VP Holdings, Inc.

Patent Trials and Appeals Board

Jul 28, 2020

2020000456 (P.T.A.B. Jul. 28, 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.
14/515,492 10/15/2014 Loren C. Bendele 114287.00003 2861
27305 7590 07/28/2020
HOWARD & HOWARD ATTORNEYS PLLC
450 WEST FOURTH STREET
ROYAL OAK, MI 48067
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LOREN C. BENDELE, JOSEPH S. ZULLI, and
CHRISTOPHER S. TYLER
_____________

Appeal 2020-000456
Application 14/515,492
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–23. We have jurisdiction over the pending claims 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) (2018). According to Appellant, the real party in interest
is VP Holdings, Inc. See Appeal Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “configuration,
delivery, and/or consumption of commercial incentives for products and/or
services. In certain aspects, promotional content that may be related to a
commercial incentive can be delivered and/or consumed.” Abstract.

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Mankoff US 2003/0028518 Al Feb. 6, 2003
Farmanfarmaian et al. US 2010/0042502 Al Feb. 18, 2010
Dessert et al. US 2012/0072271 Al Mar. 22, 2012
Raisch US 2012/0158479 Al June 21, 2012
Zhou et al. US 2012/0323658 Al Dec. 20, 2012
Abraham US 2013/0046610 Al Feb. 21, 2013

Rejections
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1–23 101 Eligibility

2 We herein refer to the Final Office Action, mailed Dec. 18, 2018 (“Final
Act.”); Appeal Brief, filed July 15, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed Aug. 23, 2019 (“Ans.”); and the Reply Brief, filed Oct. 23,
2019 (“Reply Br.”).

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B 1–4, 6, 7,
17–23
103 Zhou et al. (“Zhou”), Farmanfarmaian
et al. (“Farmanfarmaian”), Dessert et
al. (“Dessert”), Mankoff
C 9–12, 14, 15 103 Zhou, Farmanfarmaian, Mankoff
D 5 103 Zhou, Farmanfarmaian, Dessert,
Mankoff, Raisch
E 13 103 Zhou, Farmanfarmaian, Mankoff,
Raisch
F 8 103 Zhou, Farmanfarmaian, Dessert,
Mankoff, Abraham
G 16 103 Zhou, Farmanfarmaian, Mankoff,
Abraham

Claim Grouping
Based on Appellant’s arguments (Appeal Br. 54–70) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
Rejection A under 35 U.S.C. § 101 of claims 1–23 on the basis of
representative claim 1.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
37 C.F.R. § 41.37(c)(1)(iv).

Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. We have reviewed Appellant’s
arguments in the Briefs regarding the Examiner’s Rejections A–G, and the
Examiner’s response to Appellant’s arguments. Appellant does not proffer
sufficient argument or evidence for us to find error in the Examiner’s
findings. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
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(precedential). For at least the reasons discussed below, we agree with and
adopt the Examiner’s findings and conclusions in the Final Action and
Answer.
Rejection A under 35 U.S.C. § 101 of Claims 1–23
USPTO 35 U.S.C. § 101 Guidance
On January 7, 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101 in the
Federal Register, Vol. 84, No. 4 (“January 2019 Memorandum”). This
January 2019 Memorandum was updated by the October 2019 Revised
Patent Subject Matter Eligibility Guidance (“October 2019 Memorandum”),
which was made available on the USPTO website.3 Under the January 2019
Memorandum, we first look to whether the claim recites:
(1) (see January 2019 Memorandum, Fed. Reg. at 54, Step 2A
— Prong One) 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) (see January 2019 Memorandum, Fed. Reg. at 54–55, Step
2A — Prong Two) additional elements that integrate the

3 The Office issued a further memorandum on October 17, 2019 (the
October 2019 Memorandum) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019
Memorandum, Fed. Reg. at 51.
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judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).4

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
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See January 2019 Memorandum, Fed. Reg. at 56, Step 2B.
Because there is no single definition of an “abstract idea” under Alice
step 1, the January 2019 Memorandum, Fed. Reg., synthesizes, for purposes
of clarity, predictability, and consistency, key concepts identified by the
courts as abstract ideas to explain that the “abstract idea” exception includes
the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and

4 This evaluation is performed by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See January 2019 Memorandum, 84 Fed. Reg. at 53–
54 Section III (A)(2).
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3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, Fed. Reg. at 53,
“[c]laims that do not recite [subject] matter that falls within these
enumerated groupings of abstract ideas should not be treated as reciting
abstract ideas,” except in rare circumstances. Even if the claims recite any
one of these three groupings of abstract ideas, these claims are still not
“directed to” a judicial exception (abstract idea), and thus are patent eligible,
if “the claim as a whole integrates the recited judicial exception into a
practical application of that exception.” See January 2019 Memorandum, 84
Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
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a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See January 2019 Memorandum, 84 Fed. Reg. at 54–55, Prong Two.
January 2019 Memorandum, Step 2A, Prong One
the Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts;
(b) mental steps; and (c) certain methods of organizing human activities.
The Examiner concludes the claims recite an abstract idea, because:
“The abstract idea is ‘an idea itself’ comprising activities such as data
recognition, comparing data and storage.” Final Act. 3. The Examiner notes
that the recited abstract ideas “are found to be similar to the abstract idea of
obtaining and comparing intangible data (CyberSource Corp. v. Retail
Decisions, Inc.) which was found to be ineligible by the courts under 35
USC 101.” Final Act. 3.

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Independent Claim 1
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim elements that we find are generic
computer components:
TABLE ONE

Independent Claim 1 2019 Memorandum
[a] A method, comprising: 5

[b] receiving, at a system
comprising one or more servers
having at least one processor and
at least one memory device,
incentive information from a
plurality of injection devices
comprising at least two of a grocery
blogger, a culinary blogger, a
healthy lifestyle blogger, a fitness
blogger, and a merchant over one
or more networks in
communication with the one or
more servers, the incentive
information comprising
information indicative of financial
incentives associated with
respective products, at least one of
the injection devices having a user
Receiving incentive information is
insignificant extra-solution activity
(i.e., data gathering). See January
2019 Memorandum, 84 Fed. Reg. at
55 n.31; see also MPEP
§ 2106.05(g).

5 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 2019 Memorandum
interface to provide the incentive
information including selectable
options that can permit inputting
the incentive information, the one
or more servers including a
composition unit that organizes the
received incentive information into
categories and a matchup unit that
processes at least a portion of the
incentive information that is
received from at least one of the
group of injection devices and at
least a portion of the benefits
information;

Abstract Idea: organizing the
received incentive information into
categories and processing/matching
the information is a method of
organizing human activity, i.e., a
fundamental economic practice,
including commercial interactions,
and business relations that can be
performed alternatively by a person
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.
[c] coupling, at the system, a
network repository to the one or
more servers the network
repository including a storage
comprising a plurality of records
representative of at least a portion
of the incentive information;
A coupled arrangement of generic
computer components, as shown in
bold. See January 2019
Memorandum, 84 Fed. Reg. at 52
n.14.

[d] determining, at the system, a
benefit record that matches at least
one of the plurality of records;

Abstract Idea: determining a benefit
record that matches at least one of
the plurality of records is a method
of organizing human activity, i.e., a
fundamental economic practice,
including commercial interactions,
and business relations that can be
performed alternatively by a person
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.
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Independent Claim 1 2019 Memorandum
[e] updating, at the system, at least
one of the plurality of injection
devices based at least in part on at
least a portion of the storage; and
Updating at least one of the plurality
of injection devices based at least in
part on at least a portion of the
storage is insignificant extra-solution
activity (i.e., data gathering). See
January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP
§ 2106.05(g).

Abstract Idea: Alternatively, the
updating could performed by a
person as a mental process. See
January 2019 Memorandum, 84 Fed.
Reg. at 52.

[f] exchanging the incentive
information between the network
repository and one or more
consumption devices over the one
or more networks, the one or
more consumption devices
including a user interface to permit
access to the incentive information
from the storage and to present
views of the incentive information,
communicating a query and/or
other signaling to the network
repository and, in response, the
network repository
communicating a view of incentive
information that satisfies the query
and/or signaling.
Exchanging the incentive
information is insignificant extra-
solution activity (i.e., data
gathering). See January 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

Presenting views of the incentive
information and communicating a
view of incentive information that
satisfies the query and/or signaling
are insignificant post-solution
activities (i.e., data display). See
January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP
§ 2106.05(g).

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Abstract Idea

Appellant contends: “Contrary to the Examiner’s contention, the
present claimed invention is not drawn to the same subject matter as the
claims in CyberSource Corp. v. Retail Decisions, Inc., and does not describe
creating financial obligations or resolving wagers or processing concepts
performed mentally in the human mind.” Appeal Br. 64.
Appellant further contends: “None of the steps recited in the claimed
method can be interpreted as creating or exchanging financial obligations,
hedging financial risk, accepting and resolving wagers made between
parties, or practically performed in the human mind.” Appeal Br. 65.
We disagree with Appellant. As identified above in Table One, we
conclude the second portion of step “b” of claim 1 recites an abstract idea.
We conclude organizing the received incentive information into categories
and processing/matching the information is a method of organizing human
activity, i.e., a fundamental economic practice, including commercial
interactions, and business relations that can be performed alternatively by a
person as a mental process. 6 See January 2019 Memorandum, 84 Fed. Reg.
at 52.

6 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011). “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson[, 409 U.S. 63
(1972)].” CyberSource, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016). Moreover,
“[u]sing a computer to accelerate an ineligible mental process does not make
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Similarly, we conclude step “d” of claim 1 also recites an abstract
idea. We conclude determining a benefit record that matches at least one of
the plurality of records is also a method of organizing human activity, i.e., a
fundamental economic practice, including commercial interactions, and
business relations that can be performed alternatively by a person as a
mental process. See January 2019 Memorandum, 84 Fed. Reg. at 52.
We note that merely combining several abstract ideas does not render
the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Because independent claim 1 recites an abstract idea, as identified in
Table One, supra, and because remaining independent claims 9, 17, and 21
each recite similar language of commensurate scope, we conclude all claims
1–23 recite an abstract idea, as identified above, under Step 2A, Prong One.
Therefore, we proceed to Step 2A, Prong Two.

that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”).

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2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application

Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
Additional Limitations
We identify the first portion of step “b” in claim 1 (“receiving . . .
incentive information”) as insignificant extra-solution activity (i.e., data
gathering). See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see
also MPEP § 2106.05(g). See similar extra or post-solution activity recited
in steps “e” and “f” of claim 1, as shown in Table One above.
The Supreme Court guides that the “prohibition against patenting
abstract ideas ‘cannot be circumvented by’ . . . adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We additionally find the “at least one processor” and the “at least one
memory device” and the “one or more networks in communication with the
one or more servers,” are additional limitations that are generic computer
components. Claim 1.
The Examiner finds:
The judicial exception is not integrated into a practical
application because the only additional elements are a system
comprising one or more servers having a processor, one memory
device, a network repository to the one or more servers, and a
computing device, to receive incentive information, organize the
received incentive information into categories, accessing the
incentive information, exchanging the incentive information, and
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conveying the incentive information that satisfies a request.
Ans. 5.
The Examiner further finds:
The additional elements are recited at a high-level of generality
(i.e., as a generic processor performing a generic computer
function of processing data) such that it amounts no more than
mere instructions to apply the exception using a generic
computer component - MPEP 2106.05(f). The additional
elements are merely adding insignificant extra-solution activity
to the judicial exception by providing data in the form of
receiving and organizing incentive information (i.e. data
gathering) - see MPEP 2106.05(g).
Ans. 5.
Appellant urges that “[t]he limitations recited in independent claims 1,
9, 17, and 21 as a whole integrates any alleged mental process into a
practical application.” Appeal Br. 66. However, Appellant merely recites
the claim language in support. Appeal Br. 66–70.
We note the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology,’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017)). Because Appellant’s claim limitations
use generic computer components as a tool to perform generic computer
functions, we conclude these limitations do not integrate the abstract idea
into a practical application. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
223–24 (2014).

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MPEP § 2106.05(a)
In the portion of the Appeal Brief directed to “Eligibility Analysis
Revised Guidance 2A, Prong 1” (beginning on page 60 of the Appeal Brief),
Appellant cites to Amdocs on page 63, but does not substantively analogize
the claims on appeal to the subject claims considered by the court in Amdocs
(Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016) (Amdocs II).
See Appeal Br. 63.
In Amdocs, the Federal Circuit held that claim 1 of the patent at issue
is also like the claims in BASCOM because even though the
system in the ’065 patent relies upon some arguably generic
limitations, when all limitations are considered individually and
as an ordered combination, they provide an inventive concept
through the use of distributed architecture. This is similar to the
design in BASCOM which permitted the invention to have a
filtering tool with the benefits of a filter on a local computer
and the benefits of a filter on an ISP server. The benefits in
BASCOM were possible because of customizable filtering
features at specific locations remote from the user. Similarly,
the benefits of the ’065 patent’s claim 1 are possible because of
the distributed, remote enhancement that produced an
unconventional result—reduced data flows and the possibility
of smaller databases. This arrangement is not so broadly
described to cause preemption concerns. Instead, it is narrowly
circumscribed to the particular system outlined. As in
BASCOM, this is a technical improvement over prior art
technologies and served to improve the performance of the
system itself.
Amdocs, 841 F.3d at 1302 (emphasis added).
Here, the claims on appeal are silent regarding any mention of an
improved database. Therefore, there is no indication that any of Appellant’s
claims 1–23 provides unconventional results produced by a distributed,
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remote enhancement that reduces data flows and allows for the possibility of
smaller databases, as was the case in Amdocs.

DDR Holdings, LLC
We also do not agree with Appellant that this is a case involving
eligible subject matter, as was the case in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See Appeal Br. 63.
In DDR, instead of a computer network operating in its normal,
expected manner by sending a website visitor to a third-party website via a
clicked advertisement, the claimed invention generated and directed the
visitor to a hybrid page that presented: (1) product information from the
third party, and (2) the visual “look and feel” elements from the host
website, thus retaining the visitor at the original website. DDR, 773 F.3d at
1258–59. Given this particular Internet-based solution, the court held that
the claimed invention did not merely use the Internet to perform a business
practice known from the pre-Internet world, but rather was necessarily
rooted in computer technology to overcome a problem specifically arising in
computer networks. Id. at 1257.
That is not the case here. Although Appellant’s claimed invention
results in the last recited step “e” of “present[ing] views of the incentive
information, communicating a query and/or other signaling to the network
repository and, in response, the network repository communicating a view of
incentive information that satisfies the query and/or signaling” (claim 1
(emphasis added)), there is no recitation of solving a problem unique to the
Internet or a website, as was the case in DDR.
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To the extent that Appellant has invented an improved method of
“receiving . . . incentive information” (claim 1), including, e.g., “product
incentives, such as grocery sale information and/or coupon information”
(Spec. ¶ 30), we note an improved abstract idea is still an abstract idea. See
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90
(2012) (holding that a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible).
Therefore, it is our view that Appellant’s claimed invention is not
rooted in computer technology in the sense contemplated by DDR, in which
the claimed invention solved a challenge particular to the Internet.

As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.

In reviewing the Appeal Brief and Reply Brief, we find Appellant
does not advance any specific, substantive arguments explaining how the
claimed generic computer components aid the method, the extent to which
the computer aids the method, or the significance of a computer to the
performance of the method to improve the recited processor(s), memory
device(s), network(s), or server(s). See MPEP § 2106.05(a).
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Accordingly, on this record, we conclude independent claim 1, and
independent claims 9, 17, and 21, which recite similar limitations of
commensurate scope, do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).

MPEP § 2106.05(c), 2106.05(e)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not argue that claim 1 (or any other claim) recites
certain “meaningful” claim limitations, such as those of the types addressed
under MPEP § 2106.05(e), that impose meaningful limits on the judicial
exception.7 Appellant does not present substantive arguments explaining
how the judicial exceptions are applied or used in some meaningful way.

7 See January 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP
§ 2106.05(e): “[A]ppl[ying] or us[ing] the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception.”
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MPEP § 2106.05(f)
Merely including instructions
to implement an abstract idea on a computer, or
Merely using a computer as a tool to perform an abstract idea

We conclude Appellant’s claimed invention merely implements the
abstract idea using generic computer components, e.g., the “at least one
processor and at least one memory device” and the “one or more networks in
communication with the one or more servers.” Claim 1. Therefore, we
conclude Appellant’s claims merely use a generic programmed computer as
a tool to perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity to the judicial exception

As discussed above, we conclude that independent claim 1 recites
extra or post-solution activities that courts have determined to be insufficient
to transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); see also January 2019 Memorandum,
84 Fed. Reg. at 55 n.31.
For example, see the extra or post-solution activity recited in steps
“b,” “e,” and “f” of claim 1, as shown in Table One above. See also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”). That is, these
limitations use a generic computer component that performs a generic
computer function as a tool to perform an abstract idea. Thus, these
limitations do not integrate the abstract idea into a practical application. See
Alice, 573 U.S. at 223–24. Instead, these limitations perform insignificant
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extra-solution activities. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1242 (Fed. Cir. 2016) (agreeing with the Board that printing and
downloading generated menus are insignificant post-solution activities). See
also Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d
1329, 1341 (Fed. Cir. 2017) (streaming audio/visual data over a
communications system like the Internet held patent ineligible.).

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting
Diehr, 450 U.S. at 191–92).
We note Appellant advances no arguments regarding a lack of
preemption in the Appeal Brief or the Reply Brief.
Nor do claims 1–23 on appeal present any other issues as set forth in
the 2019 Memorandum regarding a determination of whether the additional
generic computer elements integrate the judicial exception into a practical
application. See January 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–23 do not integrate the judicial exception into a
practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.

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The Inventive Concept — Step 2B
Under the 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field; or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See MPEP § 2106.05(d).

BASCOM
Although Appellant cites to BASCOM on page 62 of the Appeal Brief,
Appellant does not advance any substantive, persuasive argument regarding
any claimed nonconventional and non-generic arrangement of known
computer components, such the “at least one processor” and the “at least one
memory device” and/or the “one or more networks in communication with
the one or more servers.” Claim 1. Cf. BASCOM Glob. Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“[A]n
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.”) (emphasis added).
Similarly, Appellant’s assertion in the Reply Brief that “the Examiner
has failed Step 2B” is not supported by any substantive, persuasive argument
showing a claimed nonconventional and non-generic arrangement of
known computer components. Reply Br. 4.

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Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).8 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
The Examiner, under Step 2B, finds several additional elements
recited in the claims were well-understood, routine, and conventional at the
time of Appellant’s invention. In particular, the Examiner finds the claims
include:
generic computer structure that serves to perform generic
computer functions . . . that are well-understood, routine, and
conventional activities (see Berkheimer memorandum, dated
4/19/2018), previously known to the pertinent industry
Final Act. 6 (emphasis added).
In support, the Examiner cites to paragraphs 99 and 101 of
Appellant’s Specification. See Final Act. 6–7. The Examiner finds at least
these portions of the Specification do not provide any indication that
the additional elements are anything other than well-understood, routine,
and conventional functions when claimed in a merely generic manner. Id.

8 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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Thus, the Examiner specifically cited to paragraphs 99 and 101 of the
Specification as Berkheimer evidence. See Final Act. 6–7. Based upon our
review of the record, we find the Appellant has not persuasively or
substantively addressed the Examiner’s specific findings under Step 2B (the
inventive concept), regarding the generic computer components and
functions as described in paragraphs 99 and 101 of the Specification. See
Appeal Br. 54–70.
The Reply Brief is also silent regarding any mention of Berkheimer.
Nor does the Reply Brief further traverse the Examiner’s specific findings
regarding paragraphs 99 and 101 of the Specification. Arguments not made
are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, on the record before us, Appellant has not shown that
the claims on appeal add a specific limitation beyond the judicial exception
that is not well-understood, routine, and conventional, when the claim
limitations are considered both individually and as an ordered combination.
See MPEP § 2106.05(d).
In light of the foregoing, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–23, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. Therefore,
we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims
1–23.

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Rejection B under § 103 of Claims 1–4, 6, 7, and 17–23
Issues: Under 35 U.S.C. § 103, we focus our analysis on the
following argued limitations regarding Rejection B of representative
independent claim 1.
Did the Examiner err by finding that Zhou, Farmanfarmaian, Dessert,
and Mankoff collectively teach or suggest disputed limitations L1, L2, and
L3:
the [L1] one or more servers including [L2] a composition unit
that organizes the received incentive information into
categories and [L3] a matchup unit that processes at least a
portion of the incentive information that is received from at least
one of the group of injection devices and at least a portion of the
benefits information[,]

within the meaning of representative independent claim 1?9

In support, Appellant argues:
Regarding claim 1, with respect to Zhou, Appellant contends:
In Zhou, the comparison module 216 may include collecting data
through crowdsourcing techniques, but there is no one or more
servers including a composition unit that organizes incentive
information received into categories and a matchup unit that
processes at least a portion of the incentive information that is
received from at least one of a group of injection devices and at
least a portion of benefits information.

Appeal Br. 79 (emphasis added).

9 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
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Regarding claim 1, with respect to Farmanfarmaian, Appellant
similarly contends:
In Farmanfarmaian, the concept and/or performance of the role
of the referral source 26 includes various ideas, including
bloggers, emails, informational web sites, and personal web
pages (such as MYSPACE.TM. pages), but there is no one or
more servers including a composition unit that organizes
received incentive information into categories and a matchup
unit that processes at least a portion of the incentive information
that is received from at least one of a group of injection devices
and at least a portion of benefits information.

Appeal Br. 80–81 (emphasis added).

Regarding claim 1, with respect to Dessert, Appellant similarly
contends:
In Dessert, the user interface module 314 may visually present
the discounts to merchants such that the discounts may be
redeemed, but there is no one or more servers including a
composition unit that organizes incentive information received
into categories and a matchup unit that processes at least a
portion of the incentive information that is received from at least
one of a group of injection devices and at least a portion of
benefits information.

Appeal Br. 82 (emphasis added).

Regarding claim 1, with respect to Mankoff, Appellant similarly
contends:
In Mankoff, the offer may be created by a merchant or other
advertiser and then pre-organize the offer as “apparel,”
“furniture,” “grocery,” “hardware,” [“]merchandise,” or some
other category with an identifier number, but there is no one or
more servers including a composition unit that organizes
incentive information received into categories and a matchup
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unit that processes at least a portion of the incentive information
that is received from at least one of a group of injection devices
and at least a portion of benefits information.

Appeal Br. 83 (emphasis added, underlining omitted).

At the outset, we note the general pattern of argument advanced
throughout the Briefs of Appellant arguing the references separately and not
addressing the Examiner’s specific findings, which are based upon the
collective teachings and suggestions of the cited references. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references.). We find Appellant’s attacks on the
references considered in isolation are not persuasive for at least the reasons
addressed infra.

Claim Construction
As an initial matter of claim construction, we turn to the Specification
for context, and find no explicit definition for the claim term “a composition
unit.” Claim 1 (emphasis added). Instead, we find only descriptions of non-
limiting, exemplary embodiments, e.g., at paragraph 37, describing “a
composition unit 138 that can organize the received incentive information
into categories.” Spec. ¶ 37 (emphasis added).
Similarly, we find no explicit definition for the claim 1 term “a
matchup unit.” Instead, we find only descriptions of non-limiting,
exemplary embodiments, e.g., at paragraph 38, describing “a matchup unit
132 that can process at least a portion of the incentive information (e.g.,
deals) that is received from at least one of the group of injection devices 110
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and at least a portion of the benefits information (e.g., coupons and/or other
discounts).” Spec. ¶ 38 (emphasis added).
Without corresponding structures described in the Specification, the
claim 1 terms “composition unit” and “matchup unit” are essentially
nonce words that are defined only in terms of the recited functions they
perform.10 Given the absence of limiting definitions, we emphasize that,
because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
Turning to the evidence, the Examiner notes that “Zhou [was not
relied upon] to teach the organization of the incentive information into
categories.” Ans. 7. The Examiner relies upon Mankoff as teaching “the
collection of offer information which is organized by a list manager
(composition unit) into categories such as apparel, grocery, hardware, etc.”
Ans. 7 (emphasis added).

10 “Structure disclosed in the specification qualifies as ‘corresponding
structure’ if the intrinsic evidence clearly links or associates that structure to
the function recited in the claim.” Williamson LLC, 792 F.3d at 1352 (citing
B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)).
The Federal Circuit has held “the corresponding structure for a § 112 ¶ 6
claim for a computer-implemented function is the algorithm disclosed in the
specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521
F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417
F.3d 1241, 1249 (Fed. Cir. 2005)) (emphasis added). We leave this claim
construction issue to the Examiner’s consideration in the event of further
prosecution.

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Based upon our review of the cited evidence, we find Zhou ¶ 39
teaches or suggests the “one or more servers” recited in claim 1.
Specifically, Zhou ¶ 39 describes: “In various example embodiments, the
machine operates as a standalone device or may be connected (e.g.,
networked) to other machines. In a networked deployment, the machine
may operate in the capacity of a server or a client machine in a server-client
network environment.” (emphasis added). Zhou ¶ 39 also describes:
“Further, while only a single machine is illustrated, the term ‘machine’ shall
also be taken to include any collection of machines that individually or
jointly execute a set (or multiple sets) of instructions to perform any one or
more of the methodologies discussed herein.”
As noted by the Examiner, Zhou was not relied upon to teach the
organization of the incentive information into categories.11 Ans. 7.
Appellant has not substantively traversed the Examiner’s specific finding
that Mankoff teaches “the collection of offer information which is organized
by a list manager (composition unit) into categories such as apparel,
grocery, hardware, etc.” Ans. 7 (emphasis added). See Final Act. 17, in
which the Examiner relies upon Mankoff at paragraph 13 and Figure 4:
The list manager creates the offer and enables it to be organized
(in some embodiments) and redeemed paperlessly. For
example, the list manager may take a 10% off offer for Retailer
XYZ and then pre-organize the offer as “apparel,” “furniture,”
“grocery,” “hardware,” [“]merchandise,” or some other

11 See Merck, 800 F.2d at 1097 (One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references.).

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category (see FIG. 4).
Mankoff ¶ 13.
Regarding limitation L3 (“matchup unit”), the Examiner finds: “The
[Zhou] reference goes on to teach a merchant information module (match
up unit) that processes the incentive information received from a source
(injection device).” Ans. 7 (emphasis added). Appellant has not
substantively traversed the Examiner’s specific finding that Zhou teaches or
suggests the “matchup unit” recited in independent claim 1. See, e.g.,
paragraph 32 of Zhou that describes the merchant information module:
The merchant information module 214 may be configured
to provide information associated with the merchant,
which may include a name, a location, reputation, transaction
history, and contact information. The comparison module
216 may be configured to compare values between from
various merchants.
Zhou ¶ 32 (emphasis added).
We note paragraph 33 of Zhou (also cited by the Examiner on page 11
of the Final Action) further describes the comparison module 216 associated
with the merchant information module 214: “Instead of having the
merchants provide their products and prices, the comparison module 216
may crawl the web for prices. This means the comparison module 216 may
scan[] retail, wholesaler, or local merchant web pages to retrieve the prices,
instead of relying on the merchants to supply them.” (Emphasis omitted).
To the extent the Examiner also reads the claimed “matchup unit” on
Zhou’s comparison module (see Rejection B of claim 9, Final Act. 33),
Appellant has not advanced any substantive arguments to persuade us the
Examiner has erred.
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Moreover, we note “‘the question under 35 USC 103 is not merely
what the references expressly teach but what they would have suggested to
one of ordinary skill in the art at the time the invention was made.’” Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123.
Motivation to Combine the Cited References
Although Appellant urges (e.g., Appeal Br. 86–88) that the Examiner
has not provided a proper rationale to combine the cited references,
Appellant does not point to any evidence of record that shows combining the
teachings of Zhou, Farmanfarmaian, Dessert, and Mankoff, in the manner
proffered by the Examiner (Final Act. 15–17) would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or would have
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, we are not persuaded the Examiner erred
regarding obviousness Rejection B of representative independent claim 1.
Regarding claims 2–4, 6, 7, and 17–23 that were also rejected under
Rejection B, we find unavailing the consistent pattern of argument presented
throughout the Briefs, in which Appellant merely recites the claim language,
and asserts the claim is not taught or suggested by the cited reference, or
combination of references, without any substantive argument in support. As
such, we find Appellant’s arguments unpersuasive. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
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interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Accordingly, we sustain the Examiner’s Rejection B of representative
claim 1, and Rejection B of grouped claims 2–4, 6, 7, and 17–23, which fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejections C–G of Claims 5, 8, and 9–16
Regarding the remaining claims rejected under § 103 Rejections C–G,
Appellant continues the pattern of merely reciting the claim language, and
alleging the claim is not taught or suggested by the combinations of prior art
references cited by the Examiner. See Appeal Br. 94–107.
Therefore, we find Appellant does not advance persuasive, substantive
arguments which construe, compare, and distinguish the disputed claim
limitations from the collective teachings and suggestions of the cited
references, as found by the Examiner. See 37 C.F.R. § 41.37(c)(1)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).
Accordingly, on this record, we are not persuaded of error regarding
the Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for Rejections C–G of the remaining claims on appeal.

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Conclusions
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that claims 1–23, as rejected under 35 U.S.C. § 101,
are directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1–23, as being obvious
under 35 U.S.C. § 103, over the cited combinations of references.

DECISION SUMMARY

Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
A 1–23 101 Eligibility 1–23
B 1–4, 6, 7,
17–23
103 Zhou,
Farmanfarmaian,
Dessert, Mankoff
1–4, 6, 7,
17–23

C 9–12, 14,
15
103 Zhou,
Farmanfarmaian,
Mankoff
9–12, 14,
15

D 5 103 Zhou,
Farmanfarmaian,
Dessert, Mankoff,
Raisch
5
E 13 103 Zhou,
Farmanfarmaian,
Mankoff, Raisch
13
F 8 103 Zhou,
Farmanfarmaian,
Dessert, Mankoff,
Abraham
8
G 16 103 Zhou,
Farmanfarmaian,
Mankoff, Abraham
16
Overall
Outcome
1–23

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FINALITY AND 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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED