Master International Incorporated

Patent Trials and Appeals Board

Sep 28, 2020

2020000868 (P.T.A.B. Sep. 28, 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.
14/938,425 11/11/2015 Edward Lee P02275-US-
UTIL (M01.392)
4067
125619 7590 09/28/2020
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
MILLER, JAMES H
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
colabella@bmtpatent.com
martin@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD LEE and MARIANNE IANNACE
Appeal 2020-000868
Application 14/938,425
Technology Center 3600
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2018). Appellant identifies the real party in interest as Mastercard
International Incorporated. Appeal Br. 2.
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BACKGROUND
The Claimed Invention
Appellant’s claimed invention relates to “inferred matching from
payment card accounts to mobile devices” in order to “to enhance data
analytics.” Spec. 1.
Claims 1, 8, and 15 are independent. Claim 1 is representative of the
invention and the subject matter of the appeal, and reads as follows:
1. A computerized method comprising:
receiving a plurality of first data sets, each of said first
data sets indicative of respective locations and respective times
of a plurality of payment card transactions associated with a
respective payment card account that corresponds to said each
first data set;
receiving a plurality of second data sets, each second
data set including a respective mobile device travel profile, each
of said travel profiles corresponding to a respective mobile
device and including a plurality of data pairs, each data pair
having a geographic data element and a temporal data element,
the geographic data element indicative of a geographic location,
the temporal data element representative of a date and/or time;
matching one of the mobile device travel profiles with
one of said first data sets;
obtaining residence location data for the owner of the
respective mobile device that corresponds to said matched one
of the mobile device travel profiles; and
associating the residence location data with the
respective payment card account associated with the matched
first data set.
Appeal Br. 16 (Claims Appendix) (emphases added).
References
The references relied upon by the Examiner are:
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Name Reference Date
Routson et al.
(“Routson”)
US 2007/0192122 Al Aug. 16, 2007
Howe et al. (“Howe”) US 2013/0290119 Al Oct. 31, 2013
James Bovard The Last Dinosaur:
The U.S. Postal
Service, Cato
Institute Policy
Analysis No. 47
Feb. 12, 1985

The Rejections on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 8–15.
Claims 1–3, 5–10, 12–17, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Howe and Routson. Final Act. 16–25.
Claims 4, 11, and 18 stand rejected under U.S.C. § 103 as being
unpatentable over Howe, Routson, and Bovard. Final Act. 25–26.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error. To the extent consistent with our discussion below, we adopt as our
own the findings and reasons set forth in the rejection from which the appeal
is taken and in the Examiner’s Answer. We provide the following for
highlighting and emphasis.
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Rejection Under 35 U.S.C. § 101
The Examiner determined that claim 1 is directed to “matching
. . . mobile device travel profiles with . . . data sets,” “obtaining residence
location data,” and “associating” the location data with a payment account,
all of which the Examiner determined is a mental process and, therefore,
constitutes an abstract idea. Ans. 4–5; Alice Corp. v. CLS Bank lnt’l, 573
U.S. 208, 217 (2014) (describing two-step framework “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts”).
Further, the Examiner found that claim 1 does not recite additional
limitations beyond generic computing devices, and therefore does not
amount to significantly more than the abstract idea. Final Act. 11–12.
Accordingly, the Examiner concluded that the claims constitute ineligible
subject matter.
Appellant argues that claim 1 is not an abstract idea because it “goes
into much more detail than” merely “collecting, analyzing, and recognizing
financial data.” Appeal Br. 9; Reply Br. 3. Appellant argues that the claim
recites details that do “not monopolize the abstract idea” cited by the
Examiner. Appeal Br. 9. Appellant further argues that the invention “is
directed to improving computer technology.” Reply Br. 2.
Pursuant to the USPTO’s “Revised Subject Matter Eligibility
Guidance,” which synthesizes case law and provides agency instruction on
the application of § 101, we must look to whether a claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
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activity such as a fundamental economic practice, or mental processes)
(“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Step 2A, Prong
Two”).
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance 84
Fed. Reg. 50, 54–55 (Jan. 7, 2019) (“Guidance”).
Only if a claim recites a judicial exception and 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
(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 id. 56 (collectively “Step 2B”).
We begin our review with Step 2A, Prong One of the Guidance, as
applied to Appellant’s claim 1.2
As the Examiner determined, claim 1 is directed to a “computerized
method.” Appeal Br. 16. The method is performed on various “data” by a
combination of “receiving,” “obtaining,” “matching,” and “associating”
steps. Id. Specifically, claim 1 recites receiving data indicative of

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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“locations” and “times” of “payment card transactions;” receiving data
regarding a “mobile device travel profile” including geographic location and
time; “matching” the travel profile to data; “obtaining” residence location
data; and “associating” the residence location data with a card account.
Appeal Br. 16.
We agree with the Examiner’s determination that the foregoing steps
all constitute the mental process of obtaining, analyzing, and organizing data
according to rules, which is one of the categories of subject matter deemed
abstract under the Guidance. As the Examiner observes, “other than reciting
in the preamble ‘[a] computerized method,’ nothing in the claim . . .
precludes the step from practically being performed in the mind.” Ans. 5.
The Examiner explains, and we agree:
but for the ‘computerized method’ preamble language,
‘obtaining’ in the context of this claim encompasses a user
manually obtaining residence location data for the owner of the
matched mobile device by telephone or phone book and
‘associating’ encompasses thinking about associating the
residence data location with the matched payment card
account. . . [T]he retrieval, matching, associating, transmission,
and modification of the data is under [broadest reasonable
interpretation] not limited by any particular data structure, may
be formatted in any non-computer readable format, and may
comprise any information sufficient to identify the relevant
information, such as handwritten text or vocal commands.

Ans. 5. Accordingly, the claim falls within the “mental process” category of
abstract ideas. See supra.
The data collection elements recited in claim 1 do not make the claim
any less abstract. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353–54 (Fed. Cir. 2016) (“[W]e have treated collecting information,
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including when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.”).
Thus, upon review of claim 1, we agree with the Examiner’s
determination that the foregoing steps individually, and in combination,
recite one or more of the categories deemed abstract under the Guidance.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellant argues that claim 1 is “directed
to improving computer technology, namely to support enhanced location-
based data analytics.” Reply Br. 2; see also Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1339 (Fed. Cir. 2016) (patent-eligible claims “directed to a
specific implementation of a solution to a problem in the software arts”);
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appellant, however, does not explain, and we do not discern, any
improvement in technology from the claimed invention or any other
integration of the invention into a practical application. The claims in Enfish
were directed to a “specific improvement to the way computers operate,”
i.e., an improved database configuration that permitted faster searching for
data. Enfish, 822 F.3d at 1330–33, 1336. Appellant does not describe an
advance in hardware or software that, for example, causes a computer to
operate faster or more efficiently. The alleged improvement to “location-
based data analytics” does not parallel the improvement in Enfish and does
not impart patent eligibility under Mayo/Alice step one. See Secured Mail
Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017)
(explaining that the claims in Enfish “focused on an improvement to
computer functionality itself, not on economic or other tasks for which a
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computer is used in its ordinary capacity”). Claim 1 uses a computer in its
ordinary capacity. Accordingly, the Examiner properly determined that
claim 1 fails to recite an improvement to either the functioning of the
computer itself or another technology or technical field. Final Act. 12–13.
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites matching various payment and location data sets
according to rules. Appeal Br. 16 (Claims Appendix). Reciting a result-
oriented solution that lacks any details as to how the computer performed the
modifications is the equivalent of the words “apply it.” Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2017)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed.
Cir. 2016) (cautioning against claims “so result focused, so functional, as to
effectively cover any solution to an identified problem”)); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (mere data gathering does not make a claim patent-eligible). The
receiving and obtaining elements in claim 1 do not add meaningfully to the
recited mental steps. See supra.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
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(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites “matching . . . mobile device travel profiles with . . .
data sets,” “obtaining residence location data,” and “associating” the
location data with a payment account, according to rules. See supra.
According to the Specification, the steps of claim 1 are performed using
general purpose, conventional computing devices and program instructions.
Spec. 13–14. We agree with the Examiner’s finding that simply using
standard, generic computer elements to implement the foregoing managing
of resources is well understood, routine, and conventional, and is not a
meaningful limitation that amounts to significantly more than an abstract
idea. Final Act. 11–13. Further, although Appellant asserts that claim 1
includes unconventional elements, Appellant provides no evidence or
persuasive argument to rebut any of the Examiner’s foregoing findings. Id.
For example, Appellant does not address the Examiner’s finding that the
Specification describes only generic, standard computing elements
implementing the steps in claim 1.
Similarly, we are unpersuaded by Appellant’s argument that the
claims “do not preempt the entire field of customizing web content.” Appeal
Br. 9. Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362–63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193
(2015) (“[T]hat the claims do not preempt all price optimization or may be
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limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Where, as here, “a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework . . .
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly, we agree with the Examiner’s determination that claim 1
merely uses computer elements in the implementation of an abstract idea,
which does not equate to providing a technical solution to a technical
problem (see Ans. 10–11).
For the foregoing reasons, we are not persuaded of error. We sustain
the rejection of claim 1 as constituting patent-ineligible subject matter.
Appellant does not argue the subject matter eligibility rejection of the
remaining claims separately from claim 1. Accordingly, we also sustain the
rejection of those claims.
Rejection Under 35 U.S.C. § 103
Appellant argues the Examiner erred in finding the prior art teaches or
suggests “obtaining residence location data,” and “associating” that data
with the payment card account, as recited in claim 1. Appeal Br. 12–13;
Reply Br. 3–4. Specifically, Appellant contends Howe only teaches
geolocation data at “transaction” locations. Reply Br. 3. We, however, are
unpersuaded of error.
The Examiner relies on not just Howe, but the combination of Howe
and Routson as teaching the disputed claim limitations. The Examiner finds,
and we agree, that Routson teaches obtaining residence location data. For
example, Routson Figure 4 illustrations, and paragraph 81 explains, “filter
314 extracts data from internal customer account data” including “purchase
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activity” and the customer’s residential address, and associating the
residence data with an account. Routson, Fig. 4, ¶¶ 81, 87. Howe, in turn,
teaches receiving the “real time geolocation” of a mobile phone. Howe,
Fig. 2, ¶¶ 11, 16, 44.
Appellant does not explain how the Examiner allegedly erred in
finding the combination of references teaches the disputed claim limitations.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (holding “one cannot
show non-obviousness by attacking references individually where . . . the
rejections are based on combinations of references”). Moreover, the
Examiner finds ample rationale for combining the references:
It would have been obvious to one of ordinary skill in the art to
include in the payment card security method of Howe, the
ability to associate residence location data with a payment card
account and associated transactions as taught by Routson, since
the claimed invention is merely a combination of old elements,
and in the combination each element merely would have
performed the same function as it did separately, and one
of the ordinary skill in the art would have recognized that the
results of the combination were predictable. Further, a person
or ordinary skill would be willing to make this substitution ‘to
ensur[e] . . . customer accounts are correctly linked to
appropriate customer information within a customer
database . . [and] all unique customers are not erroneously
identified.’ [citing Routson ¶ 3].

Final Act. 18–19; see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007) (“[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
Appellant does not point to any evidence of record that the resulting
arrangements of the cited references were “uniquely challenging or difficult
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for one of ordinary skill in the art” or “represented an unobvious step over
the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). The Examiner’s
findings are reasonable because the skilled artisan would “be able to fit the
teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR,
550 U.S. at 420–21. We are persuaded the claimed subject matter
exemplifies the principle, “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1. The remaining claims are not argued separately. We,
therefore, also sustain the rejections of remaining claims 2–20.
SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–3, 5–10,
12–17, 19,
20
103 Howe, Routson 1–3, 5–10,
12–17, 19,
20

4, 11, 18 103 Howe, Routson,
Bovard
4, 11, 18
Overall
Outcome
1–20
DECISION
We affirm the Examiner’s decision rejecting claims 1–20.
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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).
AFFIRMED