Mishez Avari et al.

Patent Trials and Appeals Board

Nov 4, 2020

13569249 - (D) (P.T.A.B. Nov. 4, 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.
13/569,249 08/08/2012 Mishez Avari CITI-0728 7322
13708 7590 11/04/2020
Johnson, Marcou, Isaacs & Nix, LLC
PO Box 691
Hoschton, GA 30548
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
11/04/2020 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 MISHEZ AVARI and ANDREW ERIC ZIESMER
____________________

Appeal 2020-004610
Application 13/569,249
Technology Center 3600
____________________

Before LARRY J. HUME, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–5 and 8–20. Appellant has canceled claims 6 and 7. See Amdt 3
(filed November 25, 2015). We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies
Citicorp Credit Services, Inc. (USA) as the real party in interest. Appeal
Br. 3.
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STATEMENT OF THE CASE
Introduction
Although not identified by Appellant in the Appeal Brief, this
application was the subject of an earlier appeal (Appeal No. 2017-005344).
In our Decision in that case, mailed August 24, 2018, we affirmed the
Examiner’s rejection of the pending claims under 35 U.S.C. § 101.
Appellant’s disclosed and claimed invention generally relates to
“managing cardholder spending on a transaction card account.” Spec. ¶ 2;
see also Spec. ¶ 4 (“managing cardholder spending”). In a disclosed
embodiment, a monthly spending budget comprising a plurality of budget
categories may be established. Spec. ¶ 5. Expenditures are tracked against
the budgeted amount. Spec. ¶ 7. Additionally, the Specification describes if
the spending budget for a category is met or exceeded in a month, future
expenditures may be declined, the budget may be adjusted for that category,
or future (i.e., the succeeding month) budget amounts may be adjusted.
Spec. ¶¶ 8–10.
Claims 1 and 20 are independent claims. Claim 1 is representative
(see 37 C.F.R. § 41.37(c)(1)(iv)) and is reproduced below:
1. A method, comprising:
providing a bankcard associated with a bankcard account
having spending limits programmable by a cardholder via a web
interface processor coupled interactively to a bankcard account
budget program database:
generating, by a bankcard account budget program
processor coupled to memory, via a communication platform of
the bankcard issuer, a web interface screen prepopulated with
recommended budget figures corresponding to a level of annual
income of the cardholder;
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receiving, by the bankcard account budget program
processor, a monthly spending budget for the cardholder by the
bankcard account budget program database via the
communication platform of the bankcard issuer and the setup
screen of the web interface prepopulated with the recommended
budget figures;
tracking, by the bankcard account budget program
processor, amounts spent by the cardholder in a current month
against the monthly spending budget; and
adjusting, by the bankcard account budget program
processor, the monthly spending budget for a succeeding month
when the amounts spent by the cardholder in the current month
exceed a bankcard account credit line extended by the bankcard
issuer to the cardholder, said adjustment being made by reducing
a plurality of budget categories according to a reverse order of a
predetermined prioritization of the plurality of budget categories
up to the amounts spent by the cardholder in the current month
that exceed the bankcard account credit line extended by the
bankcard issuer to the cardholder or by reducing each of the
plurality of budget categories by a percentage equal to a
percentage by which the amounts spent by the cardholder in the
current month exceed the bankcard account credit line extended
by the bankcard issuer to the cardholder in the absence of a
predetermined prioritization.

The Examiner’s Rejection
Claims 1–5 and 8–20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 6–9.

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ANALYSIS2
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 7–10. In
particular, Appellant argues the claims do not explicitly recite certain
methods of organizing human activity or mathematical concepts. Appeal
Br. 7–10. Moreover, Appellant asserts the claims integrate any alleged
abstract idea into a practical application. Appeal Br. 10.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office has published revised guidance
for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically
with respect to applying the Alice framework. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”).3 If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look

2 Throughout this Decision, we have considered the Appeal Brief, filed
November 12, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed
March 4, 2020 (“Ans.”); and the Final Office Action, mailed June 11, 2019
(“Final Act.”), from which this Appeal is taken. Appellant did not file a
Reply Brief. To the extent Appellant has not advanced separate, substantive
arguments for particular claims or issues, such arguments are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
3 The Office Guidance, as well as guidance set forth in the Berkheimer
Memorandum, have been incorporated into the latest revision of the Manual
of Patent Examination Procedure (“MPEP”) §§ 2103–2106.07(c) (9th ed.,
Rev. 10.2019, June 2020).
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at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
Cir. 2016). Per the Office Guidance, this first inquiry (“Step 2A”) has two
prongs of analysis: (i) does the claim recite (i.e., set forth or describe) a
judicial exception (e.g., an abstract idea such as a mental process), and (ii) if
so, is the judicial exception integrated into a practical application. Office
Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.04(II)(A). Under the
Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim is patent eligible under § 101. Office
Guidance, 84 Fed. Reg. at 54–55; see also MPEP § 2106.04(d). If the claim
is directed to a judicial exception (i.e., recites a judicial exception and does
not integrate the exception into a practical application), the next step (“Step
2B”) is to determine whether any element, or combination of elements,
amounts to significantly more than the judicial exception. Alice, 573 U.S. at
217; Office Guidance, 84 Fed. Reg. at 56; see also MPEP § 2106.05.
Here, we conclude Appellant’s claims recite an abstract idea. More
specifically, Appellant’s claims generally describe creating, maintaining,
and adjusting a monthly budget for a bankcard account holder. This is
consistent with how Appellant describes the claimed invention. See Spec.
¶¶ 2 (“managing cardholder spending on a transaction card account”), 4
(describing the claimed invention as a method for managing cardholder
spending by receiving a monthly spending budget, tracking expenditures
against the budget, and adjusting the budget for a succeeding month), 19
(describing using a budgeting tool to manage a credit card budget for a
cardholder); see also Appeal Br. 8 (describing the invention as involving a
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budget program processor that generates and receives a monthly budget for a
cardholder, tracks cardholder spending, and may adjusting the cardholder’s
budget). Moreover, our characterization of the claims as a whole is
consistent with the Examiner’s. Cf. Final Act. 7 (describing the claims as
“[m]anaging spending on an account through the tracking, monitoring and
adjustment of predetermined budgeted spending amounts and/or limits”);
Ans. 10.4
Consistent with our Office Guidance and case law, we conclude that
the concept of creating, maintaining, and adjusting a monthly budget for a
bankcard account holder is a certain method of organizing human activity
(e.g., a fundamental economic practice or commercial interaction, such as
sales activities)—i.e., an abstract idea.5 See MPEP § 2106.04(a)(2)(II)(B);

4 Although we describe the abstract idea slightly differently than the
Examiner, the Examiner’s characterization of the idea is not erroneous. “An
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The
level of abstraction an examiner uses to describe an abstract idea need not
“impact the patentability analysis.” Apple, 842 F.3d at 1241. That is true
here. Regardless of the level of generality used to describe the abstract idea
recited, the claims are directed to an abstract idea. Cf. Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed.
Cir. 2013) (“Although not as broad as the district court’s abstract idea of
organizing data, it is nonetheless an abstract concept.”).
5 Alternatively, creating, maintaining, and adjusting a monthly budget for a
bankcard account holder may be considered a mental process that is applied
and performed in a computing environment. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (concluding that
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, a[re] essentially mental processes
within the abstract-idea category”); Content Extraction & Transmission v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (concluding
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see also Alice, 573 U.S. at 219–20 (concluding that use of a third party to
mediate settlement risk is a “fundamental economic practice” and thus, an
abstract idea); Bilski v. Kappos, 561 U.S. 593, 611–12 (2010) (concluding
hedging to be a fundamental economic practice and, therefore, an abstract
idea); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054
(Fed. Cir. 2017) (holding that “processing an application for financing a
purchase” falls within certain methods of organizing human activities and is,
therefore, an abstract idea); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1367–68 (Fed. Cir. 2015) (concluding that tracking
financial transactions to determine whether they exceed a pre-set spending
limit was “not meaningfully different” from other ideas found to be abstract
involving certain methods of organizing human activity); Clarilogic, Inc. v.
FormFree Holdings Corp., 681 F. App’x 950, 954 (Fed. Cir. 2017)
(unpublished) (concluding that gathering financial information is abstract—
“a method for collection, analysis, and generation of information reports,
where the claims are not limited to how the collected information is
analyzed or reformed, is the height of abstraction”). Additionally, creating

that claims drawn to collecting data, recognizing certain data within the
collected set, and storing the recognized data were patent ineligible, noting
that “humans have always performed these functions”); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir.
2017) (concluding “the collection, storage, and recognition of data” to be
abstract); Digitech Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d
1344, 1350 (Fed. Cir. 2014) (concluding “a process of organizing
information through mathematical correlations and . . . not tied to a specific
structure or machine” to be abstract); Evolutionary Intelligence LLC v.
Sprint Nextel Corp., 677 F. App’x 679, 680 (Fed. Cir. 2017) (unpublished)
(affirming the District Court’s determination that “searching and processing
[stored] data” was a patent-ineligible mental process).
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and maintaining a budget is long prevalent in our system of commerce. See,
e.g., Edwin L. Theiss, The Beginnings of Business Budgeting, The
Accounting Review, Vol. 12, No. 1, 43–55 (Mar. 1937) (available at
https://www.jstor.org/stable/pdf/239028.pdf, last visited Oct. 28, 2020)
(explaining the budget was originally used in England as early as 1760 to
control governmental expenditures).
Claim 1 is reproduced below and includes the following claim
limitations that describe (i.e., recite) the concept of creating, maintaining,
and adjusting a monthly budget for a bankcard account holder, emphasized
in italics:
1. A method, comprising:
providing a bankcard associated with a bankcard account
having spending limits programmable by a cardholder via a web
interface processor coupled interactively to a bankcard account
budget program database:
generating, by a bankcard account budget program
processor coupled to memory, via a communication platform of
the bankcard issuer, a web interface screen prepopulated with
recommended budget figures corresponding to a level of annual
income of the cardholder;
receiving, by the bankcard account budget program
processor, a monthly spending budget for the cardholder by the
bankcard account budget program database via the
communication platform of the bankcard issuer and the setup
screen of the web interface prepopulated with the recommended
budget figures;
tracking, by the bankcard account budget program
processor, amounts spent by the cardholder in a current month
against the monthly spending budget; and
adjusting, by the bankcard account budget program
processor, the monthly spending budget for a succeeding month
when the amounts spent by the cardholder in the current month
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exceed a bankcard account credit line extended by the bankcard
issuer to the cardholder, said adjustment being made by reducing
a plurality of budget categories according to a reverse order of a
predetermined prioritization of the plurality of budget categories
up to the amounts spent by the cardholder in the current month
that exceed the bankcard account credit line extended by the
bankcard issuer to the cardholder or by reducing each of the
plurality of budget categories by a percentage equal to a
percentage by which the amounts spent by the cardholder in the
current month exceed the bankcard account credit line extended
by the bankcard issuer to the cardholder in the absence of a
predetermined prioritization.
More specifically, the concept of creating, maintaining, and adjusting
a monthly budget for a bankcard account holder comprises (i) creating a
monthly budget for a cardholder (i.e., the claimed steps of generating a
screen prepopulated with recommended budget figures and receiving a
monthly spending budget); (ii) maintaining the monthly budget (i.e., the
claimed step of tracking amounts spent by the cardholder against the
monthly spending budget); and (iii) adjusting a monthly budget based on the
tracked spending activities (i.e., the claimed step of adjusting a monthly
spending budget for a succeeding month when the amounts spent by the
cardholder in the current month exceed a certain threshold).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. Office Guidance, 84 Fed. Reg. at 54; see also MPEP
§ 2106.04(d). To determine whether the judicial exception is integrated into
a practical application, we identify whether there are “any additional
elements recited in the claim beyond the judicial exception(s)” and evaluate
those elements to determine whether they integrate the judicial exception
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into a recognized practical application. Office Guidance, 84 Fed. Reg. at
54–55 (emphasis added); see also MPEP § 2106.05(a)–(c), (e)–(h).
Here, we find the additional limitations do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See Office Guidance, 84 Fed. Reg. at 55.
More particularly, the additional limitations of a web interface
processor coupled interactively to a bankcard account budget program
database and a bankcard account budget program processor coupled to a
memory via a communication platform, as recited and applied in the claims,
are not a particular machine sufficient to confer patent eligibility to the
judicial exception. At the outset, we note that whether a judicial exception is
performed by a particular machine may be a clue of patent eligibility, but it
is not a stand-alone test. Bilski v. Kappos, 561 U.S. 593, 604 (2010); see
also MPEP § 2106.05(b). Here, the recited processors, database, and
interface merely apply the judicial exception and does not qualify as a
particular machine. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716–17 (Fed. Cir. 2014); see also Versata Dev. Group v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to
add significantly more, it must “play a significant part in permitting the
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly”); MPEP
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§ 2106.05(b); see also Spec. ¶¶ 50–52 (describing the recited components at
a high level of generality).
Further, the other additional limitations are insufficient to confer
patent eligibility. Instead, these additional limitations merely refine the
abstract idea itself (i.e., describing two different adjustment techniques to a
succeeding month’s budget) or describe insignificant extra-solution activity
(i.e., the initial step of providing the bankcard for use by the judicial
exception). See MPEP § 2106.05(g); see also Parker v. Flook, 437 U.S.
584, 590 (1978) (explaining “[t]he notion that post-solution activity, no
matter how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance”).
Appellant asserts the claims integrate the alleged abstract idea into a
practical application because they provide “a specific improvement over
prior art systems with limitations directed to overcoming the deficiencies of
such conventional practices.” Appeal Br. 10. Appellant states that in legacy
card systems, a cardholder would have to focus attention on card purchases
to avoid overspending in certain categories or risk rolling over extra charges
at high rates of interest. Appeal Br. 8–9.
The purported improvement of automatically tracking expenditures
and adjusting a budget in accordance with the expenditures, however, relates
to the abstract idea, and does not improve a computer, technology, or a
technical field. See McRO, Inc. v. Bandai Namco Games America, Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in
these patents focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.”) (citing
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)); see
also MPEP § 2106.05(a) (“the judicial exception alone cannot provide the
improvement”). “[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F. 3d 1359, 1363
(Fed. Cir. 2015) (explaining that “relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible”) (citing Alice, 573 U.S. at 224 (“use of a computer to create
electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept)); Enfish, 822 F.3d at 1335–36
(distinguishing between claims wherein the focus of the claims is on an
improvement in computer capabilities and those that invoke a computer as a
tool); Two-Way Media Ltd v. Comcast Cable Comms., LLC, 874 F.3d 1329,
1337–38 (Fed. Cir. 2017) (explaining that the pending claims failed to
describe how the claimed architecture led to an improvement in the
functioning of the system).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
(i.e., step 2B of the Office Guidance) to determine if there are additional
limitations that individually, or as an ordered combination, ensure the claims
amount to “significantly more” than the abstract idea. Alice, 573 U.S. at
217–18 (citing Mayo, 566 U.S. at 77–79). As stated in the Office Guidance,
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many of the considerations to determine whether the claims amount to
“significantly more” under step two of the Alice framework are already
considered as part of determining whether the judicial exception has been
integrated into a practical application. Office Guidance, 84 Fed. Reg. at 56;
see also MPEP § 2106.04(d)(I). Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply append well-understood, routine, conventional activities at a
high level of generality. Office Guidance, 84 Fed. Reg. at 56; MPEP
§ 2106.05(II). “Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well understood,
routine, and conventional. As an initial matter, we note Appellant does not
dispute the Examiner’s findings that the claims recite “generic computer
components performing generic computer functions . . . [that] are well-
understood, routine and conventional.” See Final Act. 4.
As the Examiner finds (see Ans. 11), the recited components and
functions are well understood, routine, and conventional. Consistent with
the Berkheimer Memorandum,6 we agree with the Examiner’s findings that

6 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
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the claims merely recite generic computer components (e.g., a computing
device comprising a processor and memory) performing generic computing
functions that are well understood, routine, and conventional (e.g., receiving
data, processing data, and presenting the results of the data processing).
See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components, such as an
“interface,” “network,” and “database,” fail to satisfy the inventive concept
requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and [a] ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101. For similar reasons, we sustain the
Examiner’s rejection of independent claim 20, which recites similar
limitations and was not argued separately. See 37 C.F.R. § 41.37(c)(1)(iv).
Additionally, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
claims 2–5 and 8–19, which depend directly or indirectly from claim 1 and

for a finding that an element was well understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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were not argued separately. See Appeal Br. 10; see also 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–5 and 8–20
under 35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8–20 101 Eligibility 1–5, 8–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED