Stephen Whitney

Patent Trials and Appeals Board

Aug 20, 2019

13633384 - (D) (P.T.A.B. Aug. 20, 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.
13/633,384 10/02/2012 Stephen WHITNEY 0076412-000093 6860
21839 7590 08/20/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte STEPHEN WHITNEY
________________

Appeal 2017-009336
Application 13/633,384
Technology Center 3600
________________

Before JEAN R. HOMERE, JEREMY J. CURCURI, and
JOHN R. KENNY, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–22. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1–22 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 6–9.
Claims 1–22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over James (US 2009/0106115 A1; Apr. 23, 2009). Final Act. 10–
21.
We affirm.

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STATEMENT OF THE CASE
Appellant’s invention relates to “automatic identification of coupons
for use in an ecommerce transaction prior to authorization.” Spec. ¶ 1. Claim
1 and 7 are illustrative and reproduced below:
1. A method for distributing coupons for use in a
financial transaction, comprising:
storing, in a consumer database, a plurality of consumer
data entries, wherein each consumer data entry is associated
with a consumer and includes at least a consumer identifier and
authentication information;
storing, in a coupon database, a plurality of coupons,
wherein each coupon includes at least a coupon identifier, a
consumer identification, a reward, and a merchant and/or
product identifier;
receiving, by a receiving device, a coupon request,
wherein the coupon request includes at least authentication data
and merchant information;
identifying, by a processing device, a consumer data
entry in the consumer database associated with a consumer
based on the associated authentication information and the
received authentication data;
identifying, by the processing device, at least one
redeemable coupon in the coupon database based on a
comparison of the associated merchant and/or product identifier
and the received merchant information and wherein the
consumer identification of each coupon of the at least one
redeemable coupon corresponds to the consumer identifier of
the identified consumer data entry; and
transmitting, to a merchant corresponding to the
merchant information, the at least one redeemable coupon for
presentation to the consumer.
7. A method for receiving and applying coupons for
use in a financial transaction, comprising:
storing, in a database, transaction information for a
financial transaction to be processed, wherein the transaction
information includes at least a transaction amount and at least
one product to be purchased;
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receiving, by a receiving device, at least one redeemable
coupon from a third party, wherein each of the at least one
redeemable coupon includes at least a coupon identifier, a
reward, and at least one of a merchant identifier and a product
identifier;
transmitting, by a transmitting device, each redeemable
coupon of the at least one redeemable coupon to a consumer
where (i) the redeemable coupon includes the merchant
identifier or (ii) the associated product identifier corresponds to
one of the at least one product to be purchased;
receiving, from the consumer, an indication of a coupon
to be applied to the financial transaction;
modifying, in the database, the transaction information
for the financial transaction to be processed based on the reward
associated with the indicated coupon; and
submitting an authorization request for the financial
transaction based on the modified transaction information.

ANALYSIS1
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1–22
The Examiner determines
Claims 1–22 are rejected under 35 U.S.C. 101 because
the claimed invention is directed to non-statutory subject matter
because the claim(s) as a whole, considering all claim elements
both individually and in combination, do not amount to
significantly more than an abstract idea. Viewed as a whole,
these additional claim element(s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself. Therefore, the
claim(s) are rejected under 35 U.S.C. 101 as being directed to

1 We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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non-statutory subject matter. See Alice Corporation Pty. Ltd. v.
CLS Bank International, et al.
Final Act. 6.
The Examiner further determines “[t]aking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional.” Final Act. 6; see also Final Act. 6–9
(mapping elements of claim 1 to abstract idea categories, discussing
remaining elements as generic).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (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 that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; 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.” Id. (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.”).
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-
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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. (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 on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
2018).
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.
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See 84 Fed. Reg. at 56.

Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claims 1 and 7 are method claims, which fall within the “process”
category of 35 U.S.C. § 101. Claims 12 and 18 are system claims, which fall
within the “manufacture” category of 35 U.S.C. § 101. Therefore, claims 1,
7, 12, and 18 fall within the four statutory categories of patentable subject
matter identified by 35 U.S.C. §101.
Although these claims fall within the statutory categories, we must
still determine whether the claim is directed to a judicial exception, namely
an abstract idea. See Alice, 573 U.S. at 217–18. Thus, we must determine
whether the claim recites a judicial exception, and fail to integrate the
exception into a practical application. See 84 Fed. Reg. at 54–55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.

Step 2A, Prong One
Independent claim 1 is a method claim, and includes the following
limitations:
[i] storing, in a consumer database, a plurality of consumer data
entries, wherein each consumer data entry is associated with a
consumer and includes at least a consumer identifier and
authentication information; [ii] storing, in a coupon database, a
plurality of coupons, wherein each coupon includes at least a
coupon identifier, a consumer identification, a reward, and a
merchant and/or product identifier; [iii] receiving, by a
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receiving device, a coupon request, wherein the coupon request
includes at least authentication data and merchant information.
These steps cover storing data and receiving data, and are thus an
“observation,” which is an example of “concepts performed in the human
mind.” Memorandum 84 Fed. Reg. at 52. These recitations are thus the
abstract concept of “[m]ental processes.” Id.
Independent claim 1 further recites
[iv] identifying, by a processing device, a consumer data entry
in the consumer database associated with a consumer based on
the associated authentication information and the received
authentication data; [v] identifying, by the processing device, at
least one redeemable coupon in the coupon database based on a
comparison of the associated merchant and/or product identifier
and the received merchant information and wherein the
consumer identification of each coupon of the at least one
redeemable coupon corresponds to the consumer identifier of
the identified consumer data entry.
These steps cover identifying particular data, and are thus any of
“observation, evaluation, judgment, opinion,” which are examples of
“concepts performed in the human mind.” Memorandum 84 Fed. Reg. at 52.
These recitations are thus also the abstract concept of “[m]ental processes.”
Id.
Independent claim 1 further recites “[vi] transmitting, to a merchant
corresponding to the merchant information, the at least one redeemable
coupon for presentation to the consumer.” This step covers transmitting
particular data, and is thus also an “observation,” which is an example of
“concepts performed in the human mind.” Memorandum 84 Fed. Reg. at 52.
This recitation is thus also the abstract concept of “[m]ental processes.” Id.
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Thus, claim 1 recites a judicial exception. Claim 12 recites similar
limitations to those discussed with respect to claim 1, and therefore also
recites a judicial exception.
Independent claim 7 is a method claim, and includes the following
limitations:
[i] storing, in a database, transaction information for a financial
transaction to be processed, wherein the transaction information
includes at least a transaction amount and at least one product
to be purchased; [ii] receiving, by a receiving device, at least
one redeemable coupon from a third party, wherein each of the
at least one redeemable coupon includes at least a coupon
identifier, a reward, and at least one of a merchant identifier and
a product identifier.
These steps cover storing data and receiving data, and are thus an
“observation,” which is an example of “concepts performed in the human
mind.” Memorandum 84 Fed. Reg. at 52. These recitations are thus the
abstract concept of “[m]ental processes.” Id.
Independent claim 7 further recites “[iii] transmitting, by a
transmitting device, each redeemable coupon of the at least one redeemable
coupon to a consumer where (i) the redeemable coupon includes the
merchant identifier or (ii) the associated product identifier corresponds to
one of the at least one product to be purchased.” This step cover transmitting
particular data, and is thus also an “observation,” which is an example of
“concepts performed in the human mind.” Memorandum 84 Fed. Reg. at 52.
This recitation is thus also the abstract concept of “[m]ental processes.” Id.
Independent claim 7 further recites “[iv] receiving, from the
consumer, an indication of a coupon to be applied to the financial
transaction.” This step covers receiving data, and is thus an “observation,”
which is an example of “concepts performed in the human mind.”
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Memorandum 84 Fed. Reg. at 52. This recitation is thus the abstract concept
of “[m]ental processes.” Id.
Independent claim 7 further recites “[v] modifying, in the database,
the transaction information for the financial transaction to be processed
based on the reward associated with the indicated coupon.” This step
involves modifying transaction information in the database according to the
indicated value of a coupon. Spec. ¶ 10. This step therefore involves
updating a database to reflect the reward value of the coupon being
redeemed in a commercial transaction. Accordingly, the step in question
involves using a database to facilitate redeeming the value of a coupon in a
financial transaction or a commercial interaction (“sales activities or
behaviors”), which is an example of “fundamental economic principles or
practices.” Memorandum 84 Fed. Reg. at 52. This recitation is thus the
abstract concept of “[c]ertain methods of organizing human activity.” Id.
Independent claim 7 further recites “[vi] submitting an authorization
request for the financial transaction based on the modified transaction
information.” This step cover transmitting particular data, and is thus also an
“observation,” which is an example of “concepts performed in the human
mind.” Memorandum 84 Fed. Reg. at 52. This recitation is thus also the
abstract concept of “[m]ental processes.” Id.
Thus, claim 7 recites a judicial exception. Claim 18 recites similar
limitations to those discussed with respect to claim 7, and therefore also
recites a judicial exception.

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Step 2A, Prong Two
Because claims 1, 7, 12, and 18 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
Method claim 1 recites “[i] storing, in a consumer database,” “[ii]
storing, in a coupon database,” “[iii] receiving, by a receiving device,” “[iv]
identifying, by a processing device,” “[v] identifying, by the processing
device,” “[vi] transmitting, [by a transmitting device].” System claim 12
recites similar limitations.
Appellant’s claims 1 and 12 recite computer-related limitations such
as “consumer database,” “coupon database,” “receiving device,” “processing
device,” and “transmitting device.” We do not find the computer-related
limitations are sufficient to integrate the judicial exception into a practical
application. Besides indicating that the databases and devices include a
storage medium and a processor for receiving, storing, processing and
transmitting data about coupons, the Specification does not provide
additional details about the databases or devices that would distinguish them
from any generic processing devices. See Spec. ¶¶ 22–28. Although we do
not dispute that the databases and devices include specific logic for looking
up the respective values of coupons, Appellant does not persuasively explain
why the claimed redemption of a coupon enhances the database processing
or improves the communication technology as a whole. See MPEP §
2106.05(a). Rather, the claims merely adapt the method of organizing human
activity redeeming coupon values to an execution of steps performed by
generic computing devices linked together in a network. See Credit
Acceptance, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have
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made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.”); see also Bancorp Services, L.L.C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
“employed only for its most basic function . . . does not impose meaningful
limits on the scope of those claims.”). Further, Appellant’s identified
improvements are improvements to the abstract idea, not improvements to a
technology or computer functionality. Thus, on the record before us, the
cited claim limitations do not improve the functionality of the databases or
processing devices by performing operations to provide reward value of
coupons being redeemed, nor do they achieve an improved technological
result in conventional industry practice. McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Because the steps of claims 1 and 12, outlined above, do not (1)
provide any technical solution to a technical problem as required by DDR
Holdings;2 (2) provide any particular practical application as required by
BASCOM;3 or (3) entail an unconventional technological solution to a

2 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). The Federal Circuit found DDR’s claims are patent-eligible under 35
U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution ...
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257.
3 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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technological problem as required by Amdocs,4 we agree with the
Examiner’s determination that Appellant’s claims 1 and 12 are directed to an
abstract idea that is not integrated into a practical application.
Accordingly, we determine that claims 1 and 12 are directed to a
judicial exception because they do not recite additional elements that
integrate the recited judicial exception into a practical application.
Method claim 7 recites “[i] storing, in a database,” “[ii] receiving, by
a receiving device,” “[iii] transmitting, by a transmitting device,” “[iv]
receiving, [by the receiving device],” “[v] modifying, in the database,” “[vi]
submitting an authorization request.” System claim 18 recites similar
limitations and further recites “a processing device configured to cause the
receiving device to receive..., modify, in the database..., and submit an
authorization request.”
For the same reasons discussed above with respect to claims 1 and 12,
claims 7 and 18 also recite computer-related limitations, and we do not find
the computer-related limitations are sufficient to integrate the judicial
exception into a practical application.
Accordingly, we determine that claims 7 and 18 are directed to a
judicial exception because they do not recite additional elements that
integrate the recited judicial exception into a practical application.

4 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 7, 12, and 18 are directed to a judicial exception,
we next determine, according to Alice, whether these claims recite an
element, or combination of elements, that is enough to ensure that the claim
is directed to significantly more than a judicial exception.
The various hardware components recited by the claims include one
or more “database[s],” a “receiving device,” a “processing device,” and a
“transmitting device.”
With respect to the claimed hardware components, Appellant’s
Figures 2 and 3 depict databases 108, 112, and 114, receiving units 202, 302,
processing units 204, 304, transmitting units 206, 306 in the processing
server 110 (Figure 2) and in the merchant server 104 (Figure 3). These
hardware components are described in conventional or generalized
functional terms.
For example, Appellant’s Specification discloses “[s]uitable
configurations and database storage types will be apparent to persons having
skill in the relevant art.” Spec. ¶ 31. Appellant’s Specification further
discloses “[t]he receiving unit 202 may be configured to receive enrollment
information for a consumer enrolling in a discount service. The processing
unit 204 may be configured to identify the received information and build a
consumer profile for the corresponding consumer, to be stored in the
consumer database 112.” Spec. ¶ 32. Appellant’s Specification further
discloses “[t]he transmitting unit 206 may be configured to transmit the
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identified coupons to the consumer device 102 or the merchant server 104
for display to the consumer.” Spec. ¶ 36.
The conventional or generalized functional terms by which the
computer components are described reasonably indicate that Appellant’s
Specification discloses conventional databases 108, 112, and 144,
conventional receiving devices 202, 302, conventional processing devices
204, 304, and conventional transmitting devices 206, 306.
In view of Appellant’s Specification, the claimed hardware
components, including one or more “database[s],” a “receiving device,” a
“processing device,” and a “transmitting device” reasonably may be
determined to be generic, purely conventional computer elements. Thus, the
claims do no more than require generic computer elements to perform
generic computer functions, rather than improve computer capabilities.
Accordingly, we determine that claims 1, 7, 12, and 18 are not
directed to significantly more than a patent ineligible concept.

Appellant’s arguments
First, Appellant argues that the Examiner does not identify the alleged
abstract idea to which the claims are directed. See App. Be. 8–9. Appellant
further argues that the Examiner does not accurately summarize the subject
matter to which the claims are directed. See App. Br. 10–12.
Contrary to these argument presented by Appellant, we determine that
the claims are directed to a judicial exception for reasons explained above.
Second, Appellant additionally argues that the claims are not directed
to an abstract idea at all:
Appellant’s claims are, on their face, directed to computer and
computer-network based improvements to a problem arising
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because of the failure of existing computer networks being able
to directly apply coupons to transactions that are identified as
being associated with a specific consumer involved in the
transaction, without requiring the use of coupon codes and
other antiquated mechanisms.
App. Br. 13.
Contrary to these arguments, for reasons explained above, we
determine that the claims recite a judicial exception, and we determine that
the recited “database[s],” “receiving device,” “processing device,” and
“transmitting device” are merely tools for performing the abstract idea.
Thus, we determine the claims are directed to a judicial exception.
Third, Appellant argues “[t]he claims recite steps that are performed
using a specifically configured processor of a specialized computing device,
that, when taken together as an ordered combination, recite an invention that
is not merely a routine or conventional use of computer networks and
processors. App. Br. 16; see also App. Br. 16–17 (arguing that the Examiner
failed to properly analyze the claims under STEP 2B).
Contrary to these arguments, for reasons explained above, we
determine the claimed hardware components, including one or more
“database[s],” a “receiving device,” a “processing device,” and a
“transmitting device” reasonably may be determined to be generic, purely
conventional computer elements.
We, therefore, sustain the rejection of independent claims 1, 7, 12, and
18 under 35 U.S.C. § 101. Claims 2–6, 8–11, 13–17, and 19–22 variously
depend from independent claims 1, 7, 12, and 18 and Appellant has not
presented any additional substantive arguments with respect to these claims.
We, therefore, also sustain the rejection of claims 2–6, 8–11, 13–17, and 19–
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22 under 35 U.S.C. § 101 for the same reasons discussed with respect to
independent claims 1, 7, 12, and 18.

THE OBVIOUSNESS REJECTION OF CLAIMS 1–22 OVER JAMES
Claims 1–6 and 12–17- Contentions
The Examiner finds James teaches all limitations of claim 1. Final
Act. 11–12. In particular, the Examiner finds James teaches “transmitting, to
a merchant corresponding to the merchant information, the at least one
redeemable coupon for presentation to the consumer” as recited in claim 1.
Final Act. 12. (citing James Abstract, ¶¶ 16, 18–21, 24, 26, 48, 51, 52, 58,
61, 92, and 93); see also Ans. 2–3 (citing James ¶ 26).
Appellant presents the following principal argument:
James generally discloses that the redemption of coupons is
performed at the transaction processor and not at the merchant,
as recited in the present claims. See para. [0054] of James,
which defines the transaction processor as “An entity to process
the coupon redemption transactions.” Paragraph [0026]
similarly describes the redemption of the coupon occurring at
the processor, resulting in “transmitting a revised total cost of
the product back to the point-of-sale terminal.” This process is
repeated in paragraphs [0064], [0073], and [0077], each of
which describe the redemption of coupons at the transaction
processor and the transmitting of the new transaction balance
back to the point-of-sale terminal at the merchant. James is
silent as to the transmission of the coupon data to the merchant
point-of-sale terminal, and thus fails to disclose or suggest the
recitations of claims 1-6 and 12-17 of the present application.
App. Br. 19; see also Reply Br. 3–4 (“The first step [in James] is the
creation of a coupon record, which occurs at the transaction processor. The
second step is the sending of a redemption record to a coupon sponsor. The
third step is the making available of a report, which is performed well after
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processing of the coupon itself and may not even include coupon data. The
fourth step discloses promotional communications, again unrelated to
coupon processing.”).

Claims 1–6 and 12–17- Our Review
James discloses
A method of an electronic redemption system in one
embodiment preferably comprises the steps of: 1) setting up a
coupon service for a participating coupon sponsor; 2) creating a
coupon account for a consumer; 3) offering a variety of
coupons to a consumer; 4) electronically adding selected
coupons to the consumer’s account; 5) presenting a product for
purchase at a point-of-sale terminal at a merchant; 6) accessing
the consumer’s account from the point-of-sale terminal; 7)
verifying the product presented at the point-of-sale by the
consumer with the coupon in the consumer’s account; 8)
determining the value of the coupon to be subtracted from the
total cost of the product presented; 9) deducting the coupon
value from the total cost; 10) transmitting a revised total cost of
the product back to the point-of-sale terminal 11) deleting the
coupon from the consumer’s coupon account; 12) creating a
coupon redemption record for the merchant, i.e., retailer
redeeming the coupon; 13) paying the merchant based on the
coupon redemption record; 14) sending the redemption record
to a coupon sponsor for the sponsor’s coupon presented and
approved at the point-of-sale terminal; and 15) deducting the
coupon value from the coupon sponsor’s reserve account.
Additional steps may include: 16) creating a consumer profile
report; 17) making the report available to at least one of the
coupon sponsor and the merchant; 18) facilitating promotional
communications between the coupon sponsor, merchant, and a
targeted consumer; and 19) removing unredeemed coupons
from the consumer’s coupon account automatically upon
coupon expiration and releasing any corresponding cash
reserves back to the coupon sponsor. The system also
preferably has open-loop access so that the card is redeemable
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at any merchant that currently accepts a multitude of coupon
sponsors’ coupons and has stored-value card acceptance
capabilities at a point-of-sale.
James ¶ 26.
We recognize that James, in paragraph 26, explicitly discloses
“transmitting a revised total cost of the product back to the point-of-sale
terminal.” James ¶ 26. However, James elaborates, explaining “[i]n step 320,
the coupon detail and new transaction balance are returned to the POS
terminal.” James ¶ 77 (emphasis added). Thus, we find James teaches
“transmitting, to a merchant corresponding to the merchant information, the
at least one redeemable coupon for presentation to the consumer” as recited
in claim 1 because James returns the coupon detail to the merchant. See
James ¶ 77.
Contrary to Appellant’s argument, James is not silent as to the
transmission of coupon data to the merchant. Further, although James
describes redemption at the transaction processor, this does not preclude a
finding that James teaches the disputed limitation, given the broad claim
language. We are satisfied that James’ disclosure of returning the coupon
detail to the POS teaches transmitting coupon detail to the merchant because
the POS is at the merchant’s location.
We, therefore, sustain the Examiner’s rejection of claim 1, as well as
claims 2–6 and 12–17, which are argued together with claim 1 as a group.

Claims 7–11 and 18–22- Contentions
The Examiner finds James teaches all limitations of claim 7. Final
Act. 14–15. In particular, the Examiner finds James teaches the recited
“transmitting,” “receiving, from the consumer,” “modifying,” and
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submitting” as recited in claim 7. Final Act. 14–15 (citing James Abstract,
¶¶ 16, 18–21, 24, 26, 48, 51, 52, 58, 61, 79, 92, and 93); see also Ans. 2–3
(citing James ¶ 26).
Appellant presents the following principal argument:
[I]n James, the redemption of coupons is performed at the
transaction processor. As described in paragraphs [0026],
[0064], and [0072], among others, the transaction processor
receives transaction information from the point-of-sale
terminal, identifies the coupon using internal data, applies the
coupon, and then transmits the new transaction balance back to
the point-of-sale. James fails to disclose or suggest sending
coupons to a consumer, receiving a coupon selection from the
consumer, or the submission of an authorization request
following modification of the transaction information using the
selected coupon.
App. Br. 21; see also Reply Br. 4.

Claims 7–11 and 18–22- Our Review
Contrary to Appellant’s arguments, given the broad claim language,
we find James teaches the disputed limitations.
For example, James teaches the recited “transmitting” and “receiving,
from the consumer” steps because James discloses “3) offering a variety of
coupons to a consumer; 4) electronically adding selected coupons to the
consumer’s account.” James ¶ 26. For example, James teaches the recited
“modifying” and “submitting” steps because James discloses “9) deducting
the coupon value from the total cost; 10) transmitting a revised total cost of
the product back to the point-of-sale terminal.” James ¶ 26. The ordinarily-
skilled artisan would readily appreciate that the revised total cost transmitted
at the POS is a byproduct of the total cost from which is deducted the value
of the selected coupon previously added in the customer’s account.
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Therefore, by receiving the revised total cost, the merchant would be able to
ascertain that a corresponding coupon is being presented and used for that
particular transaction.
We, therefore, sustain the Examiner’s rejection of claim 7, as well as
claims 8–11 and 18–22, which are argued together with claim 7 as a group.

ORDER
The Examiner’s decision rejecting claims 1–22 is affirmed.
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).

AFFIRMED