MasterCard International Incorporated

Patent Trials and Appeals Board

Nov 8, 2019

14457831 - (D) (P.T.A.B. Nov. 8, 2019)

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.
14/457,831 08/12/2014 Kenny Unser P01331-US-
UTIL (M01.282)
5871
125619 7590 11/08/2019
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
11/08/2019 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNY UNSER, JEAN-PIERRE GERARD, and
KENT OLOF NIKLAS BERNTSSON
____________________

Appeal 2019-000411
Application 14/457,8311
Technology Center 3600
____________________
Before J. JOHN LEE, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–8, which are all of the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Mastercard
International Incorporated. Appeal Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed July 2, 2018
(“Appeal Br.”); Appellant’s Reply Brief filed October 19, 2018 (“Reply
Br.”); Examiner’s Answer mailed August 23, 2018 (“Ans.”); and Final
Office Action mailed November 2, 2017 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Claims 1 and 5 are independent claims. Claim 1 is reproduced below
with bracketed lettering added for discussion purposes:
1. A computerized method comprising:
[a] receiving a first data set, the first data set including a
plurality of location and time profiles, each of said profiles
corresponding to a respective individual represented in the first
data set and representing movements by said respective
individual;
[b] receiving a second data set, the second data set
including a plurality of transaction profiles, each of said
transaction profiles corresponding to a respective account holder
represented in the second data set, each of the transaction profiles
reflecting payment card account transactions by the respective
account holder who corresponds to each said transaction profile;
said payment card account transactions each represented by data
that includes time stamp data and location data;
[c] analyzing said first and second data sets to propose
matches of said location and time profiles with said transaction
profiles;
[d] assigning a respective score to each of said proposed
matches, said respective scores indicating a degree of confidence
as to whether a respective proposed match is correct;
[e] said analyzing and assigning scores including, for each
of said location and time profiles, determining first percentages
for each said location and time profile, each of said first
percentages being a percentage of data elements in each said
location and time profile that are represented in a respective one
of said transaction profiles; and
[f] said analyzing and assigning scores including, for each
of at least some of said transaction profiles, determining a second
percentage for each said transaction profile, said second
percentage being a percentage of transactions in each said
transaction profile that are represented in a proposed matching
one of said location and time profiles.
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REFERENCES
Name Reference Date
Ben Harush US 2008/0162580 A1 July 3, 2008
Colligan US 2010/0161720 A1 June 24, 2010
Liebmann US 2013/0204690 A1 Aug. 8, 2013
Burcham US 2015/0074204 A1 Mar. 12, 2015

REJECTIONS
Claims 1–8 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–4.
Claims 1, 2, 4–6, and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burcham, Colligan, and Ben Harush. Id. at 4–9.
Claims 3 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burcham, Colligan, Ben Harush, and Liebmann. Id. at 9.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
the following implicit exceptions: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In Alice, the Supreme Court set forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). The first step in the analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts.” Id. at 217. If the claim is “directed to” an abstract
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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.” Id. at 221.

USPTO January 7, 2019 Revised Section 101 Memorandum
The USPTO published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“January 2019 Guidance”). Under the January 2019
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity 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)).
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, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.

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ANALYSIS
35 U.S.C. § 101
Appellant argues all the pending claims as a group, stating that “[a]ll
of the pending claims shall stand or fall together,” and specifically
addressing the limitations of claim 1. Appeal Br. 7. Accordingly, we select
independent claim 1 as representative of Appellant’s § 101 arguments for all
claims. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines claim 1 is directed to a judicial exception
because the claimed subject matter recites an abstract idea. Final Act. 2–4;
Ans. 3–5. The Examiner also determines claim 1 does not recite any
additional elements that provide significantly more than the recited judicial
exception. Final Act. 4; Ans. 5–6.
Appellant presents several arguments against the § 101 rejection. The
Examiner has provided a full response to Appellant’s arguments. See
Ans. 3–6. We do not find Appellant’s arguments persuasive, as discussed in
greater detail below. We analyze the claims under the January 2019
Guidance and adopt the nomenclature for the steps used in the January 2019
Guidance.3

Step 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to

3 Our analysis applies the January 2019 Guidance as clarified by the most
recent guidance from the Office. See October 2019 Patent Eligibility
Guidance Update, referenced at 84 Fed. Reg. 55942–43 (October 18, 2019).
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the conditions and requirements of this title.” 35 U.S.C. § 101. Independent
claim 1 recites a method. As such, the claim is directed to a statutory class
of invention within 35 U.S.C. § 101, i.e., a process.
Step 2A Prong 1
Under Step 2A, Prong 1 of the January 2019 Guidance, we must
determine whether claim 1, being directed to a statutory class of invention,
nonetheless falls within a judicial exception.
The Examiner determines that claim 1 recites an abstract idea,
specifically, steps in “a mental process (thinking) that ‘can be performed in
the human mind, or by a human using a pen and paper.’” Final Act. 2–3; see
also Ans. 3. The Examiner characterizes the recited steps in the mental
process as steps for “collecting and comparing,” or analyzing, “known
information.” Final Act. 3–4. We agree with the Examiner.
Appellant argues the “claim concept identified by the Examiner” is
“computer-related” and should be “deemed a non-abstract concept relating
to the data processing arts.” Appeal. Br. 8. Appellant asserts that the
claimed method “would never be performed except by computer.” Appeal
Br. 7 (emphasis omitted).
We are not persuaded. Both the Examiner and Appellant characterize
claim 1 as directed to a process for analyzing information, i.e., “data
analytics” (Appeal Br. 7; Reply Br. 2) or “collecting data [and] analyzing it”
(Ans. 4; see also Final Act. 2–3). However, contrary to Appellant’s
assertions that the claim is a computer-specific technique, the claimed steps
of collecting and analyzing information describe a mental process, as
identified by the Examiner. The Specification supports the Examiner’s
determination that the claimed steps recite a mental process, e.g.,
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observations, evaluations, judgements, and opinions. In particular, the
Specification states that the focus of the claimed invention is to analyze
payment card transaction data in conjunction with location profiles in order
to “lead to possible or likely identities for an unknown individual.”
Spec. 1:17–22. That is, the goal of the claimed method is to identify an
unknown person. For example, the Specification describes that the claimed
method can be used by law enforcement to identify unknown individuals.
Id. at 1:6–10. To achieve that stated goal, the Specification discloses a
process of analyzing information about the unknown individual’s
movements, i.e., the time and location of the unknown individual, with the
financial transaction information of account holders. Id. at 4:4–14, 5:27–31,
6:17–18. For example, law enforcement first has information regarding the
“location and time/date information about [an unknown] suspected
wrongdoer (e.g., times and locations of crimes committed by the [unknown]
individual).” Id. at 9:13–16. Based on the crimes’ locations and times,
additional information may be obtained about “payment cardholders whose
patterns of payment card transactions may place them at the known or
suspected past locations [of the crimes] and the known or suspected times of
the suspect’s presence there.” Id. at 9:16–19. That is, the Specification
describes that a suspect for a crime can be identified by correlating the time
and location of the crime with a financial transaction that places a particular
individual at the time and location of that crime. Indeed, detectives have
long identified potential suspects by placing the potential suspects at the
location of a crime at the time of the crime, e.g., by asking a potential
suspect “Where were you the night the of the crime spree?” Such a
correlation is a mental process because it describes a process of evaluating
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and matching information, namely, time and location information, which
humans can perform in their minds.
Claim 1 reflects the mental process described by the Specification.
Limitations [a] and [b] recite steps to collect data that will be used in the
ultimate evaluation. In particular, limitation [a] describes “a first data set”
which identifies the locations, and respective times at the locations, of an
unknown individual (who is to be identified). Limitation [b] describes “a
second data set,” which includes respective transaction profiles (indicating
the time and location of financial transactions) of known account holders.
Identifying and collecting relevant information for an analysis or evaluation
is a typical step in any mental process. Limitation [c] broadly recites
analyzing data by matching the unknown individual’s locations at specific
times with account holder transaction profiles that identify the time and
location an account holder performs a transaction. Matching sets of
information is a process that can be performed in the human mind.
Limitations [d]–[f] recite a process for evaluating how likely, i.e., correct, a
known account holder is the unknown individual. In particular, limitation
[d] describes indicating confidence in a match between account holder and
unknown individual based on evaluations described in limitations [e] and [f].
Limitations [e] and [f] determine the degree of overlap between the locations
and times of the unknown individual with the locations and times for a
particular account holder’s transactions. Determining accuracy based on the
degree of correlation between data is an evaluation that can be performed in
the mind or on pen and paper. Accordingly, claim 1 recites steps in a mental
process and, thus, recites an abstract idea.
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Step 2A Prong 2
Next, we determine whether claim 1 is directed to the abstract 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. See, e.g., Alice, 573 U.S. at 223 (discussing Diamond
v. Diehr, 450 U.S. 175, 177 (1981)).
The Examiner determines that “the claimed steps are simply . . .
applied on a computer without yielding any technology or computer
functionality improvement.” Ans. 3. We agree with the Examiner.
Appellant argues that the claim 1 provides “an improvement in the
technical field of data analytics” (Appeal Br. 7) and an “improvement in a
branch of the field of computerized data analytics” (Reply Br. 2).
Appellant’s arguments do not persuade us that the claim integrates the
abstract idea into a practical application by improving a computer
technology or providing a technical solution to a technical problem. As
discussed above, the problem identified by the Specification is a problem in
identifying an unknown individual. Spec. 1:6–10 (“[L]aw enforcement
authorities may lack the name of an individual suspected of
wrongdoing . . . . It would be desirable in such situations if the authorities
could gain leads as to the individual’s identity.”); see id. at 1:11–16, 14:21–
26. Identifying an unknown individual is not a problem specific to
computers or computer-related-technology. Further, as described above, the
solution to that problem evaluates information by finding matches between
location and time data. And, as described above, such a solution
encompasses a mental process, in which a human matches sets of time and
location data to identify potential individuals. As such, the alleged improved
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technique for identifying an individual is an improvement to the abstract
idea rather than an improvement to computer technology.
Furthermore, the single mention of a computer is in the preamble,
which recites a “computerized method” comprising the steps of the mental
process discussed above. The remainder of the claim does not specify any
features specific to a computer or to computer functionality.
Additionally, none of the remaining indicia of integration listed by the
January 2019 Guidance is present in claim 1. For example, the claim does
not recite a particular machine and, instead, generically recites a
“computerized method.” Nor does the claim recite the “[t]ransformation and
reduction of an article ‘to a different state or thing.’” Bilski v. Kappos, 561
U.S. 593, 604 (2010) (emphasis added); MPEP § 2106.05(c). Claim 1’s
method does not transform a physical object or substance. In this way, the
claim is unlike the transformations found in some eligible claims. See, e.g.,
Diehr, 450 U.S. at 184 (a process that transforms rubber).
Accordingly, claim 1 is directed to the identified abstract idea,
specifically a mental process.

Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73).
The Examiner determines that the preamble’s recitation of a
“computerized method” does not add significantly more than the judicial
exception. Ans. 5–6; Final Act. 4. We agree with the Examiner.
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Appellant argues that there is “no basis in the record for concluding
that the additional claim elements/combination do not amount to
‘significantly more’ than the ‘abstract idea’ allegedly recited in the claims.”
Appeal. Br. 8. That is, Appellant argues the Examiner does not make
“findings of fact as to each additional claim limitation, and to the
combination of claim elements, as required by Berkheimer.” Reply Br. 2–3
(citing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018)).
We are not persuaded. Initially, Appellant has not identified the
“additional claim elements” to which it refers. See Appeal Br. 8; see also
Reply Br. 2–3. We decline to speculate as to what particular claim
limitations Appellant considers “additional claim elements.” Further, the
only claim language the Examiner does not identify as part of the abstract
mental process is the preamble’s recitation of a “computerized method.”
Ans. 5; see Final Act. 3. As the Examiner finds, the Specification itself
discloses that the computerized method is implemented using a
“conventional computer.” Ans. 5 (citing Spec. 7:7–8:21, Fig. 3). Indeed,
the Specification states a “profile matching computer 302 may be
conventional in its hardware aspects” and then describes common computing
components executing software as expected. Spec. 7:7–8:13.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is
representative of the independent claims, we conclude that independent
claim 5 also does not recite patent-eligible subject matter. Further,
Appellant has not proffered sufficient evidence or argument to persuade us
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that any of the limitations in dependent claims 2–4 and 6–8 provide a
meaningful limitation that transforms the claims into a patent-eligible
application. See Appeal Br. 7. Therefore, we sustain the rejection of
claims 1–8 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.

35 U.S.C. § 103
Appellant argues the Examiner erred in finding the combination of
Burcham, Colligan, and Ben Harush teaches
said analyzing and assigning scores including, for each of
said location and time profiles, determining first percentages for
each said location and time profile, each of said first percentages
being a percentage of data elements in each said location and
time profile that are represented in a respective one of said
transaction profiles; and
said analyzing and assigning scores including, for each of
at least some of said transaction profiles, determining a second
percentage for each said transaction profile, said second
percentage being a percentage of transactions in each said
transaction profile that are represented in a proposed matching
one of said location and time profiles,
as recited in claim 1 and similarly recited in claim 5. Appeal Br. 10–11;
Reply Br. 3. Specifically, Appellant argues the Examiner “fail[s] to cite any
prior art” teaching the disputed limitations. Appeal Br. 10; see also Reply
Br. 3.
We are persuaded the Examiner erred. The Examiner does not find
that any cited reference teaches or suggests the disputed limitations. See
Final Act. 8, 14; Ans. 7. Instead, the Examiner finds that the limitations “are
simply based on mathematical relationship[s] and a person of ordinary skill[]
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in the art would know how to determine these [claimed] percentages based
on the available data.” Final Act. 8; see also id. at 14; Ans. 7.
As an initial matter, we disagree with the Examiner that the recited
limitations “do not further narrow the scope of the claim” because the
“limitations are simply restating the data in an alternative way.” Final
Act. 8, 14; Ans. 7. Claim 1 recites a method including steps of “determining
first percentages for each said location and time profile” and “determining a
second percentage.” Although the steps recite a process of evaluating and
manipulating data, that process is affirmatively recited, e.g., “determining
first percentages” and “determining a second percentage” using time and
location data, and, so, the claim requires those steps to be performed.
Furthermore, the Examiner has not provided the requisite rationale
explaining why the recited mathematical evaluations, i.e., the determined
percentages claimed, would have been obvious or why a skilled artisan
would have been motivated to determine those percentages. See Final
Act. 8, 14; Ans. 7. Because the Examiner’s obviousness conclusion is not
supported by articulated reasoning supported by rational underpinning, we
determine the Examiner erred in finding the combination of Burcham,
Colligan, and Ben Harush teaches
said analyzing and assigning scores including, for each of
said location and time profiles, determining first percentages for
each said location and time profile, each of said first percentages
being a percentage of data elements in each said location and
time profile that are represented in a respective one of said
transaction profiles; and
said analyzing and assigning scores including, for each of
at least some of said transaction profiles, determining a second
percentage for each said transaction profile, said second
percentage being a percentage of transactions in each said
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transaction profile that are represented in a proposed matching
one of said location and time profiles
as recited in claim 1 and similarly recited in claim 5.
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments. See
Appeal Br. 9–10; Reply Br. 3. Dependent claims 2–4 and 6–8 stand with
their respective independent claims. Therefore, we do not sustain the
rejections of claims 1–8 under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–8 101 Eligibility 1–8
1, 2, 4–6, 8 103 Burcham, Colligan,
Ben Harush
1, 2, 4–6,
8
3, 7 103 Burcham, Colligan,
Ben Harush,
Liebmann
3, 7
Overall
Outcome
1–8

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.
§ 41.50(f).
AFFIRMED