Michael J. Kavis et al.Download PDFPatent Trials and Appeals BoardDec 2, 201913630989 - (D) (P.T.A.B. Dec. 2, 2019) Copy Citation 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. 13/630,989 09/28/2012 MICHAEL J. KAVIS 60801 2214 27975 7590 12/02/2019 ADD&G - 27975 1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE P.O. BOX 3791 ORLANDO, FL 32802-3791 EXAMINER CROSS, MICHAEL J ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 12/02/2019 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): creganoa@allendyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL J. KAVIS, STEVEN EDMON GOFORTH, and WILLIAM M. CATANIA ____________ Appeal 2018-001562 Application 13/630,989 Technology Center 3600 ____________ Before KEVIN F. TURNER, JOHN P. PINKERTON, and CARL L. SILVERMAN, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Office Action dated November 17, 2016 (“Final Act.”), rejecting claims 24–35 and 37–62. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Carolina Coupon Clearing, Inc., the assigned of this application. (Appeal Brief 1) (hereinafter “Appeal Br.”). Appeal 2018-001562 Application 13/630,989 2 THE CLAIMED SUBJECT MATTER The claims are directed to a system, a remote server system, a method, and a computer readable medium for detecting fraudulent coupons during a purchase transaction. Specification (hereinafter “Spec.”) 8:6–9:16. Claims 24, 37, 47, and 55 are independent; claims 25–35, 38–46, 48–54, and 56–62 are dependent. Claim 24, reproduced below (with emphasis added), is illustrative of the claimed subject matter: 24. A fraudulent coupon detection system comprising: a fraudulent coupon detection server remote from a retail location and comprising a fraudulent coupon detection processor and a fraudulent coupon memory coupled thereto; a communications network; and a point-of-sale (POS) device associated with the retail location and coupled to said fraudulent coupon detection server via said communications network and comprising a POS processor, a POS memory coupled to said POS processor, a display coupled to said POS processor, and an input device coupled to said POS processor, said POS processor configured to, during a purchase transaction and in near real time, receive a product identifier code via said input device, and send the product identifier code to said fraudulent coupon server via said communications network; said fraudulent coupon detection processor configured to, during the purchase transaction and in near real time, compare the received product identifier code to a plurality of fraudulent coupon identifiers in said fraudulent coupon memory, the plurality of fraudulent coupon identifiers being associated with a plurality of fraudulent coupons for the product identifier code, and send at least one fraudulent coupon code corresponding to respective ones of the plurality of fraudulent coupons to the POS device via said Appeal 2018-001562 Application 13/630,989 3 communications network based upon a match between the product code and a given one of the plurality of fraudulent coupon identifiers; said POS processor further configured to, during the purchase transaction, generate an alert on said display based upon receipt of the at least one fraudulent coupon code. Appeal Br. 21–31 (Claims Appendix) (emphasis added). REJECTIONS ON APPEAL Claims 24–35 and 37–62 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Final Act. 6–8; Ans. 2–5. Claims 24–35 and 37–62 are rejected under 35 U.S.C. 103(a) as being unpatentable over Smith et al. (US 2005/0033643 A1, published Feb. 10, 2005) (hereinafter “Smith”), in view of Dai (US 2011/0191252 A1, published Aug. 4, 2011) (hereinafter “Dai”). Final Act. 9–24; Ans. 2–5. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Briefs. For the reasons discussed infra, we are persuaded by Appellant’s arguments that the Examiner erred in rejecting claims 24–35 and 37– 62 under 35 U.S.C. §§ 101 and 103(a). However, as also discussed infra, pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject claims 24–35 and 37– 62 under 35 U.S.C. § 101 as failing to recite patent-eligible subject matter. Appeal 2018-001562 Application 13/630,989 4 I. Rejection of Claims 24–35 and 37–62 under § 101 We have reviewed the Examiner’s rejection in light of Appellant’s arguments. For the reasons set forth below, we reverse the Examiner’s subject matter eligibility rejection. A. Principles of Law Patent eligibility is assessed under 35 U.S.C. § 101, which states that an invention is patent eligible if it claims a new and useful process, machine, manufacture, or composition of matter. 35 U.S.C. § 101. The U.S. Supreme Court has held that this statutory provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 215–17 (2014). But claiming the practical application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–73 (2012). In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that ‘“transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to “search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice Appeal 2018-001562 Application 13/630,989 5 amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The USPTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”). Under that guidance, we look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e. mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). B. Discussion Appellant argues that the Examiner erred in determining the claims are directed to an abstract idea, and therefore constitute patent-ineligible subject matter. Appeal Br. 10; Reply Brief 2 (hereinafter “Reply Br.”). Specifically, Appellant argues that the Examiner contended that the claims recite an abstract idea, but the Examiner did not disclose what the contended abstract idea was. Id. Appellant argues that the claims are directed to a fraudulent coupon detection system, which detects and notifies of fraudulent coupons in near real time and Appeal 2018-001562 Application 13/630,989 6 during a purchase transaction, which addresses the technical problem of fraudulent coupon usage at a retail location. Appeal Br. 11–12; Reply Br. 2. Further, Appellant argues that the Examiner improperly distilled and characterized the claims as being directed to an abstract idea, while failing to consider all the claim limitations to find that the claims are “substantially more” than an abstract idea. Appeal Br. 14–15; Reply Br. 2. In the Final Action, the Examiner determined that claims 24–35 and 37–62 are not patent-eligible subject matter because, under the broadest reasonable interpretation, the claims do nothing more than collect, store, compare, and display data for the purposes of executing an abstract idea. Final Act. 6–8; Ans. 2. The Examiner explained that viewing the claims as a whole, the “claims simply recite the concept of comparing data in a manner insufficient to overcome the above abstraction test.” Final Act. 7–8; Ans. 3. The Examiner further explained that the remaining elements comprise only a generic computer performing generic computer functions that do not impose meaningful limits on the claimed invention, such as improving technology or a technical field. Final Act. 8; Ans. 3. We are persuaded that the Examiner erred in determining that the claims are directed to patent-ineligible subject matter. According to the Guidance, the first inquiry when determining patent eligibility is looking to whether the claim recites any judicial exception. The Examiner states that the claims recite limitations that are for the purpose of executing an abstract idea, but does not state what abstract idea is recited in the claims in order to determine whether the claims recite a judicial exception. The fact that the claims purportedly analyze, compare, categorize, and display data does not direct us to what abstract idea the claims are so directed. See Final Act. 6–7; Ans. 2–3. Accordingly, we reverse the rejection of claims 24–35 and 37–62 under 35 U.S.C. § 101. Appeal 2018-001562 Application 13/630,989 7 II. Rejection of Claims 24–35 and 37–62 under § 103(a) As discussed above, claims 24–35 and 37–62 are rejected under 35 U.S.C. 103(a) as being unpatentable over Smith and Dai. Appellant argues that the combination of Smith and Dai fails to teach or suggest “a fraudulent coupon detection system that includes a POS processor being configured to receive the product identifier and send the product identifier code during the purchase transaction and in near real time, a fraudulent coupon detection processor being configured to compare the received product identifier code and send the at least one fraudulent coupon code during the purchase transaction and in near real time, as recited in independent Claim 24, and similarly recited in independent Claims 37, 47, and 55.” Appeal Br. 16–17; Reply Br. 3–4. Appellant also argues that in a prior art rejection, it is not sufficient that the prior art be capable of performing the recited functions, but rather the cited references must disclose the claimed subject matter. Appeal Br. 17; Reply Br. 4. Further, Appellant argues that the Examiner is ignoring the limitation “during the purchase transaction and in near real time” because the Examiner treated that limitation as an intended use. Appeal Br. 18; Reply Br. 4. Appellant further argues that the limitation “during the purchase transaction and in near real time” is not merely an intended use, but rather is “a specific recitation defining the programming and operation of the POS device processor.” Id. (emphasis omitted). Appellant further argues that the combination fails to teach or suggest “an alert when a fraudulent coupon is detected.” Appeal Br. 18. Appellant explains that Dai does not disclose anything about coupons and fails to disclose where or how the fraud alert is generated. Id. Similarly, Appellant argues that the motivation to combine Smith and Dai is improper because Dai has nothing to do Appeal 2018-001562 Application 13/630,989 8 with coupons or solving the technical problem of fraudulent coupon usage at a retail location. Id. at 19. Lastly, Appellant argues that the Examiner impermissibly relies on the specification as a roadmap. Id. The Examiner finds that Smith teaches “said POS processor configured to, during a purchase transaction and in near real time, receive a product identifier code via said input device, and send the product identifier code to said fraudulent coupon server via said communications network; said fraudulent coupon detection processor configured to, during the purchase transaction and in near real time, compare the received product identifier code to a plurality of fraudulent coupon identifiers in said fraudulent coupon memory . . . .” Final Act. 10–11 (citing Smith: Abstract, Figs. 1, 3, 5; ¶¶ 0006, 0029, 0030, 0038, 0043, 0044, 0055, 0057, 0073, 0086, 0089). The Examiner explains that the relied upon art discloses the necessary elements and systems to perform near real time validation of coupons at the POS via a query to a central database because Smith performs an occasional polling action of the remote database to verify coupon validity. Ans. 5. Further, the Examiner states that a “recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. Language that suggests or makes optional, but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation.” Id. at 5 (citing MPEP § 2114(II); Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987)). The Examiner finds that while Smith does not generate an alert when encountering a fraudulent coupon, Dai discloses a method of securing point of sale transaction that will generate an alert in real time when encountering a fraudulent coupon. Final Act. 11, 15, 19, 22 (citing Dai ¶ 0036). The Examiner explains that Appeal 2018-001562 Application 13/630,989 9 one of ordinary skill in the art would have found it obvious to combine the prior art of record because the elements perform the same functions as they did separately. Final Act. 11–12, 15, 19, 22 (citing KSR v. Teleflex, 550 U.S. 398 (2007)). Further, the Examiner explains that “[i]n the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.” Id. We are persuaded by Appellant’s arguments that the Examiner erred. First, we agree with Appellant’s argument that the combination of Smith and Dai does not teach or suggest “said POS processor configured to, during a purchase transaction and in near real time, receive a product identifier code via said input device, and send the product identifier code to said fraudulent coupon server via said communications network; said fraudulent coupon detection processor configured to, during the purchase transaction and in near real time, compare the received product identifier code to a plurality of fraudulent coupon identifiers in said fraudulent coupon memory” because the combination does not teach or suggest that the validation occurs “during a purchase transaction and in near real time.” As Appellant argues, and we agree, the Examiner improperly treats the limitation of “during a purchase transaction and in near real time” as an intended use and does not give it patentable weight. The Examiner should have considered how and whether the processor specifically operates to make the fraudulent coupon decision during the purchase transaction. Finding that neither Smith nor Dai teaches that the fraudulent coupon detection is determined during the purchase transaction and in near real time, the combination of Smith and Dai does not render claims 24–35 and 37–62 obvious. Appeal 2018-001562 Application 13/630,989 10 Second, we agree with Appellant that Dai is not analogous art as it does not teach coupons or even go to solving the same technical problem. Appeal Br. 17– 18. Dai involves a point of sale system and aims to make it secure, yet it does not involve securing coupons. As Appellant argues, and we agree, the paragraph cited by the Examiner fails to teach where or how the fraud alert is generated based on a mismatch of coupons or anything equivalent to what occurs in Smith. Id. Thus, we do not sustain the Examiner’s rejection of claims 24–35 and 37–62 under § 103(a). NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Claims 24–35 and 37–62 are rejected under 35 U.S.C. § 101 as failing to recite patent-eligible subject matter. A. Principles of Law As discussed above, under the Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Guidance (“Step 2A, Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Step 2A, Prong Two”). See Guidance, 84 Fed. Reg. at 51, 54. The Guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human behavior such as fundamental economic practices, and (3) mental processes. See id. at 52. If the claim is directed to an abstract idea, as above, we then determine whether the claim has an inventive concept. See id. at 56 (“Step 2B”). The Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional Appeal 2018-001562 Application 13/630,989 11 activities previously known to the industry, specified at a high level of generality.” Id. B. Independent Claims 24, 37, 47, and 55 1. Step 2A, Prong One Accordingly, under the first step of Alice, we determine that claims 24 and 37 recite a machine, claim 47 recites a process, and claim 55 recites an article of manufacture. Therefore, the claims are directed to statutory subject matter, at least facially. The claims then must be analyzed to determine if the claims are directed to a judicial exception. Taking claim 24 to be representative,2 claim 24 recites the following limitations: during a purchase transaction and in near real time, receive a product identifier code, send the product identifier code, compare the received product identifier code to a plurality of fraudulent coupon identifiers, the plurality of fraudulent coupon identifiers being associated with a plurality of fraudulent coupons for the product identifier code, and send at least one fraudulent coupon code corresponding to respective ones of the plurality of fraudulent coupons … based upon a match between the product code and a given one of the plurality of fraudulent coupon identifiers, and generate an alert … based upon receipt of the at least one fraudulent coupon code. These limitations, under their broadest reasonable interpretation, recite the mental process of comparing coupon data because the limitations include an observation, an evaluation, and judgment by receiving data, sending the data, and comparing the data to determine whether a match exists. 2 Appellant groups claims 24–35 and 37–62, all of which recite limitations commensurate in scope, together for argument, and we choose claim 24 as representative. 37 C.F.R. § 41.37(c)(iv). Appeal 2018-001562 Application 13/630,989 12 Further, these limitations, under their broadest reasonable interpretation, recite detection of fraudulent coupons, which is a certain method of organizing human behavior because the claim limitations recite commercial or legal interactions (including agreements in the form of contracts; legal obligations; marketing or sales activities or behaviors; business relations). Independent claims 37, 47, and 55 recite similar limitations as claim 24, and as such, fall within the same identified groupings of abstract ideas. Thus claims 24, 37, 47, and 55 recite an abstract idea. 2. Step 2A, Prong Two Having determined that the claims recite a judicial exception, our analysis under the Guidance turns now to determining whether there are “additional elements that integrate the judicial exception into a practical application.” See MPEP § 2106.05(a)–(c), (e)–(h). For example, limitations that are indicative of “integration into a practical application” include: 1) Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP § 2106.05(a); 2) Applying the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b); 3) Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP § 2106.05(c); and 4) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP § 2106.05(e). In contrast, limitations that are not indicative of “integration into a practical application” include: 1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP § 2106.05(f); Appeal 2018-001562 Application 13/630,989 13 2) Adding insignificant extra-solution activity to the judicial exception - see MPEP § 2106.05(g); and 3) Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP § 2106.05(h). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). As an initial matter, we note that the claimed concepts of obtaining, comparing, sending, and generating an alert reflect the types of extra-solution activity (i.e., in addition to the judicial exception) the courts have determined insufficient to transform judicially excepted subject matter into a patent-eligible application. MPEP § 2106.05(g); 84 Fed. Reg. at 55, 55 n.31; see also Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that “storing, retrieving, and providing data . . . are inconsequential data gathering and insignificant post solution activity); Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (explaining that “selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes”). Appellant’s independent claim 24 recites various computer-related limitations, including “a fraudulent coupon detection system,” “a fraudulent coupon detection server,” “a fraudulent coupon detection processor,” “a fraudulent coupon memory,” “a communications network,” “a point of sale device,” “a POS processor,” “a POS memory,” “a display,” and “an input device.” While independent claims 37, 47, and 55 recite similar computer-related limitations, claim 55 further recites a “non-transitory computer readable medium comprising computer executable instructions that when executed by a processor cause the processor to perform operations in near real time.” Although these computer- related limitations are not wholly generic in nature and are specific to a retail Appeal 2018-001562 Application 13/630,989 14 environment, they are described at a high level in the Specification without any meaningful detail about their structure or configuration. See e.g., Spec. 25:19– 26:18 (“Turning to Figure 12, Figure 12 illustrates an example hardware diagram of a 20 general purpose computer 1200, according to certain exemplary embodiments of the present invention”). Appellant’s description of the hardware used in the claims is that the hardware is a general purpose computer. But a general purpose computer that merely executes the judicial exception is not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014), cited in MPEP § 2106.05(b). As such, we do not find the computer- related limitations are sufficient to integrate the judicial exception into a practical application. Similarly, the claims are simply using the computer-related limitations as a tool to execute the abstract idea. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016), cited in MPEP § 2106.05(f). While the additional computer- related limitations may perform the coupon validation faster than a human could, using a computer to achieve a solution more quickly may not be sufficient to show an improvement to computer technology. See Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also MPEP § 2106.05(a)(II) (instructing examiners that a “commonplace business method being applied on a general purpose computer” may not be sufficient to show an improvement). Here, representative claim 24 broadly detects fraudulent coupons without any particular technical improvement to how the processor carries out these operations. In this way, the recited computer-related limitations are merely used to perform calculations that, for the reasons discussed above, can practically be performed in the mind. For all these reasons, the claims do not use the computer-related Appeal 2018-001562 Application 13/630,989 15 limitations in a way that indicates that the judicial exception has been integrated into a practical application. Therefore, independent claims 24, 37, 47, and 55 are “directed to” an abstract idea. 3. Step 2B If the claims are “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (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. To determine whether a claim provides an inventive concept, the additional elements are considered-individually and in combination-to determine whether they (1) add a specific limitation beyond the judicial exception that is not “well- understood, routine, conventional” in the field or (2) simply append well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate our conclusions about the additional elements discussed in the previous step. Id. The additional elements in representative claim 24 do not (1) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field and (2) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. We see nothing in the subject matter of Appeal 2018-001562 Application 13/630,989 16 these claims that transforms the claimed mental processes or human activity into an inventive concept. As discussed supra, claims 24, 37, 47, and 55 recite nothing more than the abstract steps necessary to process coupon data. None of the limitations of the claims at issue, viewed “both individually and ‘as an ordered combination,”’ transform the nature of the claims into patent-eligible subject matter. Id. (quoting Mayo, 566 U.S. at 79). Instead, all of the limitations of these claims are directed to well-understood, routine, conventional activities. As explained above, the recitations of additional elements are described in the specification at a high level of generality. The specification specifically explains that the computer-related limitations are components of a general purpose computer, which are well-understood, routine, and conventional in the field. See Spec. 25:19–26:18. Therefore the additional elements in independent claims 24, 37, 47, and 55 do not amount to significantly more than the judicial exception. C. Dependent Claims 25–35, 38–46, 48–54, and 56–62 We have also reviewed dependent claims 25–35, 38–46, 48–54, and 56–62, and we do not see anything in those claims that transforms the patent-ineligible concept of comparing coupon data or detecting fraudulent coupons to a patent- eligible concept. While dependent claim 35, for example, defines the input device as an optical scanner, that optical scanner is not described in the Specification other than how a product is scanned at the POS device. Therefore, the additional element is used a tool to execute the abstract idea and does not integrate the abstract idea into a practical application. Furthermore, the claims use of the optical scanner simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception and thus does not amount to significantly more than the judicial Appeal 2018-001562 Application 13/630,989 17 exception. Accordingly, we determine that claims 24–35 and 37–62 fail to recite patent-eligible subject matter under 35 U.S.C. § 101. DECISION We reverse the Examiner’s rejection of claims 24–35 and 37–62 under 35 U.S.C. §§ 101 and 103(a). We newly reject claims 24–35 and 37–62 under 35 U.S.C. § 101. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2018-001562 Application 13/630,989 18 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). See 37 C.F.R. § 1.136(a)(1)(iv). In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 24–35 and 37–62 101 Patent-eligible subject matter 24–35 and 37–62 24–35 and 37–62 24–35 and 37–62 103(a) Smith, Dai 24–35 and 37–62 Overall Outcome 24–35 and 37–62 24–35 and 37–62 REVERSED 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation