Comenity LLC

Patent Trials and Appeals Board

Nov 2, 2021

2021001830 (P.T.A.B. Nov. 2, 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.
15/043,055 02/12/2016 Benjamin M. MICHALEK ADS-130 9660
45588 7590 11/02/2021
ALLIANCE DATA C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
SHELDEN, BION A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/02/2021 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN M. MICHALEK
____________

Appeal 2021-001830
Application 15/043,0551
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Non-Final Rejection2 of claims 1, 2, 4–15, and 21.A We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Comenity LLC as the real party in
interest.
2 All references to the Non-Final Office Action refer to the Non-Final Office
Action mailed on Feb. 2, 2021.
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SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states the invention relates to “[a] method and system for
using micropatterns to motivate a customer.” Spec., Abstract. .
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for using micropatterns to motivate shopping, the method
comprising:

determining that a real-time weather system event is occurring at a
brick and mortar retail store;
receiving a location broadcast from an application operating on
a customer's mobile device,
the application associated with the brick and mortar retail store,
the location broadcast providing a location of a customer;
determining, from the location broadcast received from the
application, that the customer is within a driving range of said brick
and mortar retail store;
accessing a weather outlook for the weather system event
occurring at the brick and mortar retail store;
determining a time when there will be a forecast break in the
weather system event occurring at the brick and mortar retail store;
providing a message to the customer to incentivize the customer
to shop at the brick and mortar retail store, the message comprising:
a time window within the forecast break in the weather system event
occurring at the brick and mortar retail store;
a weather forecast describing the forecast break in the weather
system event occurring at the brick and mortar retail store; and
an incentive for the customer to go to the brick and mortar retail
store,
a timing of the incentive is based on the forecast break in the
weather system event occurring at the brick and mortar retail
store,
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the weather system event or the weather forecast is not used as
a basis for selecting a product or a value of the incentive.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
Feldman et al. US 2015/0112778 Al Apr. 23, 2015
Narayanaswami et al. US 2015/0100398 Al Apr. 9, 2015
Zilkha US 2014/0180817 Al June 26, 2014
Iriyama US 2014/0172574 Al June 19, 2014
Gevelber US 8,364,522 Bl Jan. 29, 2013
Bilange US 2013/0346201 Al Dec. 26, 2013
Christensen US 2012/0203572 Al Aug. 9, 2012

Claims 1, 2, 4–15, and 21 are rejected under 35 U.S.C. 101 because
the claimed invention is directed to an abstract idea without significantly
more.
Claims 1, 4, and 7–14 are rejected under 35 U.S.C. 103 as being
unpatentable over lriyama in view of Christensen, Bilange, and
Narayanaswami et al.
Claims 2 and 21 are rejected under 35 U.S.C. 103 as being
unpatentable over lriyama in view of Christensen, Bilange, and
Narayanaswami et al., and further in view Gevelber.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over
lriyama in view of Christensen, Bilange, and Narayanaswami et al., and
further in view of Feldman et al.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over
lriyama in view of Christensen, Bilange, and Narayanaswami et al., and
further in view Zilkha.
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Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over
lriyama in view of Christensen, Bilange, and Narayanaswami et al., and
further in view of Feldman et al. and Zilkha.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–4 in the
Non–Final Office Action and on pages 5–9 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.
1. Iriyama discloses:
As illustrated in FIG. 7, first of all, the information
transmission device 10 acquires the positional
information from the terminal device 1 of the user,
and specifies that the user is in the restaurant A.
Further, the information transmission device 10
acquires “rain” and “stop after 15 minutes” as the
weather of the current position of the user. In this
case, the information transmission device 10
specifies “coffee” as a menu matching the user’s
situations “rain” and “15 minutes,” and delivers a
coupon of “coffee of restaurant A” to the
terminal device 1.
Iriyama ¶ 82.

2. Iriyama discloses:
Thereafter, when the issued coupon is actually used
before or on an expiration date (Yes in S109), the
coupon issuing unit 21 bills the store in which the
coupon has been used (S110). However, when the
issued coupon has not been used before or on the
expiration date (No in S109), the process
returns to S101, and the subsequent process is
repeated.
Id. at ¶ 68.
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3. Iriyama discloses:
Here, the stored “user name” is information
identifying the user such as a name or an ID of the
registered user, and is set and registered by the user
such as “'U00l.” The “preference information” is
preference information registered by the user and
includes information such as “dislike alcohol” or
“diet.” The “positional log” is a history of the
positional information acquired from the terminal
device 1 by a positional information acquiring unit
17 which will be described later, and information
such as “... Chiyoda-ku, Tokyo” is stored in time
series as the positional log. The “behavior
information” is information representing the user’s
behavior specified by a situation specifying unit 19
which will be described later, and include
information such as “moving by electric train until
just before,” “moving by walk,” “moving by car,”
“stop,” and “stay.” The “environmental
information” is information related to an
environment at the current position of the user
acquired by an environment acquiring unit 18 which
will be described later, and includes information
such as “rain, stop after 15 minutes according to
forecast,” “shine,” “lots of ultraviolet rays,” and
“traffic jam.”
Id. at ¶ 36.
4. Narayanswami discloses:
In step 730 the server 150 must verify that it has all
of the information needed to compute the dynamic
value of the coupon 120. For example, if the
coupon value is time dependent, the server 150
needs to know the current time. If the coupon value
is dependent upon consumer metrics, the server 150
must gather the consumer information that it needs.
Once all of the information is available, the server
150 computes the current value of the coupon 120
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based on the metrics that it has gathered. In step 750
the server 150 transmits the current value of the
coupon 120.
Narayanswami ¶ 45.
5. Narayanswami discloses:
the server 150 can also include information about
the coupon 120 or its price determination. For
example, the server 150 may wish to communicate
that the coupon value was increased because the
consumer is buying at off-peak hours.
Id. at ¶46.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1, 2, 4–15, 21 under 35 U.S.C.
§ 101.
The Appellant argues claims 1, 2, 4–15, 21 as a group. (Appeal
Br. 9). We select claim 1 as the representative claim for this group, and so
the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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 phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. 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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
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that framework, we first determine what concept the claim is “directed to.”
See id. 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(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
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
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to limit the use of the formula to a particular technological environment.”
Id. (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.”).
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 (quotation marks 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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51;4 see also October
2019 Update at 1.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
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Under the 2019 Revised 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) (“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”).5
Guidance, 84 Fed. Reg. at 52–55.
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
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.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter

See Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior
to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”). Accordingly, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance Section III(A)(2), 84 Fed. Reg. at 54–
55.
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to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:

Presently, when the weather is poor, there can be a significant
reduction in customers shopping. Poor weather or road
conditions will cause a consumer to eat lunch at work, stay in the
home instead of venturing out, and the like. For example, during
the first quarter of the year, e.g., during the winter in the North
East of the United States, it is quite common for brick and mortar
stores to have significantly lower shopping traffic.

Spec. ¶ 2.

In one embodiment, the user’s behavior being motivated
is a customer's shopping behavior. However, the user's
behavior being motivated may also include, sharing on
social media, opening of a credit account, or the like.
Moreover, the motivation may be provided to customers
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that use a retail store's application or have opted in to the
store’s offers.
Spec. ¶ 14.

The preamble of claim 1 states the claim is “[a] method for using
micropatterns to motivate shopping.”
Claim 1 recites in pertinent part:
determining that a real-time weather system event is
occurring at a brick and mortar retail store;
receiving a location broadcast…, …the location broadcast
providing a location of a customer;
determining, from the location broadcast …, that the
customer is within a driving range of said brick and mortar
retail store; accessing a weather outlook for the weather
system event occurring at the brick and mortar retail store;
determining a time when there will be a forecast break in
the weather system event occurring at the brick and mortar
retail store; providing a message to the customer to
incentivize the customer to shop at the brick and mortar
retail store, the message comprising: a time window within
the forecast break in the weather system event occurring
at the brick and mortar retail store; a weather forecast
describing the forecast break in the weather system event
occurring at the brick and mortar retail store; and an
incentive for the customer to go to the brick and mortar
retail store, a timing of the incentive is based on the
forecast break in the weather system event occurring at the
brick and mortar retail store, the weather system event or
the weather forecast is not used as a basis for selecting a
product or a value of the incentive.

The Examiner found claim 1’s
limitations set forth the concept of analyzing location and
weather information and providing an incentive to a user.
This concept is unambiguously marketing and advertising
behaviors. As such, this concept falls within the methods
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of organizing human activity grouping identified by the
2019 PEG. Therefore the claims are determined to recite
an abstract idea.

Non-Final Act. 3.
Accordingly, all this intrinsic evidence shows that claim 1 recites a
way of timing an incentive to cause a customer to go to a brick and mortar
retail store based on a forecast break in the weather. This is consistent with
the Examiner’s determination. Incentivizing customers to purchase based on
customized weather conditions is similar to the concepts of customizing
information based on known user information in Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir. 2015) and
customizing a user interface based on user selections in Affinity Labs of
Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016).
Accordingly, we conclude the claim recites a commercial interaction, e.g.,
targeted marketing, which is one of the certain methods of organizing human
activities identified in the 2019 Revised Guidance 84 Fed. Reg. at 52, and
thus an abstract idea.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a customer's mobile device.” These components are
described in the Specification at a high level of generality. See Spec. ¶¶ 21,
22, Fig. 1. We fail to see how the generic recitations of these most basic
computer components and/or of a system so integrates the judicial exception
as to “impose[] a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the judicial
exception.” Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of a certain
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method of organizing human activity.
That the claims do not preempt all forms of the abstraction or may be
limited to incentivizing brick and mortar store sales, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step the Examiner found, “when considered
individually and as an ordered combination, the additional elements of the
independent claims do not amount to significantly more than the judicial
exception.” Non–Final Act. 4. We agree with the Examiner. “[T]he
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea . . . on a generic computer.”
Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. In short, each step does no more
than require a generic computer to perform generic computer functions. The
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claims do not, for example, purport to improve the functioning of the
computer itself. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios. See, e.g., Spec. ¶¶ 21, 22,
Fig. 1. Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(determining/accessing/determining/providing) and storing is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that
sequence of data retrieval, analysis, modification, generation, display, and
transmission was abstract); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
As to the structural claims (8–20), they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
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components configured to implement the same idea. This Court
has long “warn[ed] . . . against” interpreting § 101 “in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 573 U.S. at 226 (quoting Mayo, 566 U.S. at 72). As a corollary, the
claims are not directed to any particular machine.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101 Appeal Br. 9–13. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Arguing that the claim elements define a practical application of a
specific solution “for attracting customers to a brick and mortar retail store
when the store is experiencing a shopping lull due to a weather system
event,” Appellant asserts,
the Claim features utilize location information broadcast
from a customer’s mobile device to determine the pool of
customers within a driving range of the store. Further, the
solution does not encompass all people within a certain
distance (or an abstract group), but limited to customers
that have applications associated with the brick and mortar
retail store operating on the mobile device.
Appeal Br. 11–12.
We disagree with Appellants. The problem with the argument as to
practical application is that it presents no evidence that any technological
implementation details are recited. All steps are generic, receiving,
processing, and analyzing data. The claim simply recites functional results
to be achieved by any means. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
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(Fed. Cir. 2014); see also, Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369–70 (Fed. Cir. 2015) (Tailoring information
presented to a user based on particular information determined to be directed
to an abstract idea.)
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016). Simply automating steps so no humans perform them is
insufficient to confer eligibility. “When claims like the Asserted Claims are
directed to an abstract idea and merely require generic computer
implementation, they do not move into section 101 eligibility territory.”
Smart Sys. Innovations, 873 F.3d at 1374 (citations and internal quotations
omitted).
That the solution applies only “to customers that have applications
associated with the brick and mortar retail store operating on the mobile
device,” has no bearing on what the mobile device does within the context of
the claim. Although applications tied to mobile devices are by definition in
some sense technological, their use has become so notoriously settled that
merely invoking them is no more than abstract conceptual advice to use well
known technology for its intended purpose. See In re TLI Communications
LLC Patent Litigation, 823 F.3d 607, 612–613 (Fed. Cir. 2016). (Using a
generic telephone for its intended purpose was a well–established “basic
concept” sufficient to fall under Alice step 1.)
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Appellants further argue,
By providing an incentive that is not related to the weather
system event or the weather forecast, the practical application
defines a specific solution that is designed to bring customers to
the store without limiting the offers to weather related reasons.
Thus, the specific goal is to bring in customer’s not to sell
weather related items.
Appeal Br. 12.
Here, the alleged improvement lies in the abstract idea itself, not to
any technological improvement. See BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1287–88 (Fed. Cir. 2018). Even if the advance over the prior
art is to “to bring customers to the store without limiting the offers to
weather related reasons,” that purported advance is an abstract idea itself,
i.e., performing a market analysis, a fundamental economic process or
practice similar to hedging against financial risk in Bilksi, 561 U.S. at 609,
and collecting and analyzing investment data in SAP America, 898 F.3d at
1167–68, using conventional technology. The alleged improvement lies in
the abstract idea itself, not to any technological improvement. See BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
Appellants asserts:
Moreover, by including (within the message) a time window
within the forecast break in the weather system event, a
description of the forecast break in the weather system event
occurring at the brick and mortar retail store, and the incentive
for the customer to go to the brick and mortar retail store; The
customer becomes an informed party capable of performing their
own informed risk versus reward (e.g., the incentive)
determination.
Appeal Br. 13.
We are unpersuaded by Appellant’s arguments because Appellant is
giving the attributes of function to content in message. We construe the
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claim to require a message, but the content of which is not entitled weight
aside from the act of messaging and whatever is not non–function written
descriptive content in that message.
For the reasons identified above, we will sustain the Examiner’s § 101
rejection of claims 1–2, 4–15, 21.

35 U.S.C. § 103 REJECTION
The Appellant argues claims 1, 4, 7–14 as a group. Appeal Br. 15.
We select claim 1 as the representative claim for this group, and so the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)
(2019).
We begin by construing the scope of the claims. Claim 1 recites
providing a message containing the following information:
a time window within the forecast break in the
weather system event occurring at the brick and
mortar retail store; a weather forecast describing
the forecast break in the weather system event
occurring at the brick and mortar retail store; and
an incentive for the customer to go to the brick and
mortar retail store, a timing of the incentive is based
on the forecast break in the weather system event
occurring at the brick and mortar retail store, the
weather system event or the weather forecast is not
used as a basis for selecting a product or a value of
the incentive.

We construe the descriptive recitations in italics above to be merely
data characterization which cannot in of and itself distinguish the functions
described by the information from the prior art because it is not function, it
only is data characteristic. For example, we give credit to the items
underlined above as having significance by virtue of the face value of what
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is printed, but not beyond that. For example, the “incentive” is given weight
to the extent that its written material shows a value, such as found by the
“one” in a ONE DOLLAR bill, or a $ 1 OFF coupon. But, as to the
accompanying description of, “a timing of the incentive is based on the
forecast break in the weather system event occurring at the brick and mortar
retail store,” this is non-functional descriptive material and cannot be given
weight because that description is discernable only in the human mind. In re
Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994).
Appellant argues,
Appellant submits without hindsight of Appellant’s
Claimed feature ‘of the weather system event or the
weather forecast is not used as a basis for selecting
a product or a value of the incentive’ one of skill in
the art reading Iriyama would not have even thought
of modifying Iriyama to include the features, ‘the
weather system event or the weather forecast is not
used as a basis for selecting a product or a value of
the incentive.’
(Appeal Br. 19)
We disagree with Appellant. Iriyama explicitly discloses using an
environment acquiring unit 18 to determine the weather forecast (rain) and
then using a coupon issuing unit 21 to issue a coupon on a food item (coffee)
based upon rain being the current weather of the potential customer.
(FF. 1–3). Although according to Iriyama, weather is only one factor in the
decision process (FF. 3), it nevertheless is a required factor, and hence meets
the claim requirements.
Appellant argues,
However, in making this statement, the Examiner
has apparently overlooked the teachings of Iriyama
including the flowchart of Figure 5 from S 101 up
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to S 107. Here, the flowchart of Iriyama clearly
recites a decision block “is there a matching menu?”
If there is no matching menu, then the flowchart
stops any further actions (such as issuing a coupon)
and returns to the start.
(Appeal Br. 17).
First, we disagree with the Examiner that the standard to be applied is
whether POSITA “could have trivially substituted Narayanaswami’s
coupon for Iriyama’s coupon.” (Non final Act. 17). Notwithstanding, we
nevertheless find that one of ordinary skill in the art would have known to
use the coupon price variable feature of Narayanaswami (coupon value is
increased because the consumer is buying at off-peak hours (FF. 5)) as part
of Iriyama’s coupon issuing system. This is because both references
disclose issuing coupons based on contingent circumstances and/or user
behavior. For example, both Iriyama and Narayanaswami use customer
metrics in determining whether to issue coupons specifying an item of
concern, dislike alcohol (FF. 3)/like coffee (FF. 1), and/or if a perspective
coupon is expired or used before issuing it. (FF. 2, 3, 4). Thus, there can be
no “hindsight” reconstruction here (Appeal Br. 19) because we take our
knowledge from the prior art and “not from knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin,
443 F.2d 1392, 1395 (C.C.P.A. 1971).
That in one mode of operation Iriyama discloses that “the flowchart
stops” (Appeal Br. 17), does not make the total disclosure insufficient. This
is because in other modes disclosed by Iriyama, (FF. 1, 3), such as when a
menu item, e.g., coffee does fit into the window of rain, Iriyama meets the
claim requirement. We choose to use this mode over the one to which
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Appellant points.6 That the time window in Iriyama is tied to the continued
bad weather, “rain,” which equates to the “staying time of the user” in the
restaurant, and not to a break in the weather, is not incongruent with the
Examiner’s finding of obviousness. This is because the motivation is the
same in each case. That is, using a weather condition, either to keep the
customer in the establishment and spend, or to get the customer there and
spend.
We also affirm the rejections of dependent claims 2, 5, 6, 15, and 21
since Appellant has not challenged such with any reasonable specificity (see
In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
Therefore, we will sustain the rejection of claims 1, 2, 4–15, and 21
under 35 U.S.C. § 103(a).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims under
35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims under
35 U.S.C. § 103.

6 Arguments which Appellant could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2013).

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4−15,
21
101 Eligibility 1, 2,
4−15, 21

1, 4, 7−14 103 Iriyama,
Christensen,
Bilange,
Narayanaswami
1, 4,
7−14

2,12 103 further in view
Gevelber
2,12
5 103 further in view of
Feldman
5
6 103 further in view
Zilkha.
6
15 103 further in view of
Feldman et al. and
Zilkha.
15
Overall
Outcome
1, 2,
4−15, 21

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