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Patent Trials and Appeals Board

Oct 18, 2019

13470664 - (D) (P.T.A.B. Oct. 18, 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.
13/470,664 05/14/2012 Peter GROARKE 0076412-000061 3464
21839 7590 10/18/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
FEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER GROARKE
Appeal 2019-000949
Application 13/470,664
Technology Center 3600
BEFORE JENNIFER L. McKEOWN, LINZY T. McCARTNEY, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–10, and 12–20. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Mastercard
International Incorporated. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to applying coupon rules to a financial
transaction. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for applying coupon rules to a financial transaction,
comprising:
storing, in a database of a processing server, a plurality of
coupon rules, wherein each coupon rule of the plurality of
coupon rules is associated with a consumer account and a
merchant and includes at least an amount modifier and a funding
account associated with a coupon funding provider;
receiving, by a receiving device of the processing server,
an authorization request for a financial transaction, wherein the
authorization request includes at least a consumer identifier, a
merchant identifier, and a transaction amount;
identifying, in the database of the processing server, two
or more of the plurality of coupon rules where the associated
consumer account corresponds to the consumer identifier and the
associated merchant corresponds to the merchant identifier;
transmitting, by the processing server to a consumer
mobile device, the two or more of the plurality of coupon rules
identified for display on the consumer mobile device;
modifying, by the processing server, the financial
transaction based on the two or more of the plurality of coupon
rules wherein modifying the financial transaction includes at
least modifying the transaction amount based on the amount
modifier of each of the two or more of the plurality of coupon
rules and splitting the financial transaction into a first financial
transaction including a first charge amount and a second
financial transaction including a second charge amount, wherein
the first charge amount is the modified transaction amount and is
charged to the consumer account based on the consumer
identifier and the second charge amount is a sum of an amount
deducted by the two or more of the plurality of coupon rules and
is charged to the funding account associated with the coupon
funding provider;
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transmitting, by a transmitting device of the processing
server, a reply to the authorization request, the reply to the
authorization request including at least the modified transaction
amount;
transmitting, by the transmitting device of the processing
server, a credit transaction to the coupon funding provider, the
credit transaction including at least the second charge amount;
and
receiving, by the consumer mobile device, coupon rule
details identifying the two or more of the plurality of coupon
rules applied to the financial transaction after the credit
transaction is approved;
wherein the transmitting of the reply to the authorization
request and the credit transaction occur contemporaneously.
REFERENCES
The prior art relied upon by the Examiner is:
Hammad et al.
White et al.
Cervenka et al.
US 2005/0071227 A1
US 2008/0133351 A1
US 2011/0047019 A1
Mar. 31, 2005
June 5, 2008
Feb. 24, 2011

REJECTIONS
The Examiner rejected claims 1, 3–10, and 12–20 under
35 U.S.C. § 101.
The Examiner rejected claims 1, 3–10, and 12–20 under
35 U.S.C. § 103(a) as being unpatentable over White, Hammad, and
Cervenka.
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OPINION
Section 101 Rejection
CONTENTIONS AND ANALYSIS
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187, 187; see also id. at 191
(“We view respondents’ claims as nothing more than a process for molding
rubber products and not as an attempt to patent a mathematical formula.”).
Having said that, the Supreme Court also indicated that a claim “seeking
patent protection for that formula in the abstract . . . is not accorded the
protection of our patent laws, . . . and this principle cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
If the claim is “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 (citation 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. (alterations in original) (quoting Mayo,
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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.
The U.S. Patent and Trademark Office (“USPTO”) recently published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under that Revised Guidance, we first 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 MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
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 Revised Guidance.
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Abstract Idea
For the following reasons, we conclude the claims recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52, 53 (listing
“[c]ertain methods of organizing human activity—fundamental economic
principles or practices” as one of the “enumerated groupings of abstract
ideas”).
Appellant addresses the claims as a group, and we treat claim 1 as
representative. The claim is directed to an abstract idea because it is directed
to a fundamental economic practice, which is one of certain methods of
organizing human activity, as discussed below. The steps of claim 1,
including, with italics,
storing, in a database of a processing server, a plurality of
coupon rules, wherein each coupon rule of the plurality of
coupon rules is associated with a consumer account and a
merchant and includes at least an amount modifier and a funding
account associated with a coupon funding provider;
receiving, by a receiving device of the processing server,
an authorization request for a financial transaction, wherein the
authorization request includes at least a consumer identifier, a
merchant identifier, and a transaction amount;
identifying, in the database of the processing server, two
or more of the plurality of coupon rules where the associated
consumer account corresponds to the consumer identifier and
the associated merchant corresponds to the merchant identifier;
transmitting, by the processing server to a consumer
mobile device, the two or more of the plurality of coupon rules
identified for display on the consumer mobile device;
modifying, by the processing server, the financial
transaction based on the two or more of the plurality of coupon
rules wherein modifying the financial transaction includes at
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least modifying the transaction amount based on the amount
modifier of each of the two or more of the plurality of coupon
rules and splitting the financial transaction into a first financial
transaction including a first charge amount and a second
financial transaction including a second charge amount,
wherein the first charge amount is the modified transaction
amount and is charged to the consumer account based on the
consumer identifier and the second charge amount is a sum of an
amount deducted by the two or more of the plurality of coupon
rules and is charged to the funding account associated with the
coupon funding provider;
transmitting, by a transmitting device of the processing
server, a reply to the authorization request, the reply to the
authorization request including at least the modified transaction
amount;
transmitting, by the transmitting device of the processing
server, a credit transaction to the coupon funding provider, the
credit transaction including at least the second charge amount;
and
receiving, by the consumer mobile device, coupon rule
details identifying the two or more of the plurality of coupon
rules applied to the financial transaction after the credit
transaction is approved;
wherein the transmitting of the reply to the authorization
request and the credit transaction occur contemporaneously
recite steps of applying coupon rules to a financial transaction.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices, such as the concept of intermediated settlement in Alice,
and the concept of hedging in Bilski. Like those concepts, claim 1 also
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recites a fundamental economic practice. Specifically, the italicized steps
fall under the umbrella of economic practices, including managing
transactions or sales activities, because “applying coupon rules to a financial
transaction” would ordinarily take place in a sale or market transaction,
which occurs in our system of commerce. The “financial transaction”
described in the claim is an economic act that takes place in our system of
commerce. See Spec. ¶ 20 (“Financial Transaction - An event that involves
the exchange of money or payment between two parties. For example, a
consumer purchasing goods or services from a merchant, a borrower
borrowing money from a lender, a consumer giving a bank money for
deposit in a bank account, etc.”).
Claim 1 is similar to claims that courts have concluded recite a
fundamental economic practice. See, e.g., Bilski v. Kappos, 561 U.S. 593,
611 (2010) (determining that hedging risk is a “fundamental economic
practice long prevalent in our system of commerce”); Alice, 573 U.S. at
219–20 (determining that intermediated settlement is a fundamental
economic practice); see also Revised Guidance 84 Fed. Reg. at 52 n.13;
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir.
2015) (an advertisement taking into account the time of day and tailoring the
information presented to the user based on that information is another
“fundamental . . . practice long prevalent in our system”); Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) (patent claims
directed to a system and method for providing financing to allow a customer
to purchase a product selected from an inventory of products maintained by
a dealer patent-ineligible are directed to the abstract idea of processing an
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application for financing a purchase, an economic practice long prevalent in
commerce).
Claim 1 is directed to applying coupon rules to a financial transaction,
which is a fundamental economic practice similar to those in Intellectual
Ventures I LLC and Credit Acceptance Corp. Thus, we conclude claim 1
recites a fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus an
abstract idea.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a)–(c) and (e)–(h), we determine that the additional elements of
claim 1, both individually and as an ordered combination, do not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice, into a practical application. Claim 1 is directed to little more than
the implementation of the abstract idea on generic computer servers and
devices. The claim, as a whole, describes how to generally apply or execute
the concept of applying coupon rules to a financial transaction. The claimed
“database,” “transmitting device,” and “receiving device” “of a processing
server” and “consumer mobile device” are recited at a high level of
generality and merely invoked as tools to perform the process of claim 1.
Simply implementing the abstract idea on a generic computer is not a
practical application of the abstract idea. See, e.g., Spec. ¶ 36–40, Fig. 3
(“any type of suitable database configuration . . . apparent to persons having
skill in the relevant art.”)
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
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claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any 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(a)–(c), (e)–(h).
Inventive Concept
Because we determine that claim 1 is “directed to” an abstract idea,
we next consider whether claim 1 recites an “inventive concept.” The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Final Act. 3–4.
We agree with the Examiner’s determination in this regard. The
additional elements recited in claim 1 include the “database,” “transmitting
device,” and “receiving device” “of a processing server” and a “consumer
mobile device.” The claim recites these elements at a high level of
generality, and the written description indicates that these elements are
generic ones. See, e.g., Spec. ¶ 36–40, Fig.3 (“any type of suitable database
configuration . . . apparent to persons having skill in the relevant art.”)
Using generic computer components to perform abstract ideas does not
provide the necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”). Thus, these elements, taken
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individually or together, do not amount to “significantly more” than the
abstract idea itself.
Appellant argues the claims are analogous to BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). Appeal Br. 12, 13. We have considered Appellant’s
arguments in light of BASCOM, and, for the reasons set forth below, we
conclude BASCOM does not alter our determination that the claims do not
include an inventive concept—an element or combination of elements
sufficient to ensure that the claim amounts to significantly more than the
abstract idea and to transform the nature of the claim into a patent-eligible
concept.
In BASCOM, the court determined at the pleading stage and decided
in favor of the nonmovant,
[t]he inventive concept described and claimed . . . is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter
on the ISP server. BASCOM explains that the inventive concept
rests on taking advantage of the ability of at least some ISPs to
identify individual accounts that communicate with the ISP
server, and to associate a request for Internet content with a
specific individual account.
Id. at 1350 (emphasis added).
Notably, this customizable filtering solution improved the computer
system’s performance and, therefore, was patent-eligible. See id. But unlike
the filtering system improvements in BASCOM that added significantly more
to the abstract idea in that case, the claimed invention here uses generic
computing components to implement an abstract idea, as noted previously.
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Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellant’s arguments to the contrary (Appeal Br. 11, 12;
Reply Br. 3). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to apply coupon
rules. This generic computer implementation is not only directed to
fundamental human activity organization, but also does not improve a
display mechanism, as was the case in McRO. See SAP Am. v. InvestPic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Accordingly, we sustain the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.

Section 103 Rejection
Appellant argues
the independent claims set forth two separate messages that are
being transmitted contemporaneously. The first message is a
reply to the authorization request, and the second message is a
credit transaction to the coupon funding provider. White, in
contrast, only contemplates a single message where the
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"rewards messaging" is appended to the authorization response
message.
Appeal Br. 17. Appellant argues none of the cited portions of White
“describe any contemporaneous transmissions of i) the reply to the
authorization request and ii) the credit transaction based on two or more
rules, as recited in the claims.” Id. at 16. Rather, Appellant argues, White
sends a “single” message where the “rewards messaging” is “appended” to
the authorization response message. Id. at 18.
We are persuaded by Appellant’s arguments because the Examiner
has not explained sufficiently how the cited portions of White teach
transmitting a reply to the authorization request (although to whom this reply
is sent is not clear from the claim) and also transmitting a “credit transaction
to the coupon funding provider.” Rather, the Examiner points out that White
teaches “the reward amount and messaging are appended to the
authorization message.” Ans. 6 (citing White ¶ 66–68).2 However, the
record does not explain how there is a transmission of a credit transaction
including the second charge amount (the sum of the amount deducted by the
two or more of the plurality of coupon rules) to the coupon funding provider.
Accordingly, on this record, we do not sustain the Examiner’s
rejection of the pending claims under 35 U.S.C. § 103.

2 In the event of further prosecution, however, the Examiner may wish to
reevaluate the claims for compliance with 35 U.S.C. § 112. For example,
the Examiner may consider if the Specification shows written description
support for all the disputed elements of claim 1, including transmitting a
credit transaction “to the coupon funding provider, the credit transaction
including at least the second charge amount,” and “wherein the transmitting
of the reply to the authorization request and the credit transaction occur
contemporaneously.” See Appeal Br. 2–4.
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DECISION
The Examiner’s rejection of claims 1, 3–10, and 12–20 under 35
U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 3–10, and 12–20 under 35
U.S.C. § 103 is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1, 3–10, and
12–20 is affirmed.
DECISION SUMMARY
Claims
Rejected
Basis  Affirmed Reversed
1, 3–10, and 12–20 § 101 1, 3–10,
and 12–20

1, 3–10, and 12–20

§ 103(a) 1, 3–10,
and 12–20
Overall Outcome

1, 3–10,
and 12–20

FINALITY AND RESPONSE
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