Jeremy A. Greenberger et al.

Patent Trials and Appeals Board

Dec 23, 2019

15275909 - (D) (P.T.A.B. Dec. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/275,909 09/26/2016 Jeremy A. Greenberger END920160408US1 1056
133758 7590 12/23/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
McLean, VA 22102-8064
EXAMINER
MPAMUGO, CHINYERE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/23/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Docketing@rmsc2.com
dbeltran@rmsc2.com
lgallaugher@rmsc2.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEREMY A. GREENBERGER and JANA H. JENKINS
____________

Appeal 2018-006323
Application 15/275,909
Technology Center 3600
____________

Before JOHN A. JEFFERY, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–8, 10–17, and 19–22, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as
International Business Machines. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention generally relates to
sharing electronic coupons and, more particularly, to sharing electronic
coupons within a venue based on user device location.” Spec. ¶¶ 1, 14.2
The Specification explains that merchants offer coupons to shoppers to
“increase sales and/or improve shopper relations.” Id. ¶ 14. The
Specification also explains that “[s]ome coupons may offer a discount based
on the purchase of multiple items” to “encourage shoppers to purchase
additional items, thereby improving sales.” Id. The Specification further
explains that “often times, a shopper may not want or need multiple items,
but may still wish to take advantage of the savings offered by” a multiple-
item coupon. Id. Hence, the “invention may allow a user (e.g., a shopper) to
share” a multiple-item coupon with others. Id.
For instance, “if the coupon was originally for buying three items for
75 cents off, and the user partially redeemed the coupon to purchase only
one item,” the unused “portion of the coupon may be shared with other
users” to “provide a discount of 50 cents on two items.” Spec. ¶ 61; see id.
¶¶ 15, 75. Thus, if “a first user partially redeems a coupon offering 75 cents
discount of a quantity of three items by purchasing one item” and if “a
second user partially redeems the coupon by purchasing two items, the first

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed September 26, 2016; “Final Act.” for the Final Office
Action, mailed June 29, 2017; “Advisory Act.” for the Advisory Action,
mailed September 14, 2017; “Appeal Br.” for the Appeal Brief, filed
November 29, 2017; “Ans.” for the Examiner’s Answer, mailed April 4,
2018; and “Reply Br.” for the Reply Brief, filed May 31, 2018.
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user may receive a refund of 25 cents and the second user may receive
refund of 50 cents once the coupon has been fully redeemed.” Id. ¶ 84.
Exemplary Claims
Independent claims 1 and 19 exemplify the claims at issue and read as
follows (with formatting added for clarity):
1. A computer-implemented method comprising:
monitoring, by a computing device, a location of a
user device by communicating with one or more location
determination devices that are used to determine the location
of the user device through computing network communications
with the user device,
wherein the one or more location determination
devices comprise at least one selected from a group
consisting of:
a beacon,
a wireless router, and
a wireless personal area network device,
the one or more location determination devices
determining the location of the user device based on
receiving discovery signals from the user device or
establishing a connection with the user device;
detecting, by the computing device, the availability of an
electronic coupon stored in an inventory based on the location
of the user device and a location associated with the electronic
coupon;
offering, by the computing device, the electronic coupon
to the user device based on the detecting the availability by
providing an electronic query to the user device for display on
the user device;
assigning, by the computing device, the electronic
coupon to the user device based on the offering the electronic
coupon to the user device;
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detecting, by the computing device, that the user device
departs a boundary based on the monitoring the location; and
assigning, by the computing device, an unused portion of
the electronic coupon to the inventory based on the detecting
that the user device departs the boundary, wherein the unused
portion of the electronic coupon includes a partial value of an
original value of the electronic coupon.
19. A system comprising:
a CPU, a computer readable memory and a computer
readable storage medium associated with a computing device;
program instructions to monitor a location of a user
device while the user device is located within the facility,
wherein the monitoring includes communicating
with one or more location determination devices that are
used to determine the location of the user device through
computing network communications with the user
device,
wherein the one or more location determination
devices comprise at least one selected from a group
consisting of:
a beacon,
a wireless router, and
a wireless personal area network device,
the one or more location determination devices
determining the location of the user device based on
receiving discovery signals from the user device or
establishing a connection with the user device;
program instructions to assign an electronic coupon to
the user device;
program instructions to track a usage of the electronic
coupon based on assigning the electronic coupon;
program instructions to determine that the user device
has departed the facility based on the monitoring the location of
the user device; and
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program instructions to reassign an unused portion of the
electronic coupon to another user device based on determining
that the user device has departed the facility, wherein the
unused portion of the electronic coupon includes a partial value
of an original value of the coupon,
wherein the program instructions are stored on the
computer readable storage medium for execution by the CPU
via the computer readable memory.
Appeal Br. 54, 57–58 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
The Rejections on Appeal
Claims 21 and 22 stand rejected under 35 U.S.C. § 112(a) for failing
to comply with the written-description requirement. Final Act. 3–4; Ans. 3.
Claims 1–8, 10–17, and 19–22 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 4–9; Ans. 3.
Claims 1, 4–8, 10–14, 16, 17, 21, and 22 stand rejected under
35 U.S.C. § 103 as unpatentable over Cheng and Brodson. Final
Act. 10–15; Ans. 3.
Claims 2 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Cheng, Brodson, and Mashinsky. Final Act. 15–16; Ans. 3.
Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
Cheng, Brodson, and Voutour. Final Act. 16; Ans. 3.
Brodson et al. (“Brodson”) US 2007/0288313 A1 Dec. 13, 2007
Mashinsky US 2013/0290172 A1 Oct. 31, 2013
Voutour US 8,602,300 B1 Dec. 10, 2013
Cheng et al. (“Cheng”) US 2015/0269624 A1 Sept. 24, 2015
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Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over
Cheng and Mashinsky. Final Act. 16–18; Ans. 3.
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Cheng, Mashinsky, and Voutour. Final Act. 18–19; Ans. 3.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner’s conclusions concerning ineligibility under § 101 and
obviousness under § 103. But we disagree with the Examiner’s
determination under § 112(a). We adopt the Examiner’s findings and
reasoning regarding ineligibility and obviousness in the Final Office Action,
Advisory Action, and Answer. See Final Act. 2–3, 4–19; Advisory Act. 2;
Ans. 4–12. We provide the following to address and emphasize specific
findings and arguments.
The § 112(a) Rejection of Claims 21 and 22
INTRODUCTION
Section 112(a) requires, among other things, that the specification
“contain a written description of the invention.” 35 U.S.C. § 112(a). The
written-description requirement serves to “clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.”
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (alteration in original) (quoting Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991)); see Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). “[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
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subject matter as of the filing date.” Ariad, 598 F.3d at 1351; Mentor
Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1296 (Fed. Cir. 2017).
The “test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.”
Ariad, 598 F.3d at 1351. The written-description requirement does not,
however, “demand any particular form of disclosure” or require that “the
specification recite the claimed invention in haec verba.” Id. at 1352. The
analysis for disclosure sufficiency may consider “such descriptive means as
words, structures, figures, diagrams, formulas, etc.” Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
THE CLAIMS AT ISSUE
Claim 21 reads as follows (with formatting added for clarity):
21. The method of claim 1, further comprising:
receiving a response to the query via a user interface of
the user device,
wherein the response indicates whether the
coupon should be assigned to the user device,
wherein the assigning the electronic coupon to
the user device is based [on] receiving the response
indicating that the coupon should be assigned to the
user device; and
retaining the coupon in the inventory based [on]
receiving the response indicating that the coupon should
not be assigned to the user device.
Appeal Br. 58 (Claims App.). Claim 22 depends from claim 21 and
specifies that “the unused portion is a non-zero value.” Id.
THE REASON FOR THE REJECTION
The Examiner determines that the Specification “does not convey
receiving a response indicating that the coupon should not be assigned to
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the user device” as recited in claim 21. Final Act. 4 (citing Spec. ¶ 15);
Ans. 3. The Examiner explains that the Specification “sufficiently describes
acceptance of the coupon via user input from the user as corresponding to
assignment of the coupon to the user device” but that “denial of the coupon
is not sufficiently described as assignment to the inventory.” Ans. 4. The
Examiner rejects claim 22 “by virtue of its dependency to claim 21.” Id.
DISCUSSION
As support for claim 21’s subject matter, Appellant cites Specification
paragraphs 60, 61, and 80. Appeal Br. 5 (citing Spec. ¶ 80); Reply Br. 2–3
(quoting Spec. ¶¶ 60–61).
Specification paragraph 60 explains that “a coupon management
server 220 may be implemented within a boundary” and “may determine
coupon availability based on the user device location and coupon attributes.”
Spec. ¶ 60. That paragraph also explains that “[b]ased on determining that
the coupon is available, the coupon management server 220 may” (1) “offer
the coupon to the user device,” (2) “receive an acceptance of the coupon
from the user device,” and (3) “assign the coupon to the user,” e.g., “by
updating a data structure.” Id. Specification paragraph 61 explains that
when “the user departs from the boundary, the coupon management server
220 may return the unused portion of the coupon to a coupon inventory,”
e.g., “by updating the data structure.” Id. ¶ 61.
Further, Specification paragraph 80 explains that “the coupon
management server 220 may provide a message (e.g., with a query) to the
user device 210 to offer the coupon to the user device 210,” and “[b]ased on
receiving the message, . . . the user of the user device 210 may respond via
user input to accept or deny the offered coupon.” Id. ¶ 80.
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Appellant asserts that the Specification “discusses how coupons are
assigned to the inventory initially, later assigned to user devices, and then
unused portions of the coupon are returned (or assigned back) to the
inventory.” Reply Br. 2. Appellant also asserts that “it is evident that if a
coupon is offered via a user device, and a response is received in which the
coupon offer is declined, the coupon would be retained in the inventory,
where it is originally assigned.” Id. at 3.
We agree with Appellant that Specification paragraphs 60, 61, and 80
reasonably convey to those skilled in the art that the inventors had
possession of claim 21’s subject matter as of the filing date. That the server
“return[s] the unused portion of the coupon to a coupon inventory” when
“the user departs from the boundary” indicates that the coupon originates in
the inventory. And if the user “den[ies] the offered coupon,” the inventory
retains the coupon. Hence, we do not sustain the § 112(a) rejection of
claims 21 and 22.
The § 101 Rejection of Claims 1–8, 10–17, and 19–22
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
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Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
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exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE:
PTO STEP 2A PRONG ONE FOR THE INDEPENDENT CLAIMS
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner properly determines that the claims are directed to an abstract
idea, e.g., “monitoring electronic coupons within a predetermined
boundary.” Final Act. 6–7; see Ans. 4–5.
Appellant disputes that independent claims 1, 14, and 19 are directed
to an abstract idea. See Appeal Br. 8–11, 25–27, 35–36; Reply Br. 3–8.
Specifically, Appellant asserts that the Examiner employed “a piecemeal
analysis of individual claims features rather than analyzing the claim as a
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whole” and that each claim “has been overgeneralized.” Appeal Br. 8–9,
25–26, 35; see Reply Br. 3–4.
We disagree. In determining that the claims are directed to an abstract
idea, the Examiner accurately assesses the “focus” of the claims and their
“character as a whole.” See Final Act. 2–3, 6–7; Advisory Act. 2; Ans. 4–6;
see also SAP Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., “certain methods of organizing human activity.” See 84 Fed.
Reg. at 51–52. As relevant here, the 2019 Guidance identifies “marketing or
sales activities or behaviors” as among the enumerated methods of
organizing human activity. Id. at 52. As explained below, each independent
claim recites “marketing or sales activities or behaviors” in various
limitations.
For instance, claim 1 recites the following limitations:
● “monitoring . . . a location of a user device by
communicating with one or more location determination
devices that are used to determine the location of the user
device”;
● “detecting . . . the availability of an electronic coupon
stored in an inventory based on the location of the user
device and a location associated with the electronic
coupon”;
● “offering . . . the electronic coupon to the user device
based on the detecting the availability by providing an
electronic query to the user device for display on the user
device”;
● “assigning . . . the electronic coupon to the user device
based on the offering the electronic coupon to the user
device”;
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● “detecting . . . that the user device departs a boundary
based on the monitoring the location”; and
● “assigning . . . an unused portion of the electronic coupon
to the inventory based on the detecting that the user
device departs the boundary, wherein the unused portion
of the electronic coupon includes a partial value of an
original value of the electronic coupon.”
Appeal Br. 54. Claims 14 and 19 recite similar limitations. Id. at 56–58.
The above-identified limitations in the independent claims encompass
“marketing or sales activities or behaviors” because they specify monitoring
a shopper’s location, offering the shopper a coupon to induce a sale when
the shopper travels to a certain location, and assigning an unused coupon
portion to an inventory to permit coupon sharing with another shopper. See
Spec. ¶¶ 14–15, 61, 75, 84, Abstract. Consistent with this, the Specification
explains that merchants offer coupons to shoppers to “increase sales and/or
improve shopper relations” and “encourage shoppers to purchase additional
items, thereby improving sales.” Id. ¶ 14. In addition, claim 11 depends
from claim 1 and specifies that the “steps of claim 1 are provided by a
service provider on a[n] . . . advertising . . . basis.” Appeal Br. 55.
For these reasons, the above-identified limitations in the independent
claims encompass “marketing or sales activities or behaviors.” As noted
above, the 2019 Guidance identifies “marketing or sales activities or
behaviors” as among the enumerated methods of organizing human activity,
and thus an abstract idea. 84 Fed. Reg. at 52; see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1361–63 (Fed. Cir. 2015) (deciding that
the claimed concept of “offer-based price optimization” is an abstract idea
“similar to other ‘fundamental economic concepts’ found to be abstract ideas
by the Supreme Court and this court”).
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Appellant contends that “the claimed invention is directed towards a
specific computer-based application rather than a vague, theoretical, or
hypothetical general idea involving organizing human activity.” Appeal
Br. 10, 27, 36. But abstract ideas include concepts other than “vague,
theoretical, or hypothetical general idea[s].” See, e.g., 84 Fed. Reg. at 51–52
& nn.7–15. For instance, abstract ideas include “marketing or sales
activities or behaviors.” Id. at 52.
Further, Appellant’s contention advances a false dichotomy. The
difference between “a specific computer-based application” and “a vague,
theoretical, or hypothetical general idea” does not accurately reflect the
abstract-idea inquiry under the Mayo/Alice framework. As an example, the
system claims in Alice concerned “a specific computer-based application,”
but they did not satisfy § 101. See Alice, 573 U.S. at 212–13, 226–27.
Appellant asserts that the claims provide “a system having practical,
real-life, and specific use cases rather than hypothetical use cases.” Appeal
Br. 10, 27, 36. But that assertion also does not accurately reflect the
abstract-idea inquiry under the Mayo/Alice framework.
Appellant argues that “the claimed invention has a reasonable degree
of specificity and clarity as to what data is analyzed.” Appeal Br. 10, 26,
35–36. But “a reasonable degree of specificity and clarity as to what data is
analyzed” does not suffice for eligibility. For example, the claims in Flook,
Bilski, and Alice all had “a reasonable degree of specificity and clarity as to
what data is analyzed,” but none of the claims satisfied § 101. See Parker v.
Flook, 437 U.S. 584, 594–98 (1978); Bilski v. Kappos, 561 U.S. 593, 599,
611–13 (2010); Alice, 573 U.S. at 212–14 & n.2, 221–25.
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MAYO/ALICE STEP ONE:
PTO STEP 2A PRONG TWO FOR THE INDEPENDENT CLAIMS
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite the following
computer-system components: a “computing device,” a “user device,”
a “network,” and “one or more location determination devices,” i.e., either
a “beacon,” a “wireless router,” or a “wireless personal area network
device.” Appeal Br. 54, 56–58. Further, claim 19 recites the following
hardware components “associated with” the “computing device”: a “CPU,”
a “computer readable memory,” and a “computer readable storage medium.”
Id. at 57.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 7–8. The claimed computer-
system and hardware components constitute a “conventional computer” and
“generic computer components” that “perform generic computer functions.”
Ans. 7–8; see Final Act. 7–8; Advisory Act. 2; see also Spec. ¶¶ 19–21, 23,
45, 49–50, 52, 55, 64–65, 68.
Appellant argues that “the claimed invention improves the technical
field relating to the sharing of electronic coupons.” Appeal Br. 13–14,
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29, 38. We disagree that “the sharing of electronic coupons” constitutes a
technical field. In Bilski, for example, the Supreme Court did not view the
balancing of risk positions as a technical field. See Bilski, 561 U.S. at 599,
609–13. And in Alice, the Court did not view the mitigating of settlement
risk as a technical field. See Alice, 573 U.S. at 212–14 & n.2, 219–23.
Further, we agree with the Examiner that an improvement in a
technical field should focus on “a specific improvement or technique,” e.g.,
“where computers are not used merely as a tool.” Ans. 6; see, e.g.,
Smartflash LLC v. Apple Inc., 680 F. App’x 977, 982 (Fed. Cir. 2017).
Here, however, “the focus is on improving shopper relations and reducing
the [coupons] provided to the user.” Ans. 6; see Spec. ¶ 14.
Appellant argues that “the claimed invention improves the functioning
of the computer itself.” Appeal Br. 14–15, 29, 38–39; see Reply Br. 7. To
support that argument, Appellant cites Specification paragraph 16. Appeal
Br. 14, 29, 38; Reply Br. 7. Among other things, paragraph 16 states,
“Aspects of the present invention may reduce the consumption of computing
resources on a coupon management system by reducing the total number of
coupons issued and tracked in relation to when an entire catalog of coupons
is provided to a user.” Spec. ¶ 16. Paragraph 16 does not say that the
invention necessarily “reduce[s] the consumption of computing resources,”
only that it “may” do so. And it “may” do so only in narrow circumstances,
i.e., “in relation to when an entire catalog of coupons is provided to a user.”
The independent claims encompass processing a single coupon for a
single user. Appeal Br. 54, 56–58. Due to their breadth, the claims do not
capture the purported improvements described in the Specification, e.g., in
paragraph 16. Improvements described in a specification but not claimed do
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not support patent eligibility. See ChargePoint, Inc. v. SemaConnect, Inc.,
920 F.3d 759, 769 (Fed. Cir. 2019); Berkheimer v. HP Inc., 881 F.3d 1360,
1369–70 (Fed. Cir. 2018); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1338–39 (Fed. Cir. 2017); Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331–32 (Fed. Cir.
2017); see also Final Act. 2–3; Ans. 6–7.
Moreover, the statements in Specification paragraph 16 about
purported improvements amount to conclusory assertions. Among other
things, the Specification does not explain why returning a coupon with an
unused portion to an inventory “reduce[s] the consumption of computing
resources” compared to simply replacing the coupon with another coupon
having an amount corresponding to the unused portion. See Spec. ¶¶ 14–16;
see also Ans. 6–7 (citing Spec. ¶¶ 14, 16). We may accord little weight to
conclusory assertions. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014,
1022 (Fed. Cir. 2017); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004).
Appellant asserts that “the claimed invention applies the idea with, or
by use of, a particular machine,” i.e., a beacon, wireless router, or wireless
personal area network device. Appeal Br. 15–16, 29–30, 39; see Reply
Br. 7–8. Appellant also asserts that “the particular machine determines the
location of the user device through a specific set of processes that are
performed by the particular machine.” Appeal Br. 16, 30, 39.
That the claims recite “one or more location determination devices,”
i.e., a beacon, wireless router, or wireless personal area network device, does
not suffice for eligibility. “[C]laims are not saved from abstraction merely
because they recite components more specific than a generic computer.”
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BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1286 (Fed. Cir. 2018).
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
In ChargePoint, for example, certain apparatus claims required
a “control device,” a “transceiver,” a “controller,” and an “electrical coupler
to make a connection with an electric vehicle.” ChargePoint, 920 F.3d
at 766, 770–71. Yet the Federal Circuit did not consider the claimed
apparatus a “particular machine” that satisfied § 101. See id. at 773–75.
Here, the claimed “location determination devices” operate
conventionally to “determin[e] the location of the user device based on
receiving discovery signals from the user device or establishing a connection
with the user device.” Appeal Br. 54, 56–57; see Spec. ¶ 65; Ans. 7. The
Specification evidences the conventional nature of the claimed “location
determination devices.” Spec. ¶ 65. It states that “location determination
devices” may (1) “include one or more computing devices, such as beacons,
network devices, or the like that may connect with” a user device “via, for
example, a wireless local area network (WLAN), a wireless personal area
network (WPAN), or the like”; (2) “receive broadcast or discovery signals
transmitted by the user device . . . without establishing a connection with the
user device”; (3) “provide information regarding the location of user
devices”; (4) “provide information regarding their own locations and signal
strength information of a signal received from the user device”; and
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(5) “transmit signals that carry respective identifiers of the location
determination devices.” Id.
Appellant contends that the claims include “meaningful limitations
beyond generally linking the use of an abstract idea to a particular
technological environment” because they “improve an existing technological
process.” Appeal Br. 17, 31, 40. Contrary to Appellant’s contention, the
claims do not improve an existing technological process. The Examiner
correctly finds that the Specification “discloses offering electronic coupons
to improve ‘shopper relations’, which is primarily a business need not a
technological one.” Ans. 6; see Alice, 573 U.S. at 223 (explaining that “the
claims in Diehr were patent eligible because they improved an existing
technological process”). Allowing shoppers to share multiple-item coupons
does not improve an existing technological process. See Spec. ¶ 14.
Based on McRO, Appellant asserts that the claims provide “a
particular solution to the problem of managing coupons and sharing unused
portions.” Reply Br. 6 (citing McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016)). But McRO does not help Appellant.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. The Federal Circuit decided that the claims
satisfied § 101 under Mayo/Alice step one because “the incorporation of the
claimed rules” improved an existing technological process. Id. at 1314–16.
As explained above, the claims here do not improve an existing
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technological process. Hence, the claims here do not resemble the claims
in McRO.
Appellant asserts that the claims provide “a specific implementation
of a solution to the problem of electronic coupon sharing.” Appeal Br. 11.
But “a claim is not patent eligible merely because it applies an abstract idea
in a narrow way.” BSG Tech, 899 F.3d at 1287.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing Manual of Patent Examining Procedure §§ 2106.05(a)–(c),
2106.05(e) (9th ed. rev. 08.2017 Jan. 2018)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
MAYO/ALICE STEP TWO:
PTO STEP 2B FOR THE INDEPENDENT CLAIMS
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
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order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
As discussed above, the independent claims recite the following
computer-system and hardware components: a “computing device” with
a “CPU,” a “computer readable memory,” and a “computer readable storage
medium”; a “user device”; a “network”; and “one or more location
determination devices,” i.e., either a “beacon,” a “wireless router,” or
a “wireless personal area network device.” Appeal Br. 54, 56–58. The
Examiner correctly finds that the claimed computer-system and hardware
components constitute a “conventional computer” and “generic computer
components” that “perform generic computer functions,” e.g., collecting,
manipulating, and displaying data. Ans. 7–8; see Final Act. 3, 7–8;
Advisory Act. 2.
Consistent with the Examiner’s findings, the Specification describes
the claimed computer-system and hardware components generically and
evidences their conventional nature. See, e.g., Spec. ¶¶ 19–21, 23, 45,
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49–50, 52, 55, 64–65, 68. As an example, the Specification states that a
“network” may “comprise copper transmission cables, optical transmission
fibers, wireless transmission, routers, firewalls, switches, gateway computers
and/or edge servers.” Id. ¶ 20. As another example, the Specification states
that a “user device” may “correspond to a mobile communication device
(e.g., a smart phone or a personal digital assistant (PDA)), a portable
computer device (e.g., a laptop or a tablet computer), or another type of
computer device.” Id. ¶ 64.
In addition, court decisions have recognized that generic computer-
system and hardware components operating to collect, manipulate, and
display data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65
& n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1316–20 (Fed. Cir. 2016) (“Symantec”);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir.
2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., “computing device”) with a “communications controller” and
a “data storage unit” (e.g., “computer readable memory” or “computer
readable storage medium”). Alice, 573 U.S. at 226. The Supreme Court
decided that the system claims failed to satisfy § 101 because “[n]early
every computer” includes those generic components for performing “basic
calculation, storage, and transmission functions” and the system claims
simply implemented the same abstract idea as the method claims. Id.
at 226–27. The Court reasoned that (1) “the system claims are no different
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from the method claims in substance”; (2) “[t]he method claims recite the
abstract idea implemented on a generic computer”; and (3) “the system
claims recite a handful of generic computer components configured to
implement the same idea.” Id. at 226.
Here, the claimed computer-system and hardware components
perform “basic calculation, storage, and transmission functions” that nearly
every computer system performs. Appeal Br. 54, 56–58; see Final Act. 3,
7–8; Advisory Act. 2; Ans. 7–8. For instance, nearly every computer
includes a “CPU” for manipulating data and a “computer readable memory”
or “computer readable storage medium” for storing data. Hence, those
generic computer-system and hardware components do not satisfy the
“inventive concept” requirement. See, e.g., Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding
that “generic computer components such as an ‘interface,’ ‘network,’ and
‘database’” did not satisfy the “inventive concept” requirement);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095–96 (Fed. Cir.
2016) (describing the claimed “microprocessor” and “user interface” as
“generic computer elements”); Prism Techs. LLC v. T-Mobile USA, Inc.,
696 F. App’x 1014, 1016–17 (Fed. Cir. 2017) (describing the claimed
“authentication server,” “access server,” “Internet Protocol network,” “client
computer device,” and “database” as “indisputably generic computer
components”).
Appellant asserts that “the claimed invention adds a specific limitation
other than what is well-understood, routine and conventional in the field, or
adding [sic] unconventional steps that confine the claim to a particular useful
application.” Appeal Br. 16, 30, 39; see Reply Br. 8–9. In particular,
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Appellant contends that the claims recite “the unconventional step of
‘assigning an unused portion of the electronic coupon to the inventory based
on the detecting that the user device departs the boundary.’” Appeal Br.
16–17, 30; Reply Br. 8; see Appeal Br. 39–40. Appellant also contends that
“the claimed invention must be considered to be significantly more since the
claim recites features that are unconventional (e.g., not cited in the art . . .
with respect to the rejections under 35 U.S.C. § 103).” Appeal Br. 17,
30, 40.
Appellant’s arguments do not persuade us of Examiner error because
they wrongly rely on the recited abstract ideas to satisfy the “inventive
concept” requirement. A “claimed invention’s use of the ineligible
concept,” e.g., an abstract idea, “cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech, 899 F.3d at 1290.
Insofar as Appellant’s arguments rest on the alleged novelty and
nonobviousness of the claims, they also fail. The absence of anticipation
and obviousness “does not resolve the question of whether the claims
embody an inventive concept” under Mayo/Alice step two. Symantec,
838 F.3d at 1315; see SAP Am., 898 F.3d at 1163; Ans. 8. “The search for a
§ 101 inventive concept” differs “from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016); see Two-Way Media, 874 F.3d at 1340. “The ‘novelty’ of any
element[s] or steps” in a claim or even the claim itself “is of no relevance in
determining whether the subject matter of a claim” satisfies § 101. Diehr,
450 U.S. at 188–89.
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Based on PTO guidance about Berkheimer,3 Appellant asserts that the
“rejection is undoubtedly in error for lacking the factual findings necessary
to support” the well-understood, routine, and conventional nature of the
additional elements. Reply Br. 9–10. But Appellant concedes that a
“citation to one or more . . . court decisions” may demonstrate that
additional elements are well understood, routine, and conventional to a
skilled artisan. Id. at 9.
As discussed above, court decisions have recognized that generic
computer-system and hardware components operating to collect, manipulate,
and display data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65
& n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Symantec, 838 F.3d
at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16;
buySAFE, 765 F.3d at 1355.
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Considering the claim limitations as an ordered combination adds nothing to
the abstract idea that is not already present when the limitations are
considered separately. See Mayo, 566 U.S. at 79; Final Act. 8. The ordered
combination of limitations amounts to nothing more than the abstract idea of
“marketing or sales activities or behaviors” implemented with generic
computer-system and hardware components that perform generic computer

3 USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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functions. See Alice, 573 U.S. at 225–26; Final Act. 3, 7–8; Advisory
Act. 2. Hence, we conclude that the ordered combination of limitations in
each independent claim does not supply an “inventive concept” that renders
the claim “significantly more” than an abstract idea. See Final Act. 3, 7–8;
Advisory Act. 2; Ans. 6–8. Thus, each claim does not satisfy § 101 under
Mayo/Alice step two.
SUMMARY FOR THE INDEPENDENT CLAIMS
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
DEPENDENT CLAIMS 10–13
We also sustain the § 101 rejection of dependent claims 10–13
because Appellant does not argue eligibility separately for them. See Appeal
Br. 23; Reply Br. 3–20; 37 C.F.R. § 41.37(c)(1)(iv).
DEPENDENT CLAIMS 2–8, 15–17, AND 20–22
Claims 2–8, 21, and 22 depend directly or indirectly from claim 1,
claims 15–17 depend directly or indirectly from claim 14, and claim 20
depends directly from claim 19. Appellant asserts that each dependent claim
“is not abstract” and instead “is directed to a specific computer-based
application rather than a vague, theoretical, or hypothetical general idea
directed to a judicial exception” since “the features of the claim further
define the specific application and processes of the claimed invention.”
Appeal Br. 18–24, 31–34, 41; see Reply Br. 10–15, 17–18, 20. Appellant
also asserts that each dependent claim includes features that “are non-
conventional, thus, it follows that the features are considered ‘significantly
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more’ (step 2B).” Appeal Br. 18–24, 31–34, 41; see Reply Br. 10–15,
17–18, 20.
Appellant’s assertions do not persuade us of Examiner error because
the dependent claims merely narrow the abstract ideas recited in the
independent claims. See Final Act. 8–9; Ans. 8–10. Dependent claims that
merely narrow an abstract idea “add nothing outside the abstract realm.”
SAP Am., 898 F.3d at 1169. Adding “a degree of particularity” does not
save a claim from abstraction. See Ultramercial, 772 F.3d at 715. Also,
narrowing “an abstract idea does not add ‘significantly more’ to it.” BSG
Tech, 899 F.3d at 1291.
As an example, claim 4 depends from claim 1 and further requires
“receiving an acceptance to the offer from the user device, wherein the
assigning the electronic coupon is based on receiving the acceptance to the
offer.” Appeal Br. 55. The claimed “receiving an acceptance to the offer”
amounts to more “marketing or sales activities or behaviors.”
As another example, claim 5 depends from claim 1 and specifies that
“the assigning the electronic coupon to the user device includes modifying a
field in a data structure associated with the electronic coupon indicating that
the electronic coupon [is] possessed by the user device.” Appeal Br. 55.
Although claim 5 specifies another detail, adding “a degree of particularity”
does not save a claim from abstraction. See Ultramercial, 772 F.3d at 715.
“[A] claim is not patent eligible merely because it applies an abstract idea in
a narrow way.” BSG Tech, 899 F.3d at 1287.
In addition, like the independent claims, the dependent claims do not
“capture the purportedly inventive concepts” described in the Specification.
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Further, Appellant wrongly relies on allegedly novel or
nonobviousness features in the dependent claims to satisfy the “inventive
concept” requirement. As explained above, the absence of anticipation and
obviousness “does not resolve the question of whether the claims embody an
inventive concept” under Mayo/Alice step two. Symantec, 838 F.3d at 1315;
see SAP Am., 898 F.3d at 1163.
The dependent claims employ the same generic computer-system and
hardware components as the independent claims to perform generic
computer functions, i.e., collecting, manipulating, and displaying data.
Appeal Br. 54–58; see Final Act. 8–9; Ans. 8–10.
Considering the claim limitations as an ordered combination adds
nothing to the abstract idea that is not already present when the limitations
are considered separately. See Mayo, 566 U.S. at 79; Final Act. 8–9. The
ordered combination of limitations amounts to nothing more than the
abstract idea of “marketing or sales activities or behaviors” implemented
with generic computer-system and hardware components that perform
generic computer functions. See Alice, 573 U.S. at 225–26; Final Act. 3;
Advisory Act. 2.
For the reasons discussed above, dependent claims 2–8, 15–17,
and 20–22 fail to satisfy § 101 under Mayo/Alice step one and step two.
Hence, we sustain the § 101 rejection of these dependent claims.
The § 103 Rejection of Claims 1, 4–8, 10–14, 16, 17, 21, and 22
INDEPENDENT CLAIMS 1 AND 14:
ASSIGNING A COUPON BASED ON OFFERING THE COUPON
As noted above, the § 103 rejection of claims 1 and 14 rests on Cheng
and Brodson. See Final Act. 10–12; Ans. 3. Appellant argues that the
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Examiner erred in rejecting claims 1 and 14 because “the combination of
Cheng and Brodson does not teach” the following limitation in claim 1 and a
similar limitation in claim 14: “assigning, by the computing device, the
electronic coupon to the user device based on the offering the electronic
coupon to the user device.” See Appeal Br. 42–43, 47; Reply Br. 20–22, 25.
Appellant concedes that “Cheng states that offers can be selected.” Appeal
Br. 42; see Reply Br. 20, 25. But Appellant contends that “the concept of
‘selecting’ an offer, as in Cheng is fundamentally different than the
‘assigning’ of an electronic coupon to a user device as in the claimed
invention.” Appeal Br. 42; see Reply Br. 20, 25. According to Appellant,
“an electronic coupon is a unique object” that “can only be in the custody of
one user device at a time.” Appeal Br. 43; Reply Br. 21. Appellant asserts
that Cheng does not teach or suggest assigning coupon custody to one user
device at a time. Appeal Br. 43; Reply Br. 21.
Appellant’s arguments do not persuade us of Examiner error. The
Examiner correctly finds that “Cheng discloses that the offer that is selected
for the user is based on the ‘predicted likelihood of the user requesting the
offer . . . and to increase usage.’” Ans. 10 (quoting Cheng ¶ 101); see Final
Act. 11. The Examiner properly reasons that “[t]his shows that a particular
offer is in custody with a particular user based on user profile information.”
Ans. 10.
More specifically, Cheng discloses an offer-distribution system that
supplies offers to user devices based on geographic location. Cheng ¶¶ 3,
24–27, code (57). Cheng notes that offers include coupons. Id. ¶¶ 3, 5, 30,
35, 69. In addition, Cheng discloses “single-use offers for which each
instance of the offer is separately tracked” by the offer-distribution system.
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Id. ¶ 35. Cheng explains that a single-use offer “is redeemable a limited
number of times.” Id. Cheng’s single-use offers correspond to the claimed
electronic coupons. For instance, a single-use offer may provide a 75-cent
discount for purchasing three items with the value reduced by 25 cents after
each item’s purchase, just like the example the Specification discusses. See
Spec. ¶¶ 14–15, 61, 75, 84. Hence, one shopper could partially redeem a
75-cent single-use offer by receiving a 25-cent discount when purchasing
one item, while another shopper could partially redeem the 75-cent single-
use offer by receiving a 50-cent discount when purchasing two items.
Further, Cheng describes different types of geofences including
“cache geofences” and “notification geofences.” See, e.g., Cheng ¶¶ 50–51,
56, 96, 104, 107, Fig. 1. The “cache geofences” define “geographic areas in
which offers are to be predicatively [sic] loaded to compensate for poor
wireless connectivity in the geographic area.” Id. ¶ 96, code (57). The
“notification geofences” define “geographic areas in which users are notified
of offers in response to the user being in the area, for instance, automatically
upon detecting that the client device is in the notification geographic area.”
Id. ¶ 96.
Moreover, Cheng’s offer-distribution system “may store offer records
describing offers.” Cheng ¶¶ 28, 30. “For single-use offers, each offer
record may include an amount (e.g., a number) of instances of the offer to be
redeemed,” an amount to be reserved, or both. Id. ¶ 35. Cheng’s offer-
distribution system “may update records . . . to reflect interactions with
offers,” e.g., upon sending a single-use offer to a user. Id. ¶ 41; see id.
¶¶ 44, 51, 73.
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Updating an offer record upon sending a single-use offer to a user,
e.g., when the user enters a notification geographic area, corresponds to
assigning an electronic coupon to a user device according to claims 1
and 14. Thus, Cheng teaches or suggests the disputed coupon-assigning
limitations in claims 1 and 14. See Final Act. 11; Ans. 11; see also Cheng
¶¶ 41, 51, 96, 101.
Appellant asserts that “Brodson makes no mention of the concept of
‘assigning’ an electronic coupon for the same reasons that Cheng does not
teach this feature.” Appeal Br. 43; Reply Br. 21. Appellant’s assertion does
not persuade us of Examiner error because the Examiner relies on Cheng—
not Brodson—for the disputed coupon-assigning limitations. See Final
Act. 11; Ans. 11.
Appellant contends that “[t]he claimed invention ‘assigns’ the
electronic coupon so that that coupon can only be in the custody of one user
at a given time.” Appeal Br. 43; Reply Br. 21. Appellant also contends that
“electronic coupons are assigned to track the chain of custody of a coupon.”
Appeal Br. 42–43 (citing Spec. ¶ 15); Reply Br. 20–21 (citing Spec. ¶ 15).
Appellant’s contentions do not persuade us of Examiner error.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000). Here, claims 1 and 14 do not require
that one entity has sole custody of a coupon or “track[ing] the chain of
custody of a coupon.” Appellant cannot rely on unclaimed features for
patentability. See In re Self, 671 F.2d 1344, 1348, 1350 (CCPA 1982).
Further, the Specification does not require that one entity has sole
custody of a coupon or “track[ing] the chain of custody of a coupon.” See,
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e.g., Spec. ¶¶ 15, 62, 67. Instead, the Specification states that “aspects of the
present invention may track the chain of custody of coupons.” Id. ¶ 62; see
id. ¶¶ 15, 67. The Specification does not say that the invention necessarily
tracks the chain of custody of coupons, only that it “may” do so. Id. ¶¶ 15,
62, 67. Federal Circuit case law “counsels against incorporating a feature of
a preferred embodiment into the claims.” Arthrex, Inc. v. Smith & Nephew,
Inc., 935 F.3d 1319, 1330 (Fed. Cir. 2019). In addition, the Specification
indicates that different user devices may each “locally” store a coupon, and
thus share coupon custody, with “a code corresponding to the coupon”
modified to denote coupon validity at a particular user device. See Spec.
¶ 76.
INDEPENDENT CLAIMS 1 AND 14:
ASSIGNING AN UNUSED PORTION OF THE COUPON
Appellant argues that the Examiner erred in rejecting claims 1 and 14
because “the combination of Cheng and Brodson does not teach” the
following limitation in claim 1 and a similar limitation in claim 14:
“assigning, by the computing device, an unused portion of the electronic
coupon to the inventory based on the detecting that the user device departs
the boundary.” See Appeal Br. 42–44, 47; Reply Br. 21–22, 25.
Specifically, Appellant asserts that the Examiner provides “no explanation
as to how the ‘termination of a transaction’ as discussed in Brodson
corresponds to the claimed invention.” Appeal Br. 43, 47; see Reply Br. 21.
Appellant also asserts that “Brodson makes no mention that the termination
of a transaction corresponds to when a user device departs a boundary.”
Appeal Br. 43, 47; see Reply Br. 21, 25. Additionally, Appellant disputes
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that Brodson teaches or suggests “detecting that the user device departs a
boundary based on the monitoring the location.” Reply Br. 21.
Appellant’s arguments do not persuade us of Examiner error because
they attack the references individually. Where a rejection rests on the
combined disclosures in the references, an appellant cannot establish
nonobviousness by attacking the references individually. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the combined
disclosures in Cheng and Brodson teach or suggest the disputed portion-
assigning limitations in claims 1 and 14. See Final Act. 10–13; Cheng ¶ 73;
Brodson ¶¶ 27, 75.
In particular, Brodson discloses an electronic-coupon (e-coupon)
system “that enables electronic coupon redemption at any retail outlet
having electronic funds transfer (EFT) capabilities.” Brodson ¶ 22, code
(57), Fig. 5. Brodson’s e-coupon system “contain[s] multiple electronic
coupons from various coupon sponsors.” Id. ¶ 25. A “purchaser or
consumer” may “select a coupon or coupons of interest.” Id. “Cash reserves
from at least one selected coupon sponsor,” such as a manufacturer, “are
used to cover the discount value of the selected coupons.” Id. ¶ 26.
“Coupon values for qualifying, purchased items are removed from” an
account associated with a manufacturer. Id. ¶ 27. But any “[u]nredeemed
coupon values . . . corresponding [to] cash reserves are released back to the
manufacturer.” Id. ¶¶ 27, 75; see id. ¶ 67, Fig. 5. Releasing unredeemed
coupon values “back to the manufacturer” as disclosed in Brodson teaches or
suggests assigning an unused coupon portion to an inventory according to
claims 1 and 14.
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In addition, Cheng teaches or suggests assigning based on detecting
that a user device departs a boundary according to claims 1 and 14.
Specifically, Cheng discloses that “single-use codes may be marked in
records of the offer distribution system as reserved while cached on the user
device.” Cheng ¶ 73. Cheng also discloses that “the reserved code may be
designated as returned to the available state when the user exits the
geofence” for a cache geographic area. Id. Designating the reserved code
“as returned to the available state when the user exits the geofence” as
disclosed in Cheng teaches or suggests assigning based on detecting that a
user device departs a boundary according to claims 1 and 14.
For the reasons discussed above, the combined disclosures in Cheng
and Brodson teach or suggest the disputed portion-assigning limitations in
claims 1 and 14. See Final Act. 10–13; Cheng ¶ 73; Brodson ¶¶ 27, 75.
DEPENDENT CLAIM 4
Claim 4 depends from claim 1 and further requires “receiving an
acceptance to the offer from the user device, wherein the assigning the
electronic coupon is based on receiving the acceptance to the offer.” Appeal
Br. 55. Appellant contends that the Examiner erred in rejecting claim 4
because “the combination of Cheng and Brodson does not teach or suggest
the concept of ‘assigning the electronic coupon’ as discussed” for claim 1.
Appeal Br. 44; Reply Br. 22. Appellant maintains that Cheng “makes no
mention of the ‘assigning of the electronic coupon.’” Appeal Br. 44; see
Reply Br. 22–23. In addition, Appellant attempts to distinguish claim 4
from Cheng based on sole custody compared to shared custody, arguing that
an offer in Cheng “could be retrieved by multiple different devices at a given
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time, rather than being assigned to one device at one time.” Reply Br.
22–23.
Appellant’s arguments do not persuade us of Examiner error. As
explained above, Cheng teaches or suggests the disputed coupon-assigning
limitation in claim 1. See Final Act. 11; Ans. 11; see also Cheng ¶¶ 41, 51,
96, 101. Further, claim 4 does not specify that one entity has sole custody of
a coupon. Appeal Br. 55. In addition, Cheng discloses a user device
receiving instructions from the offer-distribution system “to display a
notification indicating a uniform resource identifier (URI) from which the
user may retrieve proof that the user is in possession of the offer.” Ans. 10–
11 (citing Cheng ¶ 44); Cheng ¶ 44. The Examiner correctly reasons that
(1) “the assigning of the electronic coupon is shown by the URI that shows
that the user is in possession of the offer,” i.e., the user “has custody of the
offer”; and (2) “[t]he assigning corresponds to the receiving acceptance.”
Ans. 11.
DEPENDENT CLAIMS 5 AND 16
Claim 5 depends from claim 1 and specifies that “the assigning the
electronic coupon to the user device includes modifying a field in a data
structure associated with the electronic coupon indicating that the electronic
coupon [is] possessed by the user device.” Appeal Br. 55. Claim 16
depends from claim 14 and includes a similar limitation. Id. at 57.
Appellant contends that the Examiner erred in rejecting claims 5
and 16 because “the combination of Cheng and Brodson does not teach or
suggest the concept of ‘assigning the electronic coupon’ as discussed” for
claims 1 and 14. Appeal Br. 45, 47–48; Reply Br. 23. Appellant admits that
Cheng “teaches that a reward has been claimed.” Reply Br. 23 (citing
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Cheng ¶ 44). But Appellant asserts that “a reward being claimed does not
indicate that the electronic coupon was ‘assigned’ to the user device”
according to the claims. Id.
Appellant’s arguments do not persuade us of Examiner error. As
explained above, Cheng teaches or suggests the disputed coupon-assigning
limitations in claims 1 and 14. See Final Act. 11; Ans. 11; see also Cheng
¶¶ 41, 51, 96, 101. In addition, Cheng discloses a user-retrievable code that
“when presented to a merchant validates that the user is entitled to the
reward.” Cheng ¶ 44; see Ans. 11. Assigning a user-retrievable code
signifying user entitlement to a reward corresponds to assigning an
electronic coupon to a user device according to the clams.
Cheng also discloses that an offer record for a single-use offer “may
include a plurality of offer instance records, each instance record including
an offer instance identifier, a value indicating whether the offer instance has
been reserved, [and] a value indicating whether the offer instance has been
redeemed.” Cheng ¶ 35. Cheng describes a user “taking affirmative steps to
reserve” an offer, “such as interacting with an interface” on a user device to
cause the “device to indicate to” the offer-distribution system “that the user
wishes to reserve an offer instance.” Id. ¶¶ 35, 41; see id. ¶ 96.
In Cheng, an offer record’s “value indicating whether the offer
instance has been reserved” corresponds to a field in a data structure
indicating coupon assignment to a user device as recited in claims 5 and 16.
When a user reserves an offer instance, Cheng’s offer-distribution system
updates the offer record’s “value indicating whether the offer instance has
been reserved.” See id. ¶¶ 35, 41. Updating an offer record when a user
reserves an offer instance corresponds to assigning an electronic coupon to a
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user device by modifying a field in a data structure according to claims 5
and 16. Hence, Cheng teaches or suggests the limitations in claims 5 and 16.
See Final Act. 12–13; Ans. 11; Cheng ¶¶ 35, 41.
DEPENDENT CLAIM 22
Claim 22 depends from claim 21 and specifies that “the unused
portion is a non-zero value.” Appeal Br. 58. Appellant asserts that the
Examiner erred in rejecting claim 22 because “it is unclear as to whether”
the “unused coupon amounts” in Brodson “are non-zero values” or “partial
values of an original coupon amount.” Appeal Br. 46; see Reply Br. 24.
Appellant contends that “there is no clear teaching or suggestion that
Broadson [sic] in fact teaches an unused portion being a non-zero value.”
Reply Br. 24. In addition, Appellant argues that the Examiner wrongly
relies on speculation and conjecture. Id.
Appellant’s arguments do not persuade us of Examiner error because
the Examiner correctly finds that Brodson discloses that (1) “unredeemed
coupon values” are “released to the manufacturer” and (2) “unused coupon
amounts” are “released back to the consumer product goods manufacturer.”
Ans. 11 (citing Brodson ¶¶ 27, 75); see Final Act. 14–15; Brodson ¶¶ 27, 75.
Both “unredeemed coupon values” and “unused coupon amounts” have
non-zero values. In the Answer, the Examiner further explains that “the
amounts returned to the manufacturer have a remaining non-zero value or
else there would be no need to transfer the value.” Ans. 11. In the Reply
Brief, Appellant identifies no deficiency in the Examiner’s explanation.
Reply Br. 24–25.
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SUMMARY FOR CLAIMS 1, 4, 5, 14, 16, AND 22
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting independent claims 1
and 14 or dependent claims 4, 5, 16, and 22 for obviousness based on Cheng
and Brodson. In our view, the claimed subject matter exemplifies the
principle that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we
sustain the § 103 rejection of claims 1, 4, 5, 14, 16, and 22.
DEPENDENT CLAIMS 6–8, 10–13, 21, AND 17
Claims 6–8, 10–13, and 21 depend directly or indirectly from claim 1,
and claim 17 depends indirectly from claim 14. Appellant does not argue
patentability separately for these dependent claims. See Appeal Br. 45–46,
48; Reply Br. 20–25. Thus, we sustain the § 103 rejection of these
dependent claims for the same reasons as claims 1 and 14. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The § 103 Rejection of Claims 2 and 15
Claim 2 depends from claim 1 and further requires “assigning the
unused portion of the electronic coupon to another user device.” Appeal
Br. 54. Claim 15 depends from claim 14 and includes a similar limitation.
Id. at 57. As noted above, the § 103 rejection of claims 2 and 15 rests on
Cheng, Brodson, and Mashinsky. See Final Act. 15–16; Ans. 3.
Appellant asserts that the Examiner erred in rejecting claims 2 and 15
because “Mashinsky makes no mention of an ‘unused portion’ of the coupon
or that the unused portion is transferred, only that ‘an amount’ is
transferred.” Appeal Br. 48–49; see Reply Br. 25–26. Appellant also asserts
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that “[t]here is no teaching or suggestion that this amount is an ‘unused
portion.’” Appeal Br. 48–49; see Reply Br. 25–26.
Appellant’s assertions do not persuade us of Examiner error. The
Examiner correctly finds that Mashinsky “discloses an unused portion from
one user (first user coupon balance) transfer[red] to a new use[r]
(transferring coupon amount from [a] first user to a second user).” Ans.
11–12 (citing Mashinsky ¶ 88); see Final Act. 3, 15–16. Specifically,
Mashinsky discloses a server that (1) receives an image file for a coupon,
(2) identifies the coupon’s issuing party, (3) validates the “balance on the . . .
coupon with the issuing party,” and (4) transfers “an amount from the . . .
coupon of the first user to an account of a second user.” Mashinsky ¶ 88.
Appellant disagrees “that the ‘first user coupon balance’ of Mashinsky
is an ‘unused portion.’” Reply Br. 25–26. But an obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim” because the analysis “can take account of the
inferences and creative steps that a person of ordinary skill” would employ.
KSR, 550 U.S. at 418. Here, a person of ordinary skill would recognize that
a “balance” on a coupon corresponds to an “unused portion” according to
the claims. Also, transferring “an amount from the . . . coupon of the first
user to an account of a second user” would serve no purpose for an
“amount” equal to zero. See Ans. 11. Transferring an “amount” to “an
account of a second user” as disclosed in Mashinsky teaches or suggests
assigning an “unused portion” to “another user device” according to the
claims. See Final Act. 3. Thus, Mashinsky teaches or suggests the
limitations in claims 2 and 15.
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In addition, Cheng discloses “transactions of offers” including
“transfers between or to users,” e.g., coupon transfers between users. Cheng
¶ 35. Thus, Cheng also teaches or suggests the limitations in claims 2
and 15.
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claims 2 and 15 for
obviousness based on Cheng, Brodson, and Mashinsky. Thus, we sustain
the § 103 rejection of claims 2 and 15.
The § 103 Rejection of Claim 19
As noted above, the § 103 rejection of claim 19 rests on Cheng and
Mashinsky. See Final Act. 16–18; Ans. 3. Appellant argues that the
Examiner erred in rejecting claim 19 because “the combination of Cheng
and Mashinsky does not teach” the following limitation in claim 19:
“program instructions to reassign an unused portion of the electronic coupon
to another user device based on determining that the user device has
departed the facility, wherein the unused portion of the electronic coupon
includes a partial value of an original value of the coupon.” See Appeal
Br. 50–52; Reply Br. 26.
Specifically, Appellant asserts that “Cheng makes no mention of
assigning an unused portion of the electronic coupon to another user device”
and that “Mashinsky does not cure the deficiencies of Cheng.” Appeal
Br. 50; see Reply Br. 26. Appellant contends that “the Examiner has taken
an overly broad interpretation of what is discussed in Mashinsky by
mischaracterizing Mashinksy [sic] to teach transferring a ‘remaining
amount’ when Mashinksy [sic] makes no mention of transferring a
remaining amount.” Appeal Br. 51.
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We disagree. As discussed above for claims 2 and 15, Mashinsky
discloses a server that (1) receives an image file for a coupon, (2) identifies
the coupon’s issuing party, (3) validates the “balance on the . . . coupon with
the issuing party,” and (4) transfers “an amount from the . . . coupon of the
first user to an account of a second user.” Mashinsky ¶ 88. As additionally
discussed above, a person of ordinary skill would recognize that a “balance”
on a coupon corresponds to an “unused portion” according to claim 19.
Also, transferring an “amount” to “an account of a second user” as disclosed
in Mashinsky teaches or suggests reassigning an “unused portion” to
“another user device” according to claim 19. See Final Act. 3.
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 19 for obviousness
based on Cheng and Mashinsky. Thus, we sustain the § 103 rejection of
claim 19.
The § 103 Rejections of Claims 3 and 20
Claim 3 depends directly from claim 1, and claim 20 depends directly
from claim 19. Appellant does not argue patentability separately for these
dependent claims. See Appeal Br. 49–50, 52; Reply Br. 20–26. Thus, we
sustain the § 103 rejections of these dependent claims for the same reasons
as claims 1 and 19. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We reverse the rejection of claims 21 and 22 under 35 U.S.C.
§ 112(a).
We affirm the rejection of claims 1–8, 10–17, and 19–22 under
35 U.S.C. § 101.
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We affirm the rejections of claims 1–8, 10–17, and 19–22 under
35 U.S.C. § 103.
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner’s decision to reject all of the claims on
appeal. See 37 C.F.R. § 41.50(a)(1).
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–17,
19–22
101 Eligibility
1–8, 10–17,
19–22

1, 4–8,
10–14, 16,
17, 21, 22
103 Cheng, Brodson
1, 4–8,
10–14, 16,
17, 21, 22

2, 15 103
Cheng, Brodson,
Mashinsky
2, 15
3 103
Cheng, Brodson,
Voutour
3
19 103 Cheng, Mashinsky 19
20 103
Cheng, Mashinsky,
Voutour
20
21, 22 112(a) Written Description 21, 22
Overall
Outcome

1–8, 10–17,
19–22

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). See
37 C.F.R. § 41.50(f).
AFFIRMED