Michael E. Globe et al.

Patent Trials and Appeals Board

Apr 1, 2020

14502268 - (D) (P.T.A.B. Apr. 1, 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.
14/502,268 09/30/2014 Michael E. GLOBE G4144-00050 8137
39290 7590 04/01/2020
Duane Morris LLP
Duane Morris LLP
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
04/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL E. GLOBE, MAZIN AL-SAMADI, LAUREN VAN
HEERDEN, GUNALAN NADARAJAH, ORIN DEL VECCHIO,
MICHAEL D. CUMMINS, and PRABAHARAN SIVASHANMUGAM
Appeal 2018-004719
Application 14/502,268
Technology Center 3600

Before IRVIN E. BRANCH, ADAM J. PYONIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 8–10, 12, 13, 15, 16, 18–30, and
33–38, which are all of the pending claims. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “administering actual and virtual
investment portfolios based on transaction data associated with one or more
users.” Spec. Abstract. Claims 1, 37, and 38, reproduced below with
bracketing, are illustrative of the claimed subject matter:
1. A system, comprising:
a storage device; and
at least one processor coupled to the storage device, the
storage device storing software instructions for controlling the at
least one processor when executed by the at least one processor,
and the at least one processor is operative with the software
instructions and is configured to:
[a] determine a network address of a device
connected to the system across a communications
network, the device being associated with a first user;
[b] based on the determined network address, obtain
first transaction data identifying first products purchased
from corresponding retailers;

1 We refer to the Specification, filed September 30, 2014 (“Spec.”); Final
Office Action, mailed April 17, 2017 (“Final Act.”); Appeal Brief, filed
November 7, 2017 (“Appeal Br.”); Examiner’s Answer, mailed February 2,
2018 (“Ans.”); and Reply Brief, filed April 2, 2018 (“Reply Br.”).

2 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 Toronto-Dominion
Bank. Appeal Br. 3.
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[c] obtain program data identifying a first loyalty
program, the first user being a participant in the first
loyalty program;
[d] based on the first transaction data, establish a
target geographic region that includes geographic
locations of at least a threshold number of the
corresponding retailers;
[e] identify a first security based on the first
transaction data, the first security having an issuer, the
issuer being located within the target geographic region
and being a manufacturer or a distributor of at least one of
the first purchased products;
[f] based on the program data, determine that the
issuer corresponds to a provider of the first loyalty
program; and
[g] in response to the determination, transmit
information identifying the first security to the determined
network address of the device, the information causing the
device to execute an application program that presents at
least one of a graphical or textual representation of the first
security through a corresponding interface.

37. The system of claim 1, wherein the at least one processor
is further configured to:
receive, from the device across the communications
network, a request to obtain the information identifying the first
security;
determine the network address of the device in response to
the received request;
establish, based on the determine[d] network address, that
the device corresponds to a registered device of the first user; and
obtain the transaction data in response to the establishment
that the device correspond[s] to the registered device.

38. The system of claim 1, wherein:
the first transaction data is associated with the determined
network address, the determined network address comprising an
Internet Protocol address of the device; and
the first products are purchased by the first user from the
corresponding retailers.
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REJECTION
Claims 1–6, 8–10, 12, 13, 15, 16, 18–30, and 33–38 stand rejected
under 35 U.S.C. § 101 as directed to ineligible subject matter in the form of
abstract ideas. Final Act. 2.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Final Act. 2–4) and (2) the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 3–9) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
35 U.S.C. § 101
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long held
that this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
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based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two-part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014). “The inquiry often is whether the claims are directed to ‘a specific
means or method’ for improving technology or whether they are simply
directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., Ltd.,
855 F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted). A court must be
cognizant that “all inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas” (Mayo, 566
U.S. at 71), and “describing the claims at . . . a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step as 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
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than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566
U.S. at 72–73).
The Office published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance” or “Guidance”); see also
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct.
2019 Guidance”). Under the Revised Guidance, we look to whether the
claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see “Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)); and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Revised Guidance, 84 Fed. Reg. at 52, 55, 56. Under the Revised
Guidance, if the claim does not recite a judicial exception, then it is eligible
under § 101, and no further analysis is necessary. Id. at 54. Similarly, under
the guidance, “if the claim as a whole integrates the recited judicial
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exception into a practical application of that exception,” then no further
analysis is necessary. Id. at 53, 54.
USPTO Step 1
The claims must recite at least one of four recognized statutory
categories, namely, machine, process, article of manufacture, or composition
of matter. MPEP § 2106(I); see 35 U.S.C. § 101. Appellant’s claims 1–6,
8–10, 12, 13, 15, 16, 18–24, 26–30, and 33–28 recite a system (i.e., a
“machine”). Claims 25 recites a method. Thus, the pending claims recite a
recognized statutory category of § 101 and we turn to the two-step
Alice/Mayo analysis applied in accordance with the Guidance.
USPTO Step 2A, Prong 1
The Examiner determines that the claims are directed to the abstract
idea of “targeted marketing and incentivized marketing,” which is a
“fundamental economic practice.” Final Act. 2, 3 (citing Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016)). We
agree with the Examiner’s determination that the claims are directed to an
abstract idea.
Appellant’s disclosure states that the invention “relate[s] to
computerized systems and methods for administering investment portfolios
in a network environment, such as the Internet[, and m]ore particularly, . . .
to computerized systems and methods that create or modify actual and
virtual investment portfolios based on transaction data.” Spec. ¶ 2.
Appellant’s disclosure also states that “disclosed embodiments include
computerized methods and systems for identifying one or more products
purchased by a user, and for creating or modifying actual and virtual
investment portfolios for the user based on purchased products.” Id. ¶ 5.
These are commercial activities, or fundamental economic practices, as
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discussed further below. Consistent with the Guidance, our reviewing court
has determined certain methods of organizing human activities similar to the
present claims are a type of abstract idea. See, e.g., Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (citing
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015)) (“customizing information and presenting it to users
based on particular characteristics” is an abstract idea.). It matters not that
these commercial activities have been placed in computerized systems and a
networked environment, because the Supreme Court and the Federal Circuit
have repeatedly made clear that “merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
The limitations of claim 1 that, under their broadest reasonable
interpretation, recite concepts such as those found to be abstract ideas by the
Federal Circuit include: “[a] determine a network address of a device . . .
associated with a first user;” “[b] based on the determined network address,
obtain first transaction data identifying first products purchased from
corresponding retailers;” “[c] obtain program data identifying a first loyalty
program, the first user being a participant in the first loyalty program;” “[d]
based on the first transaction data, establish a target geographic region that
includes geographic locations of at least a threshold number of the
corresponding retailers;” “[e] identify a first security based on the first
transaction data, the first security having an issuer, the issuer being located
within the target geographic region and being a manufacturer or a distributor
of at least one of the first purchased products;” “[f] based on the program
data, determine that the issuer corresponds to a provider of the first loyalty
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program;” and “[g] in response to the determination, . . . present[] at least
one of a graphical or textual representation of the first security . . . .”
Specifically, people can obtain and review information (such as limitations
[a] “determin[ing] a network address of a device . . . associated with a first
user,” [b], [c]), and identify relationships within the information (limitations
[d], [e], [f]) by simply reading or looking at the recited content. People can
transmit the information (limitation [g]) by merely passing a piece of paper
to someone. These limitations recite the abstract concept of organizing
human activity, specifically “fundamental economic principles or practices.”
Revised Guidance, 84 Fed. Reg. at 52.
Additionally, the limitations of representative claim 1, under their
broadest reasonable interpretation, also recite mental processes that can be
performed in the human mind or using a pen and paper. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73
(Fed. Cir. 2011) (determining that a claim whose “steps can be performed in
the human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). Specifically, limitations [b]–[g] amount to
“observation, evaluation, judgment, opinion,” as they are activities a person
could do in their mind while sorting through printed data and showing the
result to a user. Revised Guidance, 84 Fed. Reg. at 52. Merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims
were directed to a combination of abstract ideas).
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Appellant argues error because the Examiner’s assertions do not “find
factual support within the evidence of record.” Appeal Br. 13; Reply Br. 2.
This does not establish error because there is no requirement that Examiners
must provide evidentiary support in every case before a conclusion can be
made that a claim recites an abstract idea. See, e.g., Oct. 2019 Guidance at
16 (“There is no requirement for the examiner to provide further support . . .
for the conclusion that a claim recites a judicial exception.”). Evidence may
be helpful in certain situations where, for instance, facts are in dispute.
However, it is not always necessary. It is not necessary in this case.
Appellant argues that the Examiner’s analysis mischaracterizes and
oversimplifies the claims. See Appeal Br. 13–18 (citing McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016));
Reply Br. 3–7. We disagree in view of our detailed analysis above.
Appellant’s contention that “when analyzing claims for subject-matter
eligibility, the courts ‘must look to the claims as an ordered combination,
without ignoring the requirement of the individual steps’” (Appeal Br. 17–
18; McRO, 837 F.3d at 1312) is unpersuasive or error because Appellant
does not state which ordered steps, in combination, are non-abstract.
Appellant also argues the “claims are not directed to an abstract idea
because they do not attempt to preempt every practical application of
‘recommending and incentivizing users with information regarding a
security (such as stock) based on user purchase and loyalty data.’” Appeal
Br. 20–21 (quoting Final Act. 2–3).
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
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Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Further, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379. Accordingly, we do not find persuasive Appellant’s
argument that the claims are patent eligible just because the claimed
invention does not preempt “recommending and incentivizing users with
information regarding a security (such as stock) based on user purchase and
loyalty data.”
Accordingly, for the aforementioned reasons, we determine that the
claims recite certain methods of organizing human activity and a mental
process, and thus, a judicial exception. See Revised Guidance, 84 Fed. Reg.
at 52.
USPTO Step 2A, Prong 2
We are unpersuaded the claims integrate the judicial exception into a
practical application. See Guidance, 84 Fed. Reg. at 53 (describing a
“practical application” as a “meaningful limit on the [recited judicial
exceptions], such that the claim is more than a drafting effort designed to
monopolize the [exceptions]”); id. at 55 (“exemplary considerations
. . . indicative [of] a practical application”). Specifically, claim 1 recites the
additional limitations of a “storage device,” a “processor,” a connected
“device,” and a “communication network.” Appellant describes these
additional elements as no more than a general-purpose computer processor
and generic memory executing computer program instructions on
information in a generic memory. See Spec. Figs. 1, 2 and ¶¶ 15–54.
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Additionally, none of the remaining indicia of integration identified
by the Guidance are present in the claim. Guidance, 84 Fed. Reg. 55; see
MPEP § 2106.05(a)–(c), (e)–(h). For example, the claims do not recite a
particular machine and, instead, generically recite of a “storage device,” a
“processor,” a connected “device,” and a “communication network,” which
are, according to the Specification, general-purpose or otherwise well
known. See Spec. Figs. 1, 2 and ¶¶ 15–54. Nor do the claims recite the
“[t]ransformation and reduction of an article ‘to a different state or
thing.’” Bilski, 561 U.S. 593, 604 (2010); MPEP § 2106.05(c). Further, the
additional elements are not applied in any meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
Accordingly, we find that the claims do not integrate the judicial
exception into a practical application at least because the claims do not recite
(i) any additional elements of the claims reflects an improvement in the
functioning of a computer or to another technological field, (ii) an
application of the judicial exception with, or by use of, a particular machine,
(iii) a transformation or reduction of a particular article to a different state or
thing (iv) or a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. Specifically, the claims do not improve the
functioning of the “storage device,” “processor,” connected “device,” or
“communication network.”
For the foregoing reasons, claim 1 is directed to judicial exceptions—
not to a practical application.
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Appellant also argues that the Examiner’s analysis ignores claims 37
and 38. Appeal Br. 17; Reply Br. 6. Claim 37 depends from claim 1 and
recites “receive, from the device across the communications network, a
request to obtain the information identifying the first security;” “determine
the network address of the device in response to the received request;”
“establish, based on the determine[d] network address, that the device
corresponds to a registered device of the first user;” and “obtain the
transaction data in response to the establishment that the device
correspond[s] to the registered device.” Claim 38 depends from claim 1 and
recites “wherein: the first transaction data is associated with the determined
network address, the determined network address comprising an Internet
Protocol address of the device;” and “the first products are purchased by the
first user from the corresponding retailers.” Similar to those of claim 1,
these limitations, under their broadest reasonable interpretation, amount to
certain methods of organizing human activity but for the drafting effort to
limit them to a particular technological environment, which does not render
them any less abstract. See Affinity Labs, 838 F.3d at 1259.
For the foregoing reasons, claims 37 and 38 are directed to judicial
exceptions—not to a practical application.

USPTO Step 2B
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we reach the issue of whether the
claims add a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field. Guidance, 84 Fed.
Reg. at 56.
The Examiner finds “the claimed invention is directed towards the
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implementation of the abstract idea by a generic computer performing
routine and conventional functions,” and the limitations beyond the abstract
idea, even when viewed as an ordered combination “merely provide
conventional computer implementation.” Final Act. 3–4.
We agree with the Examiner. Appellant has not identified any
specific limitations that are not “well-understood, routine, conventional” in
the field as per MPEP § 2106.05(d). Instead, Appellant describes the
invention in a manner consistent with its being “well-understood, routine,
[and] conventional,” such that the claimed “storage device,” “processor,”
connected “device,” and “communication network,” require no more than a
general-purpose computer processor and generic memory executing
computer program instructions on information in a generic memory. See
Spec. Figs. 1, 2 and ¶¶ 15–54. Consistent with the Specification, the
processor fails to go beyond that which is well-understood, routine, and
conventional. See id. ¶ 45. This is indicative of the absence of an inventive
concept where the claims simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56.
Furthermore, the recited functionalities are recited at a high level of
generality that do not set forth limited rules for implementing the
functionalities sufficient to confer patent eligibility.
Therefore, we conclude the claims, viewed “both individually and as
an ordered combination,” do not recite significantly more than the judicial
exception to transform the claims into patent-eligible subject matter. See
Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S.
at 79).
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For the reasons discussed, claim 1 is directed to certain methods of
organizing human activity and does not recite limitations that amount to
significantly more than the abstract idea itself. Accordingly, we sustain the
rejection of independent claim 1 under 35 U.S.C. § 101 and, for the same
reasons, the rejection of independent claims 25 and 26. For the foregoing
reasons, we also sustain the rejection of dependent claims 2–6, 8–10, 12, 13,
15, 16, 18–24, 27–30, and 33–38.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 8–10,
12, 13, 15,
16, 18–30,
33–38
101 Eligibility 1–6, 8–10,
12, 13, 15,
16, 18–30,
33–38

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