Ex Parte Ghosh et al

Patent Trials and Appeals Board

Mar 21, 2019

13950911 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/950,911 07/25/2013
75564 7590 03/25/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Debashis Ghosh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21652-00284 7559
EXAMINER
TIBLJAS, SHACOLE C
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASHIS GHOSH and INA GOLDBERG
Appeal2018-001799
Application 13/950,911
Technology Center 3600
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and BETH Z. SHAW,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention analyzes anonymous payment card data to
associate ownership of multiple payment cards with a single owner. To this
end, a table is used to compare financial transaction times associated with
different anonymous payment card accounts, and determine their common
1 Appellants identify the real party in interest as MasterCard International
Incorporated. App. Br. 1.
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Application 13/950,911
ownership based on transactions made at different times. See generally
Abstract; Spec. ,r,r 1, 34--37. Claim 1 is illustrative:
1. A computer-based method for associating ownership
of anonymous payment cards thereby linking ownership of
multiple anonymous payment cards to one another, said method
using a computer device including a processor in
communication with a transaction database, said method
compnsmg:
receiving, by the processor, financial transaction data of a
plurality of payment card accounts from the transaction
database wherein the financial
transaction data includes anonymized data for identifying each
payment card account;
identifying, by the processor, a target account for a
payment card account from the transaction database, the target
account having an anonymized target account number;
designating at least a portion of a remainder of the
plurality of payment card accounts as candidate accounts each
associated with a respective anonymized candidate account
number;
generating a table data structure of transactions per
segment of time, the table populated with transaction data from
the target account and the plurality of candidate accounts;
identifying, by the processor, a set of transaction times
associated with the anonymized target account number by
performing a lookup within the generated table data structure;
and
comparing, by the processor, a target set of transaction
times associated with the target account to a candidate set of
transaction times associated with each candidate account of the
plurality of candidate accounts from the transaction database,
wherein the comparing to each candidate account comprises:
identifying a first candidate set of transaction times
associated with a first candidate account of the plurality of
candidate accounts;
comparing the target set of transaction times to the first
candidate set of transaction times; and
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identifying the first candidate account as a match
candidate if the target set of transaction times and the first
candidate set of transaction times do not include overlapping
transaction times; and
linking, by the processor, the target account and each
matched candidate account having anonymized account
numbers in the transaction database such that a common
ownership of the target account and the matched candidate
accounts is established.
THE REJECTION
The Examiner rejected claims 1-24 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 2-6. 2
FINDINGS, CONCLUSIONS, AND CONTENTIONS
The Examiner determines that the claims are directed to an abstract
idea, namely analyzing anonymous payment card data with common
ownership, which is said to organize human activity. Final Act. 3--4. The
Examiner adds that the claims do not include elements that add significantly
more than the abstract idea, but merely recite conventional generic computer
functions. Id. 3---6. Based on these determinations, the Examiner concludes
that the claims are ineligible under§ 101. Id.
Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 5-8; Reply Br. 2--4. According to Appellants, the
Examiner not only fails to discuss any claim limitations beyond those in the
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
November 7, 2016 ("Final Act."); (2) the Appeal Brief filed June 1, 2017
("App. Br."); (3) the Examiner's Answer mailed October 4, 2017 ("Ans.");
and (4) the Reply Brief filed December 4, 2017 ("Reply Br.").
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preamble, but the claimed invention is said to yield a technological
improvement by de-anonymizing anonymous data to link anonymous
payment cards-a capability that is said to be realized by, among other
things, a self-referential table. See App. Br. 5-8; Reply Br. 5---6. Appellants
add that the claimed invention also provides an inventive concept in light of
this technological solution. See App. Br. 8-12; Reply Br. 4--7.
ISSUE
Under§ 101, has the Examiner erred in rejecting claims 1-24 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether recited elements-
considered individually and as an ordered combination-transform the
nature of the claims into a patent-eligible application of that abstract idea.
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
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. 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 Alice, 573
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U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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."). That
said, 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
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environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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 and citation
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. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, 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) ("Guidance"). Under that
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) (9th ed. Rev. 08.2017, Jan. 2018)).
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Only if a claim ( 1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
ANALYSIS
Claims 1-24: Alice/Mayo Step One
Independent claim 1 recites a computer-based method for associating
ownership of anonymous payment cards that links ownership of multiple
anonymous payment cards to one another. To this end, a processor receives
financial transaction data of plural payment card accounts from a transaction
database, where the transaction data includes anonymized data for
identifying each payment card account. The processor also identifies a
target account for a payment card account from the database, where the
target account has an anonymized target account number.
Claim 1 also recites that at least a portion of a remainder of the
payment card accounts is designated as candidate accounts each associated
with a respective anonymized candidate account number. The claim further
recites generating a table data structure of transactions per segment of time,
where the table is populated with transaction data from the target account
and candidate accounts. Unlike other steps, the claim does not specify what
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exactly performs these candidate account designation and table data
structure generating steps, let alone that a processor is used to achieve those
ends.
Claim 1, however, does specify that the processor also (1) identifies a
set of transaction times associated with the anonymized target account
number by performing a lookup within the generated table data structure,
and (2) compares a target set of transaction times associated with the target
account to a candidate set of transaction times associated with each
candidate account.
The claim further recites that the comparing comprises (1) identifying
a first candidate set of transaction times associated with a first candidate
account; (2) comparing the target set of transaction times to the first
candidate set of transaction times; and (3) identifying the first candidate
account as a match candidate if the target set of transaction times and the
first candidate set of transaction times do not include overlapping transaction
times.
Lastly, the claim recites that the processor links the target account and
the matched candidate account having anonymized account numbers in the
transaction database such that a common ownership of the target account
and matched candidate accounts is established.
As the Specification explains, the invention analyzes anonymous
payment card data to associate ownership of multiple payment cards with a
single owner. See Spec. ,r 1. To this end, the invention filters encrypted
payment card transaction data stored in transaction database 102. As shown
in Figure 1, the database includes target account 106 with an encrypted
Personal Account Number (PAN) of"AA." The database is filtered to
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restrict the target transaction set to only those transactions occurring during a
particular time period which, in the example in Figure 1, is between 8:01 and
8:15 AM on June 23, 2012. Spec. ,r 29.
As shown in Figure 2, the database is also filtered to produce a
candidate set of transactions, namely those that are potential "candidates" to
be associated with the consumer and the target account. Spec. ,r 30. As with
the filter in Figure 1, the filter in Figure 2 restricts transactions between 8:01
and 8:15 AM on June 23, 2012, but also includes transactions initiated in zip
code "63101." Id. ,r 30. As shown in Figure 2, the filter yields four
candidate accounts that satisfy these criteria, namely the accounts whose
PANs are "AB," "AC," "AD," and "AE," respectively. See id. ,r 33.
As shown below, Figure 3 tabulates the results from both filtering
operations in Figures 1 and 2, where (1) each column represents a particular
time segment (8:01, 8:02, etc.) within the filtered time interval from 8:01 to
8: 15 AM; (2) the rows correspond to the target and candidate account
(identified by their respective P ANs ("AA," "AB," etc.)); and (3) an "X" in
a cell indicates a transaction occurred during that particular time segment
with respect to a given account. See Spec. ,r 34.
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; 304 ,
' l • 8:01 8:02 8:03 AA X
AB X
AC X X X
AD X X
AE X X
8:04 8:05
.x
,---~300
8:06 8:07 8:08 8:09 8:10 8:11 8:12 8;'13 8:14 8:15
X X
X X
X X X
X X X X X X
X X X
+ l
306j
Table showing target and candidate account transactions from 8:01 to
8:15 AM in Appellants' Figure 3
As shown above, the table enables comparing the transactions of the
target account "AA" with those of the candidate accounts "AB" to "AE"
during each one-minute segment from 8: 01 to 8: 15 AM. See Spec. ,r,r 3 5-
3 8. If a candidate account has no overlapping transactions with the target
account (i.e., no transactions occur in the same time segment), the candidate
account is identified as a match candidate with respect to the target account.
Id. ,I 35.
In Figure 3, for example, no candidate account "AB" transactions
occur during the same time segments as the transactions for the "AA" target
account. Spec. ,r 36. Therefore, "AB" is identified as a potential match
candidate to the "AA" target account. Id. But because the other candidate
accounts "AC" to "AE" have one or more overlapping transactions
conflicting with target account "AA," these candidate accounts are not likely
potential match candidates. Id. ,r 37.
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Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of§ 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether (1) the claim recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 1 is directed to an
abstract idea, namely analyzing anonymous payment card data, which is said
to organize human activity. See Final Act. 3--4. To determine whether a
claim recites an abstract idea, we (1) identify the claim's specific limitations
that recite an abstract idea, and (2) determine whether the identified
limitations fall within certain subject matter groupings, namely (a)
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mathematical concepts3; (b) certain methods of organizing human activity4;
or ( c) mental processes. 5
Here, apart from the recited (1) computer device; (2) processor; (3)
transaction database; and ( 4) data structure, every limitation of claim 1
recites an abstract idea, namely organizing human activity, by using a table
to compare financial transaction times associated with different anonymous
payment card accounts, and determine their common ownership based on
transactions made at different times. This comparison-based determination
to establish common ownership----a commercial activity-fits squarely
within the human activity organization category of the agency's guidelines.
See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of organizing
human activity, including fundamental economic practices and commercial
interactions).
In addition, apart from their performance by a processor, every recited
step can be performed entirely mentally by merely thinking about whether
transactions associated with target and candidate anonymous payment card
3 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
4 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
5 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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accounts occur within the same time period and, if not, determining that the
accounts are commonly owned. First, the recited steps calling for (1)
"receiving ... financial transaction data of a plurality of payment card
accounts ... "; (2) "identifying a target account ... "; and (3) "designating at
least a portion of a remainder of the accounts as candidate accounts ... " can
be performed by a human who merely (a) reads records associated with
payment card accounts from a pre-existing database, and (b) designates the
accounts as "target" and "candidate" based on that data. Cf CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting
that limitation reciting obtaining information about transactions that have
used an Internet address identified with a credit card transaction can be
performed by a human who simply reads records of Internet credit card
transactions from a pre-existing database).
Second, a person may (1) generate a table of transactions per segment
of time, and (2) populate the table with transaction data from the target and
candidate accounts as claimed either mentally or by pen and paper. Cf
CyberSource, 654 F.3d at 1372 (noting that a person may construct a map of
credit card numbers by writing down a list of credit card transactions made
from a particular IP address).
That a table is used to compare these transaction times as claimed
does not change our conclusion, for such tables merely organize data in rows
and columns, such that the intersection of a particular column and row
identifies a corresponding cell with information pertaining to both the
associated column and row, as in a spreadsheet. See, e.g., Enfzsh LLC v.
Microsoft Corp., 822 F.3d 1327, 1340 (Fed. Cir. 2016) (discussing data
representing rows and columns in a table in Microsoft Excel 5.0--a version
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of a well-known spreadsheet program). Such a table and its associated data
can be visualized and processed mentally or with pen and paper despite
Appellants' arguments to the contrary (Reply Br. 3). Leaving aside the fact
that Appellants' assertion regarding the alleged impossibility of manually
processing billions of payment card transactions (see id.) is unsubstantiated,
the claim does not require a particular number of transactions, let alone
billions of them. Nor does the claim specify a particular number of
candidate accounts whose transaction times are compared with those of the
target account to somehow preclude a mental comparison.
That is, apart from the processor and data structure, the limitations
calling for (1) generating a table populated with transaction data; (2)
identifying a set of transaction times associated with the anonymized target
account number; (3) comparing a target set of transaction times associated
with the target account to a candidate set of transaction times associated
with each candidate account, where the comparison includes identifying a
first candidate set of transaction times associated with a first candidate
account; and ( 4) identifying the first candidate account as a match candidate
if the target set of transaction times and the first candidate set of transaction
times do not include overlapping transaction times can be performed
entirely mentally or with pen and paper-both involving mere observation
and logical reasoning. Cf CyberSource, 654 F.3d at 1372 (noting that a
recited step that utilized a map of map of credit card numbers to determine
the validity of a credit card transaction could be performed entirely mentally
by merely using logical reasoning to identify a likely instance of fraud by
merely observing that numerous transactions using different credit cards all
originated from the same IP address). Moreover, apart from the processor
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and transaction database, the recited "linking the target account and each
matched account ... " could likewise be performed entirely mentally by
merely associating the respective accounts mentally or with pen and paper to
establish their common ownership. Cf id; see also Fort Properties, Inc. v.
Am. Master Lease LLC, 671 F.3d 1317, 1319--24 (Fed. Cir. 2012) (holding
ineligible claims reciting that a master agreement provision for (1)
reaggregating plural tenant-in-common deeds after a specified interval, and
(2) transferring ownership of deedshares).
Therefore, in addition to organizing human activity, the recited steps,
apart from their performance using a processor in communication with a
transaction database, also fall within the mental processes category of the
agency's guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary
mental processes including observations, evaluations, and judgments); see
also CyberSource, 654 F.3d at 1372.
Although the claim recites an abstract idea based on these methods of
organizing human activity and mental processes, we nevertheless must still
determine whether the abstract idea is integrated into a practical application,
namely whether the claim applies, relies on, or uses the abstract idea in a
manner that imposes a meaningful limit on the abstract idea, such that the
claim is more than a drafting effort designed to monopolize the abstract idea.
See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1) identify whether
there are any additional recited elements beyond the abstract idea, and (2)
evaluate those elements individually and collectively to determine whether
they integrate the exception into a practical application. See id.
Here, the recited (1) "computer device"; (2) "processor"; (3)
"transaction database"; and (4) "data structure" are the only recited elements
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beyond the abstract idea, but those additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves the
computer or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfzsh, despite Appellants' arguments to the
contrary (Reply Br. 5, 8). The claimed self-referential table in Enfish was a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent
Appellants contend that the claimed invention uses such a data structure to
improve a computer's functionality or efficiency, or otherwise change the
way that device functions (see App. Br. 7), there is no persuasive evidence
on this record to substantiate such a contention.
As the Enfish court emphasized, the claims were not directed to any
form of storing tabular data, but were instead directed to a self-referential
table for a computer database. Enfzsh, 822 F.3d at 1337. Notably, the court
explained that the table stored information related to each column in rows of
that very table, such that new columns can be added by creating new rows in
the table. Id. at 1338. To the extent Appellants contend that the recited
table is similar to the self-referential table in Enfzsh (see App. Br. 7), we
disagree.
Unlike Enfish's claimed invention, Appellants' claim 1 does not
specify any particular type of table-let alone a self-referential table-but
merely recites that it is a data structure populated with transaction data, and
that transaction times are identified by performing a lookup within this data
structure, where these times are compared with respect to the target and
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candidate accounts. In short, the recited table can be nothing more than a
standard table, such as that shown in Appellants' Figure 3, that merely
organizes data in rows and columns, such that the intersection of a particular
column and row identifies a corresponding cell with information pertaining
to both the associated column and row, as in a spreadsheet. See, e.g., Enfzsh,
822 F.3d at 1340-41 (discussing data representing rows and columns in a
table in Microsoft Excel 5.0--a version of a well-known spreadsheet
program). Accord Ans. 3 (finding that the recited table can be a generic
table that organizes data). That the data in a target account row, such as the
first row corresponding to "AA" in the table in Appellants' Figure 3, can be
compared to data in other rows, such as those associated with candidate
accounts "AB" to "AE" in the table's last four rows, does not render the
table self-referential in the sense contemplated by Enfzsh-a specific type of
data structure that improved the way the computer stored and retrieved data
in memory. See Enfish, 822 F.3d at 1339. To the extent Appellants contend
otherwise (see App. Br. 7), we disagree.
That the data associated with this table pertains to anonymous
accounts does not change our conclusion, for processing and using such
anonymous data does render an abstract idea any less abstract. Cf Mortgage
Grader Inc. v. First Choice Loan Services, Inc., 811 F.3d 1314, 1318, 1324
(Fed. Cir. 2016) (holding ineligible claims enabling borrowers to shop for
loan packages anonymously using a computer). Therefore, to the extent that
Appellants contend that the claimed invention somehow improves the
computer or its components' functionality or efficiency, or otherwise
changes the way those devices function by de-anonymizing anonymized data
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to link otherwise anonymous payment cards using the recited table-based
comparison (see Reply Br. 3, 5-7), we find such arguments unavailing.
As with the ineligible claimed invention in BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018), these benefits are
not improvements to the database's functionality or its related table-based
functionality, but rather the benefits flow from performing the abstract idea
in conjunction with a well-known database and table structure. See id.
("While the presentation of summary comparison usage information to users
improves the quality of the information added to the database, an
improvement in the information stored by a database is not equivalent to an
improvement in the database's functionality.").
To the extent that Appellants contend that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see App. Br. 5-8; Reply Br. 2--4), we disagree. Even assuming, without
deciding, that the claimed invention can link ownership of anonymous
payment cards faster than doing so manually, any speed increase comes
from the capabilities of the generic computer components-not the recited
process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life
Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.")); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F.
App'x 1012, 1017 (Fed. Cir. 2017) (unpublished) ("Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
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capabilities of a general-purpose computer do not materially alter the patent
eligibility of the claimed subject matter."). Like the claims inFairWarning,
the focus of claim 1 is not on an improvement in computer processors as
tools, but on certain independently abstract ideas that use generic computing
components as tools. See FairWarning, 839 F.3d at 1095 (citations and
quotation marks omitted).
Appellants' reliance on McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 8-9) is likewise
unavailing. There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to compare
financial transaction times associated with different anonymous payment
card accounts, and determine their common ownership based on transactions
made at different times. This generic computer implementation is not only
directed to fundamental human activity organization and mental processes,
but also does not improve a display mechanism as was the case in McRO.
See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
( distinguishing McRO).
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Therefore, we determine that the claim does not recite additional
elements improving (1) the computer itself, or (2) another technology or
technical field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §
2106.05(a)). Rather, the above-noted additional elements merely (1) apply
the abstract idea on a computer; (2) include instructions to implement the
abstract idea on a computer; or (3) use the computer as a tool to perform the
abstract idea. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(±)).
We add that the step calling for "receiving financial transaction data
of a plurality of payment card accounts ... " in the claim's first clause not
only uses generic computing components to perform the abstract idea as
noted above, but the data receiving function is also insignificant extra-
solution activity that merely gathers data and, therefore, does not integrate
the exception into a practical application for that additional reason. See In re
Bilski, 545 F.3d 943,963 (Fed. Cir. 2008) (en bane), ajf'd on other grounds,
561 U.S. 593 (2010) (characterizing data gathering steps as insignificant
extra-solution activity); see also CyberSource, 654 F.3d at 1371-72 (noting
that even if some physical steps are required to obtain information from a
database (e.g., entering a query via a keyboard, clicking a mouse), such data-
gathering steps cannot alone confer patentability). Accord Guidance, 84
Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
In conclusion, although the recited functions may be beneficial by
comparing transaction times associated with anonymous target and
candidate payment card accounts to link their ownership, a claim for a useful
or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379-80 (Fed. Cir. 2015).
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We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Claims 1-24: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1 's additional recited elements,
namely the recited (1) "computer device"; (2) "processor"; (3) "transaction
database"; and ( 4) "data structure"----considered individually and as an
ordered combination----do not provide an inventive concept such that these
additional elements amount to significantly more than the abstract idea. See
Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted
above, the claimed invention merely uses generic computing components to
implement the recited abstract idea.
To the extent Appellants contend that the recited limitations, including
the particular recited steps that use a table to compare financial transaction
times associated with different anonymous payment card accounts, and
determine their common ownership based on transactions made at different
times, add significantly more to the abstract idea to provide an inventive
concept under Alice/Mayo step two (see App. Br. 8-14; Reply Br. 4--7),
these limitations are not additional elements beyond the abstract idea, but
rather are directed to the abstract idea as noted previously. See Guidance, 84
Fed. Reg. at 56 (instructing that additional recited element(s) should be
evaluated in Alice/Mayo step two to determine whether they (1) add specific
limitation(s) that are not well-understood, routine, and conventional in the
field, or (2) simply append well-understood, routine, and conventional
activities previously known to the industry (citing MPEP § 2106.05(d)).
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Rather, the recited (1) "computer device"; (2) "processor"; (3)
"transaction database"; and (4) "data structure" are the additional recited
elements whose generic computing functionality is well-understood, routine,
and conventional. Accord Final Act. 3, 5 (finding that the claims' additional
recited computer-based elements provide conventional computer
functionality that do not add meaningful limits to practicing the abstract
idea). Appellants' arguments in this regard (see App. Br. 8-14; Reply Br. 5-
7) are, therefore, unpersuasive.
Appellants' reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 8-10; Reply
Br. 6) is unavailing. There, the court held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution-namely a "one-size-fits-all" filter at an Internet Service Provider
(ISP}--more dynamic and efficient via individualized filtering at the ISP.
BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution
improved the computer system's performance and, therefore, was patent-
eligible. See id.
But unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
here uses generic computing components to implement an abstract idea as
noted previously.
Despite Appellants' arguments to the contrary (App. Br. 12), the fact
that the Examiner did not reject the claims as obvious over prior art is not
dispositive to patent eligibility-a separate statutory inquiry. See Return
Mail, Inc. v. United States Postal Service, 868 F.3d 1350, 1370 (Fed. Cir.
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2017). Although the second step in the Alice test is a search for an
"inventive concept," the analysis is not directed to novelty or
nonobviousness, but rather searches for elements sufficient to ensure that the
claimed invention is directed to more than a patent ineligible concept, such
as an abstract idea. See Alice, 134 S. Ct. at 2355. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013); see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)
("The 'novelty' of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the§ 101 categories of possibly patentable subject matter.");
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3
(Fed. Cir. 2016) (noting that an eligibility finding does not tum on the
novelty of using a user-downloadable application for the particular purpose
recited in the claims).
In conclusion, we determine that the additional recited elements-
considered individually and as an ordered combination----do not add
significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance,
84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-24 not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1-24 under§ 101.
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DECISION
We affirm the Examiner's decision to reject claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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