Ex Parte BoalDownload PDFPatent Trial and Appeal BoardSep 24, 201813332317 (P.T.A.B. Sep. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/332,317 12/20/2011 124871 7590 09/26/2018 Hickman Palermo Becker Bingham/ Quotient 1 Almaden Boulevard, Floor 12 San Jose, CA 95113 FIRST NAMED INVENTOR Steven R. Boal 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 60202-0098 4372 EXAMINER SCHMUCKER, MICHAEL W ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): usdocket@h35g.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN R. BOAL Appeal2017-006596 Application 13/332,317 1 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seek our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32 and 37. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellant identifies Quotient Technology Inc., as the real party in interest. App. Br. 1. Appeal2017-006596 Application 13/332,317 THE INVENTION Appellant's claims relate "generally to coupon distribution, and, more specifically, to techniques for distributing coupons in association with electronic receipts". Spec. ,r 2. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method comprising: at a retailer terminal computer comprising a microprocessor and a memory, receiving input specifying items for purchase in transactions with customers; at least partially responsive to receiving a first input via an interface of the retailer terminal computer that is configured to accept at least a first customer identifier associated with a first transaction, storing the first input in the memory of the retailer terminal computer, using the microprocessor to access at least one record that stores customer identifiers in association with respective known customer identities, and to determine that the first customer identifier is associated with a known customer identity; using the retailer terminal computer, identifying one or more digital coupons stored in the memory in association with the first customer identifier; using the retailer terminal computer, at least partially responsive to receiving the first input and determining that the first customer identifier is associated with a known customer identity: using a credit card reader of the retailer terminal computer, causing performance of the first transaction, in which a first set of one or more items are purchased and causing redemption of the one or more digital coupons associated with the particular customer identifier; using the retailer terminal computer, causing generating an electronic receipt including, adjacent to information about a first item of a plurality of items that were 2 Appeal2017-006596 Application 13/332,317 purchased in the transaction, data describing a new coupon offer that is available for the customer, the new coupon offer having been selected based on the first item and including, at the end of the electronic receipt, data describing a second coupon offer, the second coupon offer having been selected based on payment information included within the electronic receipt and the use of which is conditioned upon a type of payment used in a subsequent transaction that is different from the type of payment displayed in the payment information, the second coupon displayed in the electronic receipt directly adjacent to the payment information; using the retailer terminal computer, causing communicating the electronic receipt for the first transaction via at least one of an email message or a web- based application, using the retailer terminal computer, at least partially responsive to not receiving, via the interface, in association with a second transaction, any input that indicates any customer identifier associated with any known customer identity: causing performance of the second transaction, in which a second set of one or more items are purchased; causing provision of a printed receipt for the second transaction. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Khan Lay et al. Schultz Song et al. Walker et al. US 2012/0084132 Al US 2009/0271265 Al US 2010/0121708 Al US 2011/0137719 Al US 6,876,978 Bl 3 Apr. 5, 2012 Oct. 29, 2009 May 8, 2010 June 9, 2011 Apr. 5, 2005 Appeal2017-006596 Application 13/332,317 The following rejections are before us for review: Claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 are rejected under 35 U.S.C. § 112(a). Final Act. 3-5. Claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 are rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 6-11. Claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lay, Shultz Walker, Song and Khan. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 101. The Supreme Court: set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, ... determine whether the claims at issue are directed to one of those patent-ineligible concepts .... If so, we then ask, "[ w ]hat else is there in the claims before us?" ... To answer that question, . . . consider 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. . . . [The Court] described step two of this analysis as a search for an "'inventive 4 Appeal2017-006596 Application 13/332,317 concept'"-i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (internal citations omitted) ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. Although the Court in Alice made a direct finding as to what the claims were directed to, we determine that this case's claims themselves and the Specification provide enough information to inform one as to what they are directed to. The steps in claim 1 result in: at least partially responsive to not receiving, via the interface, in association with a second transaction, any input that indicates any customer identifier associated with any known customer identity: causing performance of the second transaction, in which a second set of one or more items are purchased; causing provision of a printed receipt for the second transaction. The Examiner determined that the claims are similar to the concept of, "comparing new and stored information and using rules to identify options" as in the "abstract idea in SmartGene" and "are directed to Targeted Advertising which is a 'fundamental economic practice.'" Final Act. 8-9. The Specification states: In general, a coupon 1s a certificate or other 5 Appeal2017-006596 Application 13/332,317 Spec, ,r 4. document that entitles its holder to accept an offer described or referenced by the coupon. The offer, also subsequently referred to as the 'coupon offer,' may be any type of offer, but typically is an offer by the coupon provider to provide a customer with one or more goods or services at a particular price or discount, or to provide the customer with a gift in exchange for the performance of an act, such as purchasing a good or service. A coupon often takes a 'hard copy' form, such as a paper certificate, with printed images and/ or text describing terms of the offer. The process of the customer accepting a coupon offer by presenting, referencing, or otherwise providing a coupon while purchasing, contracting, or otherwise transacting with another party is 'redeeming' the coupon. For example, a customer may redeem a hard copy of a coupon by handing the copy to a clerk during a purchase at a retail store. The clerk may then provide the customer with the offered discounted price or gift. Thus, all this evidence shows that claim 1 is directed to using a customer identifier to match the customer to a coupon, redeem those coupons, and provide a receipt with new coupons if the identity of the user can be discerned. It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are directed to an abstract idea. Using a customer identifier to match the customer to a coupon, redeem those coupons, and provide a receipt with new coupons if the identity of the user can be discerned is a fundamental economic principle because it matches buyer and seller to 6 Appeal2017-006596 Application 13/332,317 products which are desired by customer. The patent-ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental economic principles. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. Thus, using a customer identifier to match the customer to a coupon, redeem those coupons, and provide a receipt with new coupons if the identity of the user can be discerned is an "abstract idea" beyond the scope of§ 101. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of an intermediated settlement in Alice and the concept of using a customer identifier to match the customer to a coupon, redeem those coupons, and provide a receipt with new coupons if the identity of the user can be discerned, at issue here. Both are squarely within the realm of "abstract ideas" as the Court has used that term. That the claims do not preempt all forms of the abstraction or may be limited to coupon distribution, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015). Claim 1, unlike the claims held non-abstract in prior cases, uses generic computer technology to perform data reception, transmission, and linkage and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (determining claims not abstract because they "focused on a specific asserted improvement in computer animation"). 7 Appeal2017-006596 Application 13/332,317 The introduction of a computer into the claims does not alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it'" is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment."' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[t]" an abstract idea "on . . . a computer," that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional featur[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (internal citations omitted). "[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." Id. at 2359. 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. All of these computer functions are well-understood, routine, conventional activities previously known to the 8 Appeal2017-006596 Application 13/332,317 industry. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1354; see also In re Katz Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be achieved by any general purpose computer without special programming."). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) (internal citation omitted). Considered as an ordered combination, the computer components of Appellant's method add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display 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) (holding that the 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) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is, therefore, ordinary and conventional. 9 Appeal2017-006596 Application 13/332,317 The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. 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. ,r,r 22-30, 80-94, 98, 200 (paragraph 92 describing, "retail server 540, coupon server 510, or any other server described herein may include or be coupled to a variety of different components for implementing the techniques described herein;" paragraph 98 disclosing, "[i]n one embodiment, coupon server 510 is a general-purpose computer that comprises one or more processors, and memory, mass storage device, or other non-transitory computer-readable storage media storing instructions which, when loaded and executed, cause the one or more processors to perform the operations that are further described herein; paragraph 200 describing, "Hardware processor 904 may be, for example, a general purpose microprocessor.") The Specification does not describe any particular improvement in the manner a computer functions, at least with respect to the claims in the instant application. Instead, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access and retrieval using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. We have reviewed all the arguments (Appeal Br. 10-28) that the Appellant has submitted concerning the patent eligibility of the claims 10 Appeal2017-006596 Application 13/332,317 before us that stand rejected under 35 U.S.C. § 101. 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. Appellant argues, "The Office Action Fails to State a Prima Facie Case of Ineligibility under the Office's Examining Guidance." (Appeal Br. 10). We disagree with the Appellant. We understand the Examiner, through citation to the July 2015 Update (Final Act. 9, Ans. 6-7), to rely on prior court decisions finding that certain computer functions are well-understood, routine, and conventional functions. These prior court decisions adequately support this finding to satisfy the requirement to set forth a prima facie case ofunpatentability under 35 U.S.C. § 101. The Examiner's analysis was thus sufficient to put Appellant on notice of the basis for the ground of rejection and to allow Appellant to recognize and seek to counter the grounds of rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In this regard too, there is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., section IV, "JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY" to 2014 INTERIM GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, courts 11 Appeal2017-006596 Application 13/332,317 do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings." (emphasis added) (footnote omitted)). We agree that evidence may be helpful in certain situations where, for instance, facts are in dispute. 2 But, it is not always necessary. Based on the above analysis and that set forth by the Examiner (Final Act. 6-10), we are unpersuaded it is necessary in this case. As to Appellant's argument that: The Federal Circuit panel stated unequivocally that the abstract idea there was limited to the circumstances of the case, 'in which every step is a familiar part of the conscious process that doctors can and do perform in their heads.' Slip op. at 9. The court further clarified that 'Whatever the boundaries of the 'abstract ideas' category, the claim at issue here involves a mental process excluded from section 101.' Id. Thus SmartGene is limited to cases where the claimed process consists of mental steps. Appeal Br. 14. We disagree with Appellant. Whether a claim is found patent ineligible based on one of either mental activity or abstraction is not dispositive because in both cases the ultimate result is patent ineligibility. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. 2 See, e.g., MPEP § 2106. 07 ( a )(III) (2018) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Thus, the court does not require 'evidence' that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues." (citations omitted)). 12 Appeal2017-006596 Application 13/332,317 Cir. 2011). In fact, the Federal Circuit confirmed that Appellant's argument is a distinction without a difference stating that it "recognized that 'mental processes' and 'abstract ideas' ( whatever may be the precise definition and relation of those concepts) are excluded from section 101." SmartGene, Inc., 555 Fed. Appx. at 955. Appellant argues, "if the claims recite limitations that are not generic computer functions and go beyond the Alleged Abstract Idea, then the claims cannot be rejected as lacking 'significantly more' than the abstract idea." Appeal Br. 21. As found supra, we fail to find anything in the claims before us which shows that the claims recite limitations that are not generic computer functions. A general purpose computer programmed to perform conventional functions does not amount to an inventive concept such that the claims are significantly more than the abstract idea. See EON Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015). Appellant's Specification does not support a computer system which is employed to effect the claimed ratings, as anything more than a generic computer. See, e.g., Spec. ,r,r 80-94 (i-f 84 describing generically "Terminal 542 is a computing device operated by a retailer for conducting in-store (i.e. 'point of sale' or 'brick and mortar') transactions.") Claim 1 recites at best and only generically, a retailer computer with a microprocessor and a memory, and a card reader. The recitation of a practical application for an abstract idea is not sufficient to transform the abstract idea into a patent- eligible invention. See Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S. 13 Appeal2017-006596 Application 13/332,317 584 (1978)] rejected the notion that the recitation of a practical application for the calculation could alone make the invention patentable."). A claim for a new abstract idea is still an abstract idea. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151. Also, "[a]n abstract idea can generally be described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016). On pages 22 through 26, Appellant sets forth a list of limitations from independent claims 1, 7, and 21 alleging that the "recitations are not generic". Appeal Br. 22, 24, 25. Appellant maintains that, "[t]hese limitations per se are recited specifically rather than generically, and therefore qualify as 'significantly more'". Id. at 26. We disagree with Appellant because Appellant's recitations merely comingle abstraction idea steps with generic computer processing which cannot effect patent eligibility from an otherwise mental process. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea 'while adding the words "apply it"' is not enough for patent eligibility." Alice, 134 S. Ct. 2358 ( citation omitted). Nor do we agree with Appellant that the claims before us are similar to those in Enfish v Microsoft and Bascom Global Internet to warrant a finding of patent eligibility. Appeal Br. 26, 27. The court in Enfish 3 put the question as being "whether the focus of the claims is on [a] specific asserted 3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). 14 Appeal2017-006596 Application 13/332,317 improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-1336. The Enfzsh court found that the "plain focus of the claims" was on "an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity." Id. at 1336. Here we find and the Specification, e.g., ,r 2, supports that the plain focus of the claims is to coupon distribution. In Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), an intermediary is inserted between two otherwise conventional computer nodes to move the location where a process is otherwise ordinarily executed. Thus, in Bascom it was filtering between computer nodes which was the plain focus of the claims and the improvement was rooted in the ways of internet technology. No such improvement in technology is apparent from the Appellant's claims or Specification. Appellant argues, "Limitations that are so specific as to distinguish all art of record cannot properly be deemed as so generic that they are a "generic computer function". (Appeal Br. 26). We disagree with Appellant. A claim for a new abstract idea is still an abstract idea. See Synopsys, 839 F.3d at 1151. Also, "[a]n abstract idea can generally be described at different levels of abstraction." Apple, 842 F.3d at 1240-41. A general purpose computer programmed to perform conventional functions does not amount to an inventive concept such that the claims are significantly more than the abstract idea. See EON Corp., 785 15 Appeal2017-006596 Application 13/332,317 F.3d at 623. Appellant's Specification does not support a computer system which is employed to effect the claimed offers, as anything more than a generic computer. (See, e.g., Spec. ,r 199 describing the system "may include one or more general purpose hardware processors programmed to perform the techniques pursuant to program instructions in firmware, memory, other storage, or a combination.) For the reasons identified above, we determine there are no deficiencies in the Examiner's prima facie case of patent ineligibility of the rejected claims based on the record before us. 35 U.S.C. § 112 REJECTION Examiner rejected claims 1-3, 7, 8,10,11,13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 112 as failing the written description requirement in "that the appellant does not have support specification for excluding a payment type which is a negative limitation and MPEP § 2173.05(i) provides direction that the negative limitation must be either explicit or so obvious it is inherent." Final Act. 3. Appellant however argues, "claim 1 recites 'the use of [the second coupon offer] is conditioned upon a type of payment used in a subsequent transaction that is different from the type of payment displayed in the payment information."' Answer 8. We agree with Appellant. Claim 1 requires "electronic receipt and the use of which is conditioned upon a type of payment used in a subsequent transaction that is different from the type of payment displayed in the 16 Appeal2017-006596 Application 13/332,317 payment information," which is different from what the Examiner recites as the problematic language, i.e., "excluding a payment type", and thus we will not sustain this rejection. Therefore, we will not sustain the rejection under 35 U.S.C. § 112(a). 35 U.S.C. § 103(a) REJECTION Each of independent claims 1, 7 and 21 recite in one form or another: the new coupon offer having been selected based on the first item and including, at the end of the electronic receipt, data describing a second coupon offer, the second coupon offer having been selected based on payment information included within the electronic receipt and the use of which is conditioned upon a type of payment used in a subsequent transaction that is different from the type of payment displayed in the payment information, the second coupon displayed in the electronic receipt directly adjacent to the payment information; Claim 1, Claims App 'x. The Examiner found that "Song teaches generating a coupon for a competitive product (a different payment type is a competitive product) in at paragraph O 101." Final Act. 16. Appellant argues: The Office Action alleges that Song "teaches generating a coupon for a competitive product (a different payment type is a competitive product)". Office Action at 16. However, the Office Action improperly assumes that a payment type is a product. The Examiner has provided no support for this contention or argument indicating that a purchased product is equivalent to a payment type. In 17 Appeal2017-006596 Application 13/332,317 Song, when "a purchase of a specific product" is detected, an advertisement for another competitive product is transmitted. Song at [O 101]. Therefore, the ability to purchase a product is an essential characteristic of the products in Song. However, a payment type, unlike a product, is not purchased. For example, people do not "purchase" cash or credit cards. Rather, payment types are services provided by a retailer, a credit card company, a bank, or other financial entity. Because payment types are not purchased like the products in Song, they are not interchangeable with the products of Song. Appeal Br. 30. We agree with Appellant. Our review of Song at paragraph 101 reveals that it is "the purchase of a specific product ( a famous brand of a product) may be defined as a composite event and an advertisement for another competitive product or a discount coupon may be transmitted when such an event is detected." Thus, Song discloses basing the second offer on the brand of a product, and not a payment type that "is different from the type of payment displayed in the payment information." It is not apparent and the Examiner has not explained how this is an obvious difference. Therefore, we will not sustain the rejection of independent claims 1, 7 and 21 under 35 U.S.C. § 103 or the claims which depend therefrom. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 101. 18 Appeal2017-006596 Application 13/332,317 We conclude the Examiner did err in rejecting claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 112 first paragraph. We conclude the Examiner did err in rejecting claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 103. DECISION The decision of the Examiner to reject claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32 and 37 is affirmed. 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)(l )(iv). AFFIRMED. 19 Copy with citationCopy as parenthetical citation