MasterCard International Incorporated

Patent Trials and Appeals Board

May 8, 2020

14697988 - (D) (P.T.A.B. May. 8, 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.
14/697,988 04/28/2015 Kenny Unser P01985-US-
UTIL (M01.356)
7926
125619 7590 05/08/2020
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNY UNSER and JEAN-PIERRE GERARD
Appeal 2019-000240
Application 14/697,988
Technology Center 3600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. 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(a). Appellant identifies the real party in interest as Mastercard
International Inc. Appeal Br. 2.
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Application 14/697,988
2
CLAIMED SUBJECT MATTER
Appellant describes the claimed invention as follows:
[M]any consumers/cardholders currently carry and/or use two
or more payment card products, including credit, debit and pre-
paid cards. The payment card products, and by extension,
associated accounts, may be sponsored by one or more issuer
financial institutions. A cardholder may choose to use different
cards for different types of transactions based on, for example, a
rewards incentive system or credit terms offered for a particular
card, in addition to other points of differentiation. For example,
a cardholder likes to constantly alternate between card accounts
to leverage different offers (e.g., rewards, interest rates, balance
revolving, paranoia about having a longstanding account with a
single entity, etc.). For example, a cardholder may use one card
product to collect premium rewards for gas purchases, while
another card may be used to collect “cash back” rewards for
non-gas purchases. However, it may be difficult to track which
card is preferred for a particular transaction. According to
some embodiments, operations may be performed to
automatically leverage different payment card products to
maximize the cardholder value for card product holder during a
purchase transaction. Embodiments provide for the cardholder
to use a single card with a single proxy account number for any
of their preferred cards that allows them to use a persistent
account number (proxy account number) despite constantly
changing the cards they use.
Appeal Br. 7.
Claim 1, reproduced below with annotations, illustrates the claimed
subject matter:
1. A method comprising:
[1] receiving, by a leverage module, data associated with
a purchase transaction;
[2] determining that an account identifier associated with
the received data identifies a proxy account number for a
composite account, wherein the composite account includes a
collection of two or more card products;
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Application 14/697,988
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[3] analyzing, by the leverage module, composite account
data to determine at least one card product of the collection of
card products to process the purchase transaction;
[4] selecting, by the leverage module, an account
associated with at least one card product to process the purchase
transaction based on the analysis; and
[5] transmitting, by the leverage module, the selected at
least one account to an issuer of the selected at least one card
product for authorization of the purchase transaction.
REJECTION2
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception to patentable subject matter. Final Act. 4–8.
OPINION
Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. 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.”

2 The Examiner has withdrawn the rejection under 35 U.S.C. § 103. Ans. 8.
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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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 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.”
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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. (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.
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)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:

3 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).
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(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”).4
2019 Revised 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Prong One of Step 2A
Under prong one of Step 2A, we first look to whether the claim recites
any judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activities, or
mental processes). 2019 Revised Guidance, 84 Fed. Reg. at 52–54. To this
end we note that claim 1 recites “receiving, by a leverage module, data

4 This evaluation is performed by (a) identifying whether there are any
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 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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associated with a purchase transaction,” “determining that an account
identifier associated with the received data identifies a proxy account
number for a composite account, wherein the composite account includes a
collection of two or more card products,” “analyzing, by the leverage
module, composite account data to determine at least one card product of the
collection of card products to process the purchase transaction,” “selecting,
by the leverage module, an account associated with at least one card product
to process the purchase transaction based on the analysis,” and “transmitting,
by the leverage module, the selected at least one account to an issuer of the
selected at least one card product for authorization of the purchase
transaction.” These limitations, under their broadest reasonable
interpretation, recite selecting a payment card product to process a purchase
transaction.
For example, “receiving, by a leverage module, data associated with a
purchase transaction,” and “determining that an account identifier . . .
identifies a proxy account number for a composite account, wherein the
composite account includes a collection of two or more card products” are
steps that collect information regarding a purchase transaction and recognize
at least two or more payment card products are available to choose from in
order to process the payment transaction. Similarly, by “analyzing . . .
composite account data to determine at least one card product of the
collection of card products to process the purchase transaction,” the method
can make the selection of the payment card product based on the analysis of
various factors. Once the analysis has been conducted and a payment card
product has been determined, a selection of “an account associated” with
that payment card product and the transmission of the account to an issuer of
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the selected payment card product allows the payment transaction to take
place. Selecting a payment card product to process a purchase transaction is
a form of sales activity or commercial interaction.
Accordingly, we conclude the claims recite a sales activity or
commercial interaction, which is a certain method of organizing human
activity identified in the 2019 Revised Guidance as constituting an abstract
idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Thus, under prong
one of Step 2A we determine the claims recite an abstract idea.
Prong Two of Step 2A
Under prong two of Step 2A of the Guidance we determine whether
the claim as whole integrates the recited abstract idea into a practical
application of the abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 54.
A claim that integrates a judicial exception into a practical application will
apply, rely on, or use 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. 2019 Revised
Guidance, 84 Fed. Reg. at 54. To evaluate whether the claims integrate the
abstract idea into a practical application, we identify whether there are any
additional elements recited beyond the abstract idea, and evaluate those
additional elements individually and in combination. Id. at 54–55.
Some exemplary considerations laid out by the Supreme Court and the
Federal Circuit indicate that an additional element that integrates an abstract
idea into a practical application includes (i) an improvement in the
functioning of a computer or to another technological field; (ii) an
application of the judicial exception with, or by use of, a particular machine;
(iii) a transformation or reduction of a particular article to a different state or
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thing; or (iv) a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h); 2019
Revised Guidance, 84 Fed. Reg. at 55.
Considering the claim limitations individually and as a whole, we note
that the receiving step and the transmitting step (steps [1] and [5]) are
essentially extra-solution activities that collect information about a purchase
transaction and eventually transmit the account once a payment card product
has been selected. The determining, analyzing, and selecting steps (steps
[2], [3], and [4]) each recite actions toward selecting the appropriate
payment card which, as we explain above, recite an abstract idea.
Appellant argues that the invention helps cardholders select which
payment card to use for different types of purchase transactions based on a
variety of factors, such as rewards incentives, credit terms, interest rates, and
the like. Appeal Br. 7. Appellant’s invention provides the cardholder with a
single card and proxy account for any of their preferred cards allowing them
to use a persistent account number despite constantly changing cards.
Appeal Br. 8. Therefore, Appellant argues “the claims are clearly directed to
a technological improvement realized by the invention (e.g., systemic
selection of a card product to maximize card holder value), and not on a task
for which a computer is used in its ordinary capacity.” Appeal Br. 8.
We are unpersuaded by Appellant’s argument. Systemic selection of
a payment card based on rewards incentives, interest rates, and other factors
is not a technological problem, and the solution of having a single card with
a proxy account that represents the multiple cards is not a technical solution.
We find instead that the solution merely uses computers as tools to perform
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the abstract idea of selecting a payment card product to process a purchase
transaction.
For at least the foregoing reasons, we determine that the claims do not
integrate the judicial exception into a practical application under prong 2 of
Step 2A. We, therefore, turn to Step 2B next.
Step 2B of the Guidance
Under Step 2B of the Guidance we analyze the claims to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
Considerations that are evaluated with respect to Step 2B include
determining whether the claims as a whole add a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field. See 2019 Revised Guidance, 84 Fed. Reg.
at 56. Simply appending well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception indicates that an inventive concept may not be present.
Id.
As explained above, each of the claimed steps recites operations that
perform the abstract idea of selecting a payment card product to process a
purchase transaction. The additional recitations of hardware or software
elements, such as the “leverage module,” do not add significantly more to
the abstract idea. The “leverage module” as claimed, simply performs the
“receiving,” “analyzing,” “selecting,” and “transmitting” steps, which we
have addressed above. The Specification similarly describes the leverage
module at a high level of generality, performing the steps of claim 1.
Spec. ¶¶ 20, 50–54; see also Spec. ¶ 57 (the “method steps can then be
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carried out using the distinct software modules and/or sub-modules [such as
the card product leveraging module] of the system”). As such, the claimed
leverage module is used as a tool for implementing the abstract idea and
does not add an inventive concept. “[I]f a patent’s recitation of a computer
amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a
computer,’ . . . that addition cannot impart patent eligibility.” Alice, 573
U.S. at 223.
Appellant argues that the claimed features are not well-known
because the invention is non-obvious. Appeal Br. 9 (arguing “the specific
ordered combination of the claimed features is not well-known, as will be
discussed below with respect to the rejection under §103”). We are
unpersuaded by Appellant’s argument. “[P]atent-eligibility does not turn on
ease of execution or obviousness of application. Those are questions that are
examined under separate provisions of the Patent Act.” Rapid Litig. Mgmt.
Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016). Thus,
merely because the Examiner has not presented a rejection under 35 U.S.C.
§§ 102 and 103 does not overcome a 35 U.S.C. § 101 rejection. Although
the second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “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,
573 U.S. at 217–18. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellant also argues that because the claimed invention is novel, it
“cannot reasonably be seen to risk pre-empting the alleged abstract idea.”
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Appeal Br. 9. Novelty and preemption, however, are distinct concepts that
are not mutually exclusive. As the Federal Circuit has explained, “[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.; see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015),
cert. denied, 136 S. Ct. 701 (2015).
For the foregoing reasons, the claim fails to integrate the abstract idea
into a practical application, and the additional claim elements do not add
significantly more to the abstract idea. Appellant, therefore, does not
persuade us the Examiner erred in concluding that claim 1 is directed to
patent-ineligible subject matter. Accordingly, we sustain the § 101 rejection
of independent claim 1. We also affirm the rejection of claims 2–20 on the
same grounds, which Appellant does not argue separately. See Appeal Br.
16–23.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED