Meijer, Inc.

Patent Trials and Appeals Board

Feb 21, 2020

14884726 - (D) (P.T.A.B. Feb. 21, 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.
14/884,726 10/15/2015 Gail E. VanNoller 46477-243749 4929
23643 7590 02/21/2020
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
EX PARTE GAIL E. VANNOLLER and ELMER L. ROBINSON JR.

Appeal 2019-004348
Application 14/884,726
Technology Center 3600

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Gail E. Vannoller et al.,
appeals from the Examiner’s decision rejecting claims 52–70, which are all
claims pending in the application. Appellant has canceled claims 1–51. See
generally Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Meijer,
Inc., Appeal Br. 2.
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CLAIMED SUBJECT MATTER2
The claims are directed to retail store coupons and more particularly
to store coupons that include security features for preventing fraud. See
Spec. ¶ 1.
Claim 65, reproduced below, is representative of the subject matter on
appeal:
65. A method for processing a restricted use coupon,
comprising:
creating with a first processor a plurality of unique
numbers each associated with a different one of a
corresponding plurality of restricted use coupons
with the first processor, storing and identifying in a
restricted use coupon database each of the plurality of unique
numbers as being eligible for redemption, wherein none of the
plurality of unique numbers is tied in the restricted use coupon
database to a particular consumer, and
after storing the plurality of unique numbers in the
restricted coupon database,
under control of the first processor, receiving from
a point-of-sale terminal an electronic communication
containing a number of digits embedded in a barcode of a
coupon presented to and read by the point-of-sale
terminal,
comparing with the first processor the received
number of digits with at least some of the plurality of
unique numbers stored in the restricted use coupon
database, and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 13, 2018); Reply Brief (“Reply Br.,” filed May 14, 2019); Examiner’s
Answer (“Ans.,” mailed Mar. 15, 2019); Final Office Action (“Final Act.,”
mailed May 16, 2018); and the original Specification (“Spec.,” filed
Oct. 15, 2015).
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if the received number of digits matches one of the
plurality of unique numbers stored and identified in the
restricted use coupon database as being eligible for
redemption,
under control of the first processor,
electronically communicating to the point-of-sale
terminal a notification that the presented and read
coupon is eligible for redemption, and
modifying with the first processor the
matching one of the plurality of unique numbers to
identify in the restricted use coupon database the
matching one of the plurality of unique numbers as
being not eligible for redemption, each of the
plurality of restricted use coupons thereby being
redeemable only once.
Appeal Br. 25–26 (Claims Appendix).
REJECTION
Claims 52–70 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception (i.e., a law of nature, a natural phenomenon, or
abstract idea) without significantly more. Final Act. 2.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 6–7) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 52–70 on the basis of
representative method claim 65.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
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ISSUE
Appellant argues (Appeal Br. 6–11; Reply Br. 2–12) the Examiner’s
rejection of claim 65 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 65 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)

dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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(citing Mayo, 566 U.S. at 75–77). 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” (Diehr, 450 U.S. at 191); “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 (1853)));
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 “[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
protection for that formula in the abstract . . . is not accorded the protection
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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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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
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.
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B. USPTO Revised Guidance
In early 2019, the PTO published revised guidance in the Federal
Register concerning the application of § 101. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
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

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional

10 See, e.g., Diehr, 450 U.S. at 187.
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elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13

11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
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In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.

of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 52–70
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 65 for
emphasis as follows.
Step 1 – Statutory Category
Claim 65, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the steps of claim 65
describe the concept of retail store coupons for storing coupons
that include security feature for preventing fraud, which
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corresponds to concept identified as abstract idea by the courts,
such as collecting and analyzing information to detect misuse
and notifying a user when misuse is detected (Fair Warning),
collecting and comparing known information (Classen),
collecting information, analyzing it and displaying certain
results of the collection and analysis (Electric Power Group) ,
obtaining and comparing intangible data (CyberSource) and
creating an index, and using that index to search for and retrieve
data (Int. Ventures v. Erie Indemnity). All of these concepts
related to process of comparing data that can be performed
mentally. The concepts described in claim 52 and as well as in
claims 58 and 65 is not meaningfully different that those
economic concepts found by the court to be abstract idea.
Final Act. 3.
We conclude claim 65 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 65 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention relates to “store coupons that include security features for
preventing fraud.” Spec. 1.
Appellant’s Abstract describes the invention thusly:
A computer system (100) for use by a retailer with a restricted
use consumer coupons (100) includes a point of sale (POS)
computer (201) for providing information regarding redemption
of restricted use coupons at the POS. A central promotion
server (203) is used for communicating with the POS computer
(201) for storing restricted use coupon data. A validation
computer (205) is used for rendering restricted use coupon data
from the retailer or customer and providing the data to the
central promotion server (203). The retailer can then provide
restricted use coupons containing traceable data to a server
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(211) for distribution to consumers through one or more of
channels of trade.
Spec. 23 (Abstract).
In TABLE 1 below, we identify in italics the specific claim
limitations in claim 65 that we conclude recite an abstract idea. We
additionally identify in bold the additional (non-abstract) claim limitations
that are generic computer components and techniques, and underline
limitations representing extra or post-solution activity:
TABLE 1
Independent Claim 65 Revised Guidance
A method for processing a restricted
use coupon, comprising:
A method falls under the
statutory subject matter class of a
process. See 35 U.S.C. § 101.
[L1] creating with a first processor a
plurality of unique numbers each
associated with a different one of a
corresponding plurality of restricted
use coupons with the first processor,
Creating numbers and
associating them with coupons
is an abstract idea, i.e., a certain
method of organizing human
activity, commercial interactions
including advertising, marketing
or sales activities. See Revised
Guidance 52.
A processor represents
conventional computer
components.
[L2] storing and identifying in a
restricted use coupon database each
of the plurality of unique numbers as
being eligible for redemption, wherein
none of the plurality of unique
numbers is tied in the restricted use
coupon database to a particular
consumer, and
Storing and identifying data is
insignificant extra-solution
activity. Revised Guidance 55,
n.31; see also MPEP
§ 2106.05(g).
A database is a generic
computer component.
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Independent Claim 65 Revised Guidance
[L3] after storing the plurality of
unique numbers in the restricted
coupon database, under control of the
first processor, receiving from a
point-of-sale terminal an electronic
communication containing a number
of digits embedded in a barcode of a
coupon presented to and read by the
point-of-sale terminal,
Receiving information, i.e., data
gathering, is merely
insignificant extra-solution
activity that does not add
significantly more to the abstract
idea to render the claimed
invention patent-eligible.
Revised Guidance 55, n.31; see
In re Bilski, 545 F.3d 943, 962
(Fed. Cir. 2008) (en banc), aff’d
on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of
the machine or transformation in
the claimed process must not
merely be insignificant extra-
solution activity”)
A database, processor, and point
of sale terminal represents
conventional computer
components. Each of these are
additional non-abstract
limitations.
[L4] comparing with the first
processor the received number of
digits with at least some of the
plurality of unique numbers stored in
the restricted use coupon database,
Evaluating data i.e., comparing,
is an abstract idea, i.e., an
“observation, evaluation,
judgment, opinion,” which could
be performed as a mental
process. See Revised Guidance
52.
[L5] if the received number of digits
matches one of the plurality of unique
numbers stored and identified in the
restricted use coupon database as
being eligible for redemption, under
control of the first processor,
electronically communicating to the
Electronically communicating a
notification for display is
insignificant post-solution
activity. Revised Guidance 55,
n.31; see also MPEP
§ 2106.05(g); and see buySAFE,
Inc. v. Google, Inc., 765 F.3d
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Independent Claim 65 Revised Guidance
point-of-sale terminal a notification
that the presented and read coupon is
eligible for redemption, and
1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
[L6] modifying with the first
processor the matching one of the
plurality of unique numbers to identify
in the restricted use coupon database
the matching one of the plurality of
unique numbers as being not eligible
for redemption, each of the plurality of
restricted use coupons thereby being
redeemable only once.
Modifying the matching one of
the plurality of unique numbers
to identify in the restricted use
coupon database the matching
one of the plurality of unique
numbers as being not eligible for
redemption is an abstract idea,
i.e., a certain method of
organizing human activity, in
the form of a commercial
interaction including
advertising, marketing or sales
activities. See Revised Guidance
52.
Alternatively, “modifying,” is an
abstract idea, i.e., an
observation, evaluation,
judgment, opinion, which could
be performed as a mental
process. See Revised Guidance
52.
Appeal Br. 25–26 (Claims App.).
We determine that claim 65, overall, recites steps that would normally
be carried out in processing a restricted use coupon whether initiated person-
to-person, on paper, or using a computer. Claim 65 recites, overall, a certain
method of organizing human activity, in the form of commercial interactions
including advertising, marketing or sales activities — an abstract idea. Our
reviewing courts have found claims to be directed to abstract ideas when
they recited similar subject matter. See In re Ferguson, 558 F.3d 1359, 1364
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(Fed. Cir. 2009) (holding methods “directed to organizing business or legal
relationships in the structuring of a sales force (or marketing company)” to
be ineligible); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract).14
Thus, under Step 2A(i), we generally agree with the Examiner that
claim 65 recites an abstract idea, and more particularly, under our Revised
Guidance, we conclude claim 65 recites a judicial exception of restricting
coupon use in a sales transaction, i.e., a certain method of organizing human
activity, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and

14 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, and referring to TABLE 1, above, we
conclude limitations L1, L4, and L6 recite abstract ideas, and limitations L2,
L3, and L5 recite insignificant extra or post-solution data gathering and
communicating data. See MPEP § 2106.05(g). Storing data and providing
notifications as performed by the steps in Appellant’s claims, are classic
examples of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v. Kappos,
561 U.S. 593 (2010).
We also find claim 65 recites additional non-abstract limitations,
including a processor, a database, and a point-of-sale terminal. On this
record, we are of the view that Appellant’s claims do not operate the recited
generic computer components in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).
Thus, we determine each of limitations L1 through L6 of claim 65
either recite abstract ideas, data gathering, or extra-solution activity, as
identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of restricting coupon use into a practical application as
determined under one or more of the MPEP sections cited above. The claim
as a whole merely uses instructions to implement the abstract idea on a
computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
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[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus claim 65 is directed to the judicial exception.
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Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S.
at 77–79). As stated in the Revised Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under Step 2
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. Revised Guidance at 56. Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. Id.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
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conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
The Examiner concludes “[N]othing in the final action indicated
additional elements were considered well-understood, routine and
conventional because the additional elements of a processor and database)
were considered as merely adding ‘apply it’ and the additional element of a
POS was considered as adding insignificant extra-solution activity of
sending and receiving data (i.e. data gathering).” Ans. 6. As evidentiary
support for the conclusion that the additional elements do not represent
“significantly more,” the Examiner also cites to OIP Techs., Inc. v.
Amazon.com, Inc., 788F.3d 1359, 1363, 115 USPQ2d 10090, 1093 (Fed.
Cir. 2015). Id.
With respect to this step of the analysis, Appellant argues:
The Examiner's Answer dismisses “Appellant's arguments in
reference to the Berkheimer case” because “nothing in the final
office action indicated additional elements were considered
well-understood, routine and conventional” (See Step 2B, p. 6).
To the contrary, Appellant notes at p. 4, item 6 the FOA states
the following:
“Claims 52, 58 and 64 also indicated that
electronically communication with the point of
sale terminal are recited at a high level of
generality and are recited as performing generic
computer functions routinely used in computer
applications. Generic computer components
recited as performing generic computer functions
that are well-known, routine and conventional
activities amount to no more than implementing
the abstract idea with a computerized system”
(emphasis added).
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Thus, the FOA does indeed allege that Appellant's claims
include only “generic computer components recited as
performing generic computer functions that are well-
understood, routine and conventional activities” and the
Examiner erred in dismissing Appellant’s arguments raised
under Step 2B in their Appeal Brief.
Reply Br. 11.
We consider Appellant’s new arguments regarding Step 2B in the
Reply Brief because of the intervening Revised Guidance issued on
January 7, 2019, as discussed above.
The Revised Guidance states an additional element is not well-
understood, routine or conventional unless the examiner expressly supports a
rejection in writing with . . . “2. A citation to one or more of the court
decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).” Here, the
Examiner has cited to OIP Techs, which is specifically discussed in MPEP
§ 2106.05(d)(II)(i). Therefore, we do not find error in the Examiner’s
finding and conclusion in Step 2B.
As further evidence supporting the Examiner’s findings regarding the
conventional nature of the recited “processor,” “database,” and “point-of-
sale terminal” in method claim 65, the Specification discloses, with respect
to the “processor”:
It will be appreciated that embodiments of the invention
described herein may be comprised of one or more
conventional processors and unique stored program instructions
that control the one or more processors to implement, in
conjunction with certain non-processor circuits, some, most, or
all of the functions of the restricted use coupons as described
herein.
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Spec. ¶ 14.
Appellant’s Specification provides no specific definition or
description of the claim terms “database” or retail “point-of-sale terminal” to
distinguish them from the routine and conventional understanding and use of
these terms.
Thus, because the Specification and Drawings describe the additional
elements in general terms, without describing the particulars, we conclude
the claim limitations may be broadly but reasonably construed as reciting
conventional components, particularly in light of Appellant’s Specification,
as quoted above.15
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method that includes restricting the use of coupons as argued
by Appellant is simply not enough to transform the patent-ineligible abstract
idea here into a patent-eligible invention under Step 2B. See Alice, 573 U.S.
at 221 (“[C]laims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 65, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.

15 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, claim 65, considered as a whole, is directed to a patent-ineligible
abstract idea that is not integrated into a practical application and does not
include an inventive concept. Accordingly, we sustain the Examiner’s § 101
rejection of independent claim 65, and grouped claims 52–64 and 66–70,
which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–12) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
Under our Revised Guidance, governed by relevant case law, claims
52–70 are patent-ineligible under 35 U.S.C. § 101, and we sustain the
rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
52–70 101 Subject Matter
Eligibility
52–70
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FINALITY AND 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). See 37
C.F.R. § 41.50(f).
AFFIRMED