MasterCard International Incorporated

Patent Trials and Appeals Board

Oct 5, 2021

2020003328 (P.T.A.B. Oct. 5, 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.
14/032,910 09/20/2013 Debashis Ghosh 21652-00302 2292
75564 7590 10/05/2021
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
KABIR, SAAD M
ART UNIT PAPER NUMBER
2119
NOTIFICATION DATE DELIVERY MODE
10/05/2021 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBASHIS GHOSH

Appeal 2020-003328
Application 14/032,910
Technology Center 2100
____________

Before BRADLEY W. BAUMEISTER, JENNIFER MEYER CHAGNON,
and ROBERT J. SILVERMAN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SILVERMAN.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 5–15, and 17–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Mastercard International
Incorporated. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A computer-based method for self-generation of a
physical payment card for an identified payment card account,
the method implemented using a computer device including at
least one processor, said method comprising:
receiving, by the at least one processor, a request from a
user for generating the physical payment card;
by the at least one processor, identifying and
authenticating the user as a cardholder of the identified payment
card account based on input received from the user;
integrating, by the at least one processor, an account
number associated with the payment card account into a model
data file representing a card body of the physical payment card;
and
transmitting, by the at least one processor, the model data
file including the integrated account number to a 3-dimensional
printing device, wherein the model data file further includes
instructions for fabricating the card body including the
integrated account number according to the model data file with
the 3-dimensional printer device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Swift US 2008/0015947 A1 Jan. 17, 2008
Zellner et al. (“Zellner”) US 2008/0219738 A1 Sept. 11, 2008

REJECTION
Claims 1–3, 5–15, and 17–23 are rejected under 35 U.S.C. § 103 as
unpatentable over Zellner and Swift.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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ANALYSIS
Whether The Cited References
Constitute Analogous Art
The Appellant argues that the Examiner improperly relies on the Swift
reference, because it is not analogous art. See Appeal Br. 7–10.
Our reviewing court has held that a reference qualifies as prior art for
an obviousness determination only when it is “analogous” to the claimed
subject matter at issue. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
“Prior art is analogous if it is from the same field of endeavor or if it is
reasonably pertinent to the particular problem the inventor is trying to
solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir.
2015). A reference is analogous if either of these two tests is met. Scientific
Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
Whether a reference qualifies as analogous prior art is a question of fact. In
re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004).
In order to ascertain the applicable field of endeavor, we consider
“explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.” Bigio, 381 F.3d at 1325. In addition, statements in the
“Background of the Invention section of the applicant’s specification” may
be relied upon to delineate the field of endeavor. Airbus S.A.S. v. Firepass
Corp., 941 F.3d 1374, 1380 (Fed. Cir. 2019).
The second analogous-art inquiry — i.e., whether a reference is
“reasonably pertinent to the particular problem the inventor is trying to
solve,” Circuit Check, 795 F.3d at 1335 — casts an even wider net. Under
this inquiry, there may be “significant differences” between the claimed
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subject matter and an analogous prior art reference. Donner Tech., LLC v.
Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020). Such an
analogous-art reference need only be “reasonably pertinent to one or more
problems to which the claimed invention relates.” Id.
According to the Examiner, Swift constitutes analogous art, because it
is from the “same field of endeavor” and “contain[s] overlapping structural
and functional similarities” with the Appellant’s claims. Final Act. 8.
Disputing the Examiner’s position, the Appellant argues: “[T]he field
of the invention of Zellner relates to the creation of customized transactional
cards, whereas Swift relates to remote purchasing and customizing of scaled
architectural models.” Appeal Br. 7 (citing Zellner ¶ 1, Swift ¶ 2). Further,
the Appellant points out that Zellner is classified in US class 400
(typewriting machines) and subclass 76 (control of format by programmed
control system), whereas Swift is classified in US class 705 (data
processing: financial, business practice, management, or cost/price
determination) and subclass 26 (electronic shopping, e.g., remote ordering).
Id. at 8. According to the Appellant: “The USPTO classification of the
cited references is cogent, factual evidence that the two references are
undoubtedly related to different fields of endeavor.” Id.
The Appellant’s argument is not persuasive, as to Swift’s field of
endeavor. As an initial matter, as the Examiner points out, this analogous-
art inquiry precisely concerns whether a particular reference is within an
applicant’s field of endeavor (Answer 9), rather than whether the reference
is within the field of endeavor of another reference (e.g., Zellner), as the
Appellant argues (Appeal Br. 7–8).
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Moreover, the predecessor of our reviewing court has expressed
skepticism about the role of classifications (the basis of the Appellant’s
argument), for assessing whether prior art would be analogous, explaining
that “[s]uch evidence is inherently weak . . . because considerations in
forming a classification system differ from those relating to a person of
ordinary skill seeking [a] solution for a particular problem.” In re Mlot-
Fijalkowski, 676 F.2d 666, 669 n.5 (CCPA 1982). Although the Court of
Customs and Patent Appeals regarded “the diverse Patent Office
classification of the references to be some evidence” for an analogous-art
inquiry, the Court “consider[ed] the similarities and differences in structure
and function of the inventions disclosed in the references to carry far greater
weight.” In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).
Furthermore, the Appellant’s statements in the “Background of the
Disclosure” portion of the Specification (¶¶ 1–3) — which can help to
identify the field of invention (see Airbus, 941 F.3d at 1380) — weigh
against the Appellant’s position. The Specification states:
The field of the disclosure relates generally to the
fabrication of consumer payment cards and more particularly to
systems and methods for enabling consumers to fabricate their
own payment cards (i.e., “self-generation”) using 3-
Dimensional (“3D”) printing, wherein the payment cards can be
used by the consumer to initiate payments.
3D printing, also referred to as “additive manufacturing,”
is a process for fabricating physical (i.e., 3-dimensional)
objects. 3D printing emerged as a new technology in the
1980’s and has progressed to a point where a consumer can
purchase a 3D printer for home use at an affordable price.
Some known 3D printers use liquid or powder material to lay
down successive layers of an object such that the object is
created, or “printed,” one layer at a time. These printers work
using a design file of the 3D object. The design file, in some
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known formats, represents a 3-dimensional view of the object
to be printed (i.e., similar to a CAD design), which may then be
converted to instructions used by the 3D printer to create the
object. In other embodiments, the design file includes
instructions for creating the object (e.g., instructions converted
from a CAD design).
Spec. ¶¶ 1–2.
The Appellant explicitly defines the “field of the disclosure” as
involving three-dimensional printers to create a “3D object” from a “design
file” that provides “instructions used by the 3D printer to create the object.”
Id. In view of the Appellant’s statements, prior art concerning three-
dimensional printing of objects, including the electronic files providing
instructions for doing so, would reside within the applicable field of
endeavor. This understanding is consistent with the MPEP’s guidance,
concerning the “Background of the Invention” portion of an application,
which may include: “[a] statement of the field of art to which the invention
pertains” as well as “the state of the prior art or other information disclosed
known to the applicant, including references to specific prior art or other
information where appropriate.” MPEP § 608.01(c) (9th ed. Mar. 2014,
Rev. June 2020 [R-10.2019]).
The Swift reference fits squarely within the field of endeavor that the
Appellant identifies in the Specification, because Swift concerns an
implementation of three-dimensional printers and related electronic files
containing instructions for creating a three-dimensional object therewith:
A building model .stl file received from the Customer
contains a complete description of the building model design,
and is output from the architect’s 3D CAD software package.
Once received, the .stl file is examined to ensure suitability for
manufacturing in additive manufacturing equipment, which is
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commonly referred to as “rapid prototyping” equipment. Three
dimensional printers are additive manufacturing machines
suitable for implementing the invention, and are commercially
available as products manufactured by Z Corp, Stratasys, and
3D Systems.
Swift ¶ 33.
Still further, like the Background portion of the Specification, Swift
refers to the use of CAD (computer-aided design) (id. ¶ 33) and the
operation of “additive” three-dimensional printing techniques that “build up”
objects “one layer at a time” (id. ¶ 36). Therefore, the Appellant does not
persuade us that the Examiner erred in regarding the Swift reference as
being in the same field of endeavor as the Appellant’s claims.
Notwithstanding the foregoing determination, regarding the field-of-
invention inquiry, we are also not persuaded by the Appellant’s argument
regarding the second analogous-art inquiry — i.e., that Swift is not
reasonably pertinent to the problem to be solved.
According to the Appellant, the problems addressed in Swift “are not
‘manufacturing’ problems in general, but rather are intimately tied to the
traditional manufacture by hand” (Appeal Br. 8, citing Swift ¶¶ 4, 7, 66),
whereas the “Appellant’s claims address problems of cost associated with
modifying bulk amounts of pre-manufactured card blanks to add bank logos,
customer names, customer account numbers etc.” (id. at 9, citing Spec. ¶ 3).
“Therefore,” the Appellant argues, “the issues described by Swift and cited
in the Final Office Action do not logically commend themselves to the
invention described and claimed by Appellant.” Id. at 9.
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However, the Appellant does not consider the extent of the problems
reflected in the claims in this Appeal, nor does the Appellant accurately
depict the problems addressed in Swift.
In one aspect, claim 1 of this Appeal reflects the Specification’s
concern for providing “[a] more efficient way to manufacture and customize
payment cards,” through the use of “computer-based method[s] for
generating a physical payment card,” using a computer processor to create
“a model data file associated with the physical payment card,” and “includes
transmitting the model data file directly or indirectly to a 3-dimensional
printer device.” Spec. ¶¶ 3, 4. These features are manifest, in claim 1, in at
least the limitations:
integrating, by the at least one processor, an account
number associated with the payment card account into a model
data file representing a card body of the physical payment card;
and
transmitting, by the at least one processor, the model data
file including the integrated account number to a 3-dimensional
printing device, wherein the model data file further includes
instructions for fabricating the card body including the
integrated account number according to the model data file with
the 3-dimensional printer device.
By contrast, the Appellant’s description of the claimed subject matter — as
“address[ing] problems of cost associated with modifying bulk amounts of
pre-manufactured card blanks” to include individualized customer attributes
(see Appeal Br. 9) — does not address the actual features claimed and their
operation.
Similarly, the Appellant’s characterization of the Swift reference
obscures the relationship between Swift’s teachings and the techniques
recited in the Appellant’s claims. As noted above, the Appellant
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characterizes the problems addressed in Swift as being “intimately tied to the
traditional manufacture by hand.” Appeal Br. 8. Indeed, Swift does refer to
techniques for creating architectural scaled physical models, pointing out
that these “have traditionally been fabricated by hand.” Swift ¶ 4. Yet, the
overarching emphasis of the Swift reference concerns the implementation of
computer-driven and machine-based model-making techniques, in order to
supplant handcrafting. See id. ¶¶ 2–11. Such technical advances follow in
the wake of “the advent of computer aided design (CAD) software tools into
the architect community,” whereby “architects have begun to use computer
software programs to design buildings, replacing this traditional hand-drawn
approach.” Id. ¶ 8.
Thus, rather than “using X-ACTO® knives and glue to manufacture a
miniature scaled model” from “cardboard-type materials” (id. ¶ 4), Swift
avails itself of “architectural electronic design data to efficiently order and
customize scaled physical models,” such as using “a web portal” to
“accept[ ] the order, interact[ ]with the Customer regarding model options,
accept[ ] payment, and engage[ ] fulfillment of the order” (id. ¶ 19), as well
as to automate the fabrication of models “with milling machines or routers
controlled with computer numerical controlled (CNC) technology” (id. ¶ 23)
or “additive manufacturing machines,” such as with three-dimensional
printers (id. ¶ 33). Swift’s processes are further augmented through a variety
of software applications for “the visualization and scaling of objects” (id.
¶ 30) and adding foliage to the model, through the aid of data from Internet-
based imaging tools and software for interpreting and classifying such data
(id. ¶¶ 59–60).
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Therefore, the problems addressed in the Appellant’s claims, as well
as the techniques employed to address such problems, bear a significant
similarity to those of the Swift reference. Both the Appellant and Swift aim
to accelerate the manufacture of customized three-dimensional objects,
through the creation and transmission of electronic data files representing
the items to be manufactured, as well as automated and computer-controlled
three-dimensional manufacturing techniques that are guided by the content
of the data files. In view of these similarities, the Appellant’s arguments do
not persuade us that the Swift reference is not, at least, reasonably pertinent
to the particular problems that the Appellant’s claims address.
Accordingly, the Appellant does not persuade us that the Examiner
erred in relying upon Swift as a prior art reference, based on the Appellant’s
position that Swift constitutes non-analogous art.
Whether The Cited References
Teach Or Suggest All Claim Limitations
In regard to the Examiner’s mapping of claim limitations to the prior
art, the Appellant contends that no combination of the Zellner and Swift
references teaches or suggests claim 1’s recited features of “integrating . . .
an account number associated with the payment card account into a model
data file representing a card body of the physical payment card” and
“transmitting . . . the model data file including the integrated account
number to a 3-dimensional printing device.” See Appeal Br. 5.
The Appellant acknowledges that Zellner teaches the encoding of an
account number associated with a customized transactional card. Appeal
Br. 5–6 (citing Zellner ¶ 36). For example, the account number may be
“encoded on [a] machine-readable element” of the card, such as a magnetic
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medium or a bar code. Zellner ¶ 15. Yet, the Appellant argues, in Zellner
“[t]here is no suggestion that a model data file for fabricating the card blank
itself is altered to include the account number or any other feature.” Id. at 6.
Indeed, per claim 1, the recited “model data file” “represent[s] a card body
of the physical payment card” and “includes instructions for fabricating the
card body including the integrated account number according to the model
data file with the 3-dimensional printer device.”
The Examiner relies upon the Swift reference, in order to overcome
the deficiencies of Zellner. See Final Act. 8. The Appellant acknowledges
that Swift teaches an electronic file containing the information for
constructing a three-dimensional scale model and further teaches
transmitting this electronic file to a three-dimensional printer, in order to
manufacture the model. Appeal Br. 6 (citing Swift ¶¶ 35–36). However, the
Appellant contends that the manufactured model is then attached to a
previously constructed site model and, in addition, a user may be presented
with further options to add, for example, a customer logo to the three-
dimensional model. Id. (citing Swift ¶¶ 38, 46–59). Therefore, the
Appellant argues, in Swift, “no reference is made to integrating these
customer selections into the model data file sent to additive manufacturing
machine 200 for additive manufacture of the building model.” Id. Rather,
the Appellant continues, “it appears these items are placed or added
separately to the site model after the site model is machined out of the
stock,” such that “no alteration of the data file used for additive
manufacturing to include these items is suggested.” Id. at 6–7 (citing Swift
¶ 62, Fig. 3). Further, based on the Appellant’s understanding that the site
model and building model are constructed separately, “no data regarding one
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is integrated into a model file containing a representation of the other.” Id.
at 7.
Claim 1’s recited features of “integrating . . . an account number
associated with the payment card account into a model data file representing
a card body of the physical payment card” and “transmitting . . . the model
data file including the integrated account number to a 3-dimensional printing
device” requires the “model data file” to be formed in a manner, such that it
includes the “account number.” Further, the “model data file,” per the
language of claim 1, must “include[ ] instructions for fabricating the card
body including the integrated account number according to the model data
file with the 3-dimensional printer device.” See, e.g., Spec. ¶ 5 (“The model
data file is configured to enable the printer device to print the physical
payment card.”)
Yet, the Examiner does not identify any teaching or suggestion, in the
cited references (whether individually or in combination), of the recited
“model data file” that includes “instructions for fabricating the card body
including the integrated account number according to the model data file.”
Further, the Examiner maintains that “Zellner teaches using an
account number (Fig. 1, Para. 27), which is included/integrated into a data
file that is created to represent the card body of the physical payment card
(Para. 36), where the details of the physical payment card are also taught
(Para. 15).” Answer 4. But the cited portions of Zellner do not disclose a
data file representing the card body of the physical payment card. Instead,
Zellner teaches the implementation of a “customized design” that “may
allow the card holder to upload data files including photographic and
graphical images.” Zellner ¶ 36. Zellner states:
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Upon having received the customized design data, the card
issuer then proceeds to create the customized transactional card
in accordance with the design data at the manufacturing facility
414, including providing an account number received from the
account administration facility 412 and encoding it upon the
customized transactional card 418. As an alternative, a third
party entity may receive the transactional card from the card
issuer and apply the customization indicated by the card holder.
The customized transactional card 418 is then sent to the card
holder.
Id. However, Zellner’s examples involve the addition of customized
features onto a preexisting card body — as opposed to claim 1’s “model data
file” that “represent[s] a card body of the physical payment card,” as well as
“instructions for fabricating the card body.”
In view of the foregoing, we are persuaded that the Examiner erred in
rejecting claim 1. This analysis also applies to the other independent claims
(claims 9, 12, and 18), which contain similar “model data file” limitations.
Accordingly, we do not sustain the rejection of claims 1–3, 5–15, and
17–23 under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s rejection of claims 1–3, 5–15, and 17–23 is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–15,
17–23
103 Zellner, Swift 1–3, 5–15,
17–23

REVERSED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBASHIS GHOSH

Appeal 2020-003328
Application 14/032,910
Technology Center 2100
____________

Before BRADLEY W. BAUMEISTER, JENNIFER MEYER CHAGNON,
and ROBERT J. SILVERMAN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge, concurring.

I agree with the Majority that the Examiner has failed, for the stated
reasons, to establish a prima facie showing of obviousness.
Because we reverse the obviousness rejection, I do not reach any
determinations as to whether the cited references constitute analogous art.
I also write separately because I do not understand why the Examiner
withdrew the previously issued rejection of claims 1–11 under 35 U.S.C.
§ 101. I address that withdrawn rejection below:
Background
In the Final Office Action mailed July 13, 2017 (“July 2017 Action”),
the Examiner rejected claims 1–11 (including independent claims 1 and 9)
under 35 U.S.C. § 101 for being directed to a judicial exception without
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significantly more. July 2017 Action, 8–10. At that time, claim 1 read as
follows:
1. A computer-based method for generating a physical
payment card for a consumer, the method implemented using a
computer device including a processor, said method comprising:
identifying a consumer payment card account;
creating, by the processor, a model data file associated
with the physical payment card for the consumer payment card
account, wherein the model data file includes data representing
the physical payment card and instructions for printing the
physical payment card including a body of the physical payment
card and one or more of an account number, a consumer name,
and a card security code; and
transmitting the model data file to a 3-dimensional printer
device, the model data enabling the 3-dimensional printer device
to print the physical payment card.
Amendment filed April 17, 2017, 3.
The Examiner advised Appellant that the rejection could “be cured by
reciting the step of ‘printing. . .’ as the last limitation of claim 1 and
‘print. . .’ as the last limitation of claim 9.” Appellant subsequently
amended independent claims 1 and 9, presumably for the purpose of
overcoming this section 101 rejection. Amendment filed Sept. 13, 2017;
entered Sept. 21, 2017 (“Sept. 2017 Amendment”). For example, Appellant
amended independent claim 1 so that the final limitation recited a step of
physically fabricating the payment card: “fabricating the physical payment
card according to the model data file with a 3-dimensional printer device.”
Id. at 2 (emphasis indicating claim language that was added by amendment).
In the Non-Final Rejection mailed November 6, 2017 (“Nov. 2017
Action”), the Examiner withdrew the section 101 rejection with respect to
independent claim 1 and its dependent claims, but maintained the
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section 101 rejection with respect to claims 9–11. Nov. 2017 Action, 8–11.
Unlike claim 1, the last limitation of independent claim 9, as then presented,
did not recite a step of physically fabricating a payment card. Claim 9,
instead, recited a step of sending the data file to the printer merely for the
purpose of enabling an unclaimed card-fabrication step to be subsequently
carried out: “A computing device . . . programmed to: . . . . communicate
the model data file to a 3-dimensional printer device, for the fabrication of
the physical payment card for the accepted identified consumer payment
card account.” Sept. 2017 Amendment, 3–4. The Examiner determined that
this claim language merely constituted insignificant extra-solution activity.
Nov. 2017 Action, 10.
In the Amendment filed June 5, 2018 and entered July 5, 2018
(“July 2018 Amendment”), Appellant further amended the final limitation of
claim 9 to set forth that the claimed computing device is programmed to
“communicate the model data file to a 3-dimensional printer device to,
wherein the 3-dimensional printer device fabricates the physical payment
card for the accepted identified consumer payment card account according to
the model data file.” July 2018 Amendment, 4. In response to this
amendment, the Examiner withdrew the section 101 rejection of claim 9.
Office Action mailed Sept. 13, 2018, 2.2

2 I question whether this claim language integrates claim 9’s abstract ideas
into a practical application because the last “wherein” clause does not
affirmatively recite a step of fabricating a card. Under the broadest
reasonable interpretation, the clause merely explains the intended purpose of
the printer to which the model data file is communicated. But this issue is
moot because the claim language was subsequently superseded by yet
another claim amendment.
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After the Examiner completely withdrew the section 101 rejection,
Appellant again amended claims 1 and 9 to their present form, this time
broadening the claim scopes to be effectively as broad as when the section
101 rejection was still applied against both of claims 1 and 9. Amendment
filed Jan. 14, 2019 (“Jan. 2019 Amendment”), 2–5. Independent claims 1
and 9 are reproduced below with paragraph designators added for clarity and
emphasis added to the claim language that recites abstract ideas:
1. A computer-based method for self-generation of a
physical payment card for an identified payment card account,
the method implemented using a computer device including at
least one processor, said method comprising:
[(a)] receiving, by the at least one processor, a request from a
user for generating the physical payment card;
[(b)] by the at least one processor, identifying and
authenticating the user as a cardholder of the identified payment
card account based on input received from the user;
[(c)] integrating, by the at least one processor, an account
number associated with the payment card account into a model
data file representing a card body of the physical payment card;
and
[(d)] transmitting, by the at least one processor, the model data
file including the integrated account number to a 3-dimensional
printing device, wherein the model data file further includes
instructions for fabricating the card body including the
integrated account number according to the model data file with
the 3-dimensional printer device.
9. A computing device for self-generation of a physical
payment card for a cardholder, said computing device
comprising a processor communicatively coupled to a memory,
said computing device programmed to:
[(a)] accept an identified payment card account for a physical
payment card to be fabricated;
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[(b)] integrate an account number associated with the identified
payment card account into a model data file representing a card
body of the physical payment card;
[(c)] transmit the model data file including the integrated
account number to a 3-dimensional printing device, wherein the
model data file further includes instructions for fabricating the
card body including the integrated account number according to
the model data file with the 3-dimensional printer device.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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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 (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
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 Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, 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-
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eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).3
Under MPEP § 2106, we first look to whether the claim recites the
following:

3 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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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); and
(2) additional elements that integrate the judicial exception into a
practical application.4
MPEP §§ 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).

4 “Examiners evaluate integration into a practical application by
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), and (2) evaluating those additional
elements individually and in combination to determine whether the claim as
a whole integrates the exception into a practical application.” MPEP
§ 2106.04(d)II.
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Analysis
STEP 1:
The claimed subject matter falls within the four statutory categories of
patentable subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter.
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, the Office first looks
to whether the claim recites 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). MPEP § 2106.04(a).
Limitation (a) recites, inter alia, “receiving . . . a request from a user
for generating the physical payment card.” Appeal Br. 11. Receiving a
request for a commercial product, such as a payment card, constitutes a
certain method of organizing human activity. More specifically, receiving
this sort of request constitutes a commercial or legal interaction. The
2019 Guidance expressly recognizes this certain method of organizing
human activity as constituting a patent-ineligible abstract idea. MPEP
§ 2106.04(a).
Limitation (b) recites, inter alia, “identifying and authenticating the
user as a cardholder of the identified payment card account based on input
received from the user.” Appeal Br. 11. Identifying and authenticating an
individual based upon information constitutes a mental process such as an
observation, evaluation, or judgment that can be performed in the human
mind. The 2019 Guidance recognizes mental processes, including
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observations, evaluations, judgments, and opinions, as constituting patent-
ineligible abstract ideas. MPEP § 2106.04(a).
Limitation (c) recites, inter alia, “integrating . . . an account number
associated with the payment card account into a model data file representing
a card body of the physical payment card.” Integrating or compiling data
constitutes a mental process such as an evaluation or judgment that can be
performed either in the human mind or with the aid of pencil and paper.
The “mental processes” judicial exception also includes concepts that
can be performed by a human with a pen and paper as well as those that can
be performed entirely in the mind. See October 2019 Guidance Update at 9
(“A claim that encompasses a human performing the step(s) mentally with
the aid of a pen and paper recites a mental process”) (emphasis omitted).
Limitation (d) recites, inter alia, “transmitting . . . the model data file
including the integrated account number . . . , wherein the model data file
further includes instructions for fabricating the card body including the
integrated account number according to the model data file with the 3-
dimensional printer device.” Transmitting information or data constitutes a
certain method of organizing human activity. More specifically,
transmitting data constitutes a method of managing interactions between
people, including teaching. The 2019 Guidance expressly recognizes this
certain method of organizing human activity as constituting a patent-
ineligible abstract idea. MPEP § 2106.04(a).
Transmitting data also constitutes a mental process. More
specifically, transmitting data or information of any kind entails expressing
or communicating information or an opinion to another. The 2019 Guidance
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recognizes mental processes, including expressing opinions, as constituting a
patent-ineligible abstract idea. MPEP § 2106.04(a).
For these reasons, each of limitations (a) through (d) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”).
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, the Office next
analyzes whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
MPEP § 2106.04(d). The 2019 Guidance identifies considerations indicative
of whether an additional element or combination of elements integrate the
judicial exception into a practical application, such as an additional element
reflecting an improvement in the functioning of a computer or an
improvement to other technology or technical field. MPEP § 2106.04(d)(1).
In the present case, the additional elements of claim 1’s limitations do not
add significantly more to the noted abstract ideas.
The only additional elements that claim 1 recites beyond the noted
abstract ideas are “at least on processor” and “a 3-dimensional printing
device.” The term “at least one processor” describes a generic computer
component, and the term’s inclusion in the claim limitations amounts to
mere instructions to implement the abstract idea on a computer. As such,
additionally reciting that the receiving, identifying and authenticating,
integrating, and transmitting steps are performed by “at least one processor”
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is not sufficient to make the claim patent eligible. See Alice, 573 U.S. at 226
(determining that the claim limitations “data processing system,”
“communications controller,” and “data storage unit” were generic computer
components that amounted to mere instructions to implement the abstract
idea on a computer); October 2019 Guidance Update at 11–12 (recitation of
generic computer limitations for implementing the abstract idea “would not
be sufficient to demonstrate integration of a judicial exception into a
practical application”).
Moreover, the 3-dimensional printer is only mentioned in
limitation (d) as a device that receives the data file from the processor.
Claim 1 does not recite any steps of actually generating the physical
payment card. Instead, the request-receiving step of limitation (a) and the
data transmitting step of limitation (d) merely constitute extra-solution
activity.
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g); see also, e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1241–42 (Fed. Cir. 2016) (holding that printing or downloading
generated menus constituted insignificant extra-solution activity).
For these reasons, claim 1 is not directed to an improvement in the
function of a computer or to any other technology or technical field. MPEP
§ 2106.05(a). Nor is claim 1 directed to a particular machine or
transformation. MPEP §§ 2106.05(b), (c). Nor does claim 1 add any other
meaningful limitations for the purposes of the analysis under Section 101.
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MPEP § 2106.05(e). Accordingly, claim 1 does not integrate the recited
abstract ideas into a practical application within the meaning of the 2019
Guidance. See MPEP §§ 2106.04. 2106.05.
STEP 2B:
Under step 2B of the 2019 Guidance, the Office next analyzes
whether claim 1 adds any specific limitations beyond the judicial exception
that, either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. MPEP § 2106.05(d).
Appellant’s Specification, by describing the additional elements at a
high level without details of structure or implementation, indicates that the
recited additional elements—“at least one processor” and “a 3-dimensional
printing device”—were well-understood, routine and conventional. Spec.
¶ 57 (“The term processor, as used herein, may refer to central processing
units, microprocessors, microcontrollers, reduced instruction set circuits
(RISC), application specific integrated circuits (ASIC), logic circuits, and
any other circuit or processor capable of executing the functions described
herein.”); see also, e.g., Spec. ¶ 2 (acknowledging that 3D printers were well
known).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered
combination adds any significance beyond the additional elements, as
considered individually. Rather, Appellant’s Specification indicates
that the invention, as claimed, is directed to an abstract business
method of collecting, compiling, and transmitting data for the
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intended purpose of subsequently using that data to print credit cards
with a generic 3-dimensional printer. See generally Spec.
For these reasons, claim 1 does not recite additional elements that,
either individually or as an ordered combination, amount to significantly
more than the judicial exception within the meaning of the 2019 Guidance.
MPEP § 2106.05(d).
Conclusion
For these reasons, which generally apply to independent claim 9, as
well, I do not understand why the Examiner did not reinstate the section 101
rejection for independent claims 1 and 9 after their scopes were broadened in
the last, January 2019 claim amendment.