Visa International Service Association

Patent Trials and Appeals Board

Dec 16, 2020

2020000383 (P.T.A.B. Dec. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/834,920 08/25/2015 Douglas Joseph Rappoport 8223-1706667 (1106US02) 1059
144885 7590 12/16/2020
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS JOSEPH RAPPOPORT
____________

Appeal 2020-000383
Application 14/834,9201
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 Oral arguments were presented October 8, 2020.
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STATEMENT OF THE CASE2
Douglas Joseph Rappoport (Appellant3) seeks review under
35 U.S.C. § 134 of a non-final rejection of claims 1, 5–12, and 15–19, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a use of a communication system to set up the
processing of a computing task initiated with a first set of terminals using a
computing system that may lack a required resource hosted on a separate
computer system and via the processing of one or more computing tasks
initiated with a second set of terminals that involve the required resources.
Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).

2 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed July 16, 2019) and Reply Brief (“Reply Br.,” filed October 22,
2019), and the Examiner’s Answer (“Ans.,” mailed August 22, 2019), and
Non-Final Action (“Non-Final Act.,” mailed February 20, 2019).
3 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 Visa
International Service Association (Appeal Br. 3).

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1. A method, comprising:
[1] storing, in a data store, a data record identifying a first
terminal set4 of transaction terminals, a second terminal set of
transaction terminals, and an allocated resource;
[2] receiving an authorization request associated with a first
payment transaction initiated at a transaction terminal of a first
merchant;
[3] determining, with at least one processor of the electronic
payment processing network, that the transaction terminal of
the first merchant is in the first terminal set,
wherein determining that the transaction terminal of the
first merchant is in the first terminal set comprises:
[3.1] comparing an identification of the transaction
terminal of the first merchant included in an
authorization request associated with the first
payment transaction with the data record
identifying the first terminal set of transaction
terminals;
[4] processing, with at least one processor of an electronic
payment processing network, the first payment transaction
initiated at the transaction terminal of the first merchant;
[5] allocating, with at least one processor of the electronic
payment processing network, a portion of a transaction amount
of the first payment transaction initiated at the transaction
terminal of the first merchant
as an amount of funds of the allocated resource
based on determining that the transaction terminal of the
first merchant respective terminal is in the first terminal
set;

4 In the context of the claims and Specification, a terminal set is a set of
terminals, and not a final set. That is, “terminal set processing an
authorization request” is not used in the sense of being the last or final set.
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[6] in response to receiving an authorization request associated
with a second payment transaction initiated at a respective
transaction terminal after the first payment transaction,
wherein the authorization request includes an
identification of the respective transaction terminal
that communicated the authorization request and
an identification of a payment account controlled
by an issuer processor,
determining, with at least one processor of the electronic
payment processing network, whether the respective
terminal is in the first terminal set or the second terminal
set based on the identification of the respective terminal
and the data record,
wherein determining whether the respective terminal is in
the first terminal set or the second terminal set comprises:
[6.1] comparing an identification of the respective
transaction terminal included in the authorization
request associated with the second payment
transaction with the data record identifying the
first terminal set of transaction terminals and the
second terminal set of transaction terminals;
[7] processing, with at least one processor of the electronic
payment processing network, the authorization request based on
determining that the respective terminal is a transaction
terminal associated with a second merchant in the second
terminal set,
wherein the first merchant is different from the second
merchant and the second merchant is a co-branded
merchant with the issuer processor, and
wherein processing the authorization request comprises:
[7.1] communicating with the issuer processor to
access the payment account controlled by the
issuer processor;
[7.2] determining whether the allocated resource is
applicable to changing a price to be applied to the
second payment transaction based on the
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identification of the payment account controlled by
the issuer processor;
[7.3] determining whether the amount of funds of
the allocated resource is sufficient for changing the
price to be applied to the second payment
transaction based on determining that the allocated
resource is applicable to the second payment
transaction;
[8] communicating, with at least one processor of the electronic
payment processing network, with the respective transaction
terminal
to cause the respective transaction terminal to change, in
real-time, the price to be applied to the second payment
transaction corresponding to the amount of funds of the
allocated resource
based on determining that the allocated resource is
sufficient for the second payment transaction;
and
[9] processing, with at least one processor of the electronic
payment processing network, the second payment transaction
using an amount of funds in the payment account controlled by
the issuer processor associated with the price to be applied to
the second payment transaction and the amount of the allocated
resource.
The Examiner relies upon the following prior art:
Name Reference Date

Diamond US 2006/0161474 A1 July 20, 2006
Robertson US 2008/0147539 A1 June 19, 2008
Galinos US 2011/0015984 A1 Jan. 20, 2011
Durgin US 2011/0208576 A1 Aug. 25, 2011
Claims 1, 5–12, and 15–19 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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Claims 1, 5–9, 12, 16, 17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Durgin and Diamond.
Claims 10 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Durgin, Diamond, and Robertson.
Claims 11 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Durgin, Diamond, and Galinos.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the art applied
describes the claim limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Durgin
01. Durgin is directed to a customer loyalty and fuel rewards
program. Durgin para. 2.
02. Durgin describes identifying a customer to a retail store by a
first reader device communicating with a host computer, in turn
communicating with an identification module. The identification
module creates a customer identification record and a preliminary
award record at the host computer. The preliminary award record
has data for a discount-per-gallon award for fuel associated with
the customer identification record for a purchase recognized at the
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host computer. The host computer adds the preliminary award
record associated with said customer identification record to a
subsequent said preliminary award record associated with said
customer identification to determine an intermediate award record.
The intermediate award record comprises all the discount-per-
gallon awards associated with the customer. The intermediate
award record is stored in a database. The customer initiates a
purchase of fuel at a fuel station, which includes identifying a
customer by a fuel pump controller in operative communication
with both a second reader device and a second identification
module. The host computer retrieves the intermediate award
record from said database, and recognizes whether the customer is
eligible for a fuel station supplementary discount. The fuel station
supplementary discount is associated with qualifying criteria other
than said customer's purchase. A fuel station supplementary
discount award record associated with said fuel station
supplementary discount is created. A fuel pump controller adds
the intermediate award record to the fuel station supplementary
discount award record to determine a final discount record. The
customer receives an amount of fuel having an associated total
cost. The customer is provided an option to redeem the final
discount associated with the final discount award record. The cost
of the fuel is reduced by the final discount record, if the customer
chooses. Durgin para. 8.
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Diamond
03. Diamond is directed to marketing to consumers that go to
movie theaters and other retail stores. Diamond para. 1.
04. Diamond describes linking transaction data for transactions
transacted in the first POS computer system with transaction data
for transactions transacted in a second POS computer system
based at least in part upon geographic proximity of stores in which
transactions occurred; further comprising data stored linking a
transaction data for transactions transacted through said first POS
computer system associated with a first customer ID to transaction
data for transactions transacted through said second POS
computer system associated with a second customer ID; further
comprising code for determining whether stored incentive offer
criteria are satisfied for a specified ID based upon data associated
with transactions from both the first POS computer system and the
second POS computer system; further comprising code for
communicating an incentive offer contingent upon purchasing in a
non-movie theater store using said second POS computer system,
and communicating said incentive offer to a customer having a
customer ID when said customer ID or an ID associated with said
customer ID is identified at said first POS computer system POS
terminal in said movie theater store; further comprising code for
communicating an incentive offer contingent upon purchasing in
said movie theater store using said first POS computer system,
and communicating said incentive offer to a customer having a
customer ID when said customer ID or an ID associated with said
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customer ID is identified at said second POS computer system
POS terminal of said non-movie theater retail store; wherein said
non-movie theater retail store is one of a supermarket, a
convenience store, and an gasoline or other motor vehicle fuel
station; further comprising a central computer system and a
network connecting between said first POS computer system, said
second POS computer system, and said central computer system;
wherein said central computer system has code for implementing
real time processing; wherein said central computer system
contains a database storing transaction data in records each
including fields for at least seven (7) of the following: consumer
name 503, consumer address, consumer telephone number,
consumer email address, ID, FSID, UPCs of items purchased, date
of transaction, price of items purchased, credit card type 519, part
or all of credit card number, credit card expiration date, fax
number, first FSID, second FSID, first MID1, second MID2, and
store ID; wherein said central computer system contains a
database storing location of stores in records each including fields
for at least two of store ID, store location 605, store IP address,
store URL, and store type; wherein said first POS computer
system contains a database storing movie releases data preferably
including fields for at least four (4) of the following: title 803,
release date, schedule of viewing dates 807, first movie
classification 809, second movie classification, movie rating 813,
movie length 815, popularity index 817, movie theater store ID,
store location, and store ID; wherein said central computer system
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contains a database storing movie releases records including fields
for storing at least five (5) of the following: title, release date,
schedule of viewing dates, first movie classification 909, second
movie classification, movie rating 913, movie length, popularity
index 917, movie theater store ID, store location, store ID, and
movie theater system ID; and wherein said incentive offer criteria
are stored in a central computer system. Diamond para. 35.
ANALYSIS
Claims 1, 5–12, and 15–19 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 15
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of

5 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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this analysis as 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites storing terminals data, receiving request data, comparing data
to make a determination, processing a payment transaction, allocating an
amount based on some determination, again comparing data to make a
determination, processing an authorization transaction by communicating
data and making determinations, changing price data, and processing another
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payment transaction. Comparing data, making determinations, and
allocating data are generic data analysis. Payment and authorizing
transaction processing are generic forms of data processing.
Communicating data is transmitting data. Changing data is modifying data.
Thus, claim 1 recites storing, receiving, analyzing, processing, transmitting,
and modifying data. None of the limitations recites technological
implementation details for any of these steps, but instead recite only results
desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts6, (2) certain methods of organizing
human activity7, and (3) mental processes8. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of

6 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
7 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
8 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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managing commercial payments for marketing promotions. Specifically,
claim 1 recites operations that would ordinarily take place in advising one to
process two payments including promotional transactions based on price and
allocation determinations in turn based on terminal identifiers. The advice
to process two payments including promotional transactions based on price
and allocation determinations in turn based on terminal identifiers involves
processing payment transactions, which is an economic act, and setting a
transaction price, which is an act ordinarily performed in the stream of
commerce. For example, claim 1 recites “processing . . . the first payment
transaction,” which is an activity that would take place whenever one is
managing payment processing. Similarly, claim 1 recites “change . . . the
price to be applied,” which is also characteristic of managing payment
processing.
The Examiner determines the claims to be directed to data
manipulation and data reporting related to the abstract idea of identifying
transaction terminals to process tasks. Non-Final Act. 5. The preamble to
claim 1 does not recite what it is to achieve, but the steps in claim 1 result in
managing commercial payments that include marketing promotions by
processing two payments including promotional transactions based on price
and allocation determinations in turn based on terminal identifiers absent
any technological mechanism other than a conventional computer for doing
so.
As to the specific limitations, limitation 2 recites receiving data.
Limitations 1 and 3–9 recite generic and conventional storing, analyzing,
processing, transmitting, and modifying of commercial payment transaction
data, which advise one to apply generic functions to get to these results. The
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limitations thus recite advice for processing two payments including
promotional transactions based on price and allocation determinations in
turn based on terminal identifiers. To advocate processing two payments
including promotional transactions based on price and allocation
determinations in turn based on terminal identifiers is conceptual advice for
results desired and not technological operations.
The Specification at paragraph 3 describes the invention as relating to
the use of a communication system to set up the processing of a computing
task initiated with a first set of terminals using a computing system that may
lack a required resource hosted on a separate computer system and via the
processing of one or more computing tasks initiated with a second set of
terminals that involve the required resources. Thus, all this intrinsic
evidence shows that claim 1 recites managing commercial payments for
marketing promotions. This is consistent with the Examiner’s
determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing payments is
part of managing commercial transactions. The concept of managing
commercial payments that include marketing promotions by processing two
payments including promotional transactions based on price and allocation
determinations in turn based on terminal identifiers is one idea for managing
such transactions. The steps recited in claim 1 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (price
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optimization); Versata Development Group, Inc. v. SAP America, Inc., 793
F.3d 1306, 1333–34 (Fed. Cir. 2015) (determining a price).
From this we conclude that at least to this degree, claim 1 recites
managing commercial payments that include marketing promotions by
processing two payments including promotional transactions based on price
and allocation determinations in turn based on terminal identifiers, which is
a commercial and legal interaction, one of certain methods of organizing
human activity identified in the Revised Guidance, and, thus, an abstract
idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.9
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).

9 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 2 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 1 recites
basic conventional data operations such as generating, updating, and storing
data. Steps 3–9 recite generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing commercial payments that include marketing promotions by
processing two payments including promotional transactions based on price
and allocation determinations in turn based on terminal identifiers as
performed by a generic computer. This is no more than conceptual advice
on the parameters for this concept and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification only spells out different
generic equipment10 and parameters that might be applied using this concept

10 The Specification describes such generic descriptions as a powerful
computer, or cluster of computers functioning as a unit and a POS
terminal or online server. Spec. paras. 148 and 153.
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and the particular steps such conventional processing would entail based on
the concept of managing commercial payments that include marketing
promotions by processing two payments including promotional transactions
based on price and allocation determinations in turn based on terminal
identifiers under different scenarios. It does not describe any particular
improvement in the manner a computer functions. Instead, claim 1 at issue
amounts to nothing significantly more than an instruction to apply managing
commercial payments that include marketing promotions by processing two
payments including promotional transactions based on price and allocation
determinations in turn based on terminal identifiers using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
managing commercial payments that include marketing promotions by
advising one to process two payments including promotional transactions
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based on price and allocation determinations in turn based on terminal
identifiers, as distinguished from a technological improvement for achieving
or applying that result. This amounts to commercial or legal interactions,
which fall within certain methods of organizing human activity that
constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
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“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for storing, receiving, analyzing, processing, transmitting, and
modifying data amounts to electronic data query and retrieval—one of the
most basic functions of a computer. All of these computer functions 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”). None of these activities is used in
some unconventional manner nor does any produce some unexpected result.
Appellant does not contend it invented any of these activities. In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data storage-reception-analysis-
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processing-transmission-modification is equally generic and conventional.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. In particular, claim 5 only adds that the
authorization data is within a particular transmission; claim 6 only adds that
authorization data forms the criteria for a conventional decision step; claim 7
only characterizes the merchant terminal; claims 8 and 9 only characterize
when the authorization occurs without reciting any technological effects
from such timing; claim 10 only provides sales quantity as criteria for a
decision; and claim 11 only provides further decision criteria. Claim 15–18
are substantially similar to claims 5–11.
We conclude that the method claims at issue are directed to a patent-
ineligible concept itself, and not to the practical application of that concept.
As to the structural claims, they
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are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’ ”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing commercial payments that include marketing
promotions by advising one to process two payments including promotional
transactions based on price and allocation determinations in turn based on
terminal identifiers, without significantly more.
APPELLANT’S ARGUMENTS
We are not persuaded by Appellant’s argument that
[t]he limitations of independent claim 1 demonstrate that the
claim is not simply directed to "an abstract, overly broad
concept long-practiced in our society" as was the claim in
Intellectual Ventures I. Moreover, as can be seen from a review
of the limitations of claim 1, claim 1 is not simply directed to a
mathematical concept, a method of organizing human activity,
or a mental process.
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Appeal Br. 16–17 (citations omitted). See also Reply Br. 5 (“the claims do
involve, and provide an improvement in, an electronic payment processing
network”). As we determine above, the claims are directed to the judicial
exception of the abstract idea of certain methods of organizing human
activity as exemplified by the commercial and legal interaction of managing
commercial payments that include marketing promotions by advising one to
process two payments including promotional transactions based on price and
allocation determinations in turn based on terminal identifiers, without
significantly more. The impact of the limitations is analyzed above in Step
2A, Prong 2.
We are not persuaded by Appellant’s argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Appeal Br. 18. Initially, we remind Appellant that BASCOM did
not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a Fed. R. Civ. P. 12(b)(6) motion
to dismiss in which facts are presumed in the non-movant’s favor.
The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit. This structural
change occurred in the context of the internet as it existed at filing in March
1997 when dial up internet service was still prevalent. It was not the idea of
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having user customizable filtering located separately from the user that was
inventive, but the manner of accomplishing it in that context, as the
relatively primitive internet architecture at that time did not readily lend
itself to such filtering. Filtering located separately from the user was already
performed. “To overcome some of the disadvantages of installing filtering
software on each local computer, another prior art system relocated the filter
to a local server.” Id. at 1344. But it was known that allowing user
customization there was desirable. “However, the one-size-fits-all filter on
the local server was not ideal.” Id.
The BASCOM filter was invented prior to the now prevalent use of
self-identifying devices with media access control (MAC) addresses. Thus,
absent that, “BASCOM explains that the inventive concept rests on taking
advantage of the ability of at least some ISPs to identify individual accounts
that communicate with the ISP server, and to associate a request for Internet
content with a specific individual account.” Id. at 1350. Thus, BASCOM
solved the problem of how to create the structural relationship known to be
desired by finding a way to relate a user to a centrally located filter at a time
when how to do so was unclear. It was not the structural relation per se, but
how it was accomplished that was inventive. No analogous technological
hurdle is described in the instant record. Indeed the whole point appears to
be to simply use existing merchant, customer, and provider computer assets
to introduce a promotional campaign into payment transaction processing by
no more than relying on identifying data.
Appellant further argues that the asserted claims are akin to the claims
found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). Appeal Br. 19; Reply Br. 6–9. In DDR Holdings, the
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Court evaluated the eligibility of claims “address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before.” Id. at 1258
(quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims
were patent ineligible because they “merely recite[d] the abstract idea of
‘offering media content in exchange for viewing an advertisement,’ along
with ‘routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
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media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
storing, receiving, analyzing, processing, transmitting, and modifying data.
This is precisely the type of Internet activity found ineligible in
Ultramercial.
Appellant cites Berkheimer for the proposition that evidence of
something being conventional is necessary. Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018). Support for this finding is provided under Step
2B supra.
Appellant argues no findings are presented as to the dependent claims.
Appeal Br. 21–22. Such findings are presented above under the heading,
Remaining Claims.
We are not persuaded by Appellant’s argument that “there is no
support for an assertion that the claims are directed to a fundamental
economic practice.” Reply Br. 2. Commercial payments and marketing
promotions are both long standing fundamental commercial practices.
Claims 1, 5–9, 12, 16, 17, and 19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Durgin and Diamond
We are persuaded by Appellant's argument that “there is no teaching
or suggestion of a data record identifying a first set of transaction terminals
and a second set of transaction terminals.” Reply Br. 16.
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Claims 10 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over
Durgin, Diamond, and Robertson
These claims depend from those in the prior rejection.
Claims 11 and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Durgin, Diamond, and Galinos
These claims depend from those in the prior rejection.
CONCLUSIONS OF LAW
The rejection of claims 1, 5–12, and 15–19 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 1, 5–9, 12, 16, 17, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Durgin and Diamond is improper.
The rejection of claims 10 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Durgin, Diamond, and Robertson is improper.
The rejection of claims 11 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Durgin, Diamond, and Galinos is improper.
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CONCLUSION
The rejection of claims 1, 5–12, and 15–19 is affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 5–12, 15–
19
101 Eligibility 1, 5–12, 15–19
1, 5–9, 12, 16,
17, 19
103 Durgin,
Diamond
1, 5–9, 12,
16, 17, 19
10, 18 103 Durgin,
Diamond,
Robertson
10, 18
11, 15 103 Durgin,
Diamond,
Galinos
11, 15
Overall Outcome 1, 5–12, 15–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED