null

Patent Trials and Appeals Board

Nov 27, 2019

13218177 - (D) (P.T.A.B. Nov. 27, 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.
13/218,177 08/25/2011 Christopher J. Merz 21652-00150 7374
75564 7590 11/27/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
JESSEN, DEREK
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. MERZ
Appeal 2019-000940
Application 13/218,177
Technology Center 3600
Before MAHSHID D. SAADAT, BETH Z. SHAW, and ALEX S. YAP,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant,1 Christopher J. Merz,
appeals from the Examiner’s decision to reject claims 1–26. Final Act. 1. 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). Appellant identifies the real party in interest as MasterCard
International Incorporated. Appeal Br. 1.
Appeal 2019-000940
Application 13/218,177

2
CLAIMED SUBJECT MATTER
The claims are directed to redemption preference profiling of a
cardholder within a payment network. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-based method for managing a predictive
redemption profile for a cardholder as a portion of a loyalty
profile of the cardholder, the cardholder having an account
associated with a payment card, the payment card issued by an
issuer and registered in a payment card network to the
cardholder, said method performed using a payment network
computer coupled to a database, the payment network computer
including a profile wrapper component and a profile event loop
component, said method comprising:
assigning an industry identifier to each respective reward
item and purchase item being processed over the payment card
network, the industry identifier identifying an industry segment;
electronically receiving, using a transaction gatherer
component embedded within the profile wrapper component,
purchase transaction information for the cardholder for
purchases made by the cardholder with a merchant and initiated
by the cardholder using the payment card, wherein the purchase
transaction information includes purchase items purchased by
the cardholder and associated industry identifiers;
electronically receiving, using the transaction gatherer
component, redemption transaction information for the
cardholder, wherein the redemption transaction information
includes historical reward items previously selected by the
cardholder and associated industry identifiers, and wherein the
redemption transaction information is different than the purchase
transaction information;
electronically storing the purchase transaction information
and the redemption transaction information within the database;
generating, by the profile event loop component, a plurality of
redemption preference models each including one or more
computer code segments configured to generate a redemption
profile for the cardholder and a respective reward item ID
assigned to each of the reward items having been redeemed by
Appeal 2019-000940
Application 13/218,177

3
the cardholder in the stored redemption transaction information,
wherein the respective assigned reward item IDs are associated
with the corresponding ones of the assigned industry identifiers
within each of the plurality of redemption preference models;
correlating, for each of the plurality of redemption
preference models, a cardholder spend pattern from the purchase
transaction information with a cardholder redemption usage
pattern from the redemption transaction information, the
cardholder redemption usage pattern including at least one
archived cardholder profile snapshot matching a particular
assigned reward ID with a particular industry identifier;
ranking the plurality of redemption preference models based, at
least in part, on a predictive performance of each redemption
preference model, each predictive performance utilizing one or
more archived cardholder profile snapshots;
selecting one or more of the ranked redemption preference
models exhibiting highest relative industry redemption
preferences;
generating the predictive redemption profile, by the profile
event loop component, for the cardholder using the one or more
selected ranked redemption preference models, wherein the
predictive redemption profile includes the assigned reward items
and is based at least in part on the stored purchase transaction
information and the stored redemption transaction information
for the cardholder, the predictive redemption profile representing
a relative redemption preference of the cardholder, and wherein
the predictive redemption profile is configured to indicate the
relative redemption preference of the cardholder for the assigned
industry identifier as compared to all other industry identifiers of
the plurality of redemption preference models, respectively;
comparing a current cardholder profile snapshot with one or
more archived cardholder profile snapshots in the generated
predictive redemption profile; and
recommending, by the payment network computer, a new
reward item for the cardholder based on the profile snapshot
comparison and availability of the new reward item among one
or more of the highest ranking industries from the ranked
redemption preference models.
Appeal 2019-000940
Application 13/218,177

4
REJECTIONS
Claims 1–26 are rejected under 35 U.S.C. § 101.
Claims 1–26 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Sickel et al. (US 2006/0271432 A1, published Nov. 30,
2006), Chu (US 2012/0123835 A1, published May 17, 2012), and Ariff et al.
(US 7,613,628 B2, issued Nov. 3, 2009). Final Act. 9.

OPINION
SECTION 101 REJECTION
Appellant argues the § 101 rejection of claims 1–26 as a group. See
Appeal Br. 8–18. As permitted by 37 C.F.R. § 41.37, we decide this issue
based on claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Appeal 2019-000940
Application 13/218,177

5
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility Guidance explains that when making
this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
Abstract idea
Turning to Step 2A, Prong 1, the claimed method is for developing a
redemption preference profile for a cardholder. Spec. ¶ 1. Claim 1 includes
the following limitations, emphasized in italics:
Appeal 2019-000940
Application 13/218,177

6
assigning an industry identifier to each respective reward item
and purchase item being processed over the payment card
network, the industry identifier identifying an industry segment;
electronically receiving, using a transaction gatherer
component embedded within the profile wrapper component,
purchase transaction information for the cardholder for
purchases made by the cardholder with a merchant and initiated
by the cardholder using the payment card, wherein the purchase
transaction information includes purchase items purchased by
the cardholder and associated industry identifiers;
electronically receiving, using the transaction gatherer
component, redemption transaction information for the
cardholder, wherein the redemption transaction information
includes historical reward items previously selected by the
cardholder and associated industry identifiers, and wherein the
redemption transaction information is different than the
purchase transaction information;
electronically storing the purchase transaction
information and the redemption transaction information within
the database;
generating, by the profile event loop component, a
plurality of redemption preference models each including one or
more computer code segments configured to generate a
redemption profile for the cardholder and a respective reward
item ID assigned to each of the reward items having been
redeemed by the cardholder in the stored redemption transaction
information, wherein the respective assigned reward item IDs
are associated with the corresponding ones of the assigned
industry identifiers within each of the plurality of redemption
preference models;
correlating, for each of the plurality of redemption
preference models, a cardholder spend pattern from the
purchase transaction information with a cardholder redemption
usage pattern from the redemption transaction information, the
cardholder redemption usage pattern including at least one
archived cardholder profile snapshot matching a particular
assigned reward ID with a particular industry identifier;
ranking the plurality of redemption preference models
based, at least in part, on a predictive performance of each
Appeal 2019-000940
Application 13/218,177

7
redemption preference model, each predictive performance
utilizing one or more archived cardholder profile snapshots;
selecting one or more of the ranked redemption preference
models exhibiting highest relative industry redemption
preferences;
generating the predictive redemption profile, by the
profile event loop component, for the cardholder using the one
or more selected ranked redemption preference models, wherein
the predictive redemption profile includes the assigned reward
items and is based at least in part on the stored purchase
transaction information and the stored redemption transaction
information for the cardholder, the predictive redemption profile
representing a relative redemption preference of the cardholder,
and wherein the predictive redemption profile is configured to
indicate the relative redemption preference of the cardholder for
the assigned industry identifier as compared to all other industry
identifiers of the plurality of redemption preference models,
respectively;
comparing a current cardholder profile snapshot with one
or more archived cardholder profile snapshots in the generated
predictive redemption profile; and
recommending, by the payment network computer, a new
reward item for the cardholder based on the profile snapshot
comparison and availability of the new reward item among one
or more of the highest ranking industries from the ranked
redemption preference models.
Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See 2019 Eligibility Guidance, 84 Fed. Reg.
at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Appeal 2019-000940
Application 13/218,177

8
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “‘anonymous loan
shopping’” was an abstract idea because it could be “performed by humans
without a computer”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14.
The method recited in claim 1 executes steps that people can perform
in their minds or using pen and paper. A person can perform the italicized
steps of claim 1 by using his or her mind (or pen and paper) in the claimed
manner. For example, a person can “assign[] an industry identifier to each
respective reward item and purchase item,” “the industry identifier
identifying an industry segment,” using pen and paper. As another example,
a person can “compar[e] a current cardholder profile snapshot with one or
more archived cardholder profile snapshots in the generated predictive
redemption profile” using his or her mind or pen and paper. Accordingly,
claim 1 recites a mental process, and thus an abstract idea.
Turning to Step 2A, Prong 2, the remaining elements recited in claim
1 do not integrate the abstract idea into a practical application. In addition to
Appeal 2019-000940
Application 13/218,177

9
the steps discussed above, claim 1 recites a “payment card,” a “payment card
network” a “payment network computer” and various components
embedded or included in the payment network computer (i.e., profile event
loop component, transaction gatherer component.) The recited card,
network, and computer encompass generic components. See, e.g., Spec. ¶ 39
(“As described herein, the term ‘financial transaction card’ or ‘payment
card’ includes cards such as credit cards, debit cards, and prepaid cards, but
also includes any other devices that may hold payment account information,
such as mobile phones, personal digital assistants (PDAs), and key fobs.”)
¶¶ 40–43 (describing generic networks, computers, and databases).
Programming a general-purpose computer to perform abstract ideas does not
integrate those ideas into a practical application. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
We are not persuaded that the claimed “payment card network” is a
specialized, non-generic network, despite Appellant’s argument to the
contrary (Appeal Br. 16, 17), because there is no persuasive evidence on this
record to substantiate Appellant’s contention. Although Appellant points us
to paragraph 34 of the Specification, which describes a “multi-party payment
card industry system,” the term “payment card network” is not mentioned in
paragraph 34. Moreover, paragraphs 40 through 43 describe Figure 2, “an
exemplary payment card system 100,” which includes client systems 114
that “are interconnected to the Internet through many interfaces including a
network, such as a local area network (LAN) or a wide area network
Appeal 2019-000940
Application 13/218,177

10
(WAN), dial-in-connections, cable moderns and special high-speed ISDN
lines.” Spec. ¶ 41.
We are not persuaded that the claimed invention improves the
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), despite Appellant’s arguments to the contrary (Appeal Br.
14). The claimed self-referential table in Enfish was a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that
the claimed invention uses such a data structure to improve a computer’s
functionality or efficiency, or otherwise change the way that device
functions, there is no persuasive evidence on this record to substantiate such
a contention.
Appellant’s reliance on BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 15; Reply Br. 3)
is also unavailing. There, the court held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution—namely a “one-size-fits-all” filter at an Internet Service Provider
(ISP)—more dynamic and efficient via individualized filtering at the ISP.
BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution
improved the computer system’s performance and, therefore, was patent-
eligible. See id. But unlike the filtering system improvements in BASCOM
that added significantly more to the abstract idea in that case, the claimed
Appeal 2019-000940
Application 13/218,177

11
invention here uses generic computing components to implement an abstract
idea.
Appellant’s reliance on Thales Visionix Inc. v. United States, 850 F.3d
1343 (2017) (Appeal Br. 9; Reply Br. 2) is likewise unavailing. There, the
court held eligible claims reciting determining an orientation of an object
relative to a moving reference frame based on signals from two inertial
sensors mounted respectively on the object and on the moving reference
frame. Thales Visionix, 850 F.3d at 1345–49. In reaching its eligibility
conclusion, the court noted that the claimed invention used inertial sensors
in an unconventional manner to reduce errors in measuring a moving
object’s relative position and orientation on a moving reference frame. Id. at
1348–49.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 9; Reply Br. 2), there is no persuasive evidence
on this record to substantiate such a contention.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016) despite Appellant’s arguments to the contrary (Appeal Br. 12; Reply
Br. 2). There, the claimed process used a combined order of specific rules
that rendered information in a specific format that was applied to create a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
Appeal 2019-000940
Application 13/218,177

12
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to manage a
predictive redemption profile for a cardholder. This generic computer
implementation is not only directed to a mental process, but also does not
improve a display mechanism as was the case in McRO. See SAP Am. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing
McRO).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (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, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). We, therefore, agree with the Examiner that
claim 1 is directed to an abstract idea.

Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept” pursuant to Step 2B
of the 2019 Eligibility Guidance. The Examiner determined claim 1 does not
recite an inventive concept because the additional elements in the claim do
not amount to “significantly more” than an abstract idea. See Final Act. 4, 5.
Appeal 2019-000940
Application 13/218,177

13
We agree with the Examiner’s determination. As noted above, the
claimed invention merely uses generic computing components to implement
the recited abstract idea. The additional elements recited in the claim include
the “payment card,” “payment card network,” “payment network computer,”
and various components embedded or included in the payment network
computer (i.e., profile event loop component, transaction gatherer
component.) The claim recites these elements at a high level of generality,
and the written description indicates that these elements are generic
computer components. See, e.g., Spec. ¶¶ 39–43. Using generic computer
components to perform abstract ideas does not provide the necessary
inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”). Thus, these elements, taken individually or
together, do not amount to “significantly more” than the abstract ideas
themselves.
Appellant contends various elements recited in the claim provide the
necessary inventive concept. Appeal Br. 14–18. But these elements form
part of the recited abstract ideas and thus are not “additional elements” that
“‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also 2019
Eligibility Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the
term ‘additional elements’ to refer to claim features, limitations, and/or steps
that are recited in the claim beyond the identified judicial exception.”
(Emphasis added)).
Rather, the recited “payment card,” “payment card network,” and
“payment network computer” are the additional recited elements whose
Appeal 2019-000940
Application 13/218,177

14
generic computing functionality is well-understood, routine, and
conventional. See Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1368 (Fed. Cir. 2015) (noting that a recited user profile (i.e.,
a profile keyed to a user identity), database, and communication medium are
generic computer elements); Mortg. Grader, 811 F.3d at 1324–25 (noting
that components such an “interface,” “network,” and “database” are generic
computer components that do not satisfy the inventive concept requirement).
Accord Final Act. 4, 5 (concluding that the claims’ additional generic
computer components do not add significantly more than the abstract idea.).
Appellant’s arguments do not persuade us claim 1 is “directed to” a patent-
eligible concept.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 14–18), we disagree. Even assuming, without deciding, that the
claimed invention can create a predictive redemption profile for a cardholder
faster than doing so manually, any speed increase comes from the
capabilities of the generic computer components—not the recited process
itself. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095
(Fed. Cir. 2016) (citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F.
App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
Appeal 2019-000940
Application 13/218,177

15
capabilities of a general-purpose computer ‘do[ ] not materially alter the
patent eligibility of the claimed subject matter.’”). Like the claims in
FairWarning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of the pending claims
under 35 U.S.C. § 101.

SECTION 103 REJECTION
Regarding the § 103 rejection, we are not persuaded by Appellant’s
arguments with respect to claim 1 for the reasons identified by the Examiner
in the final rejection and Answer. Appellant argues the references do not
teach “the receipt of redemption information, or redemption transaction
information, separately from the receipt of purchase transaction
information.” Appeal Br. 18, 19; Reply Br. 4. Appellant does not appear to
dispute that Sickel teaches receiving redemption information, but argues
Sickel does not teach receiving purchase transaction information. Id. We
agree with the Examiner’s findings, however, that Sickel teaches receiving
purchase transaction information because Sickel teaches the redemption
vehicle is “loaded with points” and that the “points can be obtained from one
merchant.” Sickel ¶ 4. These points are earned by purchase transaction
information. Id. ¶ 2 (rewards can be provided “via purchases” on a co-
branded credit card); Final Act. 10.
Appeal 2019-000940
Application 13/218,177

16
Appellant acknowledges Sickel discloses a reward point system that
generates a “redemption profile.” Appeal Br. 19. Yet, Appellant argues
“Sickel’s redemption profile merely specifies the type of universal
redemption vehicle that should be configured (e.g., points, currency,
applicable merchants, etc.), but does not teach or suggest that individual
reward items are each assigned industry identifiers, as erroneously
asserted in the rejection.” Id. We are not persuaded by this argument because
Sickel explains that points “can be redeemed at any merchant in the selected
industry vertical” and that the industry vertical may include, for example,
lodging, retail, airlines, car rentals, and other examples of industry
identifiers. Sickel ¶ 4; Ans. 10. These are examples of industry identifiers.
Appellant also argues “Sickel also fails to teach or suggest that each
redeemed reward item is assigned its own reward item ID that is then
matched with a particular industry identifier in an archived cardholder
profile snapshot.” Appeal Br. 19. Yet, as the Examiner explains, Sickel
teaches each redeemed award is matched or recommended, and this
matching is done based on the redemption profile, where Sickel teaches that
the profile includes the industry vertical. Ans. 11 (citing Sickel ¶ 4, Figs. 1–
5). As discussed above, the industry vertical includes the industry identifiers.
Appellant argues “Chu is completely silent regarding payment card
holders or issuers, and also regarding any predictive profiles for an
individual cardholder, whether for purchase transaction usage or redemption
transaction usage.” Appeal Br. 20. The Examiner finds, and we agree, that
Chu is used to teach creating a reward catalog for a user and recommending
rewards to individuals automatically and with an autosuggest feature. Ans.
12 (citing Chu ¶ 56); Final Act. 13–15. To the extent Appellant contends
Appeal 2019-000940
Application 13/218,177

17
that Chu does not teach the disputed elements, there is no persuasive
evidence on this record to substantiate such a contention.
We find unavailing Appellant’s contention that Chu’s “algorithm”
cannot be modified to be relevant to the pending claims. Appeal. Br. 20. Not
only is this contention unsubstantiated by any persuasive evidence on this
record, it is well settled that “a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id. And here, the Examiner’s
proposed combination uses prior art elements predictably according to their
established functions to yield a predictable result. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Therefore, the Examiner’s proposed
combination of the cited references is supported by articulated reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion.
Regarding Ariff, Appellant argues “Ariff is silent regarding any
database technique that includes the generation of a predictive redemption
profile, or more particularly, the generation of a predictive redemption
profile that includes a comparison of a current cardholder profile snapshot
with an archived cardholder profile snapshot.” Appeal Br. 22. In particular,
Appellant argues Ariff merely uses conventional SKU data and is “silent
Appeal 2019-000940
Application 13/218,177

18
regarding any predictive data analysis specifically for a redemption profile
of a loyalty system.” Id. at 22–22.
The Examiner points out that Sickel, not Ariff, is used to teach the
claimed “associating within the database a reward item ID with the
corresponding assigned industry identifier.” Ans. 13. The Examiner finds,
and we agree, that Ariff teaches correlating a part of a consumer profile and
a consumer profile, which teaches the claimed comparing. Ans. 13, 14
(citing Ariff 13:5–14:14 (“correlate any of the following: a consumer profile,
a part of a consumer profile, a supplementary member profile . . . purchase
data . . . or the like.”)). Appellant provides insufficient evidence that the
Specification or claims limit the claimed “comparing” in a way that, under a
broad but reasonable interpretation, is not encompassed by Ariff’s
correlating.
Additionally, Appellant argues the rejection fails to identify any
teaching, suggestion from the references themselves to combine Sickel, Chu,
and Ariff. Appeal Br. 22; Reply Br. 4. While it is often necessary for an
Examiner to identify a reason for combining familiar elements obtained
from the prior art in establishing a prima facie case of obviousness, the
identification of such a reason is not a sine qua non requirement. See KSR,
550 U.S. at 418–19. So long as the Examiner provides an articulated
reasoning with some rational underpinning to substantiate the obviousness
rejection, such a conclusion is proper. See id. at 418. In this case, the
Examiner provided more than just a mere conclusory statement. The
Examiner states that it would have been obvious to an ordinarily skilled
artisan at the time of the claimed invention to combine Sickel and Chu “to
retain cardholder and cardholder satisfaction via improved targeting of
Appeal 2019-000940
Application 13/218,177

19
cardholder preferred rewards” (Final Act. 15, 16), and further explains that it
would have been obvious to include the identified features of Ariff “to
maintain a competitive system at the time of the invention, since other
marketing entities would be using said features to improve targeting
advertising to users.” Final Act. 20. Such a statement suffices as an
articulated reason with some rational underpinning to support the proffered
combination.
Moreover, such a combination is an obvious predictable variation of
known elements. “The 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. “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
ordinarily-skilled artisan, being “a person of ordinary creativity, not an
automaton,” would be able to fit the teachings of Sickel, Chu, and Ariff
together like pieces of a puzzle to predictably result in the claimed
invention. Id. at 420–21. Because Appellant has not demonstrated that the
proposed combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” the proposed modification would have
been well within the purview of the ordinarily skilled artisan. Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Absent persuasive rebuttal, it follows that the Examiner has not erred
in concluding that the combination of Sickel, Chu, and Ariff renders
independent claim 1 obvious.
CONCLUSION
The Examiner’s rejection is affirmed.
Appeal 2019-000940
Application 13/218,177

20
More specifically,
CONCLUSION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–26 § 101 Eligibility 1–26
1–26 § 103 Sickel, Chu, Ariff 1–26
Overall
Outcome
1–26

FINALITY AND 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