Seth Priebatsch

Patent Trials and Appeals Board

Jan 2, 2020

14460628 - (D) (P.T.A.B. Jan. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/460,628 08/15/2014 Seth Priebatsch 60421-0129 7075
29989 7590 01/02/2020
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
01/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SETH PRIEBATSCH
____________________

Appeal 2019-000118
Application 14/460,628
Technology Center 3600
____________________

Before JUSTIN BUSCH, CATHERINE SHIANG, and SCOTT E. BAIN,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22–35 and 39–45, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to “systems and methods for facilitating
transactional processing of permission requests, e.g., requests to transfer

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as SCVNGR, Inc.
Appeal Br. 2.
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money in order to complete purchase transactions.” Spec. ¶ 1. More
specifically, embodiments of Appellant’s claimed invention pass tokens
indicating certain authorizations and a request for a payment transaction to a
permissions manager. Spec. ¶¶ 7–8. The permissions manager verifies the
tokens and, in accordance with the payment transaction request and the
token information, submits a charge to a payment instrument associated with
the user-access token and provides information regarding the payment
transaction. Spec. ¶ 7–8. Claim 22 is representative of the claimed subject
matter and reproduced below:
22. A method for facilitating an electronic payment
transaction between a consumer and a resource provider, the
method comprising:
electronically receiving, from a request-manager device, a
request for permission to act on behalf of a consumer;
electronically providing, to a consumer device, a request
for approval of a user-access token identifying the consumer,
said approval comprising information concerning the request for
permission;
electronically providing, to the request-manager device,
the user-access token following approval thereof by the
consumer;
electronically receiving, from the request-manager device,
the consumer-approved user-access token, a facilitation token
comprising permissions for the request-manager device to act
with respect to a resource provider, and a request for a payment
transaction;
upon verification of the tokens, electronically submitting
for authorization to a payment processing device, in accordance
with the request for a payment transaction and information in the
tokens, a charge to a payment instrument associated with the
received user-access token; and
electronically providing to a resource-provider device and
to the request-manager device information concerning the
payment transaction by the consumer.
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REJECTIONS2
Claims 22–35 and 39–45 stand rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. Final Act. 6–14.
Claims 22–35 and 39–45 stand rejected under 35 U.S.C. § 112(a) for
failing to provide written description support for the claimed subject matter.
Final Act. 15–23.
Claims 22–35 and 39–45 stand rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 23–24.
Claims 22–35 and 39–45 stand rejected under 35 U.S.C. § 103 as
obvious in view of Coxe (US 2015/0332029 A1; Nov. 19, 2015) and Ginter
(US 5,892,900; Apr. 6, 1999). Final Act. 24–28.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv).
THE 35 U.S.C. § 101 REJECTION
The Examiner concludes claims 22–35 and 39–45 are directed to
judicially excepted subject matter. Final Act. 6–14; Ans. 4–8. More
specifically, the Examiner determines Appellant’s claims are directed to a
third party managing/brokering “‘the transactional relationship between

2 Appellant canceled claims 36–38 after filing the Notice of Appeal but prior
to filing the Appeal Brief. See After-Final Response (May 9, 2018). The
Examiner entered the amendment canceling claims 36–38. Advisory Act.
(May 18, 2018).
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buyer and seller’”—i.e., “the settlement of a financial transaction through an
intermediary.” Ans. 5 (quoting Appeal Br. 8 (quoting Spec. ¶¶ 3)); Final
Act. 8 (citing Spec. ¶¶ 6, 25). The Examiner determines additional elements,
alone and in combination, do not improve a technology, but include only
insignificant extra-solution activity and generic components or entities that
amount to implementing the abstract idea on a computer. Final Act. 8–10
(citing Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) and
distinguishing Federal Circuit cases finding claims eligible); Ans. 6 (citing
Spec. ¶¶ 26, 61); see also Spec. 7 (noting Appellant acknowledges that the
recited devices and steps are conventional on pages 8 and 9 of the Appeal
Brief).
Appellant argues the eligibility of claims 22–35 and 39–45 under
35 U.S.C. § 101 as a group. Appeal Br. 7– 9; Reply Br. 3–5. We select
independent claim 22 as representative of claims 22–35 and 39–45.
37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice, 573 U.S. at 217. In addition,
the United States Patent and Trademark Office published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
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abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The
Guidance directs us to address this inquiry using the following two prongs of
analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude representative claim 22 recites an abstract idea.
More specifically, claim 22 generally is directed to verifying two parties to a
requested payment transaction have authorized a third party to act on their
behalf and completing the payment transaction in accordance with the
request. This is consistent with how Appellant describes the problem and
solution the claimed invention addresses. Appeal Br. 2 (“With respect to
embodiments within independent claim 22, Appellant has invented a method
for facilitating an electronic payment transaction between a consumer and a
resource provider.”), 8 (quoting Spec. ¶¶ 3, 6); see Spec. ¶¶ 3 (noting that
third parties often act as aggregators and payment processors between a
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buyer and seller), 6 (noting third-party transactions create a need to improve
permissions management for payments and other transactions). Processing a
financial transaction and providing information is a commercial interaction
(sales activity) and falls within a certain method of organizing human
activity—an abstract idea. See 84 Fed. Reg. at 52; see also Alice, 573 U.S. at
219 (explaining that intermediated settlement was abstract because it was a
longstanding fundamental economic practice similar to hedging, which was
found ineligible in Bilski); Inventor Holdings, LLC v. Bed Bath & Beyond
Inc., 123 F.Supp.3d 557, 561 (D.Del. 2015), aff’d, 643 F. App’x. 1014
(Mem) (Fed. Cir. 2016) (holding a claim reciting determining a price for and
processing a remote order at a local point of sale system as describing “a
‘fundamental economic [or] conventional business practice[ ]’ and therefore
an abstract idea” (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014))); Clarilogic, Inc. v. FormFree Holdings Corp.,
681 F. App’x 950, 954 (Fed. Cir. 2017) (unpublished) (concluding that
gathering financial information is abstract—“a method for collection,
analysis, and generation of information reports, where the claims are not
limited to how the collected information is analyzed or reformed, is the
height of abstraction”); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1367–68 (Fed. Cir. 2015) (concluding that tracking
financial transactions to determine whether they exceed a pre-set spending
limit to be “not meaningfully different” from other ideas found to be abstract
involving certain methods of organizing human activity).
Representative claim 22 is reproduced below, with the claim
limitations that recite elements of the abstract idea of verifying two parties to
a requested payment transaction have authorized a third party to act on their
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behalf and completing the payment transaction in accordance with the
request emphasized in italics:
22. A method for facilitating an electronic payment
transaction between a consumer and a resource provider, the
method comprising:
electronically receiving, from a request-manager device, a
request for permission to act on behalf of a consumer;
electronically providing, to a consumer device, a request
for approval of a user-access token identifying the consumer,
said approval comprising information concerning the request for
permission;
electronically providing, to the request-manager device,
the user-access token following approval thereof by the
consumer;
electronically receiving, from the request-manager device,
the consumer-approved user-access token, a facilitation token
comprising permissions for the request-manager device to act
with respect to a resource provider, and a request for a payment
transaction;
upon verification of the tokens, electronically submitting
for authorization to a payment processing device, in accordance
with the request for a payment transaction and information in the
tokens, a charge to a payment instrument associated with the
received user-access token; and
electronically providing to a resource-provider device and
to the request-manager device information concerning the
payment transaction by the consumer.

More particularly, verifying two parties to a requested payment
transaction have authorized a third party to act on their behalf and
completing the payment transaction in accordance with the request
comprises (i) receiving a request to act on behalf of a consumer;
(ii) requesting consumer approval for an indication of authority with respect
to a request; (iii) providing the indication of authority, (iv) receiving, from a
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third party, indications that the third party has authority to act on behalf of
the consumer and a resource provider and a payment transaction request,
(v) upon token verification, submitting a request to charge the consumer’s
payment instrument (e.g., credit card) to a payment processing system or
entity in accordance with the received authority and payment transaction
request; and (vi) providing information regarding the payment transaction to
the other parties (i.e., the resource provider and the third party) to the
transaction.
Verifying two parties to a requested payment transaction have
authorized a third party to act on their behalf and completing the payment
transaction in accordance with the request is a commercial interaction (a
marketing or sales activity) and, therefore, an abstract idea because it falls
within the certain method of organizing human activity category in our
Guidance. See 84 Fed. Reg. at 52; see also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (holding a claim reciting
selecting a price at which to sell a product as describing the automation of
the fundamental economic concept of offer-based price optimization);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed.
Cir. 2015) (holding determining a price “using organizational and product
group hierarchies” was an abstract idea); Inventor Holdings, 123 F.Supp.3d
at 561; Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577 (D.Del.
2015), aff’d, 627 F. App’x 925 (Fed. Cir. 2016) (holding a claim reciting
calculating a price of a product as describing “the abstract idea of ‘a sales
transaction,’ which is a fundamental economic concept”); Federal Home
Loan Mortg. Corp v. Graff/Ross Holdings LLP, 893 F.Supp.2d 28, 36–37
(D.D.C. 2012), aff’d, 604 F. App’x. 930 (Mem) (Fed. Cir. 2015) (holding
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that claims directed to computing a price for an electronic sale of a
component of a fixed-income asset were directed to an abstract idea).
Because representative claim 22 recites a judicial exception, we next
determine whether claim 22 integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial exception
is integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those elements to determine whether they integrate the judicial
exception into a recognized practical application. 84 Fed. Reg. at 54–55
(emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, the additional limitations recited beyond the judicial exception
itself fail to integrate the exception into a practical application. More
particularly, the claims do not recite: (i) an improvement to the functionality
of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg.
at 55.
Appellant asserts the claims are directed to patent eligible subject
matter because the claims “recite very specific technology for carrying out
transactions in the networked environment of mobile commerce” and
“require two types of tokens . . . that govern the scope and validity of the
transaction, and a specific sequence of data exchanges among devices.”
Appeal Br. 7; see Reply Br. 3–4. Specifically, Appellant argues the claimed
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technical elements are not fundamental, the claim does not cover merely the
concept of intermediated settlement of a financial transaction, and “the
elements of the claims cooperate to solve a specific technical problem” of
facilitating permissions management for transactions. Appeal Br. 8 (citing
Spec. ¶¶ 3, 6). Appellant also asserts that, when considered as a whole,
Appellant’s “claims, with their use of complementary electronic tokens,
clearly solve a ‘problem in a particular, technical way.’” Reply Br. 4 (citing
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)).
Contrary to Appellant’s arguments, Appellant’s claims are not similar
to the claims found eligible in either DDR Holdings or BASCOM. The
additional elements recited in representative claim 22 beyond the abstract
idea merely require particular devices (i.e., a “request-manager device” and
a “resource-provider device”) that receive, provide, and submit information
electronically. In other words, Appellant merely claims using known
technology (i.e., processing devices) to perform their known basic functions
(i.e., executing instructions to receive, provide, and submit data) as a tool to
execute the abstract idea of verifying two parties to a requested payment
transaction have authorized a third party to act on their behalf and
completing the payment transaction in accordance with the request. See
Alice, 573 U.S. at 222 (using a computer to perform known processes is not
enough to supply an inventive concept); Appeal Br. 13 (explaining that
receiving, providing, and submitting information are “basic operations in the
field of networks and telecommunications . . . implemented
straightforwardly with commonly available equipment”); Spec. ¶¶ 43, 58,
74, 79. Accordingly, the physical components simply recite the use of
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generic computer components as tools to implement the abstract idea but do
not improve computer capabilities. See 84 Fed. Reg. at 55; MPEP
§ 2106.05(f); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016) (distinguishing between claims wherein the focus of the claims is
on an improvement in computer capabilities and those that invoke a
computer as a tool).
To the extent Appellant argues the tokens recited in representative
claim 22 integrate the claims into a practical application, we disagree. Claim
22’s tokens are merely “indications of authority.” Spec. ¶ 25. Claim 22’s
“user-access token” identifies the consumer, and claim 22’s “facilitation
token” includes “permissions for the request-manager device.” See Appeal
Br. 18 (claim 22). Even when these tokens include various limitations or
restrictions, they are still just a collection of information delineating the
permissions granted by one party to a third party.
Moreover, claim 22 merely uses the recited tokens conventionally—
i.e., to store information that may include information regarding identity and
permissions—and does not recite an improvement to token technology or to
any technology or field related to the tokens. See Enfish, 822 F.3d at 1335–
36. Appellant’s Specification supports this finding because the Specification
does not describe tokens in any level of detail to indicate the invention is
directed to an improvement in tokens or some related technology. Spec. ¶ 37
(“The token may be any form of digital data, such as a digital file, group of
files, or data stream. . . . The present invention is not limited to any
particular type or format of token, however, nor to any particular
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information contained therein.”); cf. Berkheimer Memo3 § III.A.1. In fact,
Appellant’s arguments and Specification indicate the invention is directed to
an improvement in a transactional process because representative claim 22
recites a “unique sequence of steps and data—i.e., the specific chain of data
transmissions and approvals that collectively consummate a transaction
conveniently, reliably, and in accordance with pre-established permissions.”
Appeal Br. 13; see Spec. ¶¶ 3–6, 8.
Regarding Appellant’s argument that the claims provide a specific
technological solution to a technical problem, Appeal Br. 7–9; Reply Br. 3–
5, we disagree. We addressed Appellant’s argument regarding the physical
components and the tokens above. Furthermore, to the extent the claims
recite a “unique sequence of steps and data” for completing a transaction, the
sequence of steps and data constitute the abstract idea itself and, therefore,
cannot integrate the abstract idea into a practical application. We look to the
elements recited in addition to the abstract idea to determine whether the
claims integrate the abstract idea into a practical application. 84 Fed. Reg. at
54. We disagree that the claim recites an improvement to the functionality of
a computer, other technology, or a technical field because, other than the
abstract idea, the claims recite only generic computer components and

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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performing basic operations, as explained above. We note that “relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” Bancorp Servs., L.L.C. v. Sun
Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a
computer “employed only for its most basic function . . . does not impose
meaningful limits on the scope of those claims”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); see Alice, 573 U.S.
at 224 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept).
Appellant’s reliance on BASCOM, Reply Br. 4, is unpersuasive.
In BASCOM, the court found “the patent describes how its particular
arrangement of elements is a technical improvement,” and, when construed
in favor of BASCOM,4 the claims may be read to improve an existing
technological process. BASCOM, 827 F.3d at 1350. As discussed above,
representative claim 22 does not improve an existing technological process,
but rather uses existing technology to perform the abstract idea or claim a
desired functional goal (i.e., verify authority and complete a transaction).
Additionally, Appellants do not clearly indicate what additional elements
they believe recite an unconventional element or combination of elements.
Furthermore, unlike the arrangement of elements (i.e., installation of a
filtering tool at a specific location) in BASCOM, 827 F.3d at 1349–50, we
see nothing in claim 22 that recites an unconventional or non-routine
arrangement of known elements.

4 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
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In the Reply, Appellant contends the claims are similar to those in
DDR Holdings because representative claim 22’s “division of permissions
information into separately processable tokens makes no sense outside of the
context of electronic transactions, and it addresses a problem meaningful
only in this new technological context.” Reply Br. 3 (citing DDR Holdings,
773 F.3d at 1258). In DDR Holdings, the Federal Circuit determined “the
claimed solution amount[ed] to an inventive concept for resolving [a]
particular Internet-centric problem,” i.e., a challenge unique to the Internet.
DDR Holdings, 773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR
Holdings, we held that claims ‘directed to systems and methods of
generating a composite web page that combines certain visual elements of a
‘host’ website with content of a third-party merchant’ contained the requisite
inventive concept”). The Federal Circuit explained that the patent-eligible
claims specified “how interactions with the Internet are manipulated to yield
a desired result . . . that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.” DDR Holdings,
773 F.3d at 1258. The court reasoned that those claims recited a
technological solution “necessarily rooted in computer technology” that
addressed a “problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257. Here, unlike the claims at issue
in DDR Holdings, Appellant’s claims rely on generic devices and tokens
“operating in [their] normal, expected manner” in support of the abstract
idea. DDR Holdings, 773 F.3d at 1258–59. Therefore, in contrast to the
claims in DDR and BASCOM, claim 22 does not improve an existing
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technological process and, for the above reasons, representative claim 22
does not integrate the judicial exception into a practical application.
Because we determine claim 22 is directed to an abstract idea, we
analyze the claims under step two of Alice to determine whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72–73, 77–79 (2012)). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis,
we determine if the claims (1) add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or (2) simply append well-understood, routine, conventional activities
at a high level of generality. 84 Fed. Reg. at 56.
Appellant generally asserts the Examiner failed to establish that the
claims as a whole were “well-understood, routine, and conventional.”
Appeal Br. 9. Appellant also argues the claims are similar to BASCOM, and
quotes the Federal Circuit’s statement that “an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces.” Reply Br. 4 (quoting BASCOM, 827 F.3d. at 1350).
Appellant’s arguments, however, fail to identify any additional element or
particular combination of elements that allegedly are unconventional, non-
routine, or not well-understood. See Appeal Br. 9; Reply Br. 4. The
Examiner cites cases and Appellant’s Specification in support of the finding
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that the generic computer components were well-understood, routine, and
conventional performing conventional computer operations. Final Act. 9–10;
Ans. 6 (citing Spec. ¶¶ 26, 61). Accordingly, Appellant’s general assertion
fails to identify error in the Examiner’s findings.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional,” (emphasis added)).
To the extent Appellant argues the recited devices or tokens are
beyond what was well-understood, routine, and conventional in the field, we
disagree. As the Examiner notes, Appellant’s Specification clearly indicates
the devices may be general purpose computers having generic components.
Ans. 6; Spec. ¶¶ 26, 61. Moreover, as discussed above, the recited tokens are
merely information used in a conventional manner. Spec. ¶¶ 25, 30, 34, 35,
37 (“The token may be any form of digital data, such as a digital file, group
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of files, or data stream. . . . The present invention is not limited to any
particular type or format of token, however, nor to any particular
information contained therein.”). Appellant does not identify a particular
unconventional, non-routine, or not well-understood ordered combination of
elements.
Nor do we see such a combination because the additional elements as
recited perform only their basic functions both individually and in
combination. Representative claim 22 fails to recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. Rather, the only additional elements (i.e., the devices and
electronic transmission of information) are generic computer components
recited at a high level of generality performing basic computer functions,
none of which Appellant argues is beyond what was well-understood,
routine, and conventional in the art. See Spec. ¶¶ 26, 61; Appeal Br. 13.
To the extent Appellant argues the particular order of steps or the
particular data add significantly more, we note that these steps are part of the
ineligible abstract idea. “If a claim’s only ‘inventive concept’ is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.” BSG Tech, 899 F.3d at 1290–91 (citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). “[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter . . . narrowing or reformulating an
abstract idea does not add ‘significantly more’ to it.” BSG Tech, 899 F.3d at
1291.
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For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of claims 22–35 and 39–45
under 35 U.S.C. § 101.
THE 35 U.S.C. § 112(a) REJECTION
The Examiner rejects claims 22–35 and 39–45 under 35 U.S.C.
§ 112(a) as lacking written description support. Final Act. 15–23. In
particular, the Examiner finds insufficient written description support for
“electronically providing, to a consumer device, a request for approval of a
user-access token,” as recited in independent claim 22 and commensurately
recited in independent claim 34. Final Act. 15. The Examiner also finds
insufficient written description support for various devices/entities and
functional language recited in the computer implemented claims. Final
Act. 15–23 (citing MPEP § 2161.01(I)) (finding the Specification discloses
only a general purpose computer without an algorithm for the
devices/entities to perform the computer-implemented functions).
To satisfy the written description requirement, the disclosure must
reasonably convey to an ordinarily skilled artisan that Appellant possessed
the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically,
“the description must ‘clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed,’” and “the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc., 598 F.3d at 1351. Additionally, the Examiner has the
initial burden of presenting evidence or reasons why persons skilled in the
art would not recognize in an applicant’s disclosure a description of the
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invention defined by the claims. In re Wertheim, 541 F.2d 257, 265 (CCPA
1976).
Regarding the rejection of “providing, to a consumer device, a request
for approval of a user-access token,” the Examiner finds the Specification
describes providing a request for a consumer device to approve creation of a
token but not a request for a consumer device to approve an already-existing
token that includes consumer information. Final Act. 15; Ans. 13. Appellant
argues only that “the relevant claim language is fully supported at, for
example, paragraphs [0028] and [0034] of the specification.” Appeal Br. 12.
Specification paragraph 28 generally discloses that the system may
include generic components (i.e., “a server or other computer including a
processor, memory, storage, and/or input/output interface”) and computer
instructions for performing the various generic functions of collecting,
receiving, and transmitting information; granting a transaction request based
on permissions; and processing a payment associated with a request. Spec.
¶ 28. As the Examiner explains, Specification paragraph 34 discloses a
process for a consumer device to approve “the creation of the token,” but
does not describe providing a consumer device a request to approve a token.
Spec. ¶ 34 (emphasis added).
Appellant’s argument merely points us to these two Specification
paragraphs that the Examiner notes support a different function than the
function recited in claims 22 and 34. Appellant fails to persuasively explain
why a person of ordinary skill in the art would have understood the inventor
to be in possession of sending a request to a consumer device for approval of
a token given the Specification’s description of a different function—
sending a request to a consumer device for approval to create a token.
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Accordingly, we are not persuaded of error in the Examiner’s rejection of
claims 22–35 and 39–45 under 35 U.S.C. § 112(a) for failing to provide
adequate written description support for “providing, to a consumer device, a
request for approval of a user-access token,” as recited in independent
claims 22 and 34.
Regarding the remaining rejections under 35 U.S.C. § 112(a), the
Examiner finds various limitations recite functions performed by devices or
entities, and neither the claims nor the Specification provide structure for
those devices or entities or algorithms for the performing the functions. Final
Act. 15–23 (citing MPEP § 2161.01(I)). In particular, the Examiner finds
insufficient structure or algorithms to support the following functions recited
in claims 22, 24–29, 31, 34, 39–41, and 43: the creation of the user-access
token, the creation of the facilitation token, determining whether a
transaction qualifies for a promotion, reducing a charge based on a
promotion, causing funds to be transferred, storing information about the
request for payment transaction, transmitting a promotional offer. Final
Act. 15–23. The Examiner also finds claims 22, 24–29, 31, 34, 39–41, and
43 are “broad enough in scope to read on any and all means for performing
the recited function” such that each claim could “be viewed as a claim to a
genus however the written description fails to provide sufficient species in
the form of programmable algorithms or any description of structural
properties that would provide sufficient support for the claiming of a genus.”
Final Act. 17–23.
Claim 22 is a method reciting six steps: (1) receiving information (a
request for permission); (2) providing information (a request for approval of
a user-access token); (3) providing information (the user-access token);
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(4) receiving information (two tokens and a payment transaction request);
(5) submitting information (a charge to a payment instrument) to a payment
processing device in response to a condition (verification of tokens); and
(6) providing information (information concerning the payment transaction).
Appeal Br. 18 (claim 22). Claim 34 recites a system including a processor
configured to execute instructions for performing these same steps. Appeal
Br. 20 (claim 34).
Notably, claims 22 and 34 do not recite functional limitations of
creating a user-access token or creating a facilitation token. Therefore, the
Examiner erred in finding that the Specification does not have written
description support because these functions are not recited in claims 22 and
34. The “storing information concerning the request for payment transaction
in a user database record associated with the user” step, which is recited in
claims 28 and 40, and the “electronically transmitting a promotional offer”
step, which is recited in claims 29 and 40, are basic computer functions that
need no algorithm for a person of ordinary skill in the art to understand that
the inventor was in possession of these steps.
On the other hand, the “determining whether the request for payment
transaction qualifies for a promotion” step recited in claim 24 and the
“reducing the amount of the charge submitted for authorization based on a
promotion” step recited in claim 26 are not basic computer functions similar
to sending, receiving, and storing. Appellant argues the Specification
describes the various systems structurally and that “no single algorithm” is
“disclosed because the functions performed by the offer-analysis module do
not reduce to an algorithm.” Appeal Br. 14–15. Appellant, however fails to
address the Examiner’s finding that the claims are broad enough to cover
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any and all means of performing the recited functions and the Specification
does not disclose sufficient support for performing the recited function by
any means. Final Act. 19–20. Therefore, on this record, we sustain the
Examiner’s rejection of claims 24 and 26 under 35 U.S.C. § 112(a) for
failing to provide adequate written description support. We also affirm the
Examiner’s rejection of claim 25 on this basis because claim 25 depends
from, and incorporates the limitations of, claim 24.
Similar to the additional steps recited in claims 24 and 26, the
“causing funds to be transferred to the resource-provider following the
payment transaction” step recited in claims 27 and 39 is not a basic
computer function. Appellant similarly identifies the Specification’s
structural description of the permission management system that performs
the step of causing funds to be transferred. Appeal Br. 15. With respect to
this step recited in claims 27 and 39, Appellant also identifies disclosure
describing how the payment-processing module processes a payment (i.e.,
“causes funds to be transferred”). Therefore, on this record, we do not
sustain the Examiner’s rejection of claims 27 and 39 under 35 U.S.C.
§ 112(a) for failing to provide adequate written description support.
For the above reasons, we are persuaded the Examiner erred in
rejecting claims 22, 23, 27–35, and 39–45 under 35 U.S.C. § 112(a) for
failing to provide adequate written description support for the variously
recited functional limitations. However, we are not persuaded the Examiner
erred in rejecting claims 24–26 under 35 U.S.C. § 112(a) for failing to
provide adequate written description support for the variously recited
functional limitations. Nevertheless, because we agree with one of the
Examiner’s bases for rejecting claims 22–35 and 39–45 under 35 U.S.C.
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§ 112(a), we sustain the Examiner's rejection under 35 U.S.C. § 112(a) of
claims 22–35 and 39–45.
THE 35 U.S.C. § 112(b) REJECTION
The Examiner concludes claims 22–35 and 39–45 are indefinite. Final
Act. 23–24. In particular, the Examiner finds the step “upon verification of
the tokens, electronically submitting for authorization to a payment
processing device, in accordance with the request for a payment transaction
and information in the tokens, a charge to a payment instrument associated
with the received user-access token,” recited in independent claims 22 and
34, is indefinite. Final Act. 23–24. The Examiner finds these claims
indefinite because the claims’ failure to affirmatively recite “verifying the
tokens” or directly tie the recited “information in the tokens” to content
previously recited as being included in the tokens makes it “unclear how the
tokens can be considered verified without an actual operation of verification
or how the submission can be in ‘accordance with... information in the
tokens.’” Final Act. 23–24. The Examiner also finds it is unclear whether
verification must be performed to infringe claims 22 and 34. Ans. 21.
Appellant argues the clause “upon verification of the tokens”
adequately conveys what is claimed and the Specification discloses several
verification techniques. Appeal Br. 13 –14 (quoting Spec ¶ 42). Appellant
does not directly address the Examiner’s findings regarding the submission
of a charge “in accordance with . . . information in the tokens.”
Although Appellant’s arguments are minimal, on this record, we
disagree with the Examiner. The Examiner is correct that “no actual step of
verification is being claimed.” Ans. 21. Accordingly, claims 22 and 34 do
not require an actual step of verifying the tokens. Rather, claims 22 and 34
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merely require that someone or something has verified the tokens at some
point and, “upon verification of the tokens,” electronically submitting the
charge. The Examiner is also correct that the submission must be in
“accordance with . . . information in the tokens,” Ans. 21, but that
information need not be particular information recited earlier in the claims.
Both of these clauses the Examiner identifies render claims 22 and 34
extremely broad, but we disagree that this breadth renders claims 22 and 34
indefinite. Rather, to render the claimed subject matter obvious, the prior art
need only teach or suggest “upon verification of the tokens,” electronically
submitting a charge (i.e., the art may verify the tokens or receive some
indicating that the tokens were verified and, in response to that, submit the
charge) for authorization to a payment processing device in accordance with
the request and any “information in the tokens.” For these reasons, we agree
the Examiner erred in rejecting claims 22–35 and 39–45 as indefinite under
35 U.S.C. § 112(b).
THE 35 U.S.C. § 103 REJECTION
Appellant argues claims 22–35 and 39–45 as a group. Appeal Br. 9–
11; Reply Br. 5–6. We select independent claim 22 as representative of
claims 22–35 and 39–45. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds the combination of Coxe and Ginter teaches or
suggests every limitation recited in claims 22–35 and 39–45. Final Act. 25–
28. With respect to representative claim 22, the Examiner finds Coxe teaches
or suggests the steps relating to receiving requests for permission to act on
behalf of the consumer, providing a request for approval of a user-access
token, providing the user-access token, receiving the two tokens and the
transaction request, and, although not affirmatively recited, verifying the
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tokens. Final Act. 25–26. The Examiner finds Ginter teaches or suggests the
limitations relating to submitting and processing a payment transaction and
providing information regarding the transaction. Final Act. 26. The
Examiner also provides a rationale for combining the cited teachings from
Coxe and Ginter. Final Act. 26.
Appellant argues Coxe fails to teach bifurcated tokens and fails to
teach a second token at all, let alone the recited “facilitation token.” Appeal
Br. 10. Appellant contends Coxe’s permission granted from a relying party
(RP) to the attributed exchange network (AXN) for facilitating payments to
other members of the AXN does not equate to a facilitation token, as recited
in the claims. Reply Br. 6. Appellant acknowledges that Ginter discloses
managing electronic payment transactions, including using payment tokens,”
but Appellant argues Ginter fails to teach or suggest distinguishing “between
entities that can be equated to a resource-provider device and a request-
manager device.” Appeal Br. 11; Reply Br. 6.
The Examiner notes the claims do not recite particular elements of the
facilitation token other than the fact that the token comprises permissions to
act with respect to a resource provider. Ans. 8. The Examiner finds Coxe
discloses that a relying party may register with the AXN to establish service
options, including authorizing the AXN to make payments to other entities
(e.g., identity providers (IPs) and attribute providers (APs)) in the exchange
network on the relying party’s behalf. Ans. 8–9 (citing Coxe ¶¶ 7, 40, 44, 45,
60, 61). Therefore, the Examiner finds Coxe’s RP granting permission to the
AXN teaches or suggests the second “facilitation token” recited in claim 22.
Ans. 9 (citing Coxe ¶¶ 7, 44, 45, 60, 61). The Examiner finds Ginter teaches
providing information to participants involved in electronic activities and
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Appellant has not demonstrated that Ginter’s parties fail to teach or suggest
the claimed resource provider and request manager. Ans. 10–11.
We agree with the Examiner that representative claim 22 broadly
claims the facilitation token and generally recites no particular requirements.
Additionally, as we discussed above, the Specification discloses that tokens
are merely “indications of authority.” Spec. ¶ 25; see also Spec. ¶ 37 (“The
token may be any form of digital data, such as a digital file, group of files, or
data stream. . . . The present invention is not limited to any particular type or
format of token, however, nor to any particular information contained
therein.”). Although Coxe does not explicitly describe the exact mechanism
employed, Coxe discloses that its RPs may provide permission for the AXN
to make payments to IPs or APs on its behalf, which is an indication of
authority.” Accordingly, we disagree with Appellant that Coxe fails to teach
or suggest the recited facilitation token.
Appellant has not persuaded us that Ginter fails to teach providing
information to the resource-provider device and the request-manager device.
The Examiner finds Ginter teaches the steps related to payment transactions,
including the step of providing information concerning the payment
transaction to the parties to the transaction. Final Act. 26; Ans. 10–11.
Appellant does not dispute that Ginter teaches electronically transmitting
information regarding the transaction, but argues Ginter does not distinguish
between the resource-provider device and the request-manager device and
the roles those devices play. Appeal Br. 11; Reply Br. 6. However, given
that Ginter teaches electronically transmitting information regarding a
transaction involving multiple parties, we agree with the Examiner that
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Ginter at least suggests transmitting that information to devices associated
with each of the parties to the transaction.
For the above reasons, we are not persuaded the Examiner erred in
rejecting representative claim 22 under 35 U.S.C. § 103 as obvious in view
of the combination of Coxe and Ginter. For the same reasons, we are not
persuaded the Examiner erred in rejecting claims 23–35 and 39–45, not
argued separately with particularity.
CONCLUSION
We sustain the Examiner’s decision to reject claims 22–35 and 39–45
under 35 U.S.C. § 101.
We sustain the Examiner’s decision to reject claims 22–35 and 39–45
as indefinite under 35 U.S.C. § 112(a).
We reverse the Examiner’s decision to reject claims 22–35 and 39–45
as indefinite under 35 U.S.C. § 112(b).
We sustain the Examiner’s decision to reject claims 22–35 and 39–45
under 35 U.S.C. § 103.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
USC §
References/Basis Affirmed Reversed
22–35, 39–45 101 Ineligible 22–35, 39–45
22–35, 39–45 112(a) Written Description 22–35, 39–45
22–35, 39–45 112(b) Indefinite 22–35, 39–45
22–35, 39–45 103 Coxe, Ginter 22–35, 39–45
Overall
Outcome
22–35, 39–45
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED