MasterCard International Incorporated

Patent Trials and Appeals Board

Mar 29, 2021

2020006264 (P.T.A.B. Mar. 29, 2021)

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.
15/040,495 02/10/2016 Manoneet Kohli P02863-US-
UTIL (M01.414)
3195
125619 7590 03/29/2021
Mastercard International Incorporated
c/o Buckley, Maschoff & Talwalkar LLC
50 Locust Avenue
New Canaan, CT 06840
EXAMINER
BRIDGES, CHRISTOPHER
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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 MANONEET KOHLI
____________

Appeal 2020-006264
Application 15/040,495
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Mastercard
International Incorporated (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to determining that a
benefit payment is due to be made to a recipient using a data store and an
indication of biometric user authentication as proof-of-life (Spec., Abstr.).
Claim 1, reproduced below with the italics added, is representative of the
subject matter on appeal.

1. A method for biometric proof-of-life processing, the
method comprising:
determining, by a first computer, that a benefit payment is
due to be made to a recipient;
accessing, by the first computer, a data store containing
records of payment transactions made by the recipient, said data
store maintained by a second computer different from the first
computer, said second computer having compiled said records of
payment transactions from data supplied by a computerized
payment system;
receiving, by the first computer, an indication from the
data store that the recipient had successfully performed a
biometric user authentication with respect to at least one of the
payment transactions;
accepting, by the first computer, the received indication as
proof-of-life with respect to the recipient; and
the first computer making the benefit payment to the
recipient in response to said proof-of-life;
wherein said first computer includes a first processor and a
first memory in communication with said first processor, said
first memory storing program instructions for controlling the first
processor, said second computer including a second processor
and a second memory in communication with said second
processor, said second memory storing program instructions for
controlling the second processor.

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THE REJECTION
The following rejection is before us for review:
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 8; Reply Br. 2). The
Appellant argues further that the claim is integrated into a practical
application (Appeal Br. 8, 9). The Appellant argues further that the claim is
“significantly more” than the alleged abstract idea (Appeal Br. 9; Reply Br.
3).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–10; Ans. 3–13).
We agree with the Examiner. 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

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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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
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof 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 187; see also id. at 191 (“We
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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. (internal citation omitted) (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.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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 Guidance.
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
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.
Here, the Examiner has determined that the claim sets forth “making a
payment to an authenticated individual,” which is both a certain method of
organizing human activity as a fundamental economic practice and a mental
process, which are abstract ideas (Final Act. 2-5). We substantially agree
with the Examiner. We determine that the claim sets forth the subject matter
in italics above which describes the concept of: [1] “determining, . . . that a
benefit payment is due to be made to a recipient”; [2] “accessing . . . a data
store containing records of payment transactions made by the recipient”; [3]
“receiving . . . an indication from the data store that the recipient had
successfully performed a biometric user authentication with respect to at
least one of the payment transactions”; [4] “accepting . . . the received
indication as proof-of-life with respect to the recipient”; and [5] “making the
benefit payment to the recipient in response to said proof-of-life”, which is a
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method of determining that benefit payment is due to be made to a user
using data and an indication as proof-of-life and is a certain method of
organizing human activities and a fundamental economic practice; or a
mental process, i.e., a judicial exception.
See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016) where collecting information, analyzing it, and displaying results
from certain results of the collection and analysis was held to be an abstract
idea. Courts have found claims directed to collecting, recognizing, and
storing data in a computer memory to be directed to an abstract idea.
Content Extraction and Transmission LLC v. Wells Fargo Bank, National
Association, 776 F.3d 1343 (Fed. Cir. 2014). In Inventor Holdings, LLC v.
Bed Bath & Beyond Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) claims
directed to the local processing of payments for remotely purchased goods
was held to be directed to an abstract idea. In FairwarningIP, LLC v. Iatiric
Systems, Inc., 839 F.3d 1089, 1094, Oct. 11, 2016, it was held that claim
directed to collecting and analyzing information to detect misuse and
notifying a user when misuse is detected was directed to an abstract idea.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
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For example, in the claim, the additional elements beyond the abstract
idea are the recited first and second computers. The claimed limitations of
“determining,” “accessing,” “receiving,” “accepting,” and “making the
benefit payment” as recited “do not purport to improve the functioning of
the computer itself,” do not improve the technology of the technical field,
and do not require a “particular machine.” Rather, they are performed using
generic computer components. Further, the claim as a whole fails to effect
any particular transformation of an article to a different state. The recited
steps in the claim fail to provide meaningful limitations to limit the judicial
exception. In this case, the claim merely uses the claimed computer
elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
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pages 8 and 9, for example, describes using conventional computer
components such as a processor, storage devices, and input device in a
conventional manner. The claim specifically includes recitations for
computers to implement the method but these computer components are all
used in a manner that is well understood, routine, and conventional in the
field. Here, the claimed generic computer components which are used to
implement the claimed method are well understood, routine, or conventional
in the field. Here, the claim has not been shown to be “significantly more”
than the abstract idea.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining method claims
2–13, which are drawn to similar subject matter, and the rejection of these
claims is sustained for the same reasons given above.
We reach the same conclusion as to independent system claim 14.
Here, as in Alice, “the system claims are no different in substance from the
method claims. The method claims recite the abstract idea implemented on
a generic computer; the system claims recite a handful of generic computer
components configured to implement the same idea.” Alice, 134 S. Ct. at
2351. “[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.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294). For these
reasons, the rejection of claim 14 and its dependent claims is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–20 under 35 U.S.C. § 101.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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

AFFIRMED