RetailMeNot, Inc.

Patent Trials and Appeals Board

Mar 16, 2021

2020006012 (P.T.A.B. Mar. 16, 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.
14/749,855 06/25/2015 Christopher Kent Copeland 2964P191 4560
8791 7590 03/16/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/16/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER KENT COPELAND
Appeal 2020-006012
Application 14/749,855
Technology Center 3600
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 6, 9, 11–14, 17–19, and 21 as
being patent-ineligible under 35 U.S.C. § 101. 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 RetailMeNot, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to presenting coupons. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of dynamically adjusting a redemption work
flow for an online coupon, or other offer, within limited user-
interface constraints of mobile computing devices relative to
desktop computing devices, the method comprising:
obtaining for a plurality of merchant websites a plurality
of mobile-suitability values, each mobile-suitability value being
indicative of suitability of a respective one of the plurality of
merchant websites for use on mobile computing devices;
receiving, over a network, from a remote mobile
computing device of a user, a request for offer content that
causes the mobile computing device to display an offer;
ascertaining a selected merchant website, among the
plurality of merchant websites, at which the offer is
redeemable;
retrieving, from the plurality of mobile-suitability values,
a selected mobile-suitability value for the selected merchant
website;
obtaining, from the mobile computing device, data
indicative of user-interface constraints of the mobile computing
device;
determining to send instructions to present content on the
mobile computing device, the determination being based on the
user-interface constraints of the mobile computing device and
the selected mobile-suitability value for the selected merchant
website, and the content being suitable for the mobile
computing device; and
sending the instructions to present the content to the
mobile computing device.
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OPINION
The Examiner determines that the claims are patent-ineligible under
35 U.S.C. § 101. Final Act. 6–14. Appellant argues claims 1, 2, 5, 11, 13,
14, 17–19, and 21 as a group. Appeal Br. 5–15. We select claim 1 as
representative of that group. See 37 C.F.R. § 41.37(c)(iv). Claims 2, 5, 11,
13, 14, 17–19, and 21 stand or fall with claim 1. Appellant presents separate
argument for claims 6, 9, and 12. Appeal Br. 15–19.
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 1
falls within the literal scope of this provision because it recites a process.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
(“2019 Eligibility Guidance”).2 The groupings of abstract ideas listed in the
guidance include, for example: “Mathematical concepts,” “Certain methods
of organizing human activity,” and “Mental processes.” 2019 Eligibility
Guidance, 84 Fed. Reg. at 52. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The guidance explains that, when making this determination, we
should consider whether the additional claim elements add “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field” or “simply append[] well-
understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Claim 1
Step 2(A), Prong 1
The Examiner determines that claim 1 recites each of the categories of
abstract ideas discussed above. Final Act. 2–3; Ans. 4–6. Appellant
contends that “none of these ideas is set forth or described in the claim.”

2 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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Appeal Br. 7. Appellant contends that “[w]hile some of the limitations may
be based on mathematical concepts . . . the mathematical concepts are not
recited in the claims.” Id. at 8. Appellant contends that “the claims do not
recite a mental process because the claimed steps cannot be practically
performed in the human mind.” Id. at 8–9 (noting the steps of “obtaining . . .
data indicative of user interface constraints of the mobile computing device”
and “determining to send instructions to present content on the mobile
computing device” and asserting that these steps “involve machine-to-
machine communication for purposes of generating a user-interface”).
Appellant additionally contends that “the claims do not recite any method of
organizing human activity, such as commercial interactions including
advertising, marketing and sales activities or behaviors and business
relations, and managing personal behavior including social activities and
following rules or instructions.” Id. at 9.
The Examiner has the better position, as the claims recite features that
can be included in a number of the abstract idea groupings outlined in the
2019 Eligibility Guidance. For example, “receiving . . . a request for offer
content that causes the mobile computing device to display an offer,”
“ascertaining a selected merchant website . . . at which the offer is
redeemable,” “determining to send instructions to present [offer] content on
the mobile computing device,” and “sending the instructions to present the
[offer] content to the mobile computing device” are each related to methods
of organizing human activity, such as advertising, marketing and sales
activities. It is clear that the steps noted above relate to displaying offers
from a merchant, which involves advertising, marketing, and sales.
Appellant offers no meaningful argument to the contrary. The additional
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steps of “obtaining” various values and data can also be considered part of
the abstract idea including advertising, marketing and sales activities, or
insignificant pre-solution activities for that abstract idea.
Accordingly, we agree with the Examiner that the claim recites at
least one abstract idea as set forth in the 2019 Eligibility Guidance.
Step 2(A), Prong 2
The Examiner determines that the claims do not recite any additional
elements which might integrate the abstract ideas into a practical application.
Final Act. 3–4. The Examiner finds, for example, that “[t]he additional
element(s) of ‘mobile computing devices,’ ‘a network,’ ‘a remote computing
device,’ and ‘instructions’ are recited at a high level of generality, and under
the broadest reasonable interpretation are generic processor(s) and/or generic
computer component(s) that perform generic computer functions.” Id. at 3.
Appellant does not specifically dispute the high level of generality
recited in the claim noted by the Examiner. Rather, Appellant responds, for
example, that “[h]ere, the claimed approach addresses problems with
displaying content from a large number of websites on a large number of
mobile computing devices that are subject to various user interfaces
constraints.” Appeal Br. 11.
Beyond the abstract ideas noted above, however, and as explained by
the Examiner, the claims add nothing more than generic computer
components that perform generic computer functions to implement the
abstract ideas.
For the reasons set forth above, we agree that the claims are directed
to an abstract idea as outlined above.
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Step 2(B)
Because we agree with the Examiner that the claims are directed to an
abstract idea, we next determine whether the claims provide an inventive
concept. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. This requires us
to evaluate whether the additional claim elements add “a specific limitation
or combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Id. The Examiner determines that the claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because they simply perform
generic computer functions on generic computer components. Final Act. 4.
We agree and Appellant does not dispute the Examiner’s determination.
Accordingly, we are not apprised of error in the Examiner’s
determination that the claims do not add any inventive concept.
Claim 6
Claim 6 ultimately depends from claim 1, and recites, for example,
“empirically calculating a plurality of device-category-specific mobile-
suitability values based on historical conversion rates of user devices in
respective categories of mobile computing devices for the respective
merchant websites.” The Examiner determines claim 6 simply recites more
abstract ideas. Final Act. 4–5. Appellant does not dispute the Examiner’s
rejection of claim 6, other than asserting that the limitation noted above
“integrates the alleged abstract idea into a practical application because the
claim recites a specific process of empirically calculating the mobile-
suitability values based on historical conversion rates of the respective
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merchant websites.” Appeal Br. 15. Appellant contends that “[e]mpirically
calculating device-category-specific values can account for different user
devices with far more granularity than more naive approaches.” Id. at 16.
As the Examiner determines, however, claim 6 falls within the
categories of abstract ideas noted above. Final Act. 4–5. Specifically, the
“empirical[] calculati[on]” step addressed by Appellant can be considered a
mathematical calculation. See October 2019 Update 4. In addition to the
plain language of the claim, the Specification supports this understanding.
See, e.g., Spec. ¶ 62 (discussing the calculation as determining a percentage
of viewed offers that were redeemed). This can also properly be considered
a mental process because such a calculation can be performed in a person’s
head or with pen and paper.
The integration alleged by Appellant is simply not present in the
claim, as there is essentially nothing beyond more abstract ideas recited in
claim 6.
Claim 9
Claim 9 depends from claim 1, and further recites requesting instances
of a merchant website with an “automated web browser,” receiving the
instances, and comparing those instances to determine a “mobile-suitability
value.” The Examiner determines that these additional steps, too, recite the
abstract ideas noted above. The Examiner determines that the addition of an
“automated web browser”
does not integrate the judicial exception into a practical
application, nor does it amount to significantly more because it
amounts to adding the words “apply it” with the judicial
exception, using the computer as a tool to perform the abstract
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idea, and generally linking the use of the abstract idea to a
particular technological environment or field of use.
Final Act. 5.
Appellant responds by reproducing claim 9, and concluding that it
“recites a specific way of automatically measuring how well different
websites respond to variation in technical capabilities of mobile computing
devices.” Appeal Br. 17 (citing Spec. ¶¶ 69–70).
The Examiner is correct, however, that the “automated” process
recited in the claim is nothing more than an application on a general
computer, rather than a practical application. This is clear from Appellant’s
Specification, which provides human review as an alternative to the
automated computer review. See, e.g., Spec. ¶¶ 67–69.
Claim 12
Claim 12 depends from claim 1, and further recites “sending the
mobile computing device JavaScript instructions to retrieve a screen
dimension from a window object of a web browser executing on the mobile
computing device and return the screen dimension of the window object.”
The Examiner determines that this, too, is “no more than [] mere instructions
to apply the abstract idea using generic computer components.” Final
Act. 6.
Appellant responds, without much explanation, contending that “[a]t
least this element . . . integrates, into a practical application, the alleged
abstract idea . . . because a screen dimension is obtained in a very specific
manner that accounts for specific requirements of particular mobile
computing device.” Appeal Br. 17. But the screen dimension is obtained
using computer instructions (JavaScript), which is what a computer needs to
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carry out an operation. Appellant does not explain, nor do we see, how this
is anything more than instructions to apply the abstract idea using generic
computer components.
Conclusion
For the reasons set forth above, in view of the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 1, 2, 5, 6, 9,
11–14, 17–19, and 21 under 35 U.S.C. § 101.3
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 9,
11–14,
17–19, 21
101 Eligibility 1, 2, 5, 6, 9,
11–14,
17–19, 21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

3 Appellant additionally contends that “[t]he 2019 [Eligibility Guidance] . . .
appl[ies] the wrong test for determining whether the claims are directed to
an abstract idea” (Appeal Br. 19), which we do not address in this decision.

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AFFIRMED