Mohammad Khan et al.

Patent Trials and Appeals Board

Oct 16, 2020

13069322 - (D) (P.T.A.B. Oct. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/069,322 03/22/2011 Mohammad Khan 1615/44/2 9906
25297 7590 10/16/2020
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
datcheson@jwth.com
usptomail@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOHAMMAD KHAN and ROSHAN VIJAYSHANKAR
____________

Appeal 2020-000935
Application 13/069,322
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–7, 14–17, and 22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed May 6, 2019) and Reply Brief (“Reply Br.,” filed November 19, 2019),
and the Examiner’s Answer (“Ans.,” mailed September 19, 2019), Advisory
Action (“Adv. Act.,” mailed February 11, 2019), and Final Office Action
(“Final Act.,” mailed November 2, 2018). Appellant identifies Mastercard
International Incorporated as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The claimed invention “relates generally to tracking electronic
certificates” and, more particularly, to “methods, systems, and computer
readable media for tracking redeemed electronic certificate and consumer
data associated with a mobile device” (Spec. 1:13–17).
Claims 1, 14, and 22 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for utilizing redemption tracking data, the
method comprising:
[(a)] receiving, by a wireless device reader from a mobile
device initiating a purchase transaction via a contactless tap or
proximity interfacing, electronic certificate data and consumer
identification data, wherein the electronic certificate data
includes location information associated with a smart poster
from which the electronic certificate data was obtained by the
mobile device and time information indicating when the
electronic certificate data was acquired from the smart poster by
the mobile device;
[(b)] providing, by a point of sale (POS) system terminal
associated with the wireless device reader, the electronic
certificate data and purchase transaction information associated
with the purchase transaction to a back end server;
[(c)] validating, by the back end server, the electronic
certificate data;
[(d)] redeeming, by the back end server, the validated
electronic certificate data;
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[(e)] generating, by the back end server, adjusted
purchase transaction information and redemption tracking data
using the redeemed electronic certificate data and consumer
identification data, wherein the redemption tracking data
includes at least the consumer identification data and both the
time information and the location information associated with
the smart poster and wherein the adjusted purchase transaction
information reflects an adjustment of the purchase transaction
information based on the redeemed electronic certificate data;
[(f)] sending, by the back end server, the adjusted
purchase transaction information and the redemption tracking
data to the POS system terminal;
[(g)] finalizing, by the POS system terminal, the
purchase transaction using the adjusted purchase transaction
information received from the back end server;
[(h)] providing, by the wireless device reader, the
redemption tracking data to the mobile device, wherein the
mobile device utilizes the redemption tracking data to delete
electronic coupons on the mobile device; and
[(i)] wirelessly communicating, by the mobile device,
the redemption tracking data to a service provider server.
REJECTIONS
Claims 1–7, 14–17, and 22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1–7, 14–17, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Michaelis (US 2008/0262928 A1, published Oct. 23,
2008), Head et al. (US 2008/0010114 A1, published Jan. 10, 2008)
(“Head”), and Byerley et al. (US 2009/0036103 A1, published Feb. 5, 2009)
(“Byerley”).
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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 9–12).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, 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 Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “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). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “coupon redemption (a basic
economic practice)” and, therefore, to an abstract idea similar to other
concepts that courts have held abstract (Final Act. 3–4). The Examiner also
determined that the claims do not include additional elements or a
combination of elements sufficient to amount to significantly more than the
abstract idea itself (id. at 4–8).
After the Final Office Action was mailed, but before Appellant filed
its Appeal Brief, the U.S. Patent and Trademark Office (the “USPTO”)
published revised guidance on January 7, 2019 for use by USPTO personnel
in evaluating subject matter eligibility under 35 U.S.C. § 101.
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). 2 That
guidance revised the USPTO’s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) “[p]roviding groupings of
subject matter that [are] considered an abstract idea”; and (2) clarifying that
a claim is not “directed to” a judicial exception if the judicial exception is
integrated into a practical application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
The 2019 Revised Guidance, by its terms, applies to all applications,
and to all patents resulting from applications, filed before, on, or after
January 7, 2019. Id.,
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded here that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
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that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification (including the claim language) that claim 1 focuses on an
abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification is titled “METHODS, SYSTEMS, AND
COMPUTER READABLE MEDIA FOR TRACKING REDEEMED
ELECTRONIC CERTIFICATE AND CONSUMER DATA ASSOCIATED
WITH A MOBILE DEVICE,” and describes, in Background section, that
the use of short distance radio frequency enabled devices, e.g., near field
communications (“NFC”) mobile handsets, is steadily increasing, and has
allowed users of mobile phones and contactless cards to more readily
participate in loyalty and membership programs, and redeem electronic
coupons, offers, or rewards (Spec. 1:20–2:1). “Due to the increasing ease of
participating in these types of programs, there is a strong desire by
manufacturers and retailers to track electronic certificates . . . and consumer
data through contactless and NFC redemption schemes in order to
understand the purchasing behavior of consumers” (id. at 2:1–6). However,
the Specification describes that existing methods of certificate collection are
based on manually interviewing respondents, which is a costly, slow, and
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error-prone process; additionally, because cash transactions are not recorded
by current marketing databases, it is difficult to track the buying habits of
consumers in physical stores on a national level (id. at 2:9–14). Therefore,
according to the Specification, “a need exists for improved methods,
systems, and computer readable media for tracking redeemed electronic
certificate and consumer data associated with a mobile device” (id.
at 2:15–17).
The claimed invention is ostensibly intended to address this need by
providing a certificate and consumer data collection system for tracking
redeemed electronic certificate and consumer identification data. Claim 1,
thus, recites a method for utilizing redemption tracking data comprising:
(1) receiving, by a wireless device reader, associated with a point of sale
(“POS”) system, from a mobile device initiating a purchase transaction,
electronic certificate data, including the time and location from which the
electronic certificate data were obtained, and consumer identification data,
i.e.,
receiving, by a wireless device reader from a mobile
device initiating a purchase transaction via a contactless tap or
proximity interfacing, electronic certificate data and consumer
identification data, wherein the electronic certificate data
includes location information associated with a smart poster
from which the electronic certificate data was obtained by the
mobile device and time information indicating when the
electronic certificate data was acquired from the smart poster by
the mobile device
(step (a)); (2) providing the electronic certificate data and purchase
transaction information to a back end server, i.e., “providing, by a point of
sale (POS) system terminal associated with the wireless device reader, the
electronic certificate data and purchase transaction information associated
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with the purchase transaction to a back end server” (step (b)); (3) validating
and redeeming the validated electronic certificate data at the back end
server, i.e., “validating, by the back end server, the electronic certificate
data” and “redeeming, by the back end server, the validated electronic
certificate data” (steps (c) and (d)); (4) generating, by the back end server,
adjusted purchase transaction information and redemption tracking data,
including the customer identification data and the time and location
information, and sending the adjusted purchase transaction information and
redemption tracking data to the POS system terminal, i.e.,
generating, by the back end server, adjusted purchase
transaction information and redemption tracking data using the
redeemed electronic certificate data and consumer identification
data, wherein the redemption tracking data includes at least the
consumer identification data and both the time information and
the location information associated with the smart poster and
wherein the adjusted purchase transaction information reflects an
adjustment of the purchase transaction information based on the
redeemed electronic certificate data; [and]
sending, by the back end server, the adjusted purchase
transaction information and the redemption tracking data to the
POS system terminal
(steps (e) and (f)); (5) “finalizing, by the POS system terminal, the purchase
transaction using the adjusted purchase transaction information received
from the back end server” (step (g)); (6) “providing, by the wireless device
reader, the redemption tracking data to the mobile device, wherein the
mobile device utilizes the redemption tracking data to delete electronic
coupons on the mobile device” (step (h)); and (7) “wirelessly
communicating, by the mobile device, the redemption tracking data to a
service provider server” (step (i)).
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We agree with the Examiner that these limitations, when given their
broadest reasonable interpretation, recite “redeeming a coupon” i.e., a
fundamental economic practice, which is one of “certain methods of
organizing human activity” identified in the 2019 Revised Guidance and,
therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Quoting from page 4 of the Final Office Action, Appellant asserts,
“[i]n the above-quoted passages, the office action indicated that the claims
are abstract because that [sic] the claims could be performed by a human”
(Appeal Br. 9–10). And Appellant ostensibly maintains that claim 1 does
not recite an abstract idea because “the claim recites steps that cannot be
performed by a human, at least not without the assistance of specialized
computing equipment” (id. at 10).
It does not appear to us that the Examiner relied on that theory in
reaching the Examiner’s patent eligibility determination. Nonetheless, the
law is clear that “not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). Accordingly, the inability
of a human to “perform each claim step does not alone confer patentability.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).
Appellant further argues that even if claim 1 recites an abstract idea,
the claim is not “directed to” an abstract idea because the wireless device
reader, mobile device, POS system terminal, and/or backend server recited
in the claim “collectively provide a specific architecture that integrates the
alleged abstract idea into a practical application” (Appeal Br. 11). Appellant
maintains that “the claimed recitation of the interactions between the mobile
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device, the wireless device reader, the POS system terminal, and the back
end server affords a specific arrangement or architecture that is ‘more than a
mere drafting effort designed to monopolize the abstract idea’ and
constitutes a practical application” (id.). But, we fail to see how, and
Appellant does not explain adequately how, claim 1 integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.
The 2019 Revised Guidance references MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in non-
exhaustively listing considerations indicative that an additional element or
combination of elements may have integrated the recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
The Guidance, thus, describes, for example, that an additional element may
have integrated the judicial exception into a practical application if the
additional element (1) reflects an improvement in the functioning of a
computer or an improvement to other technology or technical field;
(2) implements the judicial exception with, or uses the judicial exception
with, a particular machine or manufacture integral to the claim; or (3) effects
a transformation or reduction of an article to a different state or thing. Id.;
see also MPEP § 2106.04(d)(I). At the same time, the Guidance makes clear
that merely including instructions to implement an abstract idea on a
computer, or merely using a computer as a tool to perform an abstract idea;
adding insignificant extra-solution activity to the judicial exception; or only
generally linking the use of the judicial exception to a particular
technological environment or field are not sufficient to integrate the judicial
exception into a practical application. Id.
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Appellant asserts here, as described above, that the combination of the
wireless device reader, mobile device, POS system terminal, and/or backend
server provide a specific architecture that integrates the alleged abstract idea
into a practical application. Yet, we find no indication, for example, in the
Specification, nor, for that matter, does Appellant direct us to any indication,
that the operations recited in claim 1 require any specialized computer
hardware or inventive computer components, i.e., a particular machine;
require any specialized, non-generic arrangement or combination of known
components; or invoke any allegedly inventive programming. We also find
no indication in the Specification that the claimed invention effects a
transformation or reduction of a particular article to a different state or thing.
Nor do we find anything of record that attributes an improvement in
technology and/or a technical field to the claimed invention. Instead,
claim 1 appears to involve, at best, merely using generic computer
components as tools to perform an abstract idea, i.e., coupon redemption and
tracking, which, as described above, is not sufficient to integrate the recited
abstract idea into a practical application. See 2019 Revised Guidance,
84 Fed. Reg. at 55. See also DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
Responding to the Examiner’s Answer, Appellant ostensibly
maintains that the recited wireless device reader, mobile device, POS system
terminal, and back end server integrate the abstract idea into a practical
application because “the independent claims require that these recited
elements be utilized to conduct the claimed subject matter” (Reply Br. 3).
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Yet, that without more is insufficient for patent eligibility where, as here,
there is no indication that these elements are anything other than generic
computer components used in their normal, routine, and expected manner to
receive, store, transmit, and process information.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 integrates the recited abstract idea into a
practical application because “[A]ppellant is not attempting to acquire a
monopoly on an abstract idea” (Reply Br. 3). Although the Supreme Court
has described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
claim does not include additional elements or a combination of elements that
integrates the abstract idea into a practical application. Accordingly, we
agree with the Examiner that claim 1 is directed to an abstract idea.
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Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant argues here that claim 1 recites “additional elements that
are significantly more than the recited judicial exception” because the
additional elements recited in the claim are “unconventional in combination”
(Appeal Br. 11). In this regard, Appellant asserts that “each of the
independent claims presents a combination of steps of generating adjusted
purchase transaction information and provisioning related redemption
tracking data to a mobile device in an unconventional way” (id.). Thus,
according to Appellant, although each step may arguably use conventional
technologies, the claimed subject matter nonetheless combines them in an
unconventional way, e.g.,
information [is] obtained by wireless device reader from smart
poster via a mobile device, said information [is] provided to a
POS system terminal [and from there] to a back end server,
which in turn processes the data that is subsequently provided
to the POS system terminal; the POS system terminal uses data
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to finalize a purchase transaction and provides related
redemption tracking data to the mobile device
(id.).
Appellant’s argument is not persuasive at least because the limitations
that Appellant identifies as the inventive concept, i.e., steps (a) through (h)
recited in claim 1, are part of the abstract idea; they are not additional
elements to be considered in determining whether claim 1 includes
additional elements or a combination of elements sufficient to amount to
significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
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invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
The Examiner determined here, and we agree, that the only claim
elements recited in claim 1 beyond the abstract idea are a “wireless device
reader”; a “mobile device”; a “POS system terminal”; and a “back end
server,” i.e., generic computer components used to perform generic
computer functions (Ans. 5) — a determination amply supported by, and
fully consistent with the Specification (see, e.g., Spec. 4–5, 8).3 Appellant
cannot reasonably maintain that there is insufficient factual support for the
Examiner’s determination that the operation of these components is well-
understood, routine, or conventional, where, as here, there is nothing in the
Specification to indicate that the operations recited in claim 1 require any
specialized hardware or inventive computer components or that the claimed
invention is implemented using other than a generic computer component to
perform generic computer functions, e.g., receiving, transmitting, and
processing information. Indeed, the Federal Circuit, in accordance with
Alice, has “repeatedly recognized the absence of a genuine dispute as to

3 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer, 890 F.3d at 1373 (Moore, J., concurring)
(internal citations omitted); see also BSG Tech, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
court did not err in determining that the asserted claims lack an inventive
concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–7, 14–17, and 22,
which fall with claim 1.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 14, and 22 under 35 U.S.C. § 103(a) at least
because Michaelis, on which the Examiner relies (see Final Act. 10–11
(citing Michaelis ¶¶ 118–124)), fails to disclose or suggest a back end server
that “i) generates adjusted purchase transaction information and redemption
tracking data using redeemed electronic certificate data and consumer
identification data” and “ii) sends the adjusted purchase transaction
information and redemption tracking data to the POS system terminal,” as
recited in limitations (e) and (f) of claim 1, and similarly recited in
independent claims 14 and 22 (Appeal Br. 12).
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Michaelis is directed to a method and system for distributing and
personalizing electronic coupons (“E-Coupons”), and describes that the
distributed E-Coupons may be used to receive discounts at a merchant
physical location or Internet site (Michaelis Abstract). In paragraphs 118
through 124, cited by the Examiner, Michaelis discloses a method, with
reference to Figure 14, for redeeming E-Coupons transmitted from a mobile
device to a coupon redemption terminal — a process that depends on
whether or not the coupon has been authenticated using a cryptographic or
digital signature.
There, Michaelis discloses that if the E-Coupon is not signed, the
coupon redemption terminal transmits the E-Coupon to an E-Coupon
Manager, which determines the E-Coupon’s validity status, including
whether its ID corresponds to an issued coupon and whether the coupon has
already been redeemed (Michaelis ¶ 118). If the E-Coupon ID corresponds
to an issued coupon that has not been redeemed, the E-Coupon Manager
transmits corresponding E-Coupon data (e.g., information about the
discounted merchandise, expiration dates, coupon value, applicable stores,
and any other information required for processing the E-Coupon) to the
coupon redemption terminal (id. ¶ 119); upon receiving the E-Coupon data,
the coupon redemption terminal provides the discount information to the
payment terminal, which applies the coupon discount to the consumer’s
purchase (id. ¶ 120).
Alternatively, if the E-Coupon received from the mobile device is
signed, indicating that the mobile device has the capability to secure the
E-Coupon data, the coupon redemption terminal treats the received
information as a redeemable E-Coupon and passes the discount information
Appeal 2020-000935
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19
to the payment terminal (Michaelis ¶ 123). The payment terminal then
applies the discount to the purchase transaction (id.).
The Examiner equates the E-Coupon Manager to the claimed back
end server (Final Act. 10) and equates the E-Coupon data to the claimed
“adjusted purchase transaction information” (id. at 11; see also Ans. 7). But,
as Appellant observes, “the independent claims specifically recite that ‘the
adjusted purchase transaction information reflects an adjustment of the
purchase transaction information based on the redeemed electronic
certificate data’ and that the adjusted purchase transaction information is
generated by the back end server” (Appeal Br. 13). Michaelis, on the other
hand, discloses that the E-Coupon Manager transmits E-Coupon data to the
coupon redemption terminal 1304 for processing and that the E-Coupon
data, including discount information, are provided to the payment terminal,
which applies the coupon discount to the consumer’s purchase. In other
words, Michaelis discloses that a payment terminal, located at the point-of-
sale, adjusts the payment transaction information — a component that
Appellant argues, and we agree, is “not the same as a back end server (which
is separate/distinct from the recited wireless device reader and the point of
sale system terminal) that adjusts the purchase transaction information as
recited in the independent claims” (id.).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 14, and 22. For the same reasons, we also do not
sustain the rejection of dependent claims 2–7 and 15–17. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if
the independent claims from which they depend are nonobvious”).
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Application 13/069,322

20
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 14–
17, 22
101 Eligibility 1–7, 14–17,
22

1–7, 14–
17, 22
103(a) Michaelis, Head,
Byerley
1–7, 14–17,
22
Overall
Outcome
1–7, 14–17,
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED