Leigh Amaro et al.

Patent Trials and Appeals Board

Mar 10, 2021

2019006354 (P.T.A.B. Mar. 10, 2021)

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.
13/396,536 02/14/2012 Leigh Amaro 8223-1706973(P-41944US01) 3848
144885 7590 03/10/2021
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/10/2021 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 LEIGH AMARO and MICHELLE ENG WINTERS
____________

Appeal 2019-006354
Application 13/396,536
Technology Center 3600
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Nov. 26, 2018, hereinafter “Final
Act.”) to reject claims 1–16, 21, and 22 under the judicial exception to 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Visa International Service Association is identified as the real
party in interest in Appellant’s Appeal Brief (filed April 25, 2019,
hereinafter “Appeal Br.”). Appeal Br. 3.
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates to a computerized method, system, and
computer program product for processing payment transaction data for
sharing offers presented to a user with friends of the user. Spec. para. 27.
Claims 1, 21, and 22 are independent. Claim 1 is illustrative of the
claimed invention and is reproduced below (with reference indicators added
in brackets):
1. A computer-implemented method, comprising:
during [A] processing, by a computing system, of a first
payment transaction made using an account identifier of a
payment account of a first user in an electronic payment
processing network, [B] performing operations to cause a
communication portal of the computing system to transmit an
offer to a mobile device of the first user, wherein the operations
include:
[a] receiving, in a transaction handler of the computing
system, via the electronic payment processing network, an
authorization request for the first payment transaction made
using the account identifier of the payment account of the first
user;
[b] communicating, by the communication portal, with a
social networking site to determine a plurality of identifiers of a
plurality of friends of the first user;
[c] determining a plurality of account identifiers of
payment accounts of the plurality of friends of the first user
based on the plurality of identifiers of the plurality of friends of
the first user, wherein:
the first user and the plurality of friends of the first
user form a particular group of users, and
the account identifier of the first user and the
account identifiers of the payment accounts of the
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plurality of friends of the first user form a particular set
of account identifiers;
[d] identifying, by the computing system using the
particular set of account identifiers, first transaction data stored
in a data warehouse, the first transaction data recording
payment transactions made in the payment accounts of the
particular group of users;
[e] generating, by the computing system, a profile
summarizing the first transaction data identified using the
particular set of account identifiers, the generating comprising
[i] weighting transaction data associated with payment
transactions made by the plurality of friends of the first user
according to a social distance from the first user, and wherein
offers previously passed from the first user to a first friend of
the plurality of friends of the first user and used by the first
friend are used to [ii] construct a filter to select a portion of the
first transaction data associated with payment transactions that
can be attributed to the first user;
[f] identifying, by the computing system using the profile
and in response to the authorization request received in the
transaction handler, the offer;
in response to identifying the offer using the profile:
[C] transmitting, by the communication portal and
while the transaction handler is processing the
authorization request for the first payment transaction
made using the account identifier of the payment account
of the first user, the offer to the mobile device of the first
user,
[D] communicating, by the mobile device of the
first user, the offer to a mobile application associated
with a mobile device of a second friend of the plurality of
friends via a mobile application associated with the
mobile device of the first user, wherein communicating
the offer to the mobile application of the mobile device
of the second friend of the plurality of friends comprises:
[i] determining that the mobile device of the
second friend of the plurality of friends is in
proximity to the mobile device of the first user;
and
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[ii] communicating data associated with the
offer to the mobile application associated with the
mobile device of the second friend of the plurality
of friends based on a communication link being
established from the mobile device of the first user
to the mobile device of the second friend of the
plurality of friends; and
[E] generating, by the transaction handler and in response
to the communication portal transmitting the offer
to the mobile device of the first user, a trigger
record to trigger further processing, by the
transaction handler, of authorization requests for
payment transactions received in the transaction
handler, wherein:
the trigger record identifies the particular
set of account identifiers that, when included in
an authorization request of the authorization
requests for payment transactions received in the
transaction handler, trigger the further processing,
and
the transaction handler is configured to
detect authorization requests for payment
transactions that satisfy the trigger record to trigger
the further processing, wherein the further
processing includes determining whether each of
the authorization requests for payment
transactions that satisfy the trigger record satisfy
redemption requirements of the offer;
[F] storing, by the transaction handler, the trigger record;
[G] after the transaction handler stores the trigger record,
detecting, by the transaction handler using the trigger
record, a second authorization request for a second
payment transaction, which occurs after the first
payment transaction, made using any one of the
particular set of account identifiers of the plurality of
friends of the first user;
[H] determining, by the transaction handler, that the second
authorization request for the second payment transaction
satisfies the redemption requirements of the offer; and
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[I] providing, by the transaction handler, a benefit associated
with the offer in response to the second authorization
request for the second payment transaction being
detected by the transaction handler, wherein the benefit
includes a discount applied to the second payment
transaction to be authorized in response to the second
authorization request.

ANALYSIS
Section 101 states, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C. § 101. However, the
Supreme Court has “long held that this provision contains an important
implicit exception: “[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. See Alice, 573 U.S. 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.”
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
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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, 679 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n. 7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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. ((alteration in the original) quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “2019 Guidance”). Under Step 2A of 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
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human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, in Step 2B, 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.

Claims 1, 21, and 22
Appellant does not present arguments for the patentability of claims
21 and 22 apart from claim 1. See Appeal Br. 16–24. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 21 and 22 standing or falling with claim 1.

Step 1 – Statutory Category
We first determine whether claim 1 recites one or more of the
enumerated statutory classes of subject matter, i.e., process, machine,
manufacture, or composition of matter, eligible for patenting under
35 U.S.C. § 101. Independent claim 1 recites “[a] computer-implemented
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method,” which includes a series of steps, and, therefore, is a process. See
Appeal Br. 27–30 (Claims App.).

Step 2A, Prong 1 – Recitation of Judicial Exception
We next look to whether claim 1 recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity, or mental processes.
In determining that claim 1 is directed to a judicial exception to patent
eligibility, the Examiner determines that claim 1 is “directed towards
monitoring transaction data of users/social network user information, and
providing targeted offers based on the monitored data.” Final Act. 2.
According to the Examiner, similar to Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017), “the current
invention uses the abstract concept of communicating targeted
content/information to end user(s) based on user information,” including
“gathering user information” and “transmitting the targeted offer to the
user(s).” Final Act. 3 (emphasis omitted).
Appellant argues that independent claim 1 is not directed to an
abstract idea at least because the claim does not recite subject matter that
falls within one of the enumerated groupings of abstract ideas. Appeal Br.
17 (“There are no examples in the Examiner Guidelines comparable to the
list of steps,” and, thus, the Examiner fails “to articulate a succinct abstract
idea.”). According to Appellant, because “[t]he problems solved by the
claimed invention are specific to electronic payment and social networking
technologies,” claim 1 is “not directed to an ‘abstract idea’ under the first
prong of Alice.” Id. at 18 (emphasis omitted).
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The Specification is titled “SYSTEMS METHODS TO FACILITATE
OFFER SHARING,” and describes a mechanism for “the distribution of
offers based on and/or in connection with the processing of transaction
data.” Spec. para. 2. In particular, Appellant’s Specification describes a
method of “us[ing] the transaction data of a user and the transaction data of
the friends of the user to generate a profile to identify, select, and/or
customize an offer that is initially communicated to the user,” offer which
“is [then] shareable by the user with the friends of the user.” Spec. para. 27.
The Specification further describes monitoring the transactions of the user
and the user’s friends “to detect a transaction that satisfies the redemption
requirement of the offer and thus provide the benefit of the offer to the
purchaser involved in the transaction, which may be the user or one of the
friends of the user.” Id.
Consistent with Appellant’s Specification, claim 1 recites “processing
. . . a first payment transaction . . . of a first user” in limitation [A] and
receiving authorization request for making such a payment in limitation [a].
Claim 1 further recites in limitation [B] “performing operations . . . to
transmit an offer to a mobile device of the first user.” In particular, as part
of limitation [B], claim 1 recites “identifying . . . the offer” in limitation [f]
by determining friends of the user via “communicating . . . with a social
network site” in limitation [b], “determining . . . payment accounts” of
friends of the user in limitation [c], “identifying . . . payment transactions
made in the payment accounts” of the user and friends of the user in
limitation [d], and “generating . . . a profile” by “weighting transaction data
. . . and . . . construct[ing] a filter” in limitation [e]. Claim 1 also recites
“transmitting . . . the offer to the mobile device of the first user” in limitation
[C] and “communicating . . . the offer” to the cellphone of a friend of the
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user in limitation [D], if it is determined in limitation [i] that the friend’s
cellphone is in proximity to the user’s cellphone and data associated with the
offer is communicated the friend’s cellphone in limitation [ii]. Claim 1
recites processing of additional authorization requests using a trigger record
generated in limitation [E], storing the trigger record in limitation [F],
receiving/detecting an authorization request for a second payment
transaction in limitation [G], and determining upon receipt if the second
payment transaction satisfies redemption requirements of the offer, as per
limitation [H]. Finally, claim 1 recites in limitation [I] “providing . . . a
benefit associated with the offer.”
These steps constitute commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations), as well as,
mental processes; concepts performed in the human mind such as
observation, evaluation, judgment and opinion and thus, the claim recites the
abstract ideas of “[c]ertain methods of organizing human activity” and
“[m]ental processes.” See 2019 Guidance 51. Accordingly, the Examiner is
correct that “[t]he claimed invention recites the abstract concept of a
commercial interaction - i.e. advertising activities or behaviors-, which . . .
represents a method of organizing human activity” and “also recites the
abstract concept of a mental process - i.e. concept that can be performed in
the mind, or using pen/paper, including an observation/evaluation.”
Examiner’s Answer (dated June 24, 2019, hereinafter “Ans.”) 3.2

2 The Examiner did not provide page numbers on the Answer. However, for
ease of referring to the Examiner’s responses, we have assigned page
numbers 1 through 9 to the Answer.
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In particular, limitation [f] of identifying an offer, limitation [C] of
transmitting the offer to a user, limitation [D] of communicating the offer to
a friend of the user, and limitation [I] of providing a benefit based on the
offer as a discount, constitute commercial interactions, one of the certain
methods of organizing human activity, and, thus, recite an abstract idea. See
2019 Guidance 52. Weighting “transaction data” of limitation [e] is a well-
known method of organizing records of human activity. See Intellectual
ventures I LLV v. Erie Indemnity Co., 850 F.3d 1315, 1326–27 (Fed. Cir.
2017). Likewise is “constructing a filter” in limitation [e] to select only a
portion of the transaction data because it is similar to the concepts of
providing personalized recommendations in Personalized Media Commc’ns,
LLC v. Amazon.Com, Inc., 161 F. Supp. 3d 325, 338 (D. Del. 2015), aff’d
sub nom., 671 F. App’x 777 (Fed. Cir. 2016) and of targeting
advertisements to particular users in Morsa v. Facebook, Inc., 77 F. Supp. 3d
1007, 1014 (C.D. Cal. 2014), aff'd, 622 F. App’x 915 (Fed. Cir. 2015).
“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” 2019 Guidance at 52 n. 14.
See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp. v. SAP
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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.”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible).
In this case, claim 1 recites collecting information limitations, such as,
receiving authorization requests in limitations [a] and [G] and storing a
trigger record in limitation [F]. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity);
see also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611–12 (Fed.
Cir. 2016). Claim 1 also recites transmitting or communicating data
limitations, such as, communicating with social network site in limitation
[b], transmitting offer to user’s cellphone in limitation [C], and
communicating data associated with offer and the offer to friend’s cellphone
in limitations [ii] and [D]. Further, claim 1 recites limitations of analyzing
and comparing transaction data of the user and friends of the user, such as,
processing payment transaction of the user in limitation [A], determining
payment accounts and transactions of the user and friends of the user in
limitations [c] and [d], identifying an offer in limitation [f], comparing
whether additional payment transactions satisfy redemption requirements of
the offer in limitation [H], and providing a benefit associated with the offer
in limitation [I]. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (citing cases) (“we have treated analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes”) (emphasis
added). Likewise, generating a profile using received transaction data of the
user and friends of the user in limitation [e] and generating a trigger record
in limitation [E] involve some analysis of received information, which is a
mental process. Finally, limitation [i] of determining whether the friend’s
cellphone is in proximity to the user’s cellphone employs mere visual
observation. See Spec. para. 26 (“give or pass along the offer . . . to a friend
via bumping mobile devices.”).
In conclusion, the recited steps of claim 1 constitute a method for
“organizing human activity” in terms of “fundamental economic principles
or practices,” i.e., optimizing offer sharing between a user and friends of the
user, and mental processes in terms of “concepts performed in the human
mind,” i.e., data gathering, storage, comparison, analysis,
transmitted/communicated. Thus, claim 1 recites the abstract ideas of
“[c]ertain methods of organizing human activity” and “[m]ental processes.”
See 2019 Guidance 52.
Accordingly, for the foregoing reasons, as we conclude that claim 1
sets forth an abstract idea, as noted above, we proceed to Prong 2 of Step
2A.

Step 2A, Prong 2 – Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong 2, we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
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determine whether they integrate the exception into a practical application.
See 2019 Guidance 54–55. This evaluation requires an additional element or
a combination of additional elements in the claim to 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 exception. See id. at 54.
The Examiner finds that “[c]laim 1 does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 4. According to the Examiner,
claim [1] recites additional elements of a computing system, a
communication portal (described in the Specification as “a
web portal, a telephone gateway, a file/data server, etc.”),
transaction handler, payment processing network, which
represent generic computing elements. They are recited at a
high level of generality and only perform generic functions of
i.e. receiving, manipulating and transmitting information.
Generic computers performing generic functions, do not
amount to significantly more than the abstract idea.

Id.; Ans. 4–5.
Appellant argues that “claims purporting to ‘improv[e] an existing
technological process might not succumb to the abstract idea exception.’”
Appeal Br. 18 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed Cir. 2016)) (emphasis added); Reply Brief (filed Aug. 22, 2019,
hereinafter “Reply Br.”) 2. Hence, in this case, Appellant argues that the
invention of claim 1 “solves the technical problem of offer sharing among
friends,” that is, “[t]he problems solved . . . are specific to electronic
payments and social networking technologies.” Appeal Br. 18 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014))
(emphasis omitted). Appellant contends that “the claims here are directed to
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improved systems for sharing offers through specific platforms and in
particular ways,” and, thus, “the claims . . . are directed to a practical
application involving offers, electronic payment systems, and social media.”
Id. at 19 (emphasis omitted). According to Appellant,
[t]he claims meet several of the practical applications
under Step 2A identified in the 2019 Guidance including at
least:
• improvement in the functioning of a computer, or an
improvement to other technology or technical field;
• implementing a judicial exception with, or using a
judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim;
• applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception.

Id (citing 2019 Guidance at 55). In particular, Appellant asserts that “claim
1 specifies that the computing system generates the profile by weighting
transaction data associated with the plurality of first friends according to a
social distance” and “that certain offers (previously passed from the first
user to a first friend of the plurality of friends) are used to construct a filter
to select a portion of the first transaction data that can be attributed to the
first user.” Id. at 20. Therefore, Appellant contends that the practical
application “is an improvement to a technical field and uses particular
machines.” Id.
As noted above, the question here is whether the claims as a whole
“focus on a specific means or method that 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, Inc. v. Bandai Namco
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Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, we find
Appellant’s claim 1 is distinguished from those claims that our reviewing
court has found to be patent eligible by virtue of reciting technological
improvements to a computer system because claim 1 employs generic
elements, such as, “computing system,” “electronic payment processing
network,” “transaction handler,” “communication portal,” “mobile device,”
“social networking site,” and “data warehouse,” to implement the abstract
idea without any improvement to the computer system itself. See, e.g., DDR
Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer
processor for serving “composite web page” were patent eligible because
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259
(Fed. Cir. 2017) (holding that claims directed to “an improved computer
memory system” having many benefits were patent eligible); see also
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)
(distinguishing between “claims [] directed to an improvement to computer
functionality versus being directed to an abstract idea” or whether “the focus
of the claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.”); Alice, 573 U.S. at 222
(“In holding that the process was patent ineligible, we rejected the argument
that ‘implement[ing] a principle in some specific fashion’ will
‘automatically fal[l] within the patentable subject matter of § 101.’”
(alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593
(1978))).
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In particular, we note that claim 1 uses generic computer elements to
optimize offer sharing between a user and friends of the user. See e.g., Spec.
paras. 27, 434–454. We appreciate Appellant’s position that claim 1 recites
“weighting transaction data associated with payment made by the plurality
of friends of the first user according to a social distance from the first user”
and “construct[ing] a filter to select a portion of the first transaction data
associated with payment transactions that can be attributed to the first user.”
See Appeal Br. 20, 28 (Claims App.). However, claim 1 does not recite how
based on the received data, technologically or by what algorithm, the data is
“weighted,” “social distance” from the user is determined, or the profile and
the trigger record are “generated” or applied, and the Specification provides
no further details. See e.g., Spec. paras. 262, 269, 341, 343. The recited
“computing system,” “electronic payment processing network,” “transaction
handler,” “communication portal,” “mobile device,” “social networking
site,” and “data warehouse” are not the central focus, but rather constitute
generic computer elements to perform the claimed method steps, the results
of which are functionally recited without implantation details.
Thus, the focus of claim 1, as a whole, does not purport to improve
the computer elements themselves, but merely uses the generic elements as a
tool to perform the abstract idea of optimizing offer sharing between a user
and friends of the user. See 2019 Guidance 55; see also Reply Br. 3. 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. Nor do we find anything of record that attributes an improvement in
technology and/or a technical field to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is employed in the 2019 Guidance.
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In particular, the Examiner is correct that optimizing offer sharing
between a user and friends of the user may well improve a business process.
See Ans. 4 (“Sharing an offer represents a business practice/goal.”), 6
(“improving audience targeting for on line advertising” (Spec. para. 80),
“improve the selection of advertisements” (id. at para. 108), “improve the
effectiveness of the advertisements and thus increase sales” (id. at para.
134), “user experience can be improved” (id. at para. 163), “return on
investment for advertisers and merchants can be greatly improved” (id. at
para. 175), and “improve purchasing activities via the offer” (id. at para.
247)). However, like the Examiner, 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 using anything other
than generic components. We, thus, agree with the Examiner that “[t]his
judicial exception is not integrated into a practical application because: the
computing device/communication portal/data warehouse/mobile application
represent generic computing elements, and data gathering/analysis
represents insignificant extra solution activity.” Ans. 5. We also agree with
the Examiner’s position that “[p]erforming the claimed limitations within an
electronic payment processing network/social networking site does no more
than generally link the use of the judicial exception to a particular
technological environment.” Id. at 7.
Accordingly, for the foregoing reasons, we determine that claim 1 of
Appellant’s invention: (1) does not improve the functioning of a computer
or other technology; (2) is not applied with any particular machine; (3) does
not affect a transformation of a particular article to a different state; and (4)
is not applied in any meaningful way beyond generally linking the use of the
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judicial exception to a particular technological environment. See MPEP
§ 2106.05(a)–(c), (g), (h).
Lastly, we are not persuaded by Appellant’s argument that the
Examiner misapprehended the holding in BASCOM Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). See Appeal Br.
24. In BASCOM, the Federal Circuit determined that “its particular
arrangement of elements is a technical improvement over prior art ways of
filtering such content.” BASCOM, 827 F.3d at 1350. The patent at issue
“claim[ed] a technology-based solution (not an abstract-idea-based solution
implemented with generic technical components in a conventional way) to
filter content on the Internet that overcomes existing problems with other
Internet filtering systems.” Id. at 1351. The court determined that “[b]y
taking a prior art filter solution (one-size-fits-all filter at the ISP server) and
making it more dynamic and efficient (providing individualized filtering at
the ISP server), the claimed invention represents a ‘software-based
invention[ ] that improve[s] the performance of the computer system itself.’”
Id.
Here, there is no such improvement to the computer components of
claim 1. Appellant provides no further arguments how the claim’s particular
arrangement and/or integration of elements is a technical improvement or is
otherwise similar to BASCOM. We note that, as discussed above, the claim
simply recites the functional results to be achieved by generic computer
elements. The claim “provides only a result-oriented solution[] with
insufficient detail for how a computer accomplishes it. Our law demands
more.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017) (“Capital One”).
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In conclusion, for the foregoing reasons, we are not persuaded of
error in the Examiner’s determination that claim 1 is directed to an
abstract idea, and we find that the claimed additional elements do not
integrate the abstract idea into a practical application.

Step 2B – Well-Understood, Routine, Conventional Activity
Having determined that claim 1 recites a judicial exception, and does
not integrate that exception into a practical application, under Step 2B we
consider whether the claim adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field.
See 2019 Guidance at 56.
The Examiner finds that “[c]laim 1 does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as [a] combination do not amount to significantly more than
the abstract idea.” Final Act. 4.
After listing various limitations of claim 1, Appellant argues that the
rejection fails to establish that “each of the . . . features . . . are conventional
both individually and in combination.” Appeal Br. 21–23. Appellant
contends that the Examiner’s rejection “glosses over the . . . listed claim
features and numerous others without specificity,” which “is prohibited by
Berkheimer v. HP Inc., 890 F.3d 136[9] (Fed. Cir. 2018).” Id. at 23.
According to Appellant, “a conclusion that each claim element and
combination of claim elements is well-understood or conventional requires
factual support.” Id. at 23–24; see also Reply Br. 3–4.
We appreciate that the court in Berkheimer held that “[t]he
patent eligibility inquiry may contain underlying issues of fact.”
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Berkheimer, 881 F.3d at 1365 (quoting Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The
§ 101 inquiry ‘may contain underlying factual issues.”’)). However,
the court also held that “[w]hen there is no genuine issue of material
fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a
matter of law.” Id. at 1368 (emphasis added). This qualification has
been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56
requires that summary judgment be denied. In Berkheimer,
there was such a genuine dispute for claims 4–7, but not for
claims 1–3 and 9. . . . [I]n accordance with Alice, we have
repeatedly recognized the absence of a genuine dispute as
to eligibility for the many claims that 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, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
additional evidence must be considered—the default being a legal
determination.”).
Here, the Specification indisputably shows that the recited
“computing system,” “electronic payment processing network,” “transaction
handler,” “communication portal,” “mobile device,” “social networking
site,” and “data warehouse,” were conventional at the time of filing. See
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Spec. paras. 434–454. Hence, no genuine issue of material fact exists as to
the well-understood, routine, or conventional nature of the claimed computer
elements. See e.g., Ans. 8.
Considered as an ordered combination, the components of Appellant’s
claim 1 add nothing that is not already present when the steps are considered
separately. Receiving data, generating/analyzing data, saving generated
data, applying rules, sending results of the applying, and authorizing data, is
equally generic and conventional or otherwise held to be abstract. See
Capital One, 850 F.3d at 1341 (holding that the sequence of collecting,
organizing, identifying, mapping, organizing, defining, and detecting was
abstract); Electric Power, 830 F.3d at 1354–56 (holding that the sequence of
gathering, analyzing, and displaying in real-time was abstract); FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (holding
that sequence of generating a rule related to accessing information, applying
the rule, and storing and announcing the results was abstract).
As such, we are not persuaded that the Examiner erred in determining
that the elements of claim 1, considering all elements both individually and
as an ordered combination, do not amount to significantly more than the
abstract ideas of “organizing human activity” in terms of “fundamental
economic principles or practices” and mental processes in terms of
“concepts performed in the human mind.” In other words, the elements of
claim 1, both individually and as an ordered combination, are not sufficient
to amount to significantly more that the abstract idea itself. Hence, claim 1
fails to add a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field.
Accordingly, we are not persuaded that claim 1 is directed to a
specific application designed to achieve an improved technological result.
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Claim 1 is directed to merely ordinary functionality of the above-recited
additional elements to apply an abstract idea. Thus, there is no inventive
concept. We conclude that none of the limitations of claim 1, viewed “both
individually and as an ordered combination,” amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 134 S.Ct. at 2355
(internal quotations omitted) (quoting Mayo, 132 S.Ct. at 1297).
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under the judicial exception to 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Claims 21 and 22 fall with claim 1.

Claims 2–16
The Examiner finds “[d]ependent claims 2-16 further add ideas of
themselves to the independent claims, as well as operations that are generic,
and therefore are directed to an abstract idea without significantly more for
the reasons given in the discussions of claim 1.” Final Act. 5.
Appellant argues that the Examiner’s rejection “does not sufficiently
address or reject the dependent claims [2–16].” Appeal Br. 24. According to
Appellant, “[t]here are no substantive rejections of dependent claims 2-16.”
Id. at 25.
Although we appreciate that the Examiner has not written a separate
rejection for each of dependent claim 2–16, nonetheless, the Examiner did
consider each of these claims when finding that “[d]ependent claims 2-16
further add ideas of themselves to the independent claims, as well as
operations that are generic.” See Final Act. 5; Ans. 8. Stated differently, the
Examiner finds that the limitations of dependent claims 2–16 recite the same
abstract ideas of “organizing human activity” in terms of “fundamental
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economic principles or practices” and “mental processes” that could be
performed mentally, or by a human using pen and paper, which together
describe the concept of optimizing offer sharing between a user and friends
of the user. Hence, adding narrowing limitations, as per dependent claims
2–16 that are themselves abstract, does not suffice to transform the claimed
abstract idea into patent-eligible subject matter, and, thus, adds nothing
beyond the abstract idea set forth in independent claim 1 from which these
claims depend.
In conclusion, as Appellant provides no substantive explanation as to
why any of dependent claims 2–16 recites something significantly more than
the abstract idea recited in independent claim 1, from which these claims
depend, claims 2–16 are likewise patent-ineligible.

CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16, 21, 22 101 Eligibility 1–16, 21, 22

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