Patrick Lee. Faith et al.

Patent Trials and Appeals Board

Nov 1, 2019

12757461 - (D) (P.T.A.B. Nov. 1, 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.
12/757,461 04/09/2010 Patrick Lee Faith 80083-793554(079000US) 2759
66945 7590 11/01/2019
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK LEE FAITH, MARK STEVEN CARLSON, and
KRISHNA P. KOGANTI
____________

Appeal 2019-002817
Application 12/757,461
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims1. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as VISA
U.S.A. Inc. Appeal Br. 3.
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THE INVENTION
Appellant states, “[t]he present invention relates to a data processing
system, and more particularly to a system for managing tailored marketing
to users of wireless devices adapted to wirelessly access a computer
network.” Spec. ¶ 1.
Claim 1 is representative of the subject matter on appeal.
1. A system for managing tailored marketing to users of wireless
devices adapted to wirelessly access a computer network, comprising:
a user database storing a plurality of user records, each
user record initially storing a user identifier and a device
identifier that identifies a wireless device of a user;
a management module executable by a processor, the
management module being adapted to:
transmit marketing information including a unique code
to a selected wireless device while the selected wireless device
is playing media content, the marketing information causing the
selected wireless device to display the marketing information,
the marketing information and the unique code being
transmitted to the selected wireless device while the user record
associated with the selected wireless device contains the user
identifier and the device identifier of the selected wireless
device but does not contain any financial account identifier
associated with the user of the selected wireless device,
and the unique code uniquely identifying the marketing
information transmitted to the selected wireless device from
other marketing information transmitted by the management
module;
store the unique code in the user record that contains the
device identifier identifying the selected wireless device;
receive a transaction authorization request for obtaining
authorization to perform a financial transaction in response to
the marketing information transmitted to the selected wireless
device, the transaction authorization request containing the
unique code that was transmitted with the marketing
information and a financial account identifier that is not part of
the user record associated with the device identifier of the
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selected wireless device when the marketing information was
transmitted to the selected wireless device;
query the user database using the received unique code to
determine the user record that contains the unique code;
link the financial account identifier to the selected
wireless device by adding the received financial account
identifier that was previously not part of the user record into the
determined user record after receiving the transaction
authorization request that includes the unique code;
obtain, via the stored financial account identifier, user
information about the user of the selected wireless device;
generate, based on the obtained user information,
multiple tailored marketing information for transmission to the
selected wireless device; and
track usage of the multiple tailored marketing
information transmitted to the selected wireless device in a
usage field of the user record that is associated with the selected
wireless device, the usage field having a value indicating a
number of times that the financial account identifier has been
used to perform a financial transaction in response to the
multiple tailored marketing information transmitted to the
selected wireless device.
Appeal Br. 18–19.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Mankoff US 2003/0028518 A1 Feb. 6, 2003
Kirkland US 2005/0033850 A1 Feb. 10, 2005
Silhavy US 2005/0108521 A1 May 19, 2005
Amjadi US 2007/0174259 A1 July 26, 2007
Logan US 2008/0097632 A1 Apr. 24, 2008
Lin US 2010/0121697 A1 May 13, 2010

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The following rejections are before us for review.
Claims 1-11, 14-39 and 41-43 are rejected under 35 U.S.C. § 101.
Claims 1–3, 6, 8–10, 14–16, 18, 20–28, 31, 33–35, 37–39, 41, are
rejectedunder 35 U.S.C. § 103(a) as being unpatentable over Mankoff (US
2003/0028518 A1) further in view of Logan (US 2008/0097632 A1) further
in view of Official Notice. Final Act. 4.
Claims 4, 7, 19, 29, 32 and 43 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mankoff, in view of Logan, in view of Official
Notice and further in view of Kirkland (US 2005/0033850 A1). Final Act 9.
Claims 5, 17, and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mankoff in view of Logan in view of Official Notice and
further in view of Amjadi (US 2007/0174259 A1). Final Act 10.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–4 in the
Final Office Action2 and on pages 3–5 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–11, 14–39 and 41–43 under
35 U.S.C. § 101.
The Appellant argues independent claim 1 as representative (Appeal
Br. 8), thus making claim 1 the representative independent claim for this

2 All references to the Final Office Action refer to the Final Office Action
mailed on April 23, 2018.
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group (independent claims 1, 16 and 26), and so the remaining claims and
the claims which depend thereon stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. 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.”).
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
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(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 (1854))); 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
Supreme 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 176; 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 Supreme 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. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. 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.”).
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 (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,
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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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 Manual of Patent Examining
Procedure (“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, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
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or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] 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.” Guidance at
53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states, “it would be desirable to provide a system
and method for more effectively sending marketing information which are
tailored to individual users of the wireless devices.” Spec. ¶ 5. The
Specification further states:
However, persons of ordinary skill in the art will appreciate that
the novel features disclosed herein apply to all types of
marketing information including, but not limited to, special
sales, promotions, brand awareness building or the like. In
addition, persons of ordinary skill in the art will appreciate that
instead of a credit card, any type of a financial presentation
device can be used to perform a financial transaction with a
merchant. A financial presentation device is a device that can
be presented to a seller of goods or services for payment, and
includes, but are not limited to, credit cards, debit cards, prepaid
cards, electronic benefit cards, charge cards, virtual cards, smart
cards, key chain devices, personal digital assistants, cell
phones, and stored value devices.
Spec. ¶ 19.
The preamble describes claim 1 as being “for managing tailored
marketing to users of wireless devices.” Claim 1.
Understood in light of the Specification, claim 1, recites, in pertinent
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part,
a user database storing a plurality of user records, each user
record initially storing a user identifier and a device
identifier…; …transmit marketing information including a
unique code to a selected wireless device while the selected
wireless device is playing media content, the marketing
information causing … display [of] the marketing information,
the marketing information and the unique code being
transmitted…while the user record associated with the selected
wireless device contains the user identifier and the device
identifier of the selected wireless device but does not contain
any financial account identifier associated with the user of the
selected wireless device, and the unique code uniquely
identifying the marketing information transmitted… from other
marketing information transmitted…; store the unique code in
the user record that contains the …identifier…; receive a
transaction authorization request for obtaining authorization to
perform a financial transaction in response to the marketing
information transmitted…, the transaction authorization request
containing the unique code that was transmitted with the
marketing information and a financial account identifier that is
not part of the user record associated with the device
identifier… when the marketing information was transmitted to
the selected wireless device; query the user database using the
received unique code to determine the user record that contains
the unique code; link the financial account identifier …by
adding the received financial account identifier that was
previously not part of the user record into the determined user
record after receiving the transaction authorization request that
includes the unique code; obtain, via the stored financial
account identifier, user information about the user…; generate,
based on the obtained user information, multiple tailored
marketing information …; and track usage of the multiple
tailored marketing information …in a usage field of the user
record that is associated with the selected wireless device, the
usage field having a value indicating a number of times that the
financial account identifier has been used to perform a financial
transaction in response to the multiple tailored marketing
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information transmitted to the selected wireless device.

Thus, the Examiner found the claims are for “obtaining financial
account identifier by transmitting a marketing information.” Final Act. 2.
The Examiner then determined that the claims are similar to:
‘collecting information, analyzing it and displaying certain
results of the collected [] analysis’ (Electric Power Group) as
described in the steps ‘storing records ... , transmitting code ... ,
receiving code and financial account. … , querying user
database ... , storing identifier in a user record ... , obtaining
financial account. … , tracking usage’.
‘tailoring content based on information about the user’ (Int.
Ventures v. Capital One Bank) as described in the steps
‘transmitting marketing information … , generating tailored
marketing information and tracking the marketing information’.
Id. at 3.
Based on the Examiner’s findings and the intrinsic evidence set forth
above, we find that claim 1 is directed to collecting information, analyzing it
and displaying certain results of the collected analysis using a unique code
to associate one information with another because claim 1, at the least,
requires, “link the financial account identifier to the selected wireless device
by adding the received financial account identifier that was previously not
part of the user record into the determined user record after receiving the
transaction authorization request that includes the unique code.” Such
association of information using an identifier and a unique code is a mental
process. These steps mimic human thought processes of selecting certain
information over others, i.e., evaluation, and creating perhaps with paper and
pencil, graphic data interpretation perceptible only in the human mind. See
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). The Federal Circuit has held similar concepts to be abstract. Thus,
for example, the Federal Circuit has held that abstract ideas include the
concepts of collecting data, analyzing the data, and reporting the results of
the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340–41 (Fed. Cir. 2017) (identifying the abstract idea of organizing,
displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas). Thus, under the first prong, claim 1 recites the patent ineligible
judicial exception of at least a mental process. See Guidance, 84 Fed. Reg.
at 52.
In addition, we find that, because the claim also covers “generate,
based on the obtained user information, multiple tailored marketing
information,” and “receive a transaction authorization request for obtaining
authorization to perform a financial transaction,” claim 1 also is directed to a
commercial and legal interaction. Generating multiple tailored marketing
information based on user input is similar to the concepts of customizing
information based on known user information in Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir. 2015) and
customizing a user interface based on user selections in Affinity Labs of
Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016).
Commercial transactions even those which narrow “long-familiar
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commercial transactions do[] not make the idea non-abstract for section 101
purposes.” buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014). Accordingly, claim 1 is also directed to a commercial and legal
interaction. Commercial or legal interactions are certain forms of methods
of organizing human activities, which is a judicial exception that falls within
the purview of the abstract ideas articulated in the recent Guidance.
Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a wireless device,” “a processor” and “a computer
network.” These components are described in the Specification at a high
level of generality. See Spec. ¶¶ 19 and 20, Figs. 1, 2. We fail to see how
the generic recitations of these most basic computer components and/or of a
system so integrates the judicial exception as to “impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance 84 Fed.
Reg. at 53. We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing.
Thus, we find that the claims recite the judicial exceptions of a mental
process and commercial or legal interactions that are not integrated into a
practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to tailored marketing data, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015) (“And that the claims do not preempt all price optimization or may be
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limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found,
Furthermore, there is no improvement to another technology or
technical field, no improvements to the functioning of the
computer itself, and no meaningful limitations beyond
generally linking the use of an abstract idea to a particular
technical environment, and the claims require no more than a
generic computer to perform generic computer functions that
are well understood, routine and conventional. Therefore,
based on the two-part Alice Corp. analysis, there are no
meaningful limitations in the claims that transform the
exception (i.e., abstract idea) into a patent eligible application.
(Final Act. 3–4).
We agree with the Examiner. “[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 to transmit, store, receive, query, link, track and apply decision
criteria to data amounts to electronic data query and retrieval—one of the
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most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. The claims do not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not affect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios (see, e.g., Spec.
¶¶ 19 and 20, Figs. 1, 2). Thus, the claims at issue amount to nothing
significantly more than instructions to apply the abstract idea 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 226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (to transmit,
store, receive, query, link, track and apply decision criteria to data amounts)
and storing is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
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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) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a fundamental economic practice
and a commercial or legal interaction 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.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 7–13, Reply Br. 2–5). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
Under Part II of the subject matter eligibility analysis, page 3 of
Final Office Action asserts that ‘the abstract idea of preparing
data, calculating data, separating data, building predictive
models, choosing predictive models, predicting results,
communicating budget allocations, bidding and adjusting, etc.
by a computer and has not been applied in an eligible manner.’
However, none of the pending claims recite these functions.
App. Br. 8 (emphasis omitted).
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Based on the record before us, we determine that fundamentally, the
Examiner correctly determined that “[t]he applicant[’s] claimed invention is
for obtaining financial account identifier by transmitting a marketing
information” (Final Act. 2), and the Examiner found:
Under Part I, in the instant case, the independent claims
includes the steps storing user records, transmitting marketing
information and code, storing code, receiving a request,
querying database, linking account identifier with a user record,
obtaining user information, generating tailored marketing
information, tracking usage of marketing information.
Id. Thus, in the Part I analysis, the Examiner stated the correct claim 1
language appurtenant to the “directed to” subject matter. Our analysis above
confirms that the Part I Alice analysis was done correctly. In our view, that
the Examiner does not carry forward the same abstract idea claim language
into the Part II analysis does not constitute error because it is clear from the
record what that language is. The language which Appellant finds
problematic appears to be the Examiner’s generalization of mental step
characteristics in the Part II analysis. But, the Examiner’s characterization
of what abstract idea is clearly set forth in the Part I analysis. In essence, the
operative and required language in the Examiner’s Part II finding is “the
abstract idea [] has not been applied in an eligible manner.” (Final Act. 3)
Citing to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016) and McRO v. Bandai Namco Games America, 837 F.3d 1299 (Fed.
Cir. 2016), Appellant argues, “Appellant disagree[s] that the claims are
patent ineligible just because the claim limitations can be performed by a
generic computer.” (Appeal Br. 8).
We disagree with Appellant because the question under McRO is
whether the claims as a whole “focus on a specific means or method that
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improves the relevant technology” or are “directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, 837 F.3d at 1314. In this case, claim 1 as a whole, is
focused on satisfying certain contingencies for extracting selected data in to
a financial transaction and tracking usage of the multiple tailored marketing
information using an assigned identifier, and not a particular way of
programming or designing the software or a computer circuit. In other
words, nothing in claim 1 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
573 U.S. at 225.
We also disagree with Appellant that under the holding in Enfish our
decision would be different. (Appeal Br. 8). Appellant’s argument that its
claims are directed to an improvement in computer technology like that of
claim 17 in Enfish and therefore are patent eligible. In Enfish, the invention
at issue was directed at a wholly new type of logical model for a computer
database: a self-referential table that allowed the computer to store many
different types of data in a single table and index that data by column and
row information. Enfish, 822 F.3d at 1330–32. In finding the claims “not
directed to an abstract idea,” but “to a specific improvement to the way
computers operate,” the Federal Circuit noted that “the claims are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database.” Enfish, 822
F.3d at 1336–37 (emphasis in original). We find nothing in the claims
before us arising to this level of technical improvement in the claimed “user
database,” “management module” and “wireless device,” which arises to the
level of technical proficiency as found in Enfish.
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Concerning Appellant’s citation to Ex Parte Barous, Appeal No.
2016-003320 of App. No. 10/397,778 (PTAB Aug. 1, 2016) (Appeal Br. 9,
10), we are not bound by a non-precedential decision of another panel of the
Board.
Appellant further argues, “even if each individual limitation is a
generic computer function, the claims must also be considered as an ordered
combination.” (Appeal Br. 10).
First, as found above, we find no evidence that the ordering of the
steps is anything but ordinary and conventional. Second, although we agree
with Appellant that the claims must be read, as a whole, we nevertheless
find, on balance, that claim 1 is directed to extracting selected data in a
financial transaction and tracking usage of the multiple tailored marketing
information using an assigned identifier, for the reasons specified above with
respect to our “directed to” findings. As found supra, claim 1 only includes
the following generically recited device limitations: “user database,”
“processor,” “management module” and “wireless device.” What remains in
the claim after disregarding these device limitations, are abstractions, i.e.,
transmit marketing information including a unique code, obtain, via the
stored financial account identifier, user information about the user, track
usage of the multiple tailored marketing information. “A 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) (citing Mayo, 566 U.S. at 90).
To the extent Appellant is arguing that these additional elements constitute
an inventive concept, such features cannot constitute the “inventive
concept.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Moore, J., concurring) (“It is clear from Mayo that the ‘inventive concept’
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cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible because
the only alleged ‘inventive concept’ is the abstract idea.”); see also BSG
Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“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.”).
Citing to Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir.
2018), Appellant argues,
The Final Office Action provided no evidence to support how
the claim limitations individually or as an ordered combination
are routine and conventional, and the cited art, as discussed
further below, is deficient as failing to show that the
combination of the claimed features were known.
(Appeal Br. 10).
We disagree with Appellant. In Berkheimer, the Federal Circuit made
clear that “not every § 101 determination contains genuine disputes over the
underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881
F.3d 1360, 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer
did not require evidentiary support for independent claim 1 because “[t]he
limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
Appellant lists various claim limitations in support of its “significantly
more” argument without providing evidence that they are improvements in
the computer technology. (Appeal Br. 11–12). As found above, we find that
considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
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considered separately. The Appellants do not provide adequate evidence to
the contrary. See Br. 11–12. And there is no further specification of
particular technology for performing the steps. See Affinity Labs of Texas,
LLC, 838 F.3d at 1263; see also Enfish, 822 F.3d. at 1336 (focusing on
whether the claim is “an improvement to the computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.”)
Appellant next argues,
In contrast to conventional techniques, at the time when the
marketing information is first transmitted to the wireless device
in claim 1, little is known about the user, and the marketing
information is NOT targeted with personal information about
the user. To provide the system with user information such that
subsequent marketing information can be tailored to the
particular user, the non-targeted marketing information includes
a unique code.
(Appeal Br. 12).
We disagree with Appellant. The concept of targeted marketing is
itself an abstract idea. Matching consumers with a given product or service
“has been practiced as long as markets have been in operation.” Tuxis
Techs., LLC v. Amazon.com, Inc., No. CV 13–1771–RGA, 2014 WL
4382446, at *5 (D. Del. Sept. 3, 2014); see also OpenTV, Inc. v. Netflix Inc.,
76 F.Supp.3d 886, 893 (N.D. Cal. 2014) (“The concept of gathering
information about one’s intended market and attempting to customize the
information then provided is as old as the saying, ‘know your audience.’”).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s determination of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 1–11, 14–39, 41–43.
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35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 16, and 26 requires, in one form or
another, “receiv[ing] a transaction authorization request for obtaining
authorization to perform a financial transaction in response to the marketing
information transmitted to the selected wireless device, the transaction
authorization request containing a financial account identifier that is not part
of the user record associated with the device identifier of the selected
wireless device when the marketing information was transmitted to the
selected wireless device.”
Appellant argues the following:
Appellant is also unable to identify which portion of claim 1
recites optional features that need not be performed, because
claim 1 does not recite any optional language such as ‘can,’
‘or,’ etc. Furthermore, Appellant disagrees that whether the
financial account identifier is part of the user record or not does
not affect the structure of the system. For example, a database
that does not contain the financial account identifier as part of
the user record would take up less computer memory than a
database that does store the financial account identifier. Thus,
the presence of the financial account identifier does affect the
structure of the system. Moreover, when claim 1 is considered
as an ordered combination as a whole, it is the presence of the
financial account identifier that enables the tailored marketing
information to be generated. Thus, whether the financial
account identifier is being stored in the user record of the
database affect the system’s ability to generate tailored
marketing information, and goes to the essence of the claimed
technique. As such, Appellant submits that this limitation
cannot be simply ignored, and the rejection under 35 U.S.C.
103 should be reversed for at least these reasons.
(App. Br. 14–15).
The Examiner found, concerning these limitations that Matotek
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discloses, the following:
The claim does not recite additional step that need to be
performed, beside the step of receiving an authorization request
containing a code and a financial account identifier, that would
differentiate the claim from the prior art. Whether the financial
account identifier used for the transaction (any type of payment
method such as credit card, debt card, prepaid card etc.) is part
of a user record (in a database) does not change the use of a
payment account for a transaction or the request of the
authorization for a transaction. The prior art performs the
identified function in substantially the same way and produces
substantially the same result as the corresponding elements i.e.
receiving a financial account identifier (for a transaction) and
receiving an authorization request (including the account
identifier).
(Answer 4–5).
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
We begin with the language of the claims. The general rule is that
terms in the claims are to be given their ordinary and accustomed meaning.
Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir.
1999). The phrase in question is set forth above. According to the claim
language, the recited “transaction authorization request” must contain “the
unique code that was transmitted with the marketing information and a
financial account identifier.” The claim further goes onto to recite, “link the
financial account identifier to the selected wireless device by adding the
received financial account identifier that was previously not part of the user
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record into the determined user record after receiving the transaction
authorization request that includes the unique code.” Thus, contrary to the
Examiner’s construction, the claim does require the recited financial account
identifier and the unique code to complete the linking step recited two steps
later in the claim. This interpretation is consistent with the Specification
which states that both items are required to be sent to the management
module 71, and if not “control passes” so that monitoring by the monitoring
module 71 continues. See Specification ¶ 51.
Thus, according to our interpretation of the independent claims, we
cannot agree with the Examiner’s construction that “[t]he claim does not
recite additional step that need to be performed, beside the step of receiving
an authorization request containing a code and a financial account identifier,
that would differentiate the claim from the prior art.” Therefore, we will not
sustain the Examiner’s obviousness rejection of independent claims 1, 16,
and 26.
Because claims 2–11, 14–15, 17–25, 27–39, 41–43 depend from claim
1, and because we cannot sustain the Examiner’s obviousness rejection of
claim 1, the Examiner’s obviousness rejection of the dependent claims
likewise cannot be sustained.

CONCLUSION

Claims Rejected
1–11, 14–39 and
41–43
Basis
35 U.S.C. § 101
Affirmed
1–11, 14–39 and
41–43
Reversed
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DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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).

AFFIRMED

1–11, 14–39 and
41–43
35 U.S.C. §
103(a)

1–11, 14–39 and
41–43
Overall
Outcome
1–11, 14–39 and
41–43