Taylor, Mary Theresa. et al.

Patent Trials and Appeals Board

Apr 6, 2020

13115933 - (D) (P.T.A.B. Apr. 6, 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.
13/115,933 05/25/2011 Mary Theresa Taylor P14674USCIP/090426-30464 4436
113349 7590 04/06/2020
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/06/2020 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY THERESA TAYLOR, KAREN L. CERVENKA,
SHILPAK MAHADKAR, and BARBARA ELIZABETH PATTERSON
Appeal 2018-008236
Application 13/115,933
Technology Center 3600
Before JEAN R. HOMERE, MIRIAM L. QUINN, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, 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 1–6, 8, 10–20, and 37–41, which are all
of the pending claims.2 See Final Act. 1. 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 VISA
International Service Association. Appeal Br. 2.
2 Claims 7, 9, and 21–36 have been canceled. Appeal Br. 29, 34 (Claims
App.).
Appeal 2018-008236
Application 13/115,933

2
CLAIMED SUBJECT MATTER
According to Appellant, the application describes and claims
“electronic financial transactions,” and more particularly, loyalty promotion
apparatuses, methods, and systems. Spec. ¶ 2. By way of background,
Appellant’s Specification describes a common practice in sales and
marketing in which consumers “collect coupons to buy products,” such as by
cutting paper coupons from magazines. Id. ¶ 3. Appellant’s Specification
also notes that one manner of redeeming coupons requires a consumer to
purchase the product and then mail the coupon and proof of purchase to the
coupon provider, after which the consumer will receive a rebate. Id.
Appellant’s Specification purports to describe a method and apparatus
comprising a platform that “bridges merchants and consumers in offers and
promotion matching.” Id. ¶ 24. In one implementation, “merchants may
offer deals to consumers in [a] social/mobile setting” via the platform, and
consumers may redeem offers and share offers and their purchasing
experience with friends” via the platform. Id. The platform centers on an
“electronic wallet” established for each consumer, which the consumer may
link to a credit card and/or bank account as well as to a membership account
with a merchant (such as Sam’s Club), and also to the consumer’s social
media account (such as Facebook). Id. ¶ 26. Appellant’s Specification touts
advantages of using this platform, such as having rewards automatically
credited to the consumer’s account and avoiding the need to carry paper
coupons. Id. at Figs. 5C, 7A. Appellant’s Specification also describes a
message received by a pay server while processing the consumer payment,
which message is in the form of a “hypertext transfer protocol (HTTP) GET
message,” including an offer tag identifying a promotional offer. Id. ¶ 61.
Appeal 2018-008236
Application 13/115,933

3
The pay server parses the HTTP GET message to extract the offer tag, and
then uses the tag to query an offer database to determine whether the offer
applies to the consumer and to the proposed transaction; if it does, the pay
server will return credits to the consumer’s electronic wallet. Id. ¶¶ 49, 65–
69, claim 1.
Claims 1, 19, and 20 are independent. Claim 1, reproduced below
with the disputed limitations italicized, illustrates the claimed subject matter:
1. A promotion redemption processor-implemented
method, comprising:
receiving, by a pay network server, consumer identifying
information for a consumer during a checkout process in a
merchant store;
receiving, by the pay network server, merchant
information and a proposed transaction from a merchant
terminal during the checkout process;
based on the consumer identifying information and the
merchant information, determining, by the pay network server,
that the consumer has a repeated purchasing record with the
merchant;
initiating, by the pay network server, processing of a
consumer payment for the proposed transaction by sending a
payment approval to an electronic wallet account associated
with the consumer;
while processing the consumer payment, receiving, by
the pay network server, a hypertext transfer protocol (HTTP)
GET message including an offer redemption request including
an offer tag identifying a promotional offer, wherein the
promotional offer includes a discount for consumers with a
repeated purchasing record;
parsing, by the pay network server, the HTTP GET
message to extract the offer tag;
upon obtaining the HTTP GET message and extracting
the offer tag, querying, by the pay network server, an offer
Appeal 2018-008236
Application 13/115,933

4
database to determine that the identified merchant has issued
the promotional offer associated with the offer tag;
upon determining that the identified merchant has issued
the promotional offer associated with the offer tag and that the
consumer has a repeated purchasing record with the merchant,
determining, by the pay network server, that the promotional
offer applies to the consumer and to the proposed transaction;
in response to determining that the promotional offer
applies to the consumer and to the proposed transaction,
applying, by the pay network server, the promotional offer to
the proposed transaction by returning credits to the electronic
wallet account based on terms of the promotional offer as a
result of executing the HTTP GET message by the one or more
data processors;
sending, by the pay network server, transaction details to
the consumer; and
sending, by the one or more data processors, a message
to a social network so as to generate an update indicating the
transaction made in the merchant store on the consumer's social
media page, wherein the message to the social media network
includes a physical address of a store associated with the
merchant where the transaction took place;
wherein the consumer receives the discount included in
the promotional offer without additional input from the
consumer.
REFERENCES
The prior art relied upon by the Examiner is:
Name3 Reference Date
Teague
Zuckerberg
Morgenstern
Owens
Morris
US 2006/0212355 A1
US 2008/0040673 A1
US 2008/0189188 A1
US 2008/0201224 A1
US 2008/0313323 A1
Sept. 21, 2006
Feb. 14, 2008
Aug. 7, 2008
Aug. 21, 2008
Dec. 18, 2008

3 All reference citations herein are to the first-named inventor.
Appeal 2018-008236
Application 13/115,933

5
Giordano
Lodolo
US 2010/0076836 A1
US 2012/0011072 A1
Mar. 25, 2010
Jan. 12, 2012
REJECTIONS4
Claims 1–6, 8, 10–20, and 37–41 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter (abstract idea). Final
Act. 2–5.
Claims 1–4, 6, 10–14, 16–20, and 37–41 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Owens,
Lodolo, Morris, and Morgenstern. Final Act. 6–16.
Claims 5–8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Owens, Lodolo, Morris, Morgenstern,
and Giordano. Final Act. 16–17.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Owens, Lodolo, Morris, Morgenstern,
and Teague. Final Act. 17–18.
OPINION
I. Section 101 Rejection
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
as patent-ineligible because they are directed to a judicial exception without
significantly more. Final Act. 2–5, 19–20; Ans. 3–6. Appellant argues that
the claims are not directed to an abstract idea, are directed to patent-eligible

4 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
U.S.C. § 103 that became effective on March 16, 2013. Because the priority
application for the present application was filed before March 16, 2013, the
Examiner applies the pre-AIA version of the statutory bases for
unpatentability. See Final Act. 2.
Appeal 2018-008236
Application 13/115,933

6
subject matter, and the Examiner’s rejection should be reversed. Appeal Br.
14–19; Reply Br. 2–6. For the reasons explained below, we are persuaded
of Examiner error in the § 101 rejection, and we, therefore, do not sustain
that rejection.
A. Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The U.S. Supreme Court, however, has interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citation omitted).
The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016). In that regard, we determine whether
the claims “focus on a specific means or method that improves the relevant
Appeal 2018-008236
Application 13/115,933

7
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, we consider them
patent eligible under § 101 and our inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second part is to “search for an “‘inventive
concept’”—i.e., 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.’” Id. at 217–18 (alteration in original)
(quoting Mayo, 566 U.S. at 72–73). The prohibition against patenting an
abstract idea “‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(citation omitted).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance”). Under the 2019 Guidance, the Office first looks
to whether the claim recites: (1) any judicial exceptions, including certain
Appeal 2018-008236
Application 13/115,933

8
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 2019 Guidance at 52, 54–55; see
also MPEP § 2106.05(a)–(c), (e)–(h).5
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim: (a) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (b) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Guidance at 56. We
follow this guidance here.6
In reviewing the Examiner’s rejection under § 101, we group all
claims together and select claim 1 as representative of the group, as the
Examiner and Appellant have done. See Final Act. 2–5, 19–20; Appeal Br.
14–19; 37 C.F.R. § 31.47(c)(1)(iv). Accordingly, all claims stand or fall

5 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
6 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance at 51; see also October
2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“October 2019
Update”) (“Note, the feedback received was primarily directed to
examination procedures and, accordingly, this update focuses on clarifying
practice for patent examiners. However, all USPTO personnel are expected
to follow the guidance.”), available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf.
Appeal 2018-008236
Application 13/115,933

9
with claim 1. We address the claims generally where possible, but when it is
helpful to refer to explicit claim language, we refer to claim 1.
B. Application of Legal Principles
1. Step 2A of 2019 Guidance
Prong 1: Claims Recite an Abstract Idea
In applying the framework set out in Alice/Mayo, and as the first part
of that analysis, the Examiner determines the claims recite “processing a
redemption request as part of a payment authorization request during the
checkout process” (Final Act. 2), including “providing in-store promotional
offers to social users who use an electronic wallet account,” in which the
process “targets a social affiliation of a user, targets and promotes the wallet
account, . . . targets a purchase intent by the user and . . . also targets and
promotes the particular store . . . .” Id. at 3. The Examiner finds the claims
“mirror concepts or activities that were found by a controlling court to be
representative of abstract ideas of tailored or targeted marketing/
advertising.” Id. (citing Intellectual Ventures I LLC v. Capital One Bank,
792 F.3d 1363, 1370 (Fed. Cir. 2015) (concluding that an advertisement
“tailoring the information presented to the user” based on information about
the user is a “‘fundamental . . . practice long prevalent in our system’”)).
The Examiner also finds the claims recite steps of “receiving or sending an
authorization request, and a redemption request message,” and steps of
identifying certain user and merchant data, communicating that data between
parties in the transaction, “using rules for correlating/cross-referencing
(comparing) user account information and merchant account information,”
and displaying data. Id. at 3. The Examiner finds these steps “are
considered to be abstract ideas” because they are “similar to ‘collecting
Appeal 2018-008236
Application 13/115,933

10
information, analyzing it, and displaying certain results in the collection and
analysis” (citing Electric Power Group7), and also are similar to steps
“found to be a mental abstract idea” (citing Cybersource8). Id. at 3–4.
Appellant argues the Examiner’s conclusions are in error, and asserts
the claims “are not directed to abstract ideas because they recite specific,
meaningful limitations that solve a technical problem related to managing
and executing promotion redemption.” Appeal Br. 14.
As stated herein, we agree generally with the Examiner’s rejection
under § 101. We clarify and expand the Examiner’s reasoning below,
applying the 2019 Guidance.
The 2019 Guidance uses enumerated groupings of abstract ideas that
are rooted in U.S. Supreme Court precedent, as well as Federal Circuit
decisions interpreting that precedent. See 2019 Guidance at 51–52. By
grouping the abstract ideas, the 2019 Guidance synthesizes the holdings of
various court decisions to facilitate examination. The 2019 Guidance
describes one category of abstract ideas as including “[c]ertain methods of
organizing human activity” such as “fundamental economic principles or
practices.” Id. at 52. The 2019 Guidance describes another category of
abstract ideas as including “[m]ental processes”; that is, “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” Id. (footnotes omitted).
Claim 1 recites at least the following limitations: “receiving . . .
consumer identifying information for a consumer during a checkout process

7 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
8 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
Appeal 2018-008236
Application 13/115,933

11
in a merchant store”; “receiving . . . merchant information and a proposed
transaction . . . during the checkout process”; “determining . . . that the
consumer has a repeated purchasing record with the merchant”; “receiving
. . . a promotional offer, wherein the promotional offer includes a discount
for consumers with a repeated purchasing record”; “determining . . . that the
promotional offer applies to the consumer and to the proposed transaction”;
“applying . . . the promotional offer to the proposed transaction”; “sending
. . . transaction details to the consumer”; and “wherein the consumer receives
the discount included in the promotional offer without additional input from
the consumer.” Appeal Br. 27–28 (Claims App.). These limitations, under
their broadest reasonable interpretation, recite fundamental economic
practices akin to commercial interactions including sales activities or
behaviors because the limitations recite operations that would ordinarily take
place in a commercial environment, e.g., applying a promotional offer to a
qualifying repeat customer when completing a sales transaction between the
merchant and the customer. See, e.g., Inventor Holdings, LLC v. Bed Bath
& Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding that
concept of “local processing of payments for remotely purchased goods” is a
“fundamental economic practice, which Alice made clear is, without more,
outside the patent system”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (concluding that claimed concept of “offer-
based price optimization” is an abstract idea “similar to other ‘fundamental
economic concepts’ found to be abstract ideas by the Supreme Court and
this court”); see also 2019 Guidance at 52.
Claim 1 also recites “querying . . . an offer database to determine that
the identified merchant has issued the promotional offer associated with the
Appeal 2018-008236
Application 13/115,933

12
offer tag.” This limitation amounts to analyzing collected information by
searching for relevance (comparing a promotional offer to an offer database
to determine whether there is a match). We determine that such a step is a
mental process, even though it involves use of a physical database, because
it is the type of function that a person could practically perform mentally.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
(Fed. Cir. 2011) (determining that a claim focused on verifying credit card
transaction information is directed to “unpatentable mental processes”
because the claim’s steps “can be performed in the human mind, or by a
human using a pen and paper”; noting “even if some physical steps are
required to obtain information from the database . . . such data-gathering
steps cannot alone confer patentability”); October 2019 Update at 8 (giving
as an example of a claim reciting a “mental process” a “claim to collecting
and comparing known information . . . , which are steps that can be
practically performed in the human mind”).
Thus, under Prong 1 of Step 2A in accordance with the 2019
Guidance, we agree with the Examiner’s determination that the claims recite
judicial exceptions to patentability. In particular, we determine that the
claims recite certain methods of organizing human activity (specifically,
fundamental economic practices), as well as a mental process, and we,
therefore, agree with the Examiner’s conclusion that the claims recite an
abstract idea.
Appeal 2018-008236
Application 13/115,933

13
Prong 2: Claims Integrate the Abstract
Idea Into a Practical Application9
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements
beyond the abstract idea, and, if so, we evaluate the additional elements to
determine whether they integrate the abstract idea into a practical
application. 2019 Guidance at 54. The 2019 Guidance at page 55 provides
exemplary considerations, including whether an additional element:
 “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
 “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim”;
 “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or
 “applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claims “merely use[] a computer as a tool to
perform an abstract idea” or the additional element adds “insignificant extra-

9 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo analysis (Step 2B of the
2019 Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under the first part of the Alice/Mayo analysis
(Step 2A of the 2019 Guidance). See 2019 Guidance at 54–55.
Appeal 2018-008236
Application 13/115,933

14
solution activity” to the abstract idea. 2019 Guidance at 55 (emphasis
added); see also October 2019 Update at 11–15.
The Examiner acknowledges the claims recite additional elements
beyond the abstract idea. In particular, claim 1 also recites steps of:
“receiving and transmitting information (including a redemption request
message); accessing a database of values; using a computer to track data, to
perform calculations and comparisons/correlations (approving transaction
data, selecting a promotion using rules); formatting information,
manipulating that information, making determinations as the result of some
of these steps; and displaying the results.” Final Act. 4. The claims also
recite certain hardware that performs the recited steps, namely a “pay
network server” and “a merchant terminal.” The Examiner finds “the claims
do not include an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment,” because “[t]he computer system and
the processor are recited at a high level of generality and its broadest
reasonable interpretation comprises a generic computer performing generic
functions.” Id.
We agree. We conclude that these elements, considered individually
or in combination, do not integrate the recited judicial exception into a
practical application. The additional elements of a “pay network server,”
“merchant terminal,” and “offer database” are recited without sufficient
detail or specific implementation structure so as to limit the abstract idea to a
specific technical solution. Indeed, Appellant’s Specification describes a
“server” as used throughout the application as referring “generally to
Appeal 2018-008236
Application 13/115,933

15
computer, other device, program, or combination thereof that processes and
responds to the requests of remote users across a communications network.”
Spec. ¶ 284. The Specification also describes the merchant terminal as a
common merchant “point of sale (POS) terminal.” Id. ¶ 27. The database
components are described broadly as “a conventional . . . database” or as
implemented “using various standard data-structures.” Id. ¶¶ 313, 314; see
also id. ¶ 263 (describing the database as a “relational database responsive to
Structured Query Language (‘SQL’) commands”).
The Examiner also finds the claims recite as additional elements “one
or more processors operating over a network such as the Internet, which
executes and processes an HTTP GET message.” Final Act. 4. In particular,
claim 1 recites “receiving, by the pay network server, a hypertext transfer
protocol (HTTP) GET message including an offer redemption request
including an offer tag identifying a promotional offer” and “parsing, by the
pay network server, the HTTP GET message to extract the offer tag.”
Appeal Br. 27 (Claims App.). The Examiner finds that “[a]n executable
hyperlink GET message command to communicate information in a message
is not a new message technology, is not a new programming command and
is certainly not an unconventional feature. To the contrary, it is a ubiquitous
programming command for transmitting a message.” Final Act. 4. The
Examiner supports this finding, in the context of the § 103 rejection, by
citing to the Morris reference, which discloses an application server hosting
applications accessible over a network via hypertext transfer protocol
(HTTP), in which a transaction client “can send an HTTP request including
a GET command and a URL” via the network to the application server.
Final Act. 9 (citing Morris ¶¶ 39, 40, Fig. 3); see also Morris ¶ 30. In
Appeal 2018-008236
Application 13/115,933

16
traversing the § 103 rejection, Appellant does not contest that finding or
persuasively argue any improvement in the underlying technology by
sending information in an executable HTTP GET message or extracting
information from that message to query a database.
Appellant argues generally that “the claims override the routine and
conventional sequence of events ordinarily performed by a computer and
specifically set forth interactions of the machine itself.” Reply Br. 4. In
particular, according to Appellant, the claims are “necessarily rooted in
computer technology” because “[t]he claims specifically cover interactions
between machines, such as different servers and database. These are
activities only performable by computers and not performable by humans.”
Id. Appellant points to the pay network server receiving the HTTP GET
message, parsing it to extract the offer tag, and then using the tag to query a
database, but does not assert any improvement in that technology; rather,
Appellant argues that “[t]he contents of the offer tag, then, allow[] the pay
network to determine whether to apply a discount to a consumer
transaction.” Id. (emphasis added). But the concept of sending the offer tag
for use in identifying and applying a promotional offer to the transaction is
itself part of the abstract idea, as noted above.
In essence, Appellant’s argument is premised on computer automation
of the recited abstract idea, without any recited improvement in the
underlying technology. Appellant is reminded that in most cases, “relying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (citing Alice, 573 U.S. at 224
(holding that “use of a computer to create electronic records, track multiple
Appeal 2018-008236
Application 13/115,933

17
transactions, and issue simultaneous instructions” is not an inventive
concept)); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363,
1370 (“[M]erely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea.”).
The recitations of sending an “[HTTP] GET message including an
offer tag” and “parsing” that message “to extract the offer tag” do not
integrate the abstract idea into a practical application, but instead merely
indicate the computer environment of transmitting requests for information
over the Internet. Appellant’s Specification explains that an “information
server” in the context of the claimed invention as one that “may be a
conventional Internet information server” that performs standard functions
of, inter alia, “contain[ing], communicat[ing], generat[ing], obtain[ing],
and/or provid[ing] program component, system, user, and/or data
communications, requests, and/or responses.” Spec. ¶ 304. In particular, the
Specification describes an information server as “support[ing] secure
communications protocols such as, but not limited to, . . . HyperText
Transfer Protocol . . . [and] open XML-based Extensible Messaging and
Presence Protocol (XMPP) . . . .” Id. ¶ 302. In the context of Appellant’s
Specification, it is apparent these protocols are well-known. Thus,
Appellant’s Specification supports finding that the claimed invention uses
standard computer technology to communicate over the Internet.
Thus, nothing in Appellant’s claims or Specification indicates any
components that represent a technological improvement. Rather, at best, the
recitations of sending information (an offer tag) from a merchant terminal to
a pay network server via an HTTP GET message, for the purpose of using
Appeal 2018-008236
Application 13/115,933

18
the information to search for a match in a database, limit the invention to a
technological environment (sending requests over the Internet for database
searches by remote servers) for which to apply the underlying abstract
concept. But, as our reviewing court has recognized, “such limitations to a
technological environment do not make an abstract concept any less
abstract.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1366 (Fed. Cir. 2015). The claims do not sufficiently recite how
sending a request for information from a remote server in the form of an
HTTP GET message with an offer tag and using the offer tag to search an
offer database for a match leads to an improvement in the underlying
technology. Rather, such limitations recite routine computer functions, such
as sending and receiving information to execute the database search, e.g.,
receiving a request for information and delivering records.
Appellant nevertheless argues:
[T]he recited claim features represent a technical solution to the
technical problem of tracking consumer purchases for applying
discounts to those purchases based on the consumer’s repeated
purchases with a merchant without additional input from the
consumer. Automatically applying discounts to a consumer
purchase without the need for additional input from the
consumer improves the user experience through technology in
an unconventional way.
Appeal Br. 18.
We disagree. Appellant’s invention is directed to the business
problem of tracking consumer purchases, applying discounts to those
purchases based on the consumer’s repeated purchases with a merchant, and
providing incentives for consumers to make repeated purchases at a
merchant store. See Appeal Br. 17–18. Appellant’s claims are directed to
Appeal 2018-008236
Application 13/115,933

19
the business solution of a merchant terminal that, as part of a checkout
process, communicates information regarding a promotional offer to a
remote server, which searches a database to determine whether the offer
applies to the particular transaction at hand; if it does, the offer is
automatically applied. As noted above, these are processes in which
standard computer technology is used as a tool in its ordinary capacity to
automate a financial transaction that could otherwise be carried out in the
human mind, or with the aid of pen and paper.
Finally, we determine that the step of “sending . . . a message to a
social network so as to generate an update indicating the transaction made in
the merchant store” also does not integrate the abstract idea into a practical
application. Rather, this step—essentially posting a status update to social
media describing the transaction—constitutes, at most, insignificant extra-
solution activity, akin to displaying the results of data processing. See 2019
Guidance at 55.
For the foregoing reasons, we determine the claims do not integrate
the recited judicial exception (fundamental economic practice and mental
process) into a practical application. Accordingly, in the first part of the
Alice/Mayo analysis, we conclude the claims are directed to an abstract idea.
2. Step 2B of 2019 Guidance
Regarding the second part of the Alice/Mayo analysis, the Examiner
finds “[t]he claims do not include limitations that are ‘significantly more’
than the abstract idea because the claims do not include an improvement to
another technology or technical field, an improvement to the functioning of
the computer itself, or meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment.” Final Act.
Appeal 2018-008236
Application 13/115,933

20
4. We agree. In particular, as also noted above, the claim elements beyond
the abstract idea recite only generic computer functions and components that
are well-understood, routine, and conventional—that is, receiving, storing,
manipulating, and displaying data; such generic computer functions and
components do not convey an inventive concept. See Alice, 573 U.S. at 217.
In the Reply Brief, Appellant notes that, on April 19, 2018—after
Appellant filed its Appeal Brief—the Office published a memorandum
regarding “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).” Reply Br. 2. Appellant argues that the Examiner failed to provide
“any of the required forms of evidence set forth in the Berkheimer Memo to
support” the Examiner’s findings that “[a]n executable hyperlink GET
message to communicate information in a message is not a new message
technology, is not a new programming command and is certainly not an
unconventional feature. To the contrary, it is a ubiquitous programming
command for transmitting a message.” Id. at 4–5 (quoting Final Act. 4).
Appellant’s argument is unpersuasive. As our reviewing court has
held, “[w]hether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination.”
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). But
Appellants have not raised a genuine issue of fact as to the conventionality
of the claimed HTTP GET message. In particular, Appellant has not cited
any evidence (e.g., in the Specification), to show that sending information in
a HTTP GET message is in any way inventive or involves any alteration of
computer functionality. Nor has Appellant made any such argument in its
briefing on appeal. Rather, as noted above, despite presenting attorney
Appeal 2018-008236
Application 13/115,933

21
argument that the claimed invention is “necessarily rooted in computer
technology,” Appellant argues only details of the abstract idea as providing
any innovative advances (i.e., the content of the offer tag, which allows
searching a database to identify an offer that may be applied to the
transaction). See Reply Br. 4. However, even if Appellant’s claimed
invention were novel (contrary to our affirmance of the Examiner’s prior-art
rejection, infra), a novel and nonobvious claim directed to an abstract idea
is, nonetheless, patent-ineligible. See BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice 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.”); 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.”) (emphasis omitted); SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an
inventive concept in the non-abstract application realm.”).
Moreover, we disagree with Appellant that the Examiner has not
provided any of the four categories of information required by the
Berkheimer Memo. One of the categories is “[a] citation to a publication
that demonstrates the well-understood, routine, conventional nature of the
additional element(s) . . . .” See Reply Br. 3. Notably, the Examiner did not
have the benefit of the Berkheimer Memo during prosecution. Nevertheless,
as noted above, the Examiner provides evidence in the form of prior art by
citing to the Morris reference (albeit in the context of the § 103 rejection),
which discloses an application server hosting applications accessible over a
network via hypertext transfer protocol (HTTP), in which a transaction client
Appeal 2018-008236
Application 13/115,933

22
“can send an HTTP request including a GET command and a URL” via the
network to the application server. Final Act. 9 (citing Morris ¶¶ 39, 40, Fig.
3); see also Morris ¶ 30. As also noted above, Appellant does not contest
that finding or otherwise argue novelty in sending information in an
executable HTTP GET message or extracting information, i.e., a tag, from
that message to query a database. Thus, we determine Appellant has not
raised a genuine issue of material fact precluding affirmance of the
Examiner’s decision on patent eligibility.
For the reasons discussed above, we determine that the elements of
the claims, when considered individually or as an ordered combination, do
not recite significantly more than the abstract idea beyond generally linking
the abstract idea to a generic technological environment.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101 as patent-ineligible. We also sustain the rejection of claims 2–
6, 8, 10–20, and 37–41 which are not separately argued. See Appeal Br. 14.
II. Section 103(a) Rejections
We have reviewed the Examiner’s rejections of claims 1–6, 8, 10–20,
and 37–41 in light of Appellant’s arguments the Examiner has erred. We
disagree with Appellant’s arguments and we adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief. We concur with the conclusions
reached by the Examiner, and we highlight the following for emphasis.
The Examiner finds Owens teaches most of the limitations of claim 1
(Final Act. 6–8), but finds Owens does not explicitly disclose certain
limitations pertaining to, inter alia, a “consumer electronic wallet vehicle,”
Appeal 2018-008236
Application 13/115,933

23
“parsing . . . the HTTP GET message to extract the offer tag,” and “sending
. . . a message to a social network to generate an update indicating the
transaction on the consumer’s social media page, wherein the message . . .
includes an address of a store where the transaction took place” (id. at 8–10),
for which the Examiner additionally relies on Lodolo, Morris, and
Morgenstern (id. at 8–11).
Appellant argues the Examiner’s findings are in error for several
reasons, none of which we determine to be persuasive. Appellant first
argues Owens does not teach the limitations reciting the consumer having “a
repeated purchasing record with the merchant.” Appeal Br. 21. Appellant
acknowledges the Examiner’s cite to disclosure in Owens of “loyalty”
discounts and rewards, but argues such disclosure does not teach “that a
consumer has a repeated purchasing record,” because “[a] cardholder could
. . . acquire loyalty points at a merchant with a single purchase, or simply by
signing up for the loyalty program.” Id. at 22 (emphasis added).
Appellant’s argument does not persuade us of Examiner error because
it overlooks disclosure in Owens that loyalty discounts may be premised on
repeat purchases. For example, in Figure 8, Owens provides a diagram
depicting a “day in the life” of a cardholder that is a participant in the
rewards program. Owens, ¶ 65, Fig. 8. In particular, Figure 8 describes
examples of a customer’s use of the rewards program throughout the day, in
which the customer visits a variety of participating merchants, including a
“Sandwich Shop.” Id. ¶ 66, Fig. 8. Figure 8 notes that although the
customer receives “7 points” from the purchase at the sandwich shop, the
system acknowledges that the “Card Holder Needs 5 More Purchases To
Receive Discount Coupon” from the sandwich shop. Id. Fig. 8. This
Appeal 2018-008236
Application 13/115,933

24
disclosure further supports the Examiner’s findings that Owens describes
“repeat transactions or previous transactions.” See Ans. 7–8.
Appellant also argues
Owens’s description of automatically determining which
rewards membership a purchase’s points should be credited to
does not disclose or suggest a consumer receiving a discount
included in the promotional offer, as required by the
independent claims. Accumulating rewards points into a
pooled or an individual merchant’s rewards program, as
described in Owens, is different than actually automatically
applying discounts based on information about a consumer’s
repeated purchasing record with that specific merchant.
Appeal Br. 22–23. We disagree. First, to the extent Appellant argues
Owens does not disclose discounts or rewards based on repeat purchases
with a particular merchant, such argument is contrary to Owens, as noted
above. E.g., Owens Fig. 8. Second, with regard to automatically applying
discounts, Owens discloses that the system “deliver[s] real time discounts at
the point of sale” (id. ¶ 18), in which “a cardholder is able to receive instant
coupons or rebates during a transaction based on participation in the pooled
rewards system” (id. ¶ 68). Owens also discloses that “messages may be
sent to the merchant POS [point of sale] terminal so that the rebates,
coupons and discounts may be presented to the cardholder for use in
completing the transaction.” Id. ¶ 73. Owens discloses that, in some
embodiments, the merchant’s POS terminal “may display an automatic
discount (such as a % rate) that will be applied to the current transaction.”
Id. ¶ 61. Thus, we are not persuaded of Examiner error in finding Owens
teaches or suggests “wherein the consumer receives the discount included in
the promotional offer without additional input from the consumer.” See
Final Act. 7; Ans. 8–10.
Appeal 2018-008236
Application 13/115,933

25
Appellant also argues “no combination of the cited references
discloses or suggests generating an update indicating a transaction made in a
merchant store on the consumer’s social media page, where the message
includes a physical address of a store associated with the merchant, as
required by independent claims 1, 19, and 20.” Appeal Br. 24 (emphasis
added). Appellant contends “the combination of Morgenstern and Lodolo
[relied upon by the Examiner] does not disclose or suggest the displaying on
a social media page the address of a merchant store where a transaction took
place, as required by the claims.” Id. (emphasis added). Appellant also
argues “Morgenstern gives no indication why it could or should ever be used
for any purchases except those provided through its social network,” and
“Lodolo provides no suggestion as to why one would share the stored
transaction details on a social network.” Id. at 25.
We are not persuaded of Examiner error. As the Examiner finds, and
we agree, Lodolo discloses “well known electronic wallet technology for
performing purchase transactions,” and also discloses the “transaction object
is populated with transaction details, including the address of the issuing
store.” Ans. 11 (citing Lodolo ¶¶ 21, 31–36, Fig. 5). The Examiner also
finds Morgenstern discloses “[s]ending a message to a social network
indicating the transaction on the consumer’s social media page” and also
discloses “updating” asset display information as “purchases of new assets
by the user take place.” Id. (citing Morgenstern ¶¶ 45, 50, 52, 62, 63). The
Examiner finds Morgenstern thus “teaches a ‘base’ method for tracking
transaction details,” and Lodolo “teaches a ‘comparable’ method for
tracking transaction details, which additionally includes an address of the
issuing store.” Id.
Appeal 2018-008236
Application 13/115,933

26
We disagree that the Examiner has engaged in improper hindsight
reconstruction or has erred in combining the teachings of the cited
references. See Appeal Br. 25. Where, as here, the Examiner has articulated
a reason having rational underpinnings for making a proposed combination
of prior art teachings, that articulated reasoning demonstrates the
combination is not based on hindsight. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). A
reason to combine teachings from the prior art “may be found in explicit or
implicit teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem to be
solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
We determine the Examiner has provided an articulated reason for
combining Morgenstern and Lodolo with Owens that includes a rational
underpinning. In particular, the Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to expand the e-wallet system of
[Owens] in view of [Lodolo]; in view of the feature as taught
by [Morgenstern] of implementing asset purchase transaction
information of a SN [([social network)] user in the context of a
SN, and of displaying the purchased asset item on the user’s
social profile or personal webpage; and where the asset vendor
can be an outside vendor; and further in view of the feature as
taught by [Lodolo] of storing in an e-wallet a transaction object
containing transaction records including an address of the store
where the transaction took place; to include in the combination:
displaying in a social network updated asset information,
including an address of a store where the transaction took place.
Appeal 2018-008236
Application 13/115,933

27
One of ordinary skill in the art at the time of the invention
would have been motivated to expand the system of [Owens] in
this way since the claimed invention is merely a combination of
old elements (processing a redemption request message
contained in an enhanced authorization request message, AND
displaying asset information on a social network, AND asset
vendor outside of the SN, AND asset details including an
address of a store where the transaction took place) and in the
combination each element merely would have performed the
same function as it did separately. Further, one of ordinary skill
in the art at the time of the invention would have been
motivated to expand the system of [Owens] in this way since an
address of a vendor provides information about the vendor and
serves as an advertisement for the vendor, even if the asset was
purchased online.
Final Act. 10–11. The Examiner has thus supported the finding of
obviousness with articulated reasoning that includes a rational underpinning.
Appellant, on the other hand, has not provided persuasive evidence or line of
reasoning explaining why the Examiner’s rationale is erroneous or why a
person of ordinary skill in the art would not have reached the conclusions
reached by the Examiner.
We also note that Appellant’s argument focuses primarily on the
contention that the ordinarily skilled artisan would not have been motivated
to combine the references in a way that includes a store’s “physical address”
in the message to the social media network. See Appeal Br. 24–25. Even
leaving aside the Examiner’s findings that the cited combination does
provide sufficient teaching or suggestion of this limitation (as noted above),
we also agree with the Examiner’s alternative finding that the content of the
message to the social media network, including a store’s “physical address,”
is “nonfunctional descriptive material.” Ans. 12. Such recitation, which
merely characterizes the content of the data transmitted in a message, does
Appeal 2018-008236
Application 13/115,933

28
not lend patentability to an invention that would otherwise have been taught
by the prior art. See Ex parte Mathias, Appeal 2005-1851, 84 U.S.P.Q.2d
1276 (BPAI 2005) (informative); see also In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). Thus, even if the prior art lacked
adequate teaching or suggestion of this limitation, we would not be
persuaded of Examiner error in the rejection.
We have considered all of Appellant’s arguments challenging the
Examiner’s findings underlying the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) over the combination of Owens, Lodolo, Morris,
Morgenstern, and we are not persuaded of Examiner error. We, therefore,
sustain that rejection, along with the rejection of claims 2–6, 8, 10–20, and
37–41, which Appellant does not argue separately. See Appeal Br. 25.
CONCLUSION
The Examiner’s 35 U.S.C. § 101 rejection of claims 1–6, 8, 10–20,
and 37–41 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1–6, 8, 10–
20, and 37–41 are affirmed.

Appeal 2018-008236
Application 13/115,933

29
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 8, 10–
20, 37–41
101 Ineligible subject
matter
1–6, 8, 10–
20, 37–41

1–4, 6, 10–
14, 16–20,
37–41
103(a) Owens, Lodolo,
Morris, Morgenstern
1–4, 6, 10–
14, 16–20,
37–41

5–8 103(a) Owens, Lodolo,
Morris, Morgenstern,
Giordano
5–8
15 103(a) Owens, Lodolo,
Morris, Morgenstern,
Teague
15
OVERALL OUTCOME

1–6, 8, 10–
20, 37–41

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