MasterCard International Incorporated

Patent Trials and Appeals Board

Sep 11, 2020

2020003156 (P.T.A.B. Sep. 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.
14/336,059 07/21/2014 Jose A. Alba P00593-US-CONT 4744
98665 7590 09/11/2020
Otterstedt, Wallace & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
NEUBIG, MARGARET M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
CTOFFICE@OEKLAW.COM
admin1@oeklaw.com
docket@oeklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSE A. ALBA and DAVID GROSSMAN
____________

Appeal 2020-003156
Application 14/336,059
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1-9 and 21. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Mastercard
International Incorporated. (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to electronic payment
systems and facilitating promotions with an e-wallet (Spec. page 1, lines 17,
18, and page 2, lines 5, 6). Claim 1, reproduced below with the italics
added, is representative of the subject matter on appeal.

1. A method comprising the steps of:
obtaining, by an electronic wallet platform module executing
on a server, from a check-out web page of a merchant:
an indication that a given consumer, of a plurality of
consumers, who is purchasing at least one item from said merchant in
an on-line transaction, wishes to utilize said electronic wallet platform
to pay for said on-line transaction, a unique identification of said
given consumer, and associated transaction data;
wherein said electronic wallet platform module stores, in
association with said unique identification of said given consumer,
information for a plurality of payment card accounts from which said
given consumer can choose to pay for said on-line transaction;
supplying, by said electronic wallet platform module, to a
transaction qualification service module executing on said server or
on another server, said unique identification of said given consumer;
retrieving, by said transaction qualification service module,
from a consumer enrollment database module, a record wherein at
least one promotion code is stored in association with said unique
identification of said given consumer;
determining, by said transaction qualification service module,
based on rules retrieved from an offers registry database module,
whether said at least one promotion code is applicable to said on-line
transaction, said rules being stored in said offers registry database
module in association with said at least one promotion code, said rules
taking into account said unique identification of said given consumer
and said associated transaction data in determining said applicability;
and
when said at least one promotion code is applicable to said on-
line transaction, providing said at least one promotion code to said
merchant, directly from said electronic wallet platform module in
real-time, prior to payment card authorization, clearing, and
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settlement for said on-line transaction, and without revealing said at
least one promotion code to said given consumer;
wherein a payment card network operator that carries out said
payment card authorization, clearing, and settlement for said on-line
transaction implements a computerized translation table in which
internal-facing instances of an account number for a selected one of
said plurality of payment card accounts present an actual primary
account number (PAN) while external-facing instances of said
account number for said selected one of said plurality of payment
card accounts present a pseudo-PAN.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–9 and 21 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1–5, 8, 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Katis (US 6,601,761 B1 issued Aug. 5, 2003), Hawkins
(US 2007/0162337 A1, published July 12, 2007), and First Data (“Data
encryption and tokenization: An innovative one-two punch to increase data
security and reduce the challenges of PCI DSS compliance” downloaded
from https://www.firstdata.com/downloads/thought-leadership/fd encrypt
token pci whitepaper.pdf, Sept. 2009)).
3. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Katis, Hawkins, First Data, and Michelson (US
2006/0118611 A1, published June 8, 2006).
4. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Katis, Hawkins, First Data, and Carlson (US 8,229,852 B2, issued July
24, 2012).

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is “significantly more” than the alleged abstract idea and integrated
into a practical application (Appeal Br. 8–11; Reply Br. 8–14).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 8–12; Ans. 5–16).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. 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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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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
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof 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
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
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(“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.”).
In January 2019, the published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also 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 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.
See Guidance.
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-
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eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (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.
The Specification at page 1, lines 17 and 18, states that the invention
relates generally to electronic commerce and electronic payment systems.
Here, the Examiner has determined that the claim sets forth marketing and
sales activities and commercial interaction and is a method of organizing
human activities and an abstract concept (Ans., page 6, para. 9). We
substantially agree with the Examiner. We determine that the claim sets
forth: [1] “obtaining, by an electronic wallet platform…a unique
identification of said given consumer, and associated transaction data”; [2]
“wherein said electronic wallet platform module stores…. information for a
plurality of payment card accounts”; [3] “supplying…said unique
identification of said given consumer”; [4] “retrieving… a record wherein at
least one promotion code is stored in association with said unique
identification of said given consumer”;[5] “determining… based on rules
retrieved from an offers registry database module, whether said at least one
promotion code is applicable to said on-line transaction”; [6] “when said at
least one promotion code is applicable to said on-line transaction, providing
said at least one promotion code to said merchant”; [7] “wherein a payment
card network operator that carries out said payment card authorization …
implements a computerized translation table in which internal-facing
instances of an account number for a selected one of said plurality of
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payment card accounts present an actual primary account number (PAN)
while external-facing instances of said account number for said selected one
of said plurality of payment card accounts present a pseudo-PAN”, which
describes a method of applying a promotion in a transaction between a user
and merchant, which is a certain method of organizing human activity and a
fundamental economic practice, i.e. a judicial exception enumerated under
the Guidance. In Buysafe, Inc. v. Google, Inc. 765 F.3d 1350, 1355 (Fed.
Cir. 2014) it was held that claims drawn to creating a contractual
relationship are directed to an abstract idea. In Inventor Holdings, LLC v.
Bed Bath & Beyond Inc., 876 F.3d 1372, 1378 claims directed to the local
processing of payments for remotely purchased goods was held to be
directed to an abstract idea. In OIP Technologies, Inc. v. Amazon.com, Inc.,
788 F.3d 1359, (Fed. Cir. 2015) at 1363 it was held that offer-based price
optimization was directed to an abstract idea.
We next determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in claim 1, the additional elements beyond the abstract
idea are the recited electronic wallet platform module on a server. The
claimed limitations of “obtaining,” “supplying,” “retrieving,” “determining,”
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and “providing” do not purport to improve the functioning of the computer
itself, do not improve the technology of the technical field, and do not
require a “particular machine.” Rather, they are performed using generic
computer components. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited steps
in the claim fail to provide meaningful limitations to limit the judicial
exception. In this case, the claim merely uses the claimed computer
elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
pages 4–7 for example describes using conventional computer components
such as a processor, memory, cell phone handsets, terminals, local area
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networks (LAN) and private networks (VPN) in a conventional manner.
Here, the claim has not been shown to be “significantly more” than the
abstract idea.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior fails to disclose the claim limitation for:
providing said at least one promotion code to said merchant, directly
from said electronic wallet platform module in real-time, prior to
payment card authorization, clearing, and settlement for said on-line
transaction, and without revealing said at least one promotion code to
said given consumer.

(Appeal Br. 12–14).
In contrast, the Examiner has cited to Hawkins at paragraph 30 as
disclosing the above cited claim limitation (Final Act. 22–25, Ans. 22).
We agree with the Appellant. Even if we accept that Hawkins
discloses a “promotion code,” the claim requires providing the promotion
code to the electronic wallet module in real time, prior to payment card
authorization, and “without revealing said at least one promotion code to
said given consumer.” Here, the claim limitation for providing the
promotion code to the electronic wallet module “without revealing said at
least one promotion code to said given consumer” has not been shown in the
citation to Hawkins at paragraph 30.
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Paragraph 30 of Hawkins discloses that “discount information” is sent
to the electronic cash register ECR 110 for deduction of the price to the
customer but is not specifically disclosed that the “discount information” is
provided to the merchant “without revealing said at least one promotion
code to said given consumer.” ”Thus, the relied-upon portion of Hawkins
fails to specifically disclose that the “discount information” is provided to
the merchant “without revealing said at least one promotion code to said
given consumer.” Accordingly, the rejection of claim 1 and its dependent
claims is not sustained as the argued claim limitation has not been shown in
the prior art.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–9 and 21 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–5, 8, 9 under 35 U.S.C. § 103(a) as unpatentable over
Katis, Hawkins, and First Data.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Katis, Hawkins, First Data, and Michelson.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 21 under 35 U.S.C. § 103(a) as unpatentable over Katis,
Hawkins, First Data, and Carlson.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9, 21 101 Eligibility 1–9, 21
1-5, 8, 9 103(a) Katis, Hawkins,
First Data
1–5, 8, 9
6, 7 103(a) Katis, Hawkins,
First Data,
Michelson
6, 7
21 103(a) Katis, Hawkins,
First Data, Carlson
21
Overall
Outcome
1–9, 21

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED