MASTERCARD INTERNATIONAL INCORPORATED

Patent Trials and Appeals Board

Feb 11, 2020

13794206 - (D) (P.T.A.B. Feb. 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.
13/794,206 03/11/2013 Jonathan Robert Powell 21652-00248 1816
75564 7590 02/11/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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 JONATHAN ROBERT POWELL

Appeal 2019-003671
Application 13/794,206
Technology Center 3600
____________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious
and under 35 U.S.C. § 101 as reciting patent ineligible subject matter.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. 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 Br. 1.
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STATEMENT OF THE CASE
The claims stand finally rejected by the Examiner as follows (Ans. 3–
4):
Claims 1, 5–8, 10, 11, 15, 20, 23–26, and 31 under pre-AIA 35 U.S.C.
§ 103(a) as obvious in view of Yurow (US 2012/0259688 A2, published
Oct. 11, 2012) (“Yurow”), Polo (US 2013/0173390 A1, published July 04,
2013) (“Polo”), Kumar at al. (US 2010/0241494 A1, published Sept. 23,
2010) (“Kumar”), and Rampell et al. (US 2009/0292599 A1, published Nov.
26, 2009) (“Rampell”).
Claims 18 and 19 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Yurow, Polo, Kumar, Rampell, and Thye et al. (US 2011/0302023
A1, published Dec. 8, 2011) (“Thye”).
Claims 30 and 33 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Yurow, Polo, Kumar, Rampell, and Kim (Korean Pat. Pub. No.
20010000924, published Jan. 5, 2001) (“Kim”).
Claim 32 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of
Yurow, Polo, Kumar, Rampell, and Krutchik et al. (US 2010/0312630 A1,
published Dec. 9, 2010) (“Krutchik”).
Claims 1, 5–8, 10, 11, 15, 18–20, 23–26, and 30–33 under 35 U.S.C.
§ 101 as directed to a judicial exception to patent eligibility.
Claim 1, which is representative of the appealed subject matter, is
reproduced below (annotated with bracketed numbering for reference to the
limitations in the claim; indentations added for clarity):
l. A method for applying promotion codes using a remote
computing device in communication with a server system, for a
purchase made by a cardholder using a payment card over a
payment card network associated with the server system, the
method comprising:
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[1] receiving, by the remote computing device for
installation on the remote computing device, a promotion
application from the server system;
[2] storing the promotion application on the remote
computing device;
[3] registering, on the remote computing device, payment
card information for the payment card;
[4] automatically associating, at the remote computing
device, the payment card information with the promotion
application;
[5] transmitting the payment card information from the
remote computing device to a promotion data source in
response to a triggering near field communication interaction
between the remote computing device and the promotion data
source,
[5a] wherein the promotion data source is separate
from the payment card network,
[5b] wherein the promotion data source includes
stored promotional information from at least one
merchant that is (i) near a location of the promotion data
source, and (ii) a participant of the payment card
network, and
[5c] wherein a plurality of selectable promotions is
determined from an interaction of the promotion data
source with the payment card network using an
association at the payment card network of features of the
stored promotional information from the at least one
merchant with a plurality of historical payment card
transactions by the cardholder using the payment card;
[6] receiving, at the remote computing device, the
plurality of selectable promotions from the promotion data
source, each of the plurality of selectable promotions including
an associated (i) transaction qualification, and (ii) promotion
code;
[7] automatically updating the promotion application to
include the received plurality of selectable promotions,
[8] wherein receipt of the plurality of selectable
promotions causes the promotion application to display on the
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remote computing device, a list of the plurality of selectable
promotions;
[9] receiving, by the server system, a selection of the at
least one promotion program inputted into the remote
computing device via the promotion application, the selected
promotion program including the associated transaction
qualification and promotion code; and
[10] initiating, for the purchase with the at least one
merchant by the remote computing device, a payment
transaction that corresponds to the selected promotion program,
[10a] wherein the step of initiating occurs
separately from the triggered near field communication
interaction, and
[10b] wherein the step of initiating further causes
the remote computing device to send the associated promotion
code to the server system for application to the payment
transaction.

CLAIM 1
The method of claim 1 is “for applying promotion codes” to a
purchase “using a remote computing device in communication with a server
system.”
A promotion application is received from a server and stored on the
remote computing device (steps [1] and [2]). Payment card information is
registered on the device and associated with the promotion application (steps
[3] and [4]).
There is a “near field communication” (“NFC”) interaction between
the device and a promotion data source (step [5]). The NFC interaction
triggers “transmitting” the payment card information from the remote
computing device to the promotion data source (step [5]). The
NFC interaction, as explained in the Specification, is enabled by an “NFC
tag,” “typically a radio frequency identification (RFID) tag or unpowered
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NFC tag,” which enables the device to engage with the promotion data
source. Spec ¶ 45.
A plurality of promotions are received by the device (step [6]), where
the promotions are determined from historical payment card transactions by
the cardholder with a merchant (step [5]).
The promotions are included in the promotional application on the
device (step [7]) and displayed (step [8]). A promotional program is
selected on the device and received by the server (step [9]). A payment
transaction with the merchant is initiated that corresponds to the promotion
program (step [10]).

OBVIOUSNESS REJECTIONS
The Examiner found that Yurow describes making a purchase on a
remote computing device using a promotional application and a promotion
program as recited in claim 1 (steps [1], [2] [6]–[10]). Final Act. 8–11. The
Examiner found that Yurow does not disclose that the purchase is made
using a payment card by a cardholder (steps [3], [4], [10] of claim 1), but
determined it would have been obvious to do so because payment
transactions using a payment card were known in the art as established by
Polo. Final Act. 12.
The Examiner also found that updating the promotion application with
the promotions and displaying them on a device (steps [7], [8] of claim 1)
are also not described in Yurow, but found that Polo expressly teaches these
features and determined that it would have been obvious to one of ordinary
skill in the art to use these features in Yurow for their expected benefit.
Final Act. 13–14.
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The Examiner found that Yurow teaches that “incentives,” stored on
the device, are used to engage in commercial activities, which the Examiner
stated meets the limitation of “transmitting the payment . . . information
from the remote computing device to a promotion data source.” Final Act.
9. The Examiner found, however, that Yurow does not teach that such
transmittal of payment information is triggered by an NFC interaction
between the device and the promotion data source as required by step [5] of
claim 1. Final Act. 14.
To meet the limitation in step [5] of an NFC interaction triggering the
transmittal of the payment information, the Examiner relied on the teaching
in Kumar comprising a step of a user extracting tag data, such as a coupon,
ticket, or promotion, through a mobile device from a source using NFC.
Final Act. 15. The Examiner cited the following disclosure in Kumar
describing NFC interactions:
In an alternate embodiment, the user may select an electronic
value certificate using a different certificate selection device,
such as smart poster 106 interfaced with mobile device 102.
Generally, a smart poster is embodied as a sign, billboard, or
any other form of advertising that incorporates a passive NFC
tag (e.g., an RFID tag) from which the user can extract selected
tag data by interfacing an NFC enabled handset with the tag.
The tag data acquired may be a uniform resource locator
(URL), a coupon, a ticket, a promotion, or any other type of
data that is desired by the user. For example, the user may use a
powered NFC enabled mobile device 102 to acquire or “pull”
data (e.g., tag data) from a passive tag of a smart poster.
Kumar ¶ 21.
Kumar further explains:
After interfacing with smart poster 106, mobile device 102
initiates a midlet (e.g., a software client program, such as a
wallet client application) that is responsible for transmitting the
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electronic coupon data to a backend server (e.g., merchant
se[r]ver 108). Namely, the midlet is able to use the tag data to
properly communicate with the proper merchant server as well
as to request the proper coupon.
Kumar ¶ 21.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use the “NFC trigger”
described by Kumar to transmit the payment information of Yurow because
it is just the substitution of “one known part for another.” Final Act. 15.
The Examiner further cited Rampell to meet step [5c] of claim 1.
Final Act. 16.
Discussion
Appellant describes the deficiencies in each of Yurow, Polo, Kumar,
and Rampell (Appeal Br. 15–17), but fails to acknowledge that the Examiner
identified the same deficiencies in these references, but explained how the
combination of references made all the recited limitations of claim 1 obvious
to one of ordinary skill in the art at the time of the invention. Final Act. 8–
16.
Appellant argues that Kumar is deficient because it does not describe
or suggest transmitting payment card information from a remote computing
device to a promotion data source in response to an NFC interaction.
Appeal Br. 16. Rather, Appellant argues that Kumar “merely describes
pulling static promotion data from a smart poster using near field
communication.” Id. at 17–18. Appellant further states that Kumar teaches
sending a notification to the device, but not “transmitting payment card
information from the mobile device.” Reply Br. 8.
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This argument does not persuade us that the Examiner erred. The
disputed limitation of claim 1 recites “transmitting the payment card
information from the remote computing device to a promotion data source in
response to a triggering near field communication interaction between the
remote computing device and the promotion data source.” The “payment
card information” is transmitted “in response to a triggering” NFC
interaction between the device and the promotion data source.
Kumar teaches that the user pulls data from the NFC tag of a poster.
Kumar ¶ 21. As a result of the NFC event in which the device interacts with
the poster and “pulls” data from the tag, the mobile device “initiates a midlet
(e.g., a software client program, such as a wallet client application) that is
responsible for transmitting the electronic coupon data to a backend server.”
Kumar ¶ 21. The device therefore transmits information to a server based on
the NFC event. The NFC event is therefore the trigger for initiating the
transmittal of the coupon data to the server.
The information transmitted in Kumar is a coupon, not “payment card
information” as required by step [5] of claim. However, the Examiner
explained it would be obvious to one of ordinary skill in the art to use the
NFC to trigger transmittal of payment card information since it is
substituting one “known part for another.” Final Act. 15. In other words,
instead of using a mobile wallet to transmit payment information as in
Yurow,2 the Examiner found it would have been obvious to use the NFC
trigger to transmit the payment information because the use of such a trigger

2 “The mobile wallet application, in communication with the transaction
management server via the network, then conducts one or more transactions
using the electronic currency or the generated electronic monetary objects.”
Yurow ¶ 17.
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to transmit information is described by Kumar. As held in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007):
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. .
. . [A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
In arguing that Kumar is deficient in meeting the limitation, Appellant
did not fully address Kumar’s teaching that once the mobile device and NFC
tag interact, the device is triggered (“initiates a midlet”) to “transmit[ ] the
electronic coupon data” (Kumar ¶ 21), which is analogous to how step [5] is
“transmitting the payment . . . information” upon an NFC trigger (claim 1,
step [5]). It is clear from Kumar that the NFC interaction is the trigger to
transmit information to a server, as it is in step [5] of claim 1, because
Kumar expressly teaches that “the midlet is able to use the tag data to
properly communicate with the proper merchant server” (Kumar ¶ 21). The
“tag data” is the data from the NFC tag.
In sum, Appellant’s argument that step [5] of claim 1 is not obvious
based on Yurow and Kumar is not supported by adequate evidence.
For the foregoing reasons, the rejection of claim 1 as obvious Yurow,
Polo, Kumar, and Rampell is affirmed. Appellant relied on the same
argument for claims 5–8, 10, 11, 15, 20, 23–26, and 31 that they made for
claim 1. These claims therefore fall with claim 1. 37 C.F.R. §
41.37(c)(1)(iv). Likewise, Appellant does not make additional arguments
with respect to the rejections of claims 18, 19, 30, 32, and 33. We thus
affirm these rejections for the same reasons.
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SECTION 101 REJECTION
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S.Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at
2355. If it is determined that the claims are directed to an ineligible concept,
then the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’
Alice, 134 S.Ct. at 2355 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S.Ct. at
2355.
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The PTO has published revised guidance on the application of 35
U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). This guidance provides additional direction on
how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, whether there is a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
Discussion
Claim 1 is directed to method for applying promotion codes.
Following the first step of the Mayo analysis, we find that the claim is
directed to a method, and therefore falls into one of the broad statutory
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categories of patent-eligible subject matter under 35 U.S.C. § 101. We thus
proceed to Step 2A, Prong One, of the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the claims are directed to an abstract idea,
which the Examiner characterized as “essentially simply a type of business
transaction.” Final Act. 2. In the Answer, the Examiner, referring to the
2019 Eligibility Guidelines published after the Final Office Action, further
characterized the claims as “within the realm of ‘advertising, marketing or
sales activities or behaviors,’ which are examples of ‘certain methods of
organizing human activity’” (Ans. 8), listed in the Eligibility Guidance as
one of the three groupings of abstract ideas. Eligibility Guidance, 84 Fed.
Reg. 52.
Assuming for argument’s sake that the claims are directed to an
abstract idea, we nevertheless find that the claims are patent-eligible under
the Step 2A, Prong Two analysis, as discussed below.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. As in the Mayo/Alice framework, we must look at the
claim elements individually and “as an ordered combination” to determine
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whether the additional elements integrate the recited abstract idea into a
practical application. As discussed in the Eligibility Guidance, “[a] claim
that integrates a judicial exception in a practical application will apply, rely
on, or use the judicial exception in a manner that places a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. Eligibility Guidance, 84 Fed.
Reg. 54. Integration into a practical application is evaluated by identifying
whether there are additional elements individually, and in combination,
which go beyond the judicial exception. Id. at 54–55.
In response to the Examiner’s application of the 2019 Eligibility
Guidance, Appellant argues:
Claim 1 recites an improvement over the prior art, characterized
by rules applied by a remote computing device (e.g., mobile
device of a particular cardholder, see paragraph [0029]) in
communication with a remote data source (e.g., a smart poster
or interactive kiosk, see paragraphs [0045] and [0046]) via
near-field communication, wherein the remote data source
interacts with a payment card network, thereby enabling a
display of a list of promotions on the remote computing device
that are most relevant to the particular cardholder at the
particular location of the promotion data source.
Reply Br. 4.
Appellant’s argument is persuasive. To determine whether the
abstract idea is integrated into a practical application, we ask whether there
are additional elements that integrate the exception into a practical
application. As in the Mayo/Alice framework, we look at the claim elements
individually and “as an ordered combination” to determine whether the
additional elements integrate the recited abstract idea into a practical
application. As discussed in the Eligibility Guidance, “[a] claim that
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integrates a judicial exception in a practical application will apply, rely on,
or use the judicial exception in a manner that places a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. Eligibility Guidance, 84 Fed.
Reg. 54.
Here, step [5] of claim 1 recites “transmitting the payment card
information from the remote computing device to a promotion data source in
response to a triggering near field communication interaction between the
remote computing device and the promotion data source.” The “triggering”
and “transmitting” steps are by near field communication. Near field
communication necessarily uses an NFC device, typically a radiofrequency
identification tag or unpowered NFC tag. Spec. ¶ 45. Step [5] does not
recite an abstract idea because it requires the use of the NFC tag to operate,
which is a “machine or manufacture.” Eligibility Guidance, 84 Fed. Reg.
55. Although the “tag” is not expressly recited in the claim, it is invoked by
the recitation of “near field communication,” making the tag integral to the
claim because the NFC interaction could not be accomplished without the
tag (Spec. ¶¶ 39, 44). The additional element, namely the “near field
communication interaction” accomplished with an NFC tag, integrates the
method of organizing human activity into a practical application because it
“implements a judicial exception with, or uses a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
claim.” Eligibility Guidelines, 84 Fed. Reg. 55.
Accordingly, we reverse the rejection of claim under 35 U.S.C. § 101.
Independent claims 11 and 20 have the same NFC limitation and are
reversed for the same reason as claim 1. Dependent claims 5–8, 10, 15, 18,
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19, 23–26, and 30–33 incorporate all the limitations of one of the
independent claims and reversed for the same reasons, as well.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–8, 10,
11, 15, 20,
23–26, 31
103 Yurow, Polo,
Kumar, Rampell
1, 5–8, 10,
11, 15, 20,
23–26, 31

18, 19 103 Yurow, Polo,
Kumar, Rampell,
Thye
18, 19
30, 33 103 Yurow, Polo,
Kumar, Rampell,
Kim
30, 33
32 103 Yurow, Polo,
Kumar, Rampell,
Krutchik
32
1, 5–8, 10,
11, 15, 18–
20, 23–26,
30–33
101 Eligibility 1, 5–8, 10,
11, 15,
18–20,
23–26,
30–33
Overall
Outcome
1, 5–8, 10,
11, 15,
18–20,
23–26,
30–33

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TIME PERIOD
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