Kothe, Kyle William. et al.

Patent Trials and Appeals Board

Apr 2, 2020

14199588 - (D) (P.T.A.B. Apr. 2, 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.
14/199,588 03/06/2014 Kyle William Kothe 034250-0437013 7691
909 7590 04/02/2020
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KYLE WILLIAM KOTHE,
EDGAR MITCHELL DAPREMONT III, JIMMY JAEJOON SONG,
NICOLE JUNEAU BALL, EITHAN ZILKHA, and
JEFFREY RYAN REGO
____________________

Appeal 2018-007897
Application 14/199,5881
Technology Center 3600
____________________

Before DEBRA K. STEPHENS, JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–14 and 28–42, constituting all pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is
RetailMeNot, Inc. Appeal Br. 2.
2 Our Decision refers to the Specification (“Spec.”) filed March 6, 2014, the
Final Office Action (“Final Act.”) mailed July 27, 2017, the Appeal Brief
(“Appeal Br.”) filed January 29, 2018, the Examiner’s Answer (“Ans.”)
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CLAIMED INVENTION
The claims are directed to issuing “offers” such as digital coupons that
can be redeemed by a consumer at a merchant. Spec. ¶ 2. An offer-creating
merchant computing device presents a coupon creation interface to
merchants to specify coupon parameters including a merchant identifier,
coupon title, discount description, coupon expiration, and amount of
instances of the coupon to be issued. Spec. Abstract, ¶¶ 122, 142. An offers
engine receives coupon parameters from the merchants and distributes
coupons to consumers via the Internet. Spec. Abstract, ¶¶ 143–146.
Consumer computing devices reserve coupon instances from the offers
engine via the Internet up to a specified amount to be issued. Spec. ¶¶ 158–
161. A “geofence” containing the geographic location of a merchant is sent
to the consumer’s mobile device to alert the consumer when within the
geofence. Spec. Abstract, ¶¶ 166–171. The consumer’s mobile device is
also sent redemption information that is communicated to an offer-
redeeming merchant mobile device when redeeming the coupon, causing the
offer-redeeming merchant mobile device to send a unique coupon identifier
for the reserved coupon instance to the offers engine. Spec. ¶¶ 167–168.
The offers engine determines that the reserved coupon instance is valid (not
previously redeemed) and sends a confirmation code to which a point-of-
sale system of the merchant is responsive. Spec. Abstract, ¶¶ 128, 135, 139,
178. The confirmation code is shared by multiple instances of the coupon.
Claims 1 and 9 are independent. Claim 1 is reproduced below:

mailed May 29, 2018, and the Reply Brief (“Reply Br.”) filed July 30, 2018.
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1. A method of issuing single-use digital coupons tied to a
geographic location and redeeming the coupons, the method
comprising:
instructing an offer-creating merchant computing device to
present one or more coupon-creation interfaces configured to
obtain coupon parameters specifying a coupon, the coupon
parameters including an identifier of a merchant issuing the
coupon, a title of the coupon, a description of a discount
available to those who redeem the coupon with the merchant,
an expiration time of the coupon, and an amount of instances of
the coupon to be issued;
receiving the coupon parameters from a merchant user via
the one or more coupon-creating interfaces presented with the
offer-creating merchant computing device;
obtaining a geographic location of the merchant from the
offer-creating merchant computing device;
distributing, with an offers engine, with one or more
transmissions, the coupon parameters and the geographic
location, wherein the offers engine is configured to distribute
coupons from a plurality of merchants to a plurality of
consumers over the Internet;
associating the coupon parameters and the geographic
location with a coupon identifier in a coupon record stored in
memory accessible to the offers engine;
receiving, at the offers engine, from a consumer’s
computing device, via the Internet, a request for a reserving
interface to reserve an instance of the coupon;
determining, with the offers engine, that the specified
amount of instances of the coupon to be issued is greater than
an amount of instances of the coupon that have been reserved;
sending, from the offers engine, to the consumer’s
computing device, one or more reserving interfaces, wherein
the one or more reserving interfaces display at least some of the
coupon parameters and present a reserving input by which a
consumer reserves an instance of the coupon;
receiving, from the consumer’s computing device, a request
to reserve an instance of the coupon after the consumer engages
with the reserving input;
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after receiving the request to reserve the instance of the
coupon and determining that the specified amount of instances
of the coupon to be issued is greater than an amount of
instances of the coupon that have been reserved, and adjusting,
with the offers engine, a reserved-amount value indicative of an
amount of instances of the coupon that have been reserved;
sending the consumer’s mobile device a geofence containing
the geographic location and instructions to alert the consumer
after the mobile device is within the geofence;
sending the consumer’s mobile device redemption
information that, when conveyed to the merchant and by the
merchant to the offers engine, causes the offers engine to
validate that the consumer reserved an instance of the coupon,
wherein sending the consumer’s mobile device redemption
information comprises:
sending instructions that when input to an offer-
redeeming merchant mobile device by direct wireless
communication with the consumer’s mobile device, cause
the offer redeeming merchant mobile device to send an
identifier of the reserved coupon instance to the offers
engine, wherein the identifier is unique to the reserved
coupon instance among other reserved instances of the
coupon;
receiving, at the offers engine, from the offer-redeeming
merchant mobile device, the identifier unique to the reserved
coupon instance;
after receiving the identifier, determining that the
identifier unique to the reserved coupon instance
corresponds to a valid instance of the coupon that has not
been previously redeemed; and
after determining validity, sending confirmation that the
reserved coupon instance is valid to the offer-redeeming
merchant mobile device, wherein the confirmation includes
a confirmation code to which a point-of-sale system of the
merchant is responsive, wherein multiple instances of the
coupon share the same confirmation code.
Appeal Br. 28–29 (Claims Appendix).
Claim 9 is reproduced below:
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9. A tangible, machine-readable, non-transitory medium
storing instructions that when executed by a merchant-
controlled mobile computing device cause the mobile
computing device to perform operations, comprising:
presenting, on a mobile computing device, one or more
offer-creation interfaces by which a merchant enters offer
parameters specifying an offer, the offer parameters including
data indicative of an amount of instances of the offer to be
reserved by consumers;
obtaining, with the mobile computing device, the offer
parameters after a merchant supplies the offer parameters with
the one or more offer-creation interfaces;
obtaining, with the mobile computing device, a
geographic location where consumers are to be alerted to the
offer;
sending a request to distribute the offer to consumers ;
after sending the request to distribute the offer, scanning
with a camera of the mobile computing device, an image of a
machine-readable code presented by a consumer to redeem an
instance of the offer;
obtaining, from the scanned image, data specifying a
unique offer instance identifier corresponding to an instance of
the distributed offer, the unique offer instance identifier
distinguishing the instance of the distributed offer from other
instances of the distributed offer; and
determining, based on the data specifying the unique
offer instance identifier, that the instance of the distributed offer
presented by the consumer is valid.
Appeal Br. 31–32 (Claims Appendix).

REJECTIONS
(1) Claims 1–14 and 28–42 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 4–7.
(2) Claims 1–14 and 28–42 stand rejected under 35 U.S.C.
§ 112(b) for indefiniteness. Final Act. 7–9.
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(3) Claims 1, 4, and 28 stand rejected under 35 U.S.C. § 103 based
on Mason (US 2011/0313840 A1, published Dec. 22, 2011), Frederick
(US 2013/0262203 A1, published Oct. 3, 2013) and Perttila
(US 2004/0243519 A1, published Dec. 2, 2004). Final Act. 9–13.
(4) Claims 2 and 3 stand rejected under 35 U.S.C. § 103 based on
Mason, Frederick, Perttila, and Gillenson (US 2010/0250351 A1, published
Sept. 30, 2010). Final Act. 14–15.
(5) Claims 5–8 stand rejected under 35 U.S.C. § 103 based on
Mason, Frederick, Perttila, and Grainger (US 2012/0115512 A1, published
May 10, 2012). Final Act. 15–18.
(6) Claims 9, 12, 13, 30–32, 35–37, 40 and 41 stand rejected under
35 U.S.C. § 103 based on Mason, Frederick, and MacKinnon Keith (US
2013/0256403 A1, published Oct. 3, 2013). Final Act. 18–24.
(7) Claims 29 and 42 stand rejected under 35 U.S.C. § 103 based
on Mason, Frederick, MacKinnon Keith, and Perttila. Final Act. 24–25.
(8) Claims 10, 11, and 14 stand rejected under 35 U.S.C. § 103
based on Mason, Frederick, MacKinnon Keith, and Grainger. Final Act. 25–
27.
(9) Claims 33 and 34 stand rejected under 35 U.S.C. § 103 based
on Mason, Frederick, MacKinnon Keith, and Dowling
(US 2008/0215391 A1, published Sept. 4, 2008). Final Act. 27–28.
(10) Claim 39 stands rejected under 35 U.S.C. § 103 based on
Mason, Frederick, MacKinnon Keith, and Schneier (US 2003/0177347 A1,
published Sept. 18, 2003). Final Act. 28–29.

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ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. United States, 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–18). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “examine the elements of the
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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 (internal quotation marks omitted) (quoting Mayo,
566 U.S. at 72, 79). There is no need to proceed to the second step,
however, if the first step of the Alice/Mayo test yields a determination that
the claim is directed to patent-eligible subject matter.
In our subsequent § 101 analysis, we group claims 1–8 and 28
together and select claim 1 as representative of the group. See 37 C.F.R.
§ 31.47(c)(1)(iv) (2017). Accordingly, all of these claims stand or fall with
claim 1. We will address these claims generally where possible, but when it
is helpful to refer to explicit claim language, we will refer to claim 1 only.
In a subsequent section of this decision, we find claim 9 indefinite under
§ 112(b) and thus we do not reach the § 101 rejection of claim 9 or its
dependent claims 10–14 and 29–42.
USPTO Step 1–Categories of Invention in 35 U.S.C. § 101
The Patent Office has somewhat recently revised its guidance for how
to apply the Alice/Mayo test in the 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 Revised
Guidance”). Step 1 of the Revised Guidance (which is unchanged from the
prior guidance) is to review the claims to determine whether they fall within
one of the enumerated categories of invention under § 101. Claims 1–8 and
28 recite “methods,” which qualify as “processes” under § 101. Thus, these
claims satisfy Step 1 of the subject matter eligibility analysis, and we
proceed to USPTO Step 2A for these claims, which is the first step in the
Alice/Mayo test.
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USPTO Step 2A – Alice/Mayo Step 1 (Are the Claims Directed to a Judicial
Exception?)
In Step 2A of the Revised Guidance, we determine whether the claims
are “directed to” a judicial exception. Step 2A of the Revised Guidance
corresponds to the first step of the Alice/Mayo test but is in part changed
from the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74618–74633 (December 16, 2014), by separating the first step
into two prongs. We address these prongs in order below.
USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
In Step 2A, Prong One of the Revised Guidance, we determine
whether the claims recite a judicial exception including (a) mathematical
concepts; (b) certain methods of organizing human activity; or (c) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 51–52.
The Examiner determines that claim 1 recites the abstract idea of
“sending a targeted location based offer to a user, and facilitating the
redemption of said offer.” Final Act. 4. The Examiner determines that the
claims relate to “certain methods of organizing human activity.” Id. at 5.
The preamble of claim 1 recites “[a] method of issuing single-use
digital coupons tied to a geographic location and redeeming the coupons.”
Appeal Br. 28 (Claims Appendix). The preamble thus summarizes the
claimed subject matter as relating to issuing and redeeming coupons, which
is a type of commercial transaction between merchants and consumers.
Commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations) are recognized as “certain methods of
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organizing human activity” which are abstract ideas constituting judicial
exceptions according to the 2019 Revised Guidance. See 84 Fed. Reg. at 52.
Appellant argues the Examiner overgeneralized the claims in reaching
her conclusion that the claims are abstract. Appeal Br. 5. However, placing
geographic or other restrictions on the use of coupons, or facilitating their
use through computerized technology, does not change the fundamental
nature of the claims as relating to issuing and redeeming coupons, a type of
commercial transaction that is and has been widespread and well-known in
the economy for decades at least. Many cases from our reviewing court
support the view that claims of this nature fall within the abstract ideas
category of judicial exceptions to patent eligibility. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (advertising before
delivering free content deemed an abstract idea); Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (processing an
application for financing a purchase deemed an abstract idea); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed.
Cir. 2017) (local processing of payments for remotely purchased goods
deemed a fundamental economic practice that is an abstract idea).
Accordingly, we conclude that the claims recite methods for issuing
and redeeming coupons, which are abstract ideas under the category of
“certain methods of organizing human activity” recognized as judicial
exceptions to patent eligibility. We thus proceed to Step 2A, Prong Two, of
the Alice/Mayo test to determine whether the judicial exceptions recited in
the claims are integrated into a practical application.
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USPTO Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two, of the Revised Guidance, we (a) identify
whether there are any additional elements recited in the claim beyond the
judicial exception, and (b) evaluate those additional elements individually
and in combination to determine whether the claim as a whole integrates the
exception into a practical application.
The additional elements of the claims include an “offer-creating
merchant computing device,” “coupon-creation interfaces,” “offers engine,”
“consumer’s computing device,” “reserving interfaces,” “consumer’s mobile
device,” “offer-redeeming merchant mobile device,” and “point-of-sale
system.” Appeal Br. 28–29 (Claims Appendix).
The additional elements reflect an improvement in coupon redemption
technology. As Appellant explains, point-of-sale (POS) systems support a
limited number of coupon-redemption codes, and single-use coupons require
large numbers of unique identifiers. Appeal Br. 8; Spec. ¶ 117. Handling
validation of unique coupon identifiers with devices other than the POS
systems through a “side channel” and enabling single-use coupons to be
redeemed using the same confirmation code overcomes the stated drawbacks
of POS systems. Appeal Br. 9–10. These features are recited in the
following limitations of claim 1:
receiving, at the offers engine, from the offer-redeeming
merchant mobile device, the identifier unique to the reserved
coupon instance;
after receiving the identifier, determining that the
identifier unique to the reserved coupon instance corresponds
to a valid instance of the coupon that has not been previously
redeemed; and
after determining validity, sending confirmation that the
reserved coupon instance is valid to the offer-redeeming
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merchant mobile device, wherein the confirmation includes a
confirmation code to which a point-of-sale system of the
merchant is responsive, wherein multiple instances of the
coupon share the same confirmation code.
Appeal Br. 29 (Claims Appendix) (emphasis added).
Accordingly, the claims recite an additional element (or combination
of elements) that integrates the judicial exception of issuing and redeeming
coupons into a practical application. The additional elements reflect an
improvement in coupon redemption technology, and are practically applied
according to the Revised Guidance. See 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(a); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258–59 (Fed. Cir. 2014); USPTO’s Recent Subject Matter Eligibility
Decisions Memorandum (Apr. 2, 2018) (discussing Finjan Inc. v. Blue Coat
Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) and Core Wireless Licensing
S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)).
These additional elements are also integral to nearly all of the steps of
the claimed methods such that the claims are not merely about issuing and
redeeming coupons, but are instead grounded in the technology that makes it
possible to perform these actions. Thus, the additional elements implement
the judicial exception with a particular machine or manufacture (i.e., a
system) that is integral to the claim. .
For example, claim 1 recites “an offer-creating merchant computing
device” meaning it is not merely a generic computing device, but one that is
specially configured to assist a merchant in creating a coupon offer.
Likewise, the “coupon-creation interfaces,” “offers engine,” reserving
interfaces,” and “offer-redeeming merchant mobile device” are specifically
configured to perform respective steps or functions. To the extent that
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devices such as the “consumer’s computing device,” “consumer’s mobile
device,” and “point-of-sale system” are considered generic, we note that in
claim 1 they are used in combination with other elements in a complex
method such that the combination of additional elements cannot be
considered generic.
Accordingly, the claims recite an additional element (or combination
of elements) that uses the judicial exception of issuing and redeeming
coupons in conjunction with a particular system that is integral to the claim.
See 84 Fed. Reg. at 55 (citing Eibel Process Co. v. Minnesota & Ontario
Paper Co., 261 U.S. 45, 64–65 (1923))
Thus, for the same reasons discussed, we determine the claims
integrate the judicial exception into a practical application that applies the
judicial exception in a manner 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. See 84 Fed. Reg. at 54 (citing DDR
Holdings, LLC, 773 F.3d at 1258–59; and USPTO’s Recent Subject Matter
Eligibility Decisions Memorandum (Apr. 2, 2018), supra. Accordingly, we
do not sustain the § 101 rejection of claims 1–8 and 28.
Having so decided, we determine it is unnecessary to reach the issue
of whether the claims recite an inventive concept that is significantly more
than the abstract idea embodied therein in USPTO Step 2B corresponding to
step two of Alice/Mayo.
§ 112(b) Rejection
The definiteness requirement, set out in 35 U.S.C. § 112(b), states that
the “specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor or
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a joint inventor regards as the invention.” An examiner may properly reject
a pending claim as indefinite if it “contains words or phrases whose meaning
is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014); MPEP
§ 2170.02.
The Examiner rejects claim 1 under § 112(b) for indefiniteness. Final
Act. 7–8. Specifically, the Examiner states it is unclear: (1) which amount
of instances of the coupon the Appellant refers to; (2) at what point the
instances of the coupon were first initially reserved; (3) if the one or more
either same or different users are again offered the chance to reserve the deal
or reserve for the first time; (4) in what order the reserving process takes
place, how many times the reservation process occurs, and what the outcome
is and how it might differ; and (5) what the meaning of the term “reserved-
amount value” should be construed as. The term “reserved-amount value”
appears to have no meaning within the Specification other than a value
indicative of an amount of the deal reserved––the intention of the limitation
is unclear and could be unrelated to the deal completely, or it could be the
value assigned to the deal originally, or indicate a second deal, or that at
some point a new deal value was generated. Id.
We do not agree with the Examiner that claim 1 is indefinite. Claim 1
recites “determining, with the offers engine, that the specified amount of
instances of the coupon to be issued is greater than an amount of instances of
the coupon that have been reserved.” In other words, the offers engine must
determine instances are available for reservation before allowing a consumer
to reserve one to make sure that the specified amount of coupons to be
issued is not exceeded. When this check determines there is one or more
instances of the coupon available to be reserved and a consumer so requests,
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the offer engine “adjust[s] . . . a reserved-amount value indicative of an
amount of instances of the coupon that have been reserved” so that the next
time a consumer requests a coupon, the number of reserved coupon
instances will be up to date when the offer engine checks to determine
whether another coupon is available to be reserved. Thus, as the claim
language is clear to us as to its meaning, we do not sustain the rejection of
claim 1.
The preamble of claim 9 recites “[a] tangible, machine-readable, non-
transitory medium storing instructions that when executed by a merchant-
controlled mobile computing device cause the mobile computing device to
perform operations.” Appeal Br. 32 (Claims Appendix). The body of claim
9 recites “a mobile computing device” in the first step and “the mobile
computing device” in subsequent steps. Id. The Examiner finds the claim
indefinite because it cannot be determined whether “a mobile computing
device” in the claim body is the same or different from the “merchant-
controlled mobile computing device” recited in the preamble. Final Act. 8.
Appellant argues that the body of claim 9 does not make reference to
the “merchant-controlled mobile computing device” introduced in the
preamble, and that Appellant drafted the claims this way so that the
preamble would not be construed as limiting under Catalina Mktg. Int’l v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). It appears the
only additional preamble feature that would be added to the claim if
construed as limiting is that the mobile computing device is “merchant-
controlled.”
The particular requirement of § 112(b) at issue here is objective in
nature and involves consideration of whether the claim scope is clear to a
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hypothetical person of ordinary skill in the pertinent art; Appellant’s intent
in drafting the claim is irrelevant concerning the clarity requirement of
§ 112(b). MPEP § 2171. If Appellant desires to maintain the option of
claiming that the recited mobile computing device is “merchant-controlled,”
Appellant could have done so with a dependent claim reciting this feature.
Accordingly, regardless of Appellant’s intent in drafting the claims,
we determine that a person of ordinary skill in the art would have found
occurrences of “the mobile computing device” in the body of the claim
could refer to either (1) “a mobile computing device” in the first step or
(2) “a merchant-controlled mobile computing device” or “the mobile
computing device” recited in the preamble. Furthermore, it is unclear
whether (1) and (2) above are the same or different devices.
Accordingly, claim 9 “contains words or phrases whose meaning is
unclear” under Packard, and we sustain the Examiner’s § 112(b) rejection of
claim 9 as well as its dependent claims.
Claim 31 depends from claim 9 and thus incorporates its
indefiniteness. Accordingly, we do not reach the § 112(b) rejection of
claim 31.
§ 103 Rejection
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
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(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
Claim 1 recites “a confirmation code to which a point-of-sale system
of the merchant is responsive, wherein multiple instances of the coupon
share the same confirmation code.” Appeal Br. 29 (Claims Appendix)
(emphasis added). The Examiner contends that Perttila teaches this
limitation of claim 1. Final Act. 12–13 (citing Perttila ¶¶ 46–53); Ans. 9.
Appellant argues that Perttila “does mention a validation test code, but this
validation test code is not shared by multiple instances of a given coupon.
Rather, after use, ‘the validation-test code is changed to void the possibility
of another use.’” Appeal Br. 21 (“third deficiency”) (citing Perttila ¶ 51);
Reply Br. 13–14.
Perttila teaches that “the validation-test code is changed to void the
possibility of another use.” Perttila ¶ 51. Nowhere in the parts of Perttila
that the Examiner cites do we find any mention of a single confirmation
code to which a point-of-sale system of the merchant is responsive, and
which is used with multiple instances of a coupon. As Appellant mentioned
with respect to the § 101 rejection, using the same confirmation code to
redeem multiple single-use coupons overcomes the drawback that POS
systems are limited in number of confirmation codes they can support. See
Appeal Br. 8–10. The distinction between the claimed invention and the
Examiner’s combination of references is therefore a significant one. Nor has
the Examiner set forth why an ordinarily skilled artisan would have modified
Perttila to use the same confirmation code for multiple coupons at a POS
Appeal 2018-007897
Application 14/199,588

18
system. Accordingly, on this record, given the reference teachings cited in
the Final Office Action, we are constrained to not sustain the § 103
rejections of claim 1 and its dependent claims. See Final Act. 12–13 (citing
Perttila ¶¶ 46–53).
Due to our affirmance of the Examiner’s § 112(b) rejection of claim 9
and its dependent claims, we do not reach the § 103 rejection as to these
claims.

CONCLUSION
The Examiner’s rejection of claims 1–8 and 28 under 35 U.S.C. § 101
are reversed; we do not reach the rejections of claims 9–14 and 29–42.
The Examiner’s rejections of claims 1–14 and 28–42 under 35 U.S.C.
§ 112(b) are affirmed for claims 9–14 and 29–42, but reversed for claims 1–
8 and 28.
The Examiner’s rejections of claims 1–8 and 28 under 35 U.S.C.
§ 103 are reversed; we do not reach the rejection of claims 9–14 and 29–42.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14, 28–
41
101 Eligibility3 1–8, 28
1–14, 28–
41
112(b) Indefiniteness4 9–14, 30–
42
1–8, 28
1, 4, 28 103 Mason, Frederick,
Perttila
1, 4, 28

3 We do not reach the § 101 rejection of claims 9–14 and 29–42 due to our
affirmance of the rejection of these claims under § 112(b).
4 We do not reach the § 112(b) rejection of claim 31 since it depends from
claim 9 whose rejection we affirm under § 112(b).
Appeal 2018-007897
Application 14/199,588

19
2, 3 103 Mason, Frederick,
Perttila, Gillenson
2, 3
5–8 103 Mason, Frederick,
Perttila, Grainger
5–8
9, 12, 13,
30–32, 35–
37, 40, 41
103 Mason, Frederick,
MacKinnon Keith5

29, 42 103 Mason, Frederick,
MacKinnon Keith,
Perttila

10, 11, 14 103 Mason, Frederick,
MacKinnon Keith,
Grainger

33, 34 103 Mason, Frederick,
MacKinnon Keith,
Dowling

39 103 Mason, Frederick,
MacKinnon Keith,
Schneier

Overall
Outcome
9–14, 29–
42
1–8, 28

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

5 For this and subsequent rejections, we do not reach the § 103 rejections of
claims 9–14 and 29–42 since we affirm the § 112(b) rejection of these
claims.