James Roskind

Patent Trials and Appeals Board

Feb 27, 2020

14538512 - (D) (P.T.A.B. Feb. 27, 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.
14/538,512 11/11/2014 James Roskind 00008-0262-01000 1072
114629 7590 02/27/2020
Bookoff McAndrews
2020 K Street, NW
Suite 400
Washington, DC 20006
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
Kross@bomcip.com
eofficeaction@appcoll.com
usptomail@bomcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES ROSKIND
___________

Appeal 2018-004679
Application 14/538,512
Technology Center 3600
____________

Before JASON V. MORGAN, ERIC B. CHEN, and HUNG H. BUI,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 35–41, 43–51, 53, and 54. Claims 1–
34, 42, and 52 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to constructing and using a smart wallet,
which is a repository of payment instruments with automatic selection, when
making a purchase in an online environment. (Abstract.)
Claim 35, reproduced below, is illustrative of the claimed subject
matter, with bracketing added and with disputed limitations in italics:
35. A method for automatically selecting a payment
instrument in an online environment including a smart wallet
application storing information about one or more payment
instruments held by a user, the stored information comprising a
number of and types of available payment instruments of the
user, discount and incentive information from manufacturers,
discount and incentive information from financial instrument
companies and a predetermined priority with which to rank the
user’s payment instruments, the method comprising the
following operations performed by one or more processors:
[i] receiving, from a web browser of the user, data
representing an indication from the user to make a purchase
transaction for a plurality of products or services from at least
one merchant;

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 Oath Inc.
(Appeal Br. 3.)
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[ii] receiving, by the smart wallet application, purchase
transaction information from a merchant application identifying
the purchase transaction and a listing of payment instruments
accepted by the at least one merchant;
[iii] automatically processing, by the smart wallet
application, the purchase transaction information to:
determine which of the user’s stored payment
instruments are accepted by the at least one merchant;
determine, for the determined user’s stored
payment instruments that are accepted by the at least one
merchant, a ranking based on the predetermined priority;
[iv] automatically select, based on the ranking, the
highest rank payment instrument from the stored payment
instruments;
[v] determine, based on information received from
financial instrument companies, that the highest rank payment
instrument is the only instrument to provide a discount for the
purchase of the plurality of products or services;
[vi] provide, to the web browser to the user, a
recommendation to bundle the purchase of the plurality of
products or services with the highest rank payment instrument;
and
[vii] charge, responsive to an approval from the web
browser of the user, the bundled purchase to the highest rank
payment instrument.

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REFERENCES
Name Reference Date
Mahaffey US 2003/0195773 Al Oct. 16, 2003
Krajec US 2003/0200157 A1 Oct. 23, 2003
Iannacci US 2002/0062249 A1 May 23, 2002
Yun et al. US 2002/0069122 A1 June 6, 2002
Banerjee et al. US 2002/0188503 A1 Dec. 12, 2002
Silva et al. US 2001/0034658 A1 Oct. 25, 2001

REJECTIONS
Claims 35–41, 43–51, 53, and 54 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.
Claims 35–41, 43–51, 53, and 54 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
Claims 35–41, 43–51, 53, and 54 stand rejected under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor or a joint inventor regards as the
invention.
Claims 35, 36, 39–41, 43–46, 49–51, 53, and 54 stand rejected under
35 U.S.C. § 103 as being unpatentable over Iannacci, Krajec, Silva, and
Mahaffey.
Claims 37, 38, 47, and 48 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Iannacci, Krajec, Silva, Mahaffey, and Yun.
Claims 35, 36, 39–41, 43–46, 49–51, 53, and 54 stand rejected under
35 U.S.C. § 103 as being unpatentable over Iannacci, Banerjee, Silva, and
Mahaffey.
Claims 37, 38, 47, and 48 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Iannacci, Banerjee, Silva, Mahaffey, and Yun.
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OPINION
§ 101 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 11–14; see
also Reply Br. 9–13) that independent claims 35 and 45 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner determined that
[t]hese [recited] steps describe the concept of making [a]
selection based on stored information[,] provid[ing] [a]
recommendation[,] and charg[ing a] bundled purchase based on
[a] ranking, which corresponds to concepts identified as
abstract ideas by the courts, such as collecting information,
analyzing it and displaying certain results of the collection and
analysis (Electric Power Group)

(Final Act. 3; see also Ans. 4.) Moreover, the Examiner determined that
“[t]he use of generic computer components (web browser and applications)
to receive, notify, process, determine, select and charge based on human
instructions does not impose any meaningful limit on the computer
implementation of the abstract idea.” (Final Act. 4; see also Ans. 4.) We
agree with the Examiner’s determinations and ultimate conclusion that the
claims are directed to patent-ineligible subject matter.
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. 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
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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, 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 176; 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
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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. at 191 (citing Benson and Flook); see also, 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 (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. (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.
Last year the PTO published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2019)).
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:
(3) adds a specific limitation beyond the judicial exception that
are 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 84 Fed. Reg. 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 35 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Likewise, claim 45 is an apparatus claim, which falls
within the “machine” category of 35 U.S.C. § 101. Therefore, claims 35 and
45 fall within one of the four statutory categories of patentable subject
matter identified by 35 U.S.C. §101.
Although claims 35 and 45 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 573 U.S. at 216. Thus, we must
determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52–
55. If a claim recites a judicial exception without integrating the judicial
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exception into a practical application, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 35 recites the following limitations: “[i] receiving
. . . data representing an indication from the user to make a purchase
transaction for a plurality of products or services from at least one
merchant,” “[ii] receiving . . . purchase transaction information from a
merchant . . . identifying the purchase transaction and a listing of payment
instruments accepted by the at least one merchant,”
[iii] processing . . . the purchase transaction information to:
determine which of the user’s stored payment instruments are
accepted by the at least one merchant; determine, for the
determined user’s stored payment instruments that are accepted
by the at least one merchant, a ranking based on the
predetermined priority

“[iv] select, based on the ranking, the highest rank payment instrument from
the stored payment instruments,” “[v] determine, based on information
received from financial instrument companies, that the highest rank payment
instrument is the only instrument to provide a discount for the purchase of
the plurality of products or services,” and “[vi] provide . . . a
recommendation to bundle the purchase of the plurality of products or
services with the highest rank payment instrument.”
Such limitations of claim 35 recite a patent-ineligible abstract idea of
mental processes, such as collecting and analyzing information. See e.g.,
Elec. Power Grp., 830 F.3d at 1354 (“[t]he advance they purport to make is
a process of gathering and analyzing information of a specified content, then
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displaying the results, and not any particular assertedly inventive technology
for performing those functions.”).
Alternatively, the limitations of claim 35 recite a patent-ineligible
abstract idea of mental processes because these limitations can be performed
either by human thought alone, by a human using pen and paper, or by
humans without a computer. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“[U]npatentable mental
processes” include “steps [that] can be performed in the human mind, or by
a human using a pen and paper.”); see also Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (“The series
of steps covered by the asserted claims . . . could all be performed by
humans without a computer.”). In particular, a consumer could have three
separate credit card accounts: (i) a gasoline credit card that offers rewards
for only gasoline purchases; (ii) a grocery credit card that offers rewards for
only grocery purchases; and (iii) a specialty retail credit card that offers
rewards for purchase from only a specific retailer. Depending upon the
purchase (e.g., gas, groceries, or items from the specific retailer), the
consumer would perform the mental steps of ranking the different credit
cards based on rewards. For example, for a grocery purchase, the consumer
would mentally select the grocery credit card, after determining that such
credit card is accepted by the grocer. In another example, if the consumer
were purchasing gas and other items from the specific retailer, the consumer
may choose to use the specialty retail credit card for both purchases.
Accordingly, claim 35 recites a judicial exception. Claim 45, a
corresponding apparatus claim, recites limitations similar to those discussed
with respect to claim 35. Thus, claim 45 also recites a judicial exception.
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Step 2A, Prong Two
Because claims 35 and 45 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
The preamble of claim 35 recites “a payment instrument in an online
environment including a smart wallet application storing information”
(emphases added). Claim 35 further recites the following limitations: “[i]
receiving, from a web browser of the user, data representing an indication
from the user to make a purchase transaction,” “[ii] receiving, by the smart
wallet application, purchase transaction information from a merchant
application,” “[iii] automatically processing, by the smart wallet application,
the purchase transaction information,” and “[vi] provide, to the web browser
to the user, a recommendation.”
The recited additional elements, including “online environment,”
“smart wallet application,” “web browser,” and “merchant application” are
merely a tools for performing the recited abstract idea. See Affinity Labs v.
DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“[T]he claims are directed
not to an improvement in cellular telephones but simply to the use of cellular
telephones as tools in the aid of a process focused on an abstract idea.”).
Moreover, claim 35 further recites “[vii] charge, responsive to an
approval from the web browser of the user, the bundled purchase to the
highest rank payment instrument.” Such limitation merely adds insignificant
extra-solution activity to the judicial exception. See Flook, 437 U.S. at 590
(“The notion that post-solution activity, no matter how conventional or
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obvious in itself, can transform an unpatentable principle into a patentable
process exalts form over substance”).
Accordingly, claim 35 does not recite additional elements that
integrate the judicial exception into a practical application. Claim 45 recites
similar additional limitations.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 35 and 45 are directed to a judicial exception, we next
determine, according to Alice, whether these claims recite an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than a judicial exception.
Claim 35 is a method claim, which includes the additional elements of
an “online environment,” a “smart wallet application,” a “web browser,” and
a “merchant application.” Claim 45, an apparatus claim, recites similar
limitations.
With respect to the claimed additional elements, Appellant’s
Specification discloses the following:
Online purchases have become a viable and widely-used
environment for consumers to shop. Typically, a consumer goes
to the World Wide Web (Web) site of a particular merchant to
browse items available for purchasing or to find a particular item.
Once an item is found, the consumer then proceeds to purchase
that item by entering payment and shipping information to the
merchant’s Web site. The merchant’s Web site manages the
transaction and, upon confirmation, informs the consumer that
the item is on its way.

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(Spec. 1:15–22 (emphasis added).)
Fig. 1 is a high level, simplified schematic diagram of the
main components and their interactions according to one
embodiment of the invention. A user 100 decides to purchase a
product or service online from a merchant’s application display
110 including products and services. For example, the user 100
could be browsing the merchant’s Web page and clicks the
appropriate button, link, etc. to indicate a purchase is desired.
The merchant 110 receives the message from the user 100 of the
desire to purchase the item. Accordingly, the merchant proceeds
to obtain funds for the item. The merchant then messages the
user’s pre-established account (smart wallet) application 120
giving information about the item purchased, as well as
indicating to the smart wallet that the user requests purchasing
the item.

(Spec. 11:8–18 (emphasis added).)
It should be appreciated that the term smart wallet is used
in the discussion to mean any of, but not limited to, smart wallet
application, smart payment instrument selection, smart financial
instrument selection, a repository of payment instruments with
automatic selection, and the like. Likewise, the term merchant is
used interchangeably herein with merchant application, in the
appropriate context.

(Spec. 11:1–6.)
The generalized functional terms by which the additional elements are
described reasonably indicate that Appellant’s Specification discloses: (i) a
conventional online environment (e.g., online purchases made using a
merchant Website); (ii) a conventional “smart wallet” application,2 which

2 One relevant technical definition of “application” is “[a] program designed
to assist in the performance of a specific task, such as word processing,
accounting, or inventory management.” MICROSOFT® COMPUTER
DICTIONARY 31 (5th ed. 2002).
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performs the specific task of payment instrument selection; (iii) a
conventional web browser, which permits a user to access a merchant’s Web
site; and (iv) a conventional “merchant” application, which performs the
specific task of allowing users to purchase products or services online.
Moreover, Figure 1 of Appellant’s Specification illustrates a
simplified schematic diagram of user 100, merchant 110, and smart wallet
120, such that when user 100 browses on the merchant’s Web page and
purchases an item, smart wallet 120 processes the information about the item
from merchant 110 and generates a prioritized list of the user’s payment
instruments. (Spec. 9:13–15). In other words, Appellant’s Figure 1
illustrates that merchant 110, smart wallet 120, and the Web page function
cooperatively as an ordered combination.
Nonetheless, even in view of Appellant’s Specification, the claimed
additional elements, considered as an ordered combination that includes an
“online environment,” “smart wallet application,” “web browser,” and
“merchant application,” are simply generic, purely conventional elements.
Thus, claims 35 and 45 are generic, purely conventional computer
elements intended to perform generic computer functions, rather than to
improve computer capabilities.
First, Appellant argues that
[t]he Office Action asserts that the claims are directed to
concepts such as “comparing new and stored information and
using rules to identify options,” “intermediate settlement,” and
“processing information through a clearinghouse.” The Office
Action provides no plausible support or evidence for these
assertions. Indeed, these assertions are incorrect and contrary to
the language of the claims. Instead, Applicant’s claims are
rooted in technology and employ unconventional techniques for
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automatically selecting payment instruments to enable
transactions for a user in an online environment.

(Appeal Br. 11 (emphases omitted); see also Reply Br. 9.) Contrary to
Appellant’s arguments, the Examiner has identified the appropriate judicial
exception of “metal processes” and the Examiner has compared the claimed
concepts of independent claim 35 to the appropriate Federal Circuit decision
(i.e., Electric Power Group). Accordingly, the Examiner has met the burden
of a general prima facie notice requirement. See In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011) (“[A]ll that is required of the [Patent] [O]ffice to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
[section] 132.” ). Moreover, Appellant is improperly conflating part one of
the Alice test with part two of the Alice test, which includes consideration of
an element or combination of elements to determine if the claim recites
“additional features.”
Second, Appellant argues that the “claims are not directed to an
abstract idea because they do not threaten to monopolize or ‘pre-empt’ any
abstract idea.” (Appeal Br. 12; see also Reply Br. 10–11.) Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Where claims are deemed to recite only patent ineligible subject matter
under the two-step Alice analysis, as they are here, “preemption concerns are
fully addressed and made moot.” Id.
Third, Appellant argues
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the claims solve a problem grounded in software and network
based technology, and the problem would not be relevant but for
computerized systems operating over an electronic network. In
addition, as discussed on page 8 of Appellant’s Specification,
various improvements can be realized from the claimed
combination of elements, including, the ability to “automatically
store, track, and manage a user’s coupons, discounts,
promotional offerings,” and “provide value to a user by
suggesting the best payment instrument that can save the user
money.”

(Appeal Br. 13–14; see also Reply Br. 11–12.) However, Appellant has not
adequately explained why the claim “purport[s] to improve the functioning
of the computer itself” or “any other technology or technical field.” Alice,
573 U.S. at 225. In particular, Appellant has not explained why the ability
to “automatically store, track, and manage a user’s coupons, discounts,
promotional offerings,” which is related to marketing and advertising,
improves the function of a computer or other technology.
Fourth, Appellant argues that: (i) “the claims are patentable over the
technology described in the prior art, and thus by definition include
limitations other than what is well-understood, routine and conventional in
the field”; and (ii) “Appellant’s claims are neither anticipated nor rendered
obvious by the prior art of record – which cuts against the assertion that the
claims recite well-understood, routine, and conventional concepts.” (Appeal
Br. 14; see also Reply Br. 12.) However, Appellant improperly conflates the
requirements for eligible subject matter with the independent requirements
of novelty and non-obviousness. “The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diehr, 450 U.S. at 188–89.
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Last, Appellant argues that “the claims are unambiguously tied to
network and computer technology [as in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)] that solves a ‘problem
specifically arising in the realm of’ computerized solutions for automatically
selecting a payment instrument in an online environment including a smart
wallet application.” (Appeal Br. 14; see also Reply Br. 12–13.) Similarly,
Appellant argues that “[a]s with the claimed technology in DDR Holdings,
the above elements of claim 35 yield a ‘result that overrides the routine and
conventional sequence of events,’ to address a technical problem of which
there is no ‘conventional’ counterpart.” (Id. at 15.) However, as discussed
previously, Appellant has not explained why the collecting, analyzing, and
routing data related to managing transactions or financing, is necessarily
rooted in or improves the function of a computer or other technology.
Thus, we agree with the Examiner that claims 35 and 45 are directed
towards patent-ineligible subject matter.
Accordingly, we sustain the rejection of independent claims 35 and 45
under 35 U.S.C. § 101. Claims 36–41, 43, 44, 46–51, 53, and 54 depend
from claims 35 and 45, and Appellant has not presented any additional
substantive arguments with respect to these claims. Therefore, we sustain
the rejection of 36–41, 43, 44, 46–51, 53, and 54 under 35 U.S.C. § 101, for
the same reasons discussed with respect to independent claims 35 and 45.

§ 112(a) Rejection
We are persuaded by Appellants’ arguments (Appeal Br. 17) that the
limitations “providing, to the web browser of the user, a recommendation to
bundle the purchase of the plurality of products or services with the highest
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rank payment instrument” and “charge, responsive to an approval from the
web browser of the user, the bundled purchase to the highest rank payment
instrument,” as recited in independent claim 35, comply with the written
description requirement under 35 U.S.C. § 112(a).
The Examiner found that
the limitation “providing, to the web browser of the user, a
recommendation to bundle the purchase of the plurality of
products or services with the highest rank payment instrument[”]
and [“]charge, responsive to an approval from the web browser
of the user, the bundled purchase to the highest rank payment
instrument” is new matter not described in the Specification.

(Final Act. 5 (emphases omitted).) In particular, the Examiner found that the
“[r]ecommendation to ‘split’ purchase based on two discounts from two
instruments is not the same as recommendation to ‘bundle’ purchase when
only one instrument provides a discount” and “independent claims [35 and
45] specifically recites that there is only one instrument to provide a
discount and provide recommendation to bundle the purchase to the web
browser of user which is not described anywhere in the Specification.”
(Ans. 20.) We do not agree with the Examiner’s findings.
Appellant’s Specification discloses the following:
The preferred embodiment of the invention provides for
multiple financial instrument selections for a single purchase.
For example, suppose a user purchases a printer from company
A and a modem from Company B. Suppose also that Financial
Instrument Company C offers a discount for Company B’s
modem and a Financial Instrument Company D offers a discount
for Company A’s printer. In this case, the smart wallet
application suggests splitting the purchase into two appropriate
and respective invoices for charging Company C for Company
B’s modem and charging Company D for Company A’s printer,
respectively, to obtain both discounts.
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(Spec. 15:20 to 16:3 (emphasis added).)
Manufacturers, merchants, financial instruments, etc.,
have incentive to give information to the smart wallet application
because, in the case of a bundled purchase, if no other financial
instrument company offers a discount, then the smart wallet
application may suggest that first financial instrument company
offering the discount gets charged the entire bundled purchase.

(Spec. 16:5–10 (emphasis added).) While Appellant’s Specification
discloses “splitting the purchase into two appropriate and respective invoices
. . . to obtain both discounts” (Spec. 15:26–16:3), the Specification also
discloses the related concept of “a bundled purchase,” in which the “first
financial instrument company offering the discount gets charged the entire
bundled purchase” (Spec. 16:5–10). Thus, Appellants’ Specification
adequately supports the claim limitations “providing, to the web browser of
the user, a recommendation to bundle the purchase of the plurality of
products or services with the highest rank payment instrument” and “charge,
responsive to an approval from the web browser of the user, the bundled
purchase to the highest rank payment instrument.”
Accordingly, we are persuaded by Appellants’ arguments that “[t]he
Specification also describes, for example, a recommendation for bundling of
a plurality of products for charging according to the highest rank payment
instrument.” (Appeal Br. 17.)
Thus, we do not agree with the Examiner that the Specification fails to
provide written description support for the limitations “providing, to the web
browser of the user, a recommendation to bundle the purchase of the
plurality of products or services with the highest rank payment instrument”
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and “charge, responsive to an approval from the web browser of the user, the
bundled purchase to the highest rank payment instrument.”
Accordingly, we do not sustain the rejection of independent claim 35
under 35 U.S.C. § 112(a). Claims 35–41, 43, and 44 depend from claim 35.
Therefore, we do not sustain the rejection of claims 35–41, 43, and 44 under
35 U.S.C. § 112(a) for the same reasons discussed with respect to
independent claim 35.
Independent claim 45 recites limitations similar to those discussed
with respect to independent claim 35. Claims 46–51, 53, and 54 depend
from claim 45. Therefore, we do not sustain the rejection of claims 46–51,
53, and 54 under 35 U.S.C. § 112(a) for the same reasons discussed with
respect to independent claim 35.

§ 112(b) Rejection
We are persuaded by Appellants’ arguments (Appeal Br. 17–18; see
also Reply Br. 7–8) that independent claims 35 and 45 are not indefinite
under 35 U.S.C. § 112(b).
The Examiner found that the “limitation ‘provide . . . a
recommendation to bundle the purchase of the plurality of products or
services with the highest rank payment instrument’ . . . renders the claims
indefinite.” (Final Act. 5.) In particular, the Examiner found the following:
One can either 1) recommend to bundle purchase of plurality of
products and services or 2) recommend to charge bundled
products or services to highest rank payment instrument and it is
unclear what application meant by “recommendation to bundle
products/services with instrument.”

(Ans. 20 (emphases omitted).) We do not agree with the Examiner.
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As discussed previously with respect to the 35 U.S.C. § 112(a)
rejection, Appellant’s Specification discloses “splitting the purchase into two
appropriate and respective invoices . . . to obtain both discounts” (Spec.
15:26–16:3), but also discloses the related concept of “a bundled purchase,”
in which the “first financial instrument company offering the discount gets
charged the entire bundled purchase” (Spec. 16:5–10). Thus, in the context
of Appellant’s Specification, one of ordinary skill in the art would
understand that the limitation “provide . . . a recommendation to bundle the
purchase of the plurality of products or services with the highest rank
payment instrument” means bundling purchases and paying via the highest
ranked payment instrument.
Thus, we are persuaded by Appellants’ arguments that “one of
ordinary skill in the art reading Appellant’s Specification . . . would
understand the metes and bounds of the claim terms, including ‘bundle the
purchase’ and ‘highest rank payment instrument.’” (Appeal Br. 17; see also
Reply Br. 7.)
The Examiner further found that the “[c]laims 35 and 45 recite the
limitation ‘the only instrument’” and “[t]here is insufficient antecedent basis
for this limitation in the claim.” (Final Act. 6.) Again, we do not agree with
the Examiner.
The preamble of independent claim 35 recites “the stored information
comprising a number of and types of available payment instruments of the
user” (emphasis added). Claim 35 further recites “determine, based on
information received from financial instrument companies, that the highest
rank payment instrument is the only instrument to provide a discount for the
purchase of the plurality of products or services” (emphasis added). Thus,
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the recitation of “a number of and types of available payment instruments”
in the preamble and the limitation “the highest rank payment instrument”
provides an antecedent basis for “the only instrument.”
Accordingly, we are persuaded by Appellant’s argument that “there is
antecedent basis for ‘the only instrument’ which is recited in the claimed
‘determine . . . that the highest rank payment instrument is the only
instrument to provide a discount for the purchase of the plurality of products
or services’” because the preamble of “independent claim 35 recites ‘the
stored information compris[es] a number of and types of available payment
instruments of the user.’” (Appeal Br. 17–18 (emphasis omitted); see also
Reply Br. 7–8.)
Thus, we do not sustain the rejection of independent claims 35 and 45
under 35 U.S.C. § 112(b). Claims 36–41, 43, 44, 46–51, 53, and 54 depend
from claims 35 and 45. Therefore, we do not sustain the rejection of claims
36–41, 43, 44, 46–51, 53, and 54 under 35 U.S.C. § 112(b) for the same
reasons discussed with respect to independent claims 35 and 45.

§ 103 Rejection—Iannacci, Krajec, Silva, and Mahaffey
First, we are unpersuaded by Appellant’s arguments (Appeal Br. 19–
20; see also Reply Br. 3) that the combination of Iannacci, Krajec, Silva, and
Mahaffey would not have rendered obvious independent claim 35, which
includes the limitation “determine, for the determined user’s stored payment
instruments that are accepted by the at least one merchant, a ranking based
on the predetermined priority.”
The Examiner found that the transaction processing system of
Iannacci, which selects the payment method with the maximum benefits
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according to the user’s profile, corresponds to the limitation “determine, for
the determined user’s stored payment instruments that are accepted by the at
least one merchant, a ranking based on the predetermined priority.” (Final
Act. 8; see also Ans. 8.) We agree with the Examiner’s findings.
Iannacci relates to a “settlement program . . . [that] functions to
produce and acquire the maximum or preferred benefit items for users by
guiding and automating appropriate payment and settlement actions.” (¶ 3.)
Figure 1 of Iannacci illustrates a block diagram of transaction processing
system 100 “for establishing and executing payment, discount, and incentive
(PDI)” (¶ 363), which includes universal cardholder 110, merchant 120,
universal server 135, PDI option suppliers 145, and payment/award issuers
165 (¶ 367). Iannacci explains that the “server, online with the payment
network, finds the member’s appropriate benefits and ranks them in terms of
preference and value” and “selects the payment methods that will acquire the
maximum benefits according to the member’s profile.” (¶ 122.) In one
example, Iannacci explains that “Visa, MasterCard, bank debit, Delta
SkyMiles, MyPoints, Macy’s and any other existing or immediately
available user accounts are all contenders with the best account being
automatically selected and transmitted for each transaction.” (Id.) In
another example, Iannacci explains the following:
A user may want to display credit card information
assembled according to the best airline mile benefits. The user
then may select a displayed item for further action. The example
may appear as: (1) American Express offers 5-for-1 miles, (2)
Visa offers 3-for-1 miles, (3) Discover offers 2-for-1 miles.

(¶ 327.) Iannacci further explains that “[a] further advantage of the present
invention is that only acceptable settlement options will be produced for
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use” and as an example, “an American Express account will not be produced
if the merchant does not accept such a payment method.” (¶ 175.) Because
Iannacci explains that transaction processing system 100 automatically
selects the payment methods based on maximum benefits (e.g., credit card
information based upon best airline mile benefits), according to the
member’s profile such that merchant accepts the payment, Iannacci teaches
the limitation “determine, for the determined user’s stored payment
instruments that are accepted by the at least one merchant, a ranking based
on the predetermined priority.”
Appellant argues that:
While Iannacci in paragraph [0411] discloses a “VISA and a
priority rank of 1 (e.g., first payment type to be requested and
accepted if possible),” and checkbox preferences 625 manually
selected and sorted by rank (Fig. 6), nowhere does Iannacci
disclose to “determine, for the determined user’s stored payment
instruments that are accepted by the at least one merchant, a
ranking based on the predetermined priority.”

(Appeal Br. 19–20.) Similarly, Appellant argues that “paragraphs [0129]–
[0130] of Iannacci simply describe resolving a ‘payment option (e.g.
MasterCard, Visa, bank debit) . . . to acquire the highest value,’ and to
‘determine if the resolved payment option (e.g., Visa) currently exists in the
member’s profile.’” (Id. at 20.) However, the Examiner also cited to
paragraphs 122 and 327 of Iannacci for teaching the limitation “determine,
for the determined user’s stored payment instruments that are accepted by
the at least one merchant, a ranking based on the predetermined priority.”
(Ans. 8.) Appellant has not presented any arguments or evidence as to why
the Examiner’s findings with respect to Iannacci are erroneous.
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Appellant further argues that “[t]he Examiner’s reference to a user’s
manual selection in paragraphs [0122] and [0327] undercuts the argument
that Innacci teaches the above elements of claims 35.” (Reply Br. 3
(emphasis omitted).) Contrary to Appellant’s arguments, Iannacci explains
that the “server . . . selects the payment methods that will acquire the
maximum benefits according to the member’s profile” and “user accounts
are all contenders with the best account being automatically selected and
transmitted for each transaction.” (¶ 122.)
Thus, we agree with the Examiner that the combination of Iannacci,
Krajec, Silva, and Mahaffey would have rendered obvious independent
claim 35, which includes the limitation “determine, for the determined user’s
stored payment instruments that are accepted by the at least one merchant, a
ranking based on the predetermined priority.”
Second, we are unpersuaded by Appellant’s arguments (Appeal Br.
19–20; see also Reply Br. 3) that the combination of Iannacci, Krajec, Silva,
and Mahaffey would not have rendered obvious independent claim 35,
which includes the limitation “automatically select, based on the ranking, the
highest rank payment instrument from the stored payment instruments.”
The Examiner found that the central processor of Iannacci, which
reviews available benefits and determines if the payment option is available
to the merchant, corresponds to the limitation “automatically select, based
on the ranking, the highest rank payment instrument from the stored
payment instruments.” (Final Act. 8; see also Ans. 8.) We agree with the
Examiner’s findings.
Iannacci explains that “[t]he central processor will determine the
highest value benefit offer from among all grouped offers and then resolve
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which payment option (e.g., MasterCard, Visa, bank debit) or actions must
be used to acquire the highest value and preferred benefit offer.” (¶ 129.)
Moreover, Iannacci explains that “[t]he central processor also will determine
if the resolved payment option (e.g., a Visa account) is acceptable to the
originating merchant otherwise a recursive processing loop will continue
until a determined highest value benefit offer generates a resolved payment
option acceptable to the merchant.” (Id.) Because Iannacci explains that the
central processor determines the highest value benefit offer and if the
payment option is accepted by merchants, Iannacci teaches the limitation
“automatically select, based on the ranking, the highest rank payment
instrument from the stored payment instruments.”
Appellant argues that
While Iannacci in paragraph [0411] discloses a “VISA and a
priority rank of 1 (e.g., first payment type to be requested and
accepted if possible),” and checkbox preferences 625 manually
selected and sorted by rank (Fig. 6), nowhere does Iannacci
disclose to . . . “automatically select, based on the ranking, the
highest rank payment instrument from the stored payment
instruments.”

(Appeal Br. 19–20; see also Reply Br. 3.) Similarly, Appellant argues
“paragraph [0026] of Iannacci discloses the Microsoft ‘Passport wallet
express purchase option’ allows only for ‘non-benefit-driven manual user-
selection settlement’ to add a singular credit card for singular purchase.”
(Appeal Br. 20 (emphasis omitted).) However, the Examiner also cited to
paragraph 129 of Iannacci for teaching the limitation “automatically select,
based on the ranking, the highest rank payment instrument from the stored
payment instruments.” (Ans. 8.) Appellant has not presented any arguments
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or evidence as to why the Examiner’s findings with respect to Iannacci are
erroneous.
Appellant further argues that “paragraphs [0129]–[0130] of Iannacci
simply describe resolving a ‘payment option (e.g. MasterCard, Visa, bank
debit) . . . to acquire the highest value,’ and to ‘determine if the resolved
payment option (e.g., Visa) currently exists in the member’s profile.’”
(Appeal Br. 20.) However, this argument is not persuasive because
Appellant merely provides an oversimplified summary of Iannacci with a
conclusory statement that Iannacci does not teach the limitations of
independent claim 35. As discussed previously, Iannacci explains that the
central processor determines the highest value benefit offer and if the
payment option is accepted by merchants (¶ 129) and accordingly, teaches
the limitation “automatically select, based on the ranking, the highest rank
payment instrument from the stored payment instruments.”
Thus, we agree with the Examiner that the combination of Iannacci,
Krajec, Silva, and Mahaffey would have rendered obvious independent
claim 35, which includes the limitation “automatically select, based on the
ranking, the highest rank payment instrument from the stored payment
instruments.”
Last, we are unpersuaded by Appellant’s arguments (Reply Br. 3–4)
that the combination of Iannacci, Krajec, Silva, and Mahaffey would not
have rendered obvious independent claim 35, which includes the limitation
“determine, based on information received from financial instrument
companies, that the highest rank payment instrument is the only instrument
to provide a discount for the purchase of the plurality of products or
services.”
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The Examiner found that the loyalty provider network of Iannacci,
which matches benefits to user profiles, and incentives offered by credit card
issuers of Iannacci collectively correspond to the limitation “determine,
based on information received from financial instrument companies, that the
highest rank payment instrument is the only instrument to provide a discount
for the purchase of the plurality of products or services.” (Final Act. 9; see
also Ans. 9.) We agree with the Examiner’s findings.
Iannacci explains the following:
The present invention creates a loyalty provider network
that matches benefits and the means to acquire benefits with
payments, queries, and exchanges. Users complete a personal
profile listing benefits by priority to them, e.g. airline miles, cash
discounts, lowest fees, etc. All purchases, queries, and
exchanges are then matched against this profile to automatically
select the best benefit-driven settlement solution.

(¶ 121.) As discussed previously, Iannacci explains that “Visa, MasterCard,
bank debit, Delta SkyMiles, MyPoints, Macy’s and any other existing or
immediately available user accounts are all contenders with the best account
being automatically selected and transmitted for each transaction.” (¶ 122.)
Iannacci explains that “[t]he present invention will be connected with credit
card issuers,” such that “[i]ncentives and benefits offered by these
companies and more will be continuously updating.” (¶ 124.) Because
Iannacci explains that the loyalty provider network provides a best benefit-
driven settlement solution between users and credit card issuers, and such
credit card users offer incentive and benefits, Iannacci teaches the limitation
“determine, based on information received from financial instrument
companies, that the highest rank payment instrument is the only instrument
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to provide a discount for the purchase of the plurality of products or
services.”
Appellant argues “it is uncontested that Iannacci also fails to disclose
‘determin[ing], based on information received from financial instrument
companies, that the highest rank payment instrument is the only instrument
to provide a discount for the purchase of the plurality of products or
services.’” (Reply Br. 3–4.) Contrary to Appellant’s conclusory statement,
the Examiner cited to paragraphs 121, 122, and 124 of Iannacci for teaching
the limitation “determine, based on information received from financial
instrument companies, that the highest rank payment instrument is the only
instrument to provide a discount for the purchase of the plurality of products
or services.” Appellants has not provided any arguments or evidence as to
why the Examiner’s findings with respect to Iannacci are erroneous.
Thus, we agree with the Examiner that the combination of Iannacci,
Krajec, Silva, and Mahaffey would have rendered obvious independent
claim 35, which includes the limitation “determine, based on information
received from financial instrument companies, that the highest rank payment
instrument is the only instrument to provide a discount for the purchase of
the plurality of products or services.”
Accordingly, we sustain the rejection of independent claim 35 under
35 U.S.C. § 103. Claims 36, 39–41, 43, and 44 depend from claim 35, and
Appellant has not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 36, 39–
41, 43, and 44 under 35 U.S.C. § 103, for the same reasons discussed with
respect to independent claim 35.
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Independent claim 45 recites limitations similar to those discussed
with respect to independent claim 35, and Appellant has not presented any
additional substantive arguments with respect to this claim. We sustain the
rejection of claim 45, as well as dependent claims 46, 49–51, 53, and 54, for
the same reasons discussed with respect to claim 35.

§ 103 Rejection—Iannacci, Krajec, Silva, Mahaffey, and Yun
Although Appellant nominally argues the rejection of dependent
claims 37, 38, 47, and 48 separately (Appeal Br. 22), the arguments
presented do not point out with particularity or explain why the limitations
of these dependent claims are separately patentable. Instead, Appellant
argues that “Iannacci, Mahaffey, Krajec, . . . and Silva, individually and
collectively fail to disclose or suggest each and every element recited by
independent claims 35 and 45” and “Yun fails to cure any of the
aforementioned deficiencies.” (Id.) Accordingly, we sustain this rejection.

§ 103 Rejection—Iannacci, Banerjee, Silva, and Mahaffey
We sustain the rejection of claims 35, 36, 39–41, 43–46, 49–51, 53,
and 54 for the same reasons discussed with respect to rejection of claims 35
and 45 under 35 U.S.C. § 103 as being unpatentable over Iannacci, Krajec,
Silva, and Mahaffey.

§ 103 Rejection—Iannacci, Banerjee, Silva, Mahaffey, and Yun
We sustain the rejection of claims 37, 38, 47, and 48 for the same
reasons discussed with respect to rejection of claims 37, 38, 47, and 48
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under 35 U.S.C. § 103 as being unpatentable over Iannacci, Krajec, Silva,
Mahaffey, and Yun.

CONCLUSION
The Examiner’s decision rejecting claims 35–41, 43–51, 53, and 54
under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 35–41, 43–51, 53, and 54
under 35 U.S.C. § 112(a) is reversed.
The Examiner’s decision rejecting claims 35–41, 43–51, 53, and 54
under 35 U.S.C. § 112(b) is reversed.
The Examiner’s decision rejecting claims 35–41, 43–51, 53, and 54
under 35 U.S.C. § 103 is affirmed.

DECISION
In summary:
Claims
Rejected
Basis Affirmed Reversed
35–41, 43–51, 53,
54
§ 101 35–41, 43–51, 53,
54

35–41, 43–51, 53,
54
§ 112(a) 35–41, 43–51, 53,
54
35–41, 43–51, 53,
54
§ 112(b) 35–41, 43–51, 53,
54
35–41, 43–51, 53,
54
§ 103 35–41, 43–51, 53,
54

Overall Outcome 35–41, 43–51, 53,
54

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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)(1)(iv).

AFFIRMED