Mohammad Khan et al.Download PDFPatent Trials and Appeals BoardOct 16, 202013069322 - (D) (P.T.A.B. Oct. 16, 2020) 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. 13/069,322 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). Appeal 2020-000935 Application 13/069,322 2 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; Appeal 2020-000935 Application 13/069,322 3 [(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”). Appeal 2020-000935 Application 13/069,322 4 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 Appeal 2020-000935 Application 13/069,322 5 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. Appeal 2020-000935 Application 13/069,322 6 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 Appeal 2020-000935 Application 13/069,322 7 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 Appeal 2020-000935 Application 13/069,322 8 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 Appeal 2020-000935 Application 13/069,322 9 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)). Appeal 2020-000935 Application 13/069,322 10 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 Appeal 2020-000935 Application 13/069,322 11 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. Appeal 2020-000935 Application 13/069,322 12 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). Appeal 2020-000935 Application 13/069,322 13 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. Appeal 2020-000935 Application 13/069,322 14 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 Appeal 2020-000935 Application 13/069,322 15 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 Appeal 2020-000935 Application 13/069,322 16 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). Appeal 2020-000935 Application 13/069,322 17 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). Appeal 2020-000935 Application 13/069,322 18 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 Application 13/069,322 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”). Appeal 2020-000935 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 Copy with citationCopy as parenthetical citation