Visa International Service Association

Patent Trials and Appeals Board

Dec 10, 2020

2019006636 (P.T.A.B. Dec. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/915,076 06/11/2013 Mark Carlson 8223-1706299 5419
144885 7590 12/10/2020
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/10/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK CARLSON and TIMOTHY GALLAGHER
____________

Appeal 2019-006636
Application 13/915,076
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3, 5–13, and 21–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 21, 2019) and Reply Brief (“Reply Br.,” filed September 9,
2019), and the Examiner’s Answer (“Ans.,” mailed July 9, 2019) and Final
Office Action (“Final Act.,” mailed October 25, 2018). Appellant identifies
Visa International Service Association as the real party in interest (Appeal
Br. 3).
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CLAIMED INVENTION
Appellant describes that “embodiments of the present disclosure relate
to programming operations to be performed by computing apparatuses in
general,” and more particularly, to “programming operations, such as
information delivery and processing, based on the processing of offer data
and referral data” (Spec. ¶ 3).
Claims 1 and 23 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system for automated enrollment of users in a
second loyalty program comprising:
[(a)] a transaction handler configured in an electronic
payment processing network to process payment transactions
initiated in the electronic payment processing network that
connects separate computers related to the payment transactions,
the separate computers including:
transaction terminals configured to initiate the
payment transactions at locations of merchants, using
account identifiers of payment accounts;
first computers controlling the payment accounts;
[and]
second computers controlling merchant accounts
into which payments of the transactions are received in the
electronic payment processing network; and
the transaction handler interconnecting the first computers and
the second computers in the electronic payment processing
network;
[(b)] a data warehouse configured to store transaction
data recording the payment transactions processed via the
transaction handler and to store a plurality of sets of event
records;
[(c)] a media controller configured to electronically
communicate messages using communication channels outside
the electronic payment processing network;
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[(d)] a rules engine; and
[(e)] a portal,
wherein:
[(f)] each respective event record in the plurality
of sets of event records stored in the data warehouse has a
plurality of predefined data fields, including:
a first field storing an identifier of the
respective event record;
a second field storing a type of the respective
event record, wherein events having the type are
configured to be processed using a predefined
module corresponding to the type using applicable
event records of the type;
a third field storing a target identifying
applicable users to which the respective event
record is applicable;
a fourth field storing a qualifier identifying
applicable parameters of events to which the
respective event record is applicable; and
a fifth field storing an identifier of a
prerequisite event record to form a prerequisite link
between the respective event record and
prerequisite event record and require that
processing of the prerequisite event record be a
prerequisite condition of processing of the
respective event record,
[(g)] wherein:
the plurality of sets of event records contains at least
one event record specifying an event type corresponding
to payment transactions in the electronic payment
processing network;
the plurality of sets of event records contains a
plurality of event records each specifying an identifier in
the fifth field as a prerequisite condition;
each respective set of event records is stored in the
data warehouse to program operations of the transaction
handler and the media controller for a respective loyalty
program based on data specified in the predefined data
fields of event records in the respective set; and
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the event records in the respective set are linked via
prerequisite conditions identified by the identifier
specified in the fifth field to define a sequence of
operations of the computing apparatus, including
operations of the transaction handler and the media
controller, for the respective loyalty program in response
to events that satisfy requirements specified in the event
records;
[(h)] wherein the predefined data fields of an event
record in a first set of the event records configured for a first
loyalty program associated with a first merchant identify:
an action to be performed by the rules engine and/or
the portal,
an event in the first loyalty program, the action to
be performed for the user in the first loyalty program in
response to the event occurring for a user enrolled in the
first loyalty program and occurring in accordance with the
prerequisite conditions linking the first set of event
records, wherein the event corresponds to processing of a
payment transaction in the transaction handler made using
a consumer account of the user, and
a referral configuration identifying a set of
screening conditions for enrollment of the user in a second
loyalty program associated with a second merchant
different from the first merchant defined by a second set
of event records;
[(i)] wherein, in response to the event occurring for the
user enrolled in the first loyalty program and in accordance with
the prerequisite conditions linking the set of event records, the
rule engine determines whether the user satisfies the set of
screening conditions; and
[(j)] wherein, in response to the rule engine determining
that the user satisfies the set of screening conditions, the portal
automatically enrolls the user in the second loyalty program
defined by the second set of event records.
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REJECTION
Claims 1, 3, 5–13, and 21–25 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 12–28).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.” 35
U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to
include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
Here, in rejecting the pending claims under § 101, the Examiner
determined that claim 1 is directed to an abstract idea similar to “‘collecting
and comparing known information’ (see Classen lmmunotherapies Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011))” and/or similar to
“‘collecting information, analyzing it, and displaying certain results of the
collection and analysis’ (see Electric Power Group v Alstom S.A.[, 830 F.3d
1350 (Fed. Cir. 2016)]),” and/or “‘collecting and comparing new
information and using rules to identifying options’ (SmartGene, Inc. v.
Advance Biological Laboratories, SA.[, 555 F. App’x 950 (Fed. Cir.
2014)])” (Final Act. 3–4) (emphasis omitted). In this regard, the Examiner
observed that the claim describes
the concept of collecting information (e.g., plurality of sets
requirements[,] e.g., prerequisite conditions specified in the
event records, screening conditions rules, action performed by
the user, consumer’s payment transactions);
comparing/analyzing an event (consumer’s payment
transactions associated with consumer account) against the
stored predefined data fields of an event record in a first set of
event records and stored user enrollment status to determine
whether the event (user’s payment transactions associated with
consumer account of the user) are satisfied with the predefined
prerequisite conditions linking the first set of event records (1)
and whether the user is an enrolled user of the first loyalty
program (2); and if the event are [sic] satisfied with both (1) and
(2), then comparing/analyzing activity of the user in the first
loyalty program against the referral criteria (e.g., a set of
screening conditions for a second loyalty program) to determine
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whether the user satisfies requirements of the referral criteria/the
set of screening conditions. If the user satisfies the set of
screening conditions, then generate a message offer to enroll the
user in the second loyalty program[,]
(id.) and, thus, sets forth a series of “mental steps/elements that could be
done by pen and paper” (id. at 4). The Examiner also determined that
claim 1 does not include additional elements sufficient to amount to
significantly more than the abstract idea itself (id. at 5–7); that independent
claim 23 is patent ineligible for similar reasons; and that the dependent
claims are patent ineligible in that they “merely add further details of the
abstract steps/elements recited in claims 1 and 23” without including “an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment” (id. at 7–8).
After the Final Office Action was mailed, but before Appellant’s
Appeal Brief was filed, the U.S. Patent and Trademark Office (the
“USPTO”) published revised guidance for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
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Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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Br. 13–23). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
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 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. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “SYSTEMS AND METHODS TO
PROCESS REFERRALS BETWEEN OFFER CAMPAIGNS,” and
discloses a mechanism for automating and regulating referrals across
different merchant loyalty programs (Spec. ¶ 264). The Specification notes
that “[m]any consumers are not aware of the different loyalty programs that
exist with various merchants,” and explains that “a referral mechanism . . .
helps to bridge the gap by allowing the consumers to register for the
programs that may benefit them” (id. ¶ 263).
The Specification, thus, describes that in one embodiment, the referral
mechanism allows the screening of customers participating in a first loyalty
program, based on predetermined criteria, for referral to a second program
(id. ¶ 264). Selected customers are provided offers to enroll in the second
program based on certain activities performed in the first loyalty program,
e.g., payment transactions for purchases, enrollment, visiting websites or a
predetermined geographical area (id.). Because enrollment data recorded in
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the first program can be used to generate enrollment input for the second
program, the mechanism allows users of the first program, who accept the
offers, to instantly enroll in the second program (id.).
Consistent with this disclosure, claim 1 recites a system for automated
enrollment of users in a second loyalty program comprising “a transaction
handler configured in an electronic payment processing network to process
payment transactions”; “a data warehouse configured to store transaction
data recording the payment transactions . . . and a plurality of sets of event
records”; “a media controller configured to electronically communicate
messages using communication channels outside the electronic payment
processing network”; “a rules engine”; and “a portal,” i.e., limitations (a)
through (e).
Claim 1 recites that each record in the plurality of sets of event
records in the data warehouse includes a plurality of predefined data fields
that identify an event (e.g., a payment transaction between the user and the
first merchant), an action to be performed in response to the event occurring,
and a set of screening conditions for enrollment of the user in the second
loyalty program, i.e.,
wherein:
each respective event record in the plurality of sets
of event records stored in the data warehouse has a
plurality of predefined data fields, including:
a first field storing an identifier of the
respective event record;
a second field storing a type of the respective
event record, wherein events having the type are
configured to be processed using a predefined
module corresponding to the type using applicable
event records of the type;
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a third field storing a target identifying
applicable users to which the respective event
record is applicable;
a fourth field storing a qualifier identifying
applicable parameters of events to which the
respective event record is applicable; and
a fifth field storing an identifier of a
prerequisite event record to form a prerequisite link
between the respective event record and
prerequisite event record and require that
processing of the prerequisite event record be a
prerequisite condition of processing of the
respective event record,
wherein:
the plurality of sets of event records contains at least
one event record specifying an event type corresponding
to payment transactions in the electronic payment
processing network;
the plurality of sets of event records contains a
plurality of event records each specifying an identifier in
the fifth field as a prerequisite condition;
each respective set of event records is stored in the
data warehouse to program operations of the transaction
handler and the media controller for a respective loyalty
program based on data specified in the predefined data
fields of event records in the respective set; and
the event records in the respective set are linked via
prerequisite conditions identified by the identifier
specified in the fifth field to define a sequence of
operations of the computing apparatus, including
operations of the transaction handler and the media
controller, for the respective loyalty program in response
to events that satisfy requirements specified in the event
records;
wherein the predefined data fields of an event record in a
first set of the event records configured for a first loyalty program
associated with a first merchant identify:
an action to be performed by the rules engine and/or
the portal,
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an event in the first loyalty program, the action to
be performed for the user in the first loyalty program in
response to the event occurring for a user enrolled in the
first loyalty program and occurring in accordance with the
prerequisite conditions linking the first set of event
records, wherein the event corresponds to processing of a
payment transaction in the transaction handler made using
a consumer account of the user, and
a referral configuration identifying a set of
screening conditions for enrollment of the user in a second
loyalty program associated with a second merchant
different from the first merchant defined by a second set
of event records
(limitations (f), (g), and (h)). And claim 1 further recites that, in response to
the event occurring, the rules engine determines whether the user satisfies
the screening conditions associated with the second loyalty program, and if
so, the portal automatically enrolls the user in the second loyalty program,
i.e.,
wherein, in response to the event occurring for the user
enrolled in the first loyalty program and in accordance with the
prerequisite conditions linking the set of event records, the rule
engine determines whether the user satisfies the set of screening
conditions; and
wherein, in response to the rule engine determining that
the user satisfies the set of screening conditions, the portal
automatically enrolls the user in the second loyalty program
defined by the second set of event records.
(limitations (i) and (j)).
The Examiner determined, as described above, and we agree, that
these limitations, when given their broadest reasonable interpretation, recite
enrolling a user in a second loyalty program by (1) collecting information,
e.g., prerequisite conditions, screening rules, user transactions;
(2) comparing the collected information, e.g., the user’s payment
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transactions with the prerequisite conditions; and (3) identifying options
based on the results of the collection and analysis, e.g., enrolling the user in
the second loyalty program if the prerequisite conditions and screening rules
are met — steps that, as the Examiner observes, can be performed by a
human, e.g., using pen and paper (Final Act. 4).
Simply put, claim 1 recites a mental process, i.e., a concept performed
in the human mind, including an evaluation or judgment, and therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52; CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
(holding that method steps that can be performed in the human mind, or by a
human using a pen and paper, are unpatentable mental processes). See also
Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016) (explaining that the Federal Circuit treats “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1308 (Fed. Circ. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that
foreclose[s] them from being performed by a human, mentally or with pen
and paper.”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335
(Fed. Cir. 2015) (“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”).
Appellant ostensibly does not dispute that claim 1 recites an abstract
idea; instead Appellant maintains that claim 1 is not “directed to” an abstract
idea because the claim improves an alleged field of technology, i.e.,
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enrollment of users in loyalty programs (Appeal Br. 13). Appellant notes
that, unlike existing systems, the system of claim 1 “allow[s] for automated
enrollment of the user in the second separate loyalty program without
requiring the user to re-provide enrollment information,” and thereby
eliminates “a source of potential error (from incorrect enrollment data
entry)” (id. at 14). Appellant also notes that the claimed system
advantageously identifies and refers users to other loyalty programs for
which they may be qualified, in contrast to existing systems, which require a
user in a first loyalty program to independently become aware of other
loyalty programs (id. at 15).
Appellant maintains that claim 1 is, thus, directed to “an improvement
in the field of technology associated with enrollment of users in loyalty
programs” (Appeal Br. 15). Yet, we are not persuaded that these are
technological improvements, as opposed to improvements in the abstract
idea of enrolling users in loyalty programs, which is not enough for patent
eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed.
Cir. 2018) (“[P]atent law does not protect such claims [i.e., claims to an
asserted advance in the realm of abstract ideas], without more, no matter
how groundbreaking the advance.”).
Appellant notes that the Federal Circuit, in McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), found that
“claim 1 of the McRO patent was focused on a specific asserted
improvement in computer animation (the automatic use of rules of a
particular type)” (Appeal Br. 16). And Appellant maintains that the present
claims, like the claim in McRO, are not directed to an abstract idea and are
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patent eligible because “they are directed to a specific asserted improvement
to a system for enrolling users in second loyalty programs” (id.).
Appellant ostensibly contends otherwise. But, the Federal Circuit did
not base its determination that the claim in McRO was patent eligible merely
on the specificity of the claimed animation scheme. Instead, the court
determined that the claim there at issue was patent eligible because, when
considered as a whole, the claim was directed to a technological
improvement over existing, manual 3-D animation techniques and used
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice. See McRO, 837 F.3d
at 1316. In particular, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators. Id. at 1313.
Appellant has not identified any analogous improvement here that is
attributable to the claimed invention. Streamlining the process of enrolling
users into loyalty programs by referring users to other loyalty programs for
which they may be qualified, and eliminating the need for potential error-
prone data reentry, may well improve a business process. But, we are not
persuaded that it achieves an improved technological result, particularly
where, as here, there is no indication that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, invoke any allegedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components as tools operating in their normal, routine, and ordinary
capacity.
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It also is not controlling that claim 1 may present no risk of
preemption (Appeal Br. 16–17). Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
Specifically referencing Step 2A, Prong Two of the 2019 Revised
Guidance, Appellant further argues that claim 1 is not directed to an abstract
idea, i.e., that claim 1 integrates any recited abstract idea into a practical
application, because the claim implements any alleged judicial exception
“using and in conjunction with a particular machine or manufacture integral
to the claim” (Appeal Br. 21). 3 That argument is similarly unavailing.

3 The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://mpep.uspto.gov/RDMS/MPEP/
E9_R-08.2017.) § 2106.05(a)–(c) and (e) in non-exhaustively listing
considerations indicative that an additional element or combination of
elements may have integrated the recited judicial exception into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55. Thus, for
example, an additional element may have integrated the judicial exception
into a practical application if the additional element (1) reflects an
improvement in the functioning of a computer or an improvement to other
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Appellant notes that claim 1 recites “the event (triggering the rules
engine) being a payment transaction between a user enrolled in the first
loyalty program and the first merchant being processed by a transaction
hander” and further recites that “this transaction handler processes payment
transactions in an electronic payment processing network” (Appeal
Br. 21–22). Appellant maintains that “[t]he transaction handler and the
electronic payment processing network are a specific machine and a
specialized system, respectively, which function to process payment
transactions between users and merchants” (id. at 22). Yet, rather than
constituting a “particular machine,” the transaction handler and electronic
payment processing network are no more than generic computer components
(see, e.g., Spec. ¶¶ 373, 374, 422, 423). And, as described above, we find no
indication in the Specification, nor, for that matter, does Appellant direct us
to any indication, that these components are used other than as tools
operating in their normal, routine, and ordinary capacity. See Alice Corp.,
573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”);
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’
or on a generic computer is still an abstract idea”) (citation omitted).
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited

technology or technical field; (2) implements the judicial exception with, or
uses the judicial exception with, a particular machine or manufacture
integral to the claim; or (3) effects a transformation or reduction of an article
to a different state or thing. Id.
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in the claim beyond the abstract idea are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant argues that the rejection of claim 1 cannot be sustained
because the transaction handler, data warehouse, rules engine, and portal, as
recited in claim 1, are not merely generic computer components and the
claimed arrangement of these components, like those in BASCOM, is “non-
generic and non-conventional” (Appeal Br. 24).
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Appellant’s reliance on BASCOM is misplaced. In BASCOM, the
court determined that the claims at issue described an inventive concept in
the non-conventional and non-generic arrangement of known, conventional
pieces. BASCOM, 827 F.3d at 1350. Specifically, the Federal Circuit
determined that the claimed installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user provided an inventive concept in that it gave the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the ISP server. Id.
Appellant maintains here that claim 1 provides an inventive concept in
the non-generic and non-conventional arrangement of the transaction
handler, data warehouse, rules engine, and portal (i.e., the transaction
handler processes an event, e.g., a payment transaction; based the transaction
handling processing, the rules engine responds by determining whether
screening conditions (for a second loyalty program) stored in an event record
on the data warehouse are satisfied; and if the conditions are satisfied, the
portal automatically enrolls the user in the second loyalty program) (Appeal
Br. 24). But, we are not persuaded that BASCOM is sufficiently analogous
to control the outcome here.
In BASCOM, the Federal Circuit held that the second step of the
Mayo/Alice framework was satisfied because the claimed invention
“represents a ‘software-based invention[ ] that improve[s] the performance
of the computer system itself.”’ BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), where the patent “claimed a technical solution to a problem unique to
the Internet,” the patent in BASCOM claimed a “technology-based
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solution . . . to filter content on the Internet that overcomes existing
problems with other Internet filtering systems . . . making it more dynamic
and efficient”) (citations omitted). We are not persuaded that a comparable
situation is presented here.
Appellant further argues that the rejection of claim 1 cannot be
sustained because the Examiner has not established that “each of the
following elements, and the combination of at least these elements” is
conventional:
• a transaction handler configured to process
payment transactions between a user and a merchant in
an electronic payment processing network;
• a data warehouse configured to store transaction
data associated with the payment transactions and to
store a plurality of sets of event records, each set of event
records comprises a plurality of predefined data fields
including: a first field indicating an event type; and a
second field indicating an identifier of a prerequisite
event record to form a prerequisite link between the
respective event record and prerequisite event record,
such that processing of the prerequisite event record be a
prerequisite condition for processing of the respective
event record;
• a rules engine; and
• a portal configured to enroll a user in a loyalty
program, the predefined data fields of an event record in a
first set of event records configured for a first loyalty
program associated with a first merchant identify: an
event, the event being a payment transaction between a
user enrolled in the first loyalty program and the first
merchant processed by the transaction handler; an action
to be performed by the rules engine and/or the portal for
the user in response to the event occurring for the user
enrolled in the first loyalty program; and
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• a referral configuration identifying a set of
screening conditions for enrollment of the user in a
second loyalty program associated with a second
merchant different from the first merchant, the set of
screening conditions defined by a second set of event
records,
• in response to the event occurring for the user in
the first loyalty program and in accordance with the
prerequisite conditions linking the set of event records,
the rules engine determines whether the user satisfies the
set of screening conditions, and
• in response to the rules engine determining that the
user satisfies the set of screening conditions, the portal
automatically enrolls the user in the second loyalty
program defined by the second set of event records using
enrollment data of the user in the first loyalty program
such that the user does not provide duplicate enrollment
data identical to the enrollment data of the user in the
first loyalty program
(Appeal Br. 25–27) (emphasis omitted). But, that argument is not
persuasive at least because “the relevant inquiry is not whether the claimed
invention as a whole is unconventional or non-routine.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the
question under step two of the Mayo/Alice framework (i.e., step 2B) is
whether the claim includes additional elements, i.e., elements other than the
abstract idea itself, that “‘transform the nature of the claim’ into a patent-
eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). See also Mayo, 566 U.S. at 72–73 (requiring that “a process that
focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an ‘inventive concept,’
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself” (emphasis added)).
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Here, the Examiner determined, and we agree, that the only claim
elements beyond the abstract idea are “a transaction handler”; “a data
warehouse”; “a media controller”; “a rules engine”; and “a portal,” i.e.,
generic computer components recited as performing generic computer
functions (Final Act. 5–6) — a determination amply supported by, and fully
consistent with the Specification (see, e.g., Spec. ¶¶ 226, 257, 373, 374, 422,
423, 425–442).
Appellant cannot reasonably maintain that there is insufficient factual
support for the Examiner’s determination that the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
processing, storing, and outputting information. Indeed, the Federal Circuit,
in accordance with Alice, has “repeatedly recognized the absence of a
genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer v. HP, Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted); see
also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other,
non-abstract features of the claimed inventions, alone or in combination, are
not well-understood, routine and conventional database structures and
activities. Accordingly, the district court did not err in determining that the
asserted claims lack an inventive concept.”).
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We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 3, 5–13, and 21–25,
which fall with claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–13,
21–25
101 Eligibility 1, 3, 5–13,
21–25

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