Brian Maw et al.

Patent Trials and Appeals Board

Jul 31, 2019

13895091 - (D) (P.T.A.B. Jul. 31, 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.
13/895,091 05/15/2013 Brian Maw 37537.0014U2- 4574
126944 7590 07/31/2019
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN MAW and JENNIFER DOGIN
____________

Appeal 2018-0018401
Application 13/895,091
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify MasterCard International Incorporated as the real party
in interest. Appeal Br. 2.
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THE INVENTION
Appellants state, “[a]spects of the disclosure relate in general to
financial services. Aspects include an apparatus, system, method and
computer-readable storage medium to enable the linkage of electronic offer
vouchers. Other aspects include presenting and using the linked electronic
offer vouchers in payment.” Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A payment processor method comprising:
receiving at the payment processor, from a
merchant via a network interface, an electronic
voucher offer, the electronic voucher offer
including offer terms;
categorizing, with a microprocessor, the
electronic voucher offer into a predetermined
category;
searching, with the microprocessor, an
electronic database for a complementary voucher
offer, the complementary voucher offer based at
least in part on the predetermined category;
electronically linking the electronic voucher
offer to the complementary voucher offer;
storing the electronic voucher offer and the
electronic link to the complementary voucher
offer in a database.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Lutnick US 2008/0167106 A1 July 10, 2008
Postrel US 2011/0153403 A1 June 23, 2011

The following rejections are before us for review.
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Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1–4, 7–12, and 15–18 are rejected under 35 U.S.C. § 102(a)(1)
as being anticipated by Postrel.
Claims 5, 6, 13, 14, 19, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Postrel and Lutnick.

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–5 in the
Final Office Action and on pages 2–14 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–20 under 35 U.S.C. § 101.
The Appellants argue independent claims 1, 9, and 15 as a group
(Appeal Br. 5), and we select claim 1 as the representative claim for this
group, and so the remaining independent claims, including those claims
dependent thereon (which are not argued separately), stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
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meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance 84
Fed. Reg. at 53; see also MPEP §§ 2106.05(a)–(c), (e)–(h).
The Specification states:
Increasingly, third party vendors, such as
Groupon or Living Social, act as merchant
relationship managers and sell vouchers on a
merchant's behalf. Such merchant relationship
managers sell the voucher to the customer,
allowing the customer to print the voucher at
home, pocketing part of the sale, and forwarding
the rest of the sale to the merchant.
Often when a voucher is redeemed at a
merchant, the amount of goods or services
purchased usually exceeds that of the voucher.
Customers must then make another financial
transaction to pay for the difference, which is an
inconvenience.
Another problem with vouchers is that if the
voucher is misplaced or lost, often the monetary
value associated with the voucher cannot be
redeemed.
Spec. ¶¶ 5–7.
Understood in light of the Specification, claim 1 recites, in pertinent
part, “receiving . . . , from a merchant . . . , a . . . voucher offer, the . . .
voucher offer including offer terms; categorizing . . . the electronic voucher
offer into a predetermined category; searching . . . [a] database for a
complementary voucher offer, the complementary voucher offer based at
least in part on the predetermined category; . . . linking the electronic
voucher offer to the complementary voucher offer; storing the electronic
voucher offer and the . . . link to the complementary voucher offer in a
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database.”
The Examiner found and we agree that claim 1 “is directed to a
method for payment processing, facilitating redemption of vouchers.” (Final
Act. 3). Claim 1 requires “receiving . . . , from a merchant . . . , a . . .
voucher offer, the . . . voucher offer including offer terms; categorizing . . .
the electronic voucher offer into a predetermined category; searching . . . [a]
database for a complementary voucher offer; . . . linking the electronic
voucher offer to the complementary voucher offer.” These are all steps in
the process of marketing or sales activities which constitute a certain method
of organizing human activity. The patent-ineligible end of the spectrum
includes methods of organizing human activity. Guidance 84 Fed. Reg.
at 52, citing Alice, 573 U.S. at 220. In addition, because the linking of a
voucher to a complimentary voucher may occur between merchants (see
Spec. ¶29), the claims also are directed to commercial or legal interactions,
which also are certain methods of organizing human activities, which again
is a judicial exception that falls within the purview of the abstract ideas
articulated in the recent Guidance. Guidance 84 Fed. Reg. at 52, see also,
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Turning to the second prong of the “directed to” test, claim 1 only
generically requires a “payment processor,” “a microprocessor,” a “network
interface” and “a database.” These components are described in the
Specification at a high level of generality. See Spec. ¶¶ 26–28, Figs. 1, 2.
We fail to see how the generic recitations of these most basic computer
components and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
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more than a drafting effort designed to monopolize the judicial exception.”
Guidance 84 Fed. Reg. at 53.
Thus, we find that claim 1 recites the judicial exception of methods of
organizing human activities that are not integrated into a practical
application.
That the claim does not preempt all forms of the abstraction or may be
limited to voucher offers, does not make it any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas/judicial exceptions, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:
The claim does not include additional
element(s) that are sufficient to amount to
significantly more than the judicial exception
because the additional elements: a) receiving from
a merchant a voucher offer, the voucher offer
including offer terms; are limitations toward
accessing or receiving data (gathering data).
Accessing data is very well understood, routine
and conventional computer task activity; it
represents insignificant solution activity (see
specification paragraphs 10, 82, 93 and figs. 3 and
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4 of instant pg. pub.)
Other elements such as a microprocessor, is
disclosed in Applicant’s original filed specification
at paragraphs 10, 46, 64 and Figs. 2-3 of instant
pg. pub.). It is disclosed as with such level of
generality ‘... [0046] Processor 2100 may be any
central processing unit, microprocessor, micro-
controller, computational device or circuit known
in the art....’, that it does not add specific limitation
or element to the claim other than a well
understood, routine and conventional computer
well known in the industry.
(Final Act. 3–4 (emphasis omitted)). We agree with the Examiner. “[T]he
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea . . . on a generic computer.”
Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, categorize, search, link and store data amounts to
electronic data query and transmit same are some of the most basic functions
of a computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In
re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions.
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Considered as an ordered combination, the computer components of
Appellants’ claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (retrieve,
categorize, search, and link) and storing is equally generic and conventional
or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract);
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling,
and monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a methods of organizing human
activities using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 225–26.
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 5–12). We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of the same.
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Appellants argue, “[t]he subject matter of linking electronic voucher
offers with complementary voucher offers, is not similar to any idea
previously found to be abstract.” (Appeal Br. 7).
We disagree with Appellants. The step of linking one type of data
with another based on a rule is an abstraction because it is a concept
performed in the human mind. See Guidance 84 Fed. Reg. at 52. For
example, when a person orders a hamburger, they usually link toppings for it
based on their mental preferences and executed by mental thought, e.g.,
selection of catsup and pickles, etc. Merely using a computer to perform
more efficiently what could otherwise be accomplished mentally does not
confer patent-eligibility. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Can., 687 F.3d 1266, 1279 (Fed. Cir. 2012) (“Using a computer to accelerate
an ineligible mental process does not make that process patent-eligible.”);
MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1267 (Fed. Cir. 2012)
(“While running a particular process on a computer undeniably improves
efficiency and accuracy, cloaking an otherwise abstract idea in the guise of a
computer-implemented claim is insufficient to bring it within section 101.”).
Appellants further argue, “unlike other practices found ineligible by
the courts, this is not just the computerization of some long-standing
practice, but something that is fundamentally ‘rooted in computer
technology’ like DDR Holdings.” (Appeal Br. 9).
We fail to see the similarities asserted by Appellants between the
claims on appeal here and those adjudicated as eligible in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Appeal
Br. 9, 11–12). In DDR Holdings, the court evaluated the eligibility of
t h e claims based on “address[ing] the problem of retaining website
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visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the court found that the claims were patent
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258–59 (citing Ultramercial, 772 F.3d a t 715–
16). As noted there, the Ultramercial claims similar to those before us
here, were “directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 714).
Nevertheless, those claims were held patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellants next argue,
the Examiner has ignored the actual claim
limitations and characterized the claims as an
“abstract idea” over-generalized the claims to be
“b) categorizing, the voucher offer into a
predetermined category; c) searching for a
complementary voucher offer, the complementary
voucher offer based at least in part on the
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predetermined category; linking the voucher offer
to the complementary voucher offer; e) storing the
voucher offer and the complementary voucher
offer.”
(Appeal Br. 9).
We disagree with Appellants. To the extent Appellants argue that the
Examiner erred in adequately supporting this determination by not providing
evidence, we are unpersuaded. In this regard, the Examiner found that
“[c]laim 1[] is directed to a method for payment processing, facilitating
redemption of vouchers.” (Final Act. 3 (emphasis omitted)). As found
above, there is no error in this finding. That the Examiner focused on one of
plural judicial exceptions present in claim and not another as identified by
Appellants, is not error because “[a]n abstract idea can generally be
described at different levels of abstraction.” See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016).
Additionally we note, there is no requirement that Examiners must
provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea. See, e.g., Manual of Patent
Examining Procedure § 2106.07(a)(III) (2018) (“The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require ‘evidence’ that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues.” (Citations omitted.))
Moreover, the Federal Circuit made clear in Berkheimer that “not
every § 101 determination contains genuine disputes over the underlying
facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360,
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1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not
require evidentiary support for independent claim 1 because “[t]he
limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
All that is required of the USPTO to meet its prima facie burden is
that the Examiner set forth the statutory basis of the rejection and the
reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must “notify the applicant,”
“stating the reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of continuing the
prosecution of his application.” 35 U.S.C. § 132; see also In re Jung,
637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened
burden on examiners beyond the notice requirement of § 132”). Here, as we
found above, the Examiner has made these findings as required by the
statute. (See Final Act. 3–5).
Appellants argue,
It is further emphasized that the claims do not
merely implement the alleged abstract idea on a
generic computer, but rather, specifies how the
user interface acts in a very specific manner,
communicate/receive specific information,
evaluates and allocates data in a specific manner. It
should be apparent that this not how a generic
computer operates ‘in its normal, expected
manner....’ Rather, these activities go well beyond
what is routine and conventional.
(Appeal Br. 12).
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Appellants offer insufficient evidence as to why reference to “a user
interface” is meaningful beyond the face of the language itself other than
being the way that data are carried within the network. There is no further
discussion in the Specification of the particular technology for performing
this claimed step. See Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d at 1336
(focusing on whether the claim is “an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.”). Although “a user interface” to communicate
with a server is in some sense technological, its use in operating system
functionality can be said to be so notoriously settled that merely invoking it
is no more than abstract conceptual advice to use well known technology for
its intended purpose. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 612–613 (Fed. Cir. 2016) (Using a generic telephone for its intended
purpose was a well–established “basic concept” sufficient to fall under Alice
step 1.).
To the extent Appellants are arguing an additional element, such as a
“user interface” constitutes an inventive concept, such features cannot
constitute the “inventive concept.” Berkheimer v. HP Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that
the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use
of the ineligible concept to which it is directed cannot supply the inventive
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concept that renders the invention ‘significantly more’ than that ineligible
concept.”).
Claim 1 only generically recites a payment processor, a network
interface, and a microprocessor. Also, claim 1, for example, functionally
recites “electronically linking the electronic voucher offer to the
complementary voucher offer,” but does not claim a particular way of
programming or designing the software to create such a link having these
features, but instead merely claims the result. See McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery”). Essentially, the claims are directed to certain
functionality—here, a method for facilitating redemption of vouchers.
Alternatively, the claims are not directed to a specific improvement in the
way computers operate. Cf. Enfish, 822 F.3d at 1335–36.
That the language also includes a general reference to the use of “a
network interface” access function, does not make the corresponding generic
recitations of the claimed basic computer components and/or of a system so
effective as to integrate the judicial exception in a way that “imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance
84 Fed. Reg. at 53. Absent evidence to the contrary, we view the claimed
network interface, payment processor, and database to be only an indication
of the environment in which the abstract idea is practiced.
MPEP 2106.05(h) concern[s] generally linking use
of a judicial exception to a particular technological
environment or field of use, including a discussion
of the exemplars provided herein, which are based
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on Bilski, 561 U.S. at 612, and Flook, 437 U.S. at
588–90. Thus, the mere application of an abstract
method of organizing human activity in a
particular field is not sufficient to integrate the
judicial exception into a practical application.
Guidance 84 Fed. Reg. at 55 n.32, see also Alice Corp., 573 U.S. at 223.
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 1–20.

35 U.S.C. § 102(a)(1) REJECTION
Claims 1–4, 7–12, and 15–18 are rejected under 35 U.S.C. 102(a)(1)
as being anticipated by Postrel.
Each of independent claims 1, 9, and 15 requires, in one form or
another, “searching, with the microprocessor, an electronic database for a
complementary voucher offer, the complementary voucher offer based at
least in part on the predetermined category.”
The Examiner found concerning this limitation that:
(see category and sub-category, paragraph 163;
See also Postrel discloses ‘...[0237] In the
alternative to using a single reward points issuer as
described above, the exchange computer may
present the user with an option to redeem points
from multiple issuers and combine the total
redeemable value to pay [Examiner interprets
combined total redeemable value as
complementary voucher offer]for the desired
item...’, paragraph 237.
‘... For example, a group of merchants may
band together and form a cluster of merchants, in
which they all agree to negotiate with issuers under
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the same terms and conditions with respect to the
maximum allowable reward payment portion as
well as other matters [Examiner interprets reward
payment portion as complementary voucher
offer]...’, paragraph 246.
(Final Act. 6–7 (emphasis omitted)).
Appellants argue the following:
On page 6 of the Final Office Action, the
Examiner alleges that paragraphs 163 and 246
of Postrel disclose, ‘searching, with the
microprocessor, an electronic database for a
complementary voucher offer, the complementary
voucher offer based at least in part on the
predetermined category[,]’ by stating ‘... a group
of merchants may band together and form a cluster
of merchants, in which they all agree to negotiate
with issuers ... with respect to the maximum
allowable reward payment portion as well as other
matters [Examiner interprets complementary
voucher offer].’ (Final Office Action page 6)
However, searching an electronic database
with a microprocessor is different from a cluster of
merchants agreeing to negotiate. Furthermore, if
the Examiner is equating a complementary
voucher offer with ‘as well as other matters’, the
Examiner would be clearly speculating on the
contents of ‘other matters.’ Appellants assert that
rejections based on anticipation and obviousness
must rest on a factual basis, and not speculation.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Consequently, this element is also not taught by
the Postrel reference.
(Appeal Br. 15–16).
We agree with Appellants. “A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
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v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The
independent claims require at least “searching, with the microprocessor, an
electronic database for a complementary voucher offer.” We fail to see that
the disclosed “cluster” of merchants in Postrel equates to the claimed
database. The definition of a database is “a usually large collection of data
organized especially for rapid search and retrieval (as by a computer)2.”
According to Postrel: “The clusters maybe formed based on virtually any
type of organizations, such as by product types sold by the merchants,
geographic locations of the merchants, size of the merchants (e.g. in terms of
gross sales amounts), etc.” Postrel ¶ 246. The grouping of merchants in
clusters is a matter of organization, but it is not a collection of data and is
without mention of rapid search and retrieval capabilities as by a computer.
Therefore, we will not sustain the Examiner’s anticipation rejection of
independent claims 1, 9, and 15.
Because claims 2–4, 7, 8, 10–12, and 16–18 are dependent, and
because we cannot sustain the Examiner’s anticipation rejection of claims 1,
9 and 15, the Examiner’s rejection of claims 2–4, 7, 8, 10–12, and 16–18
likewise cannot be sustained.
The obvious rejection of claims 5, 6, 13, 14, 19, and 20 does not
remedy the deficiency found above in the anticipation rejection and hence it
cannot be sustained as well.

2 Database Definition, Merriam-Webster.com, https://www.merriam-
webster.com/dictionary/database (last visited July 18, 2019).
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1–4, 7–12, and
15–18 under 35 U.S.C. § 102(a)(1).
We conclude the Examiner erred in rejecting claims 5, 6, 13, 14, 19,
and 20 under 35 U.S.C. 103(a).

DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED