Ocher, Alexander Download PDFPatent Trials and Appeals BoardJan 25, 20212019004041 (P.T.A.B. Jan. 25, 2021) 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. 14/027,820 09/16/2013 Alexander Ocher Ocher-1 3878 7590 01/25/2021 ALEXANDER OCHER 3303 OLSEN DRIVE SAN JOSE, CA 95117 EXAMINER SHORTER, RASHIDA R ART UNIT PAPER NUMBER 3681 MAIL DATE DELIVERY MODE 01/25/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER OCHER Appeal 2019-004041 Application 14/027,820 Technology Center 3600 Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20.2 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 himself (the inventor Alexander Ocher, who is prosecuting his application without an attorney, i.e., pro se). (Appeal Br. 3.) Appellant further states “Thomas Edison State University (formerly Thomas Edison State College), a public institution of higher education located in Trenton, New Jersey, owns a limited business interest in this particular application.” (Id.) 2 Throughout this Decision we refer to the Final Rejection mailed January 23, 2018 (“Final Act.”), the Appeal Brief filed July 19, 2018 (“Appeal Br.”), the Examiner’s Answer mailed February 21, 2019 (“Ans.”), and the Reply Brief filed April 16, 2019 (“Reply Br.”). Appeal 2019-004041 Application 14/027,820 2 INVENTION The present invention relates to “systems and methods for providing consumer discounts” by “obtaining payment instruments at a discount to their face value from a number of merchants and providing the user with a product to utilize these payment instruments” whereby “[t]he user is charged for the provided payment instruments and then can redeem them for at least a portion of [a] total amount of purchase.” (Spec. ¶ 2; Abstract.) Independent claims 1 and 19, reproduced below, are illustrative of the claimed subject matter: 1. A method for providing discounts comprising the steps of: a gift card management system (first entity) performing at least one of the following actions initiated by said first entity to obtain electronically delivered merchant gift cards (payment instruments) directly from at least one merchant or merchant provider (second entity) at least once: (a) transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at a price that is determined at least in part based on discounted rate provided by said second entity; (b) transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at non-discounted price, followed by transferring a fund amount from said second entity to said first entity wherein at least a portion of the amount transferred to said first entity is at least in part based on discount rates, said transfer to said first entity occurring either before or after a user payment is received by the first entity; said second entity agreeing to provide said discounts to said first entity and providing at least one of the following services: providing a brand, authorizing, issuing, and processing for said payment instruments; Appeal 2019-004041 Application 14/027,820 3 said first entity registering users that agree to commit to a set of rules determined by said first entity without a need to prepay; said first entity allocating said payment instruments among said registered users in exchange for receiving a payment from said users by determining their need at least in time and place either automatically or at the user’s request; said users performing at least one of the following actions: a) redeeming at least a portion of said payment instruments to complete their purchases; b) transferring at least a portion of said payment instruments to a specified recipient as a gift. 19. A method for providing user discounts comprising the steps of: purchasing discounted payment instruments; enrolling a user via an interaction with an internet enabled electronic device; providing a software application on a mobile or wearable device to said user; said user selecting goods and services from a merchant; said user entering said merchant’s name and the purchase total amount into said application; said application contacting a backend server and displaying recommended payment instruments for the purchase of said goods and services; said user selecting payment instruments to use for said purchase; charging said user for the selected payment instruments, such that said payment instruments are then owned by said user; said user then uses said payment instruments to pay for at least a portion of said goods and services; said user then uses another form of payment to pay the remaining balance for said goods and services; Appeal 2019-004041 Application 14/027,820 4 after said purchase is complete said user receives a communication with transaction details of said purchase. (Appeal Br. 246–250 (Claims Appendix) (formatting added).) REFERENCE The prior art relied upon by the Examiner is: Ocher (“Ocher”) US 2012/0191513 A1 July 26, 2012 REJECTIONS Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. (Final Act. 2–5.) Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Ocher. (Final Act. 6–16.) ANALYSIS Rejection under 35 U.S.C. § 101 Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Accordingly, we review the Examiner’s § 101 determinations concerning patent eligibility under this standard. Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 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. Mayo Collaborative Servs. v. Prometheus Labs., Appeal 2019-004041 Application 14/027,820 5 Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 218–19 (“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” (Diehr, 450 U.S. at 191); “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 Appeal 2019-004041 Application 14/027,820 6 mathematical formula.” Diehr, 450 U.S. at 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., id. 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 (internal 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. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO published revised guidance on the application of § 101. USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”).3 Under the Revised Guidance, we first look to whether the 3 The Office issued a further memorandum on October 17, 2019 (“October 2019 Memorandum”) clarifying guidance of the January 2019 Memorandum Appeal 2019-004041 Application 14/027,820 7 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, 2018)). A claim that integrates a judicial exception into a practical application applies, relies on, or uses 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. Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent-eligible under § 101. Revised Guidance, 84 Fed. Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–19, 221. Evaluation of the inventive concept involves consideration of whether an additional element or combination of elements (1) adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply appends well-understood, in response to received public comments. See https://www.uspto.gov/ sites/default/files/documents/peg_oct_2019_update.pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Revised Guidance, 84 Fed. Reg. at 51; see also October 2019 Memorandum at 1. Appeal 2019-004041 Application 14/027,820 8 routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. Revised Guidance, 84 Fed. Reg. at 56. Appellant argues both independent claims (1 and 19), as well as the dependent claims. We address Appellant’s arguments directed to independent claims 1 and 19 then address the separate arguments directed to the dependent claims. Step 1 of the Revised Guidance Independent claims 1 and 19, as “method” claims, recite one of the enumerated categories of statutory subject matter in 35 U.S.C. § 101, namely, a process. The issue before us is whether these claims are directed to a judicial exception without significantly more. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong 1 of the Revised Guidance The first Prong of Step 2A under the Revised Guidance is to determine whether the claim recites a judicial exception including (a) mathematical concepts; (b) certain methods of organizing human activity; and (c) mental processes. Revised Guidance, 84 Fed. Reg. at 51– 52. The Examiner determines that claims 1 and 19 are directed to an abstract idea of a mental process because “the method claims can be performed by human thought and by a human using pen and paper.” (Ans. 73, 106, 129, 131, 154–155 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); Benson, 409 U.S. at 63); Final Act. 35, 108, 111, 115.) In particular, the Examiner finds Appeal 2019-004041 Application 14/027,820 9 the entire process as outline[d] by the Applicant can be performed by pen and paper. A customer can pay a discounted price, the merchant can accept payment, and write a voucher for the value of the gift card. The customer can turn that in with a later purchase. (Final Act. 108, 111, 115.) Alternatively, the Examiner also finds independent claims 1 and 19 are “directed to certain methods of organizing human activities” including a fundamental economic practice, because the claims recite managing gift cards, discount purchasing, payment instrument/gift card exchanges, and financial transactions/fund transfers between various entities (first entity, second entity, and users). (Ans. 13, 20, 23, 44, 49, 53, 73–75, 84, 86–87, 92, 100, 104, 106, 129, 154 (citing Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372 (Fed. Cir. 2017); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)); Final Act. 2–3.) Appellant disagrees with the Examiner’s characterization of claims 1 and 19, and argues the rejection overgeneralizes and oversimplifies the claimed subject matter and does not consider all the limitations in the claims. (Appeal Br. 13–17, 66, 100–101, 181–182; Reply Br. 2–13.) Appellant also argues (i) “claim [1] does not recite a business practice that was well-known and routinely used in the pre-Internet world” (Appeal Br. 23) and (ii) the Examiner has cited case law that is not analogous to the claimed subject matter of claims 1 and 19, does not demonstrate the claims recite abstract ideas, and, as such, the claims are not directed to an abstract idea. (Appeal Br. 17–22, 31, 52–58, 181; Reply Br. 3, 12; see also Appeal Br. 13–16, 23– 30, 32–51, 59–180, 182–184.) Appeal 2019-004041 Application 14/027,820 10 Appellant’s arguments do not persuade us that claims 1 and 19 do not recite an abstract idea, and we concur with the Examiner’s conclusion that the claims recite an abstract idea. (Final Act. 2–3.) As the Examiner finds, claims 1 and 19 recite elements that fall within the abstract idea grouping of certain methods of organizing human activity by aggregating discounted gift cards/payment instruments and enabling consumers to transact the gift cards/payment instruments. (See id.; see also Ans. 13, 20, 23, 44, 49, 53, 73–75, 84, 86–87, 92, 100, 104, 106, 129, 154.) Thus, claims 1 and 19 recite a business practice, long prevalent in our system of commerce, of obtaining items/goods (in this case, gift cards) at a discount and passing on some savings/discount to someone else (e.g., the consumer). See, e.g., Smart Systems Innovations v. Chicago Transit Auth., 873 F.3d 1364, 1368, 1371 (Fed. Cir. 2017) (claims to “inventions that would allow riders to more quickly and efficiently access a mass transit network” and “claims directed to the performance of certain financial transactions” including “paying a fare” and “providing a discount associated with [a] timepass product” cover “an abstract concept: paying for a subway or bus ride with a credit card”). More particularly, claim 1 recites steps of: obtaining discounted merchant gift cards (payment instruments) directly from a merchant or merchant provider by transferring funds to the merchant/provider (“first entity[] performing at least one of the following actions initiated by said first entity to obtain . . . merchant gift cards (payment instruments) directly from at least one merchant or merchant provider (second entity),” the actions including “transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at a price that is determined at least in part based on discounted rate provided by said second Appeal 2019-004041 Application 14/027,820 11 entity,” and “transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at non-discounted price” followed by “transferring a fund amount from said second entity to said first entity wherein at least a portion of the amount transferred to said first entity is at least in part based on discount rates” with the “transfer to said first entity occurring either before or after a user payment is received by the first entity”); agreeing to provide discounts (“said second entity agreeing to provide said discounts to said first entity”); providing, authorizing, or processing gift cards (“said second entity . . . providing at least one of the following services: providing a brand, authorizing, issuing, and processing for said payment instruments”); registering users in a program (“said first entity registering users that agree to commit to a set of rules determined by said first entity without a need to prepay”); selling gift cards to users (“said first entity allocating said payment instruments among said registered users in exchange for receiving a payment from said users by determining their need at least in time and place either automatically or at the user’s request”); and redeeming the gift cards or re-gifting them (“said users performing at least one of the following actions: a) redeeming at least a portion of said payment instruments to complete their purchases; b) transferring at least a portion of said payment instruments to a specified recipient as a gift”). The other independent claim (claim 19) recites steps of: purchasing discounted payment instruments (“purchasing discounted payment instruments”); interacting with a user/customer to enroll the user in a program (“enrolling a user” and “providing a software application . . . to said user”); enabling a user/customer to perform transactions at a merchant using payment instruments and other forms of payment (“said user selecting Appeal 2019-004041 Application 14/027,820 12 goods and services from a merchant,” “said user entering said merchant’s name and the purchase total amount,” “displaying recommended payment instruments for the purchase of said goods and services,” “said user selecting payment instruments to use for said purchase,” “charging said user for the selected payment instruments, such that said payment instruments are then owned by said user,” “said user then uses said payment instruments to pay for at least a portion of said goods and services,” and “said user then uses another form of payment to pay the remaining balance for said goods and services”); and providing a transaction report (“after said purchase is complete said user receives a communication with transaction details of said purchase”). These steps of claims 1 and 19 relate to an abstract idea in the grouping of “[c]ertain methods of organizing human activity” as described in the Revised Guidance—which characterizes such methods of organizing human activity as including, inter alia, “fundamental economic principles or practices . . . commercial or legal interactions (including agreements in the form of contracts . . . sales activities or behaviors; business relations).” Revised Guidance, 84 Fed. Reg. at 52 (citing buySAFE, 765 F.3d at 1350, 1355; Inventor Holdings, 876 F.3d at 1372, 1378–79); see buySAFE, 765 F.3d at 1354–55 (describing Supreme Court cases in which “contractual relations at issue constituted ‘a fundamental economic practice long prevalent in our system of commerce’” and finding “claims . . . about creating a contractual relationship—a ‘transaction performance guaranty’ . . . . are directed to an abstract idea” (citations omitted)); Inventor Holdings, 876 F.3d at 1378–79 (“the claims . . . are manifestly directed to an abstract idea . . . described as ‘local processing of payments for remotely purchased goods,’” and “[t]he idea that a customer may pay for items ordered from a Appeal 2019-004041 Application 14/027,820 13 remote seller at a third-party’s local establishment is the type of fundamental business practice that, when implemented using generic computer technology, is not patent-eligible under Alice”). Thus, we agree with the Examiner that claims 1 and 19 recite an abstract idea of a method of organizing human activity. We also agree with the Examiner that claims 1 and 19 recite elements that fall within the abstract idea grouping of mental processes. (See Ans. 73, 129, 154–155; Final Act. 35, 108, 111, 115.) Specifically, we agree with the Examiner that claims 1 and 19 set forth a gift card/payment instrument manipulation process performable in the human mind or with pen and paper, whereby a customer can pay a discounted price for gift card(s) usable to purchase goods or services from a merchant. (Final Act. 108, 111, 115.) In particular, with respect to claim 1, the claim sets forth a gift card manipulation process performable in the human mind and with pen and paper, the process including: paying for merchant gift cards (payment instruments) to effect an exchange of the gift cards for corresponding funds based on a price reflecting a discounted rate (claimed “first entity[] performing at least one of the following actions initiated by said first entity to obtain . . . merchant gift cards (payment instruments) directly from at least one merchant or merchant provider (second entity) at least once,” the “at least one of the following actions” including “transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at a price that is determined at least in part based on discounted rate provided by said second entity,” and “transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at non-discounted price” followed by “transferring a fund Appeal 2019-004041 Application 14/027,820 14 amount from said second entity to said first entity wherein at least a portion of the amount transferred to said first entity is at least in part based on discount rates” and “said transfer to said first entity occurring either before or after a user payment is received by the first entity”); promising/agreeing to provide discounts (“said second entity agreeing to provide said discounts to said first entity”); providing, authorizing, or processing gift cards (“said second entity . . . providing at least one of the following services: providing a brand, authorizing, issuing, and processing for said payment instruments”); registering users in a program (“said first entity registering users that agree to commit to a set of rules determined by said first entity without a need to prepay”); distributing gift cards to users in exchange for payment (“said first entity allocating said payment instruments among said registered users in exchange for receiving a payment from said users by determining their need at least in time and place either automatically or at the user’s request”); and redeeming or re-gifting the gift cards (“said users performing at least one of the following actions: a) redeeming at least a portion of said payment instruments to complete their purchases; b) transferring at least a portion of said payment instruments to a specified recipient as a gift”). The other independent claim (claim 19) also sets forth a process of transacting payment instruments that is performable in the human mind and with pen and paper, the process including: purchasing discounted payment instruments (“purchasing discounted payment instruments”); interacting with a user/customer to enroll the user in a program (“enrolling a user” and “providing a software application . . . to said user”); enabling a user/customer to perform transactions at a merchant using payment instruments and other forms of payment (“said user selecting goods and Appeal 2019-004041 Application 14/027,820 15 services from a merchant,” “said user entering said merchant’s name and the purchase total amount into said application,” “displaying recommended payment instruments for the purchase of said goods and services,” “said user selecting payment instruments to use for said purchase,” “charging said user for the selected payment instruments, such that said payment instruments are then owned by said user,” “said user then uses said payment instruments to pay for at least a portion of said goods and services,” and “said user then uses another form of payment to pay the remaining balance for said goods and services”); and providing a transaction report to the customer (“after said purchase is complete said user receives a communication with transaction details of said purchase”). Here, Appellant’s claims 1 and 19 recite acquiring and using gift cards/payment instruments associated with just one merchant, as claim 1 recites obtaining “merchant gift cards (payment instruments) directly from at least one merchant or merchant provider” and claim 19 recites a user selecting “goods and services from a merchant” and entering “said merchant’s name and the purchase total amount into said application.” (Appeal Br. 246, 250 (claims 1 and 19) (emphases added).) Appellant’s Specification discloses that a gift card or payment instrument such as “a pre- paid/debit card” or “a stored value card,” as well as “other methods of payment” may be used in a transaction at a merchant. (See Spec. ¶¶ 9, 21, 24, 29–30, 32 (describing “[p]ayment options . . . such as a debit/credit card account, a checking/savings bank account, a gift card account, merchandise credit . . . , etc.”), 38, 49, 65.) The gift card/payment instrument may be a physical card given to an enrolled user, and the transaction may occur “at the cash register of a merchant,” by “swiping the card at the POS terminal,” or Appeal 2019-004041 Application 14/027,820 16 by telephone. (See Spec. ¶¶ 11, 24, 27–28, 30, 35, 37 (“[t]he term ‘point of sale’ is used as a generic term to identify any device or method of entering user’s information. It can be a POS terminal, an online checkout system, a telephone system”), 40, 54, 63, 65, 66 (“The payment instruments can be used for man-to-machine payments (vending machines, parking, tickets, etc.)”), 79.) The claimed use of gift cards/payment instruments to complete purchases of goods and services from a merchant (as recited in claims 1 and 19) are, therefore, manually performable operations—performable by pen, paper, and other interactions at a merchant’s point of sale (POS) terminal. (Ans. 73, 106, 129, 131, 154–155; Final Act. 35, 108, 111, 115.) Furthermore, the claimed user enrollment or registration (“registering users that agree to commit to a set of rules” in claim 1, and “enrolling a user via an interaction with an internet enabled electronic device” in claim 19) may include voice- or paper-based actions (e.g., by “a telephone system, a paper mailing,” see Spec. ¶ 34). Thus, claims 1 and 19 recite steps that fall within the abstract idea grouping of mental processes. Revised Guidance, 84 Fed. Reg. at 52 (citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that computer-implemented method for “anonymous loan shopping” is an abstract idea because it could be “performed by humans without a computer”)). Although claims 1 and 19 recite some computer-implemented limitations—i.e., a “management system” and “electronically delivered merchant gift cards” in claim 1, and “enrolling a user via an interaction with an internet enabled electronic device,” “providing a software application on a mobile or wearable device to said user,” “said user entering said Appeal 2019-004041 Application 14/027,820 17 merchant’s name and the purchase total amount into said application,” and “said application contacting a backend server and displaying recommended payment instruments for the purchase of said goods and services” in claim 19 (see claims 1 and 19 (emphases added))—the underlying operations recited in claims 1 and 19 are acts that could be performed manually (e.g., by pen, paper, telephone, and other human interactions in retail settings) without the use of a computer or any other machine. (Ans. 73, 129, 154– 155; Final Act. 35, 108, 111, 115.) Our reviewing court has concluded that mental processes include similar concepts of providing, exchanging, and manipulating financial information and other types of data. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”). Claim 1’s “system” and claim 19’s “backend server” and “software application on a mobile or wearable device” automate actions performable manually with pen and paper; however, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource Corp., 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). Appellant argues the Examiner’s rejection is deficient because the Examiner has not considered “the requirements of claimed steps of the second entity providing specific services listed in the claim; registering users with no need to prepay; and determining user need in time and place either automatically or at the user’s request, while performing Step 2A.” Appeal 2019-004041 Application 14/027,820 18 (Reply Br. 2 (emphasis added).) However, the claimed steps of the second entity do not include registering users and determining user need in time and place either automatically or at the user’s request. Rather, claim 1 recites the second entity (a merchant or merchant provider) receives funds and provides a discounted rate and particular service(s) (providing a brand, authorizing, issuing, and processing for said payment instruments), and the Examiner’s rejection finds such merchant actions are manually performable operations as well as known business activities. (See Final Act. 3, 35, 108, 111, 115; Ans. 7–8, 11, 13, 31, 129, 154.) Regarding claim 1’s steps of registering users with no need to prepay, and determining user need in time and place either automatically or at the user’s request (as referenced by Appellant, see Reply Br. 2), these steps are by the first entity, and have also been analyzed by the Examiner as manually performable operations and known business activities (see Final Act. 3, 35, 108, 111, 115; Ans. 20, 31, 45, 73, 79, 86– 87, 114, 129, 131, 154–155.) For example, the limitation “[first entity] determining their [users’] need at least in time and place either automatically or at the user’s request” includes, under its broadest reasonable interpretation, determining a user’s need in time and place at the user’s request. A determination of user need in time and place at the user’s request would ordinarily take place when a user/customer initiates a transaction to fund/buy a gift card in, e.g., a brick and mortar store, or at an e-commerce site. Appellant also argues the “instant claims have materially different subject matter and claim sets from existing Court cases” and “[t]he Office must ensure that the rejection is reasonably tied to the facts of an existing court case, and examiners should not go beyond those concepts that are Appeal 2019-004041 Application 14/027,820 19 similar to what the courts have identified as abstract ideas per current case law.” (Reply Br. 4 (emphasis added).) Appellant’s argument is unpersuasive as it contradicts the Revised Guidance, which explains that: Since the Alice case, courts have been “compare[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases.” Likewise, the USPTO has issued guidance to the patent examining corps about Federal Circuit decisions applying the Alice/Mayo test, for instance describing the subject matter claimed in the patent in suit and noting whether or not certain subject matter has been identified as an abstract idea. While that approach was effective soon after Alice was decided, it has since become impractical. The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases. The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concerns have been raised that different examiners within and between technology centers may reach inconsistent results. The USPTO, therefore, aims to clarify the analysis. In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se): (a) Mathematical concepts . . . ; (b) Certain methods of organizing human activity . . . ; and (c) Mental processes. Revised Guidance, 84 Fed. Reg. at 51–52 (footnotes omitted). Here, the Examiner’s Answer follows and applies the framework presented in the Appeal 2019-004041 Application 14/027,820 20 Revised Guidance and concludes claims 1 and 19 recite a mental process, and alternatively, a method of organizing human activity. Having determined that claims 1 and 19 recite an abstract idea (a mental process, and a method of organizing human activity) identified in the Revised Guidance, we turn to Step 2A, Prong 2, of the Revised Guidance to determine whether the abstract idea is integrated into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. Step 2A, Prong 2 of the Revised Guidance Under Revised Step 2A, Prong 2 of the Revised Guidance, we recognize that claims 1 and 19 include additional elements such as a “system” (“gift card management system . . . transferring funds . . . registering users . . . allocating said payment instruments among said registered users”) and “electronically delivered” gift cards in claim 1, and “an internet enabled electronic device,” “a mobile or wearable device,” and “a backend server” in claim 19. (Appeal Br. 246, 250 (claims 1 and 19).) Furthermore, our review of Appellant’s Specification finds that the terms “system,” “electronically delivered,” “internet enabled electronic device,” “mobile or wearable device,” and “backend server” are nominal recitations of additional elements that do not integrate the recited abstract idea into a practical application. (See Ans. 5, 8, 24, 48, 53, 82; Final Act. 3.) For example, Appellant’s Specification indicates that the “system,” electronic delivery, “internet enabled electronic device,” “mobile or wearable device,” and “backend server” of claims 1 and 19 do not recite specific types of additional elements or their operations. (See Spec. ¶¶ 3 (describing “[g]ift cards” as “very popular money equivalents. They are usually either plastic cards or electronic cards.”), 9 (describing “merchant electronic gift cards”), Appeal 2019-004041 Application 14/027,820 21 18 (describing a “customer’s mobile device such as tablet or smartphone or wearable device such as smart glasses or watch”), 24 (“the system may be implemented as a card (gift card, prepaid/debit card, etc.) that is issued by the owner of the system”), 27 (providing that “information can be changed on the system’s backend, by using a native or Web application”), 30 (describing “a cloud or other backend system”), 33–34 (“user’s information can be completely stored in the backend system, or may at least partially reside on a user’s electronic device. This information may be changed by the user at any time via a Web site, a telephone system, a paper mailing, or a smartphone application”), 34 (“a secure server system”), 35 (describing a “mobile device [that] also may communicate with point of sale device(s) using LAN/WAN, Wi-Fi, cellular network technologies”), 38 (“system’s owner Web site may also be integrated with at least some merchants, so the customers may purchase some products directly from these merchants by using an application or card at a discount and/or using special offers”), 43 (“The payment process may involve all of these entities, or some of them may be missing. This system and method can be integrated with any of these entities” and a bank may be “integrated with the system”), 44 (“The owner of the system may also implement its own payment platform. For example, a transaction may be initiated on a Web site of an online merchant and be routed to a social network company that provides its own payment system and discounts to customers”), 58 (describing “generic (base) and category- specific cards”), 81 (“Reference to ‘owner of the system’ and ‘system’s owner’ means any entity that either developed, licensed or otherwise permitted to practice this invention in any form. It can be a merchant, a processor (merchant acquirer, card authority, bank, etc.) or a third party Appeal 2019-004041 Application 14/027,820 22 entity.”).) Rather, these additional elements in claims 1 and 19 perform generic automation of operations performable with pen, paper, and human interaction in a retail setting. (Ans. 5, 8, 24, 26, 48–50, 53, 66, 82; Final Act. 3.) In particular, claims 1 and 19 merely use the additional elements (system, electronic device, mobile/wearable device, backend server, and Internet connectivity) in an ordinary manner, and for their ordinary functions, to perform business transactions and other operations (managing and transacting discounted gift cards/payment instruments, paying for goods and services, re-gifting, sending purchase notifications, and collecting customer data) readily performable by pen, paper, and human interaction in retail settings. (Ans. 5, 8, 24, 26, 48–50, 53, 66, 82, 136, 151–152, 155; Final Act. 3.) As a result, these additional elements are insufficient to distinguish the recited abstract idea of claims 1 and 19 from a manually performable mental process and a method of organizing human activity. (Ans. 19, 26, 66, 82, 87, 106.) Appellant’s claims 1 and 19 also do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine, (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 claims as a whole are more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h). Appellant’s claims 1 and 19 do not describe technological improvements and are not directed to an improvement in Appeal 2019-004041 Application 14/027,820 23 computer-related technology. (Ans. 22, 26–27, 28, 35; see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 1339 (Fed. Cir. 2016).) Appellant disagrees with the Examiner and argues “claim [1] is integrated into a practical application that improves an existing process in gift card processing and distribution technology” as the claim provides “a solution to a balance verification problem mentioned in the record, so that such verification can be skipped in the currently claimed process.” (Reply Br. 4, 8, 12; see also Appeal Br. 98, 116, 140 (arguing that “the claimed steps, in addition to the sending and receiving e[-]gift cards and various fund movements, improve the functioning of the computer itself”), 143 (claim 1 “improves computer-related technology”).) Appellant argues the Examiner’s Answer ignored “[t]he benefits of the claim that were not explicitly claimed . . . despite the courts routinely using benefits not listed in the claims to support patent eligibility (McRO, Berkheimer, etc.) and the requirement for the Office to give a claim its broadest reasonable interpretation.” (Reply Br. 7.) Appellant’s arguments are not persuasive. Appellant’s Specification may well identify purported benefits of and/or problems purportedly overcome by Appellant’s invention. However, the steps in claims 1 and 19 recite business and retail operations that are readily performable by pen and paper, or automated by generic computer technology, without providing sufficient technological detail for how to achieve the desired benefits or improvements to gift card processing and distribution technology. (Ans. 5, 13, 22, 27, 34–35, 40, 132, 148.) Although claims are interpreted in light of the Specification, limitations from the Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). For Appeal 2019-004041 Application 14/027,820 24 example, claim 19 recites “purchasing discounted payment instruments,” and claim 1 recites a gift card management system “obtain[ing] electronically delivered merchant gift cards (payment instruments) directly from at least one merchant or merchant provider (second entity)” by “transferring funds to at least one second entity to purchase said payment instruments directly from said second entity” at a “discounted rate”; however, no particular manner of purchasing discounted payment instruments, obtaining electronically delivered gift cards, or transferring funds is recited that would indicate an improvement to technology. The same holds true for the other recited limitations in claims 1 and 19, such that Appellant’s arguments regarding improvements to “an existing technological process” (Reply Br. 11), a “gift card-related technological process” (Reply Br. 12), and “improv[ing] the functioning of the computer itself” (Appeal Br. 140) are unpersuasive. The operations recited in claims 1 and 19 do not specify or evidence an improvement to the functioning of a computer, or other technological improvement. Thus, claims 1 and 19 do not integrate the judicial exceptions into a practical application. See SAP Am., Inc. v. InvestPic LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018) (“Some of the claims require various databases and processors, which are in the physical realm of things” but “it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources . . . , just already available computers, with their already available basic functions, to use as tools in executing the claimed process.”). Appellant also analogizes the instant claims to the claims of McRO, asserting that “the ‘rules’ claimed in McRO are quite similar to the ‘rules’ used by the instant invention.” (See Appeal Br. 29, 40–43, 63, 107, 130, Appeal 2019-004041 Application 14/027,820 25 136, 164 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); Reply Br. 5, 7, 12.) For example, Appellant argues the following “rules” of the instant claim 1 are closely similar to those on McRO: “a price that is determined at least in part based on discounted rate”; “registering users that agree to commit to a set of rules determined by said first entity without a need to prepay”; “determining their need at least in time and place either automatically or at the user’s request.” (Appeal Br. 41.) We are unpersuaded by Appellant’s arguments. Contrary to Appellant’s arguments, claims 1 and 19 are not analogous to the claims in McRO. (Ans. 38–39, 42–52.) There, the Federal Circuit determined that the claims were directed to an improvement in computer animation, and, thus, did not recite a concept similar to previously identified abstract ideas. McRO, 837 F.3d at 1316. McRO’s patent (U.S. Patent No. 6,307,576) describes computer software for matching audio to a 3D animated mouth movement to provide lip-synched animation. The court relied on the specification’s explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated. Id. at 1313. The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that “improved [the] existing technological process,” unlike cases such as Alice where a computer was merely used as a tool to perform an existing process. Id. at 1314. In particular, McRO’s claims contain (i) specific limitations regarding a set of rules that “define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” to enable computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” (id. at 1313) and, when viewed as a whole, are directed to (ii) a “technological improvement over the existing, Appeal 2019-004041 Application 14/027,820 26 manual 3–D animation techniques” as the claims use “the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice” (id. at 1316). Appellant’s Specification and claims do not describe technological improvements similar to McRO. See McRO, 837 F.3d at 1313, 1316. Appellant’s claims 1 and 19 are not directed to a process that could not previously be automated; rather, they are directed to business activities (collecting, selling, buying, and transacting gift cards or other payment instruments) by operations readily performable by pen, paper, and human interaction in a retail setting. (Ans. 26, 44, 66, 106, 129, 154; Final Act. 35, 108, 111, 115.) Thus, we are not persuaded that the operations in claims 1 and 19 amount to “a specific means or method [e.g., patentable subject matter] that improves the relevant technology.” McRO, 837 F.3d at 1314 (emphasis added). Appellant also analogizes the instant claims to the claims of Enfish and Finjan, asserting that (i) “instant claim 1 bears many similarities to the Enfish case” because claim 1 provides an “improvement . . . in a logical structure of process,” “[r]ecites a specific way to process electronic gift cards,” and “[i]mproves gift card processing technology,” and (ii) the “independent claims are directed to more than a generic computer performing generic, conventional functions known to the industry” because the claimed process of obtaining electronically delivered merchant gift cards directly from merchants “allows the computer to skip unnecessary process step of card balance verification because of the new and innovative source of discounts, resulting in faster processing time (can be significant with the large volume of transactions).” (Reply Br. 5; Appeal Br. 29, 34–39, 63, 140, Appeal 2019-004041 Application 14/027,820 27 164 (citing Enfish, 822 F.3d at 1327; Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018).) Appellant’s reliance on Enfish and Finjan is misplaced. Enfish’s data storage and retrieval method and system recites a “self-referential table [for a computer database] [which] is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.” Enfish, 822 F.3d at 1336, 1339. The Enfish court recognized that unlike Alice’s and Bilski’s claims, “the plain focus of the claims [in Enfish] is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at 1336. More particularly, “[the Enfish claims] are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” Id. In Finjan, the claims were directed to identifying and protecting a computer against malware, which the court found to constitute sufficient non-abstract improvement in computer functionality to render the claims patent eligible. Finjan, 879 F.3d at 1304–05. In contrast to Enfish and Finjan, Appellant’s Specification and claims do not describe a specific improvement to the way computers store and retrieve data in memory similar to Enfish, or improvements in computer functionality similar to Finjan. (See Enfish, 822 F.3d at 1336, 1339; Finjan, 879 F.3d at 1304–05; Ans. 33–37.) Particularly, claims 1 and 19 do not focus on an improvement to the technology of processing electronic gift cards, or the technology of electronic communication, or the design of logical structures for ecommerce transactions. Additionally, claims 1 and 19 do not recite or require technology for reducing coding or compiler mistakes, or technology for configuring a computer to skip card balance verification steps during Appeal 2019-004041 Application 14/027,820 28 transactions, as argued by Appellant. (See Appeal Br. 140.) Thus, we are unpersuaded by Appellant’s arguments that the claims provide an “improvement . . . in a logical structure of process,” or recite “a specific way to process electronic gift cards” that “[i]mproves gift card processing technology.” (See Appeal Br. 29, 34–38; Reply Br. 5.) Appellant also argues claim 1 is patent-eligible for reasons similar to those provided by DDR. (Reply Br. 11–12 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)); Appeal Br. 59, 87, 138– 140, 163, 166.) In particular, Appellant argues DDR is “an example that never claimed to invent any computer technology and all computer functionality it used (such as Active Server Pages by Microsoft) was generic.” (Reply Br. 11.) Appellant further argues Appellant’s claims “provide a solution rooted in computer technology, similar to the claims at issue in DDR.” (Appeal Br. 138–140; see also Appeal Br. 59, 72, 87, 149– 151, 163, 166; Reply Br. 12.) We remain unpersuaded by Appellant’s arguments. The Federal Circuit found DDR’s claims are patent-eligible under § 101 because DDR’s claims: (1) do not merely recite “the performance of some business practice known from the pre-Internet world” previously disclosed in Bilski and Alice; but instead (2) provide a technical solution to a technical problem unique to the Internet, i.e., a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Appellant’s methods of registering users and collecting, selling, buying, transacting, and re-gifting gift cards/payment instruments in claims 1 and 19 do not provide a technical solution to a technical problem unique to the Internet, i.e., a “solution . . . necessarily rooted in computer Appeal 2019-004041 Application 14/027,820 29 technology in order to overcome a problem specifically arising in the realm of computer networks.” (See id.; see also Ans. 130, 137.) Appellant’s claims 1 and 19 solve a business problem (monetizing unwanted or surplus gift cards, see Spec. ¶ 5) by providing a business solution and a financial benefit to a merchant, gift card aggregator, and/or customer (the use of discount strategies to acquire and monetize gift cards that a merchant is willing to provide at discounts). (See Appeal Br. 246–250 (claims 1 and 19).) Although claims 1 and 19 employ an internet enabled electronic device, a mobile or wearable device, a backend server, and electronic delivery of gift cards to a system, the claims do not demonstrate a use of computing elements that in combination perform functions that are not merely generic, as the claims in DDR. See DDR Holdings, 773 F.3d at 1258; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). We are also not persuaded by Appellant’s arguments that the Examiner’s rejection is deficient because: (i) “[the Examiner’s] assertion [that claim 1 corresponds to concepts identified as abstract ideas by the courts] was stated as opinion or conclusion, without any substantial evidence of facts or reason in support” and without an Examiner’s affidavit (Appeal Br. 18–19 (emphases added); see also Appeal Br. 25–27, 47–48, 60–62, 181 (discussing claim 19)); (ii) “[n]o evidence was provided in the Answer to support the allegation that an ordered combination of the claimed steps of instant multi-step process as a whole was known to be a fundamental economic practice” (Reply Br. 2 (emphases added); see also Reply Br. 5); and (iii) “there was no factual evidence provided by the Office that buying Appeal 2019-004041 Application 14/027,820 30 and selling of discounted gift cards have been a part of the ecommerce industry” (Appeal Br. 23 (emphases added)). Appellant’s arguments are not persuasive. Patent eligibility under 35 U.S.C. § 101 is a question of law that is reviewable de novo. See Dealertrack, 674 F.3d at 1333. As the Federal Circuit has noted, “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. § 132. Id. at 1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when [the] rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Here, the Examiner has articulated explanations as to why the steps of claims 1 and 19 recite a method of organizing human activity encompassing fundamental economic and business practices, and a mental process. (See Ans. 13, 20, 23, 26, 44, 49, 53, 58, 66, 73–75, 84, 86–87, 92, 100, 104, 106, 118, 129, 131, 136, 154–155; Final Act. 2–3, 35, 108, 111, 115.) Furthermore, the record in this case includes citations to references showing that selling, buying, and transacting discounted gift cards in store or Appeal 2019-004041 Application 14/027,820 31 electronically, was a known business activity and a fundamental economic practice in our system of commerce. (See US 2012/0278151 A1 (by Galit, cited by the Examiner on June 16, 2015) ¶¶ 3–6, 9–12, 20–21, 23–26, 36, 39–40); see also US 2013/0290172 by Mashinsky (cited and applied by the Examiner on June 16, 2015) ¶¶ 7–12, Abstract.) Thus, we do not find Appellant’s argument persuasive. Appellant also argues claim 1 is not directed to a mental process or a business practice because: (i) “[a] claim that, as recited, cannot be wholly carried out in the mind is not a mental process” and “it is self-evident that instant claim [1] cannot be performed by human thought alone” (Reply Brief 5, 11); (ii) “computers and networks are integral to the invention to facilitate performance of the claimed steps in a way that a person making computations cannot” (Reply Br. 12); and (iii) the Examiner construes the first and second entity to be a person but “Appellant clearly defined the first and second entity directly in the claim 1 using common industry terms” (Reply Br. 5; see also Appeal Br. 65, 77–79, 97–99.) These arguments are unpersuasive because claims 1 and 19 merely use computing elements (system receiving gift cards by an electronic delivery medium, internet enabled electronic device, mobile or wearable device, and backend server) in an ordinary manner, and for their ordinary functions, to provide electronic communications and execute transactional exchanges that are not distinguishable from generic automation of manually (e.g., pen and paper) performable steps between customers and generically-claimed “entities.” (Ans. 5, 8, 24, 26, 39, 48, 53, 58, 66, 73, 82, 106, 118–119, 129, 131, 136, 151–153, 155; Final Act. 3, 5; see Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“merely adding Appeal 2019-004041 Application 14/027,820 32 computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”).) We are also unpersuaded by Appellant’s arguments that claim 1 is not abstract because it “explicitly claims a combination of specific tangible transactions,” “implements the concept in a concrete and specific way: the claimed financial transactions are tangible entities,” “describes specific steps for a concrete and tangible application of a novel concept,” and “produc[es] a tangible and useful result.” (See Appeal Br. 27, 43–47, 65, 74.) As the Supreme Court emphasized in Bilski, “although the machine-or- transformation test is not the only test for patentability, this by no means indicates that anything which produces a ‘useful, concrete, and tangible result,’ State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (CA Fed. 1998), is patentable.” Bilski, 561 U.S. at 658–660 (Breyer, J., concurring). Thus, “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). Further, with respect to Appellant’s novelty arguments (see Appeal Br. 65, 88, Reply Br. 7 (arguing claim 1 recites steps that “integrate the claim into a practical application that is not well known in the art”)), these arguments improperly conflate the test for § 101 with the Appeal 2019-004041 Application 14/027,820 33 separate tests for §§ 102 and 103. As the Supreme Court emphasizes, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Appellant additionally argues that Examiner has not considered the claim as a whole, and, when considered as a whole, claim 1 recites more than “[p]urchasing items at a discount” as asserted by the Examiner. (Appeal Br. 24–25; see Final Act. 37.) We remain unpersuaded, as the Examiner did not assert that claim 1 is limited to the purchase of items at a discount. Rather, the Examiner noted the claim recites plural business practices and commercial transactions long prevalent in our system of commerce, including “[p]urchasing items at a discount,” “[p]romising funds in exchange for a good or service,” “exchanging financial obligations between two parties,” buying and selling electronic gift cards, and engaging in e-commerce. (See Final Act. 19, 21, 37, 70; Ans. 44, 74, 92, 106.) A claim directed to an abstract idea of business practices long prevalent in our system of commerce “does not move into section 101 eligibility territory by ‘merely requir[ing] generic computer implementation,’” or by “[s]imply appending conventional steps, specified at a high level of generality,” or by “attempting to limit the use of [the idea] to a particular technological environment.” See buySAFE, 765 F.3d at 1354–55 (citing Alice, 573 U.S. at 221; Mayo, 566 U.S. at 72–73, 77–78, 82–85). In addition, claim 1 recites automation (e.g., via electronic communication and the Internet) of commercial and business operations that are manually performable, however, mental processes remain unpatentable even when automated to Appeal 2019-004041 Application 14/027,820 34 reduce the burden on the user of what once could have been done with pen and paper. See Mortg. Grader, 811 F.3d at 1324 (collecting information to generate a credit grading and facilitate “anonymous loan shopping” is an abstract idea because it could be “performed by humans without a computer”). Appellant also argues claims 1 and 19 are patent eligible because they do not risk tying up the use of an abstract idea and thus do not pose a risk of preemption. (Reply Br. 5–6; Appeal Br. 43, 63, 74–75, 79–97, 113, 116, 139, 166, 168, 183.) As noted by the Examiner, “[a]lthough it may be true that there are other methods to process gift cards, that issue is not dispositive” in this case because “the absence of complete preemption does not demonstrate patent eligibility.” (Ans. 97 (emphasis added) (citing Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377, 1379 (Fed. Cir. 2015)); see also Ans. 46, 85, 88, 91–92, 94.) We agree with the Examiner, as preemption is a necessary clue for patent eligibility, but it is not sufficient for patent eligibility. See McRO, 837 F.3d at 1315; Ariosa, 788 F.3d at 1379. Furthermore, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter” under the Alice/Mayo framework, “preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. Accordingly, under Step 2A, Prong 2, we agree with the Examiner that claims 1 and 19 do not recite “additional elements that integrate the judicial exception into a practical application,” and are directed to abstract ideas in the form of a mental process and a method of organizing human activity. Revised Guidance, 84 Fed. Reg. at 52, 54; see also MPEP Appeal 2019-004041 Application 14/027,820 35 § 2106.05(a)–(c), (e)–(h). Therefore, we proceed to Step 2B of the Alice two-step framework. Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Step 2B of the Alice two-step framework requires us to determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception. Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at 56. As recognized by the Revised Guidance, an “inventive concept” under Alice step 2 can be evaluated based on whether an additional element or combination of elements: (1) “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, 84 Fed. Reg. at 56. Claims 1 and 19 include the additional elements of a system, internet enabled electronic device, mobile or wearable device, backend server, and electronic delivery of gift cards. However, we agree with the Examiner’s findings that the additional elements of claims 1 and 19, when considered individually and in an ordered combination, correspond to nothing more than generic components used to implement the abstract ideas. (Ans. 5, 8, 24, 26, 39, 48, 53, 58, 66, 73, 82, 106, 118–119, 129, 131, 136, 151–153, 155; Final Act. 3, 5; see Spec. ¶¶ 9, 18, 24, 30, 33–35, 37–38, 49, 56, 58, 81.) In other Appeal 2019-004041 Application 14/027,820 36 words, we find that the additional elements, as claimed, were well- understood, routine, and conventional and “behave exactly as expected according to their ordinary use.” See In re TLI, 823 F.3d at 615. Thus, implementing an abstract idea with these generic components “fail[s] to transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221. Appellant also argues “[t]he recited combination of additional elements is non-routine and non-obvious, which confers patent eligibility per the controlling law in Alice and BASCOM.” (Appeal Br. 78, 115–116, 164, 176, 183 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); Reply Br. 7.) Appellant’s arguments are not persuasive. Appellant’s abstract idea (of a mental process, and a business practice of obtaining goods, such as gift cards, at a discount and passing on some of the savings/discount to someone else)—applied to generic computing infrastructure—does not provide any particular practical application as required by BASCOM. (Ans. 147; Final Act. 57; see BASCOM, 827 F.3d at 1352, 1350.) For example, BASCOM’s patent- eligible ordered combination of claim limitations contains an “inventive concept [that] harnesses [a] technical feature of network technology in a filtering system by associating individual accounts with their own filtering scheme and elements while locating the filtering system on an ISP [(Internet Service Provider)] server.” BASCOM, 827 F.3d at 1350. BASCOM’s claimed ordered combination “improve[s] the performance of the computer system itself” with a “technology-based solution . . . to filter content on the Internet that overcomes existing problems with other Internet filtering systems.” BASCOM, 827 F.3d at 1351–52 (internal citation omitted). Appeal 2019-004041 Application 14/027,820 37 Appellant’s abstract idea of obtaining goods at a discount and passing on some of the savings/discount to someone else, using generically claimed computing elements does not provide any particular practical application as required by BASCOM, or entail an unconventional technological solution to a technological problem as required by Amdocs. (Ans. 40–41; see Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302 (Fed. Cir. 2016).) Appellant argues claim 1 recites “significantly more” because none of the claimed elements of “obtaining merchant egift cards directly from merchants or merchant providers at a discount by transferring funds to them, registering users and providing a set of rules for obtaining discounts with no need to prepay and determining user need in time and place either automatically or at the user’s request,” or their combination, was “recognized by the courts as well-understood, routine, and conventional functions.” (Reply Br. 6 (emphasis added); see also Reply Br. 9 (“the ordered combination of all claimed steps also constitutes an inventive concept that is not routinely used in the field”).) Appellant also argues the Examiner has failed to provide factual support or evidence that claims 1 and 19 recite elements that are well-understood, routine, or conventional. (Appeal Br. 16, 62, 68, 71, 76–78, 103–104, 111, 114, 118–119, 122, 124– 125, 134, 137, 148–149, 159, 163, 167, 169–172, 176, 181–182 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)); Reply Br. 10, 13.) Appellant’s arguments are not persuasive. At the outset, we note that some of Appellant’s arguments (see Reply Br. 6) are not commensurate with the scope of claim 1 because (i) claim 1 does not require obtaining merchant gift cards from multiple merchants (the claim recites obtaining gift cards from “at least one merchant or merchant provider”), and (ii) claim 1 does not Appeal 2019-004041 Application 14/027,820 38 recite providing a set of rules for obtaining discounts (the claim recites “said first entity registering users that agree to commit to a set of rules determined by said first entity without a need to prepay”) (emphases added). Furthermore, the Examiner has noted that Appellant’s claims 1 and 19 require generic computer elements performing generic computer functions. (See Final Act. 3–4; Ans. 4–5, 7–8, 11–12, 28, 40, 48–49, 53–54, 58, 60–61, 66, 72–73, 78, 82, 106, 118–119, 129, 131, 136, 151–153, 155 (citing Spec. ¶¶ 9, 18, 35, 37, 56, 64–65; Intellectual Ventures I LLC, 838 F.3d at 1321 (receiving, screening, and distributing information is well known); OIP Techs., 788 F.3d at 1363 (“‘sending a first set of electronic messages over a network to devices,’ the devices being ‘programmed to communicate,’ storing test results in a ‘machine-readable medium,’ and ‘using a computerized system . . . to automatically determine’ an estimated outcome and setting a price” are “computer functions [that] are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry”)).) Thus, contrary to Appellant’s arguments, the Examiner has produced factual support and evidence that the ordered combination of additional elements of claims 1 and 19 are routine and conventional. Additionally, as discussed supra and as noted by the Examiner, the transfer operations (of funds and gift cards between a second entity, a first entity, and users), the user-registering operations, and the gift card redeeming operations recited in claims 1 and 19 merely automate manually performable operations and transactions. (Ans. 26, 28, 40, 58, 66, 72–73, 106, 118, 129, 131, 136, 155.) “[T]he use of generic computer elements like a microprocessor or user interface” to perform conventional computer functions “do not alone transform an otherwise abstract idea into patent- Appeal 2019-004041 Application 14/027,820 39 eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256). Considered as an ordered combination, the generic components of Appellant’s claims 1 and 19 (e.g., system performing electronic communications, internet enabled electronic device, mobile or wearable device, and backend server) add nothing that is not already present when the customer registration and gift card manipulation steps are considered separately. “[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223). Claims 1 and 19 do not, as discussed above, purport to improve the functioning of a computer, network, electronic device, or server. (Ans. 5, 13, 22, 27, 34–37, 40, 132, 148.) Nor do the claims affect an improvement in any other technology or technical field. (Ans. 22, 26, 27, 39.) For example, Appellant argues the claims recite “a new logical structure,” but no improvements to logical structures are apparent from the claims or Specification. (See Appeal Br. 175; see also Appeal Br. 154–156, 160–161 (arguing various technological improvements).) Appellant also argues “the computer performing the process described in the claim 1 operates more efficiently because skipping the verification process improves computer performance, requires less memory and achieves more reliable results.” (Appeal Br. 165; see also Appeal Br. 141 (“the process described in claim 1 allows the computer to skip unnecessary process step of card balance verification because of the new and innovative source of discounts, resulting in faster processing time”), 143 (“it is the absence of the verification step that is an improvement over the prior art: such verification step is present in Appeal 2019-004041 Application 14/027,820 40 conventional system implementations”).) These arguments, however, are not supported by the language in claims 1 and 19, which do not recite or require a computer that skips card balance verification or other verification processes. (Ans. 132, 148.) As to Appellant’s argument that the claims recite significantly more because they include “an inventive concept that is not routinely used in the field” (see Reply Br. 9), we again note that “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217–18 (quoting Mayo 566 U.S. at 72– 73). Here, Appellant argues that claim 1’s steps including transferring funds to purchase payment instruments directly from a merchant, registering users, and allocating payment instruments among registered users, are not well- understood, routine, or conventional in the gift card industry, thereby rendering the claim patent-eligible. (See Reply Br. 6, 9–10; see also Appeal Br. 68–69 (“The usual sequence of events while buying and using gift cards at stores such as Target, or from sites such as eBay and Cardpool is different from the claim 1.”), 106–111.) However, these claimed steps (novel as they may be) are part of the abstract idea to which claim 1 is directed (a mental process, and a method of organizing human activity), and a novel and Appeal 2019-004041 Application 14/027,820 41 nonobvious claim directed to a purely-abstract idea is, nonetheless, patent- ineligible. See Mayo, 566 U.S. at 89–91. We, therefore, agree with the Examiner that claims 1 and 19 do not provide significantly more than the abstract idea itself. (Ans. 22, 26–28, 34, 38, 45, 49, 57–58, 66–67, 72–74, 77–78, 87, 90, 92, 96–97, 100–101, 103, 106–111, 114, 117–119, 124–125, 127, 130–133, 136–138, 141–144, 151– 154.) Because claims 1 and 19 are directed to the abstract ideas of a mental process and a method of organizing human activity, and do not provide significantly more than the abstract ideas themselves, we agree with the Examiner that claims 1 and 19 are ineligible for patenting and sustain the Examiner’s § 101 rejection of claims 1 and 19. Dependent claims 2–18 and 20 Appellant also contends the § 101 rejection of dependent claims 2–18 and 20 (Appeal Br. 184–206; Reply Br. 13–14), arguing that: (i) “the Office’s rejection is deficient and so uninformative” under 35 U.S.C. § 132 because the Examiner “summarily dismissed all dependent claims” and “failed to identify any additional limitations that are present in dependent claims, let alone providing any explanation as to why they do not amount to significantly more than the allegedly abstract idea from the Office Action” (Appeal Br. 185–195); (ii) “[t]he Examiner failed to specifically identify any additional limitations in any of the claims 1–20 beyond the allegedly abstract idea” (Appeal Br. 191); and (iii) the Examiner has failed to provide factual support or evidence that the dependent claims are well-understood, routine, or conventional (Appeal Br. 190, 192, 194, 196–197, 198, 200–201, 203– 205 (citing Berkheimer, 881 F.3d at 1360); Reply Br. 13–14). Appellant Appeal 2019-004041 Application 14/027,820 42 further argues the dependent claims “amount[] to significantly more than the judicial exception itself” because they “define innovative technological processes for gift card processing and distribution” and are “non-routine,” as “none of the existing implementations have any need to” perform the operations listed in Appellant’s claims. (Appeal Br. 188, 195–206; Reply Br. 14.) We are not persuaded by Appellant’s arguments. At the outset, we note the Examiner has set forth the statutory basis of the dependent claims’ § 101 rejection in a sufficiently articulate and informative manner, thereby meeting the notice requirement of 35 U.S.C. § 132. (See Final Act. 4–5, 37, 40, 44, 61, 94; Ans. 27, 66, 89, 105, 112, 122–123, 132; see In re Jung, 637 F.3d at 1362–63; Chester, 906 F.2d at 1578 (Section 132 “is violated when [the] rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”).) The Federal Circuit has held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” In re Jung, 637 F.3d at 1362 (citing Hyatt v. Dudas, 492 F.3d at 1369–70; In re Oetiker, 977 F.2d at 1445; and In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). Here, the Examiner’s rejection meets the notice requirement of 35 U.S.C. § 132. We further agree with the Examiner that dependent claims 2–18 and 20 merely recite additional generic computer elements performing generic automation of business activities (e.g., collecting consumer information, and Appeal 2019-004041 Application 14/027,820 43 obtaining items/goods at a discount and passing on some of savings or discounts to the consumer) that are otherwise manually performable. (Final Act. 4–5, 37, 40, 44, 61, 94; Ans. 27, 66, 106, 89, 105, 112, 118, 122–123, 131–132, 154.) We also disagree with Appellant’s arguments that the Examiner has failed to provide factual support or evidence that the dependent claims are well-understood, routine, or conventional. The Examiner has noted that Appellant’s dependent claims require generic computing elements performing generic computer functions. (See Final Act. 4–5, 37, 40, 44, 61, 94; Ans. 4–5, 7–8, 11–12, 27–28, 40 (citing Spec. ¶ 18), 48–49, 53–54, 60–61, 66, 72, 78, 89 (citing Spec. ¶¶ 9, 35, 37, 56, 64–65), 105, 112, 122–123, 132.) The claimed generic computing elements include “an accessible database” (claims 2–4), a “web site” and “telephone system” (claim 4), a “backend system” (claim 7), an “electronic device” (claim 7), an “API” (claim 8), electronic communications (claim 9), a “suitable interface such as web sites” (claim 11), a “smart card,” “RFID card,” email application, USB device, or plastic card (claims 12–13), a “point of sale” (claim 14), electronic communications (claim 15–16), electronic payment systems using “digital and virtual currencies” (claims 17 and 20), and a payment system providing a “wire transfer” (claim 20). (See Appeal Br. 246–250 (Claims Appendix).) These generic computer elements are used in an ordinary manner, and for their ordinary functions, to automate manually performable transactions and operations—such as collection and storage of customer and merchant data (claims 2–8), customer selection of payment methods (claims 7–8 and 20), sale, purchase, and payment transactions to obtain payment instruments/gift cards (claims 9 and 14), passing on savings/discounts to consumers (claims 10–11 and 14–16), making Appeal 2019-004041 Application 14/027,820 44 payments using payment methods other than cash (claims 12–15, 17, and 20), securing payment methods (claim 13), and providing notifications and transaction confirmations to customers (claim 18). (See id.) Appellant does not explain why the generic functionality and generic computing elements recited in the dependent claims would “define innovative technological processes for gift card processing and distribution.” (See Appeal Br. 188.) Like claims 1 and 19, Appellant’s dependent claims 2–18 and 20 only require generic computing elements and recite results-based-functional language that fails to provide sufficient technological detail to demonstrate Appellant’s argued “non-routine” functionality of these claims. (See Appeal Br. 194–206.) We therefore agree with the Examiner that “[d]ependent claims 2–18 and 20 simply append routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception,” the additional elements “serv[ing] merely to limit the use of the abstract idea to a particular environment—that being a computer environment”; and “[n]one of the . . . dependent [claims] effects an improvement to another technology or technical field; nor does any of the claims amount to an improvement to the function of a client device configured to receive discounted gift cards.” (Final Act. 4–5, 37, 40, 44, 61, 94; Ans. 27, 66, 89, 105, 112, 123, 132.) Thus, we sustain the Examiner’s § 101 rejection of dependent claims 2–18 and 20. Other Issues Appellant also argues the Final Action included “new grounds for rejection not necessitated by Applicant’s amendments” because the Final Appeal 2019-004041 Application 14/027,820 45 Action stated that the “claims are directed to certain methods of organizing human activities . . . but . . . the previous Office Action did not say anything about the claims allegedly being directed to certain methods of organizing human activities.” (Appeal Br. 133 (emphasis added).) At the outset, we note that the issue of whether Examiner’s rejection includes a new ground and is improperly made final is a petitionable matter, not a matter appealable to the Board. See MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition, and the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board.”). In addition, we note that under the Revised Guidance (issued January 7, 2019) the Examiner is required to determine whether the claim recites one of “the following groupings of subject matter . . . : (a) Mathematical concepts . . . ; (b) Certain methods of organizing human activity . . . ; and (c) Mental processes.” Revised Guidance, 84 Fed. Reg. at 52 (emphases added). In this case, the Examiner’s Answer (issued after January 7, 2019) has properly followed and applied the Revised Guidance framework. Rejection under 35 U.S.C. § 102 The Examiner, among other things, finds Ocher discloses independent claim 1’s method of providing discounts by which (i) a gift card management system (first entity) obtains electronically delivered merchant gift cards (payment instruments) directly from at least one merchant or merchant provider by “transferring funds to at least one second entity to purchase said payment instruments directly from said second entity at a price that is determined at least in part based on discounted rate provided by said Appeal 2019-004041 Application 14/027,820 46 second entity” followed by (ii) “said first entity allocating said payment instruments among said registered users in exchange for receiving a payment from said users.” (Final Act. 6–7, 96 (citing Ocher ¶¶ 12–13, 54, Fig. 1); Ans. 158–166.) With respect to independent claim 19, the Examiner similarly finds Ocher discloses a method for providing user discounts by (i) “purchasing discounted payment instruments” followed by (ii) a registered “user selecting payment instruments to use for said purchase” and “charging said user for the selected payment instruments, such that said payment instruments are then owned by said user.” (Final Act. 14–15 (citing Ocher ¶ 32).) Having reviewed the evidence, we do not agree with the Examiner’s finding that Ocher discloses upfront buying of merchant gift cards at a discount, followed by distribution or sale of the acquired gift cards to a user, as required by claims 1 and 19. Rather, we agree with Appellant’s arguments that Ocher issues a gift card/payment instrument to a user before compensating a merchant (transferring funds to a merchant for the card). (Reply Br. 14–19; Appeal Br. 206–213, 232, 239–241.) More particularly, paragraph 12 of Ocher explains that its “discount multi-merchant gift card system . . . issu[es] a card with a unique identifier to a user after receiving a payment of a discounted amount . . . such that the user realizes the discount at the time of purchase,” and “pre-fund[s] an account corresponding to each of the merchants.” (Ocher ¶ 12; see also Ocher ¶ 32.) Paragraph 40 provides more detail on Ocher’s transactional flow, explaining that the card “issuer sells a multi-merchant gift card for 95% of the face value” to a user, and “[w]hen the card is used at any participating merchant, the merchant Appeal 2019-004041 Application 14/027,820 47 charges the issuer 94% of the value paid for by the card. . . . [which] enables the issuer to capture 1% of all purchases.” (Ocher ¶ 40.) Thus, Ocher’s issuer does not transfer funds to a merchant to purchase gift cards in bulk before allocating/reselling the gift cards to paying users as required by claims 1 and 19. Rather, Ocher’s issuer receives funds from a user and issues a card thereto, without having to transfer funds to a merchant until after the card is used. (See Ocher ¶¶ 12, 40, 48–49 (after “user 102 uses the card at a merchant,” “an account for the issuer system 112 . . . is utilized to pay the merchant [] when a purchase is made”), 70–71 (“[w]hen making a purchase at a participating merchant, the consumer presents the issuer’s gift card, which causes the merchant’s card processing system . . . to send a processing request to the issuer’s processing unit” and “[t]he issuer will also do some processing, for example . . . transferring funds from the pre-funded account to the merchant”). As the Examiner has not identified sufficient evidence to support the anticipation rejection of independent claims 1 and 19, we do not sustain the Examiner’s anticipation rejection of claims 1 and 19, and claims 2–18 and 20 dependent therefrom.4 4 In the event of any further prosecution, we suggest the Examiner acknowledge the relevant dates of the Ocher reference (US 2012/0191513 A1), as the Ocher reference may not qualify as prior art to Appellant’s invention under any of § 102 or § 103. For example, the Examiner has asserted the Ocher reference as a pre-AIA 35 U.S.C. § 102(b) reference (see Final Act. 6), however, the Ocher reference (by the same inventor as the present application on appeal) was published on July 26, 2012, which is less than one year from the September 20, 2012 priority date of the present application on appeal (the priority date is the filing date of provisional application 61/703,271 to which the present application on appeal claims benefit). Thus, the Ocher reference does not appear to qualify as a § 102(b) Appeal 2019-004041 Application 14/027,820 48 DECISION SUMMARY The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is AFFIRMED. The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 102(b) is REVERSED. In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–20 101 Eligibility 1–20 1–20 102(b) Ocher 1–20 reference. See MPEP § 2133.02(a) (“Overcoming a Pre-AIA 35 U.S.C. 102(b) Rejection Based on a Printed Publication” – A rejection based on pre-AIA 35 U.S.C. § 102(b) can be overcome by (D) Submitting and perfecting a benefit claim under 35 U.S.C. § 119(e). Once the benefit claim under 35 U.S.C. § 119(e) is perfected, the rejection must be reconsidered to determine whether the prior art still qualifies as prior art under pre-AIA 35 U.S.C. § 102(b) (it would not, in view of the September 20, 2012 priority date) or whether the prior art qualifies as prior art under pre-AIA 35 U.S.C. § 102(a) (it would not, because the Ocher reference is by the same inventor as the present application)). To claim the benefit of a provisional application under 35 U.S.C. § 119(e), “the written description and drawing(s) (if any) of the provisional application [i.e., 61/703,271] must adequately support [provide written description support for] and enable the subject matter claimed in the nonprovisional application that claims the benefit of the provisional application.” MPEP § 211.05. In other words, “the disclosure of the prior-filed application [e.g., the provisional application] must provide adequate support [i.e., written description support] and enablement [i.e., permit one of ordinary skill in the art to make and use the claimed invention in the later filed non-provisional application without undue experimentation] for the claimed subject matter of the later-filed application [i.e., the present application on appeal] in compliance with the requirements of 35 U.S.C. 112(a) except for the best mode requirement” (for applications filed on or after September 16, 2012). MPEP § 211.05. Appeal 2019-004041 Application 14/027,820 49 Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed Overall Outcome 1–20 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). PRO SE ASSISTANCE The USPTO has resources available for inventors prosecuting their patent applications themselves. Pro Se Assistance Program: https://www.uspto.gov/patents-getting- started/using-legal-services/pro-se-assistance-program Email: innovationdevelopment@uspto.gov Toll free phone number: 1-866-767-3848 Post Mail: Pro Se Assistance, Mail Stop 24 P.O. Box 1450 Alexandria, Virginia 22313-1450 The USPTO also maintains an Inventors Assistance Center (IAC), which “is staffed by former supervisory patent examiners and primary examiners who are available to answer questions and to help you make filing a patent application simple and efficient” and “[a]nswer general questions regarding patent examining policy,” “[a]nswer questions concerning Appeal 2019-004041 Application 14/027,820 50 necessary formats and items needed for your patent application,” “[a]ssist you with forms needed and with filling out the forms,” “[p]rovide you with general information concerning patent examining rules, procedures, drawings and fees,” and “[s]end you patenting information and forms via email, USPS mail or facsimile,” and “[d]irect your calls to appropriate USPTO personnel or USPTO.gov webpages, as necessary.” https://www.uspto.gov/learning-and-resources/support-centers/inventors- assistance-center-iac. The Inventors Assistance Center can be contacted at toll free phone number 800-PTO-9199 (800-786-9199), local 571-272-1000, and TTY/TDD 800-877-8339. AFFIRMED Copy with citationCopy as parenthetical citation