Michael Thomas. Georgoff et al.

Patent Trials and Appeals Board

Aug 9, 2019

14517195 - (D) (P.T.A.B. Aug. 9, 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.
14/517,195 10/17/2014 Michael Thomas Georgoff 034250-0437048 3018
909 7590 08/09/2019
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
LONG, MEREDITH A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/09/2019 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL THOMAS GEORGOFF,
BRIAN KEITH SHOWERS, and
SCOTT JASON THRONDSON1
__________________

Appeal 2018-006742
Application 14/517,195
Technology Center 3600
____________________

Before DANIEL S. SONG, CHARLES N. GREENHUT, and JAMES P.
CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–10 in an Office Action mailed June 7, 2017.
See Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 RetailMeNot, Inc. is identified as the real party in interest and also is the
Applicant pursuant to 37 C.F.R. § 1.46. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. An affiliate-network system configured to act as an
intermediary between merchants issuing coupons or other offers
and online publishers promoting the offers to consumers, the
affiliate-network system being configured to distribute and
track usage of both on-line offers and in-store offers, the system
comprising:
one or more processors;
non-transitory tangible computer-readable memory
storing instructions that when executed by one or more of the
one or more processors effectuate operations comprising:
obtaining a coupon issued by a merchant, the
coupon being redeemable both in-store, at a physical location of
the merchant, and online, at a website of the merchant, the
coupon being obtained as a digital record describing terms of
the coupon;
obtaining one or more merchant location
identifiers associated with the coupon, the merchant location
identifiers designating respective geographic areas where the
coupon is to be presented to consumers based on the consumers
indicating that they are located in the respective geographic
areas;
forming, for the coupon, for each of a plurality of
online coupon publishers, a coupon-and-publisher-specific
uniform resource identifier (URI) that uniquely identifies the
respective publisher and the coupon such that a plurality of
different coupon-and-publisher-specific URIs are formed for
the plurality of publishers;
sending the coupon, the merchant location
identifiers, and the coupon-and-publisher-specific URIs to
publishers for presentation to consumers by the publishers on
user devices of the consumers, wherein different coupon-and-
publisher-specific URIs, corresponding to the different
respective publishers, are sent to the different respective
publishers among the plurality of publishers;
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receiving a first one of the coupon-and-publisher-
specific URIs in a transport protocol first message from a first
user device of a first consumer;
accessing a first coupon display template
corresponding to a first publisher corresponding to the first one
of the coupon-and-publisher-specific URIs;
sending instructions to the first user device to
display a first presentation of the coupon that is customized
according to the accessed first coupon display template;
receiving, from the first user device, a selection of
an in-store redemption option and, in response effectuating
operations comprising:
based on having received the first one of the
coupon-and-publisher-specific URLs, attributing in memory an
in-store redemption of the coupon to the first publisher
corresponding to the first one of the coupon-and-publisher-
specific URIs, the attribution being associated with at least one
of the merchant location identifiers, and
sending the first consumer redemption data
documenting that the first consumer is in possession of the
coupon for in-store presentation to the merchant at a geographic
merchant location;
receiving a second, different one of the coupon-
and-publisher-specific URIs in a transport protocol second
message from a second user device of a second consumer;
accessing a second coupon display template
corresponding to a second publisher corresponding to the
second one of the coupon-and-publisher-specific URIs;
sending instructions to the second user device to
display a second presentation of the coupon that is customized
according to the accessed second coupon display template,
wherein the first presentation is visually different from the
second presentation such that the first and second presentations
are customized to distinguish the first and second publishers
even though the instructions to display the presentations being
sent from the same computer system and the presentations
being of the same coupon;
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receiving, from the second user device, a selection
of an online redemption option and, in response effectuating
operations comprising:
based on having received the second one of
the coupon-and-publisher-specific URIs, attributing in memory
an online redemption of the coupon to the second publisher
corresponding to the second one of the coupon-and-publisher-
specific URIs, and
sending a redirect command to the second
user device, the redirect command instructing the second user
device to automatically request and display webpage content
from a website of the merchant.

REJECTION2
Claims 1–10 are rejected as directed to patent-ineligible subject matter
under a judicial exception to 35 U.S.C. § 101.
ANALYSIS
Subject Matter Eligibility of Claims 1–10
Section 101 of the Patent Act defines the subject matter that is eligible
for patent protection. It provides that
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.

However, “[l]aws of nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (citation omitted).

2 Appellant’s Amendment and Response to Final Office Action Issued on 7
June 2017, filed September 7, 2017, cancelled claims 11–31 and overcame
all other pending rejections. See Adv. Action, mailed October 10, 2017.
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To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
as an ordered combination, to determine if additional elements transform the
claim into a patent eligible application, e.g., by providing an “inventive
concept” that ensures the patent amounts to significantly more than a patent
on the ineligible concept. Id. at 217–218.
Recently, the USPTO issued guidance about this framework. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”). Under the Revised Guidance, to determine
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim recites (1) any judicial exceptions, including certain groupings of
abstract ideas listed in the Revised Guidance (i.e., mathematical concepts,
certain methods of organizing human interactions 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)). See Revised Guidance, 84 Fed. Reg. at 51.
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. Id. at 56.
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Alice Step 1, Revised Step 2A, Prong One – Judicial Exceptions
Alice Step 1, Revised Step 2A, Prong One considers whether the
claims recite a judicial exception. Revised Guidance, 84 Fed. Reg. at 54.
The Examiner finds that claim 1 recites the concept of location-targeted
coupon distribution and affiliate reward method with affiliate customization
of coupon appearance. The Examiner determines this concept is an abstract
idea like collecting and analyzing information, displaying the results, and
delivering user-selected media content to portable devices. Final Act. 6–7.
We determine that claim 1 recites certain methods of organizing
human activity––commercial or legal interactions in the form of advertising,
marketing, or sales activities. Revised Guidance, 84 Fed. Reg. at 52. These
limitations include “obtaining a coupon issued by a merchant . . .,”
“obtaining one or more merchant location identifiers . . .,” “forming, for the
coupon, . . . a coupon-and-publisher-specific uniform resource identifier
(URI) . . ., “sending the coupon, the merchant location identifiers, and the
coupon-and-publisher-specific URIs to publishers for presentation to
consumers . . .,” “receiving a first/second . . . coupon-and-publisher specific
URIs . . . from a first/second user device of a first/second consumer,” and
accessing a first/second coupon display template, and “sending instructions
to the first/second user device to display . . . the coupon that is customized.”
These steps relate to commercial offers for sale, marketing, and
advertising methods that provide coupons to consumers for redemption on-
line or in-store. Spec. ¶¶ 2–5, 8, 28, 46, Figs. 7, 8. Offers are customized
for each publisher by an affiliate-network system, which presents the coupon
in response to a user’s request. Id. ¶¶ 68, 75, 78–80. The user’s device may
receive and display the customized offer content. Id. ¶¶ 81–86.
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Thus, claim 1 recites certain methods of organizing commercial
human activity or interactions in the form of advertising, marketing, or sales
activities, which are abstract ideas.
Alice Step 1, Revised Step 2A, Prong Two – Integration
Alice Step 1, Revised Step 2A, Prong Two analyzes whether a claim
recites additional elements that integrate the abstract ideas into a practical
application. Appellant argues that the claims are directed to limited rules
designed to achieve an improved technological result with a specific way of
targeting coupons by location that is rooted in computer technology that
solves a problem present in traditional affiliate network systems. Appeal Br.
4–6. Appellant also argues that claim 1 recites technical improvements that
combine publisher-and-offer-specific URIs with publisher-specific templates
to facilitate centralized tracking of customized offer distribution for both on-
line and off-line redemptions so merchants can track which publisher sent a
coupon to a user who redeems the coupon. Id. at 7–8. Appellant argues that
the decision in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) found a similar claim to be patent eligible where it involved
a third party “outsource provider” web server that directed a visitor to an
automatically-generated hybrid web page that combined the “look and feel”
of a host website with product information from a third-party merchant’s
website related to the clicked advertisement. Reply Br. 7; DDR Holdings,
773 F.3d at 1247. Appellant argues that the current claims, like the claims in
DDR, address the problems arising from trying to coordinate consistent
content across domains when a web browser navigates from one domain to
another. Appeal Br. 15.
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Applying the decision in DDR Holdings and the Revised Guidance,
we determine that claim 1 recites an improvement in computer functioning
and Internet technology. Revised Guidance, 84 Fed. Reg. at 55 n.25 (citing
DDR Holdings, 773 F.3d at 1258–59) and MPEP § 2106.05(a). As in DDR
Holdings, a consumer activates a coupon-and-publisher-specific URI in a
transport protocol message from a first user device to the affiliate-network
system (“out-source provider”), which provides a customized presentation of
the coupon according to a first coupon template that corresponds to a first
publisher (i.e., the publisher’s look and feel website branding, Spec. ¶¶ 80,
112) on the user device of that consumer. Appeal Br. 18–19 (Claims App.);
see DDR Holdings, 773 F.3d at 1257 (noting that a third party system stores
“visually perceptible elements” corresponding to host websites in a database
with each host website displaying a link associated with a product or service
and on activation of the link by a website visitor automatically identifies the
host and instructs an Internet web server of a third party out-source provider
to make and serve to the visitor a new, hybrid web page that merges content
for products of the third-party merchant with the stored “visually perceptible
elements” of the identified host website).
Like the out-source provider in DDR Holdings, the claimed affiliate-
network system merges content associated with a third-party merchant’s
product offered for sale via a coupon with a customized display template
corresponding to a first publisher whose website provides the coupon URI to
the consumer. The coupon uniquely identifies the respective publisher and
the coupon so the consumer’s redemption of the coupon can be tracked both
on-line and off-line. Appeal Br. 12, 15; Spec. ¶¶ 68, 76, 78, 90. The coupon
thus combines merchant content with a publisher’s branding as in DDR.
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Like the third party website in DDR Holdings, the affiliate-network
system provides to the consumer’s user device an automatically generated
coupon that combines the visual “look and feel” elements of the publisher’s
host website, which a consumer is visiting, with product information from a
third-party merchant. DDR Holdings, 773 F.3d at 1257. Thus, the consumer
perceives the coupon as part of the publisher’s website although the coupon
is provided by the third party affiliate-network system thereby building
brand loyalty to the publisher’s website while also advertising and marketing
products of a third-party merchant on the publisher’s website. See Appeal
Br. 15–16 (arguing that the customized URI and visual aspects of the offer
contents by publisher makes the affiliate-network system more desirable to
publishers who want to distinguish their brand from that of other publishers
while still providing a single, centralized system to provide offer content
interactively to consumers and track consumers on-line and off-line).
The Specification discloses that existing third party affiliates track
offers and credit publishers by relying on client side cookies that are placed
on a consumer’s device but cannot track the consumer’s redemption of the
coupon offer on a different device, a different account, or off-line. Spec.
¶ 90. The claimed affiliate-network system solves this technical problem by
creating a customized coupon for each merchant’s offer with a unique URI
and each publisher’s unique template (branding) and distributing the coupon
from a centralized server. Appeal Br. 7–8. Therefore, instead of consumers
receiving a merchant’s coupon offer from a publisher, consumers receive a
customized coupon from the affiliate-network with the merchant’s offer and
a unique URI that allows the affiliate-network to track the use of the coupon
on-line and off-line to credit the publisher who distributed it. Id. at 8–9.
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Just as the third party out-source provider in DDR Holdings created a
unique hybrid webpage that combined the content of a publisher’s website
with a merchant’s information for a product or service, the claimed affiliate-
network system creates a unique coupon that combines the “look and feel”
of the publisher’s website with information about a merchant’s product offer
and a unique URI (Internet address that includes the domain of the affiliate-
network system, publisher and merchant names, and offer identifier) that
directs a consumer to the affiliate-network to receive the customized coupon.
See Appeal Br. 14–16; Reply Br. 7; DDR Holdings, 773 F.3d at 1257–58;
Spec. ¶¶ 50, 68, 72, 76, 110.
We determine that claim 1 as a whole integrates the judicial exception
into a practical application in a manner similar to DDR Holdings by reciting
limitations that improve the functioning of computer and Internet technology
by directing users at a publisher’s website to the affiliate-network system to
receive a coupon with the publisher’s website branding and the merchant’s
offer and a unique URI that allows the affiliate-network to track the use of
the coupon on-line and off-line. Revised Guidance, 84 Fed. Reg. at 54–55.
Thus, we do not sustain the rejection of claim 1 or dependent claims 2–10.
DECISION
We reverse the rejection of claims 1–10 as directed to patent-
ineligible subject matter under a judicial exception to 35 U.S.C. § 101.
REVERSED