Visa U.S.A. Inc.

Patent Trials and Appeals Board

Sep 29, 2020

14313795 - (D) (P.T.A.B. Sep. 29, 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.
14/313,795 06/24/2014 Edward W. Fordyce 8223-1706150 7087
144885 7590 09/29/2020
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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 EDWARD W. FORDYCE, LEIGH AMARO,
MICHELLE ENG WINTERS, ALFRED WILLIAM GRIGGS,
LAURA DIGIOACCHINO, DIANE C. SALMON, KEVIN PAUL SIEGEL,
KAUSHIK SUBRAMANIAN, and JAMES ALAN VONDERHEIDE
____________

Appeal 2019-004142
Application 14/313,795
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our Decision references Appellant’s Specification (“Spec.,” filed
June 24, 2014), Appeal Brief (“Appeal Br.,” filed Jan. 28, 2019), Reply
Brief (“Reply Br.,” filed May 6, 2019), the Examiner’s Answer (“Ans.,”
mailed Mar. 5, 2019), and Final Office Action (“Final Act.,” mailed Aug.
27, 2018). Appellant identifies Visa U.S.A. as the real party in interest.
Appeal Br. 3.
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CLAIMED INVENTION
Appellant’s claimed invention “relate[s] to the processing of
transaction data, such as records of payments made via credit cards, debit
cards, prepaid cards, etc., and/or providing information based on the
processing of the transaction data.” Spec. ¶ 2.
Claims 1, 10, and 18 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method, comprising:
[(a)] providing a computing apparatus having:
a transaction handler of an electronic payment processing
network, wherein the transaction handler interconnects acquirer
processors and issuer processors in the electronic payment
processing network; and
a data warehouse storing an account identifier in
association with a loyalty program of a merchant;
[(b)] receiving, in the transaction handler of the
computing apparatus via the electronic payment processing
network and from an acquirer processor controlling a merchant
account of the merchant, an authorization request for a payment
from an issuer processor to the acquirer processor, wherein the
issuer processor controls a consumer account identified by the
account identifier;
[(c)] processing, by the transaction handler, the
authorization request for the payment from the issuer processor
to the acquirer processor, including propagating the
authorization request to the issuer processor in the electronic
payment processing network to generate an authorization
response for the payment from the issuer processor to the
acquirer processor, the issuer processor to make the payment on
behalf of a customer, and the acquirer processor to receive the
payment on behalf of a merchant;
[(d)] during the processing of the authorization request
for the payment at the transaction handler,
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determining, by the computing apparatus and from the
authorization request, the account identifier issued by an issuer,
and
determining, by the computing apparatus, that the
account identifier is associated with the loyalty program of the
merchant based on the data warehouse storing the account
identifier in association with a loyalty program of a merchant;
and
[(e)] in response to a determination that the account
identifier is associated with the loyalty program, providing, by
the transaction handler of the computing apparatus in the
authorization response transmitted to the acquirer processor for
the payment from the issuer processor to the acquirer processor
requested in the authorization request, an indicator identifying
that a user of the account identifier is enrolled in the loyalty
program of the merchant.

REJECTIONS
Claims 1–21 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Etheredge (US 2010/0106589 A1, pub. Apr. 29, 2010) and Fordyce
(US 2008/0059306 A1, pub. Mar. 6, 2008).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the independent claims as a group. Appeal Br. 13–
21. We select independent claim 1 as representative. Independent claims 10
and 18 stand or fall with claim 1.
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.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “receiving an authorization request
for payment, processing the authorization request, determining
authorization, providing authorization including a loyalty indication,” i.e., an
abstract idea similar to other concepts related to the collection, analysis, and
manipulation of data that the courts have held abstract. Final Act. 5 (citing
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332
(Fed Cir. 2017), and Classen Immunotherapies, Inc. v. Biogen IDEC, 659
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F.3d 1057 (Fed. Cir. 2011)). The Examiner further determined that the
claims do not include additional elements sufficient to amount to
significantly more than the judicial exception itself. Id. at 5–6.
After the Final Office Action mailed and before Appellant’s briefs
were filed and the Examiner’s Answer mailed, the U.S. Patent and
Trademark Office (the “USPTO”) published revised guidance for use by
USPTO personnel in evaluating subject matter eligibility under 35 U.S.C.
§ 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “Revised Guidance”). That guidance
revised the USPTO’s examination procedure with respect to the first step of
the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter
that [are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The Revised Guidance, by
its terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. Id.2
In the Answer, the Examiner elaborated upon the rejection under 35
U.S.C. § 101 in light of the Revised Guidance. Specifically, the Examiner
determined that the claims are “aimed at a loyalty program determination
and application,” which is a commercial interaction including “advertising,
marketing or sales activities or behaviors” and falls into the grouping of
certain methods of organizing human activity and, thus, is an abstract idea.

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (the “October 2019
Update”) clarifying the Revised Guidance in response to public comments.
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Ans. 3; see also Revised Guidance, 84 Fed. Reg. at 52. The Examiner
further determined that the additional elements do not integrate the abstract
idea into a practical application. Ans. 3–4.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong 1)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Revised Guidance, 84 Fed.
Reg. at 54. If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, that “integrate the [judicial]
exception into a practical application,” i.e., that apply, rely on, or use 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We also are not persuaded by Appellant’s argument that the Examiner
does not identify an abstract idea or that the Examiner otherwise erred in
determining that claim 1 is directed to an abstract idea. Appeal Br. 13–17;
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see also Reply Br. 2–3. The Federal Circuit has explained that “the ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 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 are invoked
merely as a tool. See id. at 1335–36. Here, it is clear from the Specification
(including the claim language) that claim 1 focuses on an abstract idea, and
not on any improvement to technology and/or a technical field.
The Specification is titled “SYSTEMS AND METHODS TO
PROVIDE LOYALTY PROGRAMS,” and states that the “present
disclosure relate[s] to the processing of transaction data, such as records of
payments made via credit cards, debit cards, prepaid cards, etc., and/or
providing information based on the processing of the transaction data.”
Spec. ¶ 2. In the Background section, the Specification describes,
“[m]illions of transactions occur daily through the use of payment cards,
such as credit cards, debit cards, prepaid cards, etc.” Id. ¶ 3.
“Corresponding records of the transactions are recorded in databases for
settlement and financial recordkeeping (e.g., to meet the requirements of
government regulations).” Id. Such data can be “mined and analyzed for
trends, statistics, and other analyses” and “for specific advertising goals,
such as to provide targeted offers to account holders.” Id. The Specification
identifies and incorporates numerous patents and patent applications related
generally to commercial interactions, such as advertising and marketing,
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including targeted offers, advertising, and loyalty programs, analyzing
purchase behavior, evaluating advertising and marketing using transaction
data, facilitating transactions with real time awarddeterminations, analyzing
transactional data, predicting future transactions and predictive modeling,
mobile coupons, rewards, redeeming offers, and identifying a consumer
account based on user data, among others. See, e.g., id. ¶¶ 4–11, 48, 58, 60–
62, 71–73, 103, 117, 121, 123–26, 132, 135, 217–25, 243, 267, 280, 283,
294, 362, 400, 401.
The Specification describes various arrangements for tracking user
behavior, analyzing the data to manage advertisement campaigns, and
analyzing response profitability. See, e.g., id. ¶¶ 45, 63–362. In the section
of the Specification entitled “LOYALTY PROGRAM,” the Specification
describes a transaction handler as hosting loyalty programs on behalf of
various entities, such as merchants, retailers, service providers, and issuers.
Id. ¶ 138; see also id. ¶ 30. Hosted loyalty programs include “ongoing
programs that accumulate benefits for customers (e.g., points, miles, cash
back), and/or programs that provide one time benefits or limited time
benefits (e.g., rewards, discounts, incentives).” Id. ¶ 152; see also id. ¶¶ 156
(describing benefits of award programs as “discounts, rewards, incentives,
cash back, gifts, coupons, and/or privileges”), 159 (describing that members
of a loyalty program may have member privileges, such as access services,
products, opportunities, facilities, discounts, and permissions that are
reserved for members), 162.
The system includes a transaction handler coupled to a centralized
data warehouse, which stores transaction data (i.e., data related to financial
transactions via financial transaction cards that are processed by the
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transaction handler) and account data (i.e., data about the account holders
involved in the transactions). See id. ¶¶ 35, 41, 42, Figs. 9–10. Account
data for providing loyalty programs includes a user’s account identifier and
information about the loyalty program, such as a set of loyalty program rules
specifying conditions based on transaction data and transaction profiles, a
loyalty benefit offeror linked with the set of loyalty rules, and a loyalty
record for the loyalty program activities associated with the account
identifier. Id. ¶¶ 153, 186, Fig. 8.
The centralized data warehouse associates an account identifier of the
user, such as an account number of a financial payment card, with a loyalty
program, indicating the user’s membership in the loyalty program. Id.
¶¶ 139, 159. Because the account number of a financial transaction card is
associated with a loyalty program in the data warehouse, the transaction
handler can use the financial payment card as a loyalty card when processing
a payment transaction involving the card. Id. ¶ 145; see also id. ¶ 30. Thus,
the transaction handler can accumulate reward points for a user for
transactions that satisfy the loyalty program rules, which then are stored in
the loyalty record, as well as redeem those reward points during a
transaction. Id. ¶ 162; see also id. ¶ 180 (“[W]hen the user (101) is making
a payment for a purchase from a merchant, a reward offer can be provided to
the user (101) based on loyalty program rules (185) and the loyalty record
(187) associated with the account identifier (181) of the user (101)[.]”).
According to the Specification, hosting the loyalty programs by the
transaction handler benefits both consumers and merchants. Namely,
“consumers do not have to carry multiple, separate loyalty cards (e.g., one
for each merchant that offers a loyalty program); and merchants do not have
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to incur a large setup and investment fee to establish the loyalty program.”
Id. ¶ 146; see also id. ¶ 148 (describing that a transaction handler hosting
loyalty programs “allow[s] the consumers to carry fewer [loyalty] cards”).
The arrangement also allows “flexible awards” and “new offerings, such as
merchant cross-offerings or bundling of loyalty offerings” (id. ¶ 147) and
“may provide more data to the merchants than traditional loyalty programs”
(id. ¶ 148). The invention seeks to enable third parties to “drive [consumer]
behavior changes [through deliverance of the awards or incentives of the
hosted loyalty program] without the hassle of loyalty card creation.” Id.
¶ 147. Because the arrangement allows a reward offer to be provided to the
user when the user is making a payment for a purchase from a merchant, the
Specification describes that “the user effort for redeeming the reward points
can be reduced; and the user experience can be improved”. Id. ¶ 180.
Consistent with this disclosure, claim 1 recites a computer-
implemented method comprising: (b) “receiving . . . from an acquirer . . .
controlling a merchant account of the merchant, an authorization request for
a payment from an issuer . . . to the acquirer . . . , wherein the issuer . . .
controls a consumer account identified by the account identifier”; (c)
processing . . . the authorization request for the payment
from the issuer . . . to the acquirer . . . , including propagating the
authorization request to the issuer . . . to generate an authorization
response for the payment from the issuer . . . to the acquirer . . . ,
the issuer . . . to make the payment on behalf of a customer, and
the acquirer . . . to receive the payment on behalf of a merchant;
(d)
during the processing of the authorization request for the
payment . . . , determining, . . . from the authorization request,
the account identifier issued by an issuer, and determining . . .
that the account identifier is associated with the loyalty program
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of the merchant based on . . . storing the account identifier in
association with a loyalty program of a merchant;
and (e)
in response to a determination that the account identifier is
associated with the loyalty program, providing . . . in the
authorization response transmitted to the acquirer . . . for the
payment from the issuer . . . to the acquirer . . . requested in the
authorization request, an indicator identifying that a user of the
account identifier is enrolled in the loyalty program of the
merchant.
These limitations, when given their broadest reasonable interpretation,
recite steps during payment processing for determining whether a user’s
account identifier is associated with a loyalty program of the merchant, and
providing an indicator identifying that the user is enrolled in the loyalty
program.3 Simply put, claim 1 recites a commercial interaction, i.e.,
marketing or sales activities, which is a certain method of organizing human
activity and, therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg.
at 52. See also Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc.,
66 F. Supp. 3d 829, 835 (E.D. Tex. 2014) (Bryson, J.) (holding that claims
directed to “converting one vendor’s loyalty award credits into loyalty award
credits of another vendor” were not fundamentally different from the
financial transactions at issue in Bilski and Alice); Kroy IP Holdings, LLC v.
Safeway, Inc., 107 F. Supp. 3d 677, 681, 691 (E.D. Tex. 2015) (Bryson, J.),

3 Although our articulation of the abstract idea may differ from the
Examiner’s, that difference merely relates to the level of abstraction, and
does not impact the patent-eligibility analysis. See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally
be described at different levels of abstraction.”).

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aff’d, 639 F. App’x 637 (Fed. Cir. 2016) (holding that claims directed to
“conducting in[c]entive programs and fulfilling the awards in those
programs,” were “indistinguishable in principle from the kinds of financial
or business operations that were at issue in Bilski and Alice”).
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong 2)
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
Claim 1 additionally recites “a computing apparatus,” “a transaction
handler,” “an electronic payment processing network,” “acquirer
processors,” “issuer processors,” and a “data warehouse.” However, these
additional limitations are recited and described at a high-level of generality.
See Spec. ¶ 461 (providing that “the techniques are neither limited to any
specific combination of hardware circuitry and software nor to any particular
source for the instructions executed by the data processing system”); see
also id., e.g., ¶¶ 441–60, Figs. 1, 4. The additional elements do no more
than generally link the use of the abstract idea to a particular technological
environment (i.e., an electronic payment processing network having acquirer
processors, issuer processors, a transaction handler) and/or field of use (i.e.,
field of electronic payments). See Revised Guidance, 84 Fed. Reg. at 55.
Appellant argues that claim 1 is not directed to an abstract idea, but
instead “solves technological problems that arise in electronic payment
networks.” Appeal Br. 14. Appellant contends that paragraph 180 of the
Specification highlights problems addressed by the claimed invention. Id. at
15. Yet, paragraph 180 of the Specification describes that because a user
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can be provided with a reward offer when making a payment for a purchase
from a merchant based on loyalty program rules and a loyalty record
associated with an account identifier of the user, “user effort for redeeming
the reward points can be reduced; and the user experience can be improved.”
One difficulty with Appellant’s argument is that claim 1 does not
recite providing a reward offer to a user when making a payment. Instead,
claim 1, limitation (e), recites providing in an authorization response “an
indicator identifying that a user of the account identifier is enrolled in the
loyalty program of the merchant.” Because providing a reward offer is not
recited in claim 1, it is not an additional element that integrates the abstract
idea into a practical application. See Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus
on the language of the Asserted Claims themselves.”); Accenture Glob.
Servs., GmbH v. Guidewire Software, 728 F.3d 1336, 1345 (Fed. Cir. 2013)
(“[T]he important inquiry for a § 101 analysis is to look to the claim.”).
Moreover, reducing user effort when redeeming reward points and
improving a user experience may well provide a commercial advantage over
prior art techniques. However, we are not persuaded that reducing user
effort for redeeming reward points or improving user experience is a
technological improvement, as opposed to an improvement in the
commercial interaction (i.e., the abstract idea) itself.
Appellant argues that claim 1 allows a merchant system “to take
further actions,” thereby improving loyalty program systems, because it
provides an indicator in the authorization response (claim 1, limitation (e)).
Appeal Br. 16. According to Appellant, this arrangement requires “fewer
communications and computing resources” to “interact with the merchant
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system.” Id. As an initial matter, claim 1 does not recite a merchant taking
any further action in response to receiving an indicator in an authorization
response.
Further, claim 1 recites result-based functional language “in general
terms, without limiting [it] to technical means for performing the function[]
that [is] arguably an advance.” Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1351 (Fed. Cir. 2016). For example, limitation (d) recites
“determining” and limitation (e) recites “providing,” but any manner of
“determining” and “providing” may be performed so long as the desired
result is achieved (i.e., determining the account identifier from the
authorization request; determining that the account identifier is associated
with the loyalty program; providing an indicator in the authorization
request). Put differently, claim 1 lacks the “specificity required to transform
a claim from one claiming only a result to one claiming a way of achieving
it.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161 1167 (Fed. Cir. 2018);
see also Intellectual Ventures I, 850 F.3d at 1342 (“[T]he claim language
here provides only a result-oriented solution, with insufficient detail for how
a computer accomplishes it. Our law demands more.”).
Here, the improvement identified by Appellant may improve a
merchant’s efficiency by collecting and analyzing information (i.e., the
account identifier), and communicating the results of the collection and
analysis via an indicator in the authorization response so that the merchant
can take further action. Yet, a new arrangement of information in an
authorization response (i.e., an indicator) assists a merchant — it does not
improve technology, solve a technological problem, or improve the
functionality of a computer. See Appeal Br. 16 (acknowledging that the
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improvement is a “new arrangement of the claimed authorization response”);
see also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed
Cir. 2019) (“The claims . . . do not improve the functioning of the computer,
make it operate more efficiently, or solve any technological problem.
Instead, they recite a purportedly new arrangement of generic information
that assists traders in processing information more quickly.”); Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The
claims are focused on providing information to traders in a way that helps
them process information more quickly. . . , not on improving computers or
technology. . . . Like Electric Power [Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016)], the purported advance ‘is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.’”).
Put another way, the limitation on which Appellant focuses is part of
the abstract idea, not an additional element. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea (encoding and decoding) does not render the claim
non-abstract.”).
To the extent that Appellant asserts that claim 1 is analogous to the
claims at issue in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288 (Fed. Cir. 2016), Appellant does not persuasively explain how claim 1
parallels the eligible claim in that case. See Appeal Br. 16–17. In Amdocs,
the Federal Circuit determined that claim at issue “entail[ed] an
unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows [that] previously
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required massive databases).” Amdocs, 841 F.3d at 1300. Specifically, the
court found that “the claim’s enhancing limitation necessarily requires that
these generic components operate in an unconventional manner to achieve
an improvement in computer functionality.” Id. at 1300–01. Here, we are
not persuaded that claim 1 solves a technological problem analogous to
solving for massive record flows that required massive databases. Nor are
we persuaded that claim 1 involves generic components operating in an
unconventional fashion to achieve an improvement in computer
functionality.
Appellant’s argument regarding preemption also does not persuade us
of Examiner. Appeal Br. 19–21. Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
There is no indication of record that the operations recited in
Appellant’s claim 1 require any specialized computer hardware or other
inventive computer components, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
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generic computer components as tools operating in their normal, routine, and
ordinary capacity. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims[, i.e.,
claims to an asserted advance in the realm of abstract ideas], without more,
no matter how groundbreaking the advance.”).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly 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.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
Revised Guidance, the second step of the Mayo/Alice framework, whether
claim 1 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. Revised
Guidance, 84 Fed. Reg. at 56.
Appellant argues that claim 1 is patent eligible because limitation (e),
as recited in claim 1, is not well-understood or conventional. Appeal Br. 19.
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In particular, Appellant contends that the Examiner “fail[s] to contend that
this [limitation] is conventional” and does not rely on the features being
conventional. Appeal Br. 19 (“[T]he rationale that the features of the claims
are conventional is not relied upon in rejecting the claims under 35 U.S.C.
§ 101.”); see also Reply Br. 3 (“[I]t has never been shown how or why it is
conventional to provide an indicator in the authorization response to allow a
merchant system, such as an inventory management system or a transaction
terminal, to take further actions.”). Appellant additionally contends that the
Examiner does not consider limitations (d) and (e) as a combination to be
conventional. Appeal Br. 19; Reply Br. 3.
Appellant’s argument is not persuasive at least because “the relevant
inquiry [under step two of the Mayo/Alice framework (i.e., Step 2B of the
Revised Guidance)] is not whether the claimed invention as a whole is
unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question is whether the
claim includes additional elements, i.e., elements other than the abstract idea
itself, that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78).
See also Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses
upon the use of a natural law also contain other elements or a combination
of elements, sometimes referred to as an ‘inventive concept,’ sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the natural law itself” (emphasis added)).
Here, limitation (e) considered alone and in combination with
limitation (d), does not provide an inventive concept, at least because
limitations (d) and (e) are part of the abstract idea and not additional
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elements. See BSG Tech LLC, 899 F.3d at 1290 (“It has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”) Appellant does not argue
that any non-abstract features of the claimed invention are not well-
understood, routine, and conventional and, as such, we are not persuaded of
Examiner error. See id. at 1291 (“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.”).
Appellant further argues that the prior art rejection involving multiple
prior art references shows that the combination of limitations (d) and (e) are
not conventional. Appeal Br. 20 (“The fact that the Office Action needs to
piece together multiple prior art references for the prior art rejections . . .
further evidences that the combination of these claim limitations cannot
possibly be conventional”). Yet, neither a finding of novelty nor a non-
obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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., 573 U.S. at 217–18
(citation omitted). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
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For these reasons, we are not persuaded that claim 1 recites additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
Revised Guidance. Revised Guidance, 84 Fed. Reg. at 52–55.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 10 and 18, which fall
with claim 1.
We also decline to find error here to the extent Appellant argues that
the § 101 rejection cannot be sustained because the Examiner has not
addressed the patent eligibility of each of the claims separately or otherwise
failed to establish a prima facie case of patent ineligibility. Appeal Br. 21.
Although Examiners are to evaluate the patent eligibility of each claim
individually, the Examiner need not provide a separate written analysis for
each individual claim when the claims are directed to the same abstract idea.
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are
directed to the same abstract idea, “addressing each claim of the asserted
patents [is] unnecessary.”).
Here, the Examiner found that the dependent claims are directed to the
same abstract concept as the independent claims. See Final Act. 5–6. The
Examiner further determined that the additional descriptive limitations
recited in the dependent claims do amount to significantly more than the
abstract idea. See id.; see also Ans. 3–4. Appellant does not persuasively
show that the Examiner erred in this determination. Therefore, we sustain
the Examiner’s rejection of dependent claims 2–9, 11–17, and 19–21 under
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35 U.S.C. § 101.

Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 10, and 18 under 35 U.S.C. § 103(a),
because Fordyce does not teach or suggest
in response to a determination that the account identifier
is associated with the loyalty program, providing, by the
transaction handler of the computing apparatus in the
authorization response transmitted to the acquirer processor for
the payment from the issuer processor to the acquirer processor
requested in the authorization request, an indicator identifying
that a user of the account identifier is enrolled in the loyalty
program of the merchant[,]
as recited in limitation (e) of claim 1, and similarly recited in claims 10 and
18. Appeal Br. 21–27; see also Reply Br. 3–6. The Examiner finds that
Fordyce discloses the argued limitation. See Final Act. 11–15 (citing
Fordyce ¶¶ 28, 184, 219, 222, 223, 225–29, 232, 237, 242–45, 251, 262); see
also Ans. 5–12 (citing Fordyce ¶¶ 26, 28, 173, 174, 183, 184, 207, 211, 222,
224, 225, 226, 229, 234, 241, 251, 262; Figs. 1, 5, 9, 10).
We have reviewed the portions of Fordyce relied on by the Examiner
for the argued limitation. Yet, we do not find, and the Examiner does not
clearly identify, an indicator that “identif[ies] that a user of the account
identifier is enrolled in the loyalty program of the merchant” and is provided
“in the authorization response” and “in response to a determination [based
on the authorization request]” that the account identifier “identif[ies] that a
user of the account identifier is enrolled in the loyalty program of the
merchant” is associated with the loyalty program,” as required by the claim
1, and similarly required by claims 10 and 18.
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For example, Fordyce teaches that a merchant uses a point of service
terminal to obtain an account number from portable consumer device 502.
Fordyce ¶ 225. The POS terminal sends a transaction authorization request
to issuer 104 of portable consumer device 502. Id. Issuer 104 authorizes the
transaction using transaction handler 106. Id. ¶ 226. Authorization includes
applying business rules. Id. Thus, these portions disclose a transaction
handler authorizing a transaction according to business rules in response to
an authorization request. However, the portions do not disclose or suggest
that the authorization response includes an indicator identifying that a user
of the account is enrolled in a loyalty program of the merchant, much less
that such indicator is provided in response to a determination that the
account identifier [determined from the authorization request] is enrolled in
the loyalty program of the merchant, as recited in claim 1 and similarly
recited in claims 10 and 18.
As another example, with reference to Figure 6, Fordyce discloses
receiving data characterizing a transaction between a consumer and a
merchant (step 602), and determining whether a transaction is eligible for
the loyalty program using a global unique identifier (“GUID”) matching
algorithm (step 606). The data characterizing the transaction can include an
account GUID, such as a customer’s account used in the transaction, a
GUID for the merchant, and a GUID for the commodity. Fordyce ¶ 234; see
also id. ¶ 232. The determination eligibility entails matching the account
GUID and the merchant GUID against a plurality of account GUIDs and
merchant GUIDs in a loyalty program database. Id. ¶ 241. When a match
exists, a loyalty program that the merchant or account participates in is
determined. Id. An incentive is derived for the transaction according to the
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loyalty program (step 608), and information regarding the incentive is
transmitted to the merchant, loyalty program implementer, third party
agency, or consumer. Id. ¶ 244, 247–48. Yet, while the cited portions
describe determining whether a customer is a member of a loyalty program
and whether the transaction qualifies for the loyalty program, they do not
disclose an indicator provided by the transaction handler in an authorization
response that is transmitted to the acquirer processor requested in the
authorization request and in response to a determination that the account
identifier, determined from the authorization request, is associated with the
loyalty program.
As yet another example, paragraph 251 of Fordyce describes that a
merchant receives at a point of a service a transmission indicating that the
consumer is a member of the merchant’s loyalty program. The merchant
conveys to the consumer an offer related to the transaction in response.
Fordyce ¶ 251. Yet, this portion of Fordyce does not describe that the
indication that the customer is a member of the loyalty program is
transmitted in an authorization response, nor that it is provided in response
to a determination that an account identifier (determined from the
authorization request) is associated with the loyalty program.
Therefore, we reverse the rejection under § 103(a) of independent
claims 1, 10, and 18, and their dependent claims.

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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103(a) Etheredge, Fordyce 1–21
Overall
Outcome 1–21

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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). See
37 C.F.R. § 41.50(f) (2018).
AFFIRMED