Debashis Ghosh et al.

Patent Trials and Appeals Board

Jul 24, 2019

14269685 - (D) (P.T.A.B. Jul. 24, 2019)

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.
14/269,685 05/05/2014 Debashis GHOSH 0076412-000230 6895
21839 7590 07/24/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DEBASHIS GHOSH and RANDALL K. SHUKEN1
________________

Appeal 2017-009396
Application 14/269,685
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–30. Appeal Br. 1. These claims stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter and
under 35 U.S.C. § 102(a) as being unpatentable. Final Action mailed
Dec. 22, 2016 (“Final Act.”) 2–14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellants identify Mastercard International, Inc. as the real party in
interest. Appeal Brief filed February 21, 2017 (“Appeal Br.”) 2.
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THE INVENTION
Appellants describe the present invention as systems and methods for
better customizing advertisements presented to consumers who are users of
smart phones and other computing devices. Spec. ¶¶ 2, 5. Appellants
acknowledge that it was known to customize advertisements presented to
consumers on computer devices based upon the consumer’s Internet
browsing history. Spec. ¶ 2. Appellants recognize that once the consumer
makes a purchase, the consumer’s need for the purchased product or service
(such as a hotel reservation) may diminish or expire, but it previously was
common for consumers to still receive advertisements for such products and
services. Id. ¶ 3. Appellants’ invention addresses this problem by using
“purchase data for payment transactions made by a consumer to suppress
advertisements distributed to the consumer.” Spec. ¶ 1.
Independent claim 1 illustrates the claimed invention. It is reproduced
below with formatting modified for clarity and with emphasis added to the
language that recites an abstract idea:
1. A method for identifying purchase data for advertisement
suppression, comprising:
[i] receiving, by a receiving device, a data file originating
from a computing device, wherein the data file includes at least
a computer identifier associated with the computing device, a
purchase identifier, and an origination time and/or date;
[ii] receiving, by the receiving device, transaction data for a
payment transaction, where a portion of the transaction data
corresponds to the purchase identifier, wherein the transaction
data includes at least purchase data and a transaction time
and/or date, and wherein the transaction time and/or date is
within a predetermined period of time of the origination time
and/or date; and
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[iii] transmitting, by a transmitting device, at least the
purchase data included in the received transaction data and the
computer identifier for suppression of advertisements distributed
to the computing device based on at least the purchase data.

THE REJECTION UNDER 35 U.S.C. § 101
Principles of Law
A. SECTION 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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
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that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of 35 U.S.C. § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look
to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, 84 Fed. Reg. at 56.
Analysis2
STEP 2A, PRONG 1:
Claims 1–30 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–4. The Examiner determines
that receiving and sending data constitute abstract ideas. Final Act. 3.
Appellants argue that
[s]ummarizing the Appellant’s claims as being directed to only
“providing an advertisement based on a consumer’s purchase
data” ignores the technological features and required
communications recited in the Appellant’s claims. . . .
Applicant’s claims are directed to new and useful electronic
processes and devices for identifying a purchase that is related to
specific computing device and suppressing advertisements
provided to that computing device to avoid the advertising of
already purchased products.
Appeal Br. 11.
This argument is unpersuasive. The fact that the claims additionally
recite computer components such as “a receiving device” and “a transmitting
device” is appropriately addressed under step 2A, prong 2, and step 2B of
the 2019 Guidance. The relevant inquiry under step 2A, prong 1, is whether
claim 1 recites one or more abstract ideas. For the following reasons, we
conclude that claim 1 does.

2 Appellants argue claims 1–30 together as a group in relation to the § 101
rejection. See Appeal Br. 9–18. Accordingly, we select independent claim 1
as representative of these claims. See 37 C.F.R. § 41.37(c)(1)(iv).
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Limitation [i] recites “receiving, by a receiving device, a data file
originating from a computing device, wherein the data file includes at least
a computer identifier associated with the computing device, a purchase
identifier, and an origination time and/or date.” Claim 1 (emphasis added).
Receiving a data file that contains particular types of information relating to
a purchase reasonably can be characterized as a commercial interaction
entailing marketing or sales activities. Marketing and sales activities are
certain methods of organizing human activity that the 2019 Guidance
recognizes as constituting abstract ideas. Accordingly, limitation [i]
reasonably can be characterized as reciting an abstract idea.
Limitation [ii] of claim 1 similarly recites receiving particular types of
data for a payment transaction, and limitation [iii] recites transmitting the
purchase data that was received in the transaction data. For the reasons
explained in relation to limitation [i], then, limitations [ii] and [iii] also
reasonably can be characterized as reciting certain methods of organizing
human activity that the 2019 Guidance recognizes as abstract ideas.
STEP 2A, PRONG 2:
We next inquire whether claim 1 integrates the recited abstract ideas
into a practical application. See 2019 Guidance 84 Fed. Reg. at 54–55; see
also MPEP §§ 2106.05(a)–(c) and (e)–(h).
The Examiner determines that the claims do not improve the
functioning of a computer, another technology, or another field. Final
Act. 4. The Examiner determines that the claims, when viewed as a whole,
do not add meaningful limitations that amount to more than generally
linking the use of the abstract idea to a particular technological environment.
Id. at 4–5.
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Appellants argue that the Examiner errs in “[s]ummarizing the
Appellant’s claims as being directed to only ‘providing an advertisement
based on a consumer’s purchase data.’” Appeal Br. 11 (citing Final Act. 2).
Appellants argue that such a characterization ignores the claimed
technological features and required communications. Id. Appellants argue
that the “claims are directed to new and useful electronic processes and
devices for identifying a purchase that is related to specific computing
device and suppressing advertisements provided to that computing device to
avoid the advertising of already purchased products.” Id.
More specifically, Appellants argue that the claims include “technical
steps involved in identifying the consumer’s purchase data, which notably is
based on the purchase data of a computing device and not a consumer.” Id.
Appellants argue that
When a user is browsing an Internet website, [a prior art]
advertising service may have access to [the user’s] browsing
history and may serve advertisements based thereon. However,
such a service does not have access to any transactional data for
that user or have any method to identify the user to obtain such
data. Furthermore, browsing history may inform the advertising
service when a user navigates to a web page to make a
transactions, but cannot identify if the user actually completes
the transaction[,] particularly if the user buys at a physical
location or another website. This can be a key difference for
serving advertisements, as an advertisement may be even more
likely to result in a conversion if the user never went through
with the transactions, while, on the other hand, an advertisement
may be extremely unlikely to result in a conversion if a
transaction already took place.
Id. at 12.
Appellants argue that the present invention “seeks to determine when
advertisements should be suppressed when they otherwise would be served
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in instances where a computing device is unable to accurately identify the
occurrence of a payment transaction.” Appeal Br. 12–13. Appellants
contend that the claimed invention, then,
solve[s] a particular problem in the software arts, specifically the
inability to identify if a transaction has occurred as related to a
computing device’s browsing history, which is performed via
changes to logical structures and processes of computing devices
and interactions and exchanges of data between computing
devices in a unique way to solve a technical problem.
Appeal Br. 15–16.
These arguments are unpersuasive. As a threshold matter, Appellants
arguments are not commensurate in scope with the claim language. As
correctly noted by the Examiner, claim 1 does not affirmatively recite
suppressing advertisement. Examiner’s Answer mailed May 9, 2017
(“Ans.”) 3. Rather, the advertisement suppression is recited in the claims as
an intended result—or reason for why the purchase data is transmitted. Id.
Claim 1, instead, only affirmatively recites receiving certain information and
transmitting certain information.
Because claim 1 does not recite any actions being performed with the
data, the received and transmitted data reasonably can be interpreted as
constituting non-functional descriptive material that does not further
distinguish the claim over the broad steps of receiving and transmitting data.
See Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d
1024, 1032 (Fed. Cir. 2018) (“Claim limitations directed to the content of
information and lacking a requisite functional relationship are not entitled to
patentable weight because such information is not patent eligible subject
matter under 35 U.S.C. § 101.”).
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Even if we were to assume, though, solely for the sake of argument
and compact prosecution, that claim 1 affirmatively recited suppressing
advertisements based on transmitted purchase data that, in turn, includes
transaction data and computer identifier data, this fact would not constitute
sufficient evidence that claim 1 integrates the recited abstract ideas into a
practical application. Deciding whether to suppress delivery of an
advertisement based upon a consumer’s purchase history is a mental
evaluation or judgment that could have been carried out by a human prior to
the advent of the Internet simply by observing the consumer’s purchase
history. Deciding whether to suppress delivery of an advertisement in this
manner also can be characterized alternatively as an advertising, marketing,
or sales activity—a certain method of organizing human activity. That is,
Appellants’ arguments relate to a purported improvement in the underlying
abstract idea—not to an improvement in the integration of a given abstract
idea.
Accordingly, Appellants have not established that the claims integrate
the recited abstract ideas into a practical application, pursuant to step 2A,
prong 2, of the 2019 Guidance.
STEP 2B:
We next inquire whether claim 1’s additional elements are well
understood, routine, and conventional. See 2019 Guidance, 84 Fed. Reg.
at 56; MPEP § 2106.05(d). The only additional elements recited in claim 1,
beyond the underlying abstract ideas, are “a receiving device” (limitations [i]
and [ii]) and “a transmitting device” (limitation [iii]). We agree with the
Examiner that Appellants’ Specification indicates that “the additional
elements are merely generic computer elements performing the limitations in
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a conventional and routine manner.” Final Act. 4 (citing e.g., Spec. ¶ 41).
Appellants’ Specification acknowledges, for example,
A person having ordinary skill in the art may appreciate that
embodiments of the disclosed subject matter can be practiced
with various computer system configurations, including multi-
core multiprocessor systems, minicomputers, mainframe
computers, computers linked or clustered with distributed
functions, as well as pervasive or miniature computers that may
be embedded into virtually any device.
Spec. ¶ 83.
Conclusion
For the foregoing reasons, Appellants have not demonstrated that the
Examiner erred in determining that claim 1 is directed to patent-ineligible
subject matter. Accordingly, we sustain the rejection under 35 U.S.C. § 101
of claim 1 and also of claims 2–30, which Appellants do not argue
separately. See Appeal Br. 17–18.

THE REJECTION UNDER 35 U.S.C. § 102(A)
Claims 1–6 and 16–21
The Examiner finds that Shastry discloses all of the limitations of, for
example, independent claim 1. Final Act. 6–7 (citing Shastry ¶¶ 65, 79, 80,
107, 338; FIG. 1C). In so doing, the Examiner interprets Shastry’s hypertext
transfer protocol (HTTP(S)) POST message, which includes Extensible
Markup Language (XML)-formatted data about a user, as corresponding to a
data file. Id. at 6; see also Ans. 5.
Appellants argue that none of the various paragraphs of Shastry upon
which the Examiner relies discloses “that such data may be included in a
data file that is received, let alone that the data file also originates from a
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computing device, as recited in the present claims. Appeal Br. 19.
Appellants assert that the Examiner equates Shastry’s consumer activity
message 215 with the claimed data file. Id. Appellants argue that Shastry’s
message 215 is provided via an HTTP POST message, and that persons of
ordinary skill would have understood that “an HTTP POST message is data
that is submitted through the web page itself in a form submission, which is
done directly through the HTTP protocol and not done via a data file, as
recited in the appealed claims.” Id. (citing Shastry ¶ 72). According to
Appellants, then, Shastry not only fails to anticipate the receipt of a data file,
but appears to teach against the use of a data file. Id.
Appellants’ arguments are persuasive. The Examiner reiterates in the
Examiner’s Answer that she “is using the ‘XML formatted data’ of
paragraph 0072 to teach the data file recited in the claims.” Ans. 5. The
Examiner also explains that when the claim term “data file” is interpreted
according to the broadest reasonable interpretation, the claim term reads on
Shastry’s “XML formatted data (which [was] known to one of ordinary skill
in the art as a file extension for XML file format) sent in the form of a
consumer message.” Id.
The Examiner’s explanation effectively constitutes an admission that
Shastry does not expressly disclose receipt of a data file. The Examiner’s
explanation also effectively constitutes the taking of Official Notice that
disclosure of XML-formatted data received in an HTTP(S) POST message
inherently or synonymously constitutes disclosure of receipt of a data file, as
claimed. However, the Examiner provides insufficient evidence to support
this finding. Accordingly, we do not sustain the rejection of independent
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claims 1 and 16, which recite receipt of a data file, or of claims 2–6 and 17–
21, which depend from these claims.

Claims 7–11 and 22–26
Independent claim 7 reads as follows with emphasis added to the
disputed limitation:
7. A method for identifying purchase data for advertisement
suppression, comprising:
storing, in an account database, a plurality of account
profiles, wherein each account profile includes data related to a
payment account including at least an account identifier
associated with the related payment account and a computer
identifier associated with a computing device;
receiving, by a receiving device, transaction data for a
payment transaction, wherein the transaction data includes at
least purchase data and an account identification;
identifying, in the account database, a specific account
profile where the included account identifier corresponds to the
account identification included in the received transaction data;
and
transmitting, by a transmitting device, at least the
purchase data included in the received transaction data and the
computer identifier included in the identified specific account
profile for suppression of advertisements distributed to the
computing device based on at least the purchase data.
The Examiner explains how Shastry teaches the last, “transmitting”
limitation, as follows:
transmitting, by a transmitting device (“Payment network
server” in Paragraphs 0107 and 0205), at least the purchase
data included in the received transaction data and the computer
identifier (“hardware ID” and “IP address”,
Paragraph 0077) included in the identified specific account
profile for suppression of advertisements distributed to the
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computing device based on at least the purchase data
(Paragraphs 0064, 0065, and 0080 also see Figure 1C element
134 and the purchase request XLM Formatted data in
Paragraph 0077)[.]
Final Act. 10.
Appellants argue that Shastry fails to disclose the claim language
“transmitting, by a transmitting device, at least the purchase data included in
the received transaction data and the computer identifier,” as claimed.
Appeal Br. 21. More specifically, Appellants argue that although Shastry
uses purchase confirmations that were received at the Ad-Track server to
update a consumer’s purchasing history internally within the Ad-Track
server, “Shastry fails to disclose or even suggest that the purchase
confirmations or any data included therein is transmitted from the Ad-Track
server.” Appeal Br. 21. Appellants further argue that “Shastry does not
further disclose or suggest that the data is accompanied by a computer
identifier included in an identified specific account profile” that is
transmitted from the Ad-Track server, as claimed. Id.
Appellants’ arguments are persuasive. The rejection sets forth where
Shastry discloses all of the elements individually in isolation. Final Act. 9–
10; Ans. 5–6. But the rejection does not explain how Shastry discloses all of
the elements in an ordered combination when claim 7 is read as a whole.
For example, the Examiner relies on the Ad-Track server as being the
transmitting device. Ans. 6 (“As discussed in paragraph 0065 of Shastry, the
Ad-Track se[r]ver feeds information to the ad network server (element
180)[,] which provides advertisements to the consumer”). But then the
Examiner relies on paragraphs 72 and 77 of Shastry for teaching the claimed
computer identifier. Id. However, paragraph 72 of Shastry discloses a
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consumer device providing a message to the Ad-Track server—not the Ad-
Track server transmitting data elsewhere. Shastry ¶ 72. Similarly,
paragraph 77 of Shastry discloses a consumer device providing a purchase-
request message to a merchant—not the Ad-track server transmitting the
message. Id. at 77.
For the forgoing reasons, the Examiner has not demonstrated that
Shastry discloses all of the limitations of claim 7, as an ordered combination.
We therefore do not sustain the anticipation rejection of claim 7 or of
independent claims 12, 22, and 27, which recite similar limitations. We,
likewise, do not sustain the anticipation rejection of claims 8–11, 13–15, 23–
26, and 28–30, which depend from these four independent claims.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting
claims 1–30 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
Appellants have shown that the Examiner erred in rejecting claims
1–30 under 35 U.S.C. § 102.3

3 Our review is limited to answering whether the Examiner established that
Shastry anticipates the appealed claims. We do not address whether Shastry
may render any of the claims obvious. See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (The Board reviews appealed rejections for
error based upon the issues identified by Appellants, and in light of the
arguments and evidence produced thereon).
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DECISION
The Examiner’s decision rejecting claims 1–30 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED