MasterCard International Incorporated

Patent Trials and Appeals Board

Apr 21, 2020

14554756 - (D) (P.T.A.B. Apr. 21, 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.
14/554,756 11/26/2014 Pedro J. Chavarria 21652-00388 6355
75564 7590 04/21/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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 PEDRO J. CHAVARRIA and KRISTOFER PEREZ
________________

Appeal 2019-001224
Application 14/554,756
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3–8, 10–15, and 17–20, which constitute all of the
pending claims.1 Appeal Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Mastercard International Incorporated. Appeal Brief filed June 1, 2018
(“Appeal Br.”) 1.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A computer-implemented method for recommending
vacation options based on historical vacation data is
implemented by a vacation recommendation computer device.
The method includes receiving a plurality of transaction data
associated with a cardholder, identifying vacation transaction
data from the plurality of transaction data, processing the
vacation transaction data to determine a plurality of cardholder
vacation characteristics, determining a vacation profile based on
the plurality of cardholder vacation characteristics, identifying a
plurality of cardholders with associated vacation profiles that
match the vacation profile, receiving a plurality of vacation
options including at least one vacation attribute, retrieving a
vacation history associated with each of the identified plurality
of cardholders, identifying at least one vacation option
responsive to the cardholder by comparing the plurality of
cardholder vacation characteristics to the at least one vacation
attribute, and recommending the at least one identified vacation
option to the cardholder.
Abstract.

STATEMENT OF THE REJECTIONS
Claims 1, 3–8, 10–15, and 17–20 stand(s) rejected under 35 U.S.C.
§ 101 as being directed to an exception to patent-eligible subject matter
without reciting significantly more. Final Act. 2–7.2

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
November 16, 2017 (“Final Act.”); the Examiner’s Answer mailed
September 21, 2018 (“Ans.”); and the Reply Brief filed November 21, 2018
(“Reply Br.”).
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Claims 1, 3–5, 7, 8, 10–12, 14, 15, and 17–19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Winters (US 2011/0231257 A1;
published Sept. 22, 2011) and Williams (US 2014/0279250 A1; published
Sept. 18, 2014). Final Act. 7–19.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Winters, Williams, and Gray (US 2015/0073841 A1;
published Mar. 12, 2015). Final Act. 19–20.

STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

THE SECTION 101 REJECTION
The Claimed Invention
Independent claim 1 represents of the appealed claims.3 Claim 1 is
reproduced below with paragraph numbering added for clarity and emphasis
added to the claim language that recites an abstract idea:
1. A computer-implemented method for recommending
vacation options based on historical vacation data from a
payment network, the method implemented by a vacation
recommendation computer device in communication with a
memory and the payment network, the method comprising:

3 Appellant argues the section 101 rejection of all of the appealed claims
together as a group. Appeal Br. 7–17. Accordingly, we select independent
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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[(i)] receiving a plurality of cardholder transaction data
associated with a particular cardholder of the payment network;
[(ii)] determining a primary region associated with the
particular cardholder based on the plurality of cardholder
transaction data, wherein the primary region represents a
location in which the particular cardholder spends a substantial
amount of time;
[(iii)] identifying, by the vacation recommendation computer
device, vacation transaction data separately from ordinary
transaction data within the plurality of cardholder transaction
data, wherein the vacation transaction data is identified by one
or more of (i) a type of goods or services associated with
vacation travel, (ii) a merchant category associated with
vacation travel, (iii) a location of a merchant outside of the
primary region for a card-present transaction initiated by the
particular cardholder, and (iv) an unusual spending pattern
within the ordinary transaction data;
[(iv)] processing the vacation transaction data to determine
a plurality of cardholder vacation characteristics indicating one
or more of a vacation preference, vacation interest, and a
vacation behavior of the particular cardholder;
[(v)] correlating data patterns in the ordinary transaction
data with the plurality of cardholder vacation characteristics;
[(vi)] determining a particular vacation profile for the
particular cardholder based on the plurality of cardholder
vacation characteristics and the step of correlating;
[(vii)] identifying a plurality of other cardholders with
associated vacation profiles corresponding to the particular
vacation profile based on a second plurality of cardholder
transaction data respectively associated with the plurality of
other cardholders;
[(viii)] receiving a plurality of vacation options including at
least one vacation attribute;
[(ix)] retrieving a vacation history associated with each of
the identified plurality of other cardholders, wherein each
vacation history includes a plurality of previous vacation data;
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[(x)] identifying, by the vacation recommendation computer
device, at least one vacation option responsive to the cardholder
by comparing the plurality of cardholder vacation
characteristics to the at least one vacation attribute, wherein the
at least one vacation option corresponds to at least a portion of
the plurality of previous vacation data; and
[(xi)] recommending the at least one identified vacation
option to the cardholder.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook) (citation omitted); see also, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
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If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U. S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
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Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
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Limitation (i) recites the step of “receiving a plurality of
cardholder transaction data associated with a particular cardholder of
the payment network.” Receiving data constitutes a certain method of
organizing human activity. More specifically, receiving data
constitutes a method of managing interactions between people,
including teaching. The 2019 Guidance expressly recognizes this type
of certain method of organizing human activity as constituting a
patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Receiving data additionally constitutes a mental process. More
specifically, receiving data constitutes an observation that can be performed
in the human mind. The 2019 Guidance also recognizes mental processes,
including observations, as constituting a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (i) constitutes
reciting a patent-ineligible abstract idea.
Limitations (ii) through (vii) recite the following steps:
[(ii)] determining a primary region associated with the
particular cardholder based on the plurality of cardholder
transaction data, wherein the primary region represents a location
in which the particular cardholder spends a substantial amount of
time;
[(iii)] identifying . . . vacation transaction data separately
from ordinary transaction data within the plurality of cardholder
transaction data, wherein the vacation transaction data is
identified by one or more of (i) a type of goods or services
associated with vacation travel, (ii) a merchant category
associated with vacation travel, (iii) a location of a merchant
outside of the primary region for a card-present transaction
initiated by the particular cardholder, and (iv) an unusual
spending pattern within the ordinary transaction data;
[(iv)] processing the vacation transaction data to determine a
plurality of cardholder vacation characteristics indicating one or
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more of a vacation preference, vacation interest, and a vacation
behavior of the particular cardholder;
[(v)] correlating data patterns in the ordinary transaction
data with the plurality of cardholder vacation characteristics;
[(vi)] determining a particular vacation profile for the
particular cardholder based on the plurality of cardholder
vacation characteristics and the step of correlating;
[(vii)] identifying a plurality of other cardholders with
associated vacation profiles corresponding to the particular
vacation profile based on a second plurality of cardholder
transaction data respectively associated with the plurality of
other cardholders;
Each of these limitations constitutes a mental process that can be
performed in the human mind. More specifically, each of these steps
constitute an evaluation or judgment that can be performed exclusively in
the human mind or with the aid of pencil and paper. The 2019 Guidance
expressly recognizes mental evaluations and judgments as constituting
patent-ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52.
Accordingly, each of limitations (ii) through (vii) recite a judicial exception
to patent-eligible subject matter.
Limitations (viii) and (ix) recite “[(viii)] receiving a plurality of
vacation options including at least one vacation attribute”; and
“[(ix)] retrieving a vacation history associated with each of the identified
plurality of other cardholders, wherein each vacation history includes a
plurality of previous vacation data.” For the reasons discussed in relation to
limitation (i), the data-receiving steps of limitations (viii) and (ix) also recite
patent-ineligible abstract ideas.
Limitation (x) recites “identifying . . . at least one vacation option
responsive to the cardholder by comparing the plurality of cardholder
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vacation characteristics to the at least one vacation attribute, wherein the at
least one vacation option corresponds to at least a portion of the plurality of
previous vacation data.” Identifying options constitutes an evaluation or
judgment that can be performed in the human mind. For the reasons set
forth in relation to limitations (ii) through (vii), then, limitation (x) recite an
abstract idea.
Limitation (xi) recites “recommending the at least one identified
vacation option to the cardholder.” Making a recommendation to another
constitutes a certain method or organizing human activity. More
specifically, the step constitutes an advertising, marketing, or sales activity,
or a step of managing interactions between people, including teaching. The
2019 Guidance expressly recognizes these particular certain methods of
organizing human activity as constituting abstract ideas. 2019 Guidance, 84
Fed. Reg. at 52.
Limitation (xi) alternatively can be characterized as reciting a step of
expressing an opinion. The 2019 Guidance recognizes the act of expressing
an opinion as a mental process that constitutes an abstract idea. 2019
Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (xi) recites a patent-
ineligible abstract idea.
For these reasons, each of limitations (i) through (xi) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
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2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
The preceding analysis of the abstract ideas recited in claim 1 indicate
that claim 1’s “additional elements” only consist of a “vacation
recommendation computer device,” as well as “a memory” and “a payment
network” in communication with the vacation recommendation computer
device. Furthermore, even if claim 1’s first step of “receiving a plurality of
cardholder transaction data associated with a particular cardholder of the
payment network” is interpreted narrowly as not reciting an abstract idea,
the limitation still merely recites insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
The same can be said for the receiving step of limitation (viii) and the
retrieving step of limitation (ix). Similarly, claim 1’s final step of
“recommending the at least one identified vacation option to the cardholder”
does not add any meaningful limitations to the abstract idea either because it
merely is directed to the insignificant post-solution activity of transmitting
data. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed.
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Cir. 2016) (holding that printing or downloading generated menus
constituted insignificant extra-solution activity).
Appellant asserts that the present claims are directed to an
improvement to computer functionality. Appeal Br. 8–9. More specifically,
Appellant argues, for example, that “the pending claims are directed to an
innovative database technique for uniquely identifying, within a plurality of
cardholder transaction data received from a payment network, vacation
transaction data separately from ordinary transaction data.” Id. at 8.
Appellant presents the following argument in support of this general
assertion:
It is unchallenged on the record that the database
technique, to which the pending claims are directed, separates
vacation transaction data from ordinary transaction data, and
then correlates data patterns in the ordinary transaction data with
vacation characteristics determined from the vacation transaction
data to achieve improved results over conventional database
techniques that do not distinguish one type of transaction data
from the other within the same database. The improved results
of the claimed database techniques are also significantly different
from the outcome according to the conventional techniques,
rendering the pending claims both non-generic and non-
conventional.
Id. at 9.
This argument is unpersuasive because separating vacation transaction
data from ordinary transaction data and correlating data patterns entails two
of the abstract ideas noted above in the analysis under step 2A, prong 1. “It
has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). “[A]
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claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (emphasis
omitted). “What is needed is an inventive concept in the non-abstract
application realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018).
Appellant further argues that the present claims are analogous to the
self-referential tables found to be patent eligible in Enfish because the
present claims are “directed to an innovative table database structure that
distinguishes vacation transaction data separately from ordinary transaction
data.” Appeal Br. 10 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016). This argument is not persuasive because Appellant only
discusses the database’s content without providing sufficient evidence that
the database’s structure is innovative.
Appellant argues that “the pending claims do not merely collect and
analyze cardholder transaction data, but instead first identify two distinct
subgroups . . . within the [collected data], and separately identify these
distinct data subgroups within the database table structure.” Appeal Br. 12.
Appellant also argues that the pending claims require further steps of
processing and correlating the data. Id. Again, these arguments are directed
to the benefits of the underlying abstract idea—not to improvements to any
of the additional elements—the computer device, the database, and memory
that carry out the abstract idea.
Appellant further argues that claim 1 includes claim features that
recite significantly more than “simply . . . an instruction to implement or
apply the abstract idea on a computer.” Appeal Br. 12–13 (citing BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
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Cir. 2016)). Appellant additionally argues that all of claim 1’s additional
elements also must be considered in combination to determine if the
inventive concept may be found in the non-conventional and non-generic
arrangement of the additional elements.
More specifically, Appellant argues that the present claims “feature a
new functionality provided to the central server of the payment network to
determine the recommendation profile to the cardholder.” Appeal Br. 15.
According to Appellant, “[b]y performing the claimed techniques within the
scope of the payment network authority, the pending claims achieve
significantly more accurate recommendations over the conventional
techniques. This example of new functionality provided to the server of the
payment network is directly on point with the eligibility determination in
BASCOM.” Id. at 16.
This argument is unpersuasive because Appellant does not
demonstrate that the present invention entails arranging generic components
to achieve some new filtering technique previously unknown in the art, as
was the case in BASCOM. Rather, Appellant’s Specification indicates that
the invention entails programming a computer to filter for a particular type
of content. Spec. ¶¶ 2–3.
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 1 is directed to a particular machine or
transformation, or that claim 1 adds any other meaningful limitations for the
purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e).
Accordingly, Appellant does not persuade us that claim 1 integrates the
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recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance, 84
Fed. Reg. at 56; MPEP § 2106.05(d).
The Examiner determines that the additional elements of claim 1—the
vacation recommendation computer device, the memory, and the payment
network—viewed individually and as an ordered combination, merely entail
well-understood and conventional components that do not add significantly
more to the identified abstract ideas. Ans. 10.
Appellant acknowledges that at the time of the pending application,
payment networks were known for processing payment card transactions and
settling funds between financial institutions. Appeal Br. 15. Appellant
argues, though, that there is no evidence in the record indicating that it was
well-understood, routine, and conventional to implement database
techniques, at the payment network side, for separating vacation transaction
data from ordinary transaction data, maintaining both sub-types of data in a
database, and then separately processing these two data subsets from the
database for subsequent correlation. Id. at 15–16.
This argument is unpersuasive because Appellant is effectively
arguing that the invention, as claimed, is patent eligible because it is novel
and unobvious. However, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
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whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diehr, 450 U.S. at 188–89. See Mayo,
566 U.S. at 90 (a novel and nonobvious claim directed to a purely abstract
idea is, nonetheless, patent ineligible); see also Flook, 437 U.S. at 594–95
(holding claims to “a new and presumably better method for calculating
alarm limit values,” of undisputed usefulness, to be directed to patent-
ineligible subject matter); Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.”).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to an abstract idea that is made more efficient with generic
computer components—recommending vacation options based on consumer
analytics, such as historical travel by a consumer. Spec. ¶ 1.
For these reasons, Appellant does not persuade us the Examiner
committed reversible error in determining that claim 1 fails to recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception within the meaning
of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the 101 rejection of claims 3–8, 10–15, and 17–20, which
Appellant does not argue separately. Appeal Br. 17.
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THE SECTION 103 REJECTION
Examiner’s Determinations
In rejecting independent claim 1, the Examiner finds the combination
of Winters and Williams teaches all of the claim limitations. Final Act. 8–
17. In particular, the Examiner finds Winters generally teaches limitation
(iii)’s step of identifying one classification of data separately from other
data, but does not teach the identified classification of data as specifically
being vacation data—i.e., does not teach “identifying . . . vacation
transaction data separate[e] from ordinary transaction data.” Final Act. 8–9,
11–12 (emphasis omitted). The Examiner finds Williams cures this
deficiency. Id. at 13–14 (citing e.g., Williams Fig. 2; ¶¶ 34, 57). In the
Examiner’s Answer, the Examiner further clarifies the reliance on Williams,
explaining “Williams must identify . . . vacation transaction data separately
from the ordinary transaction data [within a] plurality of [pieces of]
transaction data.” Ans. 32.
The Examiner further finds that Winters teaches “correlating data
patterns in the ordinary transaction data with the plurality of cardholder
vacation characteristics,” as recited in limitation (v), but that Winters fails to
teach cardholder characteristics are vacation characteristics. Final Act. 9–
10, 12. The Examiner finds Williams cures this deficiency by teaching
“vacation characteristics.” Id. at 14 (citing, e.g., Williams Fig. 2, ¶ 57)
(emphasis omitted).
The Examiner additionally reasons that motivation existed to combine
Winters and Williams to “increase vacation advertisements/vacation
options[] effectiveness.” Final Act. 17. In the Examiner’s Answer, the
Examiner clarifies this would “enable the advertisers to tailor the most
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matched [and] suitable vacation advertisements/vacation options to the
user.” Ans. 36.
Appellant’s Contentions and Analysis
Appellant presents four arguments regarding the obviousness rejection
of claim 1. We first address Appellant’s first and third argument together
and then address Appellant’s second and fourth arguments separately.
I.
First, Appellant argues the Examiner’s reliance on Williams to cure
the admitted deficiencies of Winters is erroneous because “Williams . . . fails
to teach or suggest any identification of vacation transaction data separately
from ordinary transaction data within the same plurality of cardholder
transaction data.” Appeal Br. 18 (emphasis omitted). Appellant continues,
That is, [paragraph 57] from Williams only teaches that it was
known to identify vacation transaction data within a consumer’s
transaction history and save inferences from the vacation
transaction data. Williams is silent regarding a database
technique to identify, within the entirety of cardholder
transaction data, vacation transaction data and ordinary
transaction data to facilitate further processing of both types of
data.
Id.
Appellant similarly argues,
The proposed substitution of ordinary transaction data (Winters)
with vacation transaction data (Williams) still fails to teach or
suggest a database that includes both ordinary and vacation
transaction data, where the vacation transaction data is identified
separately from the ordinary transaction data within the database,
along with the separate respective processing of the two data
types and the correlation of the processing results therefrom. By
merely substituting one type of data for another, it is impossible
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to correlate the processing results from both data types within
the same database.
Id. at 19.
We understand Appellant’s argument to be that Williams does not
teach both “vacation transaction data” and “ordinary transaction data,”
which is separate and distinct from vacation transaction data. As a threshold
matter, we question whether Appellant’s Specification requires such a
narrow interpretation of the claim language. Appellant’s Specification
describes the relationship between vacation transaction data and ordinary
transaction data in contradictory terms.
Appellant’s Specification first explains that “[v]acation transactions
generate vacation transaction data which is part of, or included within[,]
ordinary payment transaction data.” Spec. ¶ 20 (emphasis added). Three
paragraphs later, though, Appellant’s Specification alternatively defines
“ordinary transaction data” as being only “transaction data that is not
vacation transaction data.” Id. ¶ 23.
Regardless, even if we interpret “vacation transaction data” as being
mutually exclusive of “ordinary transaction data,” as Appellant urges in the
Appeal Brief, Appellant’s arguments still are not persuasive. Williams
teaches “ordinary transaction data” and “vacation transaction data,” as
Appellant interprets the terms, in consumer profile 202. See Williams Fig. 2
(depicting consumer profile 202, organized as a database, including vacation
preferences data (e.g., travel, preference B) and “ordinary data” (e.g., Italian
food, preference C)); see also id. ¶ 34; id. ¶¶ 37, 38 (expressly using the
term “vacation” to describe the consumer’s preferences and gathered data).
As Williams affirmatively designates a subset of the entire transaction data
as travel (or vacation) data, Williams teaches the creation of an ontological
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classification system. Implicitly, all of the transaction data not classified as
“vacation transaction data” reasonably constitutes “ordinary transaction
data.” This distinction is so regardless of either the fact that Williams
creates additional classifications (see, e.g., Williams Fig. 2 (depicting Italian
food preference C, 208). The distinction also is not negated by whether
some transaction data potentially can fall simultaneously within both the
travel (or vacation) classification 206 and the Italian food classification 208.
II.
Appellant further argues as follows:
The rejection is further deficient because Williams is also silent
regarding any correlation of (i) data patterns from the ordinary
transaction data with (ii) vacation characteristics from the
vacation transaction data. Williams only once mentions
“correlation” (Williams, paragraph [0117]), but only with respect
to identifying an issuer or owner of the data. Williams does not
teach or suggest any correlation with respect to the type of data,
or more particularly, the correlation of the processing results
from one type of data with the processing results from the other
type of data.
Appeal Br. 19 (emphasis omitted).
As noted above, the Examiner relies upon Winters for teaching the
general proposition of correlating different classes of transaction data and
upon Williams only for teaching that one class of data more specifically can
be “vacation characteristics.” Final Act. 9–10, 12, 14. Appellant only
argues that Williams fails to teach the correlation recited in claim element
(v). Appeal Br. 19. Appellant does not dispute the Examiner’s assertion
that Winters teaches correlating transaction data or the Examiner’s assertion
that Williams teaches “vacation characteristics.” Id. As Appellant’s
argument fails to address the combination of references applied in the
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obviousness rejection, this argument is not persuasive. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
III.
Appellant further argues the Examiner’s motivation to combine:
[T]he rejection merely asserts that it is obvious to combine
Winters with Williams . . . . The rejection does not cite to any
teaching or suggestion from the references themselves or any
other incentive that supports this conclusory opinion. That is,
neither the references themselves nor any other source teaches or
suggests that the proposed combination would achieve any such
result as asserted. This proposed motivation is therefore, by
definition, based only on the Examiner’s own personal opinion.
Appeal Br. 20 (internal citations omitted).
Appellant’s argument is not persuasive. The Examiner recites a
motivation to combine the cited references as to “enable the advertiser[] to
tailor the most . . . suitable vacation advertisements/vacation options to the
user.” Ans. 36. Winters teaches that generating a user profile generally,
improves audience targeting for advertisements. Winters ¶ 90. As Williams
teaches a user profile that has the benefit of providing tailored content
related specifically to travel (Williams ¶¶ 43, 68), one of ordinary skill in the
art would find sufficient motivation to combine these references because
travel or vacation is one type of known data that can be profiled.
For these reasons, we sustain the obviousness rejection of claim 1.
We, likewise, sustain the obviousness rejection of claims 3–5, 7, 8, 10–12,
14, 15, and 17–19, which Appellant does not argue separately. Appeal Br.
17–21.
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IV.
Dependent claim 6 reads as follows:
6. The method of Claim 1, further comprising: determining a
cardholder vacation budget associated with the at least one
vacation option.
The Examiner finds the combination of Winters and Williams does
not teach the additional limitation of dependent claim 6, but relies on Gray
for teaching this language. Final Act. 19–20. The Examiner reasons “[o]ne
would [have been] motivated to [incorporate the teaching of a vacation
budget in Gray] in order to provide a vacation package[] that may be suitable
to the user . . . for the purpose of increasing vacation advertisements’
effectiveness.” Id. at 20 (citing Gray ¶ 40).
Appellant argues that the Examiner’s proposed motivation to combine
Winters, Williams, and Gray is insufficient:
[Gray ¶ 40] provides no direction to the person of ordinary skill
in the art for how or why the disclosure of Gray can and should
be implemented in combination with the other two references as
proposed, or with respect to any of the modifications to the
several references that would be required to implement the
proposed combination.
Appeal Br. 21–22.
We disagree and determine the Examiner’s statement of motivation to
be sufficient. As explained above in relation to claim 1, the combination of
Winters and Williams teaches or suggests a method for recommending
vacation options based upon historical vacation data from a payment
network. The cited paragraph of Gray discloses that vacation
recommendations can be based upon various preferences that include
budget, as well as vacation destination and preferred activities. Gray ¶ 40.
As such, one of skill in the art, in looking at the combination of Winters and
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Williams, would recognize the advantage of presenting offers that are within
a user’s budget, as taught by Gray, would increase vacation advertising
effectiveness because inclusion of this additional factor merely would
constitute combining prior art elements according to known methods to yield
predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007);
see also MPEP § 2143 A.
Accordingly, we sustain the obviousness rejection of claim 6. We,
likewise, sustain the obviousness rejection of claims 13 and 20, which
Appellant does not argue separately. Appeal Br. 21–22.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3–8, 10–15,
17–20
101 Patent-ineligible
subject matter
without reciting
significantly
more
1, 3–8, 10–
15, 17–20

1, 3–5, 7, 8, 10–
12, 14, 15, 17–
19
103 Winters,
Williams
1, 3–5, 7,
8, 10–12,
14, 15, 17–
19

6, 13, 20 103 Winters,
Williams, Gray
6, 13, 20
Overall
Outcome
1, 3–8, 10–
15, 17–20

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED