hyperlink.” 773 F.3d at
1257. There, the court found that the claims were patent-eligible because
they transformed the manner in which a hyperlink typically functions to
resolve a problem that had no “pre-Internet analog.” Id. at 1258. The
court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id. For example, in
DDR Holdings the court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See id. at 1258–59
(citing Ultramercial, 772 F.3d a t 715–16). As noted there, the
Ultramercial claims like those before us here, were “directed to [a judicial
exception, in that case,] a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 714).
Nevertheless, those claims were patent-ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for
viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Citing to BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016), Appellants assert, “[t]he ‘inventive concept’
may arise in one or more of the individual claim limitations or in the ordered
combination of the limitations.” (App. Br. 27). We fail again to see how
the instant claims are similar to those in BASCOM. There, an intermediary
is inserted between two otherwise conventional computer nodes to move the
location where a process is otherwise ordinarily executed. In BASCOM, it
was the location of the filtering element, whereas in the instant claims there
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is no such specific location of an ordered combination of elements. That the
language also includes a general reference to the use of “a requesting
device,” “a server,” and “responding device,” does not make the
corresponding generic recitations of the claimed basic computer components
and/or of a system so effective as to integrate the judicial exception in a way
that “imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the judicial
exception.” Guidance, 84 Fed. Reg. at 53. Absent evidence to the contrary,
we view the recitation of “a requesting device,” “a server,” and “responding
device” to be only an indication of the environment in which the abstract
idea is practiced.
MPEP 2106.05(h) concern[s] generally linking use of a judicial
exception to a particular technological environment or field of
use, including a discussion of the exemplars provided herein,
which are based on Bilski, 561 U.S. at 612, and Flook, 437 U.S.
at 588-90. Thus, the mere application of an abstract method of
organizing human activity in a particular field is not sufficient
to integrate the judicial exception into a practical application.
Guidance, 84 Fed. Reg. at 53 n.32, see also Alice, 573 U.S. at 223.

35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 8, 15, and 23 requires, in one form or
another, “receiving, at the requesting device, the secure transaction image
from the server, wherein the secure transaction image is a unique image that
represents the one or more transaction details,” and “providing the secure
transaction image to a responding device, wherein the responding device is
associated with the responding party; and in response to providing the secure
transaction image to the responding device, receiving, at the requesting
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device, status information related to the transaction from the server.”
The Examiner found that these limitations are taught by Merkow at
paragraphs 3, 13, 18, 30, 32, 42–44, and 50. (Final Act. 19–20).
Appellants argue the following:
Merkow, on the other hand, relates to systems and
methods for completing a financial transaction. Merkow teaches
a system in which a purchaser sends a request to a payment
issuer. See Merkow, para. [0058]. In response, the payment
issuer provides a challenge response to the purchaser to confirm
the purchaser’s identity. See id., para. [0062]. If the purchaser
correctly answers the challenge response, the payment issuer
provides a surrogate account number (which may take the form
of a barcode) that identifies the financial account that will be
used for the financial transaction. The purchaser provides the
surrogate account number to complete payment. See id., para.
[0070]. As such, the system disclosed in Merkow requires the
purchaser to transfer information used to complete the
transaction to a merchant in order to complete the transaction.
(App. Br. 32.)
We agree with Appellants. In Merkow, the bar code which we
consider to be the claimed, “secured transaction image,” is sent to a
requesting device, which in Merkow, is the user mobile communication
device. See Merkow ¶ 64. The requesting/mobile device provides the bar
code to a POS device. See id. ¶ 69. However, according to Merkow it is the
POS device, and not the requesting/mobile device, which responds by
requesting a status or “an ISO-8583 authorization request.” Id. ¶ 70.
Merkow does not disclose to which device the issuer sends the response.
But, we find that because an ISO-8583 message is a financial transaction
card originating message,3 the response would be returned to the card reader

3 https://www.iso.org/obp/ui/#iso:std:iso:8583:-1:ed-1:v1:en (last visited
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which originated the message, which in Merkow would be the POS device
and not the requesting/mobile device as required by the claims. Thus,
Merkow does not disclose “in response to providing the secure transaction
image to the responding device, receiving, at the requesting device, status
information related to the transaction from the server.”
The Examiner cites to Forzley only for the purpose of disclosing, “that
bar codes can be used to increase information security.” (Final Act. 19).
Likewise, the Examiner cites to Masabi only for the purpose of disclosing,
“bar codes can be used to increase information security.” Id. Therefore, we
find that the secondary references relied on by the Examiner in the rejection
of independent claims 1, 8, 15, and 23 do not remedy the deficiency noted
above.
Because claims 2–6, 21; 9–14; 16, 17, 19, 20, and 22 depend from
claims 1, 8, and 15, respectively, and because we cannot sustain the rejection
of claims 1, 8, and 15, the rejection of the dependent claims likewise cannot
be sustained.

CONCLUSIONS OF LAW
We conclude the Examiner erred in rejecting claims 1–6, 8–17, and
19–23 under 35 U.S.C. § 112(a).
We conclude the Examiner did not err in rejecting claims 1–6, 8–17,
and 19–23 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1–6, 8–17, and
19–23 under 35 U.S.C. § 103.

9/3/2019)
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DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED