Visa International Service Association

Patent Trials and Appeals Board

Jun 26, 2020

2019002523 (P.T.A.B. Jun. 26, 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.
14/312,228 06/23/2014 Ilker Celikyilmaz 8223-1707011 (869US02) 7546
144885 7590 06/26/2020
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IIKER CELIKYILMAZ, JOSEPH SPEARS,
MUHAMMAD BASSAM ADIL KHAN,
KALPANA JOGI, and DARPAN DEWAN
____________

Appeal 2019-002523
Application 14/312,228
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, 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 1–21. 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 Visa International
Service Association (Appeal Br. 3).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to configuring the
processing of computer operations in relation with payment processing
(Spec., para 3). Claim 1, reproduced below with the italics added, is
representative of the subject matter on appeal.

1. A method, comprising:
receiving, in a computing apparatus, offers, each of the offers
offered by a plurality of merchants, wherein each of the offers has a
set of offer rules related to payment transactions made in an
electronic payment processing network, wherein a transaction handler
of the electronic payment processing network is configured to use
offer rules to detect relevant transactions for determination of
applicability of the offers;
identifying, by the computing apparatus, a plurality of merchant
groups, each merchant group comprising a plurality of merchants;
storing, in the computing apparatus, merchant hierarchy data,
wherein the merchant hierarchy data includes:
identifications of a plurality of transaction terminals, each
transaction terminal located at a location of an associated merchant;
identifications of the plurality of merchants; and
identifications of the plurality of merchant groups, wherein:
for each transaction terminal in the plurality of transaction
terminals, the merchant hierarchy data identifies a single merchant in
the plurality of merchants, and for each respective merchant in the
plurality of merchants, the merchant hierarchy data identifies, among
the plurality of merchant groups, one or more merchant groups in
which the respective merchant is a member, wherein the merchant
hierarchy data identifies:
at least a first merchant in the plurality of merchants as a
member of more than one merchant group in the plurality of merchant
groups, and at least a first merchant group in the plurality of
merchant groups as having more than one merchant, including the
first merchant, as members of the first merchant group;
for each offer of the offers, storing, based on offer data, the
offer in the computing apparatus, such that the offer is associated with
a single merchant group in the plurality of merchant groups;
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during processing of a payment transaction initiated on a first
transaction terminal of the first merchant in the electronic payment
processing network, wherein the first transaction terminal is located at
a location of the first merchant:
retrieving, by the computing apparatus from transaction data of
the payment transaction, terminal information that identifies the first
transaction terminal, and based on identification of the terminal
information of the first transaction terminal on which the payment
transaction was initiated, determining, by the computing apparatus
from the merchant hierarchy data, the more than one merchant
group in which the first merchant is a member;
combining, by the computing apparatus, the transaction data of
the payment transaction with a list identifying the more than one
merchant group in which the first merchant is a member to generate
enriched transaction data; and
applying, by a rule engine of the transaction handler, rules of
the offers to the enriched transaction data to identify one or more
offers applicable to the payment transaction, by querying the offers
associated with the more than one merchant group in which the first
merchant is a member, wherein a performance of the rule engine
applying the offers is improved by reducing the number of
independent offers to be evaluated by the rule engine through
grouping offer rules of individual merchants as offers from merchant
groups and by the comparing merchant groups in the enriched
transaction data and in the offers.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Name Reference Date
Elston US 2002/0143655 A1 Oct. 3, 2002
Matotek US 2007/0106564 A1 May 10, 2007
Berland US 2013/0304576 A1 Nov. 14, 2013
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The following rejections are before us for review:
1. Claims 1–21 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1–21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berland, Elston, and Matotek.

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. 14–23; Reply Br. 2).
The Appellant argues further that the claim is “significantly more” than the
alleged abstract idea (Appeal Br. 23–26; Reply Br. 2, 3).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–8; Ans. 4–12).
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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (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 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:
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(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 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.
The Specification at paragraph 3 states that the invention generally
relates to configuring the processing of computing operations in relation
with payment processing. Here, the Examiner has determined that the claim
sets forth an idea of itself and a method of organizing human activities (Final
Act. 3). We agree in substance with the Examiner. We determine that the
claim sets forth the subject matter in italics above which describes [1]
“receiving . . . offers . . . wherein each of the offers has a set of offer rules
related to payment transactions”, [2] “identifying . . . a plurality of merchant
groups”, [3] “storing . . . merchant hierarchy data”, [4] “identifications of a
plurality of transaction terminals”, [5] “for each offer of the offers, storing,
based on offer data, the offer in the computing apparatus, such that the offer
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is associated with a single merchant group”; [6] “during processing of a
payment transaction”, [7] “retrieving . . . terminal information that identifies
the first transaction terminal . . . determining, by the computing apparatus
from the merchant hierarchy data, the more than one merchant group in
which the first merchant is a member”, [8] “combining . . . the transaction
data of the payment transaction with a list identifying the more than one
merchant group in which the first merchant is a member”; and [9] “applying,
by a rule engine of the transaction handler, rules of the offers to the enriched
transaction data to identify one or more offers applicable to the payment
transaction” which relates to the concept payment processing in which offers
have been made by applying rules which is a certain method of organizing
human activity and fundamental economic practice, i.e., a judicial exception.
In Inventor Holdings, LLC v. Bed Bath & Beyond, Inc. (CAFC), 876 F.3d
1372, 1376, (Fed. Cir. 2017), the local processing of payments for remotely
purchased goods was held to be an abstract concept. In buySAFE, Inc. v.
Google Inc., 765 F.3d 1350 (Fed. Cir. 2014) at 1355, it was held that claims
drawn to creating a contractual relationship and long-familiar commercial
transactions was held to be directed to an abstract idea. 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. A method, like the
claimed method, “a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014).
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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 claim does 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.
For example, in claim 1, the additional elements beyond the abstract
idea are the recited claimed “computing apparatus,” “electronic payment
processing network,” and “transaction terminal[s].” The claimed limitations
of these elements “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
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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
pages 45–48 for example describes using conventional computer
components such as controllers, processors, and computers in a conventional
manner. Here, the claimed generic computer components which are used to
implement the claimed method are well understood, routine, or conventional
in the field. The Appellant has not demonstrated that the computers
described in the Specification at page 45 for instance are not general purpose
computer components known to perform similar functions in a well-
understood manner. Here, the claim has not been shown to be “significantly
more” than the abstract idea.
The Appellant, at pages 14–22 of the Appeal Brief, has also cited
to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract but the claims in that case were not similar in
scope to those here and were in contrast directed to a self-referential data
table.
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The Appellant, at pages 22 of the Appeal Brief, has also cited to
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016) but the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same argument for the remaining claims which
are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitations for “identifications of
a plurality of transaction terminals, each transaction terminal located at a
location of an associated merchant”, wherein the first transaction terminal
“is located at a location of the first merchant”, and based on identification of
the terminal information on which the payment transaction was “initiated”
determining the merchant group (Appeal Br. 26).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Elston (Final Act. 12, Ans. 15).
We agree with the Examiner. Elston at paragraphs 156-158 discloses
that a customer ordering in store can use a terminal or kiosk to connect to
their account and order. Thus, Elston discloses the argued “terminal”
located at the merchant location. Further, while the Appellant at page 27 of
the Appeal Brief argues that Elston is drawn to a remote ordering system the
claims are instead drawn to payment processing and do not exclude remote
ordering. Regardless, Elston has disclosed the identified claim limitation as
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identified above. For these above reasons, the rejection of claim 1 under 35
U.S.C. § 103(a) is sustained. The Appellant has provided the same
arguments for the remaining claims, and the rejection of these claims is
sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting Claims 1–21 under 35 U.S.C. § 101.
We conclude that Appellant has not shown that the Examiner erred in
rejecting Claims 1–21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Berland, Elston, and Matotek.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103 Berland, Elston,
Matotek
1-21
Overall
Outcome
1–21

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