COMENITY LLC

Patent Trials and Appeals Board

May 27, 2021

2021000454 (P.T.A.B. May. 27, 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.
14/626,773 02/19/2015 Randy WEST ADS-022 7877
45588 7590 05/27/2021
ALLIANCE DATA C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
05/27/2021 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDY WEST, MARY J. FEYH, and JAMES WALZ
____________

Appeal 2021-000454
Application 14/626,773
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 3–5, 7–12, 14, 15, 17–19, 21, 22, 24–
26, and 28, which constitute all the claims pending in this application.
Claims 2, 6, 13, 16, and 20 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.
Appeal 2021-000454
Application 14/626,773

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THE INVENTION
Appellant claims a method for applying and buying a co-branded
virtual card. (Title).

Claim 1 is representative of the subject matter on appeal.
1. A method for applying and buying with a co-branded
virtual card, the method comprising:
receiving a customer application for a co-branded credit
card at a time of purchase;
performing a customer qualification for the co-branded
credit card at the time of purchase;
providing access to a virtual co-branded card for a
qualified customer, said virtual co-branded card having a valid
credit card number, a valid credit card expiration date and a valid
credit card security code,
said valid credit card number taken from a subset of credit
card numbers available to a credit-based payment processor, the
subset of credit card numbers reserved for the virtual co-branded
card,
said valid credit card number is not associated with a
primary account number tied to said qualified customer;
providing an initially predefined available credit line to the
virtual co-branded card, the initially predefined available credit
line less than a credit limit associated with the primary account
number;
authorizing a use of the virtual co-branded card to buy
goods at a time of qualification;
completing a transaction for a purchase of goods using the
virtual co-branded card;
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issuing a physical credit card associated with the primary
account number of said qualified customer;
preventing, in response to the issuing of the physical credit
card, said qualified customer from access to said virtual co-
branded card;
returning said valid credit card number of said virtual co-
branded card to the subset of credit card numbers reserved for
the virtual co-branded card; and
reassigning said virtual co-branded card to another
customer, said reassigning of said virtual co-branded card
comprising:
the same valid credit card number,
a different valid credit card expiration date, and
a different valid credit card security code.

THE REJECTION
Claims 1, 3–5, 7–12, 14–15, 17–19, 21, 22, 24–26, and 28 are rejected
as non-statutory subject matter under 35 U.S.C. § 101.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 3–5, 7–12, 14, 15, 17–19,
21, 22, 24–26, and 28 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the elements
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of each claim both individually and “as an ordered
combination” to determine whether the additional
elements “transform the nature of the claim” into a
patent-eligible application. . . . [The Court]
described step two of this analysis as a search for an
“‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept]
itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. 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.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing 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 judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019) (“Guidance”).
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The Examiner determines that the claims recite actions related to
marketing or sales activities or behaviors specifically applying for a virtual
card for conducting purchase transactions which is a method of organizing
human activity. (Final Act. 10). The Examiner finds that claim 1 recites
additional elements of a processor, credit card generator and credit
application receiver. These elements, according to the Examiner, are recited
at a high level of generality such these recitations amount to no more than
mere instructions to implement an abstract idea by adding the words “apply
it” with the judicial exception. (Final Act. 11). The Examiner finds that the
additional elements generally link the use of the judicial exception to a
particular technological environment or field of use. The Examiner finds
that the judicial exception is not integrated into a practical application nor do
the additional elements amount to significantly more than the judicial
exception recited.
The Specification discloses that company specific, brand specific or
store credit cards provide significant value for both consumer and provider.
(Spec. ¶ 2). The advantages are that the provider is able to tailor rewards
offers, provide loyalty discounts and maintain consumer brand loyalty.
The company branded card may be used for purchases at the store on the
label as well as at other stores that accept that credit card network’s credit
cards (Spec. ¶ 18). A virtual card company branded card refers to a
temporary card number that can be issued to a customer while the customer
waits to receive an actual credit card with an associated credit card number
from the credit provider. The virtual company branded card has a valid
temporary account number, a valid temporary expiration date and a valid
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security code so that transactions can be completed on a merchant credit
card machine.
Consistent with this disclosure, claim 1, for example, recites
“receiving a customer application for a co-branded credit card at the time of
purchase,” “performing a customer qualification for the co-branded credit
card,” “authorizing a use of the virtual co-branded card to buy goods at the
time of qualification,” and “completing a transaction for a purchase.”
In view of these disclosures and recitations, we agree with the
Examiner that claim 1 recites a method related to sales and marketing
activity and thus recites a certain method or organizing human activity. The
claims are directed to controlling the behavior of persons concerning a credit
transaction. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are
directed to an abstract idea of controlling the behavior of persons concerning
a credit transaction which is a method of organizing human behavior, which
is not eligible subject matter. See Alice, 134 S. Ct. at 2355–56.
Turning to the second prong of the “directed to test”, the only
recitation that is not part of the abstract idea and thus is an additional
element is the step of “issuing a physical card.” An additional element may
integrate an exception into a practical application if the additional element
reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field. Guidance, 84 Fed. Reg.
at 55. However, “an additional element [that] adds insignificant extra-
solution activity to the judicial exception” is an indication that “a judicial
exception has not been integrated into a practical application.” Id. Examples
of insignificant extra-solution activity include measuring metabolites of a
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drug administered patient or adjusting an alarm light based on the output of a
mathematical formula. Id. at 55, n.31. We find that the judicial exception
recited in claim 1 is not integrated into a practical application and thus claim
1 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
the claims are directed to an abstract idea, claim 1 must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is 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 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
We find that the additional element of issuing a physical card does not
amount to significantly more than the abstract ides because as we find
above, this recitation is insignificant extra solution activity which is well-
understood, routine, conventional activity previously engaged in by
scientists who work in the field. The Court in Alice noted that “‘[s]imply
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ [in Mayo] to supply an ‘inventive concept.”’ Alice, 134 S. Ct.
at 2357 (quoting Mayo, 566 U.S. at 82–83, 77–78, 72–73).
We agree with the Examiner that claim 1 recites an abstract idea and
does not include additional elements that are significantly more than the
abstract idea.
We have reviewed all the arguments (Appeal Br. 11–16) Appellant
has submitted concerning the patent eligibility of the claims before us that
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
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made. But, for purposes of emphasis, we will address various arguments in
order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the method of claim 1 provides a virtual card
number that is not associated with the primary account number and therefore
is a practical application that defines a specific solution that includes reusing
valid credit card numbers as part of the specific solution. (Appeal Br. 14).
The problem with this argument is that it is not directed to the consideration
that are indicative of a practical application. According to the Guidance
some factors that should be considered in determining whether the judicial
exception is integrated into a practical application are: (1) whether the
additional elements reflect an improvement in the functioning of a computer
or other technology or technical field, (2) whether the additional elements
that apply or use the judicial exception to affect a particular treatment or
prophylaxis for a disease or medical condition, (3) whether the additional
elements implement a judicial exception with or use a judicial exception in
conjunction with a particular machine, (4) whether the additional elements
affect a transformation or reduction of a particular article to a different state
or thing and (5) whether the additional elements use the judicial exception in
some other meaningful way beyond generally linking the judicial exception
to a particular technological environment. Guidance, 84 Fed. Reg. 55. As
Appellant has not addressed the factors to be considered in determining
whether the additional elements recited in claim 1 integrates the judicial
exception into a practical application, this argument is not persuasive. In
addition, as we find above, the recitation of “issuing a physical credit card,”
which is the only recitation in claim 1 in addition to the abstract idea, is a
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recitation of insignificant post solution activity and therefore does not
integrate the judicial exception into a practical application.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain the rejection as it is directed to the
remaining claims because Appellant has not argued the separate eligibility of
the remaining claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 3–5, 7–
12, 14, 15, 17–19, 21, 22, 24–26, and 28 under 35 U.S.C. § 101.

CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 7–
12, 14, 15,
17–19, 21,
22, 24–26,
28
101 Eligibility 1, 3–5, 7–
12, 14, 15,
17–19, 21,
22, 24–26,
28

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