John Daniel. Beatty et al.

Patent Trials and Appeals Board

Jul 19, 2019

14925966 - (D) (P.T.A.B. Jul. 19, 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.
14/925,966 10/28/2015 John Daniel Beatty CLVRP009 7059
146691 7590 07/19/2019
Daylight Law, P.C.
626 Jefferson Avenue
Suite 7
Redwood City, CA 94063
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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):
eofficeaction@appcoll.com
eric@daylightlaw.com
paralegals@daylightlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN DANIEL BEATTY,
TAMER MOHAMED EL CALAMAWY, JACOB WHITAKER ABRAMS,
MICHAEL JOSEPH QUINLAN, and JEFFREY BLATTMAN
____________________

Appeal 2018-002818
Application 14/925,966
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-
IN-PART.

1 Appellants indicate the real party in interest is Clover Network, Inc.
App. Br. 3.
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Illustrative Claims
Illustrative claims 1 and 16 under appeal read as follows (bracketed
material added):
1. A computer-implemented method for an extensible
point-of-sale device, comprising:
[A.] registering, with an operating system on the point-
of-sale device, a third-party application to be notified of a
transaction change on the point-of-sale device;
[B.] displaying a user interface to a user during a
purchase transaction on a display of the point-of-sale device
using one of a register module and a payment module;
[C.] receiving the transaction change via the user
interface of the point-of-sale device;
[D.] broadcasting the transaction change to a set of
registered applications, on the point-of-sale device, that
includes the third-party application; and
[E.] taking an action that modifies the purchase
transaction using the third-party application in response to the
broadcasting;
[F.] wherein the set of registered applications are
executed on the point-of-sale device; and
[G.] wherein the set of registered applications share
resources on the point-of-sale device.
16. A computer-implemented method for an extensible
point-of-sale device, comprising:
[A.] displaying a user interface to a user during a
purchase transaction on a display of the point-of-sale device
using one of a register module and a payment module;
[B.] modifying a customer order with a modification
received via the user interface of the point-of-sale device;
[C.] updating a database using the modification and a
server; and
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[D.] broadcasting the modification to a plurality of other
point-of-sale devices.
References2
Henderson et al. US 2002/0060808 A1 May 23, 2002
Beaven et al. US 2004/0186762 A1 Sept. 23, 2004
Shah et al. US 2009/0319382 A1 Dec. 24, 2009
LaPorte et al. US 2011/0307318 A1 Dec. 15, 2011
Priebatsch US 2015/0220963 A1 Aug. 6, 2015
Rejections3
A. 35 U.S.C. § 101
The Examiner rejects claims 1–26 under 35 U.S.C. § 101 “because the
claimed invention is directed to a judicial exception (i.e., an abstract idea)
without ‘significantly more’,” i.e., because the claimed invention is directed
to patent-ineligible subject matter. Final Act. 2–5.
We select claims 1 and 16 as representative, which are the only claims
Appellants substantively separately argue. See 37 C.F.R. 41.37(c)(1)(iv).
To the extent that Appellants discuss claim 11, Appellants merely repeat for
claim 11 the arguments directed to claim 1. Such a repeated argument is not
an argument for “separate patentability.” Id. Appellants do not present
separate arguments for claims 2–10, 12–15, and 17–26. Except for our

2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations to the “Final Action” are to the Final Action mailed on May 9,
2017.
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ultimate decision, we do not discuss the § 101 rejection of claims 2–15 and
17–26 further herein.
B. 35 U.S.C. § 103
i.
The Examiner rejects claims 1, 4–6, and 8 under 35 U.S.C. § 103 as
being unpatentable over the combination of Shah, Priebatsch, and LaPorte.
Final Act. 6–10.
We select claim 1 as representative. Appellants do not argue separate
patentability for claims 4–6 and 8. Except for our ultimate decision, we do
not discuss the § 103 rejection of claims 4–6 and 8 further herein.
ii.
The Examiner rejects claims 11 and 15–23 under 35 U.S.C. § 103 as
being unpatentable over the combination of Shah and Priebatsch. Final Act.
10–15.
Appellants present arguments for claims 11 and 16. Appellants do not
present arguments for claims 15 and 17–23. Except for our ultimate
decision, we do not address the § 103 rejections of claims 15 and 17–23
further herein.
iii.
The Examiner rejects claims 9, 10, and 26 under 35 U.S.C. § 103 as
being unpatentable over the combination of Shah, Priebatsch, LaPorte, and
Beaven. Final Act. 15–16. The Examiner rejects claims 2, 3, 7, 12–14, 24,
and 25 under 35 U.S.C. § 103 as being unpatentable over the combination of
Shah, Priebatsch, LaPorte, and Henderson. Final Act. 16–18.
Appellants do not present arguments for claims 2, 3, 7, 9, 10, 12–14,
and 24–26. Thus, the rejections of these claims turn on our decisions as to
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claims 1, 11, and 16. Except for our ultimate decision, we do not address the
§ 103 rejections of claims 2, 3, 7, 9, 10, 12–14, and 24–26 further herein.
Issues on Appeal
Did the Examiner err in rejecting claims 1 and 16 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1, 11, and 16 as being
obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
Except as discussed below, we disagree with Appellants’ conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner’s
findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
points.
A. Section 101
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
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
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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 Alice, 573
U.S. 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
mathematical formula.” Diehr, 450 U.S. at 187; 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
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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. (citation omitted) (citing Benson and Flook); see, e.g., id. 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.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
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mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).4
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 2019 Memorandum Step 2B.
C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 1
recites an abstract idea:
Claims 1-26 are directed to the idea of sharing transaction data
among multiple applications and modifying the data, which is
considered an abstract idea.
Final Act. 2.

4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Memorandum). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of 2019 Memorandum). See 2019
Memorandum.
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The Examiner further determines:
Exemplary claim 1 recites the following abstract concepts that
are considered to be at least a part of the abstract idea:
-registering, with an operation system on the point-of-sale
device, a third-party application[;]
-displaying a user interface to a user during a purchase
transaction[;]
-broadcasting the transaction change to a set of registered
applications[;]
-taking an action that modifies the purchase transaction
using the third-party application.
Final Act. 2–3 (emphasis added).
The Examiner further determines:
The examiner refers to the following cases (and their associated
judicial descriptor(s)), each of which relate to concepts that are
similar to the concepts claimed:
Intellectual Ventures v. Capital One Bank (2)
(precedential-ineligible) - abstract idea found to be collecting,
displaying, and manipulating data, where this was found to be a
certain method of organizing human activity;
Electric Power Group (precedential-ineligible) - abstract
idea found to be collecting information, analyzing the
information, and displaying certain results, where this was found
to be a certain method of organizing human activity[.]
As indicated above, [Appellants’] claims are directed to
similar concepts. Therefore, the claims are found to be directed
to abstract idea. Similar to the case law cited above, the examiner
finds the abstract idea to include at least the judicial descriptor(s)
of: fundamental economic practice, certain methods of
organizing human activity, an idea of ‘itself’, mathematical
relationships/formulas.
Final Act. 3 (emphasis added).
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C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
Here, the examiner has found that the claims are not
directed to “an improvement to computer technology,” such as
found by the CAFC in Enfish, but to the abstract idea itself.
Final Act. 3 (emphasis added).
C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
The examiner refers to the following exemplary generically-
recited computer elements and their associated functions, which
are considered to be routine, conventional, and well-understood:
-the set of registered applications are executed on the
point-of-sale device.
-inserting an image onto a receipt printed by the point-of-
sale device.
-updating a database using the modification and a server.
-broadcasting the modification to a plurality of other
point-of-sale devices.
In sum, the examiner finds that the claims “are directed to
the use of conventional or generic technology in a nascent but
well-known environment, without any claim that the invention
reflects an inventive solution to any problem presented by
combining the two.” In re TLI Communications LLC, [823 F.3d
607, 612 (Fed. Cir. 2016)].
Final Act. 5 (emphasis and formatting added).

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D. Appellants’ § 101 Arguments & Panel’s Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
D.1.a. Claim 1
D.1.a.i.
The Examiner correctly determines that claim 1 recites the following
limitations:
-displaying a user interface to a user during a purchase
transaction[;]
-broadcasting the transaction change to a set of registered
applications[;]
-taking an action that modifies the purchase transaction using
the third-party application.
Final Act. 2–3 (emphasis and bracketing added).
D.1.a.ii.
Appellants’ Specification states:
A change to a transaction may be, for example, adding new items
to the order, adding additional charges (e.g., for shipping),
including a donation to a charity with the order, adding taxes,
receiving payment information, printing a receipt, applying
coupons, adding a special notice on the transaction, or any other
changes associated with the transaction.
Spec. ¶ 24. Thus, consistent with Appellants’ Specification, as set forth in
paragraph 24, the above limitations in claim 1 describe a business
relationship.
D.1.a.iii.
We conclude the Examiner correctly determines that claim 1 recites a
method directed to the idea of sharing purchase transaction data and
modifying the data (i.e., commercial interactions in a business relationship);
and a business relationship is one of certain methods of organizing human
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activity identified in the 2019 Memorandum, and thus an abstract idea. 84
Fed. Reg. at 52.
D.1.b. Claim 16
As with claim 1, claim 16 recites analogous displaying, modifying,
and broadcasting steps. For the same reasons, we conclude the Examiner
correctly determines that claim 16 recites a method directed to the idea of
sharing purchase transaction data and modifying the data (i.e., commercial
interactions in a business relationship); and a business relationship is one of
certain methods of organizing human activity identified in the 2019
Memorandum, and thus an abstract idea. 84 Fed. Reg. at 52.
D.2. 2019 Memorandum Step 2A, Prong 2
Having determined that claims 1 and 16 each recites an abstract idea,
we now turn to whether claims 1 and 16 are each directed to that abstract
idea, or instead integrates the judicial exception into a practical application.
D.2.a. Claim 1
Appellants contend:
Claim 1 is not directed to an abstract idea as it is directed to an
improvement in computer capabilities rather than a process that
qualifies as an abstract idea for which computers are invoked
merely as a tool. Claim 1 is direct to a specific technical
improvement that improves the extensibility of an extensible
point-of-sale terminal, not an abstract idea. Furthermore, the
aforementioned specific technical improvement is an inventive
concept that renders the claim significantly more than any
purported abstract idea that the claim could be said to be directed
to.
As seen above, claim 1 covers “a computer-implemented
method for an extensible point-of-sale device.” Specifically, it is
directed to a system that improves the coordinated functioning
of a point-of-sale terminal’s native software, and third-party
applications added on to the point-of-sale terminal. The claims
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include “registering a third-party application” to be notified of
a transaction change on a POS device, “broadcasting the
transaction change to a set of registered applications,” and
modifying the purchase transaction “using the third-party
application in response to the broadcasting.”
App. Br. 16–17 (emphasis added).
We agree with Appellants that improving a technological process may
result in integrating the judicial exception into a practical application. This
consideration has also been referred to as the search for a technological
solution to a technological problem. See Amdocs (Isr.), Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (“[T]his claim entails
an unconventional technological solution . . . to a technological problem
. . . .”).
Further, we agree with Appellants that by limiting the broadcasting of
transaction changes to only registered applications, claim 1 recites an
improved technological process (i.e., an improvement to the functioning of
the computer system).
D.2.b. Claim 16
Unlike claim 1, claim 16 does not require “registering” and does not
limit the broadcasting of transaction changes to only registered applications.
D.2.b.i.
Appellants contend:
The claimed approach improves the functionality of the network
of point-of-sale devices because it allows for real time updating
and availability of an enterprises’ information at all points-of-
sale in the network.
App. Br. 24 (emphasis added).
We disagree with Appellants.
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It is well settled . . . that automating conventional activities using
generic technology does not amount to an inventive concept. See
Alice, 134 S.Ct. at 2358 (explaining that “if a patent’s recitation
of a computer amounts to a mere instruction to implement an
abstract idea on ... a computer, that addition cannot impart patent
eligibility”) (internal alteration, citation, and quotations
omitted); Intellectual Ventures, 792 F.3d at 1367 (“claiming the
improved speed or efficiency inherent with applying the abstract
idea on a computer [does not] provide a sufficient inventive
concept”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the
claimed subject matter.”).
LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 996 (Fed. Cir. 2016)
(emphasis added). Appellants’ argument is not persuasive.
D.2.b.ii.
We agree with the Examiner that as to the steps of claim 16, “the
claims are not directed to ‘an improvement to computer technology,’ such as
found by the CAFC in Enfish, but to the abstract idea itself.” Final Act. 3.
In view of Appellants’ Specification, and consistent with the Examiner’s
determinations, we conclude that claim 16 does not integrate the judicial
exception into a practical application. We determine claim 16 does not
recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
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use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 16 is directed to a judicial exception.
D.3. 2019 Memorandum Step 2B
Appellants repeat their “real-time” argument:
[A]spects of claim 16 represent significantly more than any
purported abstract idea towards which claim 16 could be
considered to be directed to. . . . Using this technical approach,
point-of-sale devices in the network can be kept up to date on the
state of other devices in the network in real-time without having
to periodically check in with a central server.
App. Br. 25 (emphasis added).
Again, Appellants’ argument is not persuasive. Although claim 16
recites “more” under step two of the Alice/Mayo analysis, we conclude the
“more” is not patentably significant. Rather, the record shows this “more”
to be the epitome of a well-understood, routine, conventional
element/combination previously known in the industry.
Because claim 16, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
material fact regarding step two of the Examiner’s Alice/Mayo analysis. In
view of Appellants’ Specification, and consistent with the Examiner’s
determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
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See MPEP § 2106.05(d).
E. Appellants’ § 103 Arguments5
E.1. Claim 1
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
The references identified by the Examiner to reject claim
1, do not, taken alone or in any combination, disclose a “set of
registered applications [. . .] executed on [a] point-of sale device”
including a third-party application that has been “registered [. . .]
to be notified of a transaction change” as required by claim 1. . . .
The Examiner relies on LaPorte for the “set of registered
applications” that execute on the point-of-sale device. However,
LaPorte discloses only a single loyalty application that can be
installed on the point-of-sale device. There is no “set of
registered applications” in LaPorte. This is not a trivial
distinction. Claim 1 is directed to an “extensible point-of-sale”
device that is meant to accommodate multiple additional
applications, not a point of sale device on which a specialized
loyalty application has been installed.
App. Br. 28 (brackets in original).
We conclude, after reviewing the Examiner’s rejection (Final Action
and Answer) and consistent with Appellants’ above arguments as to claim 1,
there is insufficient articulated reasoning to support the Examiner’s findings
that the combination of Shah, Priebatsch, and LaPorte discloses or suggests
(or renders obvious) the argued “set of registered applications” limitation.
We do not find in the Examiner cited portion of LaPorte the registered
applications as is required by Appellants’ claim 1. Nor does Examiner

5 The claim 1 contention we discuss is also determinative as to the § 103
rejection of claim 11. Therefore, the § 103 rejection of claim 11 is not
discussed further herein.
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adequately articulate why such would have been obvious to an artisan.
Therefore, we conclude that there is insufficient articulated reasoning to
support the Examiner’s conclusion that claim 1 is rendered obvious by Shah,
Priebatsch, and LaPorte.
E.2. Claim 16
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 16 under 35 U.S.C. § 103(a).
The Examiner cites a portion of Priebatsch where
transaction details from a point-of-sale transaction request are
“transmitted to offer providers registered with the transaction
server 106.” These offer providers are companies that have
signed on to offer promotions based on what customers are
purchasing. The offer providers are not other point-of-sale
devices.
App. Br. 33 (emphasis added).
We disagree with Appellants’ argument. Appellants’ Specification
states:
Described herein are systems and methods for providing
an extensible POS (point-of-sale) platform. Broadly, the systems
and methods described herein may facilitate providing an
extensible POS platform to allow interactions with local services
and/or third-party applications during POS transactions (e.g.,
financial transactions, advertisement transactions, coupon
transactions, etc.) at physical and/or remote retail locations.
Spec. ¶ 13. We determine that consistent with Appellants’ own terms, as set
forth in paragraph 13, the offer providers in Priebatsch (i.e., promotional
campaign servers 112) are part of an “extensible POS platform” and thus
within the scope of claim 16’s “point-of-sale device,” as recited.
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Further, Appellants raise the following argument in contending that
the Examiner erred in rejecting claim 16.
Priebatsch and Shah do not disclose “broadcasting a
modification to a plurality of other point-of-sale devices” as
required by claim 16, and therefore do not disclose or suggest all
of the elements of claim 16 regardless of how they are combined.
App. Br. 34 (emphasis added).
We disagree with Appellants’ argument. Priebatsch states:
In one implementation, the processor is configured, upon
receipt by the communication of a signal indicating a choice by
the consumer to redeem the offer(s) via the merchant device, to
modify the transaction request based thereon before causing
transmission of the transaction request to a payment processor.
In addition, the processor may be configured to cause
transmission of information from records associated with the
consumer to the third parties along with information contained
in the transaction request.
In various embodiments, the processor is further
configured to compensate the merchant by identifying the third
party associated with the promotional offer redeemed by the
consumer; and causing transfer of funds from a financial account
associated with the identified third party to the merchant.
Paragraphs 16–17 (emphasis added).
Contrary to Appellants’ arguments, after reviewing the Examiner’s
rejection, we conclude there is sufficient articulated reasoning to support the
Examiner’s conclusion that the combination of Shah and Priebatsch renders
claim 16 obvious. Appellants construe the disclosure of Priebatsch too
narrowly as artisans would have understood Priebatsch’s disclosure of
transmitting the same information to multiple third parties to teach or at least
suggest using the well-known technique of broadcasting for such
transmission. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
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see also id. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”); see also In re Mouttet 686 F.3d 1322, 1332–
33 (Fed. Cir. 2012) (explaining the test is what cited references “would have
suggested to those having ordinary skill in the art”).

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–15 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) The Examiner has not erred in rejecting claims 16–26 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
(3) Appellants have established that the Examiner erred in rejecting
claims 1–15 as being unpatentable under 35 U.S.C. § 103(a).
(4) The Examiner has not erred in rejecting claims 16–26 as being
unpatentable under 35 U.S.C. § 103(a).
(5) Claims 1–15 have not been shown to be unpatentable.
(6) Claims 16–26 are not patentable.
Appeal 2018-002818
Application 14/925,966

20

DECISION
The Examiner’s rejection of claims 1–15 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is reversed.
The Examiner’s rejection of claims 16–26 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejections of claims 1–15 as being unpatentable under
35 U.S.C. § 103(a) are reversed.
The Examiner’s rejections of claims 16–26 as being unpatentable
under 35 U.S.C. § 103(a) are affirmed.

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

AFFIRMED-IN-PART