MASTERCARD INTERNATIONAL INCORPORATED

Patent Trials and Appeals Board

Apr 2, 2020

14460601 - (D) (P.T.A.B. Apr. 2, 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.
14/460,601 08/15/2014 Suman Rausaria 16754-000026-US 1574
120493 7590 04/02/2020
Harness Dickey (Mastercard)
7700 Bonhomme
Suite 400
St. Louis, MO 63105
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
gwmefile@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUMAN RAUSARIA, MICHAEL RETHORN, and
SAURABH MEHTA
____________

Appeal 2019-000483
Application 14/460,601
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1–6,
8–16, and 18–20 under 35 U.S.C. § 101. We AFFIRM.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors”) as defined in 37 C.F.R. § 1.42. “The real party in interest in this
Appeal is MasterCard International Incorporated.” (Appeal Br. 3.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134 and
35 U.S.C. § 6(b).
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BACKGROUND
The Appellant provides a method/system for “assigning a [unique]
bank identification number (BIN) to an issuer” (Spec. ¶ 1), so that this
issuer, in turn, can assign unique “primary account number[s] [PANs]” to its
customers (id. ¶ 3). The “issuer” can be, for example, a bank which issues
credit/debit cards to its customers, with each of these cards being assigned a
unique PAN. (See e.g., Spec. ¶ 18, Fig. 1.)
It is known to assign a BIN to a card-issuing bank, it is known to
provide merchants with information correlating an assigned BIN with this
particular bank, and it is known to identify this bank by its assigned BIN
(incorporated into a PAN) during a financial transaction with a merchant.
(See Spec. ¶ 3.)
According to the Appellant, there is an established convention for
assigning a BIN and identifying an assigned BIN in a PAN. (See id. ¶ 11.)
With this convention, a PAN has a sixteen digit length with a trailing check
digit, leaving fifteen digits (16 – 1 = 15). Also with this established
convention, the leading six digits of a PAN are the card-issuing bank’s BIN,
leaving nine digits (15 – 6 = 9). Mathematically, nine digits can be
permutated into a billion (109) different numerical sequences.
Thus, with the established convention, a bank is always assigned a
six-digit BIN, and a PAN always has nine permutation digits. If Bank X
anticipates needing more than one hundred million (>108) PANs, it will need
all nine permutation digits to do so. If Bank Y anticipates needing less than
one hundred million (<108) PANs, it can be accommodated with eight
permutation digits. Thus, the quantity of PANs a bank anticipates needing is
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just another way of saying the number of permutation digits the bank
anticipates needing.
According to the Appellant, the problem with the established
convention is that, if an economic community has more than a million (106)
card-issuing banks, not every bank can be assigned a unique six-digit BIN.
(See Spec. 11.) And the Appellant appreciated that this problem could not
be solved by simply adopting a longer BIN length. (See id.)
Mathematically, a million (106) six-digit BINs can be assigned
resulting in PANs with nine permutation digits (15 – 6 = 9); and ten million
(107) seven-digit BINs can be assigned resulting in PANs with eight
permutation digits (15 – 7 = 8). Thus, if a seven-digit BIN length was
adopted, Bank Y could be accommodated because its needs are met with
eight permutation digits. However, Bank X could not be accommodated,
because it requires PANs with nine permutation digits.
The Appellant solves this problem with an assignment scheme in
which BIN lengths are varied based on the number of PANs a BIN-
requesting bank anticipates needing. As discussed above, this is just another
way of saying that BIN lengths are varied based on how many permutation
digits a bank anticipates needing.
For example, Bank X’s anticipated need for more than a hundred
million (>108) PANs is just another way saying that Bank X needs nine
permutation digits; and Bank Y’s anticipated need for less than a hundred
million (<108) PANs is just another way of saying that Bank Y can be
accommodated with eight permutation digits.
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With Appellant’s modified convention, Bank X and Bank Y would
each be assigned a BIN having a digit length aligned with their anticipated
need for permutation digits. For example:
BANK PANs permutation digits BIN length BIN
Bank W >108 (9) 15 – 9 = 6 123454
Bank X >108 (9) 15 – 9 = 6 123455
Bank Y <108 (8) 15 – 8 = 7 1234560
1234561
1234562
1234563
1234564
1234565
1234566
1234567
1234568
1234569
Bank Z >108 (9) 15 – 9 = 6 123457
The above table shows that Bank X is assigned the six-digit BIN 123455,
which meets its anticipated need for more than a hundred million PANs; and
Bank Y is assigned the seven-digit BIN 1234560, which meets its
anticipated need for less than one hundred million (108) PANs.
As also shown in the above table, when the six-digit root 123456 was
used for the seven-digit BIN 1234560, a string of seven-digit BINs (i.e.,
1234561 to 1234569) can be assigned to nine more banks having an
anticipated need for less than one hundred million (<108) PANs.
When a customer presents his/her card to a merchant for a purchase,
the merchant uses the PAN printed (or otherwise correlated) with the card to
secure payment for this purchase. With the established convention, the
merchant knows that the leading six digits of the PAN are a six-digit BIN,
and the merchant uses this six-digit BIN to identify the card-issuing bank.
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For example, the merchant searches a BIN directory listing all the assigned
six-digit BINs and their corresponding banks.
With the Appellant’s modified convention, a merchant cannot assume
that the first six digits of a PAN equate to its BIN, because sometimes the
BIN will have a longer digit length. Thus, needless to say, when a merchant
is using a PAN to identify a card-issuing bank, the merchant needs to know
how many of the PAN’s leading digits are the bank’s BIN. The Appellant
addresses this by providing the merchant with a BIN indicator that indicates
that a PAN does not have a six-digit BIN, and/or the BIN directory
designating which six-digit roots correspond to the seven-digit BIN. For
example, an authorization request could indicate that a PAN’s BIN has a
non-standard length (i.e., not six digits), and/or the BIN directory would
designate the six-digit root 123456 as corresponding to card-issuing banks
having seven-digit BINs.
Thus, the Appellant provides an improved assignment scheme for
assigning BINs which allows the assignment of BINs to more than a
million card-issuing banks, while, at the same time, accommodating banks
which need nine-digit permutations to assign PANs to their customers.
INDEPENDENT CLAIMS
(with our annotations and modified paragraphing)
1. A computer-implemented method for use in assigning
a bank identification number (BIN) to an issuer, the method
comprising:
[(a)] identifying a payment account demand for an
issuer to a payment service provider, the payment account
demand associated with an anticipated number of primary
account numbers (PANs) for the issuer, each PAN having a
PAN length;
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[(b)] selecting a BIN length for the issuer based on the
payment account demand, the selected BIN length being greater
than a conventional BIN length and less than the PAN length,
thereby permitting payment accounts associated with the
conventional BIN length for the payment service provider to be
divided among the issuer and other issuers;
[(c)] assigning, at a computing device, a BIN to the
issuer, the BIN having the selected BIN length;
[(d)] appending, at the computing device, the assigned
BIN to a BIN directory in a data structure and
[(e)] designating the BIN in the BIN directory as a non-
standard BIN for the payment service provider, the BIN being
associated with the issuer, wherein the BIN is different than
each other BIN in the BIN directory; and
[(f)] disseminating the BIN directory to an acquirer,
thereby permitting the acquirer to assign a transaction
including the PAN to the issuer, despite the BIN being the non-
standard BIN.

9. A system for assigning a bank identification number
(BIN) to an issuer, the system comprising:
one or more computing devices for handling BIN
requests from multiple issuers, the one or more computing
devices including a BIN directory data structure and executable
instructions that, when executed, cause the one or more
computing devices to:
[(g)] assign a first BIN having a first BIN length, based
on a first payment account demand, to a first issuer, the
first BIN length of the first BIN being other than 6 digits,
the first payment account demand indicative of a number of
primary account numbers (PANs) anticipated to be issued
by the first issuer;
[(h)]append the first BIN to the BIN directory data
structure, the appended first BIN associated with the first
issuer; and
[(i)] assign a second BIN having a second BIN length to
a second issuer, the second BIN length being 6 digits;
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wherein the first BIN and the second BIN are both
associated with a same payment service provider.

16. A computer-implemented method for use in
processing transactions to payment accounts, the method
comprising:
[(j)] receiving an authorization request for a transaction
to a payment account, the payment account associated with a
payment account number (PAN) having a bank identification
number (BIN), the authorization request including a BIN
indicator only when a length of the BIN included in the PAN is
unknown and different than a 6-digit conventional length;
[(k)] detecting the BIN indicator in the authorization
request and identifying the PAN;
[(l)] identifying, by a computing device, the BIN
included in the PAN, based at least in part on the detection of
the BIN indicator;
[(m)] searching, by the computing device, in a BIN
directory stored in memory, for an issuer associated with the
BIN included in the PAN; and assigning, by the computing
device, the transaction to the payment account associated with
the PAN to the issuer, whereby the transaction is assigned to
the issuer despite the PAN including the BIN having the
unknown BIN length.
REJECTION
The Examiner rejects claims 1–6, 8–16, and 18–20 under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.
(See Final Action 10.)
JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
Yet the Supreme Court has “long held” that this provision contains an
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important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U. S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or more concisely, “judicial
exceptions.” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1311 (Fed. Cir. 2016).) Thus, an “abstract idea” is a judicial exception to
subject matter (e.g., a method or system) that would otherwise be deemed
patent eligible under 35 U.S.C. § 101.
THE ALICE TEST
In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the
Supreme Court provided a two-step test to detect when an attempt is being
made to patent an abstract idea in isolation. (Id. at 217–18.) In Alice step
one, a determination is made as to whether the claim at issue is “directed to”
an abstract idea. (Id. at 218.) When applying Alice step one, attention can
be given to whether an abstract idea recited in the claim has been integrated
into a practical application. (See id. at 217.) Although a judicial exception
(e.g., an abstract idea) cannot be patented, “an application” of a judicial
exception “to a known structure or process may well be deserving of patent
protection.” (Diamond v. Diehr, 450 U.S. 175, 187 (1981); see also Bilski v.
Kappos, 561 U.S. 593 (2010).)
If the claim at issue is “directed to” an abstract idea, Alice step two
must be performed. (See Alice, 573 U.S. at 217–18.) In the second step of
the Alice test, a determination is made as to whether “additional elements” in
the claim, both individually and as an ordered combination, contribute
“significantly more” than the abstract idea. (Id.) When performing Alice
step two, attention is given to whether additional elements, and any ordered
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combination thereof, are “well-understood,” “routine,” or “conventional.”
(Id. at 225.)
2019 § 101 GUIDANCE
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with specific steps for discerning whether a
claim passes the Alice test for patent eligibility. (See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).) These
steps are “[i]n accordance with judicial precedent” and consist of a
two-pronged Step 2A and a Step 2B. (Id. at 52.)
ANALYSIS
The Examiner concludes that claims on appeal fail the Alice test for
patent eligibility. (See Final Action 10.) We have carefully considered the
Appellant’s arguments (see Appeal Br. 7–39; Reply Br. 2–16), but, as
explained below, we agree with the Examiner that the claims on appeal do
not pass the Alice test for patent eligibility.
Step 2A—Prong One
Per the 2019 § 101 Guidance, we begin our analysis with the first
prong of Step 2A (Prong One), where we determine whether a claim
“recites” an abstract idea. (2019 § 101 Guidance, 84 Fed. Reg. at 54.) The
Guidance “extracts and synthesizes key concepts identified by the courts as
abstract ideas,” and these concepts include “[c]ertain methods of
organizing human activity,” and, more particularly “fundamental economic
practices.” (Id. at 52.)
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The use of unique numerical sequences to identify banks during
financial transactions is a fundamental economic practice.3 This
fundamental economic practice necessarily entails assigning unique
numerical sequences to banks, providing merchants with information
which correlates the banks to their assigned numerical sequences, and
identifying banks by their assigned numerical sequence during a financial
transaction.
Independent claim 1 sets forth a method for use in assigning a bank
identification number (BIN) to an issuer comprising steps (a)–(f). Thus,
claim 1 sets forth a method for carrying out the fundamental economic
practice of assigning a unique numerical sequence to identify a bank (i.e.
an “issuer”) during a financial transaction.
More specifically, step (a) sets forth identifying a payment account
demand for an issuer to a payment service provider, the payment account
demand associated with an anticipated number of primary account
numbers (PANs) for the issuer, each PAN having a PAN length. Thus,
claim 1 recites that a bank’s request for a BIN assignment specifies the
number of PANs the issuer anticipates needing.

3 For example, in Alice, the fundamental economic practice involved the
“accounts” (i.e., the account numbers) of the parties participating in a
financial transaction. (See Alice 573 U.S. at 224.) Also, in Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017), the fundamental economic practice involved generating and
transmitting a code) in connection with a credit-card transaction; and in
Smart Systems Innovations, LLC v. Chicago Transit Authority, 973 F.3d
1364, 1372 (Fed. Cir. 2017), the fundamental economic practice involved a
“transit account” for entering a mass transit system.
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For example, Bank X’s request for a BIN assignment could specify
that it anticipates needing more than a hundred million (>108) PANs; and
Bank Y’s request for a BIN assignment could specify that it anticipates
needing less than a hundred million (<108) PANs. Mathematically, this
means that Bank X needs nine-digit permutations, and thus nine
permutation digits, to meet its anticipated need for PANs, while Bank Y
only needs eight-digit permutations, and thus eight permutation digits, to
meet its anticipated need for PANs.
Thus, in step (a), the BIN-requesting bank specifies the number of
permutation digits it anticipates needing.
Step (b) sets forth selecting a BIN length for the issuer based on the
payment account demand, the selected BIN length being greater than a
conventional BIN length and less than the PAN length. Thus, claim 1
recites that a bank’s BIN-length is arithmetically selected by subtracting a
bank’s required permutation digits from the number of digits available in
the PAN.
For example, a sixteen-digit PAN having a one check digit has
fifteen available digits (16 – 1 = 15). Bank X requires nine permutation
digits, and so a six-digit BIN length would be arithmetically selected for
Bank X (15 – 9 = 6). Bank Y can be accommodated with eight
permutation digits, and so a seven-digit BIN length would be arithmetically
selected for Bank Y (15 – 8 = 7).
Step (c) sets forth assigning a BIN to the issuer, the BIN having the
selected BIN length. Thus, claim 1 recites that a bank is assigned a BIN
having the digit length arithmetically selected in step (b). For example,
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Bank X is assigned the six-digit BIN 123455, and Bank Y is assigned the
seven-digit BIN 1234560.4
Step (d) sets forth appending the assigned BIN to a BIN directory.
Thus, claim 1 recites that a BIN directory is appended (i.e., updated) when a
new BIN is assigned to an issuer. For example, the BIN directory is updated
to reflect that the six-digit BIN 123455 identifies Bank X; and that the
seven-digit BIN 1234560 identifies Bank Y.
Step (e) sets forth designating the BIN in the BIN directory as a non-
standard BIN for the payment service provider. Thus, claim 1 recites the
BIN designates a seven-digit BIN as not being a standard six-digit BIN. For
example, Bank Y’s seven-digit BIN 1234560 would be designated in the
BIN directory as not being a six-digit BIN. We note that this “designation”
could be accomplished simply by listing the seven digits of Bank Y’s BIN.
Step (f) sets forth disseminating the BIN directory to an acquirer,
thereby permitting the acquirer to assign a transaction including the PAN to
the issuer, despite the BIN being the non-standard BIN. Thus, claim 1
recites disseminating the information necessary to identify a bank by its
BIN, even when this BIN is not a standard BIN length. For example, an
acquirer (e.g., a merchant) could identify Bank Y during a transaction by its
seven-digit BIN 1234560, even though this Bank Y’s BIN does not have a
six-digit length.

4 As discussed above, when Bank Y is assigned the seven-digit BIN
1234560, a string of other seven-digit BINs (1234561, 1234562, . . .
1234569) become available for assignment. Thus, selecting a seven-digit
BIN length for Bank Y permit[s] payment accounts associated with the
conventional BIN length for the payment service provider to be divided
among the issuer and other issuers.
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Hence, independent claim 1 recites using the Appellant’s assignment
scheme to assign a BIN (i.e., a numerical sequence) to a bank (i.e., an
“issuer”) and providing a merchant (i.e., an “acquirer”) with the information
necessary to identify this bank by its assigned BIN.
Independent claim 9 sets forth a system for assigning a bank
identification number (BIN) to an issuer by performing steps (g)–(i). Thus,
claim 9, like claim 1, sets forth a system for carrying out the fundamental
economic practice of assigning a unique numerical sequence to identify a
bank (i.e. an “issuer”) during a financial transaction.
More specifically, in step (g), the system assigns a first BIN having
a first BIN length, based on a first payment account demand, to a first
issuer, the first BIN length of the first BIN being other than 6 digits, the
first payment account demand indicative of a number of primary account
numbers (PANs) anticipated to be issued by the first issuer. Thus, claim 9
recites that an issuer is assigned a BIN having a BIN length that is not six
digits because the issuer’s anticipated need for PANs (i.e., permutation
digits) can be accommodated by a BIN having another digit length. For
example, Bank Y is assigned the seven-digit BIN 1234560 because it can
be accommodated with eight permutation digits and thus a seven-digit BIN
(15 – 8 = 7).
In step (i), the system appends the first BIN to the BIN directory, the
appended first BIN associated with the first issuer. Thus, claim 9 recites
that a BIN directory is updated when a new BIN is assigned to the issuer.
For example, the BIN directory is appended to include the seven-digit
BIN 1234560 so that Bank Y can be identified by this seven-digit BIN.
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In step (h), the system assigns a second BIN having a second BIN
length to a second issuer, the second BIN length being 6 digits wherein the
first BIN and the second BIN are both associated with a same payment
service provider. Thus, claim 9 recites that another issuer is assigned a six-
digit BIN. For example, Bank X is assigned a six-digit BIN 123455
because it needs nine permutation digits and thus cannot be assigned a
seven-digit BIN (15 – 9 = 7).
Hence, independent claim 9, like independent claim 1, recites using
the Appellant’s assignment scheme to assign a BIN (i.e., a numerical
sequence) to a bank (i.e., an “issuer”) and provide the information necessary
to identify the bank by its assigned BIN.
Independent 16 sets forth a method for use in processing
transactions to payment accounts comprising steps (j)–(m). Thus, claim 16
sets forth a method for carrying out the fundamental economic practice of
identifying a bank by an assigned numerical sequence during a financial
transaction.
More specifically, step (j) sets forth receiving an authorization
request for a transaction to a payment account, the payment account
associated with a payment account number (PAN) having a bank
identification number (BIN), the authorization request including a BIN
indicator only when a length of the BIN included in the PAN is unknown and
different than a 6-digit conventional length. Thus, claim 16 recites that a
transaction-authorization request will indicate when the BIN length is not six
digits in the PAN associated with this request. For example, a merchant’s
authorization request associated with a PAN issued by Bank Y (which has a
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seven-digit BIN 1234560) will include an indication that the BIN is not six
digits.
Step (k) sets forth detecting the BIN indicator in the authorization
request and identifying the PAN. Thus, claim 16 recites that the BIN
indicator in the authorization request is detectable and that the PAN is
readable.
Step (l) sets forth identifying the BIN included in the PAN, based at
least in part on the detection of the BIN indicator. Thus, claim 16 recites
that a BIN identifier helps to identify a BIN included in a PAN. For
example, the BIN indicator will help a merchant to identify the seven
leading digits 1234560 of a PAN as a seven-digit BIN.
Step (m) sets forth searching in a BIN directory for an issuer
associated with the BIN included in the PAN. Thus, claim 16 recites that a
BIN directory can be used to correlate the BIN identified in step (l) with the
bank assigned this BIN. For example, the BIN directory will correlate the
BIN 1234560 with Bank Y.
Step (l) sets forth assigning the transaction to the payment account
associated with the PAN to the issuer whereby the transaction is assigned to
the issuer despite the PAN including the BIN having the unknown BIN
length. Thus, claim 16 recites that the transaction can proceed because a
BIN, which does not have a six-digit length, can be correlated with an issuer.
For example, the transaction can proceed because the merchant can correlate
the seven-digit BIN 124560 to Bank Y.
Hence, independent claim 16 recites providing a merchant with the
information necessary to identify a bank when its BIN (i.e., its unique
numerical sequence) is assigned by the Appellant’s assignment scheme.
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Thus, independent claims 1, 9, and 16 recite the fundamental
economic practice of using unique numerical sequences to identify banks
during financial transactions. A “fundamental economic practice” is a
“[c]ertain method of organizing human activity” that constitutes an abstract
idea. (2019 § 101 Guidance, 84 Fed. Reg. at 52.)
Consequently, under Prong One of Step 2A, the independent claims
recite an abstract idea, and we proceed to the second prong of Step 2A
(Prong Two).
Step 2A—Prong Two
In Prong Two, we evaluate whether a claim contains additional
elements that “integrate” the abstract idea “into a practical application.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 52.) “Additional elements” are
“claim features, limitations, and/or steps that are recited in the claim beyond
the identified judicial exception.” (Id. at 55 n.24.) Thus, here, the
“additional elements” are those “beyond” the fundamental economic
practice of using unique numerical codes to identify parties in financial
transactions.
Independent claims 1, 9, and 16 each recites a “computing device”
(Appeal Br., Claims App.) which would be considered an additional element
beyond the fundamental economic practice recited in the claims.
When an additional element in a claim is a “computer,” the relevant
question is not whether the claim requires the computer to accomplish a
recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is
whether the claim does more than simply “instruct the practitioner to
implement the abstract idea” on a computer. (Id. at 225.) The mere
recitation of a computer in the claim, and/or words simply saying “apply”
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the abstract idea “with a computer,” will not transform the “abstract idea into
a patent-eligible invention.” (Id. at 223.) In short, the sheer introduction of
a computer into the claim is not enough to “impart patent eligibility.” (Id.)
Independent claim 1 requires the assigning of a BIN, and the
appending of the assigned BIN to a BIN directory, to be done “at the
computing device.” (Appeal Br., Claims App.) Independent claim 9
requires the “computing device” to execute the instructions to assign a first
BIN, append the first BIN to the BIN directory, and assign a second BIN.
(Id.) Independent claim 16 requires the identifying of the BIN included in
the PAN, the searching in the BIN directory, and the assigning of the
transaction to be done “by the computing device.” (Id.) Thus, the claims
simply instruct a practitioner to implement these abstract-idea steps on a
computer.
Independent claim 1 recites that the BIN directory is “in a data
structure,” independent claim 9 recites “a BIN directory data structure,” and
independent claim 16 recites “a BIN directory stored in memory.” (Appeal
Br., Claims App.) Insofar as these recitals even implicate a computer
component that qualifies as an additional element, the claims simply say to
implement the BIN directory on a database.
The 2019 § 101 Guidance requires us to also look at additional
elements both individually and as a whole in our evaluation of whether the
abstract idea has been integrated into a practical application. (See 2019
§ 101 Guidance, 84 Fed. Reg. at 54.) “Even when additional elements are
not enough on their own to meaningfully limit an exception, the claimed
combination of these additional elements may still provide the practical
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application.” (Id.) But, here, the computing device is not claimed in
combination with the database or any other computer components.
Consequently, under Prong Two of Step 2A, additional elements in
the independent claims do not integrate the recited fundamental economic
practice into a practical application, and we proceed to Step 2B.
Step 2B
In Step 2B, we evaluate whether “additional elements recited in the
claim[] “provide[s] ‘significantly more’ than the recited judicial exception.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 56.) More particularly, we
evaluate whether these additional elements “add[] a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity,” or whether they instead “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
(Id.) If the additional elements consist of a conventional arrangement of
conventional computer components, they will not amount to significantly
more, and the claim fails the Alice test for patent eligibility. (Id.)
Here, the computing device “may include, for example, one or more
servers, workstations, personal computers, laptops, tablets, PDAs, point of
sale terminals, smartphones.” (Spec. ¶ 15.) The “exemplary computer
device” is described as including a “processor” which can be “a central
processing unit (CPU), a microprocessor, a microcontroller, a programmable
gate array, an ASIC, a logic device, or the like.” (Id. ¶ 16.) As for the
database associated with the BIN directory, it is described as “a listing of the
BINs that the payment service provider has issued.” (Id. ¶ 30, reference
numerals omitted.) As for the ordered combination of additional elements,
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as noted above, the computing device is not claimed in combination with the
database or any other computer components.
Consequently, under Step 2B, additional elements in the independent
claims do not provide significantly more than the recited fundamental
economic practice. We, therefore, agree with the Examiner that the claims
on appeal fail the Alice test for patent eligibility.
The Appellant’s Arguments
The Appellant argues that the claims on appeal do not just recite a
BIN assignment scheme, but a very specific BIN assignment scheme. (See
e.g., Appeal Br. 11.) And, according to the Appellant, its specific BIN
assignment scheme (i.e., varying BIN length based on the number of
permutation digits a bank requires) has never been done before. (See e.g.,
id. at 20.) However, a “brilliant” assignment scheme, like every other
assignment scheme, is part of the fundamental economic practice of using
unique numerical sequences to identify banks in financial transactions.5
Along this same line, the Appellant argues that the claims on appeal
“are directed to specific, concrete methods and systems to effect the
assignment of bank identification (BINs) to issuers and to process
transactions in accordance with those BINs.” (Appeal Br. 14.) As discussed
above, the independent claims contain limitations that are particular to the
Appellant’s assignment scheme (i.e., varying BIN length based on the

5 Even a “brilliant” abstract idea “does not by itself satisfy the § 101
inquiry.” (Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013).) And, “a claim for a new abstract idea is still an abstract
idea.” (Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016).)
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number of permutation digits a bank requires). However, the recital of a
“new” assignment scheme does not transform it into something other than a
fundamental economic practice.
Thus, insofar as the claims are directed to an improved version of the
fundamental economic practice of using numeric sequences to identify banks
in financial transactions, they are still directed to an abstract idea.
The Appellant argues that its claimed method/system solves a
“specific” problem “with prior payment network and electronic payment
transaction technology.” (Appeal Br. 9.) But the Appellant itself defines
this problem as the inability to assign more than a million six-digit BINs.
This problem does not reside in electronic payment transaction technology,
but rather in the mathematical reality that fixed digit lengths can only be
permutated into so many unique numerical sequences. This mathematical
reality would exist regardless of whether six-digit numerical sequences were
being used in financial transactions (electronic or otherwise).
The Appellant argues the “the pending claims are necessarily rooted
in payment network technology” (Reply Br. 11), and that its BIN assignment
scheme is embedded in “payment network and electronic payment
transaction technology” (Appeal Br. 9). However, the Appellant does not
point, with particularity, to limitations in the claim language that confine its
method/system to a network and/or electronic-payment-transactions
environment.6 Moreover, insofar as the claim language does link the

6 Independent claims 1 and 9 do not recite any limitations regarding the use
of a BIN, assigned by the Appellant’s assignment scheme, in an electronic
payment transaction. Independent claim 16 requires the “assigning, by the
computing device, the transaction to the payment account associated with
the PAN to the issuer.” (Appeal Br., Claims App.) However, independent
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Appellant’s method/system to the environment of electronic payment
transactions, this does not, in and of itself, render the claims any less
abstract. (See 2019 § 101 Guidance, Federal Register Vol. 84, No. 4, at 55.)7
The Appellant argues that “preemption is not of concern here.”
(Reply Br. 9.) According to the Appellant, its claims “do not seek to tie up
any abstract idea (or even assigning a bank identification number (BIN) to
an issuer and/or processing a transaction using the assigned BIN, in general)
such that others cannot practice it.” (Appeal Br. 8.) However, “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, 573 U.S. at 216).) Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” (Id.)
Thus, after careful consideration of the Appellant’s arguments, we
still agree with the Examiner that independent claims 1, 9, and 16 are
directed to a judicial exception without significantly more.
Summary
We sustain the Examiner’s rejections of independent claims 1, 9,
and 16 under 35 U.S.C. § 101. The Appellant does not argue the dependent

claim 16 does not recite any limitations requiring electronic payment of the
transaction.
7 For example, in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016), the Federal Circuit held that “limiting the claims to
the particular technological environment of power-grid monitoring is,
without more, insufficient to transform them into patent-eligible applications
of the abstract idea at their core.”
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claims separately (see Appeal Br. 39), and so they fall with the independent
claims.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Basis/Reference(s) Affirmed Reversed
1–6, 8–16,
18–20
101 Eligibility 1–6, 8–16,
18–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED