MasterCard International Incorporated

Patent Trials and Appeals Board

May 6, 2020

2019005169 (P.T.A.B. May. 6, 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.
14/080,449 11/14/2013 Kenny Unser 21652-00316 4169
75564 7590 05/06/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
KARMIS, ALISSA D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/06/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNY UNSER, NIKHIL MALGATTI, and SERGE BERNARD
Appeal 2019-005169
Application 14/080,449
Technology Center 3600
Before JUSTIN BUSCH, LINZY T. McCARTNEY, and
CARL L. SILVERMAN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
final rejection of claims 1–3, 5, 6, 8–13, 15, 16, and 18–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as MasterCard International
Incorporated. Appeal Brief 1, filed April 16, 2018 (Appeal Br.).
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BACKGROUND
This patent application concerns “recommending a merchant type for
a candidate merchant location or a merchant location for a candidate
merchant type, based on transaction data associated with at least one known
merchant.” Specification ¶ 1, filed November 14, 2013 (Spec.). Claim 1
illustrates the claimed subject matter:
1. A computer-implemented method for providing merchant
recommendation data based on candidate merchant input data,
said method implemented using a merchant location computing
device in communication with a memory and an electronic
payment network, said method comprising:
[a] receiving, from a client computing device, the
candidate merchant input data, the candidate merchant input data
specifying a geographic location;
[b] collecting, by the merchant location computing device
from the electronic payment network, payment card transaction
data for a plurality payment card transactions processed by the
electronic payment network;
[c] storing the collected transaction data within the
memory;
[d] selecting, from the collected transaction data, a
plurality of model merchants located at or near the specified
geographic location, wherein the respective locations of the
selected model merchants are determined from authorization
request messages included in the collected transaction data;
[e] storing model merchant data for each of the selected
plurality of model merchants within the memory, wherein the
model merchant data includes geographic attributes of the
respective locations, the geographic attributes including regional
demographics and nearby merchant types, and wherein the
merchant location computing device associates with each of the
model merchants (i) a merchant type, (ii) customer attributes, and
(iii) a merchant type classification code;
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[f] generating, by the merchant location computing device,
a merchant-specific location model for each of the plurality of
model merchants by comparing the transaction data for each
model merchant and the model merchant data for each model
merchant;
[g] identifying, by the merchant location computing
device, a first model merchant location of the respective
locations that is similar to the specified geographic location,
wherein the location identification is based on model merchant
attributes including at least one of demographic data, transaction
data and cardholder data associated with the first model merchant
location;
[h] determining, by the merchant location computing
device, a market opportunity value for a first model merchant in
the first model merchant location, the market opportunity value
being a numerical indicator representing an estimated revenue of
the first model merchant relative to a predetermined revenue
value;
[i] selecting, by the merchant location computing device,
the first model merchant from the first model merchant location,
including determining that the first model merchant has a market
opportunity value in excess of a predetermined threshold;
[j] statistically correlating the model merchant attributes
of the first model merchant with the market opportunity value;
[k] identifying, by the merchant location computing
device, a first model merchant type associated with the at least
one model merchant, wherein the type identification is based on
the statistical correlation; and
[l] transmitting to the client computing device, based on
the location model and the candidate merchant input data,
merchant recommendation data to cause a display of the client
computing device to display the first model merchant type as a
recommended merchant.
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Response to Notification of Non-Compliant Appeal Brief, Corrected
Claims Appendix 1–3, filed May 14, 2018 (Claims App’x) (bracketed
letters added).2
REJECTION
Claims 35 U.S.C. § Reference(s)/Basis
1–3, 5, 6, 8–13,
15, 16, 18–20 101 Eligibility
DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments, and Appellant has not persuaded us that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 2–15 of the Final Office Action mailed
September 8, 2017 (Final Act.), the continuation sheet of the Advisory
Action mailed December 19, 2017, and pages 3–16 of the Examiner’s
Answer mailed April 18, 2019 (Ans.). We address Appellant’s arguments
below.
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,

2 The Corrected Claims Appendix lacks page numbers. We treat the
Corrected Claims Appendix as if Appellant had sequentially numbered it
starting with the first page of the document.
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the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54; see also USPTO, October 2019 Update: Subject Matter
Eligibility at 1–2, 10–15, https://www.uspto.gov/sites/default/files
/documents/peg_oct_2019_update.pdf (“October SME Update”) (providing
additional guidance on determining whether a claim recites a judicial
exception and integrates a judicial exception into a practical application). If
the claim is directed to an abstract idea, as noted above, we then determine
whether the claim has an inventive concept. The Revised Guidance explains
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that when making this determination, we should consider whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
Appellant argues claims 1–3, 5, 6, 8–13, 15, 16, and 18–20 together, so as
permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this
ground of rejection based on claim 1.
Directed To
The Revised Guidance explains that the abstract idea exception
includes “mental processes,” that is, acts that people can perform in their
minds or using pen and paper. Revised Guidance, 84 Fed. Reg. at 52. The
Examiner determined that claim 1 recites subject matter that falls within this
abstract idea grouping. See Final Act. 8–9; Ans. 4.
We agree. Limitations [a]–[k] encompass acts that people can perform
in their minds or using pen and paper. Limitations [a]–[e], [g], [i], and [k]
recite receiving, collecting, storing, selecting, and identifying certain things.
See Claims App’x 1–3. These limitations recite what the method does but do
not meaningfully limit how the method does it. See Claims App’x 1–3.
Limitations [a]–[e], [g], [i], and [k] are thus so broadly drawn that they
encompass acts that people can perform in their minds or using pen and
paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) (determining that a claim step “is so broadly worded
that it encompasses literally any method for” performing the step, including
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“even logical reasoning that can be performed entirely in the human mind”);
see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54
(Fed. Cir. 2016) (determining that claims focusing on “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” are directed to an abstract idea); October SME Update at 7
(identifying the claims in Electric Power Group as examples of claims that
recite mental processes); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.”).
Like limitations [a]–[e], [g], [i], and [k], limitations [f], [h], and [j]
recite a series of broadly worded functions without meaningfully limiting
how the claimed method performs the functions. Limitation [f] recites
generating a merchant-specific location model for each of the model
merchants by comparing the transaction data for each model merchant and
the model merchant data for each model merchant. See Claims App’x 2.
Limitation [f] does not specify how the claimed method compares the recited
data or uses the recited comparison to generate a merchant-specific location
model. See Claims App’x 2. Similarly, limitation [h] recites determining a
market opportunity value for a first model merchant in the first model
merchant location, the value being a numerical indicator representing an
estimated revenue of the first model merchant relative to a predetermined
revenue value. See Claims App’x 2. Like limitation [f], limitation [h] does
not meaningfully restrict how the claimed method determines this value. See
Claims App’x 2. And limitation [j] recites statistically correlating the model
merchant attributes of the first model merchant with the market opportunity
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value but says nothing about how the claimed method performs this
statistical correlation. See Claims App’x 2. Given the breadth of limitations
[f], [h], and [j], these limitations also encompass acts that people can
perform in their minds or using pen and paper. See, e.g., CyberSource, 654
F.3d at 1373; Elec. Power Grp., 830 F.3d at 1353–54; Content Extraction &
Transmission LLC, 776 F.3d at 1347.
Because limitations [a]–[k] encompass acts that people can perform in
their minds or using pen and paper, claim 1 recites mental processes. See,
e.g., CyberSource, 654 F.3d at 1372 (determining that “unpatentable mental
processes are the subject matter of” a claim when the claim’s “method steps
can be performed in the human mind, or by a human using a pen and
paper”); see also Revised Guidance, 84 Fed. Reg. at 52 & nn.14–15;
October SME Update at 7–9. That claim 1 calls for a computing device to
perform most of the functions recited in limitations [a]–[k] does not place
claim 1 outside the mental processes category of abstract ideas. See, e.g.,
CyberSource, 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”); Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category . . . .”). Claim 1 therefore recites an
abstract idea.
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Appellant contends that the fact claim 1 recites limitations that “can
be performed in the human mind[] or by a human using a pen and paper” is
not enough to show that claim 1 recites mental processes under McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).
Appeal Br. 12–13. Appellant argues that, in any event, the Examiner erred
because “it is substantively undisputed on the record that a person of
ordinary skill in the art would understand that a human being would be
incapable, using ‘pen and paper,’ of searching, screening, and deciphering
the billions of encrypted payment card network data transactions in order to
perform the ordered steps of the present claims.” Appeal Br. 13. Finally,
Appellant contends that the Examiner “consider[ed] only the first half of the
preamble of” claim 1. Appeal Br. 8; see also Reply Brief 1–2, filed June 18,
2019 (Reply Br.) (making similar arguments).
Appellant has not persuaded us that the Examiner erred. Even if some
claims that recite acts that people can perform in their minds or using pen
and paper fall outside the mental processes category, Appellant has not
persuasively explained why claim 1 is one of those claims. And if Appellant
asserts that claim 1 is similar to the patent-eligible claims in McRO, we
disagree. The patent-eligible claims in McRO incorporated specific, limited
rules that improved a technological process—computer animation. See 837
F.3d at 1313–16. In contrast, claim 1 recites a series of broadly worded,
result-oriented functions without meaningfully limiting how the claimed
method performs those functions. See Claims App’x 1–3. And claim 1 does
not improve technology or a technological process. At best, claim 1 recites
an improvement to the business practice of providing merchant
recommendations. Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084,
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1093 (Fed. Cir. 2019) (Trading Techs. I) (“The claims of the ’999 patent do
not improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem. Instead, they recite a
purportedly new arrangement of generic information that assists traders in
processing information more quickly.”); Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (Trading Techs. II) (“The claims
are focused on providing information to traders in a way that helps them
process information more quickly . . . not on improving computers or
technology.”).
Moreover, claim 1 does not require searching, screening, and
deciphering billions of encrypted payment card network data transactions as
asserted by Appellant. Claim 1 recites collecting “payment card transaction
data for a plurality payment card transactions processed by the electronic
payment network” and using this data in the claimed method. See Claims
App’x 1–3. This encompasses collecting and using payment card transaction
data for a small number of payment card transactions (for example, two or
three transactions). As for Appellant’s argument that the Examiner
considered only claim 1’s preamble, the Examiner expressly considered each
of claim 1’s limitations and cited Federal Circuit decisions to support the
Examiner’s determination that claim 1 recites an abstract idea. See Final Act.
9–12. We thus find Appellant’s arguments unpersuasive.
Even if claim 1 did not recite mental processes, claim 1 would still
recite an abstract idea because the claim recites certain methods of
organizing human activity. The Revised Guidance explains that the abstract
idea exception also includes certain methods of organizing human activity
such as (1) fundamental economic principles or practices, (2) commercial or
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legal interactions, and (3) managing personal behavior or relationships or
interactions between people. Revised Guidance, 84 Fed. Reg. at 52; see also
October SME Update at 4–6 (providing examples of certain methods of
organizing human activity). Limitations [a]–[l] in claim 1 recite subject
matter that falls within this category of abstract ideas. These limitations
recite a method that uses collected “payment card transaction data . . . as a
comparative measure to provide merchant recommendation data based on
candidate merchant input data.” Spec. ¶ 16. The claimed method provides
information about “what type of merchant would be likely to succeed in a
given location and, similarly, what geographic region or location a given
type of merchant would be likely to succeed in. As a result, parties involved
in commercial property, such [as] merchants, commercial property owners,
and municipalities . . . are able to make more informed choices on the
placement and types of merchants within a region than with known systems
and methods.” Spec. ¶ 66.
Providing merchant recommendations in the claimed manner is a
fundamental economic principle or practice. Cf. Intellectual Ventures I LLC
v. J. Crew Grp., Inc., No. 6:16-CV-196-JRG, 2016 WL 4591794, at *5–6
(E.D. Tex. Aug. 24, 2016) (determining that a claim is directed to an abstract
idea when the claim’s steps “teach the basic marketing concept of making
product recommendations to a current customer based on the purchase
history of other customers”), aff’d sub nom. Intellectual Ventures I LLC v.
FTD Companies, Inc., 703 F. App’x 991 (Fed. Cir. 2017). And the claimed
method recites a commercial practice that is not materially different from
other commercial practices that courts have determined are abstract ideas.
See, e.g., In re Greenstein, 778 F. App’x 935, 937–40 (Fed. Cir. 2019)
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(providing recommendations over the Internet regarding a purchase or lease
of goods or services); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–64 (Fed. Cir. 2015) (offer-based price optimization); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369–71 (Fed.
Cir. 2015) (customizing information based on information known about the
user); In re Ferguson, 558 F.3d 1359, 1363–66 (Fed. Cir. 2009) (structuring
a sales force or marketing company); Netflix, Inc. v. Rovi Corp., 114 F.
Supp. 3d 927, 946–47 (N.D. Cal. 2015) (generating viewing
recommendations), aff’d, 670 F. App’x 704 (Fed. Cir. 2016); Personalized
Media Commc’ns, LLC v. Amazon.Com, Inc., 161 F. Supp. 3d 325, 337–38
(D. Del. 2015) (providing personalized recommendations), aff’d sub nom.
Personalized Media Commc’ns, L.L.C. v. Amazon.com Inc., 671 F. App’x
777 (Fed. Cir. 2016); see also Bridge & Post, Inc. v. Verizon Commc’ns,
Inc., 778 F. App’x 882, 886–88 (Fed. Cir. 2019) (using persistent identifiers
to implement targeted marketing); Morsa v. Facebook, Inc., 77 F. Supp. 3d
1007, 1013–15 (C.D. Cal. 2014) (targeted advertising), aff’d, 622 F. App’x
915 (Fed. Cir. 2015). Claim 1 thus recites certain methods of organizing
human activity.3

3 Limitations [a]–[c] involve collecting and storing data, and limitation [l]
involves transmitting data for display. See Claims App’x 1, 3.These
limitations do not make claim 1 patent eligible because they amount to
insignificant extra-solution activity. See, e.g., CyberSource, 654 F.3d at
1372 (“Moreover, as discussed above, even if some physical steps are
required to obtain information from the database (e.g., entering a query via a
keyboard, clicking a mouse), such data-gathering steps cannot alone confer
patentability.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed.
Cir. 2016) (agreeing with the Board that downloading and printing menus
are insignificant post-solution activities).
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Because we determine that claim 1 recites abstract ideas, we next
consider whether claim 1 integrates the abstract ideas into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract ideas] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.”
Revised Guidance, 84 Fed. Reg. at 55; see also October SME Update at 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October SME Update at 12.
The Examiner determined that the additional elements recited in claim
1 include “a merchant location computing device,” “a memory,” “an
electronic payment network,” and “a client computing device.” See Final
Act. 12. The Examiner determined that claim 1 recites these elements “at a
high level of generality” and that the claimed method uses these elements
“as a tool rather than demonstrating an improvement in the functioning of a
computer or an improvement to other technology or technical field.” Ans. 4.
We agree. Other than the abstract ideas identified above, claim 1
recites “a merchant location computing device,” “a memory,” “an electronic
payment network,” and “a client computing device” that has “a display.”
Claims App’x 1–3. The written description makes clear that the merchant
location computing device, memory, and client computing device
encompass generic computer components. See, e.g., Spec. ¶¶ 31–48, 60–64,
Figs. 2–5, 9. As for the electronic payment network, the written description
discloses exemplary multi-party payment card system 120 that uses
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MasterCard payment card system payment network 128. See Spec. ¶ 25.
Although the written description discloses that “MasterCard® payment card
system payment network 128 is a proprietary communications standard,” the
written description makes clear that the claimed invention is not limited to a
multi-party payment card system that uses this type of payment network. See
Spec. ¶ 25 (“The present disclosure relates to payment card system 120, such
as a credit card payment system using the MasterCard® payment card
system payment network 128 . . . .” (emphasis added)); see also Such As,
Merriam Webster.com Dictionary, https://www.merriam-webster.com/
dictionary/such%20as (explaining that “such as” is “used to introduce an
example or series of examples”). And the written description otherwise
describes this system and network in largely functional terms and provides
few technical details about them. See, e.g., Spec. ¶¶ 25–30. This description
shows that the electronic payment network encompasses generic computer
components. See, e.g., Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so
lacking in implementation details that it amounts to merely a generic
component (software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.”).
The method recited in claim 1 uses these generic computer
components as tools to implement the recited abstract ideas. See Claims
App’x 1–3. Using generic computer components as tools to implement
abstract ideas does not integrate the abstract ideas into a practical
application. See, e.g., Alice, 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
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effort designed to monopolize the [abstract idea] itself.’” (second and third
alterations in original) (quoting Mayo, 566 U.S. at 77)); Capital One Bank,
792 F.3d at 1370 (“Steps that do nothing more than spell out what it means
to ‘apply it on a computer’ cannot confer patent-eligibility.”). Thus,
considering the additional elements along with the limitations that recite an
abstract idea, both individually and as an ordered combination, we determine
that claim 1 does not integrate the recited abstract ideas into a practical
application. Because claim 1 recites abstract ideas and does not integrate
these abstract ideas into a practical application, we determine that claim 1 is
directed to abstract ideas.
Appellant has not persuaded us otherwise. Appellant argues that
because the Examiner failed “at the outset to identify the specific limitations
that allegedly recite the abstract idea,” the Examiner could not have
“identif[ied] [the] claim elements [that] are ‘additional.’” Reply Br. 2.
Appellant also contends that the Examiner evaluated “only some selected
hardware elements from the claims[] while ignoring other elements” and
“then consider[ed] the selected elements out of context from the claim as a
whole.” Appeal Br. 8.
We disagree. The Examiner explicitly identified both the limitations
that recite an abstract idea and the additional elements and then explained
why the additional elements do not integrate the identified abstract idea into
a practical application. See, e.g., Final Act. 8–14; Ans. 4–15. Appellant’s
conclusory assertions that the Examiner improperly evaluated claim 1 have
not persuaded us that the Examiner erred.
As for Appellant’s remaining arguments, many of these arguments fail
because they rely on limitations or elements that do not appear in claim 1,
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unsupported assertions about the technology, or both. For example,
Appellant contends that claim 1 requires that “the central merchant location
computing device is disposed at the remote electronic payment card network
in a non-conventional architecture and functional operation with respect to a
local client computing device.” Appeal Br. 9. Thus, according to Appellant,
claim 1 is “‘directed to a new and useful technique’ for providing more
accurate model merchant type recommendations to input geographic
locations” that uses “the restricted database information of the electronic
payment network,” which makes claim 1 analogous to the patent-eligible
claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
Appeal Br. 9.
We find these arguments unpersuasive. Claim 1 recites a merchant
location computing device, not a central merchant location computing
device as asserted by Appellant. See Claims App’x 1–3. And claim 1 does
not recite that the merchant location computing device is disposed at the
remote electronic payment card network as Appellant contends. See Claims
App’x 1–3. Claim 1 simply recites that the merchant location computing
device is “in communication with a memory and an electronic payment
network.” Claims App’x 1 (emphasis added). Further, although claim 1
recites receiving certain data from, and transmitting certain data to, a client
computing device, the claim does not explicitly recite what entity receives or
transmits this data. See Claims App’x 1–3. Finally, claim 1 does not recite a
database, much less using the restricted database information of the
electronic payment network. See Claims App’x 1–3. If by “database”
Appellant means the “memory” recited in claim 1, claim 1 does not place
any explicit access restrictions on the information contained in this memory.
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See Claims App’x 1–3. Because Appellant’s analogy to the claims in Enfish
rests on Appellant’s flawed characterization of what claim 1 requires, we
find it unpersuasive.
Appellant contends that claim 1 is analogous to the claims in Enfish
for a second reason. Appellant argues that, like the claims in Enfish, claim 1
is “‘directed to a new and useful technique’ for providing a more accurate
merchant-specific location model for a computer database.” Appeal Br. 11.
In Appellant’s view, claim 1 presents a “bifurcated database technique [that]
uniquely associates geographic location information, from outside of the
electronic payment card network, with protected payment card transaction
information within the electronic payment network.” Appeal Br. 11–12.
Appellant asserts that this technique uses “the bifurcated information to
generate a location model for selected merchants, but only outputs the
merchant recommendations outside of the electronic payment card network,”
so “[t]he confidential payment card transaction data is not outputted to the
merchant or the client computing device.” Appeal Br. 12.
We also find these arguments unpersuasive. First, claim 1 recites
“payment card transaction data,” not “protected payment card transaction
information” as asserted by Appellant. See Claims App’x 1–3. Claim 1 does
not explicitly limit where the recited payment card transaction data can be
sent, and in particular does not prohibit outputting this data to the merchant
location computing device or the client computing device. See Claims App’x
1–3. Indeed, the use of the open-ended term “comprising” in the preamble of
claim 1 indicates that the claimed invention encompasses methods that do
so. See, e.g., Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d
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1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim
indicates that the claim is open-ended and allows for additional steps.”).
Second, in Enfish the claims were “directed to a specific improvement
to the way computers operate, embodied in [a] self-referential table,” 822
F.3d at 1336, and the accompanying written description taught that the self-
referential table functioned “differently than conventional database
structures,” 822 F.3d at 1337. Here, Appellant has not shown that the
claimed method changes the way computers operate, much less improves the
way computers operate. In fact, Appellant concedes that the claimed method
does not improve computer functionality. See Reply Br. 3. Nor has
Appellant shown that claim 1 requires an unconventional database or
database structure. The claimed method uses generic memory to store data.
See Claims App’x 1–3; see also Spec. ¶¶ 31–48, 60–64, Figs. 2–5, 9.
Appellant has therefore not persuaded us that claim 1 is analogous the
patent-eligible claims in Enfish.
Appellant next argues that claim 1 is “directed to an innovative
system architecture” because the claim uses “the non-generic tool of the
electronic payment card network in a non-conventional manner.” Appeal Br.
10 (emphasis omitted). According to Appellant, claim 1 uses a “specialized
electronic payment card network [that] requires operational communication
with a merchant location computing device and the electronic payment card
network using a proprietary set of communication standards specific to an
interchange network.” Appeal Br. 10. Appellant asserts that “[i]t is factually
undisputed on the record that transaction data from the electronic payment
card network is subject to significant legal and technological security
protections limiting the use of payment card transaction data.” Appeal Br.
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10. Appellant also contends that it “was not conventionally known, at the
time of the present application, to perform merchant recommendation
functionality at the electronic payment card network.” Appeal Br. 11
(emphasis omitted).
We find these arguments unpersuasive. As discussed above, claim 1
does not recite any explicit limits on the use of the recited transaction data,
see Claims App’x 1–3, and Appellant has provided no persuasive evidence
to show that there are legal and technological limits on the use of this data,
see Appeal Br. 10. In addition, claim 1 does not require that the recited
electronic payment network “perform merchant recommendation
functionality” or use “a proprietary set of communication standards specific
to an interchange network” to communicate with a merchant location
computing device. The sole reference to the electronic payment network in
the body of claim 1 comes in limitation [b], which recites collecting from the
electronic payment network “payment card transaction data for a plurality
payment card transactions processed by the electronic payment network.”
Claims App’x 1. Appellant has provided no persuasive evidence or argument
to show that processing payment card transactions is “merchant
recommendation functionality.” And as discussed above, the preamble of
claim 1 simply recites “a merchant location computing device in
communication with a memory and an electronic payment network.” Claims
App’x 1. Although the written description discloses a payment card system
that employs a payment card system network that in turn uses a proprietary
communications standard, as noted above, the written description indicates
that this payment card system is exemplary. See Spec. ¶ 25. We generally do
not import exemplary embodiments from the written description into the
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claims, and we see no reason to do so here. See, e.g., SuperGuide Corp. v.
DirecTV Enters., 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.”). In any
event, limiting claim 1 to a particular technological environment does not
make the claim less abstract. See, e.g., Content Extraction & Transmission
LLC, 776 F.3d at 1348 (“At most, CET’s claims attempt to limit the abstract
idea of recognizing and storing information from hard copy documents using
a scanner and a computer to a particular technological environment. Such a
limitation has been held insufficient to save a claim in this context.”).
Appellant also contends that claim 1 is similar to the patent-eligible
claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). See Appeal Br. 12. Appellant asserts that the Examiner acknowledged
in the Advisory Action that “conventional payment networks are known
only to process financial payment card transaction data.” Appeal Br. 12.
Appellant argues that unlike these conventional payment networks, in the
claimed method “the merchant location computing device is integral with
the electronic payment card network, and may therefore utilize confidential
payment card transaction data without transmitting the data outside of the
boundaries of the network.” Appeal Br. 12.
We find this argument unpersuasive. The Examiner did not
acknowledge that conventional payment networks process only financial
payment card transaction data, see Advisory Action, continuation sheet, and
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claim 1 does not impose this limitation on the recited electronic payment
network, see Claims App’x 1–3. In addition, claim 1 does not require that
“the merchant location computing device is integral with the electronic
payment card network.” As discussed above, claim 1 recites “a merchant
location computing device in communication with a memory and an
electronic payment network.” Claims App’x 1 (emphasis added). Nor does
claim 1 prohibit transmitting payment card transaction data outside the
electronic payment network. See Claims App’x 1–3. As also discussed
above, the use of the open-ended word “comprising” indicates that the
claimed invention includes methods that transmit this data outside the
electronic payment network. See, e.g., Invitrogen Corp., 327 F.3d at 1368.
In any event, the claims at issue in DDR specified “how interactions
with the Internet are manipulated to yield a desired result—a result that
overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR, 773 F.3d at 1258. Appellant has
not presented persuasive reasoning or evidence showing that claim 1 also
overrides the routine and conventional sequence of events. We thus find
Appellant’s reliance on DDR unpersuasive.
Appellant next argues that claim 1 integrates the abstract idea
identified by the Examiner into a practical application because the claim
recites “a specific improvement over prior art systems.” Reply Br. 2.
According to Appellant, the claimed method avoids a “lengthy, costly, and
subjective prior art process by relying on hard empirical data captured from
payment card transactions processed by the electronic payment network.”
See Reply Br. 3 (quotation marks omitted).
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We find these arguments unpersuasive. This argument turns in part on
Appellant’s characterization of a prior art process, but Appellant provides no
persuasive evidence to support this characterization. See Reply Br. 2–3.
Regardless, as explained above, claim 1 recites a series of generic computer
components at a high level of generality and uses the generic computer
components as tools to implement the recited abstract ideas. As also
explained above, using generic computer components to implement an
abstract idea does not integrate the abstract idea into a practical application.
See, e.g., Alice, 573 U.S. at 223–24; see also Revised Guidance, 84 Fed.
Reg. at 55 (explaining that courts have identified merely using a computer as
a tool to perform an abstract idea as an example of when a judicial exception
has not been integrated into a practical application).
Appellant also contends that claim 1 is patent eligible because it
“improve[s] the underlying commercial property/merchant success
prediction technology” similar to the claims in Ex parte Del Bene, No. 2017-
009185 (PTAB Feb. 28, 2019). Reply Br. 3. Appellant argues that claim 1
focuses on this improvement and “clearly does not broadly claim all
methods of evaluating potential types of merchants for a commercial
property location.” Reply Br. 3.
We find these arguments unpersuasive. As acknowledged by
Appellant, the method recited in claim 1 does not improve computer
functionality. See Reply Br. 3. Nor does the method solve a technological
problem or improve a technological process. As noted above, at best, the
recited method improves a business practice. Cf. Trading Techs. I, 921 F.3d
at 1093; Trading Techs. II, 921 F.3d at 1384. And even if claim 1 does not
preempt all methods of evaluating potential types of merchants for a
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commercial property location, that alone does not show that claim 1 is patent
eligible. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”).
Finally, Appellant argues that claim 1 is patent eligible because the
claim is similar to the patent-eligible claims in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). See
Appeal Br. 13–16. For instance, Appellant contends that claim 1 is similar to
the claims in BASCOM because the “[i]nstallation of the merchant
recommendation computer at the central server eliminates the need for the
client device to do anything other than simply submit the candidate merchant
data to the central server.” Appeal Br. 15. Appellant also asserts claim 1 is
analogous to the claims in BASCOM because “the merchant
recommendation computer system is additionally capable of implementing
individually customized recommendations (i.e., filtering schemes) according
to the specific input from the local client device (i.e., filtering elements).”
Appeal Br. 15.
We find these arguments unpersuasive. Claim 1 does not recite a
merchant recommendation computer, much less a merchant recommendation
computer installed at a central server. See Claims App’x 1–3. And even if
claim 1 involves filtering, “filtering content is an abstract idea because it is a
longstanding, well-known method of organizing human behavior, similar to
concepts previously found to be abstract.” BASCOM, 827 F.3d at 1348. The
claims in BASCOM had an inventive concept because the claims recited a
“non-conventional and non-generic arrangement of known, conventional
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pieces.” BASCOM, 827 F.3d at 1350. Appellant has not shown that claim 1
recites a similar non-conventional, non-generic arrangement of known
components.
Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether the claim has additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
As discussed above, the additional elements recited in claim 1 include
the recited merchant location computing device, memory, electronic
payment network, and a client computing device that has a display. The
Examiner found that the additional elements do not add “a specific limitation
other than what is well-understood, routine and conventional in the field.”
Final Act. 13. Although Appellant contends that this finding lacks adequate
support, see Reply Br. 4, we disagree. The written description indicates that
the merchant location computing device, memory, and client computing
device encompass well-understood, routine, and conventional computer
components. See, e.g., Spec. ¶¶ 31–48, 60–64, Figs. 2–5, 9. And as noted
above, the written description provides few technical details about the
electronic payment network. See, e.g., Spec. ¶¶ 25–30. This lack of technical
details shows that the electronic payment network also encompasses well-
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understood, routine, and conventional computer components. See, e.g.,
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed.
Cir. 1986) (“[A] patent need not teach, and preferably omits, what is well
known in the art.”); USPTO, Memorandum on Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available
at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Whether we consider the additional elements individually or in
combination, the additional elements do not provide an inventive concept.
Claim 1 recites these elements at a high level of generality, and there is no
indication that these elements override the conventional use of known
features or involve an unconventional arrangement or combination of
elements. At bottom, claim 1 recites a method that employs conventional
computer components to perform the recited abstract ideas, which is not
enough to provide an inventive concept. Alice, 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”); Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1366 (Fed. Cir. 2020) (“[T]he invocation of
‘already-available computers that are not themselves plausibly asserted to be
an advance . . . amounts to a recitation of what is well-understood, routine,
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and conventional.’” (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1170 (Fed. Cir. 2018))).
Appellant contends that claim 1 recites an unconventional approach
because claim 1 “centralize[s] a lengthy, costly, and subjective consultant-
based prior art process into a hard, empirical analysis by leveraging a unique
data source, namely, the specific data store accumulated by a payment card
interchange network through payment card transactions conducted by
various merchants, in combination with regional demographics and
cardholder attributes.” Reply Br. 4 (emphasis omitted). Appellant argues that
“[t]here is no evidence that such an approach is routine.” Reply Br. 4. But
this approach—to the extent claim 1 recites it—encompasses part of the
identified abstract ideas, and the Examiner was not required to show that the
abstract ideas are not well understood, routine, and conventional. See, e.g.,
Bridge & Post, Inc., 778 F. App’x at 892 (“At Alice step two we assess
‘whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well-understood, routine, and
conventional.’” (quoting BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018))); BSG Tech, 899 F.3d at 1290 (“[T]he relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine. . . . 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.” (first emphasis added)). We thus find this argument unpersuasive.
CONCLUSION
We have considered Appellant’s remaining arguments and found them
unpersuasive. For at least the above reasons, we determine that claim 1 is
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directed to abstract ideas and lacks an inventive concept. We thus sustain the
Examiner’s rejection of claim 1 under § 101. Because we decide the appeal
for this ground of rejection based on claim 1, we also sustain the Examiner’s
rejection of claims 2, 3, 5, 6, 8–13, 15, 16, and 18–20 under § 101. The
following table summarizes our decision for claims 1–3, 5, 6, 8–13, 15, 16,
and 18–20, the claims before us on appeal:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5, 6, 8–13,
15, 16, 18–20 101 Eligibility
1–3, 5, 6, 8–13,
15, 16, 18–20

No 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