Ocher, Alexander

Patent Trials and Appeals Board

Jan 25, 2021

2019004041 (P.T.A.B. Jan. 25, 2021)

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.”).
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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;
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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;
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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.,
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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
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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
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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.
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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
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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.)
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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
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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
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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
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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
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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
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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
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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
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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.”
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(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
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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
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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”),
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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
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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
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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
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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,
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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,
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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,
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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
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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
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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
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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
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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
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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
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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
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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
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§ 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
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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).
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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
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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-
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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
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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
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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
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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
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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
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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
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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
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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
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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)
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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.
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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).
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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