MasterCard International Incorporated

Patent Trials and Appeals BoardMar 30, 2021

2020002829 (P.T.A.B. Mar. 30, 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. 14/585,244 12/30/2014 Edward M. Lee 0009968USU/4450 5465 27623 7590 03/30/2021 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 EXAMINER GARCIA-GUERRA, DARLENE ART UNIT PAPER NUMBER 3683 MAIL DATE DELIVERY MODE 03/30/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD M. LEE and LINDSAY ST. LAWRENCE Appeal 2020-002829 Application 14/585,244 Technology Center 3600 Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, 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 1–21. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM AND ENTER A NEW GROUND OF REJECTION. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mastercard International Incorporated. Appeal Br. 1. Appeal 2020-002829 Application 14/585,244 2 CLAIMED SUBJECT MATTER The claims are directed “to a method and a system for identifying geographic markets for merchant expansion.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: analyzing purchasing and payment activities of a first grouping of payment card holders at a first merchant; analyzing purchasing and payment activities of a second grouping of payment card holders at one or more second merchants, wherein the one or more second merchants are selected from one or more first merchant competitors, and wherein the purchasing and payment activities of the second grouping of payment card holders are representative of the purchasing and payment activities of the first grouping of payment card holders; identifying geolocations of the purchasing and payment activities of the second grouping of payment card holders at the one or more second merchants and/or geolocations of residence of the second grouping of payment card holders; identifying geographic markets for first merchant expansion based on the geolocations of the purchasing and payment activities of the second grouping of payment card holders at the one or more second merchants and/or geolocations of residence of the second grouping of payment card holders; generating one or more recommendations for the first merchant expansion based on the identifed geographic markets, wherein the one or more recommendations include a heat mapping overlay for a map showing the geographic markets for the first merchant expansion; and conveying the one or more recommendations to the first merchant. Appeal 2020-002829 Application 14/585,244 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Perrone US 9,767,471 B1 Sept. 19, 2017 Ubalde US 2011/0161137 A1 June 30, 2011 Olives US 2011/0302061 A1 Dec. 8, 2011 Ghosh US 2015/0073977 A1 Mar. 12, 2015 REJECTIONS Claims 1–21 stand rejected under judicial exception to 35 U.S.C. § 101 as being directed to ineligible subject matter. Final Act. 16. Claims 1–3, 9–17, 20, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh, Perrone, and Ubalde. Final Act. 23. Claims 4–8, 18, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh, Perrone, Ubalde, and Olives. Final Act. 58. OPINION Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court instructs us to “first determine whether the claims at issue are directed to a patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If this initial condition is met, we then move to the second step, in which we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the Appeal 2020-002829 Application 14/585,244 4 nature of the claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step as a search for “an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (internal quotation marks omitted) (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019).2 Under that 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, and 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) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under “Step 2B,” to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the Guidance. USPTO, October 2019 Update: Subject Matter Eligibility, https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf. Appeal 2020-002829 Application 14/585,244 5 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 generally Guidance. ANALYSIS Claim Grouping Appellant argues claims 1 and 2 as a group for the purpose of the rejection under a judicial exception to § 101 and simply asserts that the Examiner failed to make a prima facie case against claims 3–21 without submitting separate arguments directed to these claims, and relies on the same reasons submitted for claim 1 in asserting eligibility. See, e.g., Appeal Br. 24; Reply Br. 2. Thus, as to this rejection, we select claim 1 as representative of the group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Examiner’s Findings and Conclusion In the first step of the Alice inquiry, the Examiner rejects the claims, stating that the claims are drawn “to the collection analysis and displaying of information.” Final Act. 18. At Alice step 2, the Examiner additionally finds that the claims do not add a meaningful limitation to the abstract idea so as to amount to significantly more than the judicial exception. Final Act. 19. Analysis According to the Guidance Step One: Does Claim 1 Fall within a Statutory Category of § 101? Appeal 2020-002829 Application 14/585,244 6 We first examine whether the claim recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim 1 is directed to a method, which is one of the statutory classes (i.e., a process) under 35 U.S.C. § 101. Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception? We next look to whether the claim recites 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, and mental processes. In this instance, claim 1 recites steps that amount to analyzing data, which can be performed mentally. Specifically, the claim recites: analyzing purchasing and payment activities of a first grouping of payment card holders at a first merchant; analyzing purchasing and payment activities of a second grouping of payment card holders at one or more second merchants, wherein the one or more second merchants are selected from one or more first merchant competitors, and wherein the purchasing and payment activities of the second grouping of payment card holders are representative of the purchasing and payment activities of the first grouping of payment card holders; identifying geolocations of the purchasing and payment activities of the second grouping of payment card holders at the one or more second merchants and/or geolocations of residence of the second grouping of payment card holders; identifying geographic markets for first merchant expansion based on the geolocations of the purchasing and payment activities of the second grouping of payment card holders at the one or more second merchants and/or geolocations of residence of the second grouping of payment card holders; generating one or more recommendations for the first merchant expansion based on the identified geographic markets, Appeal 2020-002829 Application 14/585,244 7 wherein the one or more recommendations include a heat mapping overlay for a map showing the geographic markets for the first merchant expansion; and conveying the one or more recommendations to the first merchant. These activities are all capable of being performed by a human without a computer, and fall into the abstract idea of mental processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson[, 409 U.S. 63 (1972].”). In fact, the claims do not even require a computer, thus reinforcing that the steps may be performed by a human. We therefore determine that claim 1 recites the abstract idea of mental processes, which is a judicial exception to patent-eligible subject matter. Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that Integrate the Judicial Exception into a Practical Application? Following our Office guidance, having found that claim 1 recites a judicial exception, we next determine whether the claim recites “additional elements that integrate the exception into a practical application” (see MPEP §§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54. As noted above, each of the claimed steps is capable of being performed by a human. Claims 1 and 2 include no additional limitations other than the method steps of the abstract idea. Thus, claim 1 does not apply, rely on, or use the mental process steps in a manner that imposes a meaningful limit on those steps. Rather, the claim is simply a drafting effort designed to monopolize the mental process steps of claim 1. Appeal 2020-002829 Application 14/585,244 8 In short, the claim limitations elements discussed above: (1) do not result in an improvement to the functioning of a computer or other technology; (2) are not any particular machine; (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h). Consequently, the claimed invention does not integrate the abstract idea into a “practical application.” For these reasons, claim 1 contains no additional elements to integrate the judicial exception into a practical application. Thus, claim 1 is directed to an abstract idea, which is a judicial exception to patent-eligible subject matter under 35 U.S.C. § 101. Step 2B: Does Claim 1 Recite an Inventive Concept? We next consider whether claim 1 recites any additional elements, individually or as an ordered combination, that transform the abstract idea into a patent-eligible application, e.g., provide an inventive concept. Alice, 573 U.S. at 217–18. As noted above, claim 1 contains no additional elements. According to Office guidance, under Step 2B, “examiners should . . . evaluate the additional elements individually and in combination . . . to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).” See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step of the inquiry (Step 2B) looks at the additional elements in combination. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the Appeal 2020-002829 Application 14/585,244 9 ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). As noted above, claim 1 contains no additional elements. Thus, claim 1 fails to add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field, but instead “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, 84 Fed. Reg. at 56. That is, claim 1 is not directed to a specific application designed to achieve an improved technological result, as opposed to being directed to application of an abstract idea. For the reasons discussed above, we find no additional element, alone or in combination, recited in claim 1 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. See Alice, 573 U.S. at 221. We do note, however, that claims 15 and 16 include the extra elements of databases and a processor. These elements are simply standard computer technology used for purposes known in the art. These additional elements, thus, do not provide, either individually or as a combination, improvements to another technology or technical field or the functioning of the computer itself, but merely are conventional computing components included to perform the method. The Examiner, however, provides no analysis regarding claims 15 and 16 and its additional limitations. Appeal 2020-002829 Application 14/585,244 10 Appellant’s Contentions Appellant’s arguments against the Examiner’s rejection all center on the claimed heat mapping. See, e.g., Reply Br. 3–6. According to Appellant, the heat mapping is not a particular technological environment, but “a specific and practical application for providing an intuitive display of the geographic markets for merchant expansion.” Reply Br. 4. Appellant also asserts that “a specifically claimed intuitive display interface for a ‘general purpose computer’ such as the claimed heat mapping overlay are patent eligible.” Id. Further to this point, Appellant goes on to argue “[a] heat map[ping] overlay is also a very particular manner of summarizing and presenting information in electronic devices.” Reply Br. 5. Analysis As to Appellant’s argument that the heat mapping is a specific and practical application for providing an intuitive display of the geographic markets for merchant expansion, we note that this is still merely a display. Heat mapping is nothing more than a way of providing a visual representation of data. Appellant argues that the use of heat mapping for the claimed purpose is novel, but heat mapping in itself is not new. Appellant’s arguments relating to interfaces are also misplaced. A heat map is not an interface. Again, it is merely a graphical display of data. The case law Appellant points to, where subject matter was found eligible, involved novel arrangements of interfaces for use in computers. Interfaces involve a user interacting with aspects of a computer program to perform desired functions within that program. A user does not interface with a heat map other than to view it and absorb the information that is visually displayed. Likewise, the present claims are not analogous to the tabs in Appeal 2020-002829 Application 14/585,244 11 Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018). In Data Engine, Google’s patent involved notebook tabs within a particular spreadsheet display. These tabs allowed for easier navigation within the spreadsheet, i.e., the tabs created a better user interface for the user to navigate within the spreadsheet. A user would not interact with a heat map other than to view it and absorb the information contained therein. Accordingly, a heat map by itself cannot be a patent eligible user interface. Appellant also asserts that the claimed subject matter is patent eligible because the heat mapping claimed therein “does not purport to monopolize every solution to the problem.” Appeal Br. 20. We first note that preemption is not dispositive in determining patent eligibility. Even if a claim does not preempt an entire field, it still may be found ineligible. Here, as noted above, the claimed heat mapping is not an interface and thus is merely a known manner of visually displaying data to a user. As noted above, Appellant also argues that the Examiner failed to fully analyze any claims beyond claims 1 and 2. We generally agree with Appellant regarding claims 15 and 16 and the claims dependent therefrom. Although similar to claim 1, claims 15 and 16 are system claims that include the additional elements of databases and a general purpose computer for performing the method of claim 1. As noted above, however, these additional elements are merely known computing devices used in known ways to implement the abstract idea of the method contained in claim 1, which is essentially repeated in claim 15. Also, as stated above, these elements do not make the subject matter patent eligible. Because, however, the Examiner failed to address the additional limitations of claims 15 and 16, we do not sustain the rejection of claims 15–21, but we do enter a new ground of rejection rejecting these claims for the reasons stated herein. Appeal 2020-002829 Application 14/585,244 12 As to the claims dependent from claims 1 and 2, we accept the Examiner’s statement that the “dependent claims have been fully considered as well, however these claims are similarly directed to the same abstract idea as recited in the independent claims accompanied by additional details that are part of the abstract idea itself.” Ans. 21. As the Examiner states, “these [dependent] claims recite additional elements/activities that narrow the abstract idea, without additional elements that integrate the abstract idea into a practical application and without additional elements that add significantly more to the claims.” Ans. 22. We find that this sufficiently addresses the dependent claims as Appellant points to no specific subject matter contained therein that makes the dependent claims eligible and merely asserts that they were not addressed. Accordingly, we affirm the Examiner’s rejection of claims 3–14 as being directed to patent ineligible subject matter. Obviousness As to obviousness, Appellant asserts that Ghosh is insufficient because “[t]here is no identification of any groupings amongst Ghosh’s different merchants, much less ‘first grouping of payment card holders at a first merchant’ or ‘a second grouping of payment card holders at one or more second merchants.’” Reply Br. 8. Appellant asserts that “Ghosh describes the same set of consumers shopping at different stores, which means (1) the consumers are not separate first and second groupings of consumers and (2) the merchants are not competitor merchants.” Reply Br. 10–11. As to Appellant’s first point, the claims do not require the first and second groupings of consumers to be different. We note that the claims are directed at analyzing different groupings of data related to payment activities Appeal 2020-002829 Application 14/585,244 13 at first and second merchants. Even if the consumers in Ghosh are exactly the same people, just shopping at different merchants, from a data analysis standpoint, the data still meets the claim language at issue because there are still two groups of data, one from the first merchant and one from the second. The important aspect is that data is collected regarding payment activity at different merchants. Nothing in the claims requires the card holders to be different, only that the data involve groupings of payment activity at the first merchant and at the second merchant. Ghosh teaches such data. As to Appellants second point, we agree with the Examiner that Ghosh sufficiently teaches competitors. The Examiner points out that, for example, Ghosh’s “system 300 may detect if certain merchants are losing share to a competitor.” Ans. 26. Accordingly, Ghosh does contemplate that the payment activities at the merchants being compared may, in fact, be competitors. Accordingly, we do not find this argument persuasive. As such, we sustain the Examiner’s obviousness rejections. CONCLUSION The Examiner’s rejection is AFFIRMED; 37 C.F.R. § 41.50(b). Appeal 2020-002829 Application 14/585,244 14 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–21 101 Eligibility 1–14 15–21 15–21 1–3, 9– 17, 20, 21 103 Ghosh, Perrone, Ubalde 1–3, 9– 17, 20, 21 4–8, 18, 19 103 Ghosh, Perrone, Ubalde, Olives 4–8, 18, 19 Overall Outcome 1–21 15–21 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed Appeal 2020-002829 Application 14/585,244 15 rejection3, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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; 37 C.F.R. § 41.50(b) 3 37 C.F.R. § 41.52(a)(1) provides: “Appellant may file a single request for rehearing within two months of the date of the original decision of the Board.”