U.S. Payments, LLC

Patent Trials and Appeals Board

Feb 12, 2020

14863280 - (D) (P.T.A.B. Feb. 12, 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.
14/863,280 09/23/2015 Tim Neece 949514.330007 1069
24239 7590 02/12/2020
MOORE & VAN ALLEN PLLC
ATTN: IP DEPARTMENT
100 North Tryon Street
Suite 4700
Charlotte, NC 28202
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
iplaw@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIM NEECE, JIM BENNETT, and
BRANDON SHANE SKIDGEL
___________

Appeal 2019-004806
Application 14/863,280
Technology Center 3600
_________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
ADAM J. PYONIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3–7, 10, 12–17, and 20–23, all of the pending
claims. Appeal Br. 2.2 Claims 2, 8, 9, 11, 18, and 19 are cancelled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party-in-interest as
U.S. Payments, LLC. Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
February 19, 2019) and Reply Brief (“Reply Br.,” filed June 3, 2019); the
Final Office Action (“Final Act.,” mailed January 18, 2018); the Examiner’s
Answer (“Ans.,” mailed April 2, 2019); and the originally-filed
Specification (“Spec.,” filed September 23, 2015)). Rather than repeat the
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STATEMENT OF THE CASE
Appellant’s claimed computer program products, methods, and
systems “relate generally to receiving and processing payments sent from a
payor to a biller, and more particularly, relate to systems, methods, and
computer program products for verifying payment data related to such
payments and/or accelerating posting of such payments.” Spec. ¶ 2.
As noted above, claims 1, 3–7, 10, 12–17, and 20–23 are pending.
Claims 1, 6, and 15 are independent. Appeal Br. 21 (claim 1), 22–23
(claim 6), 24–25 (claim 15) (Claims App.). Claims 3–5 depend directly or
indirectly from claim 1; claims 7, 10, and 12–14 depend directly from
claim 6; and claims 16, 17, and 20–23 depend directly from claim 15. Id. at
21–26.
Claim 1 recites “[a] computer program product embodied on a non-
transitory computer readable medium for processing payments from a payor
to a biller, the computer program product comprising a computer-readable
storage medium having computer-readable program code portions stored
therein” to perform functions, substantially as recited in claim 6. Id. at 21,
22–23. Claim 15 recites “[a] special purpose hardware-based computer
system for processing payments and verifying the accuracy of payment data
related to a payment sent from a payor to a biller prior to allowing the biller
to accept the payment, the special purpose hardware-based computer system
comprising: a processing element capable of” performing functions,
substantially as recited in claim 6. Id. at 22–23, 24–25. The Examiner relies

Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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on the same findings and arguments in rejecting claims 1, 3–7, 10, 12–17,
and 20–23 (Final Act. 2–6), and Appellant does not contest the rejection of
any claim separately from the independent claims (see Appeal Br. 20; Reply
Br. 4).
Claim 6, reproduced below with disputed limitations emphasized, is
representative.
6. A method of receiving and processing payments from a
payor to a biller, comprising:
receiving payment data, by a special purpose hardware-
based computer system,3 related to a payment sent from a payor,
wherein the payment data comprises an account number and an
amount paid, the payment data being accurate or inaccurate;
verifying the accuracy of the account number and amount
paid by the special purpose hardware-based computer system by
opening a batch file containing the account number and amount
paid, reading the contents of the batch file, comparing the
account number and amount paid to data in a database or table
maintained by the biller, wherein the database or the table
comprises data for a plurality of payors, and determining that the
account number and amount paid match an account number or
amount to be paid in the database or the table maintained by the
biller before allowing the biller to accept the payment, and
wherein the database comprises data for a plurality of payors;
and
receiving, by the special purpose hardware-based computer
system, current account information from the biller, and using
the current account information received from the biller to

3 Although Appellant seeks to show the patent eligibility of the rejected
claims based in part on the recitation of “a special purpose hardware-based
computer system” in claims 6, 7, 10, 12–17, and 20–23, we note that claims
1 and 3–5 do not recite this limitation. See Appeal Br. 21–22 (Claims App.).
Thus, we do not find Appellant’s contentions regarding this limitation
applicable to claims 1 and 3–5.
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modify the database or table such that the database comprises a
substantially realtime representation of at least a portion of the
biller's account data.
Id. at 22–23 (emphases added). Therefore, we focus our analysis on
independent claim 6.
REJECTION
The Examiner rejects claims 1, 3–7, 10–17, and 20–23 under 35
U.S.C. § 101, as directed to patent ineligible subject matter.4 Final Act. 2–6.
We review the appealed rejection for error based upon the issues identified
by Appellant, and in light of the arguments and evidence produced thereon.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Action
and the Answer as our own and add any additional findings of fact for
emphasis. For the reasons given below, we affirm the Examiner’s rejection.
ANALYSIS
Patent Ineligible Claims
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and

4 In the Final Office Action, the Examiner also rejects claims 1, 3–7, 10, 12–
17, and 20–23 as indefinite. Final Act. 4, 6. We presume the Examiner has
withdrawn this rejection as the cited concern appears to have been corrected
in an amendment filed June 18, 2018.
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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 Court’s two-part 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) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). According to the Court, 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)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the 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. at 191 (citing Benson and Flook). Nevertheless, the
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Court noted that “[i]t is 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.” Id. at 187; see also BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed.
Cir. 2016) (Even if the individual components were known, “an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application of that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we next “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. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part test, the Office published revised guidance on
the application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).5 In Step One of our analysis, we

5 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update:
Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Note, the feedback received
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look to see whether the claims, as written, fall within one of the four
statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) 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
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP6
§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
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.

was primarily directed to examination procedures and, accordingly, this
update focuses on clarifying practice for patent examiners. However, all
USPTO personnel are expected to follow the guidance.”).
6 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Directed to Statutory Categories
Appellant’s independent claim 1 and its associated dependent claims
are directed to computer program products “embodied on a non-transitory
computer readable medium,” i.e., a “composition of matter”; Appellant’s
independent claim 6 and its associated dependent claims are directed to a
methods, i.e., a “process”; and Appellant’s independent claim 15 and its
associated dependent claims are directed to a systems i.e., a “machine.”
Appeal Br. 21–26 (Claims App.); see In re Nuijten, 500 F.3d 1346, 1356–57
(Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject
matter). Thus, the pending claims are directed to recognized statutory
categories.
D. Two-Part Alice/Mayo Test
1. Step 2A, Prong One – Claims Recite Abstract Ideas
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner found “Claim(s) 1, 3-7, 10-17[7] 20-23 is/are directed to verifying
the accuracy of received payment data by comparing it to stored payment
data before allowing a biller accept the payment.” Final Act. 4; see Spec.
¶ 2. In particular,
The abstract idea is an idea of itself, such as a concept, plan or
scheme or mental process that may be performed in the human
mind or by a human using pen and paper such as the abstract idea
identified in SmartGene[, Inc. v. Adv. Biological Labs., SA, 555
Fed. Appx. 950, 955 (Fed. Cir. 2014)], comparing new and stored

7 We note claim 11 has been canceled. See Appeal Br. 23 (Claims App.).
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information and using rules to identify options. In the present
case the payment data is the new information and the data in the
database is the stored information. The two are compared for
accuracy and a determination is made about the accuracy of the
data which corresponds to the rule. The options are to allow the
biller to accept the payment or not based on the rule.
Id. at 5; Ans. 3–4, 10; see Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (“The focus of the asserted claims, as
illustrated by claim 12 quoted above, is on collecting information, analyzing
it, and displaying certain results of the collection and analysis.”); Cellspin
Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019) (citing Electric
Power Grp. with approval). We agree with the Examiner’s assessment of
the claims.
The Specification explains, “[t]he executable portion [of a computer
program product] may be configured to verify the accuracy of the payment
data by opening a batch file containing payment data, reading the contents of
the batch file, and comparing the contents of the batch file to a database, a
table, and/or an algorithm.” Spec. ¶ 29. Claim 6 broadly recites the steps of
(1) receiving payment data including an account number and an amount paid
(“receiving payment data . . . related to a payment sent from a payor,
wherein the payment data comprises an account number and an amount paid,
the payment data being accurate or inaccurate”); (2) verifying the payment
data by comparing the payment data to data stored in a database or table and
determining that the payment data matches the data stored in a database or
table, before allowing the biller to accept payment (“verifying the accuracy
of the account number and amount paid . . . by opening a batch file
containing the account number and amount paid, reading the contents of the
batch file, comparing the account number and amount paid to data in a
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database or table maintained by the biller, wherein the database or the table
comprises data for a plurality of payors, and determining that the account
number and amount paid match an account number or amount to be paid in
the database or the table maintained by the biller before allowing the biller to
accept the payment”); and (3) updating the database or table based on
current account information received from the biller (“receiving . . . current
account information from the biller, and using the current account
information received from the biller to modify the database or table such that
the database comprises a substantially realtime representation of at least a
portion of the biller’s account data”). Appeal Br. 22–23 (Claims App.).
These are steps of “observation, evaluation, judgment, opinion” and, under
the broadest reasonable interpretation, also can be reasonably characterized
as “[m]ental processes.” 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52.
Appellant contends, however, that
Unlike the claims at issue in Alice in which a computer
was merely used as a tool to implement an abstract idea that
could be performed without the use of computers, the
fundamental idea underlying the present claims is tied to
computer technology and cannot be performed by a human
mentally or using a pen and paper.
Appeal Br. 10. We disagree.
Appellant fails to demonstrate that the steps of receiving payment
data, verifying the payment data comparing the payment data to data in a
table and determining whether it matches, and updating the table using
current information supplied by the biller could not be performed without
using a computer, e.g., with pen and paper. As the Office has explained,
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Claims can recite a mental process even if they are claimed as
being performed on a computer. . . .
By way of example, examiners may review the specification to
determine if the underlying claimed invention is described as a
concept that is performed in the human mind and applicant is
merely claiming that concept performed 1) on a generic
computer, 2) in a computer environment or 3) is merely using a
computer as a tool to perform the concept. In these situations,
the claim is considered to recite a mental process. For instance,
in Voter Verified, Inc. v. Election Systems & Software LLC[, 887
F.3d 1376, 1385 (Fed. Cir. 2018)], the Federal Circuit relied
upon the specification in explaining that the claimed steps of
voting, verifying the vote, and submitting the vote for tabulation
are human cognitive actions that humans have performed for
hundreds of years despite the fact that the steps in the claim were
performed on a computer.
October 2019 Update: Subject Matter Eligibility at 8; see Spec. ¶¶ 25, 26,
29, 32, 34, 84, 92–94. We are persuaded that a person could receive data,
compare the received data to a table to verify its accuracy, and subsequently
update the table without the aid of a computer. Final Act. 5.
In addition, claim 6 recites “[a] method of receiving and processing
payments from a payor to a biller.” Appeal Br. 22 (Claims App.) (preamble
of claim 6); see Spec. ¶ 2. We note that receiving payment data, verifying
the accuracy of that payment data by comparing it to existing account
records (e.g., databases or tables) before accepting payment, and updating
those account records to reflect current data are “commercial or legal
interactions (including . . . legal obligations; . . . sales activities or behaviors;
business relations).” See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52.
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Thus, we determine that the claims recite “[c]ertain methods of
organizing human activity– . . . commercial or legal interactions”8 and
“mental processes–concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52; see also October
2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Other claims
may recite multiple abstract ideas, which may fall in the same or different
groupings, or multiple laws of nature. In these cases, examiners should not
parse the claim.”). Consequently, we determine that the rejected claims
recite abstract ideas, namely “[c]ertain methods of organizing human
activity” and “mental processes.”
2. Step 2A, Prong Two – Abstract Ideas Not Integrated Into Practical
Application
Initially, we note that claim 1 recites “[a] computer program product
embodied on a non-transitory computer readable medium for processing
payments from a payor to a biller,” having computer-readable program code
portions. Appeal Br. 21 (Claims App.). The Specification discloses that a
computer-readable storage medium may be a non-volatile storage medium.
Spec. ¶ 92. Further, claims 6 and 15 recite that the functions discussed

8 “[T]he sub-groupings [of certain methods for organizing human activities]
encompass both activity of a single person (for example, a person following
a set of instructions or a person signing a contract online) and activity that
involves multiple people (such as a commercial interaction), and thus,
certain activity between a person and a computer (for example a method of
anonymous loan shopping that a person conducts using a mobile phone) may
fall within the ‘certain methods of organizing human activity’ grouping.”
October 2019 Update: Subject Matter Eligibility, 5 (Oct. 17, 2019).
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above are performed by “a special purpose hardware-based computer
system.” Appeal Br. 22, 24 (Claims App.). The Specification explains
blocks or steps of the flowcharts support combinations of means
for performing the specified functions, combinations of steps for
performing the specified functions and program instruction
means for performing the specified functions. It will also be
understood that each block or step of the flowcharts, and
combinations of blocks or steps in the flowcharts, can be
implemented by special purpose hardware-based computer
systems which perform the specified functions or steps, or
combinations of special purpose hardware and computer
instructions.
Spec. ¶ 94. The Specification does not describe “special purpose hardware-
based computer systems” or “special purpose hardware” in further detail.
Applying the second part of the Alice/Mayo analysis,9 the Examiner
finds:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims merely recite generic devices used
to implement the abstract idea; a computer program product and
a processor. The claims also recite the data being received in a
batch file however, this is not a meaningful limitation because
the format of the data does not affect the process. Additionally,
the claims further recite storing the database or table and
receiving current account information which is used to update the
database or table.

9 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under the second part of the Alice/Mayo analysis
(Step 2B of the Office guidance). See Ans. 10–11. For purposes of
maintaining consistent treatment within the Office, we evaluate those
considerations under first part of the Alice/Mayo analysis (Step 2A of the
Office guidance). See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 55 n.25, 27–32.
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Final Act. 5. Moreover, as the Examiner notes, Appellant does not provide
explanation or evidence why the systems or hardware are “special,” other
than that they perform the recited functions. Ans. 7 (“The appellants
‘special purpose hardware-based computer’ is nowhere defined, at least, as
having a specific structure, arranged in a particular way, therefore the
appellant’s argument is unpersuasive.”); see id. at 10.
We are persuaded that the products of claim 1 merely recite generic
storage devices, and, similarly, the methods and systems of claims 6 and 15
merely recite generic hardware; and all of the independent claims recite
known techniques for manipulating and evaluating data. Consequently, the
products, methods, and systems are not linked to any particular machine
(MPEP § 2106.05(b)) and merely apply generic computer hardware and
software to perform the abstract ideas (MPEP § 2106.05(f)). See Final
Act. 3, 5; Ans. 7; see also 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 55 nn.27, 30. Moreover, as the Examiner notes,
“[l]imiting the claims to a particular technological area do not transform the
claims into patent-eligible subject matter.” Final Act. 5; see MPEP
§ 2106.05(h); 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. at 55 n.29.
Appellant contends, however, that “[t]he practical application as
defined by the present invention is the ability to modify the database or table
in real-time so as to present, in real-time, a representation of the biller’s
account data or a portion thereof.” Reply Br. 2. We disagree.
Initially, we note the claims do not recite that the database or table is
modified “in real-time,” but, instead, recite that the database or table is
modified, “such that the database comprises a substantially real-time
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representation of at least a portion of the biller’s account data.” Appeal
Br. 23 (Claims App.) (claim 6 (emphasis added)); see also id. at 21, 25
(corresponding recitations of claims 1 and 15); Spec. ¶¶ 29 (“For example,
the database, table, and/or algorithm may provide a substantially real-time
representation of at least a portion of the biller’s account data.”), 31 (“In
some embodiments of the method, the database provides a substantially real-
time representation of the biller’s accounts.”), 35 (“The database may
provide a substantially real-time representation of the biller’s accounts.”).
Although the Specification discloses that, referring to Figure 3, “[t]he
verifier 340 preferably is capable of checking at least a portion of the
payment data that it receives against the biller’s records in real time,” we do
not read this limitation into the claims. Spec. ¶ 56 (emphases added); see
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”); see also Am. Axle & Mfg., Inc. v. Neapco Holdings LLC,
939 F.3d 1355, 1363 (Fed. Cir. 2019) (“We have repeatedly held that
features that are not claimed are irrelevant as to step 1 or step 2 of the
Mayo/Alice analysis.”); Two-Way Media Ltd. v. Comcast Cable Commc’ns,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (“Neither the protocol nor the
selection signals are claimed, precluding their contribution to the inventive
concept determination.”). Thus, the modification is not “in real time,” and
the database is not necessarily a “real-time” representation. See Electric
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Power Group, 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.
The claims therefore do not state an arguably inventive concept in the realm
of application of the information-based abstract ideas.”). Moreover, even
were we to accept that the claims recite real-time modification of the
database or table or that the modified database is a real-time representation,
such a modification or representation, without more, would not result here in
a determination of eligibility.10

10
It is well settled . . . that automating conventional activities using
generic technology does not amount to an inventive concept. See
Alice, 134 S.Ct. at 2358 (explaining that “if a patent’s recitation
of a computer amounts to a mere instruction to implement an
abstract idea on ... a computer, that addition cannot impart patent
eligibility”) (internal alteration, citation, and quotations
omitted); Intellectual Ventures[ I LLC v. Capital One Bank
(USA)], 792 F.3d [1363,] 1367 [Fed. Cir. 2015)] (“claiming the
improved speed or efficiency inherent with applying the abstract
idea on a computer [does not] provide a sufficient inventive
concept”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the
claimed subject matter.”).
LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 996 (Fed. Cir. 2016)
(emphasis added).

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As evidenced by the analysis above, claim 6 is broad in its scope and
does not meaningfully limit the abstract idea, particularly, how the payment
data is received, other than that it is received in a batch file; how the
payment data is compared to data stored in the database or table; how the
payment data is determined to match the stored data; or how the database or
table is updated. See Electric Power Grp., 830 F.3d at 1353. Consequently,
we are not persuaded that this limitation integrates the recited abstract ideas
into a practical application.
In view of Appellant’s claim recitations and Specification and
consistent with the Examiner’s determinations, we are persuaded the
rejected claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h). Thus, we conclude that the rejected
claims do not integrate the judicial exceptions into a practical application
and that the claims are directed to abstract ideas.
3. Step 2B – Not Significantly More Than the Abstract Ideas
Because we find that the claims are directed to abstract ideas and do
not integrate those abstract ideas into a practical application, we now
consider whether the claims include additional limitations, such that the
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claims amount to significantly more than the abstract ideas. As noted above,
applying the second part of the Alice/Mayo test, the Examiner finds:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims merely recite generic devices used
to implement the abstract idea; a computer program product and
a processor. The claims also recite the data being received in a
batch file however, this is not a meaningful limitation because
the format of the data does not affect the process. Additionally,
the claims further recite storing the database or table and
receiving current account information which is used to update the
database or table. This limitation is not particularly meaningful
because using received data to update stored data is a common
computer function which is well-understood, routine and
conventional and can also be considered insignificant
extrasolution activity.
Final Act. 5. As noted above, Appellant contends “the pending claims recite
a particular way of processing payments whereby the accuracy of the
account number and amount paid is verified by a highly specific and unique
means prior to allowing the biller to accept payment.” Appeal Br. 12.
The Examiner responds,
the appellant provides no explanation or evidence, other than
reciting the claim language itself, why the Office should consider
a special purpose hardware-based computer an inventive
concept. The appellants “special purpose hardware-based
computer” is nowhere defined, at least, as having a specific
structure, arranged in a particular way, therefore the appellant’s
argument is unpersuasive.
Ans. 7. Further, the Examiner finds the activities performed by the recited
hardware also are well-understood, routine, and conventional. Id. at 6; see
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(“Adding routine additional steps such as updating an activity log, requiring
a request from the consumer to view the ad, restrictions on public access,
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and use of the Internet does not transform an otherwise abstract idea into
patent-eligible subject matter. Instead, the claimed sequence of steps
comprises only ‘conventional steps, specified at a high level of generality,’
which is insufficient to supply an ‘inventive concept.’” (emphasis added)).
We agree with the Examiner.
Appellant further contends that the claims at issue are similar to
claim 2 in Example 35 of the Office’s Subject Matter Eligibility Examples:
Business Methods. Appeal Br. 12–14. Initially, we note, “[t]he Board
decides cases in accordance with the law, not in accordance with
hypothetical” examples. Ex Parte Blythe, Appeal No. 2017-003176, 2018
WL 3047568, at *8 (PTAB May 31, 2018) (nonprecedential); see also 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52, n. 11
(“[T]he finding that the subject matter claimed in a prior patent was
‘abstract’ as claimed may not determine whether similar subject matter in
another application, claimed somewhat differently or supported by a
different disclosure, is directed to an abstract idea and therefore patent
ineligible.”). Example 35, like the other examples provided by the Office, is
merely a “hypothetical [that is] only intended to be illustrative of the claim
analysis under the 2019 [Patent Eligibility Guidance].” Subject Matter
Eligibility Examples: Abstract Ideas, 1 (Jan. 7, 2019). Nonetheless, we
assess to what extent the fact pattern set forth by Example 35 bears on the
claims of Appellant’s pending application.
Upon review of hypothetical claim 2 of Example 35, claim 2 recites
the steps of
generating a random code and transmitting it to a mobile
communication device that is registered to the customer associated
with the bank card,
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reading, by the automated teller machine, an image from
the customer's mobile communication device that is generated in
response to receipt of the random code, wherein the image
includes encrypted code data,
decrypting the code data from the read image, and
analyzing the decrypted code data from the read image and
the generated code to determine if the decrypted code data from
the read image matches the generated code data.
Appeal Br. 13. As the Examiner finds, “the example makes it clear that it is
the combination of steps provided by the ATM and the mobile
communication device ... that is more than a conventional verification
process employed by an ATM alone.” Ans. 8. We agree.
Moreover, we find the combination of steps recited in claims 1, 6, and
15 to more closely resemble the method recited in hypothetical claim 1 of
Example 35, which the Office deems an example of a patent ineligible claim
and which recites steps comprising “a method of fraud prevention by
verifying the authenticity of the customer’s identity prior to proceeding with
a banking transaction, which is a ‘long prevalent’ business practice that bank
tellers have used for many years.” Subject Matter Eligibility Examples:
Business Methods, 7–9 (Dec. 2016). Regarding this hypothetical claim, the
Office concludes, “[t]aken individually therefore, the additional elements of
claim 1 do not provide significantly more, i.e., an inventive concept, to the
claim,” and “[t]he combination of elements is no more than the sum of their
parts, and provides nothing more than mere automation of verification steps
that were in years past performed mentally by tellers when engaging with a
bank customer.” Id. at 9. Thus, we do not find Appellant’s contentions with
respect to Example 35 persuasive of Examiner error.
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We find Appellant’s contentions based on Example 21, first raised in
the Reply Brief, equally unpersuasive. Reply Br. 3. Appellant notes that
Example 21 describes claims directed to an “Internet-centric challenge.” Id.
No such challenge is addressed by Appellant’s claims or described in the
Specification. See Appeal Br. 21–26 (Claims App.); Spec. ¶¶ 74, 79, 84.
Appellant also contends the claims are analogous to claims found
patent eligible in Bascom and Amdocs (Israel) Ltd v. Openet Telecom, Inc.,
761 F.3d 1329 (Fed. Cir. 2014). Appeal Br. 14–17. In particular, Appellant
contends:
The recited elements [of the pending claims], in combination, are
not directed to “generic computer components claimed to
perform their basic functions.” Instead, the recited elements are
performed by a special purpose hardware-based computer and
combine in a particular way to verify the accuracy of account
information and payment amount prior to allowing the biller to
accept the payment in a batch-type payment request.
Id. at 17 (emphasis added). Nevertheless, for the reasons discussed above,
Appellant fails to demonstrate how the “special purpose hardware-based
computer” is special and, in particular, how it performs the functions recited
in the claims in a manner different from generic hardware. Ans. 7. Nor
does Appellant persuasively show that the combinations of limitations
rendering the claims of Bascom and Amdocs patent eligible are analogous to
the limitations of the pending claims. Id. at 8–9.
Appellant also contends that, even if the claims recite an abstract idea,
they do not preempt the use of that idea. Appeal Br. 17–19. As our
reviewing court has explained, “[t]he Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
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and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at
2354); see Final Act. 3–4; Ans. 9. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, 788 F.3d at 1379. We
are not persuaded that a potential lack of complete preemption is dispositive
here.
On this record, we agree with the Examiner that independent claims 1,
6, and 15 are directed to abstract ideas and fails to recite “significantly
more” than the identified abstract ideas. Thus, we are not persuaded that the
Examiner erred in determining that independent claims are patent-ineligible,
and we sustain that rejection. Appellant does not argue the eligibility of the
dependent claims separately, and, therefore, the dependent claims fall with
their base claims. See 37 C.F.R. § 41.37(c)(1)(iv). Consequently, we also
sustain the patent ineligibility rejection of the dependent claims.
DECISION
1. The Examiner did not err in rejecting claims 1, 3–7, 10, 12–17, and
20–23 under 35 U.S.C. § 101, as directed to patent-ineligible subject
matter.
2. Thus, on this record, claims 1, 3–7, 10, 12–17, and 20–23 are not
patentable.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3–7, 10, 12–17, and
20–23.
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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–7, 10, 12–
17, 20–23
101 Eligibility 1, 3–7, 10, 12–
17, 20–23

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