Walter Lo Faro et al.

Patent Trials and Appeals Board

Jan 22, 2020

13834229 - (D) (P.T.A.B. Jan. 22, 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.
13/834,229 03/15/2013 Walter Lo Faro 21652-00259 5762
75564 7590 01/22/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/22/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WALTER LO FARO and CHRISTOPHER J. MERZ
____________

Appeal 2018-007138
Application 13/834,229
Technology Center 3600
____________

Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Walter Lo Faro and Christopher J. Merz (Appellant2) seeks review
under 35 U.S.C. § 134 of a Final Rejection of claims 1, 7, 11–14, 20, 24–27,

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 28, 2018) and Reply Brief (“Reply Br.,” filed July 3,
2018), and the Examiner’s Answer (“Ans.,” mailed May 4, 2018), and Final
Action (“Final Act.,” mailed October 13, 2017).
2 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).

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33, 34, and 37–42, 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 way of recommending a competitor set of
merchants to a merchant requesting such a competitor set, wherein the
competitor set is based on payment transactions initiated at the competitor
set of merchants and at the requestor merchant. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 14, which is reproduced below (bracketed matter and some
paragraphing added).
14. A computer-implemented method
for developing a merchant score representing a measure
of closeness of a competitor to a subscriber merchant
based upon actual electronic payment card transaction
data,
said method using a merchant analytic (MA) computer
system,
wherein the MA computer system is in communication
with a memory device for storing electronic data,
said method comprising:
[1] receiving,
at the MA computer system,
electronic payment card transaction data from a point of
sale terminal,
the electronic payment card transaction data associated
with a plurality of cardholders from a payment network,
the electronic payment card transaction data
including electronic data processed over the
payment network
and
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relating to a plurality of purchases made by the
plurality of cardholders using payment cards at a
plurality of merchants,
the purchases satisfying a first criterion;
[2] receiving,
at the MA computer system,
merchant descriptive information in an electronic format;
[3] determining location information of each of the plurality of
merchants relative to at least one of a predetermined selectable
location and a location of a subscriber merchant;
[4] associating,
from the received electronic payment card
transaction data,
the subscriber merchant with a competitor merchant from
the plurality of merchants to form a merchant pair;
[5] generating a matrix of merchant associations for the
plurality of merchants
including a number of electronic payment card
transactions between a payment cardholder and each
merchant of the merchant pair,
wherein the generated matrix is configured to organize
the plurality of merchants in separate rows, respectively,
against a column of the subscriber merchant,
and
wherein the intersection of the subscriber merchant
column and one of the merchant rows represents a block
including the respective number of electronic payment
transactions performed by the same payment cardholder
at both merchants of the respective merchant pair;
[6] incrementing a counter associated with each block,
respectively, of the generated matrix
for each instance of one of the payment cards being used
with both merchants of the respective merchant pair;
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[7] performing website scraping to retrieve subscriber merchant
preference information,
wherein the subscriber merchant preference information
represents a measurement of a preference of the
subscriber merchant relative to the competitor merchant;
[8] generating a preference vector including the subscriber
merchant preference information associated with each merchant
of the plurality of merchants;
[9] determining a merchant ranking vector
based on the preference vector and the matrix of
merchant associations,
the merchant ranking vector including a merchant rank
associated with each merchant of the plurality of
merchants,
the merchant rank representing a measurement of a
general popularity of each merchant relative to the
plurality of merchants that is adjusted according to the
subscriber merchant preference information;
[10] generating a neutral preference vector
including generic subscriber merchant preference
information
that is equal for each merchant of the plurality of
merchants,
wherein the neutral preference vector represents an equal
preference of the subscriber merchant for the plurality of
merchants;
[11] determining a neutral merchant ranking vector
based on the neutral preference vector applied to the
matrix of merchant associations,
the neutral merchant ranking vector including a neutral
merchant rank associated with each merchant of the
plurality of merchants,
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the neutral merchant rank representing a measurement of
general popularity of each merchant relative to the
plurality of merchants;
[12] determining a merchant score vector for the subscriber
merchant
based on the neutral merchant ranking vector and the
merchant ranking vector,
the merchant score vector including a merchant score for
each merchant of the plurality of merchants,
the merchant score indicating the difference between the
merchant rank and the neutral merchant rank associated
with each merchant of the plurality of merchants;
[13] transmitting the merchant scores from the determined
merchant score vector to the subscriber merchant
wherein a higher merchant score represents a merchant
that is a closer competitor to the subscriber merchant;
and
[14] activating an electronic device of the subscriber merchant
to display a recommended ranking of the subscriber
merchant with respect to the competitor merchant based
on the transmitted merchant scores and a value of the
counter.
Claims 1, 7, 11–14, 20, 24–27, 33, 34, and 37–42 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
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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 Claim Construction
01. The disclosure contains no lexicographic definition of “vector.”
02. The customary meaning of a “vector” in computer
programming is a one dimensional array. 3
03. The disclosure contains no lexicographic definition of “website
scraping.”
04. The customary meaning of “web scraping” is the set of
techniques used to automatically get some information from a
website instead of manually copying it.4
05. The disclosure contains no lexicographic definition of
“activating.”
ANALYSIS
We initially construe “vector.” This is not lexicographically defined,
but the customary meaning in programming is a one dimensional array. We
construe “vector” as a one dimensional array. In other words, it is a set of
data because all data, no matter the nominal structure, is physically stored in
a one dimensional array defined by its addressing.

3 Vector Definition, Free On-Line Dictionary of Computing,
http://foldoc.org/vector. (last visited Jan. 15, 2020.)
4 Eloisa Vargiu, Exploiting web scraping in a collaborative filtering based
approach to web advertising, Artificial Intelligence Research, 2013, Vol. 2,
No. 1, December 5, 2012 https://pdfs.semanticscholar.org/25cf
/21117f60d80b32c6d2868defc39e39f74109.pdf
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We next construe “website scraping.” This is not lexicographically
defined, nor are any examples described. The Specification refers to it in
paragraphs 22, 64, and 72 only, and then only generically. The customary
meaning of web scraping is the set of techniques used to automatically get
some information from a website instead of manually copying it. This is a
well developed methodology that the Specification refers to generically.
Thus we construe website scraping as using conventional programming to
automatically retrieve website data.
We next construe the limitation “activating an electronic device of the
subscriber merchant to display a recommended ranking.” Claim 14,
limitation 14. The Specification does not lexicographically define or even
use the word “activate” or its alternatives such as “activating.” Appellant
cites Specification paragraphs 77 and 78 for support. App. Br. 6. The only
support for such activation is in providing a list in “The MA computer
system then provides 720 a list of potential competitor merchants 24 to the
subscriber merchant 23, and/or to a market analyst retained by subscriber
merchant 23, wherein the list is based on the sorted merchant score vector.”
Spec. Para. 77. In particular, there is no description of turning a device on as
activation, so activation is being recited in the claims in the sense of getting
a device to display something by sending content to it. Thus we construe
this limitation as providing a list on an electronic device of the subscriber
merchant to display a recommended ranking.
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STEP 15
Claim 14, 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 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., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, 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 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

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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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 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 14 recites receiving transaction and merchant descriptive data,
determining merchant location data, associating two merchants, generating
and incrementing a matrix of counters arrayed by merchant associations,
web scraping data, generating a preference vector, determining a merchant
ranking vector and generating a neutral preference vector, determining
another neutral preference vector and a merchant score vector, and
transmitting scores and activating a device to display a ranking.
Determining, associating, incrementing, ranking, and generating data are
rudimentary forms of data analysis. As construed supra, web scraping is
conventional generic data retrieval and activating a device is displaying on a
device. Thus, claim 14 recites receiving, analyzing, transmitting, and
displaying data. None of the limitations recite 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 14 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
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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 14 recites the concept of
providing market information subscriptions. Specifically, claim 14 recites
operations that would ordinarily take place in advising one to sort merchants
based on scores derived from various arrays of data in turn derived from web
site data and counts of card transactions. The advice to sort merchants based
on scores derived from various arrays of data in turn derived from web site
data and counts of card transactions involves providing market research,
which is an economic act, and scoring merchants, which is an act ordinarily
performed in the stream of market research commerce. For example, claim
14 recites “display a recommended ranking of the subscriber merchant,”
which is an activity that would take place whenever one is providing market

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 Am., 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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research about comparisons among merchants. Similarly, claim 1 recites
“developing a merchant score representing a measure of closeness,” which is
also characteristic of market research.
The Examiner determines the claims to be directed to using matrices
for determination of a merchant rank. Final Act. 7.
The preamble to claim 14 recites that it is a method for developing a
merchant score representing a measure of closeness of a competitor to a
subscriber merchant based upon actual electronic payment card transaction
data. The steps in claim 14 result in displaying a recommended ranking of
merchants based on scores absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 1, 2, and 7 recite receiving
data. That a limitation does so using conventional web scraping techniques
is no more than using conventional programs available on generic
computers. Limitations 13 and 14 recite insignificant transmitting and
displaying of market research data, which advise one to apply generic
functions to get to these results. Limitations 3–6 and 8–12 recite
rudimentary forms of data analysis, albeit using one and two dimension
arrays (vectors and matrices). The limitations thus recite advice for sorting
merchants based on scores derived from various arrays of data in turn
derived from web site data and counts of card transactions. To advocate
sorting merchants based on scores derived from various arrays of data in
turn derived from web site data and counts of card transactions is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
recommending a competitor set of merchants to a merchant requesting such
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a competitor set, wherein the competitor set is based on payment
transactions initiated at the competitor set of merchants and at the requestor
merchant. Thus, all this intrinsic evidence shows that claim 14 recites
scoring and sorting merchants in a market relative to some neutral merchant
rank, i.e. providing market information subscriptions. 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 market research is a
fundamental component of generating marketing transactions. The concept
of providing market information subscriptions by sorting merchants based
on scores derived from various arrays of data in turn derived from web site
data and counts of card transactions is one idea for researching merchant
status. The steps recited in claim 14 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. Digitech Image Technologies, LLC
v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(analyzing data sets); Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule-based
tasks for processing an insurance claim); Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(managing a stable value protected life insurance policy); Dealertrack, Inc.
v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)(processing loan information
through a clearinghouse); Content Extraction and Transmission LLC v.
Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (collecting data
and storing recognized patterns in the data).
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From this we conclude that at least to this degree, claim 14 recites
providing market information subscriptions by sorting merchants based on
scores derived from various arrays of data in turn derived from web site data
and counts of card transactions, 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 14 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).
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 1, 2, and 7 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps

9 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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13 and 14 are insignificant post solution activity, such as transmitting and
displaying the results. Steps 3–6 and 8–12 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 14 simply recites the concept of
providing market information subscriptions by sorting merchants based on
scores derived from various arrays of data in turn derived from web site data
and counts of card transactions 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 14 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The over 30 pages of specification spell out
different generic equipment10 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of providing market information subscriptions by
sorting merchants based on scores derived from various arrays of data in
turn derived from web site data and counts of card transactions under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, claim 14 at issue amounts to nothing

10 The Specification describes a personal computer having a web browser.
Spec. para. 49.
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significantly more than an instruction to apply providing market information
subscriptions by sorting merchants based on scores derived from various
arrays of data in turn derived from web site data and counts of card
transactions 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 14 is directed to achieving the result of
providing market information subscriptions by advising one to sort
merchants based on scores derived from various arrays of data in turn
derived from web site data and counts of card transactions, 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.
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STEP 2B
The next issue is whether claim 14 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).
“[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 receiving, analyzing, transmitting, and displaying 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
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computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Also see In re Katz Interactive Call Processing Patent Litigation, 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 are used in some unconventional manner nor do any
produce some unexpected result. Appellant does not contend they 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 14 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
transmission-display 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,
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and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 14 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 14 is representative. The remaining method claims merely
describe process parameters. 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:
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 providing market information subscriptions by sorting
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merchants based on scores derived from various arrays of data in turn
derived from web site data and counts of card transactions, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 5–10 and Answer 2–9 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “the Examiner has
failed to identify any alleged judicial exception within the claim language.”
Reply Br. 1. The Examiner made such determinations although he did not
make references to specific recitations in the claims. This is done supra
under Step 2A Prong 1.
We are not persuaded by Appellant’s argument that “the claims do not
merely ‘use’ matrices. Instead, the pending claims require a particular
logical model for a matrix technique, and a particular non-conventional and
non-generic implementation of this claimed logical model.” Reply Br. 2.
No logical model is recited in the claims. The claims recite a sequence of
conventional computer operations such as receiving and analyzing data as
single dimensional arrays of data (vectors) to score and then rank merchants.
Any set of data may be characterized as a single dimensional array as
any set may be flattened into such an array. The claims recite no particular
implementation for how arrays are structured. The claims do recite
intermediate results to be obtained along the way to that scoring. But the
claims recite no technological model or other implementation for doing so.
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We are not persuaded by Appellant’s argument that “the Examiner has
failed to demonstrate that the MA computer system 121 and other claim
limitations are generic.” Id. See footnote 10 supra.
We are not persuaded by Appellant’s argument that “the Examiner has
failed to provide a factual determination that the claimed elements, including
the MA computer system 121, are generic.” Id. Such determinations are
presented under Step 2 B supra.
We are not persuaded by Appellant’s argument that “the recitations of
the present claims are clearly not widely prevalent or in common use in the
relevant industry, as the present claims are not rejected under Sections 102
or 103.” Id. Novelty and obviousness are not at issue. “A claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc.
v. Mentor Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
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)). Reply Br. 2. 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 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
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and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 3. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were “directed to a specific improvement to the
way computers operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate and improve the accuracy of the process of
comparing merchants, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer “do[] 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). Instead, the claims
are more analogous to those in FairWarning, 839 F.3d 1089 (Fed. Cir.
2016), wherein claims reciting “a few possible rules to analyze audit log
data” were found directed an abstract idea because they asked “the same
questions (though perhaps phrased with different words) that humans in
analogous situations detecting fraud have asked for decades.” 839 F.3d at
1094, 1095.
As to the contention that the claims are “specifically directed to a
particular innovative matrix technique that increments intersecting blocks of
a matrix only when a single cardholder performs transaction with both
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merchants of a particular merchant pair,” Reply Br, id., using a matrix of
counters is notoriously old and we note Appellant does not claim to have
invented this. The claims recite no technological implementation for
structuring the matrix in any event. It is only the criteria used for
incrementing counters that is argued to be novel. This argues no more than
the benefits of some context while using conventional technology. “The
Supreme Court and this court have repeatedly made clear that merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016).
CONCLUSIONS OF LAW
The rejection of claims 1, 7, 11–14, 20, 24–27, 33, 34, and 37–42
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more is proper.
CONCLUSION
The rejection of claims 1, 7, 11–14, 20, 24–27, 33, 34, and 37–42 is
affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 7, 11–14, 20,
24–27, 33, 34,
37–42
101 Eligibility 1, 7, 11–14, 20,
24–27, 33, 34,
37–42

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).
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AFFIRMED