MasterCard International Incorporated

Patent Trials and Appeals Board

Jun 11, 2020

14554713 - (D) (P.T.A.B. Jun. 11, 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.
14/554,713 11/26/2014 Pedro J. Chavarria 21652-00387 3243
75564 7590 06/11/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PEDRO J. CHAVARRIA and KRISTOFER PEREZ
________________

Appeal 2019-001223
Application 14/554,713
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
JEREMY J. CURCURI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which constitute all of the pending claims.1
Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Mastercard International Incorporated. Appeal Brief filed June 1, 2018
(“Appeal Br.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A computer-implemented method for recommending
vacation options based on transaction data is implemented by a
vacation recommendation computer device in communication
with a memory. The method includes receiving a plurality of
transaction data associated with a cardholder, processing the
plurality of transaction data to determine a plurality of cardholder
vacation characteristics, receiving a plurality of vacation options
including at least one vacation attribute, identifying at least one
vacation option responsive to the cardholder by comparing the
plurality of cardholder vacation characteristics to the at least one
vacation attribute, and recommending the at least one identified
vacation option to the cardholder.
Abstract.

STATEMENT OF THE REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent-eligible subject matter (an abstract idea)
without reciting significantly more. Final Act. 3–7.2
Claims 1, 3, 4, 8, 10, 11, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Williams (US 2014/0279250 A1;
published Sept. 18, 2014) and Winters (US 2011/0231257 A1; published
Sept. 22, 2011). Final Act. 8–14.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
October 24, 2017 (“Final Act.”); the Examiner’s Answer mailed September
21, 2018 (“Ans.”); and the Reply Brief filed November 21, 2018 (“Reply
Br.”).
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Claims 2, 9, and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Williams, Winters, Gray (US 2015/0073841 A1;
published Mar. 12, 2015), and Rugge (US 7,555,451 B2; issued June 30,
2009). Final Act. 16–18.
Claims 5, 6, 12, 13, 19, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Williams, Winters, and Fikes
(US 2005/0071224 A1; published Mar. 31, 2005). Final Act. 14–16.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Williams, Winters, and Goenka (US 2012/0059707 A1;
published Mar. 8, 2012). Final Act. 18–19.3

STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

THE SECTION 101 REJECTION
The Claimed Invention
Independent claim 1, which represents the appealed claims, is
reproduced below.4 The claim has been reformatted and bracketed

3 The Examiner issued an additional indefiniteness rejection under § 112(b)
in the Final Office Action. Final Act. 2–3. This rejection was withdrawn in
the Examiner’s Answer. Ans. 3.
4 Appellant argues the section 101 rejection of all of the appealed claims
together as a group. Appeal Br. 6–18. Accordingly, we select independent
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
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paragraph labels have been added for clarity. Also, the claim language that
recites the abstract ideas has been emphasized:
1. A computer-implemented method for recommending
vacation options based on cardholder transaction data from a
payment network, the method implemented by a vacation
recommendation computer device in communication with a
memory and the payment network, the method comprising:
[(a)] receiving a plurality of cardholder transaction data
associated with a particular cardholder;
[(b)] determining, from the received cardholder
transaction data, a primary region associated with the particular
cardholder;
[(c)] processing the received plurality of cardholder
transaction data to
(i) distinguish vacation transaction data from
ordinary transaction data based on at least one of a
card-present transaction location outside of the
primary region and a merchant category, included
with each cardholder transaction data,
(ii) associate one or more merchant categories
with a respective category of vacation travel,
(iii) determine that the particular cardholder has
initiated a plurality of purchase transactions within
at least one of the associated merchant categories,
(iv) determine a plurality of cardholder vacation
characteristics from at least one of the vacation
transaction data and the ordinary transaction data,
and
(v) determine at least one category of vacation
travel for the particular cardholder based on the
plurality of purchase transactions within the at least
one associated merchant category;
[(d)] receiving a plurality of vacation options including
at least one vacation attribute;
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[(e)] identifying, by the vacation recommendation
computer device, at least one vacation option responsive to the
particular cardholder by comparing the plurality of cardholder
vacation characteristics in the at least one determined category
of vacation travel to the at least one vacation attribute; and
[(f)] recommending the at least one identified vacation
option to the cardholder.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. 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 Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 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.
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook) (citation omitted); see also, 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 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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. at 52–54.
Limitation (a) recites the step of “receiving a plurality of
cardholder transaction data associated with a particular cardholder.”
Receiving data constitutes a certain method of organizing human
activity that entails managing interactions between people. The
2019 Guidance expressly recognizes this type of certain method of
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organizing human activity as constituting a patent-ineligible abstract
idea. 2019 Guidance, 84 Fed. Reg. at 52.
Receiving data additionally constitutes a mental process that entails an
observation that can be performed in the human mind. The 2019 Guidance
also recognizes mental processes, including observations, as constituting a
patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Accordingly, limitation (a) recites a patent-ineligible abstract idea.
Limitations (b) and (c) recite the following steps:
[(b)] determining, from the received cardholder
transaction data, a primary region associated with the particular
cardholder;
[(c)] processing the received plurality of cardholder
transaction data to (i) distinguish vacation transaction data from
ordinary transaction data based on at least one of a card-present
transaction location outside of the primary region and a merchant
category, included with each cardholder transaction data, (ii)
associate one or more merchant categories with a respective
category of vacation travel, (iii) determine that the particular
cardholder has initiated a plurality of purchase transactions
within at least one of the associated merchant categories, (iv)
determine a plurality of cardholder vacation characteristics from
at least one of the vacation transaction data and the ordinary
transaction data, and (v) determine at least one category of
vacation travel for the particular cardholder based on the
plurality of purchase transactions within the at least one
associated merchant category.
Both of limitations (b) and (c) constitute mental processes that can be
performed in the human mind. More specifically, these steps entail
evaluations or judgments that can be performed exclusively in the human
mind or with the aid of pencil and paper. The 2019 Guidance expressly
recognizes mental evaluations and judgments as constituting patent-
ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly,
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limitations (b) and (c) recite judicial exceptions to patent-eligible subject
matter.
Limitations (d) recites “receiving a plurality of vacation options
including at least one vacation attribute.” For the reasons discussed above in
relation to limitation (a), the data-receiving step of limitation (d) also recites
a patent-ineligible abstract idea.
Limitation (e) recites “identifying . . . at least one vacation option
responsive to the particular cardholder by comparing the plurality of
cardholder vacation characteristics in the at least one determined category of
vacation travel to the at least one vacation attribute.” Identifying options
constitutes an evaluation or judgment that can be performed in the human
mind. For the reasons set forth in relation to limitations (b) and (c), then,
limitation (e) also recite a patent-ineligible abstract idea.
Limitation (f) recites “recommending the at least one identified
vacation option to the cardholder.” Making a recommendation to another
constitutes a certain method or organizing human activity. More
specifically, the step entails an advertising, marketing, or sales activity, or a
step of managing interactions between people, including teaching. The
2019 Guidance expressly recognizes these particular certain methods of
organizing human activity as constituting abstract ideas. 2019 Guidance,
84 Fed. Reg. at 52.
Limitation (f) alternatively can be characterized as reciting a step of
expressing an opinion. The 2019 Guidance recognizes the act of expressing
an opinion as a mental process that constitutes an abstract idea.
2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (f) recites a
patent-ineligible abstract idea.
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For these reasons, each of limitations (a) through (f) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
The preceding analysis of claim 1’s recited abstract ideas indicates
that claim 1’s “additional elements” only consist of the recited “vacation
recommendation computer device,” as well as “a memory” and “a payment
network” that is in communication with the vacation recommendation
computer device.
Appellant asserts that the present claims are directed to an
improvement to computer-related technology. Appeal Br. 7–12. More
specifically, Appellant argues, “the pending claims are directed to a novel
technique that uniquely distinguishes vacation transaction data from
ordinary transaction data in a particular logical model for a database (see
e.g., correlation Table 1 of the present specification) that facilitates further
processing steps.” Id. at 7.
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Appellant presents several arguments in support of this general
assertion, for example:
the present claims plainly distinguish vacation transaction data
and ordinary transaction data as two distinct subsets of received
cardholder transaction data within the database, and these two
distinct subsets are then separately utilized within the claims to
make several associations and determinations according to the
respective category into which the subsets are organized.
Id. at 9. Appellant further argues the technique used to create these distinct
subsets is “innovative” and provides “the desired goal of a more accurate
and flexible recommendation profile.” Id. at 10.
These arguments are unpersuasive because the “innovative” steps
Appellant argues—e.g., distinguishing vacation transaction data from
ordinary transaction data and making associations and determinations—
entail the abstract ideas noted above in the analysis under step 2A, prong 1.
That, is Appellant’s arguments improperly conflate the advantages of the
underlying abstract idea with a purported technical improvement in the
claim’s additional elements. “It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). “[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) (emphasis omitted). “What is needed is an inventive concept in
the non-abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Appellant further argues that the present claims are analogous to the
self-referential tables found to be patent eligible in Enfish because the
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present claims are “directed to a logical database structure that distinguishes,
within the plurality of cardholder transaction data received from the payment
network, vacation transaction data separately from ordinary transaction
data.” Appeal Br. 9 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016)). Initially, we note that the pending claims do not recite a
database structure. However, even if the claims were directed to a database
structure, this argument still would not be persuasive because Appellant only
discusses the database’s content without providing sufficient evidence that
the database’s structure is innovative.
Appellant argues that “the pending claims do not merely collect and
analyze cardholder transaction data, but instead first identify two distinct
subgroups . . . within the [collected data], and separately store these distinct
data subgroups within the same database.” Appeal Br. 11. Appellant also
argues that the pending claims require the further step of correlating the data.
Id. Again, these arguments are directed to the benefits of the underlying
abstract idea—not to improvements to any of the additional elements—the
computer device, the database, and memory that carry out the abstract idea.
Appellant further argues the Examiner’s comparison of the instant
claims to the claims in Electric Power Group is erroneous:
In Electric Power Group, the claims were not found ineligible
because they included the “collection, analysis, and display of
collected information”, but instead because they included
nothing more than the collection[,] analysis and display of
information without any application of the collected data beyond
its mere display. The present claims feature significantly more
than the mere collection and display of data. Indeed, the present
claims feature a database that collects one general form of
cardholder transaction data, but then applies particular rules to
the general collected data to distinguish the data into two distinct
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categories of data (e.g., ordinary and vacation). The claims
further recite using these two separate data categories within the
database to associate merchant categories according to the
primary region of the cardholder in a card-present transaction,
and then determine previous transactions by the cardholder with
the merchant categories, cardholder vacation characteristics, and
a separate category of vacation travel in order to identify at least
one vacation option for recommendation to the cardholder.
Appeal Br. 12 (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016) (emphasis modified)). Appellant also argues the
pending claims are distinguished from Electric Power Group by the steps of
applying particular rules, making determinations about cardholder regions,
making determinations about merchant categories, and identifying vacation
options.
To summarize, Appellant is effectively arguing that the claims of
Electric Power Group were found to be patent ineligible because they
merely entailed the collection, analysis, and display of information, whereas
the present claims entail not only the collection and display of information,
but also the evaluation and sorting of the information, as well as decision-
making about what information to display based upon the evaluation of the
sorted information. Appellant does not persuasively explain why, though,
these argued steps entail more than collecting, analyzing, and displaying
data. Accordingly, Appellant has not persuasively explained why the
eligibility of claim 1 differs from that of the claims in Electric Power Group.
Similarly, Appellant argues “the rejection would improperly render
every software-based invention ineligible as a per se rule, because
essentially all software programming involves the ‘collection, analysis, and
display of information.’” Appeal Br. 10. This argument also is
unpersuasive. Many computer and software inventions entail significantly
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more than merely collecting, analyzing, and displaying information. For
example, in Diehr, a computer was used to improve the industrial process of
opening a rubber-molding press at an appropriate time. Diamond v. Diehr,
450 U.S. 175 (1981); see also McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1316 (Fed. Cir. 2016) (noting that incorporating limited rules
structured to reflect a specific implementation that would not likely have
been utilized by humans made a claim patent-eligible).
Furthermore, Electric Power Group does not set forth a per se rule
that collecting, analyzing, and displaying information is patent ineligible.
The Electric Power Group court expressly distinguished patent-ineligible
processes that entail “merely presenting the results of abstract processes of
collecting and analyzing information, without more” from patent-eligible
processes, such as those that entail “identifying a particular tool for
presentation” (Elec. Power Grp., 830 F.3d at 1354), new techniques for
analyzing data (id. at 1355), and using non-generic technology for gathering
data (id. at 1356).
Appellant further argues that claim 1 includes claim features that
recite significantly more than “simply . . . an instruction to implement or
apply the abstract idea on a computer.” Appeal Br. 12–13 (quoting
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Appellant additionally argues that all of claim 1’s
additional elements also must be considered in combination to determine if
the inventive concept may be found in the non-conventional and non-generic
arrangement of the additional elements.
More specifically, Appellant argues that the present claims “feature a
new functionality provided to the central server of the payment network to
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determine the recommendation profile to the cardholder.” Appeal Br. 14.
According to Appellant, “[b]y performing the claimed techniques within the
scope of the payment network authority, the pending claims achieve
significantly more accurate recommendations over the conventional
techniques.” Id. at 15. According to Appellant “[t]his example of new
functionality provided to the server of the payment network is directly on
point with the eligibility determination in BASCOM.” Id.
This argument is unpersuasive because Appellant does not
demonstrate that the present invention entails arranging generic components
to achieve some new filtering technique previously unknown in the art, as
was the case in BASCOM. Rather, Appellant’s Specification indicates that
Appellant’s invention merely entails programming a computer to filter for a
particular type of content and then making abstract determinations based
upon the filtered content. Spec. ¶¶ 2–3. The BASCOM court noted,
“filtering [Internet] content is an abstract idea because it is a longstanding,
well-known method of organizing human behavior, similar to concepts
previously found to be abstract.” BASCOM, 827, F.3d at 1348.
Appellant argues the Examiner errs in determining that distinguishing
ordinary transaction data from vacation transaction data can be done by a
human analog:
This assertion is both factually and legally erroneous. The
assertion is factually erroneous because transaction data from a
payment card interchange payment network is known in the art
to involve billions of payment card transactions yearly, and
typically utilizes such advanced technology schemes such as
EMV[®]-based cryptography, tokenization, and/or point-to-point
encryption. A human being is physically incapable of mentally
deciphering encrypted transaction data from a payment network.
The claimed payment network is therefore not a “general purpose
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computer” that merely automates human tasks. Quite the
contrary, the interchange payment network is a specialized
system of proprietary communications standards for the
exchange of financial transaction data. (See e.g., specification at
paragraph [0073]). A generic computer could not access or
process the protected data of the payment network.
Appeal Br. 17 (emphasis added).
These arguments regarding the rejection’s factual accuracy are not
persuasive.5 The elements cited by Appellant—EMV-based cryptography,
tokenization, point-to-point encryption—may be “typically utilized” to
implement the abstract ideas recited in the pending claims. Id. However,
Appellant’s use of the word “typically” acknowledges that these additional
elements, whether generic or not, are not inherent in the claim language.
Similarly, Appellant points to no persuasive evidence that the claimed
process necessarily “involve[s] billions of payment card transactions yearly”
or analyzing any other number of transactions. As these argued elements are
not necessarily covered by claim 1’s language, Appellant’s arguments are
not commensurate in scope with the claim language.
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 1 is directed to a particular machine or
transformation, or that claim 1 adds any other meaningful limitations for the
purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e).
Accordingly, Appellant does not persuade us that claim 1 integrates the

5 We address Appellant’s subsequent argument that the Examiner’s
statement is legally erroneous (Appeal Br. 17) below, in the section of our
analysis that addresses step 2B under the 2019 Guidance.
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recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
The Examiner determines that the additional elements of claim 1—the
vacation recommendation computer device, the memory, and the payment
network—viewed individually and as an ordered combination, merely entail
well-understood and conventional components that do not add significantly
more to the identified abstract ideas. Ans. 10–11.
Appellant acknowledges that at the time of the pending application,
payment networks were known for processing payment card transactions and
settling funds between financial institutions. Appeal Br. 14–15. Appellant
argues, though, that there is no evidence in the record indicating that it was
well-understood, routine, and conventional to implement database
techniques, at the payment network side, for separating vacation transaction
data from ordinary transaction data to correlate patterns from these separate
data types. Id. at 15. Appellant further argues, “[t]he cited prior art further
demonstrates that it was not known in the field to separately analyze these
two distinct subsets of data and then correlate the separate result therefrom.”
Appeal Br. 15–16.
These arguments are unpersuasive because Appellant is effectively
arguing that the invention, as claimed, is patent eligible because it is novel
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and unobvious. However, “[t]he ‘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.” Diamond v. Diehr, 450 U.S. 175, 188–
89 (1981). See Mayo, 566 U.S. at 90 (a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible); see also
Parker v. Flook, 437 U.S. 584, 594–95 (1978) (holding claims to “a new and
presumably better method for calculating alarm limit values,” of undisputed
usefulness, to be directed to patent-ineligible subject matter); Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)
(“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.”).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to an abstract idea that is made more efficient with generic
computer components—the abstract idea of recommending vacation options
based on consumer analytics, such as historical travel by a consumer.
Spec. ¶ 1.
Aside from Appellant’s Specification, the Appeal Brief summarizes
Appellant’s invention as follows:
The pending claims provide an inventive concept of
utilizing purchase transaction information to separately
distinguish vacation transaction information from ordinary
transaction information. The prior art systems of record do not
distinguish between vacation transaction information and
ordinary transaction information, nor in particular in the case of
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a desired outcome of making a vacation recommendation to a
cardholder. According to the non-conventional and non-generic
techniques of the pending claims, however, more relevant
vacation options can be presented to cardholders, while also
reducing (i) advertising and marketing costs to consumers that
would express lower interest in the vacation options, and (ii) the
time spent by cardholders to identify their own relevant vacation
options. (See paragraph [0060] of the present specification).
Appeal Br. 16. This summary further evidences that Appellant views
their inventive concept to be the improvement of an abstract idea, not
the improvement of the generic computer.
For these reasons, Appellant does not persuade us the Examiner
committed reversible error in determining that claim 1 fails to recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception within the meaning
of the 2019 Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the 101 rejection of claims 2–20, which Appellant does not
argue separately. Appeal Br. 17.

THE SECTION 103 REJECTIONS
Determination and Contentions
The Examiner finds Williams teaches “determining, from the received
cardholder transaction data, a primary region associated with the particular
user” and “processing the received plurality of cardholder transaction data to
(i) distinguish vacation transaction data from ordinary transaction data based
on at least one of a card-present transaction location outside of the primary
region and a merchant category, included with each cardholder transaction
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data.” Final Act. 9. The Examiner finds Williams fails to teach, but Winters
teaches, that the transaction data is cardholder transaction data and that the
user in the determining step is a cardholder. Id. at 10–11. The Examiner
also finds Williams fails to teach, but Winters teaches, a merchant category.
Id. at 10–12.
Appellant argues, as follows:
the outstanding rejection is legally deficient for failing to give
reasonable consideration to the claim limitations requiring the
processing of the cardholder transaction data to generate a
database that distinguishes vacation transaction data separately
from ordinary transaction data, or how this database is further
used to determine a primary region of the cardholder and a
particular merchant category, associate the merchant category
with a vacation travel category, determine cardholder
transactions with the merchant category, and determine
cardholder vacation characteristics from the separated data.
Appeal Br. 18–19.
Analysis
We first address the Examiner’s determinations regarding the
Williams reference. Williams teaches a consumer contributes information to
generate a consumer profile. Williams ¶ 38. This contributed data may
include location, home-address, and vacation data. Id. Williams does not
teach that vacation data is gleaned or derived from transaction data. In fact,
Williams describes data contributed by a consumer as separate from data
“received, culled, collected, and/or derived” from a consumer’s transaction
history. Id. ¶ 36. As such, the Examiner has not established that Williams
teaches “determining . . . [that] a primary region associated with the
particular cardholder” specifically “from the received cardholder transaction
data,” as recited in claim 1’s limitation (b). Nor has the Examiner
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established that Williams teaches processing the received plurality of
cardholder transaction data specifically to “distinguish vacation transaction
data from ordinary transaction data based on at least one of a card-present
transaction location outside of the primary region,” as recited in claim 1’s
limitation (c)(i).
We next address the Examiner’s reliance on Winters. As noted above,
the Examiner relies on Winters to teach a “merchant category.” Final
Act. 12. However, the Examiner does not sufficiently explain why one of
ordinary skill in the art would have sought to “distinguish vacation
transaction data from ordinary transaction data” specifically based on
Winters’s merchant-category transaction data. See Final Act. 13.
Based on the present record, then, the Examiner has not established a
prima facie case of obviousness. “[A] rejection cannot be predicated on the
mere identification . . . of individual components of claimed limitations.
Rather particular findings must be made as to the reason the skilled artisan,
with no knowledge of the claimed invention, would have selected these
components for combination in the manner claimed.” Ecolochem, Inc. v.
Southern Calif. Edison Co., 227 F.3d 1361, 1375 (Fed. Cir. 2000).
We, therefore, do not sustain the obviousness rejection of claim 1 over
the combination of Williams and Winters. We, likewise, do not sustain the
obviousness rejection of independent claims 8 and 15, which recite similar
limitations to claim 1, or of claims 3, 4, 10, 11, 17, and 18, which depend
from one of claims 1, 8, or 15.
With respect to the remaining obviousness rejections of dependent
claims 2, 5–7, 9, 12–14, 16, 19, and 20, the Examiner does not rely on the
additionally cited references, Fikes, Gray, Rugge, and Goenka, to cure the
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noted deficiencies of the rejection over Williams and Winters. Final
Act. 14–19. Accordingly, we, likewise, do not sustain the obviousness
rejections of these claims for the reasons set forth above in relation to
claim 1 above.

CONCLUSION
In summary:

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20
1, 3, 4, 8, 10,
11, 15, 17, 18
103 Williams, Winters 1, 3, 4, 8, 10,
11, 15, 17, 18
2, 9, 16 103 Williams, Winters,
Gray, Rugge
2, 9, 16
5, 6, 12, 13,
19, 20
103 Williams, Winters,
Fikes
5, 6, 12, 13,
19, 20
7, 14 103 Williams, Winters,
Goenka
7, 14
Overall
Outcome
1–20