Visa International Service Association

Patent Trials and Appeals Board

Dec 21, 2021

2021002553 (P.T.A.B. Dec. 21, 2021)

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.
14/340,344 07/24/2014 Matthew DILL 079900-0910619
(671US02)
2000
66945 7590 12/21/2021
Visa / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GETACHEW, WODAJO
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/21/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW DILL, PRASANNA L. NARAYAN,
GLENN POWELL, JOHN F. SHEETS, and ANDREW CARPENTER
____________

Appeal 2021-002553
Application 14/340,3441
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
JAMES P. CALVE, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection2 of claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and 30. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Visa International Service
Association as the real party in interest (Appeal Br. 2).
2 All references to the Final Office Action refer to the Final Office Action
mailed on April 15, 2020.
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SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states its invention relates to a “network token system
provid[ing] a platform that can be leveraged by various entities such as third
party wallet providers, merchants, acquirers, payment processors, etc. that
use tokens to facilitate payment transactions.” Spec. ¶ 5.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method, comprising:
receiving, by a server computer, a payment token request
comprising a real account identifier from a token requestor
computer;
performing, by the server computer, an authentication
method from among a plurality of authentication methods on
the real account identifier or a holder of the real account
identifier;
based on performing the authentication method,
determining, by the server computer, a token assurance level as
a level of confidence that the payment token to represent the
real account identifier was requested by a genuine account
holder of the real account identifier;
transmitting, by the server computer, the payment token
representing the real account identifier to the token requestor
computer;
receiving, by an authorization module of the server
computer from a merchant computer, an authorization request
message comprising the payment token for a transaction;
determining, by the authorization module of the server
computer, the real account identifier associated with the
payment token;
generating, by the authorization module of the server
computer, a modified authorization request message comprising
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the real account identifier and the token assurance level
associated with the payment token;
transmitting, by the authorization module of the server
computer, the modified authorization request message including
the real account identifier and the token assurance level to an
issuer computer for approval, wherein the issuer computer
approves of the transaction based at least upon the token
assurance level, generates an authorization response message
comprising the real account identifier, and transmits the
authorization response message comprising the real account
identifier to the server computer;
receiving, by the server computer from the issuer
computer, the authorization response message comprising the
real account identifier;
modifying by the server computer the authorization
response message to include the payment token and the token
assurance level; and
transmitting, by the server computer, the modified
authorization response message including the token assurance
level and the payment token to the merchant computer.

THE REJECTIONS
Claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and 30 are rejected under
35 U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more.
Claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and 30 are rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement.
Claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and 30 are rejected under
35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
being indefinite.
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FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–10, 20–30
in the Final Office Action and on pages 3–13, in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 112(a) REJECTION
In rejecting claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and 30 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement, the Examiner found:
Claims 1 and 11 recite[] “based on performing the
authentication method, determining, by the server computer, a
token assurance level as a level of confidence that the payment
token to represent the real account identifier was requested by
a genuine account holder of the real account identifier.”
. . . .
The Applicant’s Specification does not describe how the server
computer is determining the token assurance level based on
performing the authentication method.
Final Act. 26–27 (underline omitted).
Appellant points to the Specification “at element 322 in FIG. 3 and
¶¶[0141] and [0170]” to show where the Specification describes the
limitation in question. Appeal Br. 13. Appellant then asserts:
Here, there is no question that a person of skill in the art
would have known how to “determine” a token assurance level
based on performing the authentication method. This would
obviously involve reviewing the outcome of the authentication
method, and if successful, determining that the payment token to
represent the real account identifier was requested by a genuine
account holder of the real account identifier. Since there is no
complexity or unpredictability with respect to the process of
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“based on performing the authentication method, determining,
by the server computer, a token assurance level as a level of
confidence that the payment token to represent the real account
identifier was requested by a genuine account holder of the real
account identifier,” this feature is adequately supported by the
specification.
Appeal Br. 14.
We agree with Appellant. We have reviewed the sections of the
Specification cited by Appellant and find on balance, the Specification
complies with the written description requirement. Specifically, paragraph
141 describes several factors which go into determining a token assurance
level associated with the token generated by the token generation module.
Among these factors the Specification lists at paragraph 141, is, “any other
relevant information.” Thus, the Specification sets out no limitation in its
description as to what constitutes an assurance indicator.
That the Specification does not describe a specific algorithm does not
make the written description fatally defective because claims 1 and 7, when
reasonably broadly construed, do not recite a computer-enabled means-plus-
function limitation. That is, the issue in Aristocrat Techs. Austl. Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), requiring a specific
algorithm to complete the written description, was based on a means-plus-
function limitation.3 Aristocrat, 521 F.3d at 1337; and Ex parte Catlin, 90
USPQ2d 1603, 1605 (BPAI 2009). Similarly, in In re Katz Interactive Call

3 Claim 1 of US Patent 6,093,102 recites in pertinent part “the control means
defining a set of predetermined arrangements for a current game comprising
each possible combination of the symbol positions selected by the player
which have one and only one symbol position in each column of the display
means.” Aristocrat, 521 F.3d at 1331.
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Processing Patent Litigation, 639 F. 3d 1303 (Fed. Cir. 2011), the Federal
Circuit held only those
claims that were drafted in the means-plus-function format
prescribed by 35 U.S.C. § 112 ¶ 6, …were invalid for
indefiniteness because the only corresponding structure
disclosed in the specification was a general purpose computer
and the specification did not disclose an algorithm by which the
general purpose computer performed the recited function.
Id. at 1313.
35 U.S.C. § 112(b) REJECTION
Concerning the use of the term “genuine,” the Examiner’s concerns
are a matter of claim breadth, not indefiniteness. “Breadth is not
indefiniteness.” In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Thus, we
find no indefiniteness with the use of the word “genuine.”
We also disagree with the Examiner’s finding that because claim 1
also recites function of an issuer computer in addition to the recited function
of the server computer, it is indefinite. The preamble of claim 1 only
generically recites a method without designation of the function of a specific
computer.
Nor do we agree with the Examiner that claim 11 constitutes a hybrid
claim. Claim 11 effectively covers the functions of a processor similar to
how a memory device covers process steps in Beauregard4 claims.
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1, 5, 9–11, 15, 19, 20, 24, 25,
27, 28, and 30 under 35 U.S.C. § 101.

4 In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
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The Appellant argues claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and
30 as a group (Appeal Br. 5). 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. Pty. Ltd. 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. Alice, 573 U.S. 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 id. 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.”).
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,
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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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It 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.”).
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,
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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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).5 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51;6 see also October
2019 Update at 1.
Under the 2019 Revised 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).7

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
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.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
7 This evaluation is performed by (a) identifying whether there are any
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Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
Guidance, 84 Fed. Reg. at 52–56. 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 [S]pecification, 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 Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],

additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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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 §§ 2106.04–2106.05.
The Specification states:
Because [a] PAN [(primary account number)] can be
exposed at various points in the transaction lifecycle, some have
suggested that payment “tokens” be used to conduct payment
transactions. A token serves as an additional security layer to the
PAN and in effect becomes a proxy/surrogate to the PAN and
may be used in place of PAN while submitting transactions. The
use of payment tokens instead of PANs can reduce the risk of
fraudulent activity since the real PAN is never exposed.
Spec. ¶ 3.
Claim 1 recites in pertinent part:
receiving, . . . , a payment token request comprising a real
account identifier from a token requestor computer;
performing, . . . an authentication method from among a
plurality of authentication methods on the real account identifier
or a holder of the real account identifier;
based on performing the authentication method,
determining, . . . a token assurance level as a level of confidence
that the payment token to represent the real account identifier
was requested by a genuine account holder of the real account
identifier;
transmitting, . . . the payment token representing the real
account identifier to the token requestor . . . ;
receiving, . . . from a merchant . . . , an authorization
request message comprising the payment token for a transaction;
determining, . . . the real account identifier associated with
the payment token;
generating, . . . a modified authorization request message
comprising the real account identifier and the token assurance
level associated with the payment token;
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transmitting, . . . the modified authorization request
message including the real account identifier and the token
assurance level to an issuer computer for approval, wherein the
issuer . . . approves of the transaction based at least upon the
token assurance level, generates an authorization response
message comprising the real account identifier, and transmits the
authorization response message comprising the real account
identifier . . . ;
receiving, . . . from the issuer . . . , the authorization
response message comprising the real account identifier;
modifying . . . the authorization response message to
include the payment token and the token assurance level; and
transmitting, . . . the modified authorization response
message including the token assurance level and the payment
token . . . .
The Examiner found claim 1 is directed to:
processing transaction . . . because the claims involve receiving
a request for a payment method and authenticating account
holder or account identifier, based on the authentication
determining assurance level and transmitting a payment method
to the reguestor and processing a transaction when the requestor
uses the payment method for a transaction and
approving/denying based on the assurance level which is
identifying a purchaser, determining that the purchaser is
authentic and is authorized to make the purchase using the
payment method, providing information necessary to make the
purchase and processing the transaction to approve or deny the
transaction.
Final Act. 7 (emphasis omitted). Accordingly, all this intrinsic evidence
shows that claim 1 recites a way of paying for a transactions using
authenticated payment tokens representing real account identifiers. This is
consistent with the Examiner’s determination. Effecting secure payment for
a transaction constitutes a commercial interaction/sales activity and hence
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are ones of certain methods of organizing human activity that are judicial
exceptions. Guidance, 84 Fed. Reg. at 52.
In addition, we find that the verbs identified above in italics in the
truncated version of claim 1 are mental steps because they mimic human
thought processes, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning
IP, 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
(Fed. Cir. 2017) (identifying the abstract idea of collecting, 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).
Turning to the second prong of the “directed to” test, claim 1 only
generically requires a server computer, a token requestor computer, an
authorization module, “server computer,” “requestor computer,”
“authorization module of the server computer,” “merchant computer,” and
“issuer computer.” These components are described in the Specification at a
high level of generality. See Spec. ¶¶ 65–73, Figs. 1 and 2. We fail to see
how the generic recitations of these most basic computer components and/or
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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.
Thus, we find that the claims recite the judicial exceptions of a certain
method of organizing human activity and a mental process.
That the claims do not preempt all forms of the abstraction or may be
limited to payment tokens, does not make them 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 claims are directed to abstract ideas/judicial exceptions, the claims 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 claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because, when analyzed under step 2B of the
Alice/Mayo test (See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)),
the additional element(s) of using a “server computer”,
“requestor computer”, “authorization module of the server
computer”, “merchant computer” and “issuer computer” to
perform the steps amounts to no more than using a computer or
processor to automate and/or implement the abstract idea . . . .
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Final Act. 24.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
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, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
claims do not, for example, purport to improve the functioning of the
computer itself. 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., Spec. ¶¶ 65–73,
Figs. 1 and 2. Thus, the claims at issue amount to nothing significantly
more than instructions to apply the abstract idea 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 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis 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
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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.
As to the structural claims 11, 15, 19, 20, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101 “in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 573 U.S. at 226 (quoting Mayo, 566 U.S. at 72). As a corollary, the
claims are not directed to any particular machine.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 (Appeal Br. 5–13; Reply Br. 2–5). 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.
Appellant argues: “The claims recite a specific messaging and data
protection scheme that takes place in a distributed computer system, and do
not recite a ‘method for organizing human activity.’” Appeal Br. 7.
Although Appellant and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
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Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241. We further note the Examiner on page 7 of the Final Action
gives detailed reasoning supporting his finding as to why claim 1 is directed
to an underlying processing a transaction. We find this analysis reasonable
and adopt it as our own.
Appellant asserts:
[T]he claims clearly provide for a “practical application”[;] [as]
explained above, embodiments of the invention improve upon
existing, conventional payment systems that use a PAN to
conduct payment transactions. Instead of using a PAN to
conduct a transaction, embodiments of the invention can use a
token and a token assurance level to conduct a transaction.
Appeal Br. 8.
The problem with the argument as to practical application is that it
presents no evidence that any technological implementation details are
recited in claim 1. All steps are generic receiving, processing, and analyzing
data.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016). Simply automating steps so no humans perform them is
insufficient to confer eligibility. “When claims like the Asserted Claims are
directed to an abstract idea and merely require generic computer
implementation, they do not move into section 101 eligibility territory.”
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Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
1374 (Fed. Cir. 2017) (citations and internal quotations omitted).
As we found above, claim 1 only generically requires a “server
computer,” “requestor computer,” “authorization module of the server
computer,” “merchant computer,” and “issuer computer,” which are
described in the Specification at a high level of generality such that these
generic recitations of these most basic computer components and/or of a
system fail to integrate 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.”
The Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Guidance, 84
Fed. Reg. at 55.
Although we agree with Appellant that the claims must be read, as a
whole (Appeal Br. 10, 12), we nevertheless find, on balance, that claim 1 is
directed to a way of paying for a transaction using authenticated tokens for
the reasons specified above with respect to our “directed to” findings. As
found supra, claim 1 only includes the following generically recited device
limitations: “server computer,” “requestor computer,” “authorization
module of the server computer,” “merchant computer,” and “issuer
computer.” What remains in the claim after disregarding these device
limitations, are abstractions–mental steps, i.e.:
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determining, . . . a token assurance level as a level of
confidence that the payment token to represent the real account
identifier was requested by a genuine account holder of the real
account identifier;
receiving, . . . from a merchant . . . , an authorization
request message comprising the payment token for a
transaction;
determining, . . . the real account identifier associated
with the payment token;
generating, . . . a modified authorization request message
comprising the real account identifier and the token assurance
level associated with the payment token;
generates an authorization response message comprising
the real account identifier, and transmits the authorization
response message comprising the real account identifier . . . ;
modifying . . . the authorization response message to
include the payment token and the token assurance level . . . .

“[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 Appellant is arguing that these 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 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.”).
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Appellant argues “the Examiner has the burden of supplying evidence
that the following limitations were well-understood, routine, and
conventional activities previously known to the industry.” Appeal Br. 12.
We disagree with Appellant. The Federal Circuit has made clear that
“not every § 101 determination contains genuine disputes over the
underlying facts material to the § 101 inquiry.” Berkheimer v. HP, 881 F.3d
at 1368. In fact, the Federal Circuit in Berkheimer did not require
evidentiary support for independent claim 1 because “[t]he limitations [of
claim 1] amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components.” Id. at 1370.
For the reasons identified above, we will sustain the Examiner’s § 101
rejection of claims 1, 5, 9–11, 15, 19, 20, 24, 25, 27, 28, and 30.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 5, 9–11,
15, 19, 20, 24, 25, 27, 28, and 30 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1, 5, 9–11, 15,
19, 20, 24, 25, 27, 28, and 30 under 35 U.S.C. § 112(a) and (b).
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).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28, 30
101 Eligibility 1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28, 30

1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28, 30
112 Written Description 1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28,
30
1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28, 30
112 Indefiniteness 1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28,
30
Overall
Outcome
1, 5, 9–
11, 15,
19, 20,
24, 25,
27, 28, 30

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