RetailMeNot, Inc.

Patent Trials and Appeals Board

Dec 22, 2020

2020003648 (P.T.A.B. Dec. 22, 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.
14/749,860 06/25/2015 Christopher Kent Copeland 2964P191US2 1860
8791 7590 12/22/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER KENT COPELAND
Appeal 2020-003648
Application 14/749,860
Technology Center 3600
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5–18, 20–24, and 30–34. 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 RetailMeNot, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are related to a method and system for targeted offers.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of inferring a user’s intent when searching for
coupons and other offers, the method comprising:
obtaining a purchase-intent model, the purchase-intent
model being configured to calculate a purchase-intent score
based on a geolocation of a user, a time during which the user
requests offer content, a product category for which the user
requests offer content, or a search history of the user requesting
offer content, wherein the purchase-intent score estimates the
likelihood that a user is shopping with intent to purchase rather
than with intent to browse, wherein:
the purchase-intent model is configured to
calculate the purchase intent score based on a weighted
combination of sub-scores for two or more of the geolocation of
the user, the time during which the user requests offer content,
the product category for which the user requests offer content,
and the search history of the user requesting offer content; and
obtaining the purchase intent model comprises
training the purchase intent model in a batch process performed
in advance of using the purchase intent model by:
testing different weights for the weighted
combination;
determining that the different weights result
in higher conversion rates than a current weighting; and
changing the current weighting in response
to determining that the different weights result in higher
conversion rates than the current weighting;
receiving, via a network, a request for offer content from
a computing device of a user;
calculating, with one or more processors, a purchase-
intent score with the purchase-intent model based on the request
for offer content;
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determining that the purchase-intent score satisfies a
threshold;
selecting offer content based on the determination that
the purchase-intent score satisfies the threshold, wherein the
offer content is selected within 50 milliseconds of receiving the
request for offer content, and wherein the offer content is
selected while concurrently processing other requests for offer
content; and
sending the offer content to the computing device of the
user.
REJECTIONS2
Claims 1, 2, 5–18, 20–24, and 30–34 are rejected under 35 U.S.C.
§ 101 as being patent-ineligible.
Claims 20–24 and 30–34 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.3
OPINION
Patent Eligibility
The Examiner determines that the claims are patent-ineligible under
35 U.S.C. § 101. Final Act. 6–14. Appellant’s contentions focus on claim 1
and briefly address claims 20 and 30. Appeal Br. 11–16. Appellant does not
present separate argument for claims 2, 5–18, 21–24, and 31–34.
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and

2 The Examiner’s rejection under 35 U.S.C. § 112(b) has been withdrawn.
See Ans. 4.
3 Claims 25–29 are listed in the rejection heading, but are not pending. Final
Act. 1.
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useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 1
falls within the literal scope of this provision because it recites a process.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
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(“2019 Eligibility Guidance”).4 The groupings of abstract ideas listed in the
guidance include, for example: “Mathematical concepts,” “Certain methods
of organizing human activity,” and “Mental processes.” 2019 Eligibility
Guidance, 84 Fed. Reg. at 52. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The guidance explains that, when making this determination, we
should consider whether the additional claim elements add “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field” or “simply append[] well-
understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Step 2(A), Prong 1
The Examiner explains that the claims recite a number of abstract
ideas. See Final Act. 7 (noting that the various steps recited in claim 1 can
be considered mathematical concepts, mental processes, and/or certain
methods of organizing human activity).
Appellant responds that the “the claims do not set forth or describe
any of the groups of abstract ideas in the 2019 [Eligibility Guidance].”
Appeal Br. 12. Initially, we note that the 2019 Eligibility Guidance does not
require that every limitation in a claim recites an abstract idea.
To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific
limitation(s) in the claim under examination (individually or in
combination) that the examiner believes recites an abstract idea;

4 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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and (b) determine whether the identified limitation(s) falls
within the subject matter groupings of abstract ideas
enumerated in Section I of the 2019 Revised Patent Subject
Matter Eligibility Guidance.
2019 Eligibility Guidance, 84 Fed. Reg. at 54. Appellant does not dispute
the Examiner’s findings that the claims recite various abstract ideas. Rather,
Appellant focuses only on specific portions of various claim limitations,
which we address below.
Appellant contends that “claim 1 recites ‘offer content is selected
within 50 milliseconds of receiving the request for offer content, and
wherein the offer content is selected while concurrently processing other
requests for offer content’” and “‘training the purchase intent model in a
batch process,’” which “[a] human cannot, as a practical matter, perform . . .
in their mind.” Appeal Br. 12.
Claim 1 recites “selecting offer content based on the determination
that the purchase-intent score satisfies the threshold.” We agree with the
Examiner, and Appellant does not dispute, that this recited step can be
performed in the human mind (i.e., a mental process) and is also properly
considered advertising, marketing or sales activities (i.e., certain methods of
organizing human activity). We address how quickly the offer content is
selected and that it is “concurrently processed” in our discussion of Step 2A,
Prong 2.
As for the recited “training” step, we are not persuaded that this is not
a mental process. As the Examiner notes, “the specification fails to make
any mention of ‘training.’” Ans. 7. Nevertheless, claim 1 further defines the
“training” as “testing different weights for the weighted combination,”
“determining that the different weights result in higher conversion rates than
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a current weighting,” and “changing the current weighting in response to
determining that the different weights result in higher conversion rates than
the current weighting.” These are concepts that can be performed in the
human mind including, for example, by observation and evaluation. As the
Examiner determines, these can also be considered mathematical concepts,
as they are various iterations of calculations. Id.
Ultimately, each step of claim 1 recites an abstract idea. Further, each
step can be considered a mental process. Several steps could additionally be
considered mathematical concepts (calculations) and/or certain methods of
organizing human activity (advertising, marketing or sales activities), as
explained above, for example. Notably, as previously explained, there is
little dispute from Appellant regarding these findings.
Claims 20 and 30 are similar to claim 1, other than reciting a “system”
that carries out the various “operations” rather than a “method.” Appellant’s
only dispute under Prong 1 specifically related to these claims concerns
claim 20’s recitation that “offer content is selected based on output of the
purchase-intent model for more than 10 concurrent sessions with client
computing devices.” This contention by Appellant is not persuasive because
the recited selecting based on data can be performed in the human mind.
Accordingly, we are not apprised of error in the Examiner’s
determination that every step in claim 1, as well as each operation in claims
20 and 30, recites an abstract idea.
Step 2(A), Prong 2
The Examiner determines that the claims do not recite any additional
elements which might integrate the abstract ideas into a practical application.
Final Act. 7–8, 10, 12–13.
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Appellant contends that “claims 1 and 20 implement a specific way of
selecting content that affords a specific technical improvement over other
ways of selecting content with a computer.” Appeal Br. 14. With respect to
claim 1, Appellant contends that a specific technical improvement is “low
latency,” which results from “[t]he purchase-intent score [being] calculated
and offer content [being] selected within 50 milliseconds of receiving a
request for offer content . . . achieved with the careful engineering of
features of the model and by training the model in a batch process in
advance of the model’s use.” Appeal Br. 14–15. Appellant contends that
“[c]laims 20 and 30 similarly satisfy the practical application test” without
identifying any particular claim limitation. Id. at 15–16. Appellant’s
contentions are not persuasive.
Beyond the abstract ideas noted above, the claims add nothing more
than generic computer components that perform generic computer functions
to implement the abstract ideas. For example, performing a calculation
quickly (e.g., in 50 milliseconds) is simply the result of using a computer,
generally. Running a batch process is another generic computer function,
which simply queues calculations for a computer to run when resources
become available.
Accordingly, we are not apprised of error in the Examiner’s
determination that the claims do not include any practical application.
For the reasons set forth above, we agree that the claims are directed
to an abstract idea.
Step 2(B)
Because we agree with the Examiner that claims 1, 20, and 30 are
directed to an abstract idea, we next determine whether the claims provide
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an inventive concept. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
This requires us to evaluate whether the additional claim elements add “a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. The Examiner
determines that the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because they simply perform generic computer functions on generic
computer components. Appeal Br. 8, 10–11, 13. We agree and Appellant
does not dispute the Examiner’s determination.
Accordingly, we are not apprised of error in the Examiner’s
determination that the claims do not add any inventive concept.
Conclusion
For the reasons set forth above, after applying the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 1, 2, 5–18,
20–24, and 30–34 under 35 U.S.C. § 101.5
Written Description
The Examiner rejects claims 20–24 and 30–34 as failing to comply
with the written description requirement because claim 20 recites “offer
content [being] selected based on output of the purchase-intent model for
more than 10 concurrent sessions with client computing devices” and claim

5 Appellant additionally contends that “[t]he 2019 [Eligibility Guidance] . . .
appl[ies] the wrong test for determining whether the claims are directed to
an abstract idea,” which we do not address in this decision.

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30 recites “the [computer] instructions, when executed, are configured to
concurrently process more than 1000 concurrent sessions in which content is
selected.” Final Act. 4–5. The Examiner notes that “the specification fails
to define ‘concurrent sessions,’” but acknowledges that “paragraph 87 states
that process 300 may be executed tens, hundreds, or thousands of times
simultaneously.” Ans. 5. Yet, the Examiner concludes that “this fails to
reasonably convey that the offer is being selected based on the output of the
purchase-intent model for more than 10 concurrent sessions, or that the
instructions are configured to concurrently process more than 1000
concurrent sessions to select content” with no further explanation. Id.
“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) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). There is no requirement that
the Specification includes the exact words of the claim to provide written
description support. Ariad, 598 F.3d at 1352.
The Examiner has the initial burden of presenting evidence or reasons
why persons skilled in the art would not recognize, in the disclosure, a
description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 263 (CCPA 1976). The Examiner must consider the specific facts of
the case and provide supporting reasoning. In re Smythe, 480 F.2d 1376,
1382 (CCPA 1973). The Examiner can meet this burden by analyzing
factors such as the knowledge of one skilled in the art and the level of
predictability in the field (see Bilstad v. Wakalopulos, 386 F.3d 1116, 1124–
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26 (Fed. Cir. 2004)), or by demonstrating that the specification reflects that
the invention is no broader than what is disclosed in the specification, such
as distinguishing over the broader disclosure (see Tronzo v. Biomet, Inc., 156
F.3d 1154, 1159 (Fed. Cir. 1998)).
In the present case, the Examiner’s rejection rests on a conclusion,
and fails to provide sufficient explanation to establish a lack of written
description support.
We do not sustain the Examiner’s decision to reject claims 20–24 and
30–34 as failing to comply with the written description requirement
CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 101 is affirmed. The
Examiner’s rejection under 35 U.S.C. § 112(a) is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–18,
20–24, 30–
34
101 Patent Eligibility 1, 2, 5–18,
20–24, 30–
34

20–24, 30–
34
112(a) Written
Description
20–24, 30–
34
Overall
Outcome
1, 2, 5–18,
20–24, 30–
34

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED