Michal Jonathan. Geller et al.

Patent Trials and Appeals Board

Oct 1, 2019

13399619 - (D) (P.T.A.B. Oct. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/399,619 02/17/2012 Michal Jonathan Geller 170106-1990 5859
71247 7590 10/01/2019
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@thomashorstemeyer.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAL JONATHAN GELLER and
GREGORY R. SPILS
____________________

Appeal 2018-005015
Application 13/399,619
Technology Center 3600
____________________

Before JENNIFER L. MCKEOWN, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7, 10, 11, 13–16. 18–21, 23, 25,
26, and 28–33. 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. Appellant identifies the real party in interest as Amazon
Technologies, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
Appellant’s disclosed embodiments and claimed invention relate to
processing physical coupons through an electronic commerce system.
Abstract.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
1. A non-transitory computer-readable medium storing a
plurality of computer instructions executable in a computing
device, the plurality of computer instructions, when executed,
causing the computing device to:
receive, in an electronic commerce system, an image of a
physical coupon for an item from a client device;
identify a coupon identifier by processing the image of
the physical coupon;
identify an electronic coupon that corresponds to the
coupon identifier, the electronic coupon being stored in a
coupon catalog associated with the electronic commerce
system;
identify a promotional benefit for the item, the
promotional benefit being based at least in part on the electronic
coupon;
determine that a user account has not exceeded a
predefined limit of using the electronic coupon based on the
coupon identifier and authentication data associated with the
client device, the predefined limit being associated with the user
account;
determine that a geographical area associated with the
user account is eligible for the electronic coupon; and
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automatically associate the item with an electronic
shopping cart that facilitates a purchase of the item through the
electronic commerce system using the electronic coupon.

Rejections on Appeal
Claims 5 and 16 stand rejected under 35 U.S.C. § 112, first paragraph,
as lacking written description support. Final Act. 3–5.
Claims 1–5, 7, 10, 11, 13–16, 18–21, 23, 25, 26, and 28–33 stand
rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter. Final Act. 5–10.
Claims 1, 7, 15, 25, 26, and 31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Griffith et al. (US
2009/0276307 A1; published Nov. 5, 2009) (“Griffith”), SnipSnap
(https://web.archive.org/web/20120103083845/http://snipsnap.it/; Jan.
2012), Hawkins et al. (US 2007/0162337 A1; published July 12, 2007)
(“Hawkins”), and Barnett et al. (US 2001/0001145 A1; published May 10,
2001) (“Barnett”). Final Act. 11–20.
Claims 2, 3, 5, 10, 11, 13, 14, 16, 18–21, 29, 30, 32, and 33 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Griffith, SnipSnap, and Hawkins. Final Act. 20–36.
Claims 4 and 282 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Griffith, SnipSnap, Hawkins, and

2 Appellant notes that claims 6 and 17 have been cancelled and that this
rejection appears to refer instead to claims 4 and 28. Appeal Br. 82.
Although the heading of the rejection refers to claims 6 and 17, the body of
the rejection addresses claims 4 and 28. Final Act. 36. For clarity, we refer
to claims 4 and 28 in the claim listing here.
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Thibedeau et al. (US 2010/0131342 A1; published May 27, 2010)
(“Thibedeau”). Final Act. 36–38.
CLAIM GROUPING
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).
Regarding the § 101 rejection, Appellant argues four groups of claims
separately (claims 1, 25, 26, and 31; claims 2–5, 7, 10, 11, 13, and 32;
claims 14, 16, 18–20, and 33; claims 21, 23, and 28–30). See Appeal Br. 9–
64. Because the Examiner made a single § 101 rejection for all claims and
because Appellant’s arguments for each set of claims are virtually identical
and not substantively separate, given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–5, 7, 10, 11, 13–
16. 18–21, 23, 25, 26, and 28–33 based on representative claim 1.
Regarding the § 103(a) rejections, Appellant divides the claims into
six groups and argues them separately (claims 1, 25, 26, and 31; claims 2, 3,
5, 10, 11, 13, and 32; claims 14, 16, 18–20, and 33; claims 21, 29, and 30;
claims 7 and 15; claims 4 and 28). See Appeal Br. 64–83. Because we have
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
§ 103(a) rejection of claims 1, 7, 15, 25, 26, and 31–35 on the basis of
independent claim 1 and the § 103(a) rejections of claims 2–5, 10, 11, 13,
14, 16, 18–21, 28–30, 32, 33 on the basis of independent claim 2. An issue
particular to dependent claim 31 is argued separately and will be addressed
separately. See Appeal Br. 68.
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ANALYSIS
Rejection of Claims 5 and 16 Under 35 U.S.C. § 112, First Paragraph
Claim 5 recites, in part:
determine that another physical coupon does not
correspond to one of a plurality of electronic coupons
associated with the electronic commerce system based at least
in part on another coupon identifier in an image of the other
physical coupon;
generate an additional electronic coupon corresponding
to the other coupon identifier based at least in part on the other
physical coupon.
Appeal Br. 87.
Claim 16 recites in part:
generating, in the computing device, an additional
electronic coupon upon determining that another physical
coupon does not correspond to a plurality of electronic coupons
based at least in part on another coupon identifier in an image
of the other physical coupon.
Appeal Br. 89.
The Examiner rejected claims 5 and 16 as failing to comply with the
written-description requirement of § 112 because the originally filed
Specification lacks support for the limitation “determine that another
physical coupon does not correspond to one of a plurality of electronic
coupons associated with the electronic commerce system based at least in
part on another coupon identifier in an image of the other physical coupon,”
as recited in claim 5, and the “generating” limitation shown above, as recited
in claim 16. Final Act. 3–4. According to the Examiner, paragraph 26 of
the Specification describes that the physical coupon may include one or
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more coupon identifiers, but does not appear to specify a second or
additional coupon. Id. at 4; Ans. 4.
Appellant argues that “[t]he Specification describes in sufficient detail
the subject matter of claim 5” (Appeal Br. 5) and “the subject matter of
claim 16” (id. at 7). According to Appellant, “[o]nce the coupon processing
engine 129 has obtained or extracted one or more coupon identifiers 183, the
coupon processing engine 129 may attempt to identify one or more
electronic coupons 153 that correspond to the coupon identifier 183.”
Appeal Br. 6, 8 (citing Spec. ¶ 37). Appellant further argues that paragraph
93 of the Specification describes that “if the electronic commerce system
determines that the physical coupon does not correspond to an electronic
coupon, the electronic commerce system may generate a new electronic
coupon that may be applied.” Appeal Br. 7, 8 (citing FIGS 4A, 4B, ¶¶ 9 and
70–77).
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.”’ Vasudevan Software, Inc, v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (citing Ariad Pharms., Inc, v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).
Appellant has persuaded us of Examiner error. In the Answer, the
Examiner stated that “Appellant’s arguments were not persuasive,” without
addressing paragraph 9 or the other sections of the Specification cited by

3 Appellant refers to this section of the Specification as paragraph 10 in the
Appeal Brief. The citation should have been to paragraph 9, which
Appellant cited correctly in the Reply Brief.
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Appellant. See Ans. 4, 5. Thus, the Examiner has not provided sufficient
explanation or reasoning as to why the cited portions of the Specification fail
to support the recited subject matter in dispute.
For these reasons, on the record before us, we are persuaded the
Examiner erred, and we reverse the written description rejection under
35 U.S.C. § 112, first paragraph, of claims 5 and 16.
Rejection of Claims Under 35 U.S.C. § 101
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims 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)
(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.

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 patent-eligibility
inquiry under § 101.
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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, 69 (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. (15 How.) 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 “[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
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
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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.
The PTO recently 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).
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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
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.7
See Revised Guidance.

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)”).
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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Prima Facie Case
Appellant first argues that the Examiner failed to make a prima facie
case of subject matter ineligibility by overgeneralizing and ignoring certain
claim elements. Appeal Br. 9.
We disagree. The procedural burden of establishing a prima facie
case is carried when the rejection satisfies the requirements of 35 U.S.C.
§ 132. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). “Section 132 is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.” Chester
v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). That is, the Examiner must
set forth the rejection's statutory basis “in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” Jung, 637
F.3d at 1363.
This is not a case where the “rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Id. at 1362. Rather, the Examiner has provided a rationale
that identifies the abstract idea recited in the claim and why it is considered
an exception. See Final Act. 5–8. And Appellant clearly identifies the
abstract idea identified by the Examiner. See, e.g., Appeal Br. 9.
Accordingly, we are not persuaded that the Examiner has failed to set
forth a prima facie case of patent ineligibility for representative claim 1.
Step 1
Claim 1, as a manufacture, 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.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “making a
targeted offer to an audience (targeted advertising),” which is a certain
method of organizing human activity, and thus an abstract idea. Final Act.
6–7. The Examiner identified the following steps as part of the recited
abstract idea:
identify an electronic coupon that corresponds to the
coupon identifier, the electronic coupon being stored in a
coupon catalog associated with the electronic commerce
system;
identify a promotional benefit for the item, the
promotional benefit being based at least in part on the electronic
coupon;
determine that a user account has not exceeded a
predefined limit of using the electronic coupon based on the
coupon identifier and authentication data associated with the
client device, the predefined limit being associated with the user
account;
determine that a geographical area associated with the
user account is eligible for the electronic coupon; and
automatically associate the item with an electronic
shopping cart . . .
Final Act. 6.
Consistent with Appellant’s description of the claims, we find that the
limitations we summarize above describe a particular method for promoting
or distributing deals that is fairly characterized as “targeted advertising,”
which falls into the “certain methods of organizing human activity” category
of abstract ideas. See 84 Fed. Reg. at 52.
Appellant argues that the Examiner erred because the subject matter
of the claims is not similar to the concepts that the courts identified as an
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abstract idea in Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d
1057 (Fed. Cir. 2011) or Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016). Appeal Br. 20.
We are not persuaded that the Examiner erred. Under the Revised
Guidance, the Board continues to treat analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract idea category. See
Elec. Power Grp., 830 F.3d at 1354. Also, the present claims collect and
compare known information, which has been determined to be an abstract
idea. Classen, 659 F.3d at 1067. (“Claim 1 of the ’283 patent states the idea
of collecting and comparing known information”).
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, 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 (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
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Revised Guidance at 55 n.24. In claim 1, the additional elements include the
limitations “receive in an electronic commerce system, an image of a
physical coupon for an item from a client device” and “. . . that facilitates a
purchase of the item through the electronic commerce system,” “a non-
transitory computer readable medium embodying a program executable in a
computing device,” “at least one computing device,” and “a computing
device,” which are merely performing or applying the abstract ideas. See
Final Act. at 7–8. We consider these elements individually and in
combination in the sections that follow.
The Examiner determined that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because “the additional computer elements, which are recited at a high level
of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Id. at 7. We agree with
the Examiner.
Additionally, the limitation “receive in an electronic commerce
system, an image of a physical coupon for an item from a client device”
amounts to mere data gathering, which is insignificant pre-solution activity.
See Mayo, 566 U.S. at 79 (quoting Flook, 437 U.S. at 590) (“Purely
‘conventional or obvious' ‘[pre]-solution activity’ is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law”); see also Revised Guidance, 55, n.31. Similarly, the
limitation “that facilitates a purchase of the item through the electronic
commerce system” amounts to insignificant post-solution activity. The
Supreme Court guides that the “prohibition against patenting abstract ideas
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‘cannot be circumvented’ [by] adding ‘insignificant postsolution activity.”’
Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92).
Appellant argues that claim 1 provides improvement over existing
technologies like the patent-eligible claims in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Appeal Br. 10–14.
Specifically, Appellant argues that claim 1, when viewed in light of the
Specification, is directed toward “an improved technological process for
securely processing and applying physical coupons in electronic commerce
while preventing fraudulent use of the coupons.” Appeal Br. 11 (citing
Spec. ¶¶ 9, 40, and 72–73).
The problem being solved relates to the processing of physical
coupons presented to retailers. See Spec. ¶ 1. The Specification states that
the invention solves the problem because it processes physical coupons in
conjunction with purchases made through an electronic commerce system.
See, e.g., Spec. ¶ 9. This is not an improvement to computers. Instead,
claim 1 uses the computer as a tool to receive, identify, and determine
information, and to associate an item with an electronic shopping cart.
Appellant does not identify how claim 1 improves an existing technological
process.
Appellant’s claim 1 is unlike the technology-based integrations cited
by Appellant. See Appeal Br. 10–20. For example in Enfish, the patent-
eligible claim was directed to a self-referential table to improve computer
databases. Enfish, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to “a specific improvement to the
way computers operate, embodied in the self-referential table” (id. at 1336),
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and explained that the claims are “not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database” that functions differently than conventional
databases. Id. at 1337.
Likewise, in McRO, the patent-eligible claim focused on a specific
asserted improvement in computer animation. McRO, Inc, v. Bandai Namco
Games Am., 837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO recited a
“specific . . . improvement in computer animation” using “unconventional
rules that relate[d] sub sequences of phonemes, timings, and morph weight
sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the
incorporation of the claimed rules, not the use of the computer,” improved
an existing technological process. Id. at 1314. Appellant does not direct us
to any evidence that the claimed steps correspond to unconventional rules.
Rather, Appellant alleges claim 1 is patent-eligible because its
practice does not preempt practice by others. Appeal Br. 15. While
preemption may signal patent ineligible subject matter, the absence of
complete preemption “does not demonstrate patent eligibility, where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
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Appellant’s arguments based on Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) are
similarly unavailing. In Bascom, the claims were directed to the inventive
concept of providing customizable Internet-content filtering which was
found to transform the abstract idea of filtering content into a patent-eligible
invention. Although the underlying idea of filtering Internet content was
deemed abstract, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
the filtering system to give users the ability to customize filtering for their
individual network accounts. We find no analogy between Appellant’s
claimed physical coupon processing claims and the claims in Bascom.
For the first time in the Reply Brief, Appellant argues that claim 1 is
analogous to the claims in DDR Holdings v. Hotels.com, 773 F.3d 1245,
1258-59 (Fed. Cir. 2014). Reply Br. 10. Appellants, however, have waived
this argument because they presented it for the first time in the Reply Brief,
without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012);
accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010
(informative opinion) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”).
Even if Appellant’s argument were timely, however, it is not
persuasive. We note that, although the Federal Circuit in DDR Holdings
held claims “necessarily rooted in computer technology” to be patent
eligible, the court issued a relevant warning:
[W]e caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
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argued that its claims were “directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before.” But this
alone could not render its claims patent-eligible. In particular,
we found the claims to merely recite the abstract idea of
“offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.”
DDR Holdings, 773 F.3d at 1258 (citations omitted).
Also in the Reply Brief, Appellant argues that claim 1 improves the
efficiency of using an electronic device, as in the intervening case Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed.
Cir. 2018). Reply Br. 11–13.
We are not persuaded. In Core Wireless, the court stated that “[t]he
disclosed invention improves the efficiency of using the electronic devices.”
Core Wireless, 880 F.3d at 1363. However, the court also explained that
“[w]e also ask whether the claims are directed to a specific improvement in
the capabilities of computing devices” (id. at 1361), and then determine that
“the claims are directed to an improvement in the functioning of computers”
(id. at 1363). Thus, in Core Wireless, the improved efficiency of using the
electronic devices was related to an identified improvement in the
functioning of computers.
The claims here, however, do not recite an improvement for electronic
devices. Determining which information to associate with an electronic
shopping cart, as in claim 1, “does not improve the functioning of the
computer, make it operate more efficiently, or solve any technological
problem.” Trading Techs. II, 921 F.3d at 1384–85. Rather, the claim
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simply “includes instructions to implement an abstract idea on a computer”
and “does no more than generally link the use of a judicial exception to a
particular technological environment or field of use.” 2019 Revised
Guidance, 84 Fed. Reg. at 55.
Appellant also argues in the Reply Brief that the claims recite specific
steps rather than mere results, as in the intervening case Finjan, Inc. v. Blue
Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018). Reply Br. 13.
Specifically, Appellant argues that the claimed process involves “an
inventive arrangement for accomplishing the result.” Id. at 14.
Appellant’s reliance on Finjan is misplaced. In Finjan, the claims
were directed to an improvement in computer functionality. The Finjan
claims employed “a new kind of file that enables a computer security system
to do things it could not do before,” namely, tailoring access for different
users and identifying threats before a file reaches a user’s computer. Finjan,
879 F.3d at 1305. Claim 1 before us, on the other hand, uses generic
computer components and generic computer functionality to analyze
electronic content (i.e., data) to draw conclusions about that content, and to
automatically associate it with an electronic shopping cart.
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in these cases.
Thus, claim 1 recites an abstract ideas as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application. Claim 1 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 that the abstract idea is integrated into a practical
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application under the guidance of Manual of Patent Examining Procedure
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”).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. In Step 2B we
“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
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353). Here, we look to see
whether there are any “additional features” in the claims that constitute an
“inventive concept,” thereby rendering the claims eligible for patenting even
if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those
“additional features” must be more than “well-understood, routine,
conventional activity.” Mayo, 566 U.S. at 79.
The Examiner found that the recited steps of “receive, in an electronic
commerce system, an image of a physical coupon for an item from a client
device,” and “that facilitates a purchase of the item through the electronic
commerce system” are functions the courts have recognized to be well-
understood, routine, conventional, and normal computer operation. Final
Act. 7. The Examiner further determined that the additional computer
elements, which are recited at a high level of generality, provide
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conventional computer functions that do not add meaningful limits to
practicing the abstract idea. Id. at 7–8.
In particular, the Examiner determined that the recited “non-transitory
computer-readable medium embodying a program executable in a
computing device,” “at least one computing device,” and “a computing
device” merely perform or apply the abstract ideas. Id. at 8. We agree with
the Examiner that the additional elements do not add a meaningful limitation
to the abstract idea because they are described generally in the Specification
and would be routine in any computer implementation. See, e.g., Spec. ¶¶
10–24.
Appellant does not present any arguments with respect to this step of
the § 101 analysis.
For these reasons, we conclude claim 1 lacks an inventive concept that
transforms the abstract idea of targeted advertising into a patent-eligible
application of that abstract idea. Because claim 1 fails to satisfy both the
Step 2A and Step 2B analyses, we sustain the Examiner’s § 101 rejection of
independent claim 1 and grouped claims 2–5, 7, 10, 11, 13–16, 18–21, 23,
25, 26, and 28–33, which fall therewith. See Claim Grouping, supra.
Rejection of Claims Under 35 U.S.C. § 103(a)8
We disagree with Appellant’s arguments with respect to the § 103(a)
rejections of independent claims 1, 2, 14, and 21 and, unless otherwise

8 In rejecting 1–5, 7, 10, 11, 13–16, 18–21, 23, 25, 26, and 28–33 under
35 U.S.C. § 103(a), the Examiner noted that the claims recite limitations that
occur if a conditional statement is met. See, e.g., Final Act. 16–17; see also
Appeal Br. 69–70. During prosecution, the Examiner did not broaden the
claims due to the conditional nature of the limitations, thus giving no effect
to the conditional limitations in rejecting the claims. See id. Under these
circumstances, we decline to decide the merits of the Examiner’s notation.
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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 the claims for emphasis as
follows.
Claims 1, 7, 15, 25, 26, and 31–35
Appellant contends the Examiner erred because the cited prior art
references do not teach or suggest the limitation “identify a coupon identifier
by processing the image of the physical coupon,” as recited in representative
claim 1. Appeal Br. 65. Appellant argues that Griffith does not teach
processing an image. Id. Appellant states that the Examiner “does not cite
additional references or further address these elements.” Id. The Examiner,
however combined the teachings of Griffith with those of SnipSnap. Final
Act. 13–15. The Examiner found that “Griffith teaches getting coupon data
of a physical coupon to create an electronic/digital coupon in at least
paragraphs 0030 and 0051, but Griffith does not appear to specify taking an
image of the coupon to create the electronic/digital coupon.” Final Act. 13.
The Examiner further found “SnipSnap teaches taking a photo of a coupon
and creating an electronic/digital version to be used in the following
screenshot.” Id. About SnipSnap, Appellant argues “the reference does not
disclose or suggest "receiv[ing], in an electronic commerce system, an image
of a physical coupon for an item from a client device," and "identify[ing] a
coupon identifier by processing the image of the physical coupon," as recited
in claim 1.
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We are not persuaded that the Examiner erred. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Nowhere has Appellant addressed the combined teachings of
Griffith and SnipSnap, as cited by the Examiner.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Griffith, SnipSnap, Hawkins, and Barnett
teaches or suggests the limitation “identify a coupon identifier by processing
the image of the physical coupon,” as recited in claim 1.
Appellant next contends the cited references do not teach or suggest at
least the following limitation of claim 1:
determine that a user account has not exceeded a predefined
limit of using the electronic coupon based on the coupon
identifier and authentication data associated with the client
device, the predefined limit being associated with the user
account.
Appeal Br. 66. Appellant argues that in Hawkins, “authentication data” does
not appear to be “associated with the client device,” as claim 1 requires,
because Hawkins teaches that its authentication is “capable of authorizing a
customer biometrically.” Id. (citing Hawkins ¶ 24).9

9 Appellant cited Hawkins ¶ 23, but the teaching of authorizing a customer
biometrically appears in Hawkins ¶ 24.
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We are not persuaded that the Examiner erred. The Examiner found
Hawkins teaches that personal incentives (coupons) may have certain rules
and restrictions, including a limit per customer. Final Act. 15 (citing
Hawkins ¶ 20). The Examiner further found that Hawkins teaches
authenticating a user’s account and the client device. Id. (citing Hawkins ¶¶
20–27). For example, Hawkins teaches that
mobile identifying information such as the mobile device’s
phone number is stored in the device registration database
260 and is associated with a customer identifier such as the
customer’s merchant loyalty identification number, so that
customer’s targeted offers may be identified in the customer
targeted offers database 250 and transmitted to the mobile
device.
Hawkins ¶ 26. That the system in Hawkins may also be capable of
authorizing a customer biometrically is not sufficient to persuasively rebut
the Examiner’s findings.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Griffith, SnipSnap, Hawkins, and Barnett
teaches or suggests the disputed limitation.
Appellant next contends that the cited references do not teach or
suggest “automatically associate the item with an electronic shopping cart
that facilitates a purchase of the item through the electronic commerce
system using the electronic coupon,” as recited in claim 1. Appellant argues
that the shopping list taught in Barnett “does not appear to disclose or
suggest, ‘an electronic shopping cart that facilitates a purchase of the item
through the electronic commerce system,’ as recited in claim 1.” Appeal Br.
67 (citing Barnett ¶ 69).
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We are not persuaded that the Examiner erred. The Examiner relied
on the combined teachings of at least Griffith and Barnett for the disputed
limitation. See Ans. 15 (citing Griffith ¶¶ 15, 17; Barnett ¶¶ 26 and 68–69).
Appellant, however, argues Barnett separately. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See Merck, 800 F.2d
at 1097. Appellant also has not persuasively rebutted the Examiner’s
interpretation of “shopping cart” as “a list of things you want to buy.”
Ans. 15.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Griffith, SnipSnap, Hawkins, and Barnett
teaches or suggests the disputed limitation.
Appellant further contends that the Examiner erred in rejecting
dependent claim 31 because the cited references do not teach or suggest the
limitation “flag the user account in response to the item being purchased
through the electronic commerce system using the electronic coupon,” as
recited in claim 31. Appeal Br. 68. Appellant argues that the reports taught
in paragraph 32 of Hawkins, relied on by the Examiner (Final Act. 19–20),
do not indicate whether any electronic coupon is used. Id.
We are not persuaded that the Examiner erred. The Examiner found
that Barnett teaches flagging coupons, and Hawkins teaches “noting/flagging
coupon usage by tabulating usage with consumer (their account) purchase
history.” Ans. 15–16 (citing Barnett ¶ 77, Hawkins ¶ 32). Appellant has not
persuasively rebutted the Examiner’s findings, as the Reply Brief does not
address the combined teachings of Barnett and Hawkins relied on by the
Examiner.
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In addition, Appellant attacks Hawkins individually, while the
Examiner relied on the combination of Griffith, SnipSnap, Hawkins, and
Barnett in rejecting claim 31. See Final Act. 11–12. Nonobviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See Merck, 800 F.2d
at 1097. In particular, Appellant has not persuasively rebutted the
Examiner’s findings that Griffith teaches or suggests an electronic/digital
coupon. See Final Act. (citing Griffith ¶¶ 30, 51).
For these reasons, we are not persuaded that the Examiner erred in
finding the combination of Griffith, SnipSnap, Hawkins, and Barnett teaches
or suggests the disputed limitation of claim 31.
Accordingly, we sustain the Examiner’s § 103(a) rejections of
independent claim 1 and grouped claims 7, 15, 25, 26, and 31–35, which fall
therewith. See Claim Grouping, supra.
Claims 2–5, 10, 11, 13, 14, 16, 18–21, 28–30, 32, 33
With regard to representative claim 2, Appellant’s arguments are
substantively similar to those Appellant made for claim 1, discussed above.
See Appeal Br. 71–74. In addition, arguments made for dependent claim 30
are similar to those made for dependent claim 31, discussed above.
For the reasons stated above for claims 1 and 31, we sustain the
Examiner’s § 103(a) rejection of independent claim 2 and grouped claims 3–
5, 10, 11, 13, 14, 16, 18–21, 28–30, 32, 33, which fall therewith. See Claim
Grouping, supra.
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CONCLUSIONS
Claims
Rejected
Basis Affirmed Reversed
5, 16 § 112, first
paragraph
5, 16
1–5, 7, 10, 11, 13–16.
18–21, 23, 25, 26,
28–33
§ 101 1–5, 7, 10, 11,
13–16, 18–21,
23, 25, 26,
28–33

1, 7, 15, 25, 26, 31 § 103(a)
Griffith,
SnipSnap,
Hawkins,
Barnett
1, 7, 15, 25,
26, 31

2, 3, 5, 10, 11, 13, 14,
16, 18–21, 29, 30, 32,
33
§ 103(a)
Griffith,
SnipSnap,
Hawkins
2, 3, 5, 10, 11,
13, 14, 16,
18–21, 29, 30,
32, 33

4, 28 § 103(a)
Griffith,
SnipSnap,
Hawkins,
Thibedeau
4, 28
Overall Outcome 1–5, 7, 10, 11,
13–16, 18–21,
23, 25, 26,
28–33

DECISION
We affirm the Examiner’s decision rejecting claims 1–5, 7, 10, 11,
13–16. 18–21, 23, 25, 26, and 28–33.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–5, 7, 10,
11, 13–16, 18–21, 23, 25, 26, and 28–33 is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
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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