RetailMeNot, Inc.

Patent Trials and Appeals Board

Feb 26, 2020

14661403 - (D) (P.T.A.B. Feb. 26, 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.
14/661,403 03/18/2015 J. Seth Randle 034250-0437781 8710
909 7590 02/26/2020
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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 J. SETH RANDLE
__________________

Appeal 2019-004416
Application 14/661,403
Technology Center 3600
____________________

Before CHARLES N. GREENHUT, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies RetailMeNot, Inc. and Harland Clarke Corp. as the real parties in
interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1, 6, and 16 are independent. Claim 1 is reproduced below.
1. A method of programmatically administering a game of
chance by interfacing an offer distribution system with a
consumer mobile device to enter a consumer in the game of
chance in exchange for the consumer moving from a mall to a
store in the mall seeking consumer visits, the consumer mobile
device presenting an alert describing the game of chance in
response to detecting that the consumer is in a geofence
corresponding to the mall, and the consumer mobile device
causing the consumer to be entered in the game of chance in
response to detecting that the consumer is within wireless range
of a transmitter at the store, the method comprising:
obtaining data defining a multi-stage geolocated offer
specifying one or more rewards to be conferred on consumers
in exchange for the respective consumers moving from an alert
geographic location to a reward geographic location,
wherein the alert geographic location is specified
by a geofence defined with one or more geographic coordinates
and is a geographic area smaller than 1,000 square kilometers
that contains the reward geographic location;
wherein the reward geographic location
corresponds to at least a portion of a physical site of a merchant
and is specified by an identifier that is encoded in a wireless
transmission by a wireless transmitter at the physical site of the
merchant, and
wherein the one or more rewards include entry into
a game of chance;
sending a consumer mobile device the multi-stage
geolocated offer and instructions to alert a consumer to the
multi-stage geolocated offer in response to the consumer
mobile device detecting that the consumer mobile device is
within the alert geographic location;
sending the consumer mobile device instructions to
perform steps comprising:
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detecting when the consumer mobile device
wirelessly receives the identifier that is encoded in the wireless
transmission by the wireless transmitter at the physical site of
the merchant, and
in response to detecting the identifier, sending an
indication that the consumer is within the reward geographic
location;
receiving an indication that the consumer is within the
reward geographic location;
determining, with a processor, based on the received
indication that the consumer is within the reward geographic
location, that the consumer qualifies for entry in the game of
chance; and
storing in memory data qualifying the consumer for the
reward.

REJECTION2
Claims 1–21 are rejected as directed to patent-ineligible subject matter
under a judicial exception to 35 U.S.C. § 101.
ANALYSIS
Claims 1–21 Rejected under a Judicial Exception to 35 U.S.C. § 101
Section 101 of the Patent Act defines patent-eligible-subject matter as:
Whoever 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.

35 U.S.C. § 101 (2012). However, “[l]aws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted).

2 The Examiner withdrew the prior art rejections of claims 1–21. Ans. 3;
Final Act. 5–22.
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To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
as an ordered combination, to determine if additional elements transform the
claim into a patent-eligible application, e.g., by providing an “inventive
concept” that ensures the patent amounts to significantly more than a patent
on the ineligible concept. Id. at 217–218.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under the Revised Guidance, to determine whether a
claim is “directed to” an abstract idea, we evaluate whether the claim recites
(1) any judicial exceptions, including certain groupings of abstract ideas
listed in the Revised Guidance (i.e., mathematical concepts, certain methods
of organizing human activities such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. at 51.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then consider
whether the claim (3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)) or (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Id. at 56.

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Step 1: Do the Claims Recite a Statutory Category?
The Examiner finds that independent claims 1 and 6 recite a method,
and claim 16 recites a system. See Final Act. 2–3. Thus, the claims recite
statutory categories of invention of 35 U.S.C. § 101, namely, processes and a
machine.
Alice Step 1, Revised Step 2A, Prong One: Are Judicial Exceptions Recited?
Appellant argues independent claims 1, 6, and 16 together and argues
dependent claim 4. Appeal Br. 5–16. We select claim 1 as representative of
the group (37 C.F.R. § 41.37(c)(1)(iv)) and address claim 4 separately.
The Examiner determines that claim 1 recites “the concept of
distributing coupon and other offers [] and, more specifically to multi-stage
geolocation offers in sequence of geographic location which corresponds to
concepts identified as abstract idea by the court.” Final Act. 3, 23. The
Examiner determines that each step of the claimed method recites portions
of this abstract idea. Id. at 2–3. We agree that claim 1 recites abstract ideas.
Under the Revised Guidance, these steps involve certain methods of
organizing human activity including commercial interactions of advertising,
marketing, and sales activities. Revised Guidance, 84 Fed. Reg. at 52. The
preamble (see Appeal Br. 22 (Claims App.) describes this concept as
administering a game of chance by interfacing an offer
distribution system with a consumer mobile device to enter a
consumer in the game of chance in exchange for the consumer
moving from a mall to a store in the mall seeking consumer
visits, the consumer mobile device presenting an alert
describing the game of chance in response to detecting that the
consumer is in a geofence corresponding to the mall, and the
consumer mobile device causing the consumer to be entered in
the game of chance in response to detecting that the consumer
is within wireless range of a transmitter at the store . . . .
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This advertising, marketing, and sales concept reflects the idea that
applicants have found that the geographic location of
consumers relative to a merchant’s physical store is useful for
targeting consumers. Consumers within a relatively short
walking or driving distance to a store (e.g., within a 1,000
square kilometer circular area around the store for driving or
within a 1 square kilometer area for walking) are often more
likely to respond to an offer by at least visiting the store, if not
purchasing goods or services.

Spec. ¶ 15. This concept addresses the problem of merchants with limited
budgets targeting offers to consumers most likely to buy goods at the store.
Id. ¶ 14. Appellant discovered that consumers located close to a physical
brick-and-mortar store are more likely to respond to an offer to shop at that
store than consumers who are not located proximate to the store. Id. ¶ 15.
Claim 1 recites steps that organize this consumer advertising activity
by presenting an alert to a consumer’s mobile device when the consumer is
detected in a “geofence” area that is near a merchant’s store in a mall.
The step of “obtaining data defining a multi-stage geolocated offer
specifying one or more rewards to be conferred on consumers in exchange
for the respective consumers moving from an alert geographic location to a
reward geographic location” recites an initial step in this process wherein the
offer distribution system receives the advertising offer to administer. This
step is used to organize or guide the subsequent steps in the advertising and
sales activities. See Spec. ¶ 53 (the offer based advertising process begins
by obtaining data defining a multi-stage geolocated offer), Fig. 2 (block 58).
Steps of specifying (1) an alert geographic location by a geofence and
geographic coordinates and (2) a reward geographic location corresponding
to a physical site of a merchant recite further steps of this same abstract idea.
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First, consumers are alerted when they are within an “alert geographic
location,” i.e., near to a merchant’s physical site such as within a ten minute
drive or walk or within 10–15 kilometers. Spec. ¶¶ 16, 17. Then, they are
directed to a “reward geographic location” at the store of the merchant who
issued the offer. Id. ¶ 17. Consumers qualify for a reward in exchange for
visiting a merchant’s store. Id. The reward can enter consumers in a game
of chance such as a sweepstakes. Id. This multi-stage geolocated offer thus
involves certain methods of organizing consumer activities for commercial
advertising, marketing, or sales activity undertaken by a merchant at a store.
The next steps of alerting the consumer to the multi-stage geolocated
offer when the consumer mobile device is detected in the alert geographic
location and detecting when the device receives an encoded identifier at the
physical site of the merchant to indicate that the consumer is in the reward
geographic location and the consumer qualifies for entry in the game of
chance recite other steps of this advertising, sales, and marketing activity.
Claim 4 depends from claim 1 and recites that the alert geographic
location is defined by a geofence, which “includes an interior negative area
in which consumers are not alerted to the multi-stage geofenced offer, and
wherein the reward geographic location is in the interior negative area.”
Appeal Br. 23 (Claims App.). This step recites the same abstract idea.
This step recites the concept that consumers who already are at the
merchant’s physical location are not alerted to the offer because they do not
need an offer to visit the merchant’s store. Spec. ¶¶ 16, 17. “[C]onsumers
already geographically located within a store . . . are often already likely to
purchase goods or services even without an offer that would otherwise
consume some of the merchant’s budget for offers.” Id. ¶ 15.
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Appellant argues that “[t]he subject matter to which the claims are
alleged to be directed by the Examiner must be shown by the Examiner to be
similar to an abstract idea previously identified by the courts.” Appeal Br. 9.
Appellant also argues that “there is no similarity between the subject matter
to which the claims are alleged to be directed and subject matter in identified
court cases holding claims to be directed to an abstract idea.” Id. at 9–10.
The 2019 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(s)” . . . (b) Certain methods of organizing
human activity . . . commercial or legal interactions (. . . advertising,
marketing or sales activities or behaviors . . .).” Revised Guidance, 84 Fed.
Reg. at 52; MANUAL OF PATENT EXAMINING PROCEDURE § 2106.04(a)(2)
(9th Ed. Rev. 8, Jan. 2018) (courts identify certain methods of organizing
human activity as concepts of advertising, marketing, and sales activities).
As discussed above, claim 1 recites concepts of organizing human
activity for commercial interactions involving advertising, marketing, and
sales activities. Claim 1 recites an abstract idea of sending advertising offers
to consumers based on their location. It organizes human activities for the
commercial interactions of advertising, marketing, and sales activities by
filtering user locations in reference to “a geofence defined with one or more
geographic coordinates” and “a physical site of a merchant.” Recited in the
abstract, such filtering is an abstract idea. BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“We agree
with the district court that filtering content is an abstract idea because it is a
longstanding, well-known method of organizing human behavior”).
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BASCOM filtered content over the Internet just as the claimed
method, filters merchant offers relative to consumer locations over the
Internet 24 via offer distribution system 12. Id.; see Spec. ¶¶ 31–36, 47.
Furthermore, “[t]he practice of conveying regional content to out-of-
region recipients has been employed by nearly every form of media that has
a local distribution.” Affinity Labs of Texas LLC v. DIRECTV, LLC, 838
F.3d 1253, 1258 (Fed. Cir. 2016). Essentially, the claimed alert provides
content (an advertising offer) from a store located away from the location of
the consumer. See Spec. ¶ 49; see also id. ¶¶ 21–26, 47, 48; Affinity Labs of
Texas LLC v. Amaxon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (“we
hold that the concept of delivering user-selected media content to portable
devices is an abstract idea, as that term is used in the section 101 context.”).
The courts also have held the concept of sending advertisements to
consumers based on their location is an abstract idea.
Intellectual Ventures admitted that tailoring content based on
the viewer’s location or address would satisfy the “as a function
of the user’s personal characteristics” limitation. This sort of
information tailoring is “a fundamental . . . practice long
prevalent in our system . . . .” Id. There is no dispute that
newspaper inserts had often been tailored based on information
known about the customer—for example, a newspaper might
advertise based on the customer’s location. Providing this
minimal tailoring—e.g., providing different newspaper inserts
based upon the location of the individual—is an abstract idea.

Intellectual Ventures I LLC v. Capitol One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015); see also Bridge and Post, Inc. v. Verizon Commc’ns,
Inc., 778 F. App’x 882, 887 (Fed. Cir. 2019) (“Targeted marketing is a form
of ‘tailoring information based on [provided] data,’ which we have
previously held is an abstract idea.”) (citation omitted).
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In Bridge and Post, the patents-in-suit taught that “[t]ailoring
advertisements based on real-time information about the user and their
location allows a publisher to ‘maximize their advertising revenues.’”
Bridge and Post, 778 F. App’x at 884. Each of the patents-in-suit taught
“tracking a user on a network and serving tailored advertisements.” Id. at
885. They also taught that the concept of tailoring advertisements based on
user data “dates back at least to local radio and television advertisements,
which played only for users located in specific cities.” Id. at 884.
The Court reiterated that “as we have previously held, claims related
to ‘customizing information based on (1) information known about the user
and (2) [specific] data’ are directed to abstract ideas.” Id. at 888. Bridge
and Post illustrates that the abstract idea of organizing human behavior for
advertising and other commercial interactions has been used to solve the
very problem Appellant highlights in the Specification and its Appeal Brief.
Appellant’s Specification describes the problem as merchants “have a
limited budget for conferring benefits on consumers with offers” and “wish
to target those benefits to consumers who 1) are likely to respond to the offer
by purchasing goods or services from the merchant and 2) but-for the offer
would not have purchased the goods or services.” Spec. ¶ 14. Appellant
“found that the geographic location of consumers relative to a merchant’s
physical store is useful for targeting consumers.” Id. ¶ 15; see Appeal Br. 7.
Bridge and Post held that targeted advertising to consumers based on
a consumer’s location to maximize advertising dollars is an abstract idea.
Claim 4 recites a similar aspect in which the alert geographic location
includes “an interior negative area in which consumers are not alerted to the
multi-stage geofenced offer.” Appeal Br. 23 (Claims App.).
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This feature is another aspect of the abstract idea recited in claim 1. It
involves the concept that “consumers already geographically located within
a store (or other physical site of a merchant, like a service center) are often
already likely to purchase goods or services even without an offer that would
otherwise consume some of the merchant's budget for offers.” Spec. ¶ 15.
Therefore, “some embodiments are configured to block consumers already
at the merchant's physical location from being alerted to the offer.” Id. ¶ 16.
Claim 4 recites this abstract idea of organizing human activity for the
commercial interaction of advertising activity by blocking a consumer at the
merchant’s location from receiving an alert notification. Claim 4 also recites
that “the reward geographic location [the physical site of a merchant] is in
the interior negative area.” Appeal Br. 23 (Claims App.).
Nor are we persuaded by Appellant’s arguments that claim 1 recites a
specific improvement in computer-related technology rather than a mere
result. Appeal Br. 9–10 (citing Finjan, Inc. v. Blue Coat Systems, Inc., 879
F.3d 1299 (Fed. Cir. 2018)). The abstract “result” in Finjan was the abstract
ideas recited in the “resulting systems.” See Finjan, 879 F.3d at 1305.
Similarly, claims in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed.
Cir. 2016) were patent-ineligible because they “d[id] not claim a particular
way of programming or designing the software . . . but instead merely claim
the resulting systems.” Finjan, 879 F.3d at 1305 (emphasis added).
The court explained that claims in other cases were determined to be
patent-ineligible because they placed “no restriction on how the result is
accomplished . . . [and] [t]he mechanism . . . is not described.” Id. (“there
was nothing in the claim ‘directed to how to implement [the idea]. Rather,
the claim is drawn to the idea itself.’”) (citations omitted).
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As discussed in more detail under Prong Two, claims 1 and 4, do not
recite a particular way to program or design software, or impose meaningful
limitations on how a multi-stage geolocation offer is made. Nor do claims 1
and 4 recite improvements to computers, technology, software design, or
software programming as required by Finjan. Appeal Br. 6–8.
Appellant argues that the abstract ideas themselves provide a technical
improvement. Id. It is well-settled that “a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Ultramercial v. Hulu illustrates that claims to an abstract method of
distributing products over the Internet do not become patent-eligible just
because they recite abstract process steps instead of a result. Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (holding “the concept
embodied by the majority of the limitations describes only the abstract idea
of showing an advertisement before delivering free content.”) (emphasis
added). A user had to view advertisements to access copyrighted media. Id.
Similar to Ultramercial’s abstract idea of showing an advertisement
before delivering free content, claim 1 recites the abstract idea of showing a
user an advertisement as an “alert describing the game of chance” and then
delivering free content in the form of a reward to qualify for a game of
chance if the user reads the alert and travels to the merchant’s store to claim
the reward. Appeal Br. 22–23 (Claims App.); Spec. ¶¶ 17, 21–26, Figs. 1, 2.
Based on the foregoing, we determine that claim 1 recites certain
methods of organizing human activity for commercial interactions including
advertising, marketing, and sales, which is an abstract idea.
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Alice Step 1, Revised Step 2A, Prong Two: Is There an Integration?
We next consider whether claim 1 recites additional elements that
integrate the abstract ideas into a practical application. Revised Guidance,
84 Fed. Reg. at 54 (Revised Step 2A, Prong Two).
The Examiner determines that claim 1 does not include any additional
elements that are sufficient to amount to significantly more than the judicial
exception because the claimed mobile device and wireless store transmitter
are recited at high levels of generality to perform generic computer functions
used in computer applications. Final Act. 3–4. The Examiner determines
that the claims also “fail to recite details of how a solution to a problem or
improvement to computer related technology is accomplished.” Ans. 3.
Appellant responds to this determination by contending that
the claims address problems with traditional computer systems
for geographically targeting offers to mobile computing devices
based on sensed geolocation. Such traditional systems suffer
from overly-broad distribution of redeemable offers due to
relatively-simple logic by which such offers are distributed,
generally turning on a single geolocation.

Appeal Br. 7. Appellant also argues that a multi-stage geotargeted offer
“alerts users to offers over larger geographic areas and then incentivizes
users to smaller, targeted geographic areas where the offers are converted
into redeemable offers.” Id. at 7–8 (“Computational acts performed by a
server and mobile device collectively implement these techniques with
specific operations reflected in the claims.”). Appellant further argues that
claim 1 is directed to a specific, computer-implemented technique for multi-
staged geotargeted offers using an alert and a reward geographic location
specified by an encoded identifier in a wireless transmission. Id. at 8–9.
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First, as discussed above, the claimed alert and reward geographical
locations recite abstract ideas in claim 1. Therefore, they cannot provide an
additional element to make claim 1 or those abstract ideas patent-eligible.
See BSG, 899 F.3d at 1290.
Second, it is well-settled that reciting an abstract idea in a physical
environment, without more, is insufficient by itself to make the abstract idea
patent-eligible. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“Here, in contrast, the focus of the claims is not a physical-
realm improvement but an improvement in wholly abstract ideas—the
selection and mathematical analysis of information, followed by reporting or
display of the results.”).
Without more, the mere physical nature of CGI’s claim
elements (e.g., controller, interface, and wireless data
transmitter) is not enough to save the claims from abstractness,
where the claimed advance is directed to the wireless
communication of status information using off-the-shelf
technology for its intended purpose.

Chamberlain Grp. v. Techtronic Indus., 935 F.3d 1341, 1348 (Fed. Cir.
2019) (emphasis added) (citation omitted).
Here, the computing system includes one or more processors that may
“be any suitable processor capable of executing or otherwise performing
instructions,” “execute code,” and “receive instructions and data from a
memory.” Spec. ¶¶ 12, 57, Fig. 4. The mobile computing devices may be a
cell phone, tablet computer, or computing devices with a portable source of
power, location sensor 44, wireless interfaces 46, and user interfaces 48. Id.
¶¶ 42–45. The computer may be any combination of devices or software
that perform the techniques described in the Specification. Id. ¶ 64.
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Additional elements of “interfacing” an offer distribution system and
a consumer mobile device, presenting an alert on the mobile device when the
consumer is detected in a geofence, and detecting when a consumer mobile
device receives the encoded identifier in a wireless transmission from the
wireless transmitter at a merchant’s physical site are recited generically and
perform generic functions that send and receive data.
The merchant’s “wireless transmitter” is a “beacon transmitter 20”
that may be plural, spaced transmitters that encircle a mall. Spec. ¶ 47.
Merely encoding an identifier does not make claim 1 patent-eligible.
RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1326 (Fed. Cir.
2017) (“This method reflects standard encoding and decoding, an abstract
concept long utilized to transmit information.”). Bridge and Post held:
The recited steps of “retrieving a persistent device identifier,”
“determining” and “retrieving” information associated with the
identifier, “analyzing” the information, and “placing directed
media” based on that analysis are nothing more than a
computer-implementation of targeted marketing over the
Internet.

Bridge and Post, 778 F. App’x at 887 (emphasis added); see BSG, 899 F.3d
at 1286 (“claims are not saved from abstraction merely because they recite
components more specific than a generic computer.”); In re TLI Commc’ns
LLC Patent Lit. v. AV Automotive, LLC, 823 F.3d 607, 615 (Fed. Cir. 2016)
(holding that the claims were directed to an abstract idea despite the claims’
recitation of telephone units and servers); Mortg. Grader, Inc. v. First
Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims
reciting an “interface,” “network,” and a “database” are nevertheless
directed to an abstract idea).
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Any innovation resides in the realm of the abstract ideas recited in
claim 1 rather than in a technical improvement to a particular technology
that is integral to the claim. The targeted marketing works as expected. It
sends targeted alerts to consumers on their mobile phones if the phones are
close to the merchant’s physical store (within a geofence) and incentivizes
the consumer to travel to the store to receive a reward/enter into a game of
chance. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir.
2017) (“Adding one abstract idea (math) to another abstract idea (encoding
and decoding) does not render the claim non-abstract.”). Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“a claim for
a new abstract idea is still an abstract idea.”); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (claims that improved an
abstract idea, but not a computer’s performance, were held unpatentable).
Claim 1 recites a solution to a business issue, namely, how to market
more effectively by targeting advertising to users who are located near the
store. Spec. ¶¶ 14, 15. Even if we assume that the techniques claimed are
“[g]roundbreaking, innovative, or even brilliant,” that is not enough for
eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352 (Fed. Cir. 2014). Nor is it enough that a claimed abstract technique is
novel and nonobvious over prior art. SAP Am., Inc., 898 F.3d at 1162.
For the foregoing reasons, we determine that claims 1 and 4 do not
recite any additional elements that integrate the abstract ideas recited therein
into a practical application.

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Alice Step 2, Revised Step 2B –– Inventive Concept
We next consider whether claims 1 or 4 recite elements, individually,
or as an ordered combination, that provide an inventive concept. Alice, 573
U.S. at 217–18. The second step of the Alice test is satisfied when the claim
limitations involve more than performance of well-understood, routine, and
conventional activities previously known to the industry. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (internal quotations and citation
omitted); see also Revised Guidance, 84 Fed. Reg. at 56 (explaining that the
second step of the Alice analysis considers whether a claim adds a specific
limitation beyond a judicial exception that is not “well-understood, routine,
conventional” activity in the field).
We agree with the Examiner that claims 1 and 4 recite only limitations
drawn to what the courts have recognized as well-understood, routine, and
conventional computer functions, namely, sending an offer and instructions,
detecting information, receiving responses, determining the received
information, and storing data. Ans. 3–4. Individually, they recite abstract
ideas discussed above and applied on generic components.
USPTO Memorandum of April 19, 2018, ‘‘Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (Berkheimer memo), indicates that the Specification may
describe additional elements in a manner that indicates the elements are
sufficiently well-known that the specification need not describe their
particulars to satisfy 35 U.S.C. § 112(a). Berkheimer memo at 3–4. This is
just such a case as discussed above. See Spec. ¶¶ 12, 39–64, Figs. 1–4.
Appeal 2019-004416
Application 14/661,403

18
Nor is there anything unconventional about the “ordered combination”
that is not merely the sum of the parts. See In re TLI Commc’ns Patent Lit.,
823 F.3d at 615 (holding “recited physical components [that] behave exactly
as expected according to their ordinary use,” through “steps that generically
spell out what it means to ‘apply it on a telephone network’ also cannot
confer patent eligibility”); Ultramercial, Inc., 772 F.3d at 715 (holding that a
sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Two-Way Media Ltd.
v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding an ordered sequence of data processing, routing, controlling, and
monitoring with conventional technology lacked an inventive concept where
it did not specify rules of a communications protocol or signal parameters).
Accordingly, we determine that claims 1 and 4 do not recite elements,
individually or as an ordered combination, that provide an inventive concept
sufficient to transform their abstract ideas into patent eligible subject matter.
Thus, we sustain the rejection of claims 1–21 as directed to patent-
ineligible subject matter under a judicial exception to 35 U.S.C. § 101.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Judicial Exception 1–21
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