Sarah Owen et al.

Patent Trials and Appeals Board

Nov 4, 2019

12194720 - (D) (P.T.A.B. Nov. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/194,720 08/20/2008 Sarah Owen 087188-0748084 7134
20350 7590 11/04/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHOI, PETER H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SARAH OWEN, VIRGINIA G. SAYOR,
MATT WITHEY, TODD R. NUZUM, and
BARBARA C. GAINES1
___________

Appeal 2018-008486
Application 12/194,720
Technology Center 3600

____________

Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1–4, 6–18 and 21–
28 under 35 U.S.C. § 134(a). Appeal Brief 5–16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies The First Data Corporation, as the real party in
interest. Appeal Brief 3.
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Introduction
According to the Appellant, “the present invention relate[s] to
methods and systems for managing marketing messages sent to a mobile
device.” Spec. ¶ 1.
Representative Claim
1. A method of managing marketing offers sent to a
mobile device, the method comprising:
receiving a marketing offer at an acquirer system that is
configured to receive transaction information from an entity and
based on account identifier information route transaction
information over a network to an issuer of a particular account to
be used for payment, the acquirer system acting as an
intermediary between a merchant location and a financial
institution;
receiving at the acquirer system an indication of how to
store marketing offers on a particular mobile device that is
separate and distinct from the acquirer system;
generating by the acquirer system delivery rules for
marketing offers based on the received indication;
applying by the acquirer system the delivery rules to the
marketing offer;
receiving by the acquirer system an indication that
identifies an instant location of the particular mobile device;
determining by the acquirer system that the marketing
offer is redeemable based upon the indication that identifies the
instant location of the particular mobile device;
based on the determination and according to the delivery
rules, transmitting the marketing offer from the acquirer system
to the particular mobile device, wherein the marketing offer is
stored on the particular mobile device based on the received
indication;
receiving transaction information at the acquirer system
from a point of sale device that is situated at the merchant
location, the transaction information associated with a
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transaction pending at the merchant location and including
information associated with the
marketing offer provided to the point of sale device from the
particular mobile device;
transmitting by the acquirer system via a financial
network an authorization request to the financial institution to
authorize the transaction;
receiving by the acquirer system from the financial
institution an authorization code to authorize the transaction;
transmitting from the acquirer system to the point of sale
device the authorization code to complete the transaction; and
updating by the acquirer system the delivery rules based
on the redemption of the marketing offer.

Rejections on Appeal
Claims 1–4, 6–18, and 21–28 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2–4.
Claims 1–4, 6–18, and 21–28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gobburu (US Patent Application Publication
2002/0060246 A1; published May 23, 2002), Bemmel (US Patent
Application Publication 2008/0097851 A1; published April 24, 2008) and
Ferguson (US Patent Application Publication 2008/0154723 A1; published
June 26, 2008). Final Act. 5–26.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed May 14, 2018), the Reply Brief (filed
August 27, 2018), the Final Office Action (mailed December 13, 2017) and
the Answer (mailed June 26, 2018), for the respective details.

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35 U.S.C. § 101 Rejection
The Examiner determines, “[w]ith respect to claims 1-4, 6-18, and 21-
28, the independent claims (claims 1 and 15) are directed, in part, to
managing targeted marketing offers sent to a mobile device for use in a
payment transaction” and “[t]hese claim elements are considered to be
abstract ideas because they are similar to ‘tailoring content based on
information about the user’ which was found to be an abstract idea by a
controlling court.” Final Act. 2 (citing Intellectual Ventures I LLC v.
Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015)); see Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Memorandum”). Under the Memorandum,
the Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., (a) mathematical concepts, (b) certain
methods of organizing human activity such as a fundamental
economic principles and practice, commercial or legal
interactions, managing personal behavior, relationships,
interpersonal interactions, (c) mental processes); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed., rev. 08.2017, Jan. 2018)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Appellant contends the claims are not directed to an abstract idea
because:
In the present case, each step of the claim confines a
particular function (transmission, storage, receipt) to a particular
type of data that is necessary to enable the inventive process of
claim 1 for matching a particular type of digital content
(marketing offers) with recipients based on rules associated with
the content and/or the recipient and subsequently delivering the
digital content to mobile devices of the matched recipients for
redemption as part of a purchase transaction.
Appeal Br. 7.
Appellant’s arguments are not persuasive. Instead, pursuant to Step
2A of the Memorandum, we agree with the Examiner’s determination that
the claims are directed to an abstract idea. Final Act. 2–4; Memorandum,
Section III(A) (Revised Step 2A).

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Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
The Specification discloses:
Methods, systems, and machine-readable media are
disclosed for managing marketing offers sent to a mobile device.
According to one embodiment, a method for managing
marketing offers sent to a mobile device can comprise receiving
a marketing offer at the mobile device, receiving at the mobile
device an indication of how to store the marketing offer, and
storing the marketing offer on the mobile device based on the
received indication. For example, the marketing offer can
comprise a Short Message Service (SMS) message, a Multimedia
Message Service (MMS) message, an email message, or another
format message. Receiving the indication of how to store the
marketing offer can comprise receiving the indication from the
user of the mobile device. Additionally or alternatively,
receiving the indication of how to store the marketing offer can
comprise receiving the indication with the marketing offer. The
indication of how to store the marketing offer can comprise an
indication of a location for storing the marketing offer. The
location can comprise a sub-folder of an inbox of the mobile
device, a sub-container of a mobile wallet of the mobile device,
or another location.
Spec. ¶ 5.
Claim 1 recites a method of managing marketing offers sent to a
mobile device, wherein the method comprises:
1. receiving a marketing offer at an acquirer system that is
configured to receive transaction information from an entity and based
on account identifier information route transaction information over a
network to an issuer of a particular account to be used for payment,
the acquirer system acting as an intermediary between a merchant
location and a financial institution,
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2. receiving at the acquirer system an indication of how to
store marketing offers on a particular mobile device that is separate
and distinct from the acquirer system,
3. generating by the acquirer system delivery rules for marketing
offers based on the received indication,
4. applying by the acquirer system the delivery rules to the
marketing offer,
5. receiving by the acquirer system an indication that identifies an
instant location of the particular mobile device,
6. determining by the acquirer system that the marketing offer is
redeemable based upon the indication that identifies the instant
location of the particular mobile device,
7. based on the determination and according to the delivery rules,
transmitting the marketing offer from the acquirer system to the
particular mobile device, wherein the marketing offer is stored on the
particular mobile device based on the received indication,
8. receiving transaction information at the acquirer system
from a point of sale device that is situated at the merchant location,
the transaction information associated with a transaction pending at
the merchant location and including information associated with the
marketing offer provided to the point of sale device from the
particular mobile device,
9. transmitting by the acquirer system via a financial
network an authorization request to the financial institution to
authorize the transaction,
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10. receiving by the acquirer system from the financial institution an
authorization code to authorize the transaction,
11. transmitting from the acquirer system to the point of sale device
the authorization code to complete the transaction, and
12. updating by the acquirer system the delivery rules based on the
redemption of the marketing offer.
These steps comprise fundamental economic principles or practices
and/or commercial or legal interactions; thus, the claim recites the abstract
idea of “certain methods of organizing human activity” such as advertising,
marketing and sales activities. See Memorandum, Section I (Groupings of
Abstract Ideas); see also Spec. ¶¶ 5, 40; OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (concluding that claimed
concept of “offer-based price optimization” is an abstract idea “similar to
other ‘fundamental economic concepts’ found to be abstract ideas by the
Supreme Court and this court”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (holding that claims “describ[ing]
only the abstract idea of showing an advertisement before delivering free
content” is patent ineligible) and Intellectual Ventures I LLC v. Capital One
Bank, 792 F.3d 1363, 1369 (Fed. Cir. 2015) (“There is no dispute that
newspaper inserts had often been tailored based on information known about
the customer—for example, a newspaper might advertise based on the
customer’s location. Providing this minimal tailoring—e.g., providing
different newspaper inserts based upon the location of the individual—is an
abstract idea.”).
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Therefore, we conclude the claims recite an abstract idea pursuant to
Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(1)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception”; it is noted that a “claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Memorandum, Section
III(A)(2).
Appellant argues that the claims in the instant application are patent
eligible:
The present claims are analogous to those in MCRO, Inc.[2]
Specifically, the present claims are limited to specific systems
and processes for matching a particular type of digital content
(marketing offers) with recipients based on rules associated with
the content and/or the recipient and subsequently delivering the
digital content to mobile devices of the matched recipients for
redemption as part of a purchase transaction. Thus, as a whole
the claims are directed to patentable, technological
improvements over existing techniques, which provide one-size
fits all solutions to communications that include decision-based
components.
Appeal Br. 10.

2 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed.
Cir. 2016).
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We do not find Appellant’s arguments persuasive. In McRO, the
Federal Circuit concluded that the claim, when considered as a whole, was
directed to a “technological improvement over the existing, manual 3–D
animation techniques” through the “use[] [of] . . . limited rules . . .
specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316. Specifically, the
Federal Circuit found that the claimed rules allowed computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules were limiting because they defined morph weight sets as a function
of phoneme sub-sequences. McRO, 837 F.3d at 1313.
We find no evidence of record here that the present situation is like the
one in McRO where computers had been unable to make certain subjective
determinations, e.g., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators. The
Background section of one of the patents at issue in McRO, Rosenfeld (US
Patent 6,307,576 B1; issued Oct. 23, 2001), includes a description of the
admitted prior art method and the shortcomings associated with that prior
method. See McRO, 837 F.3d at 1303–06. There is no comparable
discussion in Appellant’s Specification or elsewhere of record.
In addition, we find Appellant’s claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system. See, e.g., DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1249, 1257 (Fed. Cir. 2014)
(holding that claims reciting a computer processor for serving a “composite
web page” were patent eligible because “the claimed solution is necessarily
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rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks”); Visual Memory LLC v. NVIDIA
Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to
“an improved computer memory system” having many benefits were patent
eligible). In the present case, we determine the claims present no similar
technical improvements, because the claims improve, at most, non-technical
aspects of the marketing and financial fields. See Answer 7–8.
Further, as the Federal Circuit has explained, a “claim for a new
abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique
claimed was “[g]roundbreaking, innovative, or even brilliant,” that would
not be enough for the claimed abstract idea to be patent eligible. See Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
The recited limitations do not reflect an improvement in the
functioning of a computer or other technology or technical field. See
Memorandum, 84 Fed. Reg. at 55; cf. Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader
faster and more efficient, not the computer. This is not a technical solution to
a technical problem.”). Further, we do not find Appellant’s arguments
persuasive because the claims utilize general purpose hardware, such as a
mobile device, and networking as a tool to market merchants’ offers. See
Spec. ¶¶ 25–42; see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335–36 (Fed. Cir. 2016) (“[W]e find it relevant to ask whether the claims
are directed to an improvement to computer functionality versus being
directed to an abstract idea . . . the focus of the claims is on the specific
asserted improvement in computer capabilities (i.e., the self-referential table
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for a computer database) or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.”);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d at 1370
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”).
Subsequently, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See Memorandum, Section
III(A)(2). For example, Appellant’s claimed additional elements (e.g.,
mobile device, financial network and point of sale device): (1) do not
improve the functioning of a computer or other technology; (2) are not
applied with any particular machine (except for generic hardware); (3) do
not effect a transformation of a particular article to a different state; and (4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See Memorandum, Section
III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical Application).

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Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
Appellant contends, “[a]s the Memorandum issued by the Deputy
Commissioner for Patent Examiner Policy released on April 19, 2018[3] . . .
notes, ‘an examiner should conclude that an element (or combination of
elements) represents well-understood, routine, conventional activity only
when the examiner can readily conclude that the element(s) is widely
prevalent or in common use in the relevant industry.’” Appeal Br. 7.
Appellant further contends, “[i]n the present case no such citation has been
provided to establish that the entirety of each step of the claimed process
represents well-understood, routine, conventional activity within the relevant
industry.” Appeal Br. 7.
Memorandum, Section III(B) (footnote 36) states (emphasis
added):
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).” April 19, 2018 (hereafter, the “Berkheimer Memorandum”).
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The Berkheimer Memorandum Section III(A) states when formulating
rejections, “[i]n a step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds, and expressly supports a rejection in writing.” The
Berkheimer Memorandum4 provides four illustrations for the Examiner to
follow to provide support. The first illustration requires:
A specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements as well-understood or routine or
conventional (or an equivalent term), as a commercially
available product, or in a manner that indicates that the additional
elements are sufficiently well-known that the specification does
not need to describe the particulars of such additional elements
to satisfy 35 U.S.C. § 112(a). A finding that an element is well-
understood, routine, or conventional cannot be based only on the
fact that the specification is silent with respect to describing such
element.
Berkheimer Memorandum Section III(A)(1).
The Examiner determines that the Specification demonstrates the
well-understood, routine, conventional nature of the additional elements.
See Ans. 4–5 (citing Spec. ¶ 35 (“In other instances, well-known circuits,
processes, algorithms, structures, and techniques may be shown without
unnecessary detail in order to avoid obscuring the embodiments.”) and ¶ 44
(“The network may can be any type of network familiar to those skilled in
the art that can support data communications using any of a variety of
commercially-available protocols, including without limitation TCP/IP,
SNA, IPX, AppleTalk, and the like.”)).
Appellant contends:

4 Berkheimer Memorandum Section III(A).
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While the specification may disclose a number of exemplary
embodiments and outline possible hardware structures that may
be used in accordance with the invention, the claims are tailored
to a specific and very narrow process for delivering a particular
type of graphical report data to a remote user device using one or
more networks. The mere fact that the specification details a
variety of hardware systems that may possibly be used is not
evidence that the claims themselves are not directed to a narrow,
particular useful application of any inventive concepts.
Reply Brief 2.
We do not find Appellant’s argument persuasive because the alleged
narrowness of the claim has no bearing on determining if an additional
element (or combination of additional elements) represents well-understood,
routine, conventional activity. See Berkheimer Memorandum Section
III(A)(1).
The second of the four illustrations requires the Examiner to provide
factual determination support from, “[a] citation to one or more of the court
decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).” Berkheimer
Memorandum Section III(A)(2).
The Examiner further determines, “the data transmission, storage and
receipt claim elements have been recognized by a controlling court as ‘well-
understood, routine and conventional computing functions’ when claimed
generically as they are in the independent claims.” Final Action 3 (citing
Ultramercial). The Examiner further determines, “[t]he fact that the generic
computing devices are facilitating the abstract concept is not enough to
confer statutory subject matter eligibility.” Final Action 3.
Appellant further contends, “[a]s noted in the Appeal Brief, the
Examiner has not demonstrated that the entire claim element is well-
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understood, routine, or conventional, but rather has shown that one word of
each claim element is well-understood, routine, or conventional.” Reply
Brief 2.
We do not find Appellant’s argument persuasive because in
determining if the additional element (or combination of additional
elements) represents well-understood, routine, conventional activity, the
Examiner supported the determination based upon a factual determination as
specified in the Berkheimer Memorandum. See Berkheimer Memorandum
Section III(A)(2).
Accordingly, we conclude claims 1–4, 6–18 and 21–28 are directed to
certain methods of organizing human activity such as advertising, marketing,
and sales activities as identified in the Memorandum and thus an abstract
idea. Furthermore, the claims do not recite limitations that amount to
significantly more than the abstract idea itself. We sustain the Examiner’s
§ 101 rejection of claims 1–4, 6–18 and 21–28.

35 U.S.C. § 103 Rejection
Appellant contends:
Claim 1 recites “the acquirer system acting as an
intermediary between a merchant location and a financial
institution” and “receiving at the acquirer system an indication
of how to store marketing offers on a particular mobile device
that is separate and distinct from the acquirer system”. Thus, the
claims require a distinct mobile device, acquirer system,
merchant, and financial institution. Such recitations are not
taught or suggested by the combination of references.
Appeal Brief 14.
The Examiner finds “neither the claims nor the specification preclude
the mobile phone from being an acquirer system.” Answer 13. The
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Examiner further finds, “[t]he term ‘acting’ is very broad. The acquirer
system ‘acting’ as an intermediary can reasonable be interpreted to mean
that [it] . . . simply behaves like [one] . . . or is similar to [one] . . . but is not
necessary actually an acquirer system.” Answer 13.
Gobburu discloses:
The user places an order to purchase a good or service using a
mobile phone in any desired manner, and the merchant returns
an order confirmation. The user then logs into here-wallet on the
bank’s server using her name and PIN. Upon authentication, the
mobile phone sends the order information to the bank’s server
and the user selects the account and shipping address. The bank’s
server sends the authorization information to the merchant’s
server, which in turn sends a confirmation to the user’s mobile
phone and suitably places a record of the transaction in the user’s
My Transactions database.
Gobburu ¶ 82.
Appellant argues, “Paragraph [0082] of Gobburu instructs that the
mobile phone is used to pay for goods and services at a point of sale device,
and thus serves a similar role as the presently claimed particular mobile
device.” Appeal Brief 15. Appellant concludes, “[t]here is no reason why
one user’s mobile device would have such control over another mobile
device.” Appeal Brief 15.
Appellant further argues, “that a mobile phone is not an acquirer
system. Rather, as readily known in the art, an acquirer is a bank or other
financial entity that helps process and/or route credit and/or debit
transactions and an acquirer system is a processing or computer system of
such an entity that performs the necessary functions.” Reply Brief 4; see
Specification ¶ 21. Appellant’s Specification defines “acquirer” as “an
entity that receives purchase transaction information from a merchant or
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other entity and, based on account identifier information, routes the
transaction information over an electronic funds transfer network to an
issuer of the account being used for payment.” Specification ¶ 21.
We do not agree with the Examiner that Gobburu discloses an
acquirer system as claimed. During examination of a patent application, a
claim is given its broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted) (internal quotation marks omitted). It is noted, that while
the Specification does not explicitly define an acquirer system, it is evident
from the Specification that such a system would not be found on the same
mobile device utilized to initiate the transaction at the merchant. See
Specification ¶ 21.
Appellant contends that Gobburu’s deficiencies are not cured by
Bemmel because “as seen throughout the Bemmel reference, the entity
performing the steps 1-5 outlined above [Appeal Brief 15], such as
transmitting the marketing offer to the particular mobile device, is either the
targeted mobile incentives server or the MIMS controller, neither of which is
a mobile phone” and “[t]here is no teaching or suggestion within either
reference to take functionality from the server in Bemmel and place it in the
mobile phone of Gobburu.” Appeal Brief 15. We agree with these
arguments because there is no need to modify Gobburu’s mobile phone to
incorporate Bemmel server’s functionality. However, as Appellant has
argued, the claims do not require that the acquirer system be incorporated in
the mobile phone. See Appeal Brief 15; Reply Brief 4. Accordingly, it
would have been obvious to one of ordinary skill in the art to utilize
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Bemmel’s acquirer system in conjunction with Gobburu’s mobile phone
wherein the acquirer system acts as an intermediary between a merchant
location and a financial institution. Subsequently, we sustain the Examiner’s
obviousness rejection of claims 1–4, 6–18, and 21–28 not argued separately.
See Appeal Brief 16.

CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–18,
21–28
101 1–4, 6–18,
21–28

1–4, 6–18,
21–28
103 Gobburu, Bemmel,
Ferguson
1–4, 6–18,
21–28

Overall
Outcome
1–4, 6–18,
21–28

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED