Visa International Service Association

Patent Trials and Appeals Board

Apr 1, 2020

14073595 - (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.
14/073,595 11/06/2013 Douglas Joseph Rappoport 8223-1707003 (334US02) 5674
144885 7590 04/01/2020
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
ROBINSON, KYLE G
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS JOSEPH RAPPOPORT,
MELINDA LANGDON KIRKPATRICK, and
WESLEY KIMATHI MARANGU
____________

Appeal 2018-007145
Application 14/073,595
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Visa International Service Association,
as the real party in interest.
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THE INVENTION
Appellant claims relate to programming operations to be performed
by computing apparatuses in general, and more particularly but not limited
to, programming operations, such as information delivery and processing,
based on the processing of transaction data, such as records of payments
made via credit cards, debit cards, prepaid cards, etc. (Spec. ¶ 3).
Claim 1 is representative of the subject matter on appeal.
1. A computer-implemented method, comprising:
providing a computing apparatus comprising:
a transaction handler configured in an electronic payment
processing network;
and
a portal coupled to the transaction handler and configured to
communicate with a social networking site;
transmitting, by a computing apparatus, a first message to a user
enrolled in an offer campaign, the first message inviting the user to
participate in a competition between a plurality of teams of users, the user
being associated with a first team in the plurality of teams, the plurality of
users being invited to participate in the competition;
communicating, by the portal with the social networking site, to make
a determination that the first term wins the competition based on a score of
the first team generated in the social networking site;
in response to the determination that the first team wins the
competition,
providing an offer of a benefit to the user, and
associating, in a data warehouse of the transaction handler, the
offer with a consumer payment account of the user, wherein payment
transactions made using the consumer payment account in the
electronic payment processing network are processed by the
transaction handler;
monitoring, by the transaction handler of the computing apparatus,
transactions in the consumer payment account of the user to detect a
transaction that satisfies benefit redemption requirements of the offer; and
in response to detecting an authorization request for the transaction
that satisfies the benefit redemption requirements of the offer, providing, by
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the transaction handler of the computing apparatus, the benefit of the offer to
the transaction.

THE REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–18 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement.
Claims 1 and 16–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Park (US 9,076,303 B1; issued July 7, 2015) in view of
Walker (US 5,945,653; issued Aug. 31, 1999) and Aissa (US
2012/0330744 A1; published Dec. 27, 2012).
Claims 2 and 3 are rejected under 35 U.S.C. § 103 as being
unpatentable over Park in view of Walker and Aissa, and in further view of
Official Notice.
Claims 4–9 are rejected under 35 U.S.C. § 103 as being unpatentable
over Park, Walker, Aissa, and Official Notice, and in further view of Leibner
(US 2013/0262188 A1; published Oct. 3, 2013).
Claims 10–12 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Park, Walker, Aissa, and Leibner.
Claims 13–15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Park, Walker, Aissa, and in further view of Fordyce (US
2010/0145778 A1; published June 10, 2010).2

2 The rejection of claims 1–18 under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph has been withdrawn. (Ans. 3).

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ANALYSIS
REJECTION UNDER 35 U.S.C. § 101
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat
else is there in the claims before us?” . . . To answer that
question, . . . 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. . . . [The Court]
described step two of this analysis 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 than a patent upon the [ineligible concept]
itself.”

Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
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are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
The Examiner determines that the steps of the claims describes the
concept of providing an offer to a user based upon the results of a
competition, and a method of organizing human activity; monitoring and
analyzing data from disparate sources and obtaining and comparing
intangible data. (Final Act. 6). The Examiner finds the additional elements
are not sufficient to amount to significantly more than the judicial exception
because the additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the abstract
idea. Id.
The Specification discloses that the present invention relates to
programming operations to be performed by computer apparatuses in
general and more particularly programming operations such as information
delivery and processing based on the processing of transaction data such as
records of payments made via credit cards, debit cards, prepaid cards, etc.
(Spec. ¶ 3).
Consistent with this disclosure, claim 1 recites “transmitting . . . a first
message” (transmitting data), “providing an offer” (transmitting data),
“associating . . . the offer with a consumer payment account of the user”
(analyzing data), “monitoring . . . transactions in the consumer payment
account” (analyzing data), “in response to detecting an authorization request
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for the transaction . . . providing . . . the benefit of the offer” (transmitting
data).
We thus agree with the Examiner’s findings that the claims are
directed to a method of organizing human activity, i.e. a fundamental
economic practice. Based on transaction data, an advertising network is
provided to present personalized or targeted advertisements/offers on behalf
of advertisers. As claim 1 recites a method related to advertisement, claim 1
recites method of organizing human activities in the form of a fundamental
economic practice which is a judicial exception. Guidance, 84 Fed. Reg. at
52.
Also, we find the steps of monitoring and analyzing data constitute
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain
arrangements involving contractual relations are directed to abstract ideas).
Thus, we find that the claims recite an abstract idea of methods of
organizing human activity and in the alternative a mental process.
Turning to the second prong of the “directed to test”, claim 1 requires
a “computing apparatus,” “a transaction handler,” and “an electronic
payment processing network.” These recitations do not impose “a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance,
84 Fed. Reg. at 53. We find no indication in the Specification, nor do
Appellant directs us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
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specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitations do not affect an improvement in the
functioning of the computing apparatus, the transaction handler, the
electronic payment processing network or other technology, do not recite a
particular machine or manufacture that is integral to the claim, and do not
transform or reduce a particular article to a different state or thing. Id.
Thus, claim 1 is directed to judicial exceptions that are not integrated into a
practical application and thus claim 1 is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
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amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer apparatus into the claims does not
alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on … a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”

Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer apparatus at each step of the process is purely conventional. Using
a computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
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trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. Thus, the claims at
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issue amount to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 9–12; Reply Br. 5–
6). Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of the same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claimed invention has an inventive concept in
the installation of an offer processing tool remote from end-users and
merchants, with an integrated offer processing feature specific to the
winning status of the end-users’ social networking activities and payment
transactions and merchants. (Appeal Br. 11). The Appellant relies on
BASCOM Glob. Internet Servs. Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016) in making this argument. (Appeal Br. 11–12).
In BASCOM, the Federal Circuit followed the Supreme Court's
guidance for determining whether the claims recite an inventive concept set
forth in Alice, 573 U.S. at 221–24.
In Alice, the Supreme Court explained that, under the second step of
the patent-eligibility analysis, “the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer.” Id. at 225. The
Supreme Court also provided examples of claims that represent more than
instructions to implement an abstract idea on a generic computer, such as
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claims that purport to improve the functioning of the computer itself and
claims that effect an improvement in any other technology or technical field.
Id. at 225–26.
Turning to BASCOM, the Federal Circuit held “[t]he inventive
concept described and claimed in the '606 patent is the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user.” 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350–51. Notably, the Federal Circuit specifically determined that “the
claims may be read to ‘improve[] an existing technological process.”’ Id. at
1351 (citing Alice, 578 U.S. at 223).
We agree with the Examiner that this argument fails because the claim
does not recite an installation of an offer selection tool at a specific location.
In fact, there is no offer selection tool recited at all, and no step of selecting
an offer in claim 1. Claim 1 merely recites “providing an offer.” It is not
clear from claim 1 how the offer is selected.
Appellant argues that the Examiner failed to provide evidence that the
elements in claim 1 in addition to the abstract idea are well-understood,
conventional and routine as Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018). (Reply Br. 5–6). This is not true. The Examiner relies on paragraph
530 of Appellant’s own Specification as evidence that the claimed computer
components are well-understood, routine and conventional. (Ans. 6).
Paragraph 530 states:
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While one embodiment can be implemented in fully
functioning computers and computer systems, various
embodiments are capable of being distributed as a computing
product in a variety of forms and are capable of being applied
regardless of the particular type of machine or computer-
readable media used to actually effect the distribution.

As such, there is evidence of record that the computer components
recited in claim 1 are well-understood, routine and conventional. In any
case, Appellant cannot reasonably contend, nor does Appellant, that there is
insufficient factual support for the Examiner’s determination that operation
of the recited components are well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 1 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions, e.g., receiving, transmitting, and processing information. Indeed,
the Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC
v. Buyseasons, Inc., 899 F.3d 1281, 1291(Fed. Cir. 2018) (“BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
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In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain the rejection as it is directed to the
remaining claims because Appellant does not argue the separate patentability
of these claims.

REJECTION UNDER 35 U.S.C. § 112(a)
The Examiner finds that the claims do not comply with the written
description requirement of 35 U.S.C. §112(a) because the Specification does
not include a description of “associating, in a data warehouse of the
transaction handler.” (Final Act. 3) (emphasis omitted). The Examiner
finds that there is no support for the data warehouse being a part of the
transaction handler. In the Examiner’s view, the transaction handler and the
data warehouse are separate components.
Appellant argues that Figures 4 and 31 depict the claimed subject
matter and paragraph 51 of the Specification describes this subject matter.
(Appeal Br. 5). Figures 4 and 31 depict the transaction handler and the data
warehouse as two separate components. Paragraph 51 of Appellant’s
Specification does not mention the data warehouse. Paragraph 54 does
mention the data warehouse; however, it states that the data warehouse is
coupled with the transaction handler, not that the data warehouse is a part of
the transaction handler. The Appellant also argues that a person skilled in
the art would know that “a data warehouse of the transaction handler” is a
data warehouse that is coupled with the transaction handler but in absence of
evidence proving that this is true, it amounts to attorney argument. Attorney
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
In view of the foregoing, we will sustain this rejection.
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REJECTIONS UNDER 35 U.S.C. § 103(a)
We will not sustain these rejections because we agree with Appellant
that there is no disclosure in the prior art of a transaction handler that
monitors transactions to detect a transaction that satisfies benefit redemption
requirements. The Examiner relies on Aissa for teaching a POS device that
is considered a transaction handler. (Final Act. 10; Ans. 4). However, the
Examiner has not established that the POS device disclosed in Aissa is
capable of “monitoring . . . transactions . . . to detect a transaction that
satisfies benefit redemption requirements of the offer” as required by
claim 1. While the Examiner relies on Walker for disclosing giving
cardholders a discount on their first use of a credit card thereby disclosing
the concept of providing a benefit based on meeting a requirement, the
Examiner has not established that a determination of whether the transaction
is one in which a credit card is used for the first time is done or even can be
done by a POS device disclosed in Aissa.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. §103(a). We will also not sustain the rejections
for the remaining claims because each of the remaining claims requires that
the transaction handler monitor transaction to detect transactions that satisfy
benefit redemption requirements and each of the remaining rejections relies
on Aissa for teaching this subject matter.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.
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We conclude the Examiner did not err in rejecting claims 1–18 under
35 U.S.C. § 112(a).
We conclude the Examiner did err in rejecting claims 1–20 under
35 U.S.C. § 103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–18 112(a) Written
Description
1–18
1–20 103 Park, Walker,
Aissa, Official
Notice, Leibner,
Fordyce
1-20
Overall
Outcome
1–20

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

AFFIRMED