Jonathan Alan. Leblang

Patent Trials and Appeals Board

Sep 16, 2019

13710088 - (D) (P.T.A.B. Sep. 16, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/710,088 12/10/2012 Jonathan Alan Leblang 25396-0238 6558
126647 7590 09/16/2019
Eversheds Sutherland (US) LLP Am
999 Peachtree Street, NW
Suite 2300
Atlanta, GA 30309
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JONATHAN ALAN LEBLANG
____________________

Appeal 2018-005783
Application 13/710,088
Technology Center 3600
____________________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a purchase of content via a retailer system
for delivery via a content provider system using a redemption identifier.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method, comprising:
receiving, over at least one network and by a content
provider system, from a retailer system, identifying information
associated with one or more physical retail items available for
purchase in a retail environment, wherein the one or more
physical retail items comprise printed content;
identifying, by the content provider system and based at
least in part on the identifying information, electronic content
associated with the one or more physical retail items;
sending, over the at least one network and by the content
provider system to the retailer system, purchase information
associated with the electronic content, wherein the purchase
information comprises a cost associated with the electronic
content;
receiving, over a network and by the content provider
system from the retailer system, a request for a redemption
identifier that facilitates subsequent receipt of the electronic
content by a user device of an intended recipient of the electronic
content, wherein access to the electronic content is provided
based at least in part on the redemption identifier;
generating, by the content provider system, the redemption
identifier based at least in part on the request for the redemption
identifier;

1 Appellant indicates that AMAZON TECHNOLOGIES, INC. is the real
party in interest. (Appeal Br. 2.)

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sending, over the at least one network and by the content
provider system to the retailer system, the redemption identifier
based at least in part on the request for the redemption identifier;
and
causing a physical representation of the redemption
identifier to be generated.

REJECTION
The Examiner made the following rejection:
Claims 1–32 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. (Final
Act. 3.)

ANALYSIS
With respect to independent claims 1, 8, and 23, Appellant does not
set forth separate arguments for patent eligibility of the claims. Therefore,
we select independent claim 1 as the representative claim for the group and
will address Appellant’s arguments thereto. See 37 CFR 41.37 (c)(1)(iv)
(2017).

Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. Appeal Br. 4–16; Reply
Br. 2–4.
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
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specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016) (internal citations omitted). Per Office Guidance,
this first inquiry has two prongs of analysis (i) does the claim recite a
judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim passes muster under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea.
Appellant’s claims generally recite i) gathering underlying data associated
with identifying electronic content, ii) sending purchase information to a
prospective purchaser, iii) receiving a request for a redemption identifier for
the purchase (and subsequent redemption by a third party), and
iv) generating a redemption identifier for electronic content.
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This is consistent with how Appellant describes the claimed
embodiment of the invention. See, e.g., Spec. ¶¶ 14:
In addition to purchasing products for personal use, consumers
often desire to purchase products as gifts for others. For
example, consumers may purchase products online that are
intended for delivery to others as gifts. In addition, consumers
may purchase products at a physical retail location and designate
shipment of the purchased products to others as gifts. However,
conventional systems fail to provide an effective mechanism for
purchasing a product at a retail location ( or online) such that the
product may be subsequently delivered to an intended recipient
based on receipt of an identifier from the intended recipient that
is associated with the product purchase;

15–34 (describing various alternatives in reviewing and purchasing
electronic content). (See also Appeal Br. 7).
Consistent with our Office Guidance and case law, we conclude that
i) gathering underlying data associated with identifying electronic content,
ii) sending purchase information to a prospective purchaser, iii) receiving a
request for a redemption identifier for the purchase (and subsequent
redemption by a third party), and iv) generating a redemption identifier for
electronic content is one of certain methods of organizing human activity
(e.g., a commercial interaction, such as marketing or sales activity)—i.e., an
abstract idea.2 See 84 Fed. Reg. at 52; see also buySAFE, Inc.

2 Alternatively, the claims may be considered to recite an abstract idea
within the category of certain methods of organizing human activity as,
more specifically, a fundamental economic practice. See 84 Fed. Reg. at 52;
see also Ex Parte Bruich, Appeal No. 2016-006500, 2018 WL 2967119, at
*4 (PTAB May 29, 2018) (“Determining the effectiveness of an
advertisement with respect to owners of the particular type of client device is
a fundamental economic practice of a transaction because the more
successful an advertisement is, the higher probability the sale will occur.”);
Ex Parte Mason, Appeal No. 2016-004127, 2017 WL 6034320, at *3 (PTAB
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v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept
of ‘‘creating a contractual relationship—a ‘transaction performance
guaranty’ ’’ is an abstract idea); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (holding that “tailoring
content based on the viewer’s location” (i.e., a function of the user’s
personal characteristics) is the type of information tailoring that is a
fundamental practice long prevalent in our system and is an abstract idea);
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) (concluding “[l]ike the basic concept of tailoring content to a
user, as in Intellectual Ventures I, the basic concept of customizing a user
interface is an abstract idea”).
Claim 1 is reproduced below and includes the following claim
limitations that recite: i) gathering underlying data associated with
identifying electronic content, ii) sending purchase information to a
prospective purchaser, iii) receiving a request for a redemption identifier for
the purchase (and subsequent redemption by a third party), and
iv) generating a redemption identifier for electronic content, emphasized in
italics:
1. A method, comprising:

Nov. 30, 2017) (explaining predicting advertising effectiveness is a
fundamental economic practice because “[d]etermining the effectiveness of
advertising allows modification of advertising to maximize product/service
exposure while controlling advertising expenditures and determination of a
pricing point that results in profitability.”); Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding that
concept of “local processing of payments for remotely purchased goods” is a
“fundamental economic practice, which Alice made clear is, without more,
outside the patent system.”)

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receiving, over at least one network and by a content
provider system, from a retailer system, identifying information
associated with one or more physical retail items available for
purchase in a retail environment, wherein the one or more
physical retail items comprise printed content;
identifying, by the content provider system and based at
least in part on the identifying information, electronic content
associated with the one or more physical retail items;
sending, over the at least one network and by the content
provider system to the retailer system, purchase information
associated with the electronic content, wherein the purchase
information comprises a cost associated with the electronic
content;
receiving, over a network and by the content provider
system from the retailer system, a request for a redemption
identifier that facilitates subsequent receipt of the electronic
content by a user device of an intended recipient of the electronic
content, wherein access to the electronic content is provided
based at least in part on the redemption identifier;
generating, by the content provider system, the
redemption identifier based at least in part on the request for the
redemption identifier;
sending, over the at least one network and by the content
provider system to the retailer system, the redemption identifier
based at least in part on the request for the redemption identifier;
and
causing a physical representation of the redemption
identifier to be generated.

More particularly, the claimed “method” comprises i) gathering
underlying data associated with identifying electronic content, ii) sending
purchase information to a prospective purchaser, iii) receiving a request for a
redemption identifier for the purchase (and subsequent redemption by a third
party), and iv) generating a redemption identifier for electronic content. The
method further comprises additional extra-solution activity of sending the
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redemption identifier and causing a physical representation of the
redemption identifier to be generated.
Because the claim recites an abstract idea, we next determine whether
the claim integrates the abstract idea into a practical application. 84 Fed.
Reg. at 54. To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
recognized practical application. 84 Fed. Reg. at 54–55 (emphasis added);
see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–
(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See also 84 Fed. Reg. at 55.
Rather, the additional limitations merely recite that an informational
content of the electronic content, “a network,” and a “content provider
system” that generates a physical representation of a redemption identifier.
The network is generically recited and “may include, but are not limited to,
any one or a combination of different types of suitable communications
networks, such as… (Spec. ¶ 38 ). Appellant’s Specification additionally
discloses various generic “processors” at the client, retailer, and content
provider computer (see Fig. 2, elements 202, 226, 242; ¶¶ 53 (“The
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processor(s) 202 may include any suitable processing unit capable of
accepting digital data as input, processing the input data based on stored
computer-executable instructions, and generating output data”); 64 (“The
processor(s) 226 may include any suitable processing unit capable of
accepting digital data as input, processing the input data based on stored
computer-executable instructions, and generating output data”); 71 (“The
processor(s) 242 may include any suitable processing unit capable of
accepting digital data as input, processing the input data based on stored
computer-executable instructions, and generating output data.”))
Additionally, the claims do not address a problem necessarily rooted
in computer technology or a problem in the software arts (see Appeal Br. 7–
13); see also MPEP § 2106.05(a); Ans. 9–12 distinguishing the relied upon
citations.
Appellant contends that the claimed invention is similar to the claims
in Visual Memory because they solve a technical problem with a technical
solution.3 (Appeal Br. 6–7). We disagree with Appellant and find that
Appellant’s invention does not solve a technical problem.
Appellant contends that the claimed invention is similar to Trading
Technologies4, and solves a problem specific to digital content access for
which there is no manual analog, and results in increased accuracy and
computing efficiency by performing specific operations at specific computer
systems. (Appeal Br. 12). We disagree with Appellant and find the claimed
“method“ to be similar to the problem solved by a consumer buying a gift
card or gift receipt for any product (electronic content) and delivery of the

3 Visual Memory LLC V. NVIDIA Corp., 867 F.3d 1253 (2017)
4 Trading Technologies Int’l Inc., v. CQG, Inc. et al., 675 F. App’x 1001
(Fed. Cir. 2017)
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gift receipt to a prospective recipient. The gift receipt facilitates subsequent
receipt of the product by a third party and the gift receipt is based at least in
part on the request for the gift reciept and the approval of gift receipt may be
sent to a third party. The final step of causing the physical representation
may be performed at any location. As a result, Appellant’s contention is
unpersuasive.
Appellant argues that the claims are similar to the claims in McRO
Inc. v. Bandai Namco Games America Inc. et al.5 because they are directed
to a specific process that improves a technological process. (Appeal Br. 8–
11). Appellant contends that the claims are limited to specific
implementations with concrete features that allow for managing access to
electronic content associated with a physical object via a physically
generated machine readable redemption identifier, such that a physical
object can be used to access specific digital content that results in increased
accuracy and increased efficiency of computing resources by performing
certain tasks at a “retailer system” as opposed to a “content provider system”
(see e.g., FIG. 2), which results in an improved ability to track active
redemption identifiers and redeemed redemption identifiers. (Appeal Br. 8).
We disagree with Appellant and find that Appellant’s claims do not recite
performing the functions at a specific location, but do send and receive data
at the retailer. Additionally, Appellant’s argument is not commensurate in
scope with the claim language because the claim does not recite any tracking
or efficiency functions.
Appellant asserts the claimed invention provides a particular solution
to a particular problem with specific and concrete operations. (Appeal Br.

5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)).
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10). Appellant further contends that, the specific sequence of operations, as
claimed, allows for the claimed “redemption identifier” to be generated
separate from the physical retail item, which allows for the added ability for
a user to purchase a subset of content, as opposed to content in its entirety.
Appellant also contends the problem solved by the technology of this
application is a unique one that is caused by technology — the increase in
consumption of digital content has created issues when one user desires to
gift digital content to another user, but wants to provide the other user with a
tangible item, and the claims allow for managing access to digital content
while using physical representations or objects that are associated with the
digital content and allowing for transfer of access rights, for example, by
gifting a physical representation of the redemption identifier. (Appeal Br.
10).
We disagree with Appellant and find that the problem solved is
similar to a consumer buying a gift card or gift receipt for any product and
delivery thereof to a prospective recipient, as discussed above, and that the
physical retail item does not specifically form any part of the claimed
“method.” For example, there could be a picture of a book or a barcode
from a book and merely data is being received regarding the item.
Also, the claims at issue in McROrecited a “specific . . . improvement
in computer animation” using “unconventional rules” that related
“sub-sequences of phonemes, timings, and morph weight sets” to
automatically animate lip synchronization and facial expressions for three-
dimensional characters that only human animators could previously produce.
McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. In McRO, “the
incorporation of the claimed rules” improved an existing technological
process. McRO, 837 F.3d at 1314.
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Here, unlike the claims at issue in McRO, Appellant’s claims do not
address a problem specifically arising in the realm of computer networks
(i.e., generating a physical representation of a redemption identifier for a
purchased electronic content does not arise in the realm of computer
networks), nor do they improve an existing technological process, but rather
merely use computers and computer devices that operate in their normal,
expected manner. See DDR Holdings, 773 F.3d at 1258–59; see also Enfish,
822 F.3d at 1335–36 (distinguishing between claims wherein the focus of the
claims is on an improvement in computer capabilities and those that invoke
a computer as a tool).
Appellant contends that the claims are analogous to BASCOM Global
Internet v. AT&T Mobility LLC,6 because the present claims recite a specific
implementation and process that provides benefits over the prior art.
Appellant also contends that the claimed operations provide a benefit of
managing access to electronic content identified by a physical retail item and
a machine readable representation of a redemption identifier, and allowing
users to gift digital content access via physical objects, as well as to acquire
subsets of content. (Appeal Br. 15).
We disagree with Appellant because the claim does not recite
“managing access” to electronic content as part of the claimed “method” that
merely recites “wherein access to the electronic content is provided based at
least in part on the redemption identifier.”
As discussed above, the claims do not improve an existing
technological process. Additionally, unlike the arrangement of elements
(i.e., installation of a filtering tool at a specific location) in BASCOM, 827

6 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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F.3d at 1349–50, and contrary to Appellant’s arguments (see Appeal Br. 15–
16), Appellant’s claims do not recite a non-conventional and non-routine
arrangement of known elements.
Rather, Appellant claims the conventional arrangement of a content
provider system (computer) sending a redemption identifier and generating a
physical representation of the redemption identifier where the rest of the
judicial exception is performed. For at least the foregoing reasons, the
claims do not integrate the judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56.
Appellant further contends the Examiner failed to provide any
additional detail or evidence regarding the assertion that the pending claims
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or any elements are well-understood, routine, and conventional. (Reply
Br. 3–4).7
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. As discussed above, sending or receiving information (e.g.,
identifying information, electronic content, purchase information, and
generating a redemption identifier) merely requires well-understood
functions of a computer/computer network. See buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”). Moreover, Appellant’s recitation of the claim
limitations and conclusory statement that the features of the claims provide
significantly more than an abstract idea under Part II of the Alice/Mayo test
(see Appeal Br. 13–16) is not supported by persuasive evidence or
reasoning. It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see

7 We note the Specification in paragraph 17 discloses the computers “may be
configured to communicate via a network such as a local area network
(LAN).” (See ¶ 17; see also Spec. ¶¶ 36 (“a network such as a local area
network (LAN) 124”); 38 (“network(s) 112 may include, but are not limited
to, any one or a combination of different types of suitable communications
networks… network(s) 206 may include any type of medium over which
network traffic may be carried including’”); 63 (“The payment network(s)
264 may include any suitable payment network”); 37 (“the content provider
system” is disclosed as either a single entity or multiple entities with either a
single components or multiple components and “may in certain
embodiments, multiple entities may each be associated with a corresponding
one or more of the content provider computer(s) and may facilitate, in a
distributed fashion, transactions with retailers involving electronic content
and delivery of the electronic content to an intended recipient.”)).
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also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
Although the Examiner does not expressly cite to Appellant’s
Specification or provide extrinsic evidence, we note that Appellant’s
Specification identifies all the network, processors, and communications are
generically described (see Spec. ¶¶ 38, 58, 64, 71). Outside of the abstract
idea, the additional elements only recite generic computer components and
recite functions that are well-understood, routine, and conventional and
insignificant extra-solution activity. Alice, 573 U.S. at 226. Accordingly,
we agree with the Examiner that the claims are patent ineligible.
For the reasons discussed supra, we are unpersuaded of Examiner
error in representative independent claim 1. Accordingly, we sustain the
Examiner’s rejection of representative independent claim 1 under 35 U.S.C.
§ 101 and claims 2–32 not separately argued. See 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
The Examiner did not err in rejecting claims 1–32 based upon a lack
of patent-eligible subject matter.

DECISION
For the above reasons, we sustain the Examiner’s patent-eligibility
rejection of claims 1–32 under 35 U.S.C. § 101.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–32 § 101 1–32 None
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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).

AFFIRMED