Bitingduck Press, LLC

Patent Trials and Appeals Board

Sep 17, 2020

2020000507 (P.T.A.B. Sep. 17, 2020)

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.
13/932,558 07/01/2013 Christian A. Lindensmith 663.001 1056
30589 7590 09/17/2020
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
CARVALHO, ERROL A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN A. LINDENSMITH
Appeal 2020-000507
Application 13/932,558
Technology Center 3600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, 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, 3, 5–10, 12, and 14–18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The disclosure relates generally to the proper sales
affiliate credit and tracking of digital consumer goods, and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Bitingduck
Press, LLC. Appeal Br. 1.
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more specifically to a method for crediting a physical affiliate
for the sale of digital media to a consumer who downloads a
deliverable unto their personal viewing, recording, listening, or
computing device after sampling or viewing the product in the
physical affiliate’s location.
Spec. ¶ 2.
CLAIMED SUBJECT MATTER
The claims are directed to a computer program product, or a non-
transitory processor readable medium storing one or more software
programs, for providing credit to a physical affiliate for a purchase of a
digital product from an internet merchant different from the physical
affiliate. Claim 1 is illustrative:
1. A computer program product for providing credit to a
physical affiliate for a purchase of a digital product from an
internet merchant different from the physical affiliate, the
computer program product comprising:
a non-transitory processor readable medium comprising:
computer-readable program code that when executed by
hardware receives product information via a port of a
communication device of a computer system which
product information identifies the digital product or
group of digital products for purchase wherein the
product information is obtained and decoded via a
client device from a physical item having attached
thereto at least one of a bar code, a QR code or other
binary printed code which contains the product
information which identifies the digital product, an
internet address identifying the internet merchant, and
said physical affiliate;
computer-readable program code that when executed by
hardware determines that the digital product was
purchased from the internet merchant via the client
device;
computer-readable program code that when executed by
hardware delivers the digital product to a recipient
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device by downloading the digital product via a
computer network; and
computer-readable program code that when executed by
hardware provides credit to the physical affiliate
based on determining that the product information
obtained via the client device identifies the physical
affiliate in a code database and determining that the
digital product was purchased from the internet
merchant using the product information and in an
absence of any participation in the purchase by a point
of sale or other system owned or operated by the
physical affiliate, and without requiring the client
device to be located at the physical affiliate when the
digital product was purchased from the internet
merchant.
Appeal Br. 43–44 (Claims App.).

REJECTIONS
A. Claims 1, 3, 5–10, 12, and 14–18 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite. Final Act. 2.
B. Claims 1–3, 5–10, 12, and 14–182 are rejected under 35 U.S.C. § 101
as being directed toward at least one judicial exception to patent-
eligible subject matter, without significantly more. Final Act. 3.

2 In the Final Rejection, the Examiner states that claims 1–3, 5–12, and 14–
18 are rejected under 35 U.S.C. § 101. However, claims 2 and 11 has been
cancelled. Appeal Br. 44, 47 (Claims App.).
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C. Claims 1, 3, 5–8, 10, 12, and 14–17 are rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as being unpatentable over Bezos3 and Foulser.4
Final Act. 6.5
D. Claims 9 and 18 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as
being unpatentable over Bezos, Foulser, and Reber.6 Final Act. 10.

OPINION
A. Indefiniteness rejection (claims 1, 3, 5–10, 12, and 14–18)
1. Issue
The Examiner concludes that the phrase, “without requiring the client
device to be located at the physical affiliate when the digital product was
purchased from the internet merchant,” is indefinite, because “[t]he physical
affiliate as recited appears to mean a place/store, i.e.[,] that the physical
affiliate is a brick and mortar location,” whereas “as originally presented the
affiliate is a person who is credited when a product is purchase[d].” Final
Act. 2. Accordingly, the Examiner asserts that “it is not clear if the
limitation ‘without requiring the client device to be located at the physical

3 Bezos et al., US 6,092,141, issued Feb. 22, 2000.
4 Foulser et al., US 8,069,088 B1, issued Nov. 29, 2011.
5 The Examiner states in the Final Action that claims 1, 3, 5–10, 12, and 14–
18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bezos
and Foulser. Final Act. 6. However, the Examiner does not provide any
analysis with respect to claims 9 and 18 in the section of the Final Action
discussing the rejection over Bezos and Foulser, and further provides a
separate rejection of claims 9 and 18 over Bezos, Foulser, and Reber. Final
Act. 10–11. Thus, we understand that the Examiner’s obviousness rejection
over Bezos and Foulser applies to claims 1, 3, 5–8, 10, 12, and 14–17.
6 Reber et al., US 2002/0129121 A1, published Sept. 12, 2002.
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affiliate’ means located at a place/store, or at any location where the physical
affiliate (person) is actually present.” Ans. 4.7
Appellant contends that “the term ‘affiliate’ cannot reasonably be
interpreted to mean ‘a person’ who is credited when a product is purchased”
and that, instead, “[t]he intended meaning of the term affiliate from the
specification is a physical merchant, a retailer or party with a physical
presence.” Appeal Br. 14.
The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s conclusion that the phrase “without
requiring the client device to be located at the physical affiliate” is
indefinite.
2. Analysis
We conclude that the affiliate may be “a person who is credited when
a product is purchase[d],” because for example claim 3 recites that “the
physical affiliate is an author of the digital product.” Appeal Br. 44 (Claims
App.) (emphasis added); see also Spec. ¶ 75 (explaining that “authors or
musical artists could sell electronic copies of their works at public

7 In the Final Action, the Examiner further concludes that there is
insufficient antecedent basis for the limitation, “the location of the physical
affiliate,” in claims 9 and 18. Final Act. 3. However, an amendment was
entered on March 13, 2019 amending the limitation “the location of the
physical affiliate” to “a location of the physical affiliate.” Advisory Action
2 (Mar. 13, 2019); Response to Final Action 4, 7 (Mar. 13, 2019). As a
result, this rejection appears to have been withdrawn. Advisory Act. 2; Ans.
4. In particular, the Examiner states in the Answer that the rejection for lack
of written description as to claims 9 and 18 has been withdrawn. Although a
claim limitation lacking antecedent basis is usually rejected as indefinite
rather than as lacking in written description, we understand that the rejection
withdrawn is the rejection based on the lack of antecedent basis.
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appearances and get credit as an affiliate seller in addition to their normal
royalty”).
However, we are not persuaded by the Examiner’s apparent position
that merely because a physical affiliate may include a person, such as an
author, that it could not also include “a place/store, i.e.[,] . . . a brick and
mortar location.” Final Act. 2. Indeed, the Specification suggests that
“physical affiliate” encompasses both a person and a store. For instance, the
Specification describes an affiliate as “a retailer or party with a physical
presence.” Spec. ¶ 34; see also id. ¶ 63 (providing as examples of affiliates
“retailers, merchants, authors, and the like”), ¶ 18 (describing a bookstore
(“Joe[’]s bookstore”) as an affiliate), ¶ 22 (describing a physical retailer as
an affiliate), ¶ 70 (describing a beauty salon, a live music venue, and a
bookstore or music store as affiliates).
Having construed “physical affiliate” to encompass “a retailer or party
with a physical presence,” i.e., encompassing both a store or a person, we
are also not persuaded by the Examiner’s position that “it is not clear if the
limitation ‘without requiring the client device to be located at the physical
affiliate’ means located at a place/store, or at any location where the physical
affiliate (person) is actually present.” Ans. 4. In our view, a skilled artisan
reading the claims in light of the Specification would understand that, where
the physical affiliate is a person, “without requiring the client device to be
located at the physical affiliate” means the client device is not physically
present at the same location as the person (e.g., at the location of a public
appearance). On the other hand, where the physical affiliate is a retailer or
store, “without requiring the client device to be located at the physical
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affiliate means that the client device is not physically present at the brick-
and-mortar retailer or store.
B. Subject matter eligibility rejection (claims 1–3, 5–10, 12, and 14–
18)
1. Issue
The Examiner concludes that claim 1 is directed to “the concept of
managing and compensating an affiliate similar to the abstract idea of both
certain methods of organizing human activity and fundamental economic
practices, which is similar to the concept of managing relationships or
transactions between people and creating contractual relationship[s] found
ineligible in buySAFE[, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014)].” Final Act. 3–4. The Examiner concludes that the additional
limitations in the claim “are used only for data gathering and/or insignificant
extra-solution activity,” merely “attempt to limit the abstract idea to a
particular technological environment,” and/or “merely instruct the
practitioner to implement the abstract idea with high-level, generic
technology executing basic computer functions.” Id. at 4–5. The Examiner
concludes that, “[t]herefore, the limitations of the claim as a whole, when
viewed individually and as an ordered combination, do not amount to
significantly more than the abstract idea.” Id. at 5.
Appellant contends that the claims integrate any alleged abstract
concepts into a practical application, because they “improve upon
technology for selling / distributing digital products, i.e., exclusively digital
content” and/or “solve a technological problem related to the sale of digital
content.” Appeal Br. 21, 25, 27; Reply Br. 3–5. Appellant further contends
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that the claims recite additional limitations that are not well understood,
routine, or conventional. Id. at 17, 18, 24.
Appellant does not separately argue the claims; we, therefore, focus
our analysis on claim 1 as representative. The issues with respect to this
rejection are (1) whether claim 1 integrates the recited abstract ideas into a
practical application, and (2) whether the additional elements recited in the
claim beyond the judicial exception, taken individually and in combination,
results in the claim, as a whole, amounting to significantly more than the
exception.
2. Analysis
We analyze this case under the framework the Supreme Court set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012) and applied in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208 (2014). As the Supreme Court explained in Alice:
In Mayo . . . we set forth a framework for distinguishing
patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, we determine
whether the claims at issue are directed to one of those
patent-ineligible concepts. . . . If so, we then ask, “[w]hat
else is there in the claims before us?” . . . To answer that
question, we consider 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. . . .
We have described step two of this analysis as a search
for an “‘inventive concept’”—i.e., 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 217–218.
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Whether Claim 1 Is Directed to Patent-Ineligible Concept
We begin with the first step of the Mayo test, namely whether a claim
is “directed to” a patent-ineligible concept. On January 7, 2019, the Director
of the USPTO issued the “2019 Revised Patent Subject Matter Eligibility
Guidance” (“Revised Guidance”), which provides further details regarding
how the Patent Office analyzes patent-eligibility questions under 35 U.S.C.
§ 101. 84 Fed. Reg. 50–57 (Jan. 7, 2019). Under the Revised Guidance, the
first step of the Mayo test (i.e., Step 2A of the Revised Guidance) is “a two-
pronged inquiry.” Id. at 54. In prong one, we evaluate whether the claim
recites a judicial exception, such as laws of nature, natural phenomena, or
abstract ideas. Id. If the claim recites a judicial exception, the claim is
further analyzed under prong two, which requires “evaluat[ion of] whether
the claim recites additional elements that integrate the exception into a
practical application of that exception.” Id. The Revised Guidance explains
that, “[i]f the recited exception is integrated into a practical application of
the exception, then the claim is eligible at Prong Two of . . . Step 2A [of the
Revised Guidance].” Id.
Prong One of Step 2A of Revised Guidance
Following the Revised Guidance, we first consider whether claim 1
recites a judicial exception such as an abstract idea.
Courts have held that patent-ineligible abstract ideas include certain
methods of organizing human activity, such as fundamental economic
practices, commercial or legal interactions, and managing personal behavior
or relationships or interactions between people. See, e.g., Alice, 573 U.S. at
219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010). Abstract ideas also
include mental processes, including subject matter that covers performance
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in the mind but for the recitation of generic computer components.
Gottschalk v. Benson, 409 U.S. 63, 69 (1972); 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” was an
abstract idea because it could be “performed by humans without a
computer”).
We find that all the steps of claim 1, collectively as an ordered
combination, recite a method of “providing credit to a physical affiliate for a
purchase of a digital product from an internet merchant different from the
physical affiliate,” which is a method of organizing human activity (e.g.,
commercial interactions) similar to other concepts that have been identified
by the courts as abstract. See, e.g., Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378–1379 (Fed. Cir. 2017) (holding that
“local processing of payments for remotely purchased good” is a
“fundamental economic practice” that, without more, falls within a judicial
exception to patentable subject matter); In re Ferguson, 558 F.3d 1359, 1364
(Fed. Cir. 2009) (holding ineligible claims directed to a method comprising
obtaining a share of total profits from different companies and an exclusive
right to market certain products made by such companies, in return for using
a shared marketing force to market the products).
Claim 1 on appeal is similar to the claims at issue in Bilski and Alice,
in that it is directed to a computer-implemented method for carrying out a
process that was widespread long before computers, the Internet, and
electronic commerce, i.e., the payment of a referral fee. More particularly,
the steps performed by the computer-readable program code of claim 1
correspond to the electronic versions of:
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 receiving product information identifying the product to be
purchased (“information which identifies the digital product”), the
identity/location of the seller (“an internet address identifying the
internet merchant”), and the identity of the referring party
(“physical affiliate”), wherein the product information is obtained
by a customer from a physical item (“wherein the product
information is obtained and decoded via a client device from a
physical item having attached thereto at least one of a bar code, a
QR code or other binary printed code”);
 determining that the product was purchased by the customer from
the seller (“determines that the digital product was purchased from
the internet merchant via the client device”);
 providing the product to the client (“delivers the digital product to
a recipient device by downloading the digital product via a
computer network”);
 paying the referring party (“provides credit to the physical
affiliate”) based on the referring party information provided by the
customer (“determining that the product information obtained via
the client device identifies the physical affiliate in a code database
and determining that the digital product was purchased from the
internet merchant using the product information”), without
requiring the participation of the referring party or requiring that
the customer to purchase the product at the referring party.
Furthermore, we note that among the above steps there are also those
that may be performed entirely in the human mind, for instance “receiving
product information,” “obtain[ing] and decod[ing] . . . product information,”
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“determin[ing] that the digital product was purchased from the internet
merchant via the client device” and “determining that the product
information obtained via the client device identifies the physical affiliate in a
code database and determining that the digital product was purchased from
the internet merchant using the product information.”
Thus, we agree with the Examiner that claim 1 recites an abstract
idea: the claim recites a computer program product for performing “methods
of organizing human activity” – specifically, “commercial . . . interactions”
such as “business relations” – that have been recognized as abstract ideas
and also recites mental processes that can be performed by humans without a
computer. See 84 Fed. Reg. at 52.
Prong Two of Step 2A of Revised Guidance
Although claim 1 recites an abstract idea, it would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception”; i.e., whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception.” 84 Fed. Reg. at 54. This
analysis includes “[i]dentifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
In this case, the only additional elements recited in claim 1 beyond the
judicial exceptions are (1) “[a] computer program product,” (2) “non-
transitory processor readable medium,” (3) “computer-readable program
code,” (4) “hardware,” (5) “a port of a communication device of a computer
system,” (6) “client device,” (7) “physical item having attached thereto at
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least one of a bar code, a QR code or other binary printed code,” (8)
“downloading the digital product via a computer network,” and (9)
“database.”
We agree with the Examiner that these additional elements,
individually or in combination, do not integrate the exception into a practical
application.
One of the “examples in which a judicial exception has not been
integrated into a practical application” is when “[a]n additional element . . .
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” 84 Fed. Reg.
at 55. See also buySAFE, Inc. v. Google, Inc., 765 F.3d at 1354 (stating that
“[t]he Court in Alice made clear that a claim directed to an abstract idea does
not move into section 101 eligibility territory by ‘merely requir[ing] generic
computer implementation’”) (alteration in original). Likewise, “an additional
element [that] adds insignificant extra-solution activity to the judicial
exception” or “does no more than generally link the use of a judicial
exception to a particular technological environment or field of use” does not
integrate a judicial exception into a practical application. 84 Fed. Reg. at 55.
In this case, the majority of the additional elements in the claim recite
only generic hardware and software elements, e.g., “computer program
product,” “non-transitory processor readable medium,” “computer-readable
program code,” “hardware,” “a port of a communication device of a
computer system,” “client device,” and “database.” Moreover, the recited
functions performed by these elements – “receiv[ing] . . . information,”
“obtain[ing] and decod[ing]” information, “downloading,” making certain
determinations, and “provid[ing] credit” (e.g., transferring funds) are all
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conventional functions of a computer. Thus, claim 1 essentially implements
an abstract idea on a computer, which does not suffice to integrate the
abstract idea into a practical application. 84 Fed. Reg. at 55.
Similarly, obtaining the product information from a “physical item
having attached thereto at least one of a bar code, a QR code or other binary
printed code” is insignificant extra-solution activity, because it is merely a
data gathering step to obtain the information necessary to provide credit to
the appropriate referring party. 84 Fed. Reg. 55, n. 31 (explaining that “a
mere data gathering step such as a step of obtaining information about credit
card transactions so that the information can be analyzed in order to detect
whether the transactions were fraudulent” only adds insignificant extra-
solution activity to a judicial exception and does not integrate a judicial
exception into a practical application).
Finally, the claim is limited to providing credit for the purchase of a
“digital product” and requires “downloading the digital product via a
computer network.” However, that the claim limits the use of the judicial
exception (i.e., the abstract idea of the payment of referral fees) to purchase
of digital products “does no more than generally link the use of [the] judicial
exception to a particular technological environment or field of use” and also
does not suffice to integrate the judicial exception into a practical application.
84 Fed. Reg. at 55.
In summary, claim 1 recites an abstract idea and does not integrate the
abstract idea into a practical application. Therefore, claim 1 is directed to an
abstract idea.
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Whether Claim 1 Amounts to “Significantly More”
Finally, the Revised Guidance directs us to consider whether claim 1
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception . . . is indicative that an
inventive concept may not be present.” Id.
Here, as discussed, the only elements recited in claim 1, other than the
abstract idea itself, are generic computer components (i.e., “[a] computer
program product,” “non-transitory processor readable medium,” “computer-
readable program code,” “hardware,” “a port of a communication device of a
computer system,” “client device,” and “database”) and “physical item
having attached thereto at least one of a bar code, a QR code or other binary
printed code.”
The Specification makes clear that all of these elements are well-
understood, routine, and conventional. For instance, the Specification states,
that, with respect to “internet merchant block 12,”
[t]he processor 26 . . . may be any type of processor . . . .
The non-transitory processor readable medium 28 . . .
may be implemented as any type of memory . . . . The
communications device 30 . . . may be implemented as
an optical communications device; a wired
communication device . . . or a wireless communication
device . . . . The input device . . . may be implemented as
. . . any . . . device capable of transmitting signals from a
user to the processor 26. The output device . . . may be . .
. any . . . output device capable of transmitting signals
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from the processor 26 to the user in a user perceivable
format.
Spec. ¶ 37 (emphasis added). The Specification similarly states that “[t]he
web server 32 may be a standard general purpose web server 32 with
general purchase store software,” that “[t]he code database 42 may be
implemented with hardware and software,” and that “[t]he transaction
processing module 36 may be any module, implemented as hardware and/or
software, commonly available, or a custom module, which processes
transactions between the customer 22 and the internet merchant 24.” Id.
¶¶ 38, 41, 45 (emphasis added).
Likewise, the Specification teaches that “[t]he client device 14 may be
implemented as a mobile phone, a tablet computer, an electronic book
reader, a music player, a laptop computer, a desktop computer, a handheld
gaming system, or any other data processing device that is attached to an
optical or radio frequency code reader,” which may in turn be implemented
as “a camera, optical scanner, near field communication reader, or other
barcode or radio frequency identifier reader.” Spec. ¶ 53. The
Specification states that “[t]he code reader module 52 can be a general
purpose code reader module” and that “[m]any such modules are readily
available to read a number of types of optically and radio frequency
readable code.” Id. ¶ 54 (emphasis added).
Finally, “physical item having attached thereto at least one of a bar
code, a QR code or other binary printed code” is also well-known, routine,
and conventional. The Specification teaches a “code generating module 44
[that] uses any of a number of possible ways to combine the information of
affiliate 18 identity, product identity, and any additional desired information
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and generate an optically or radio frequency readable code.” Spec. ¶ 42.
The Specification states that
[t]he codes generated . . . can be any number of currently
existing or not yet invented optically or radio frequency
readable codes. Examples are common bar codes . . . QR
codes, radio frequency identifier codes, and near field
communication codes. . . . The affiliate crediting system
10 can be implemented in a way that the standard ISBN
code that is provided on all physical books for sale can be
supplemented with an additional code to indicate the
affiliate 18 and . . . the internet merchant 24.
Spec. ¶ 42–43 (emphasis added).
In short, claim 1 requires using only a generic computer system,
Internet, and client device, and “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 223. The use of “a bar code, a QR code or
other binary printed code” to encode information, including product
information, is likewise well-known, routine, and conventional. Thus, the
combination of elements recited in claim 1 does not amount to significantly
more than the judicial exception itself, and under 35 U.S.C. § 101 the claim
is ineligible for patenting.

Appellant’s Arguments
Citing among other things to a declaration from the inventor,8
Appellant contends that the claims “improve upon technology for selling /
distributing digital products, i.e., exclusively digital content” and “solve a

8 Declaration under 37 C.F.R. § 1.132 of Christian A. Lindensmith (July 26,
2018) (“Lindensmith Declaration”).
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technological problem related to the sale of digital content, i.e., providing a
balance between the needs of a digital product customer while crediting the
correct physical affiliate for his/her role in making the digital sale.” Appeal
Br. 21–22, 25–26; see also Reply Br. 3, 4–5. Appellant contends that, thus,
“the sequencing of digital exchanges as set forth in independent claims 1 and
10 effectively integrates . . . concepts [set forth in the claims] into a practical
application,” i.e., “a comprehensive system which improves a consumer’s
experience by allowing the consumer to physically review digital items in a
merchant’s store and thereafter digitally retrieve and pay for those items
from an unrelated internet merchant at the consumer’s leisure at any location
and at virtually any future point in time while still providing a credit to that
merchant.” Appeal Br. 28.
We are not persuaded. As discussed above, the “sequencing of . . .
exchanges” cited by Appellant as providing the alleged improvement is an
abstract idea. The fact that the exchanges are digital (i.e., performed by
computers) does not render the claims patent-eligible. To the extent such
“sequencing of digital exchanges” in claim 1 in fact improved the process of
providing credit to a physical retailer when an online purchase is made, the
Supreme Court has explained that in order for such a process to be patent-
eligible, it is the implementation of the abstract idea, not merely the abstract
idea itself, that must provide the improvement. Parker v. Flook, 437 U.S.
584, 594–95 (1978) (holding that a claim that provides a “new and
presumably better method for calculating alarm limit values” is not patent-
eligible where the only novel feature was the mathematical formula (i.e.,
abstract idea)).
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Appellant contends that the claims integrate any abstract idea into a
practical application because the claim recites “a real-world, physical act and
a practical application of the use of the ‘at least one of the bar code, a QR
code or other binary printed code’ which contains the product information.”
Reply Br. 4–5. Appellant contends that the claim limitations “employ the
information provided by the judicial exception” and provide “a meaningful
limit on the alleged judicial exception.” Reply Br. 4.
We are not persuaded. Like the respondent in Flook, Appellant
“incorrectly assumes that if a[n] . . . application implements a principle in
some specific fashion, it automatically falls within the patentable subject
matter of § 101.” Flook, 437 U.S. at 593.9 We acknowledge that an
additional element may integrate a judicial exception into a practical

9 Appellant contends that the claim is “analogous to the practical-
application-steps in the October 2019 Subject Matter Eligibility Guidelines
of ‘vaccinating a second group of domestic cats in accordance with the
lowest-risk vaccination schedule.’” Reply Br. 4. We are not persuaded. In
that example, the abstract idea recited in the claim was the mental process of
“analyzing information about the vaccination schedules . . . to determine a
lowest risk vaccination schedule.” USPTO, October 2019 Update: Subject
Matter Eligibility (the “October 2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf). “[V]accinating a second group of domestic cats
in accordance with the lowest-risk vaccination schedule” thus applies the
recited judicial exception. In contrast, in this case, the abstract idea is a
method of organizing human activity (i.e. the method executed by the
claimed computer program product for providing credit to a physical
affiliate). The performance of the abstract method itself, therefore, cannot
be said to be an “application” of the abstract idea. See, e.g., Bilski, 561 U.S.
at 599, 611 (2010) (holding claimed method to be patent ineligible as
directed to the abstract idea of hedging despite steps requiring initiating
series of transactions).
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application if it “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or manufacture that is
integral to the claim.” 84 Fed. Reg. 55 (emphasis added). In this case,
however, claim 1 recites only a generic “physical item”; moreover, the
physical item is used merely as a means for providing data for use in the
method performed by the claimed computer program product.
“Use of a machine that contributes only nominally or insignificantly
to the execution of [a] claimed method (e.g., in a data gathering step or in a
field-of-use limitation) would not integrate a judicial exception or provide
significantly more.” MPEP § 2106.05(b) (citing CyberSource v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“We have held that
mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim
statutory.’”) (alterations in original)). Thus, the incidental use of the recited
generic “machine or manufacture” (i.e., “physical item having attached
thereto at least one of a bar code, a QR code or other binary printed code
which contains the product information”) does not suffice to integrate the
abstract idea recited in claim 1 into a practical application, even if, according
to Appellant, the particular combination of data included on the physical
item (i.e., “information which identifies the digital product, an internet
address identifying the internet merchant, and [the] physical affiliate”) is
novel.
Finally, citing again to the Lindensmith Declaration, Appellant
contends that the “unique sequencing of digital exchanges according to
independent claims 1 and 10 was not widely prevalent or in common use
among publishers and vendors of digital content at the time of Appellant’s
discovery.” Appeal Br. 25. Appellant contends that, for instance,
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“determining that the digital product was purchased from the internet
merchant” where the internet merchant is different from the physical
affiliate, and “provid[ing] credit to the physical affiliate . . . in an absence of
any participation in the purchase by a point of sale or other system owned or
operated by the affiliate” and “without requiring the client device to be
located at the physical affiliate when the digital product is purchased from
the internet merchant,” as required by the claims, are not “well understood,
routine, or conventional . . . when viewed in relation to a sales transaction
focused exclusively on digital content.” Id. at 17–18. Likewise, Appellant
contends that “a physical item . . . ‘having attached thereto at least one of a
bar code, a QR code or other binary printed code which contains the product
information which identifies the digital product, an internet address, and said
affiliate’ was not well understood, routine, or conventional activity in any
field, much less . . . the relevant field, i.e., a retailer desiring to sell digital
content.” Id. at 24.
We are not persuaded. As discussed above, the limitation of
“provid[ing] credit to the physical affiliate . . . in an absence of any
participation in the purchase by a point of sale or other system owned or
operated by the physical affiliate, and without requiring the client device to
be located at the physical affiliate when the digital product was purchased
from the internet merchant,” is part of the statement of the abstract idea and,
on its own, cannot render the claim patent-eligible even if it is novel. Flook,
437 U.S. at 591 (1978).
Similarly, physical items having attached thereto at least one of a bar
code, a QR code, or other binary printed code containing product
information is well-known, routine, and conventional, as shown by
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statements in the Specification cited above. See, e.g., Spec. ¶ 42 (stating that
“[t]he codes . . . can be any number of currently existing or not yet invented
optically or radio frequency readable codes” and that “[e]xamples are
common bar codes . . . QR codes, radio frequency identifier codes, and near
field communication codes” (emphasis added)); see also infra FF15, FF16,
FF19, FF20 (prior art teaching use of binary printed codes such as barcode
to encode information relating to the product, the associate/affiliate, and the
merchant).
Finally, to the extent Appellant argues it is not well-known, routine, or
conventional to encode the particular combination of information in the bar
code, QR code, or other binary printed code, we find that the particular
information used in the method performed by the claimed computer program
product is part of the recited abstract idea and thus does not confer patent
eligibility on claims that are not otherwise eligible.
Accordingly, we affirm the Examiner’s rejection of claim 1 as being
directed to a judicial exception to patent eligible subject matter, without
significantly more. Claims 2, 3, 5–10, 12, and 14–18, which are not
separately argued, fall with claim 1.

C. Obviousness rejections over Bezos and Foulser (claims 1–3, 5–8,
10, 12, and 14–17) and Bezos, Foulser, and Reber (claims 9 and
18)
1. Issue
The same issues are dispositive for both of the obviousness rejections.
We, therefore, discuss them together. The Examiner finds that Bezos
discloses most of the limitations of claim 1 but does not disclose that “the
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product information is obtained and decoded via a client device from a
physical item having attached . . . a . . . code which . . . identifies the digital
product, an internet address identifying the internet merchant, and . . .
physical affiliate”; that “the product is a digital product or group of digital
products”; and “computer-readable program code that when executed by
hardware” “determine[s] that the digital product was purchased from the
internet merchant via the client device” and “delivers . . . the digital product
to a recipient device by downloading the digital product via a computer
network.” Final Act. 6–7. However, the Examiner finds that Foulser
teaches or suggests these limitations. The Examiner concludes that a skilled
artisan would have had reason to modify Bezos with the teachings of Foulser
in order to “enable identification of products and the other transactional
information . . . to facilitate the purchase of digital products.” Id. at 7.
Appellant contends that “the combination of Bezos with Foulser still
would not teach or suggest Appellant’s invention.” See, e.g., Reply Br. 9–
10. Appellant further contends that it would not have been obvious to
modify the teachings of Bezos with those of Foulser. Appeal Br. 36; see
also Reply Br. 8–10. Finally, Appellant contends that “Appellant’s claims
solve a long felt need facing independent publishers of digital content that
existed long before Appellant’s priority date.” Appeal Br. 40; see also
Reply Br. 10–11.
Appellant does not separately argue the claims. We, therefore, focus
our analysis on claim 1 as representative. The issues with respect to these
rejections are (1) whether a preponderance of evidence supports the
Examiner’s conclusion that the combination of Bezos and Foulser renders
claim 1 prima facie obvious, and, if so, (2) whether Appellant has provided
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evidence of long-felt need that, when considered together with the evidence
of obviousness, shows claim 1 to be non-obvious.

2. Findings of Fact
1. Bezos teaches “an Internet-based referral system that
enables individuals and other business entities (‘associates’) to market
products, in return for a commission, that are sold from a merchant’s
Web site.” Bezos Abstract.
2. Bezos teaches that,
[f]ollowing registration, the associate sets up a Web site
(or other information dissemination system) to distribute
hypertextual catalog documents that includes marketing
information (product reviews, recommendations, etc.)
about selected products of the merchant. In association
with each such product, the catalog document includes a
hypertextual “referral link” that allows a user
(“customer”) to link to the merchant’s site and purchase
the product.
Bezos Abstract.
3. Bezos teaches “a preferred format of a URL 400 used by
an associate to create a referral link to the merchant Web site,” which
comprises “the merchant Web server information 402, the unique
product ID 404, the unique store ID 406, and an associate commission
scheme ID 408.” Bezos 11:4–7.
4. Bezos teaches that, in its system,
[w]hen a customer selects a referral link, the customer’s
computer transmits unique IDs of the selected product
and of the associate to the merchant’s site, allowing the
merchant to identify the product and the referring
associate. If the customer subsequently purchases the
product from the merchant’s site, a commission is
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automatically credited to an account of the referring
associate.
Bezos Abstract; see also id. at 1:66–2:14, 7:21–40, 10:55–60, 12:59–63,
14:38–41.
5. Bezos teaches that “[t]he customer computer 108 may be
any type of computing device that allows a user (‘customer’) to
interactively browse Web sites via a Web browser 112.” Bezos 6:6–9.
6. Bezos teaches “an associate database of the merchant site”
that stores “a unique associate ID . . . (together with other associate
information),” wherein the associate ID is generated and assigned to the
associate applicant during the enrollment process. Bezos 2:39–44; see
also id. at 11:7–9, 14:38–41.
7. Bezos teaches that,
[a]lthough the embodiment described herein uses Web
technology to disseminate the catalog documents, any of
a variety of document types and electronic dissemination
technologies can be used. For example, the associate’s
catalog documents may be in the form of hypertextual e-
mail messages that are disseminated by a list server, or
PUSH documents disseminated by a PUSH server. As
interactive television, video-on-demand, and Web TV
technologies continue to evolve, it is contemplated that
the “catalog documents” will include video
advertisements that are displayed to the customer on a
television screen. Further, although hypertextual catalog
documents are preferably used, it is possible for an
associate to use non-hypertextual catalogs (including
paper-based product catalogs) that simply instruct the
customer to manually enter the appropriate URL
(including the referral information) into a browser
program.
Bezos 8:32–48.
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8. Foulser teaches
[s]ystems and methods for crediting a retailer for an
online purchase made by a consumer while the consumer
is located within or in the proximity of a store location of
the retailer.
Foulser Abstract; see also id. at 1:6–11, 2:3–5, 2:17–19, 2:66–
3:3, 5:66–6:6.
9. Foulser teaches an exemplary system including retailer “having
a physical retail store location.” Id. at 3:49–52.
10. Foulser teaches that,
[a]fter browsing a retail location for a product, a
consumer can purchase the product from an Internet
merchant different than that of the retailer using a mobile
or networked client device. The client device can include
a module for determining the location of the client device
at the time of purchase and include the location
information with information used to complete the
purchase of the product.
Foulser Abstract, see also id. at 3:3–10, 3:56–63.
11. More particularly, Foulser teaches
a computer program product for providing a credit to a
retailer for a purchase made by a consumer from an
Internet merchant. The computer program product can
include a computer-readable medium including
computer-readable program code for receiving
information identifying a product for purchase;
computer-readable program code for receiving
information identifying a location of a device used by the
consumer to purchase the product; computer-readable
program code for determining whether the location of the
device corresponds to a retail location of the retailer; and
computer-readable program code for providing a credit to
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the retailer based on a determination that the location of
the device corresponds to a retail location of the retailer.
Foulser 1:43–56; see also id. at 2:5–16, 2:19–29, 3:12–15, 5:66–6:6.
12. Foulser teaches “completing, by the computer system, the
purchase of the product,” after receiving information “identifying a product
a consumer intends to purchase” and “information identifying a location of
the consumer.” Foulser 2:21–23; see also id. at 10:21–23, 10:26–28
(teaching that, “[i]f the consumer . . . purchased a digital product for
download, the Web server . . . can transmit the product to the client device
. . . via the Internet”).
13. Foulser teaches “the term ‘products’ should be interpreted to
include tangible products and intangible products, as well as services.”
Foulser 3:54–56. Foulser teaches that the products may be digital products.
Id. at 10:26–28.
14. Foulser teaches that “[t]he client device . . . can include a
portable computer . . . , mobile phone . . . , personal digital assistant . . . , or
other device having Internet or other communication capabilities.” Foulser
3:64–67.
15. Foulser teaches that the client device can include a product
identification module, which can include “a scanner . . . for scanning a
barcode, such as a universal product code (‘UPC’), a two-dimensional
barcode, a Quick Response code (‘QR code’), a European
Article Numbering (‘EAN’) barcode, or other type of barcode.” Foulser
4:44–50; see also id. at 4:57–65 (teaching that product identification module
can also include an RFID reader for reading RFID tags or a camera for
taking a picture of a barcode, in-store signage associated with a product, or
the product itself), 7:15–19, 9:4–9, 9:46–52, 10:21–23, 9:46–52.
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16. Foulser teaches that “[i]n certain exemplary embodiments, an
in-store poster or other signage associated with a product may have a
barcode or other scannable image or graphic printed or attached thereon for
the consumer [to] scan with the client device.” Id. at 4:50–53.
17. Foulser teaches
a data storage unit coupled to the computer system for
storing information identifying a plurality of retailers; and
a retailer crediting module coupled to the computer system
for determining whether the location of the device
corresponds to a retail location of the retailer and for
providing a credit to the retailer based on a determination
that the location of the device corresponds to a retail
location of the retailer.
Foulser 1:62–2:2; see also id. at 3:12–15, 5:66–6:30, 6:55–62, 6:67–7:10.
18. Foulser teaches that
location information can include an actual geographic
location, a store identifier, or a retailer identifier. The
online merchant can match the location information with
retailer information to determine whether a credit for the
purchase should be given to a retailer.
Foulser Abstract; see also id. at 3:10–12.
19. Foulser teaches a location identification module of a client
device that can include “a scanner for scanning in-store posters or signage
having information identifying the retailer . . . and/or the retail store
location,” which can include “the name of the retailer . . . , a code for the
retailer . . . , a store name, or a store code.” Id. at 5:24–30; see also id. at
8:5–8, 9:25–27.
20. Foulser teaches that “a retailer . . . that displays signage for an
online merchant 120, or a QR code associated with a link to purchase a
product from an online merchant 120 can receive additional credits when a
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consumer . . . purchases the product from an online merchant 120.” Id. at
8:56–62.

3. Analysis
Except as otherwise noted, we adopt the Examiner’s findings of fact
and reasoning regarding the scope and content of the prior art with respect to
claim 1 (Final Act. 6–7, 9–12, FF1–FF20) and agree that claim 1 is obvious
over Bezos and Foulser. We address the Appellant’s arguments below.
Only those arguments timely made by Appellant in the briefs have been
considered; arguments not presented in the briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant contends that “the combination of Bezos with Foulser still
would not teach or suggest Appellant’s invention.” See, e.g., Reply Br. 9–
10. More particularly, Appellant contends that Bezos does not teach
“physical affiliates,” “a potential customer/client obtain[ing] digital product
information from a physical item at the location of a physical affiliate,” or
“provid[ing] a credit to the physical affiliate . . . in the absence of any
participation in the purchase by a point of sale or other system owned or
operated by the [physical] affiliate.” Appeal Br. 31–33, 39; see also Reply
Br. 5–7, 9. Appellant contends that Foulser does not teach “provid[ing]
credit to the physical affiliate . . . without requiring the client device to be
located at the physical affiliate when the digital product was purchased from
the internet merchant.” Appeal Br. 34; see also id. at 37–38.
We are not persuaded. As an initial matter, “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. . . .
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[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
In this case, to the extent Bezos does not clearly teach a “physical
affiliate,” i.e., “a retailer or party with a physical presence,” Spec. ¶ 34,
Foulser clearly teaches such affiliates.10 See, e.g., FF9. Foulser also teaches
a client device obtaining product information “via a client device from a
physical item having attached thereto at least one of a bar code, a QR code
or other binary printed code,” and further teaches that such product
information may include information identifying the product, the retailer
(i.e., physical affiliate), and the Internet merchant. FF15, FF16, FF19, FF20.
Similarly, Foulser teaches crediting a retailer for an online purchase
from a different Internet merchant, made by a consumer from a client device
after browsing a retailer location for a product (i.e., “in an absence of any
participation in the purchase by a point of sale or other system owned or
operated by the physical affiliate”). FF10, FF11. Indeed, contrary to
Appellant’s argument, we find that Bezos also suggests or teaches providing
credit to the physical affiliate in an absence of any participation in the
purchase by a point of sale or other system owned or operated by the
physical affiliate. For example, assuming for the sake of argument that
providing hypertextual links on an associate’s website or in an e-mail
message may be considered “participation in the purchase by a point of sale

10 The Examiner appears to find that Bezos discloses physical affiliates. See,
e.g., Final Act. 6–7. However, we do not rely on this finding in our decision
because, as the Examiner points out, Foulser explicitly teaches physical
affiliates, i.e., a retailer or party with a physical presence. Ans. 7.
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or other system owned or operated by the . . . affiliate,” we note that Bezos
also teaches that an associate can use paper-based product catalogs that
“simply instruct the customer to manually enter the appropriate URL
(including the referral information) into a browser program” to purchase a
product. FF7. In such a scenario, there is no participation in the purchase
by a point of sale or other system owned or operated by the affiliate.
Neither are we persuaded by Appellant’s contention that claim 1 is
non-obvious because Foulser does not teach “provid[ing] credit to the
physical affiliate . . . without requiring the client device to be located at the
physical affiliate when the digital product was purchased from the internet
merchant.” Appeal Br. 34; see also id. at 37–38.
First, although Foulser teaches a method that credits retailer for an
online purchase made by a consumer while the consumer is located within a
store location of the retailer, the method also allows crediting of the retailer
where a consumer is not within a store location but in the proximity of the
store location. FF8. Appellant does not explain why the broadest
reasonable interpretation of “without requiring the client device to be located
at the physical affiliate,” consistent with the Specification, would not
encompass a scenario where the client device is in proximity of the store
location but not within (i.e., at) the physical affiliate. In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000).
Moreover, although Foulser teaches that in certain embodiments the
location of the client device refers to actual geographic location, Foulser also
teaches that location information may simply refer to the name or code of a
retailer or store, obtained for example by scanning an in-store poster or
signage containing such information. FF18, FF19. In other words, the
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“location” of the device, for purposes of Foulser’s method, can be distinct
from the “actual geographical location” of the device, such as that obtained
through a GPS system. Id. These teachings suggest a method of crediting a
physical affiliate for the purchase of a digital product “without requiring the
client device to be located at the physical affiliate [(i.e., without requiring
the client device to be geographically within a retail location of a physical
affiliate)] when the digital product was purchased from the internet
merchant,” for instance where a customer uses the client device to scan the
in-store poster or signage to obtain location information in the form of store
name or code but purchase the digital product only after leaving the store.
Finally, Bezos teaches that an associate may receive a credit even if a
purchase was made separate from the associate’s website, by providing a
physical item (e.g., paper-based product catalogs) containing information
regarding the internet merchant, the product ID, and the unique store (i.e.,
affiliate) ID in the form of a referral code that the customer can then enter
manually. FF3, FF7. Although Bezos does not explicitly teach an
associate/affiliate with a physical presence, Foulser does, and the
combination of these teachings suggests the claim limitation of providing
credit to a physical affiliate “without requiring the client device to be located
at the physical affiliate when the digital product was purchased from the
internet merchant.”
Appellant also contends that,
while Foulser discloses “an in-store poster or other signage associated
with a product which may have a barcode or other scannable image or
graphic printed or attached thereon” for a consumer to scan with a
device, Foulser does not suggest that the barcode or other scannable
image should be printed or attached to an identifier card . . . which can
be conveniently removed from the store, or that the barcode or
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scannable image should contain product information that identifies
three required elements: the digital product, an internet address and
the affiliate.
Appeal Br. 35–36, 38–39; see also Reply Br. 7–10. Appellant contends that,
in fact, “neither Foulser nor Bezos disclose or suggest that the barcode or
scannable image should contain product information that identifies three
required elements: (i) the digital product, (ii) an internet address and (iii) the
affiliate.” Reply Br. 8–9.
We are not persuaded. Claim 1 does not require that the barcode or
other scannable image be printed or attached to an identifier card that can be
conveniently removed from the store.11 Foulser teaches in-store poster or
other signage that may have a bar code or other scannable images that
identify a product, that identify the store (i.e., physical affiliate), or that
identify the internet merchant. FF15, FF16, FF19, FF20. It would have
been obvious to a skilled artisan to combine these teachings to arrive at “a
physical item having attached thereto at least one of a bar code, a QR code
or other binary printed code which contains the product information which
identifies the digital product, an internet address identifying the internet
merchant, and [the] physical affiliate,” because “[t]he combination of

11 Even if claim 1 required an “identifier card . . . which can be conveniently
removed from the store,” we note that Bezos teaches “paper-based product
catalogs” containing information relating to the product, the
associate/affiliate, and the Internet merchant. FF7. Such a paper-based
product catalog would have the ability to be conveniently removed from a
store. This teaching, combined with Foulser’s teaching to encode product
information using barcode or other scannable image, would render obvious
“barcode or other scannable image [encoding product information] printed
or attached to an identifier card . . . that can be conveniently removed from
the store.”
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Such a combination is particularly obvious
in this case because Bezos explicitly teaches the combination of information
that identifies a product, an internet merchant, and the referring
associate/affiliate for purposes of providing credit to a referring
associate/affiliate, albeit in a referral link rather than in “at least one of a bar
code, a QR code or other binary printed code” on a physical item.FF3.
Appellant further contends that it would not have been obvious to
modify the teachings of Bezos with those of Foulser and that “the Examiner
has proposed a combination that a person of skill in the art would not
consider.” Appeal Br. 36–37; Reply Br. 8–10. In this regard, Appellant
contends that “the combined teachings of Foulser and Bezos would not teach
a system that provides a consumer with an opportunity to physically review
items in a merchant’s store, i.e., at the location of the physical affiliate.”
Reply Br. 9.
We are not persuaded. Both Bezos and Foulser teach referral systems
that enable individuals and other business entities to market products sold by
an Internet merchant in return for a commission. A skilled artisan would
have had reason to combine the teachings of these two references in order to
extend the benefit of the referral system discussed in Bezos, see, e.g., Bezos
1:24–46 (invention addresses problems faced by online merchants to
effectively market goods via their Web sites and to efficiently attract
potential consumers to their Web sites), by allowing an Internet merchant to
“efficiently market and sell goods” in cooperation with a retailer or party
with a physical presence, such as those described in Foulser, as well as with
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the “Web sites or other network sites of respective business partners” taught
by Bezos. Neither has Appellant provided any specific, persuasive reason
why a skilled artisan would not have considered combining Bezos and
Foulser.
As to Appellant’s contention that the cited prior art combination
“would not teach a system that provides a consumer with an opportunity to
physically review items in a merchant’s store, i.e., at the location of the
physical affiliate,” Reply Br. 9, we note that Foulser explicitly teaches that a
benefit of its invention is to allow “retailers having physical retail locations .
. . a means to capitalize on in-store Internet purchases in order to avoid
losing significant revenue” while continuing to “allow consumers to browse
products in a retail store location but purchase the product outside of the
retailer’s environment,” e.g., via an Internet Web site of a different
merchant. Foulser 1:23–39. Moreover, claim 1 does not recite “a system
that provides a consumer with an opportunity to physically review items in a
merchant’s store,” and, “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A]ny need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR,
550 U.S. at 419–20.
Finally, citing to the Lindensmith Declaration, Appellant contends
that “Appellant’s claims solve a long felt need facing independent publishers
of digital content that existed long before Appellant’s priority date.” Appeal
Br. 39–41; see also Reply Br. 10–11.
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“Evidence that an invention satisfied a long-felt and unmet need that
existed on the patent’s filing date is a secondary consideration of
nonobviousness.” Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1332 (Fed. Cir. 2009). We agree with the Examiner, however, that
Appellant has not provided persuasive evidence of “a long-felt need
alleviated by the [invention],” such as by providing “evidence to explain
how long this need was felt, . . . when the problem first arose,” and how the
invention “met any such ‘need.’” Perfect Web Technologies, Inc., 587 F.3d
at 1332–1333.
Appellant contends that the Lindensmith Declaration includes
citations to articles “which describe the changes facing independent
bookstores in the 1995 to 2009 timeframe and the difficulty facing
independent publishers of ebooks where the titles are not available in print,
i.e., ‘showrooming’ was not available as a sales mechanism so readers could
not discover new books on a physical display,” as well as citations to articles
“which describe the state of the art just prior to Appellant’s priority date and
the difficulty at that time in developing sales channels for ebooks.” Appeal
Br. 39–40. Appellant contends that, unlike the solutions proposed in the
state of the art prior to Appellant’s priority date, Appellant’s claims
“bridg[e] the gap between (i) online selling and (ii) selling ebooks in
physical spaces.” Id. at 40.
We are not persuaded. Putting aside the fact that Appellant provides
no specific citations to the articles where the alleged “long-felt” problem is
described, Appellant has cited little evidence, other than attorney argument
and conclusory statements in the inventor declaration, that the claimed
invention has solved the problem(s) of “changes facing independent
Appeal 2020-000507
Application 13/932,558

37
bookstores,” “difficulty facing independent publishers of ebooks where the
titles are not available in print,” and “difficulty . . . in developing sales
channels for ebooks.” Appeal Br. 39–40. In this regard, we note that
“[a]ttorneys’ argument is no substitute for evidence,” Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989), and opinion evidence in
declarations has little value without factual support, In re Beattie, 974 F.2d
1309, 1313 (Fed. Cir. 1992). In any event, “evidence of secondary
considerations does not always overcome a strong prima facie case showing
of obviousness.” Perfect Web Technologies, 587 F.3d at 1333 (internal
quotation marks omitted). We find that Appellant’s proffered evidence that
the invention alleviated a long-felt need, which is conclusory at best, does
not overcome the strong prima facie case of obviousness in view of the
combination of Bezos and Foulser.
According, we affirm the Examiner’s rejection of claim 1 over Bezos
and Foulser. Claims 3, 5–8, 10, 12, and 14–17, which are not separately
argued, fall with claim 1. Appellant provides no additional argument with
respect to the rejection of claims 9 and 18 over Bezos, Foulser, and Reber.
We, therefore, affirm the rejection for the same reasons discussed above.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–10,
12, 14–18
112(b) or 112
(pre-AIA),
second
paragraph
Indefiniteness 1, 3, 5–10,
12, 14–18
1, 3, 5–10, 101 Eligibility 1, 3, 5–10,
Appeal 2020-000507
Application 13/932,558

38
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 14–18 12, 14–18
1, 3, 5–8,
10, 12,
14–17
103 Bezos, Foulser 1, 3, 5–8,
10, 12,
14–17

9, 18 103 Bezos, Foulser,
Reber
9, 18
Overall
Outcome
1, 3, 5–10,
12, 14–18

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).

AFFIRMED