Kiefer, Stuart

Patent Trials and Appeals Board

Jan 31, 2020

14191217 - (D) (P.T.A.B. Jan. 31, 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.
14/191,217 02/26/2014 Stuart Kiefer 87188-901983 6962
20350 7590 01/31/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART KIEFER
___________

Appeal 2019-000729
Application 14/191,217
Technology Center 3600
____________

Before ERIC B. CHEN, MIRIAM L. QUINN, and DANIEL N. FISHMAN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–4, 6–15, and 19–21. Claims 1, 5, and
16–18 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to the dynamic generation of coupons.
(Abstract.)
Claim 2, reproduced below, is illustrative of the claimed subject
matter, with bracketing added and with disputed limitations in italics:
2. A method of dynamically generating coupons
associated with a tangible instrument, comprising:
[i] producing a tangible presentation instrument having a
tangible barcode and a separate storage device, the storage
device comprising at least one of a magnetic strip, an RF
transmitter, a smart chip, and a solid state storage device, the
bar code and the storage device representing different stored
information, wherein producing the presentation instrument
includes associating the tangible barcode of the presentation
instrument with information about a manufacturer’s coupon
offer that has an expiration date and associating the storage
device of the tangible presentation instrument with information
about a coupon offer account from which funds for the
manufacturer’s coupon offer will be received;
[ii] distributing the tangible presentation instrument to a
customer;

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as First Data
Corporation. (Appeal Br. 2.)
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[iii] receiving, by a computing system from a website
over a network, a request to register the tangible presentation
instrument that has an initial coupon value associated therewith,
wherein the request includes at least one of demographic
information, personal information, historical spending
information, and survey information associated with a
particular individual;
[iv] increasing, by the computing system based on the
received request, the initial coupon value associated with the
tangible instrument to a coupon value greater than the initial
coupon value as incentive for the particular individual to
register the tangible instrument;
[v] transmitting a particular message to the customer
selected from the group consisting of: a message notifying the
customer of a coupon offer expiration date when approaching; a
message notifying the customer of a new coupon offer when
available for redemption with the tangible presentation
instrument; and a message notifying the customer of a loyalty
offer when available, the loyalty offer based on the customer’s
usage of the tangible presentation instrument;
[vi] receiving coupon offer information obtained by
scanning the tangible barcode at a merchant to verify
fulfillment of terms of the manufacturer’s coupon offer;
[vii] receiving coupon offer account information from a
merchant, wherein the coupon offer account information is read
from the separate storage device;
[viii] coordinating the reception of funds in an amount of
the coupon value from the manufacturer;
[ix] transferring the received funds to the merchant;
[x] tracking coupon redemption history associated with
the tangible presentation instrument;
[xi] generating additional coupon offers specific to the
tangible presentation instrument based on the customer’s
coupon redemption history; and
[xii] associating the additional coupon offers with the
tangible presentation instrument.
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REFERENCES
Name Reference Date
Rajan et al. US 2009/0061884 A1 Mar. 5, 2009
Carlson et al. US 2008/0167991 A1 July 10, 2008

REJECTION2
Claims 2–4, 6–15, and 19–21 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
Claims 2–4, 6–15, and 19–21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Carlson and Rajan.

OPINION
§ 101 Rejection
We are unpersuaded by Appellant’s arguments (Appeal Br. 8–12; see
also Reply Br. 2–6) that independent claim 2 is directed to patent-eligible
subject matter under 35 U.S.C. § 101.
The Examiner determined that “the independent claims are directed to
offering coupons to consumers and increasing their value as incentive to
register the coupons which constitutes fundamental economic practices.”
(Final Act. 6.) Moreover, the Examiner determined that:
The limitation of producing a tangible instrument with barcode
containing information is no different from a computer hard
disk containing data. This is what computer storage devices are
for – data processing. The remaining limitations describe the
steps of receiving request to register, transmitting message,
scanning barcode, transferring funds, tracking history,
associating coupon offers with instrument – all of which

2 The Examiner has withdrawn the rejections of claims 2–4, 6–15, and 19–
21 under 35 U.S.C. § 112(a). (Ans. 3.)
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constitute standard day to day computerized functions that fail
to provide an inventive concept.
(Id.) The Examiner further determined that “[a] close look at the
Specification and Drawings reveals that the architecture of the claimed
system consists of a generic computers.” (Ans. 7.) We agree with the
Examiner’s determinations and ultimate conclusion that the claims are
directed to patent-ineligible subject matter.
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
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
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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 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. at 191 (citing Benson and Flook); see also, 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 (citation omitted). “A claim
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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. (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. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
Under that guidance, we first look to whether the claim recites:
(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 MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
2019)).
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 are 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 84 Fed. Reg. 56.

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Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 2 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Therefore, claim 2 falls within one of the four statutory
categories of patentable subject matter identified by 35 U.S.C. §101.
Although claim 2 falls within the statutory categories, we must still
determine whether the claim is directed to a judicial exception, namely an
abstract idea. See Alice, 573 U.S. at 216. Thus, we must determine whether
this claim recites a judicial exception and whether the exception is integrated
into a practical application. See 84 Fed. Reg. at 52–55. If a claim recites a
judicial exception without integrating the judicial exception into a practical
application, the claim is directed to a judicial exception under the first step
of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 2 recites the following limitations: “[i] producing
a tangible presentation instrument . . . the tangible presentation instrument
with information about a coupon offer account from which funds for the
manufacturer’s coupon offer will be received”, “[ii] distributing the tangible
presentation instrument to a customer,” “[v] transmitting a particular
message to the customer selected from the group consisting of: a message
notifying the customer of a coupon offer expiration date when approaching,”
“[vi] receiving coupon offer information obtained . . . at a merchant to verify
fulfillment of terms of the manufacturer’s coupon offer,” “[vii] receiving
coupon offer account information from a merchant,” “[viii] coordinating the
reception of funds in an amount of the coupon value from the manufacturer,”
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and “[ix] transferring the received funds to the merchant.” These limitations
recite a patent-ineligible abstract idea of certain methods of organizing
human activity, such as marketing or sales activities in the form of offering
manufacturer’s coupons to customers. See e.g., Alice, 573 U.S. at 219–20 (a
“fundamental economic practice” is an abstract idea). In particular, in the
“Background” section, Appellant’s Specification acknowledges that
“[t]raditionally, a manufacturer will distribute a coupon associated with a
product to various customers” and “[t]he cashier checks the coupon against
the product and, based on the coupon and the product matching, the
customer can pay a reduced amount for the product.” (Spec. ¶ 5.)
Moreover, Appellant’s Specification acknowledges that “[t]he merchant
must send the used coupons to a clearinghouse, which then sends a request
to the manufacturer for payment” and “[a]fter processing and verification,
the manufacturer will send payment to the merchant.” (Id. ¶ 6.)
Independent claim 2 further recites the following limitations: “[iv]
increasing . . . the initial coupon value associated with the tangible
instrument to a coupon value greater than the initial coupon value as
incentive for the particular individual to register the tangible instrument,”
[v] transmitting a particular message to the customer selected
from the group consisting of . . . a message notifying the
customer of a new coupon offer when available for redemption
with the tangible presentation instrument; and a message
notifying the customer of a loyalty offer when available, the
loyalty offer based on the customer’s usage of the tangible
presentation instrument,
“[x] tracking coupon redemption history associated with the tangible
presentation instrument,” “[xi] generating additional coupon offers specific
to the tangible presentation instrument based on the customer’s coupon
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redemption history,” and “associating the additional coupon offers with the
tangible presentation instrument.” These limitations recite a patent-
ineligible abstract idea of certain methods of organizing human activity,
such as marketing or sales activities in the form of loyalty programs to retain
existing customers and collecting demographic information from customers
in exchange for additional discounts. See e.g., Alice, 573 U.S. at 219–20 (a
“fundamental economic practice” is an abstract idea).
Accordingly, claim 2 recites a judicial exception.

Step 2A, Prong Two
Because claim 2 recites a judicial exception, we next determine if the
claim recites additional elements that integrate the judicial exception into a
practical application.
Independent claim 2 recites the following limitations: “[i] producing
a tangible presentation instrument having a tangible barcode and a separate
storage device . . . the bar code and the storage device representing different
stored information,” “[iii] receiving, by a computing system from a website
over a network, a request to register the tangible presentation instrument that
has an initial coupon value associated therewith,” “[iv] increasing, by the
computing system based on the received request,” “[vi] receiving coupon
offer information obtained by scanning the tangible barcode at a merchant,”
and “[vii] receiving coupon offer account information from a merchant,
wherein the coupon offer account information is read from the separate
storage device” (emphases added).
The recited additional elements, including “bar code,” “storage
device,” “computing system,” “website,” and “network” are merely tools for
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performing the recited abstract idea. See Affinity Labs v. DirecTV, 838 F.3d
1253, 1262 (Fed. Cir. 2016) (“[T]he claims are directed not to an
improvement in cellular telephones but simply to the use of cellular
telephones as tools in the aid of a process focused on an abstract idea.”).
Accordingly, claim 2 does not recite additional elements that integrate
the judicial exception into a practical application.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claim 2 is directed to a judicial exception, we next determine,
according to Alice, whether this claim recites an element, or combination of
elements that is enough to ensure that the claim is directed to significantly
more than a judicial exception.
Claim 2 is a method claim, which includes the additional elements,
including a “bar code,” a “storage device,” a “computing system,” a
“website,” and a “network.”
With respect to the claimed additional elements, Appellant’s
Specification discloses the following:
Barcode 110 may be a coupon barcode which may
include information about the coupon offer. For example, the
barcode may include information about the product which the
coupon is associated with, the discount type, the discount
amount, an expiration date(s), redemption restrictions, etc.
Alternatively, the presentation instrument may use a different
storage mechanism. For example, instead of using a barcode to
store coupon information, a magnetic stripe, an RF transmitter,
a smart chip, a solid state storage device, etc., may be used.
(Spec. ¶ 25 (emphases added).)
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The computer system 500 is shown comprising hardware
elements that can be electrically coupled via a bus 505 . . . . The
hardware elements can include one or more processors 510,
including without limitation one or more general-purpose
processors and/or one or more special-purpose processors (such
as digital signal processing chips, graphics acceleration chips,
and/or the like); one or more input devices 515, which can
include without limitation a mouse, a keyboard and/or the like;
and one or more output devices 520, which can include without
limitation a display device, a printer and/or the like.
(Id. ¶ 52.)
FIG. 6 illustrates a schematic diagram of a system 600
that can be used in accordance with one set of embodiments.
The system 600 can include one or more user computers 605.
The user computers 605 can be general purpose personal
computers (including, merely by way of example, personal
computers and/or laptop computers running any appropriate
flavor of Microsoft Corp.’s Windows™ and/or Apple Corp.’s
Macintosh™ operating systems) and/or workstation computers
running any of a variety of commercially-available UNIX™ or
UNIX-like operating systems.
(Id. ¶ 61.)
For example, registration instructions 125 may include a
universal resource locator (URL) for the customer to go to use
a web browser. Once the customer accesses the website
associated with the URL, the website may provide the customer
with further registration instructions.
(Id. ¶ 29 (emphases added).)
Merely by way of example, the network 610 can be a
local area network (“LAN”), including without limitation an
Ethernet network, a Token-Ring network and/or the like; a
wide-area network (WAN); a virtual network, including
without limitation a virtual private network (“VPN”); the
Internet; an intranet; an extranet; a public switched telephone
network (“PSTN”); an infra-red network; a wireless network,
including without limitation a network operating under any of
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the IEEE 802.11 suite of protocols, the Bluetooth™ protocol
known in the art, and/or any other wireless protocol; and/or any
combination of these and/or other networks.
(Id. ¶ 62 (emphases added).)
The generalized functional terms by which the additional elements are
described reasonably indicate that Appellant’s Specification discloses: (i)
conventional bar code 110 (e.g., “coupon barcode which may include
information about the coupon offer” (id. ¶ 25)); (ii) conventional storage
device (e.g., a magnetic stripe, an RF transmitter, a smart chip, a solid state
or storage device (id.)); (iii) system 600 with user computers 605 (e.g.,
personal computers, laptop computers, or workstation computers) (id. ¶ 61)
or conventional computer system 500, having processors 510, input
devices 515, and output devices 520 (id. ¶ 52); (iv) a conventional website
associated with a URL that is accessible via a web browser (id. ¶ 29); and
(v) conventional network 610 (e.g., LAN, WAN, virtual network, Internet,
intranet, extranet, PSTN, infra-red network, or wireless network (id. ¶ 62)).
Moreover, Figure 1A of Appellant’s Specification illustrates
presentation instrument 105 having barcode 110 and magnetic stripe 115.
Figure 4 of Appellant’s Specification illustrates system 400, which includes
coupon processing host 405, merchant 420, and customer 425. Figure 6 of
Appellant’s Specification illustrates system 600, which includes user
computer 605, network 610, and servers 615. In other words, Appellant’s
Figures 1A, 4, and 6 disclose that customer 425, who is in possession of
presentation instrument 105, can register such presentation instrument 105
with user computer 605. Moreover, customer 425 can then use presentation
instrument 105 to purchase products from merchant 420 at a discount.
Accordingly, Figures 1A, 4, and 6 illustrate that bar code 110, storage
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device, user computers 605, and network 610 function cooperatively as an
ordered combination.
In view of Appellant’s Specification, the claimed additional elements,
including “bar code,” “storage device,” “computing system,” “website,” and
“network” are reasonably determined to be generic, purely conventional
elements, as an ordered combination.
Thus, claim 2 does no more than require generic, purely conventional
computer elements, as an ordered combination, performing generic
computer functions, rather than improve computer capabilities.
First, Appellant argues that “the abstract idea characterized by the
Examiner for the present application (‘offering coupons to consumers and
increasing their value as incentive to register the coupons’) is clearly
different than . . . the abstract ideas identified in each of the cited cases.”
(Appeal Br. 8; see also Reply Br. 2–4.) Contrary to Appellant’s arguments,
“offering coupons to consumers and increasing their value as incentive to
register the coupons” is a fundamental economic practice, as acknowledged
by the “Background” section in Appellant’s Specification. Moreover, the
Examiner has identified the appropriate judicial exceptions as “fundamental
economic practices” and the Examiner has compared the claimed concepts
of independent claim 2 to the appropriate Supreme Court decision (i.e.,
Alice).
Second, Appellant argues that “the claimed concept (which properly
takes into account the specific requirements of the claim and considers the
claim as a whole) requires a presentation instrument (having both a barcode
and a separate storage device) and a computer system, for purposes of
dynamically generating coupons at the presentation instrument.” (Appeal
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Br. 8–9.) Similarly, Appellant argues that “[t]he claimed concept carries out
the purpose of the present invention in dynamically generating coupons, and
improves the processing of coupons and the speed of providing coupon
funds to a merchant where the coupon is redeemed.” (Id. at 9.) However,
Appellant has not adequately explained why the claim “purport[s] to
improve the functioning of the computer itself” or “any other technology or
technical field.” Alice, 573 U.S. at 225. In particular, Appellant has not
explained how “processing of coupons and the speed of providing coupon
funds to a merchant where the coupon is redeemed” improves the function
of a computer or other technology. In addition, any additional speed in
providing coupon funds to the merchant is derived solely from the generic
capabilities of a general-purpose computer. FairWarning IP, LLC v. Iatric
Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016).
Third, Appellant argues that,
the Examiner has not identified either prior art that discloses or
suggests the recited features as a whole . . . or court decisions
that would support the Examiner’s positon that the various
claim features beyond the Examiner-characterized abstract idea
(“offering coupons to consumers and increasing their value as
incentive to register the coupons”) are “well-understood,
routine and conventional.”
(Appeal Br. 10 (emphasis omitted).) Similarly, Appellant argues that the
“Examiner has not provided the required analysis and explanation in finding
that those in the art or that court decisions have recognized the additional
elements (of the claims) to be ‘well-understood, routine, conventional
activities’” (Reply Br. 5) and “Appellant’s claims clearly recite far more that
[sic] the specific items in the referenced paragraphs of the Specification, and
there is no admission anywhere in the Specification that those additional
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elements are well-known, routine and conventional” (id. at 6). As
articulated by the Federal Circuit, “[w]hether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018). Moreover, such factual determination can be based upon
disclosures in the Specification. Id. (“The improvements in the
specification, to the extent they are captured in the claims, create a factual
dispute regarding whether the invention describes well-understood, routine,
and conventional activities, so we must analyze the asserted claims and
determine whether they capture these improvements (citations omitted).”).
Contrary to Appellant’s arguments, the Examiner cited to paragraphs 27, 52,
and 54 of Appellant’s Specification as evidence that the claimed additional
elements are “well-understood, routine, and conventional,” pursuant to
Berkheimer. (Ans. 7.) Appellant has not cited any legal authority for the
perceived heightened burden for the Examiner to cite an “admission” with
respect to Alice step two.
Last, Appellant argues that “it is clear that the claims at issue do not
attempt to preempt every application of the abstract idea as characterized by
the Examiner” (Appeal Br. 11) and “Appellant respectfully submits that
when it is so clear, as here, that the claims could not be construed in any way
to preempt the characterized abstract idea (‘offering coupons to consumers
and increasing their value as incentive to register the coupons’), such
complete lack of preemption should not be simply ignored” (id. at 12).
However, although “preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
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2015). Where claims are deemed to recite only patent ineligible subject
matter under the two-step Alice analysis, as they are here, “preemption
concerns are fully addressed and made moot.” Id.
Thus, we agree with the Examiner that claim 2 is directed towards
patent-ineligible subject matter.
Accordingly, we sustain the rejection of independent claim 2 under 35
U.S.C. § 101. Claims 3, 4, 6–15, and 19–21 depend from claim 2, and
Appellant has not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 3, 4, 6–
15, and 19–21 under 35 U.S.C. § 101, for the same reasons discussed with
respect to independent claim 2.

§ 103 Rejection
First, we are unpersuaded by Appellant’s arguments (Appeal Br. 12–
13; see also Reply Br. 7) that the combination of Carlson and Rajan would
not have rendered obvious independent claim 2, which includes the
limitation “associating the storage device of the tangible presentation
instrument with information about a coupon offer account from which funds
for the manufacturer’s coupon offer will be received.”
The Examiner found that the mobile device of Carlson, which
includes readable storage medium 46, and the contactless transmission of
payment and coupon information to a point of sale (POS) terminal of
Carlson (e.g., VisaNet) collectively correspond to the limitation “associating
the storage device of the tangible presentation instrument with information
about a coupon offer account from which funds for the manufacturer’s
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coupon offer will be received.” (Ans. 12; see also Final Act. 8.) We agree
with the Examiner’s findings.
Carlson relates “to generating[] an electronic coupon targeted to the
individual consumer,” transmitted via a mobile device. (Carlson, Abstract.)
In particular, Carlson explains that “[t]he electronic coupon is transmitted to
a mobile device [32] of the individual consumer [30] over a communications
network, and purchase transaction utilizing the electronic coupon is
processed over the payment processing network [26].” (Id. ¶ 6; see also
Fig. 1.) For example, the VisaNet™ payment processing network 26 of
Carlson can “process credit card transactions, debit card transactions, and
other types of commercial transactions,” including “clearing and settlement
services.” (Id. ¶ 30.)
In one embodiment, Carlson explains that mobile device 32 includes
computer readable storage medium 46 (e.g., magnetic disk drive or a flash
memory chip) (id. ¶ 26), such that “portable consumer device to receive and
recognize a message including a coupon and code that is delivered to the
mobile device” (id. ¶ 27). In another embodiment, Carlson explains that
“payment information . . . may be communicated from a mobile device [32]
in a contactless manner to the POS terminal” and “the coupon information
from the mobile device [32] may also be communicated to the POS terminal
in a contactless manner.” (Id. ¶ 71.)
Because Carlson explains that payment processing network 26 (e.g.,
VisaNet™ payment processing network with “clearing and settlement
services”) transmits electronic coupons to mobile devices 32, such that
mobile devices 32 communicate payment information and coupon codes to
the POS terminal, such “clearing and settlement services” would include
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transmission of funds with respect to both: (i) payment from the customer to
the merchant for the purchase; and (ii) reimbursement to the merchant for
the electric coupon.3 Accordingly, Carlson teaches the limitation
“associating the storage device of the tangible presentation instrument with
information about a coupon offer account from which funds for the
manufacturer’s coupon offer will be received.”
Appellant argues that:
paragraphs 0026 and 0027 of Carlson describe a mobile device
that may have a storage medium 46 for storing code in order “to
receive and recognize a message including a coupon code that
is delivered to the mobile device,” there is no disclosure of the
storage device “with information about a coupon offer account
which from which funds for the manufacturer’s coupon offer
will be received,” as recited in claim 2.
(Appeal Br. 12–13; see also Reply Br. 7.) However, the Examiner also cited
to paragraph 30 of Carlson, which explains that the VisaNet™ payment
processing network including “clearing and settlement services,” and
accordingly, Carlson teaches the limitation “associating the storage device of
the tangible presentation instrument with information about a coupon offer
account from which funds for the manufacturer’s coupon offer will be
received.”
Thus, we agree with the Examiner that the combination of Carlson
and Rajan would have rendered obvious independent claim 2, which
includes the limitation “associating the storage device of the tangible

3 Appellant’s Specification also acknowledges the well-known process of
“sending[] the used coupons to a clearinghouse, which then sends a request
to the manufacturer for payment” and “[a]fter processing and verification,
the manufacturer will send payment to the merchant.” (Spec. ¶ 6.)
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presentation instrument with information about a coupon offer account from
which funds for the manufacturer’s coupon offer will be received.”
Second, we are unpersuaded by Appellant’s arguments (Appeal
Br. 13) that the combination of Carlson and Rajan would not have rendered
obvious independent claim 2, which includes the limitations “coordinating
the reception of funds in the amount of the coupon value from the
manufacturer” and “transferring the received funds to the merchant.”
The Examiner found that the VISA terminal of Carlson, which accepts
the electric coupon code, and the VisaNet™ payment processing network of
Carlson collectively correspond to the limitations “coordinating the
reception of funds in the amount of the coupon value from the
manufacturer” and “transferring the received funds to the merchant.”
(Ans. 13.) We agree with the Examiner’s findings.
Carlson explains that a user can display the coupon on the screen of a
portable device, which is either scanned or entered by the cashier (Carlson
¶ 61), followed by “the cashier hitting[] the accept coupon button on the
back of the VISA terminal” (id. ¶ 68). As discussed previously, the
VisaNet™ payment processing network can “process credit card
transactions, debit card transactions, and other types of commercial
transactions,” including “clearing and settlement services.” (Id. ¶ 30.)
Because Carlson explains that the VISA terminal accepts the electronic
coupon from mobile device 32, and the VisaNet™ payment processing
network provides “clearing and settlement services,” such clearing and
settlement services would include reimbursements of funds to the merchant
for the face value of the electronic coupon. Accordingly, Carlson teaches
the limitations “coordinating the reception of funds in the amount of the
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coupon value from the manufacturer” and “transferring the received funds to
the merchant.”
Appellant argues “paragraph 0030 of Carlson generally describes
payment processing networks.” (Appeal Br. 13.) However, Appellant
merely provides an oversimplified summary of Carlson with a conclusory
statement that Carlson does not teach the limitations of independent claim 2.
As discussed previously, Carlson explains that the VisaNet™ payment
processing network including “clearing and settlement services” (Carlson
¶ 30), and accordingly, Carlson teaches the limitations “coordinating the
reception of funds in the amount of the coupon value from the
manufacturer” and “transferring the received funds to the merchant.”
Thus, we agree with the Examiner that the combination of Carlson
and Rajan would have rendered obvious independent claim 2, which
includes the limitations “coordinating the reception of funds in the amount
of the coupon value from the manufacturer” and “transferring the received
funds to the merchant.”
Last, we are unpersuaded by Appellant’s arguments (Appeal Br. 13–
14) that the combination of Carlson and Rajan would not have rendered
obvious independent claim 2, which includes the limitations “generating
additional coupon offers specific to the tangible presentation instrument
based on the customer’s coupon redemption history” and “associating the
additional coupon offers with the tangible presentation instrument.”
The Examiner found that mobile targeting module 260 of Carlson,
which generates coupons based upon location and prior purchasing activity,
corresponds to the limitations “generating additional coupon offers specific
to the tangible presentation instrument based on the customer’s coupon
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redemption history” and “associating the additional coupon offers with the
tangible presentation instrument.” (Ans. 13–14.) We agree with the
Examiner’s findings.
Carlson explains that “[m]obile targeting module 260 is responsible
for generating coupons targeted to a user,” such that “the coupons can be
targeted based upon a location based services (LBS) approach, utilizing prior
purchasing activity by a consumer as detected over a payment processing
network.” (Carlson ¶ 74.) Carlson further explains that “information
regarding the nature of the prior purchase conducted over the payment
processing network can be referenced to generate the coupon.” (Id. ¶ 80.)
In one example, “a prior purchase of one product (for example a vacuum
cleaner), could lead to generation of a second product (bags for the vacuum
cleaner).” (Id.) Because Carlson explains that mobile targeting module 260
is responsible for generating coupons based upon prior purchases, Carlson
teaches the limitations “generating additional coupon offers specific to the
tangible presentation instrument based on the customer’s coupon redemption
history” and “associating the additional coupon offers with the tangible
presentation instrument.”
Appellant argues that “[p]aragraphs 0060-0070 of Carlson generally
describe the display of a coupon on a mobile device (paragraphs 0060-0065)
and the use of a coupon by a cashier at a point-of-sale terminal to provide a
discount to the consumer (paragraphs 0066-0070)” (Appeal Br. 13) and
accordingly, “[t]here is no disclosure in Carlson of generating additional
coupons based on coupon redemption history and associating the additional
coupons with the presentation instrument” (id. at 13–14 (emphasis omitted)).
However, the Examiner also cited to paragraphs 74 and 80 of Carlson for
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teaching the limitations “generating additional coupon offers specific to the
tangible presentation instrument based on the customer’s coupon redemption
history” and “associating the additional coupon offers with the tangible
presentation instrument.” (Ans. 13–14.) Appellant has not provided any
arguments or evidence as to why the Examiner’s findings with respect to
Carlson are erroneous.
Thus, we agree with the Examiner that the combination of Carlson
and Rajan would have rendered obvious independent claim 2, which
includes the limitations “generating additional coupon offers specific to the
tangible presentation instrument based on the customer’s coupon redemption
history” and “associating the additional coupon offers with the tangible
presentation instrument.”
Accordingly, we sustain the rejection of independent claim 2 under
35 U.S.C. § 103. Claims 3, 4, 6–15, and 19–21 depend from claim 2, and
Appellant has not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of 3, 4, 6–15,
and 19–21 under 35 U.S.C. § 103, for the same reasons discussed with
respect to independent claim 2.

CONCLUSION
The Examiner’s decision rejecting claims 2–4, 6–15, and 19–21 under
35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 2–4, 6–15, and 19–21 under
35 U.S.C. § 103 is affirmed.

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DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
2–4, 6–15, 19–
21
§ 101 Eligibility 2–4, 6–15, 19–
21

2–4, 6–15, 19–
21
§ 103 Carlson,
Rajan
2–4, 6–15, 19–
21

Overall
Outcome
2–4, 6–15, 19–
21

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)(1)(iv).

AFFIRMED