MASTERCARD INTERNATIONAL INCORPORATEDDownload PDFPatent Trials and Appeals BoardOct 25, 20212021000184 (P.T.A.B. Oct. 25, 2021) Copy Citation 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. 15/234,693 08/11/2016 Edward M. Lee 0009449USX/4450 1000 27623 7590 10/25/2021 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 EXAMINER ZARE, SCOTT A ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 10/25/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD M. LEE Appeal 2021-000184 Application 15/234,693 Technology Center 3600 ____________ Before JAMES A. WORTH, CYNTHIA L. MURPHY, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mastercard International Incorporated. Appeal Br. 1. Appeal 2021-000184 Application 15/234,693 2 BACKGROUND The Specification “relates to analysis of payment card transactions to discern an affinity between merchants, and facilitate relationships between the merchants.” Spec. ¶ 1. CLAIMS Claims 1, 13, and 25 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A computer implemented method wherein a processor of the computer performs steps comprising: [(a)] accessing a database that contains national records of payment card transactions; [(b)] filtering said records based on a filtering criterion and a period of time, thus yielding filtered transactions that occurred during said period of time; [(c)] generating a plurality of interim storage structures, including: [(d)] generating a consolidated merchant list from said filtered transactions; [(e)] generating a card number list of spend-active account numbers in the filtered transactions that have engaged in payment card transactions with a merchant listed in said consolidated merchant list; [(f)] generating from said filtered transactions, for each account listed in the national card number list, a list of merchants from which the accounts made at least some threshold number of purchases; [(g)] generating at least one of a national-level aggregate purchases list, a national-level aggregate number of transactions list, a national level purchase penetration list, a national level card penetration list, and a national level transaction penetration list, from: Appeal 2021-000184 Application 15/234,693 3 the list of merchants from which the spend active accounts made at least some threshold number of purchases, and the payment card transactions with those merchants; [(h)] generating an index list comprising at least one of a spend index list, a card index list, or a transaction index list by at least: [(i)] generating a merchant level penetration for each merchant, the merchant level presentation being at least one of a merchant level purchase penetration, a merchant level card penetration, and a merchant level transaction penetration; and [(j)] for each merchant, generating the ratio of the merchant-level penetration to a national-level penetration to produce the index for that merchant, the national-level penetration being at least one of the national level purchase penetration list, the national level card penetration list, and the national level transaction penetration list; and [(k)] triggering a communication via a network to an interface of a user device based on the index list. Appeal Br. 30–31 (bracketed text inserted). REJECTION The Examiner rejects claims 1–25 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.2 2 We note that the Examiner provides a restatement of the rejection in the Answer and regards it as a new ground of rejection. Appeal 2021-000184 Application 15/234,693 4 DISCUSSION Legal Framework Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[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). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (citation omitted) (alteration in original). Appeal 2021-000184 Application 15/234,693 5 The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id. at 54–55. Only if 3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-000184 Application 15/234,693 6 the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself. If so, the claim is patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. 2019 Revised Guidance, Step 2A, Prong One Regarding Step 2A, prong one, the Examiner determines that claim 1 recites a judicial exception in the form of an abstract idea, and more particularly, that the claim recites mental processes and certain methods of organizing human activity. Ans. 5–6. Regarding mental processes, the Examiner determines that the claim steps of accessing records, filtering records, and performing generating steps “require merely accessing records and evaluating data, and hence, fall within the ‘mental processes’ grouping [of abstract ideas] because they could be performed entirely in the human mind and/or manually with pen and paper.” Id. Further, the Examiner determines: the steps of accessing, filtering the records based on filtering criterion and a period of time, and generating lists are considered to be a certain method of organizing human activity, as they relate to sales and marketing activities-specifically, the ‘analysis of payment card transactions to discern an affinity between merchants, and affiliate relationships between merchants.’ Specification, ¶ 0001. Id. at 6. Appeal 2021-000184 Application 15/234,693 7 We agree with the Examiner that claim 1, when given its broadest reasonable interpretation consistent with the Specification, recites mental processes and a method of organizing human activity. The claim recites a process for generating an index list related to merchant level penetration. The steps a–j of the claim include assessing data, filtering the data, and generating a number of lists related to the filtered data. We agree with the Examiner that these steps require assessing and evaluating data, which mimic the human thought processes of observation and evaluation, where the data interpretation is perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). We also agree with the Examiner that these steps also recite a method of organizing human activity to the extent they recite steps for analyzing payment transactions, which is a commercial interaction. This determination is consistent with the description in the Specification. The Specification describes that “the present disclosure relates to analysis of payment card transactions to discern an affinity between merchants, and facilitate relationships between the merchants.” Spec. ¶ 1. To that end, the Specification: provides a method that includes (a) accessing a database that contains records of payment card transactions, (b) filtering the records based on a filtering criterion and a period of time, thus yielding filtered transactions that occurred during the period of time, (c) identifying from the filtered transactions, customers of a first merchant, (d) identifying from the filtered transactions, a second merchant with which the customers engaged in transactions, and (e) calculating, from the filtered transactions, an index that shows an affinity between the first merchant and the second merchant. Appeal 2021-000184 Application 15/234,693 8 Id. ¶ 5. The result of the described method is “[a]n affinity report, [which] is a report that indicates, with regard to behavior of consumers, a degree of similarity between a subject merchant and another merchant.” Id. ¶ 11. Further, our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter including receiving, analyzing, manipulating, and storing data. See, e.g., Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019) (claims “directed to the abstract idea of ‘collecting, analyzing, manipulating, and displaying data”’); FairWarning, 839 F.3d at 1093–94 (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular content”’ as well as analyzing and presenting information); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data”); Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (obtaining information, analyzing the information, and presenting customized information based on the analyzed information determined to be directed to an abstract idea); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting information determined to be directed to an abstract idea); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (analyzing data sets). Based on the foregoing, we conclude that claim 1 recites mental processes and certain methods of organizing human activity, which are identified in the 2019 Revised Guidance as abstract ideas. Appeal 2021-000184 Application 15/234,693 9 2019 Revised Guidance, Step 2A, Prong Two The next issue is whether claim 1 not only recites, but is also directed to the recited abstract idea or is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., whether the abstract idea is integrated into a practical application. We agree with the Examiner’s determination that the claim does not recite additional limitations that integrate the abstract idea into a practical application. Ans. 6–7. We agree with the Examiner’s finding that beyond the abstract ideas discussed above the claim refers only to the use of a processor and the use of “a communication via a network to an interface of a user device.” Id. at 5. These elements “are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer.” Id. at 7. This is consistent with the Specification, which generically describes that the invention may be performed with a user device that may be “a desktop computer, a portable computer, a tablet computer, a cell phone, and a smart phone.” Spec. ¶ 13. “These additional elements do not meaningfully limit the exception, but rather, only generally link the use of the judicial exception to a particular technological environment.” Ans. 7. We note that it is possible for a claimed combination of additional elements to provide the practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55. However, the claim here does not include any non-generic arrangement of computer components or otherwise describe a technical improvement implemented using those components. Appellant argues that claim 1 recites “a filter and complex series of interim storage structurers that allow the system to employ analytic Appeal 2021-000184 Application 15/234,693 10 applications to map, sort, categorize, and summarize the raw data into an intuitive display and trigger a communication based thereon.” Reply Br. 3. Appellant asserts that “[t]hese represent an improvement to the computer.” Id. Appellant explains that “the raw data from operational national databases of transaction data is far too vast to be understood by the human mind” and that “the generation of the interim storage structures as claimed could not be practically applied in the mind.” Id. at 4 (citing Spec. ¶ 3). Appellant further contends that “the claims are directed to technical improvements to computer-human interface systems”; that the present application includes “analytic applications that interpret, analyze, compile, map, sort, categorize, and summarize the raw data before it is presented for display, so that individuals can interpret the data”; and that “[t]he Federal Circuit has consistently held claims patent eligible in cases which take complex databases that cannot be understood by humans and simplify them to be more understandable.” Id. at 5–6 (citing Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017); Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)). We are not persuaded. We fail to see how the claims represent a technical improvement to a computer-human interface system. Rather, the claims only generically recite generating numerous lists of data. And we disagree with Appellant that the Specification provides “ample and detailed description of how these complex storage interim storage structures provide a technical improvement to the computer.” Appeal Br. 17. Although, the Specification describes the generation of numerous lists of data, Appellant does not point us to any evidence, or provide any explanation, showing that Appeal 2021-000184 Application 15/234,693 11 such lists are “complex storage” structures or provide a technical improvement to the functioning of a computer. Rather, the data structures described are simple tables that either simply provide a list of filtered data or present the results of basic calculations. For example, the storage structures include a “Merchant-X customer list” that lists the account numbers associated with customers of Merchant-X; aggregate purchases lists that list the amounts spent by a number of customers at a number of merchants; and various tables that provide simple ratios of data including, for example, purchase penetration lists that provide a ratio of total spending by customers at a single merchant to total spending at all merchants. See Spec. ¶¶ 32–144. Notably, the Specification does not provide any technical details regarding how these structures are created, and given the descriptions provided, we fail to see how the creation of these lists or data structure provides a technical improvement. Further, without any technical details regarding the data structures, we are not persuaded that the claims “are directed to a specific implementation of a solution to a problem in the software arts.” Appeal Br. 18 (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). “[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Moreover, “[e]ven if we accept [Appellant’s] assertions, the claimed invention merely improves the abstract concept . . . using a computer only as a tool. This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with [the Federal Appeal 2021-000184 Application 15/234,693 12 Circuit’s] precedent applying this concept.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1363 (Fed. Cir. 2020). For the same reasons, we are also not persuaded by Appellant’s argument that “claim 1 includes features that when taken as an ordered combination, recite meaningful limitations beyond generally linking the use of the abstract idea to a particular technical environment.” Appeal Br. 18– 19. As discussed, the claim merely provides a series of generating steps without technical details and the Specification fails to provide sufficient detail to show that “when taken together the features recite a specific and discrete implementation that improve the technical field of databases for payment card systems and marketing systems.” Id. at 19. We also fail to see any meaningful parallel between claim 1 and the eligible claims listed by Appellant. See id. at 19–22. Based on the foregoing, we determine that claim 1 does not recite additional limitations that integrate the abstract idea into a practical application. Thus, we find that the claim is directed to the abstract ideas identified above. 2019 Revised Guidance, Step 2B Next, we address whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. We agree with the Examiner that the additional elements claimed, when considered individually or as an ordered combination, do not amount to significantly more. See Ans. 7–8. When considered separately, the operation performed at each step of claim 1 is expressed only in terms of its results, without any technical implementation details. For example, steps c–j require generating various Appeal 2021-000184 Application 15/234,693 13 forms of data without technical details. Similarly, step b recites filtering based on a criterion and time without technical details regarding how such filtering occurs. Each step merely recites generic computer processing expressed in terms of the results desired. And when viewed as a whole, the claim recites a series of steps that purportedly result in an index list that relates to merchant level penetration. The claimed steps together only provide conceptual parameters for producing this result and do not require or recite any particular technical details or implementation. We also agree with the Examiner that the additional elements claimed are well-understood, routine, and conventional. Ans. 8. As discussed, the Specification discloses that the invention may be implemented on a generic computing device. Further, the functions provided in the claims are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). Accordingly, we determine that claim 1 does not provide an inventive concept because the additional elements claimed do not provide significantly more than the recited judicial exception. Based on the foregoing, we determine that claim 1 is directed to a judicial exception without significantly more. We reach the same determination with respect to the remaining independent claims, which are structural claims that merely recite process parameters similar to those Appeal 2021-000184 Application 15/234,693 14 recited in claim 1. Regarding the dependent claims, we determine they recite a judicial exception without significantly more for the same reasons discussed above and because they fail to remedy the deficiencies of the claim from which they depend. Accordingly, we sustain the rejection of claims 1–25. CONCLUSION We AFFIRM the rejection of claims 1–25. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–25 101 Eligibility 1–25 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R. § 1.136 (a)(l)(iv). AFFIRMED Copy with citationCopy as parenthetical citation