Andrea Christine. Gilman et al.

Patent Trials and Appeals Board

Nov 4, 2019

13455951 - (D) (P.T.A.B. Nov. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/455,951 04/25/2012 Andrea Christine GILMAN 0076412-000067 1022
21839 7590 11/04/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ANDREA CHRISTINE GILMAN,
DIANE SHAIB KRETSCHMANN,
JOSE-LUIS CELORIO MARTINEZ, and SCOTT MOSER1
________________

Appeal 2018-009101
Application 13/455,951
Technology Center 3600
________________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.142. Appellant identifies Mastercard International
Incorporated as the real party-in-interest. App. Br. 2.
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–3 and 21–26 as unpatentable under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 1–3 and 21–26 also stand rejected as unpatentable under
35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 1–3, 22, and 24–26 stand further rejected as unpatentable
under 35 U.S.C. § 103 as being obvious over the combination of Banerjee et
al. (US 2010/0276484 A1, November 4, 2010) (“Banerjee”) and Ocher (US
2012/0191513 A1, July 26, 2012) (“Ocher”).
Claim 21 stands rejected as unpatentable under 35 U.S.C. § 103 as
being obvious over the combination of Banerjee, Ocher, and Postrel (US
2011/0153403 A1, June 23, 2011) (“Postrel”).
Claim 23 stands rejected as unpatentable under 35 U.S.C. § 103 as
being obvious over the combination of Banerjee, Ocher, and Wolfe et al.
(US 2011/0079644 A1, April 7, 2011) (“Wolfe”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to methods and systems for using a
financial transaction card number system of a payment processing network
as part of offer and gift distribution, verification and redemption systems.
Abstr.

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REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method of providing and redeeming offers, the method
comprising:

receiving, by a processing device of a transaction
processing system, from an offer distributer, (1) a financial
transaction card number of a consumer as payment for an
accepted offer, (2) information regarding the accepted offer and
(3) a request for an intelligent transaction card (ITC) number;

initiating processing, by said processing device, of
payment using the received financial transaction card number of
the consumer;

generating, by the processing device, the ITC number,
wherein said ITC number (1) is configured to be used as a
redemption code for a purchase of goods and/or services
contained in said accepted offer and (2) is configured to be
processed as a traditional financial payment card transaction;

storing, in a database device of the transaction processing
system, the generated ITC number in association with the
information regarding the accepted offer;

transmitting, by a communication device of the transaction
processing system, the generated ITC number to the consumer;

receiving, by the processing device, the ITC number from
a merchant indicating redemption of said offer;

determining, by the processing device, based on said
received ITC number the offer distributor of the redeemed offer;

transmitting, by the communication device, an
authorization request to an issuer of the financial transaction card
number of the customer; and

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transmitting, by the communication device, at least a
report regarding the offer.

App. Br. 18–19.

ISSUES AND ANALYSES
We decline to adopt the Examiner’s conclusion that the claims on
appeal are indefinite or prima facie obvious over the combined cited prior
art. However, we adopt the Examiner’s findings, reasoning, and conclusion
that the claims on appeal are directed to nonstatutory subject matter. We
address the arguments raised by Appellant below.

A. Rejection under 35 U.S.C. § 101
Issue
Appellant argues the Examiner erred in finding that the claims are
unpatentable as being directed to claims are directed to an abstract idea and
therefore to nonstatutory subject matter. App. Br. 5.

Analysis
The Examiner finds that the claims are directed to coupon processing
in a manner analogous to that described in idea of loan processing,
Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2017). Final Act. 2.
The Examiner finds that, in Dealertrack, the claim was characterized as
receiving data, selectively forwarding data, and forwarding reply data. Id.;
see Dealertrack, 674 F.3d at 1333. The Examiner finds that Dealertrack
involved an offer for insurance, which corresponds to Appellant’s claimed
offer (scrip, prepaid voucher, and the like), and that processing a coupon or a
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loan using a label to keep track of the loan or coupon) could be done by
hand. Id. at 2–3. Specifically, the Examiner finds that: (1) the processing of
a loan in Dealertrack corresponds to the claimed processing of an offer; and
(2) Dealertrack’s routing and tracking corresponds to the use of the
intelligent transaction card (ITC) number for routing and tracking. Id. The
Examiner therefore concludes that the claims are drawn to an abstract idea.
Id. at 2–3.
The Examiner further finds that any additional elements recited in the
claims other than the abstract idea amount to no more than: (1) a processing
device; (2) a communication device of the transaction processing system; (3)
a database (any processing device, and any communications device). Final
Act. 4. The Examiner concludes that, viewed as a whole, these additional
elements of the claims do not provide meaningful limitations to transform
the abstract idea into a patent eligible application, such that the claims
amount to significantly more than the abstract idea itself. Id. The Examiner
finds that the claim limitations do not improve upon the technical field by
which the abstract idea is applied, nor do they improve upon any other
technical field because using a label for transaction processing or coupon
processing can be done without a computer, and the claims here merely
automate those functions. Id. The Examiner also finds that the limitations
do not improve upon the functioning of the computer itself because the
processing device is unaltered when it uses a tool for coupon processing. Id.
Appellant argues that the present claims are not abstract, but are rather
inextricably tied to technical fields of information technology management,
electronic transaction processing and analytics, and identity protection in
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electronic analytics. App. Br. 6. Appellant also argues that the claims
provide technical solutions to problems tied to these technical fields. Id.
Appellant contends, by way of example, that the claims recite a
particular way of enabling a request for an intelligent transaction card
(“ITC”) number to be received from an offer distributor and generated based
upon financial transaction payment data for a particular consumer and a
particular offer previously accepted by the consumer. App. Br. 6.
According to Appellant, the generated ITC number may be transmitted to,
e.g., the offer distributor (which may transmit the ITC number to a
consumer) and may also be stored in a database of a transaction processing
system. Id. Then, Appellant argues, a later time, e.g., when a consumer
seeks to redeem the previously accepted offer at a merchant, the transaction
processing system may receive, from a merchant device, payment
information for a transaction conducted at the merchant device, the payment
information including the previously generated ITC number. Id. Appellant
contends that the transaction may then be processed and a report regarding
the redeemed offer may be transmitted, e.g., to the offer distributor, etc. Id.
Appellant emphasizes that the claims allow for a new, flexible and
secure manner in which communications may be received, e.g., from an
offer distribution system, and by which an ITC number may be generated
based upon particular data included within the communication received from
the offer distribution system. App. Br. 6. Appellant argues that the
generated ITC number allows for a user identity of a consumer redeeming an
accepted offer to be protected (e.g., which is beneficial where merchants at
which the offer is to be redeemed are not, e.g., a trusted party). Id. at 6–7.
Appellant asserts that a person of ordinary skill in the art, on comprehending
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Appellant’s claims, would recognize that they are novel and that the type of
processing system claimed is a specialized type of system. Id.
Appellant argues further that, even if, arguendo, Appellant’s are
directed to “coupon processing,” the detailed steps and recited features of
Appellant's claims amount to significantly more than the “idea” of coupon
processing. App. Br. 7. Appellant contends, by way of example, that if a
skilled artisan were told to apply “coupon processing” to a computer, it
would necessarily require additional information to be able to make and use
Appellant’s claimed invention. Id. A skilled artisan, Appellant suggests,
would find the detail provided in the step of “receiving, by a processing
device of a transaction processing system, from an offer distributor, (1) a
financial transaction card number of a consumer as payment for an accepted
offer, (2) information regarding the accepted offer and (3) a request for an
intelligent transaction card (ITC) number,” as recited in claim 1, to contain
additional elements other than the “idea” of “coupon processing.” Id.
Furthermore, argues Appellant, a skilled artisan would understand such a
step to be significant and different from previously known methods of
“coupon processing.” Id.
Appellant points to our reviewing court’s decision in Enfish, LLC, v.
Microsoft Corp., 822 F.3d 1327 (2016) (Fed. Cir. 2016), holding that it is
“relevant to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea, even at the
first step of the Alice analysis.” App. Br. 7 (quoting Enfish, 822 F.3d at
1335. Appellant also points to the USPTO’s 2016 Update: Memorandum -
Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp.
and TLI Communications LLC v. A.V. Automotive, LLC) (May 19, 2016)
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(the “2016 Update”) as stating that: “a claim directed to an improvement to
computer-related technology (e.g., computer functionality) is likely not
similar to claims that have been previously identified as abstract by the
courts.” App. Br. 7–8 (quoting 2016 Update).
Appellant argues that, in a manner analogous to Enfish, the claims on
appeal are not directed to an abstract idea, or any method of applying such
an idea using a generic computer as a tool. App. Br. 8. Rather, contends
Appellant, the pending claims offer advantages to pre-existing technical
systems involving coupon processing by providing enhanced security and
protection against fraudulent usage over pre-existing systems. Id. Instead,
Appellant asserts, the claims enhance pre-existing electronic coupon
processing systems and provide for analytics and security not offered by
previous systems. Id. Therefore, Appellant argues the claims are not similar
to “tracking” data in the manner the Examiner suggests was performed in
Dealertrack. Id. at 9.
Finally, Appellant argues that, that even if the claims on appeal are
found to be directed to an abstract idea, the claims recite an inventive
concept amounting to “significantly more” than that abstract idea. App. Br.
9. Appellant asserts that the claims offers concrete technical solutions to
enhance electronic coupon transaction processing, using the complex,
interrelated features of the claims. Id. at 10. Appellant contends, by way of
example, that the claims implement an intelligent transaction number,
processed as a traditional financial payment card, to offer discrete solutions
to situations where a third party offer distributor is involved in a coupon
redemption transaction. Id. According to Appellant, the claimed method
provides for a quick and secure manner in which, e.g., pre-purchased offers
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may be processed and redeemed, with a reduced risk of fraud, and by which
accurate analytics reports may be generated. Id. Appellant therefore argues
that the claims offer technological improvements to the field of coupon
processing and provide for novel and useful features over previously known
coupon-related transaction processing methods. Id.
Appellant points to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) arguing that, in a manner similar to the claims in
DDR, the pending claims do not merely recite the performance of an existing
business practice (e.g., the idea “coupon processing”) along with the
requirement to perform it on a computer or the Internet. App. Br. 10 (citing
DDR, 773 F.3d at 1257. Furthermore, argues Appellant, as in DDR, there is
no “brick and mortar'” equivalent to the technical problem solved by
Appellant’s claims. Id. Rather, Appellant asserts, the claims enhance pre-
existing electronic coupon processing systems by enabling a secure and
convenient processing model, which may reduce the risk of fraudulent
transactions while protecting the individual consumer from being required to
provide his or her personal information to a merchant. Id.
We are not persuaded by Appellant’s arguments. In performing an
analysis of patentability under Section 101, we follow the framework set
forth by the Supreme Court in Mayo Collaborative Servc’s v. Prometheus
Labs., Inc., 566 U.S. 66 (2012). We are also mindful of, and guided by, the
United States Patent and Trademark Office’s 2019 Revised Patent Subject
Matter Eligibility Guidance, 84(4) Fed. Reg. 50–57 (January 7, 2019) (the
“2019 Guidance”).
Appellant’s claim 1 recites: “A method of providing and redeeming
offers, the method comprising.” Following the first step of the Mayo
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analysis, we find that the claims are directed to a process, or method, and
therefore fall into one of the broad statutory categories of patent-eligible
subject matter under 35 U.S.C. § 101.
In the next step of the Mayo analysis, we determine whether the
claims at issue are directed to a nonstatutory, patent-ineligible concept, i.e., a
law of nature, a phenomenon of nature, or an abstract idea. Mayo, 566 U.S.
at 70–71. If the claims are so directed, we next consider the elements of
each claim both individually and “as an ordered combination” to determine
whether additional elements “transform the nature of the claim” into a
patent-eligible application. Id. at 78–79; see also Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Specifically, the
Supreme Court considered this second step as determining whether the
claims recite 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.” Mayo, 566 U.S. at 72–73.
More specifically, in this second step of the Mayo analysis, we look to
whether the claim recites one of the judicially-created exceptions to Section
101, i.e., an abstract idea, a law of nature, or a natural phenomenon. See
2019 Guidance 54 (step 2A, prong 1). If we determine that the claim recites
a judicial exception, we then determine whether the limitations of the claim
reciting the judicial exception are integrated into a practical application. Id.
(Step 2A, Prong 2).
Finally, if we determine that the claim is directed to a judicially-
created exception to Section 101, we evaluate the claim under the next step
of the Mayo analysis, considering the elements of each claim both
individually and “as an ordered combination” to determine whether
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additional elements “transform the nature of the claim” into a patent-eligible
application. Mayo, 566 U.S. at 78–79; 2019 Guidance at 56 (Step 2B).
Claim 1 is directed to “A method of providing and redeeming offers”
and recites the following steps: (1) receiving information concerning a
financial transaction for an accepted offer; (2) processing, by a processing
device, payment for the transaction and; (3) generating an ITC number; (4)
storing in a database device the ITC with the transaction information; (5)
transmitting the generated ITC number to the consumer; (6) receiving the
ITC number from a merchant indicating redemption of the offer; (7)
determining the offer distributor of the redeemed offer; (8) transmitting, by
the communication device, an authorization request; and (9) transmitting a
report.
Put more succinctly, the claims are directed to using a financial
transaction card (e.g., a credit, debit, pre-paid card, virtual, hybrid or other
types of payment cards) number system (limitations 1–4, supra) as an
integral part of an offer distribution, verification and redemption system
(limitations 5–9). See Spec. ¶ 7. The claimed method also involves
reporting and settlement, as well. Id. The claimed method also a includes a
method for pre-purchased deal voucher validation and analytics and provides
an electronic solution for points-of-sale coupon processing that provides real
time authentication of the coupon to mitigate potential coupon misuse at
retail locations. Id. at ¶¶ 9, 11.
We agree with the Examiner that the claims are directed to an abstract
idea and, more specifically, contractual relations constituting “a fundamental
economic practice long prevalent in our system of commerce,” which is an
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intangible entity. Bilski v. Kappos, 561 U.S. 593, 611 (2010); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014).
Basically, claim 1 recites a series of receiving (limitation 1),
processing, and transmitting steps that can be performed on a generic
computer (limitations 2–9). We agree with the Examiner that the limitations
recited in claim 1 are analogous to those at issue in Dealertrack. In
Dealertrack, our reviewing court found that a computer aided method of
loan processing amounted to little more than using the general principal of a
clearinghouse. 674 F.3d at 1333. The court held that merely using a
computer to enact a computer-based method of operating a clearinghouse,
even when limited to automobile loan processing was insufficient to prevent
it from being a directed broadly to an abstract idea. Id. at 1334 (citing
Bilski, 561 U.S. at 612 (holding that claims “limiting an abstract idea to one
field of use or add[ed] token post-solution components” are not patent
eligible). Similarly, Appellant’s claims are directed to a system of coupon
processing: transaction information is received by a central processor, and
then redemption of the transaction is verified at a given vendor. As such, the
claims recite no more than a method of coupon processing mediated by a
computer.
Appellant argues that the claims recite a particular way of enabling a
request for an intelligent transaction card (“ITC”) number to be received
from an offer distributor and generated based upon financial transaction
payment data for a particular consumer and a particular offer previously
accepted by the consumer. See App. Br. 6. The claim recites: “receiving, by
a processing device of a transaction processing system, from an offer
distributer, (1) a financial transaction card number of a consumer as payment
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for an accepted offer, (2) information regarding the accepted offer, (3) a
request for an intelligent transaction card (ITC) number.” The claim
subsequently recites communicating with both the consumer and the vendor
the particulars of the offer. In short, Appellant claims no more, in this
respect, than the receipt by a generic processing device, of information
related to a transaction.
In DDR, the Federal Circuit reviewed a number of cases with facts
similar to those of the appeal before us that were found to be directed to
abstract ideas and therefore patent ineligible:
In buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014), the claims recited no more than using a computer to send
and receive information over a network in order to implement the
abstract idea of creating a “transaction performance guaranty.”
In Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1344–45 (Fed. Cir. 2013), the claims merely
recited “generalized software components arranged to
implement an abstract concept [of generating insurance-policy-
related tasks based on rules to be completed upon the occurrence
of an event] on a computer.” And in Bancorp Servc’s, L.L.C. v.
Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed.
Cir. 2012), the claims recited no more than the use of a computer
“employed only for its most basic function, the performance of
repetitive calculations,” to implement the abstract idea of
managing a stable-value protected life insurance policy. Under
Supreme Court precedent, the above claims were recited too
broadly and generically to be considered sufficiently specific and
meaningful applications of their underlying abstract ideas.
Although many of the claims recited various computer hardware
elements, these claims in substance were directed to nothing
more than the performance of an abstract business practice on the
Internet or using a conventional computer. Such claims are not
patent-eligible.

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773 F.3d at 1256. Similarly, in the appeal presently before us, the claims
recite using a “processing device,” i.e., a generic computer, to receive,
organize, and transmit information to and from customers and merchants.
As such, we find that the claims are directed to: “nothing more than the
performance of an abstract business practice on the Internet or using a
conventional computer” and use “generalized software components arranged
to implement an abstract concept [a series of task-based rules] on a
computer.” Id.
Furthermore, the method steps recited in the claims could be
performed without the necessity of using a “processing device.” A person,
with paper and pencil (and a telephone), could perform the steps of receiving
a transaction request, assigning particularized information associated with
the transaction request, and transmitting the information concerning the
transaction to both customer and vendor. Such an abstract idea, when
coupled to a generic computer performing functions that are within the
routine repertoire of computer functions, are not patent eligible. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011) (citing Parker v. Flook, 437 U.S. 584, 586 (1978); see also
CyberSource, 654 F.3d at 1372–73.
Appellant points to Enfish, arguing that the claimed method offers
advantages to pre-existing technical systems involving coupon processing by
providing enhanced security and protection against fraudulent usage over
pre-existing systems. See App. Br. 7–8. We disagree. Unlike in Enfish
where the court specifically found the improvement to be in the way
computers operation 822 F.3d at 1332, 1336), in Appellant’s claimed
method, the alleged novelty of the invention goes to the methodological
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steps of receiving information, assigning it values, and transmitting it to
customers and vendors. Nothing in the recited limitations speaks to
changing or altering or improving the methods by which computers operate.
Rather, the “processing device” performs steps that are within the normal
ambit of generic computer functions. See Spec. ¶ 197 (“Processor device
1304 may be a special purpose or a general purpose processor device”); Id.
at ¶ 204 (“Embodiments of the present disclosure employ any computer
useable or readable medium”); see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (2014):
The claims’ invocation of computers adds no inventive concept.
The computer functionality is generic—indeed, quite limited: a
computer receives a request for a guarantee and transmits an
offer of guarantee in return. There is no further detail. That a
computer receives and sends the information over a network—
with no further specification—is not even arguably inventive.

We consequently conclude that Appellant’s reliance on Enfish is
consequently misplaced, and that the claims are directed to an abstract idea.
Having determined that the claims are directed to an abstract idea, we
net look to see whether the claims are integrated into a practical application.
2019 Guidance 54 (step 2A, prong 2). The Guidance provides additional
context for this analysis, stating that: “A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Id. at 53.
In the present case, we find that the claims recite no more than the
abstract idea, as implemented on a generic computer using generic software.
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As such, we find that the claims do not impose meaningful limits upon the
abstract idea recited in the claims.
For the same reasons, we find that, considering the elements of each
claim both individually and “as an ordered combination” the claims recite no
additional elements that “transform the nature of the claim” into a patent-
eligible application. Mayo, 566 U.S. at 78–79; 2019 Guidance at 56 (Step
2B).
We therefore conclude that the claims are directed to nonstatutory
subject matter, and we affirm the Examiner’s rejection of the claims.

B. Rejection under 35 U.S.C. § 112, second paragraph
Issue
Appellant argues that the Examiner erred in finding that the claim
term “traditional” is unclear. App. Br. 11.

Analysis
The Examiner finds that the claim term “traditional” is relative, and
open to subjective interpretation, and that no special definition provided in
the application. Final Act. 6.
Appellant argues that, when read in light of Appellant’s Specification,
a person of skill in the art would necessarily understand what is meant by an
ITC “configured to be processed as a traditional financial payment card
transaction,” viz., that the ITC can be processed using already existing credit
card networks. App. Br. 12 (citing, e.g., Spec. ¶¶ 17, 19, 195).
The Examiner responds that two people of ordinary skill in the art
could come to different conclusions about the meaning of “traditional,” and
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that to define “traditional” as “an already existing credit card network” is
circular. Ans. 8.
We are not persuaded by the Examiner’s reasoning. The test for
definiteness under the second paragraph of 35 U.S.C. § 112 is “whether
‘those skilled in the art would understand what is claimed when the claim is
read in light of the specification.” Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Claim 1 recites, in relevant part: “wherein said ITC number is
configured to be processed as a traditional financial payment card
transaction.”
Appellant’s Specification discloses that:
Lastly, Figure 12 indicates that a payment processor 103, such
as, but not limited to, MasterCard can have one or more of the
following responsibilities for completing dynamic gift
processing: generating gift ICNs [intelligent coupon numbers] in
response to a deal company 102 request via an authorization
system API connection (e.g., an API [application programming
interface] connection to MasterCard’s inControlTM service);
registering and verifying controls associated with each individual
gift ICN; providing commercially reasonable assistance to
facilitate the use of an authorization system, such as
MasterCard’s inControlTM service; and supporting a traditional
four-party-model (i.e., comprising communications between a
merchant 104, a transaction acquirer 504, an issuer 550, and a
consumer 101) to route an authorization request from a merchant
104 to an issuer 550.

Spec. ¶ 186 (emphasis added). Appellant’s Specification thus discloses that
the ICN number (i.e., the number of an ITC) is configured to be processed as
a traditional financial payment card transaction, defined by the Specification
as “a traditional four-party-model (i.e., comprising communications between
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a merchant 104, a transaction acquirer 504, an issuer 550, and a consumer
101).” We consequently conclude that a person of ordinary skill in the art
would understand what is claimed when the claim is read in light of
Appellant’s Specification, and we reverse the Examiner’s rejection upon this
ground.

C. Rejection under 35 U.S.C. § 103(a)
Issue 1
Appellant argues that the Examiner erred in finding that the combined
cited prior art teaches or suggests the limitation of claim 1 reciting:
“receiving, by a processing device of a transaction processing system, from
an offer distributor, (1) a financial transaction card number of a consumer as
payment for an accepted offer.” App. Br. 14.

Analysis
The Examiner finds that Banerjee shows receiving a card number
from consumer by a transaction processor. Final Act. 6 (citing Banerjee ¶
76, Fig. 9). The Examiner finds that Banerjee teaches that the card number is
for a selected offer (accepted offer). Id. (citing Banerjee Fig. 1) The
Examiner points to Figure 17 of Banerjee, which the Examiner finds teaches
that a: “token associated with selected offer” is paid for. Id. (citing Banerjee
¶¶ 9 51, 99–100, 13). These steps all read on limitation (1) of claim 1.
The Examiner finds that the request taught Banerjee (i.e., the purchase
offer of paragraphs [0009] and [0099] originates from a customer not from
an offer distributor. Final Act. 8. However, the Examiner finds that Ocher
teaches “receiving … from an offer distributer.” Id. at 9.
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Specifically, the Examiner finds that Ocher teaches: receiving, by a
processing device of a transaction processing system, from an offer
distributer: (1) a financial transaction card number of a consumer as payment
for an accepted offer; (2) information regarding the accepted offer; and (3) a
request for an intelligent transaction card (ITC) number (3) a request for an
intelligent transaction card (ITC) number (limitations 1–3 of claim 1). Final
Act. 9 (citing Ocher 2–3, 5, 6, Figs. 1, 2).
Appellant argues that Paragraph [0009] of Banerjee teaches a system
in which a request, including criteria for a list of merchants who can conduct
a transaction on an account, is received from a consumer. App. Br. 13.
According to Appellant, Banerjee teaches that, if the request is authorized,
the system performs steps of retrieving a list of merchants based upon the
criteria and transmitting the list to the consumer. Id. Appellant contends
that Banerjee teaches that the consumer may then identify an offer from one
of the merchants in the list, and receive in return, a token representative of
the account issued by the issuer to the consumer: the token may then be used
to conduct a transaction with the merchant. Id.
Appellant contends that paragraph [0013] of Banerjee describes
Figure 2, and notes that a consumer may request and receive tokens. App.
Br. 13. Appellant argues further that paragraph [0034] of Banerjee teaches
features of a token, requested by a consumer, and that paragraph [0090]
describes a user interface that a consumer may use to request a token for
payment for a transaction. Id. Appellant asserts that paragraphs [0099] and
[0100] of Banerjee teach a consumer’s selection of an offer from a merchant.
Id.
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With respect to Ocher, Appellant argues that Ocher teaches a system
in which an issuer may establish a pre-funded account (e.g., a gift card
account) with merchants. App. Br. 14. Appellant contends that Ocher
teaches that customers can buy cards from the issuer at a discount on their
face value, and that the card issuer provides a secure (PIN) gift card to a
customer who may use the card or transfer it to someone else. Id.
According to Appellant, the gift card may ultimately be redeemed at a
participating merchant. Id.
However, Appellant argues, Ocher does not teach or suggest the
receipt, from an offer distributor, of: (1) a financial transaction card number
of a consumer as payment for an accepted offer; (2) information regarding
the accepted offer; or (3) a request for an ITC number. App. Br. 14. Rather,
Appellant argues, as in Banerjee, the only entity from which the system of
Ocher receives a financial transaction card number of a consumer is from the
consumer. Id.
The Examiner responds that the claim term “offer distributor” recited
in the first limitation of the claim is broad in scope. Ans. 8. The Examiner
finds that an “offer distributor,” as taught by Ocher, could include entities
that are not a large institution like Groupon (as disclosed by Appellant’s
Specification), but that can nevertheless be an offer distributor. Id. The
Examiner finds that any person/place/thing that distributes an offer is an
“offer distributor.” Id.
Specifically, the Examiner notes that Appellant argues that Ocher
teaches a customer holding the offer can “gift it to someone else.” Ans. 8
(quoting App. Br. 14). The Examiner finds that the broadest reasonable
interpretation of the term “offer distributor” includes any individual that
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distributes an offer, passing on savings to another. Id. It is the Examiner’s
position that Appellant elected to employ the broad term “offer distributor,”
and the Examiner finds that anyone/anything distributing an offer falls
within the scope of the broadest reasonable interpretation of “offer
distributor.” Id.
We are not persuaded by the Examiner’s reasoning. “[C]laims are
interpreted in light of the specification and with the knowledge of one of
ordinary skill in the art.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996). Furthermore, it is well-settled that “during
examination, claims are to be given their broadest reasonable interpretation
consistent with the specification[.]” In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
Appellant’s Specification offers no express definition of the term
“offer distributor.” However, the Specification discloses that:
Currently, the offer distributors listed above [i.e., “Groupon …
Google Offers, Amazon, BuyWithMe, LivingSocial, HTC
Corporation, and Dealon, to name a few offer distributors.” See
Spec. ¶ 3] and other players have competing business models,
processes, and approaches resulting from competing for shares
in the offers and ‘daily deals’ marketplace. This has resulted in
inefficient and fragmented systems with multiple touch points
for consumers and merchants. The competition amongst and lack
of coordination and cooperation between these players has also
resulted in offer overload for consumers with imperfect
information and redundant processes for consumers to follow in
order to avail themselves of offers.

Spec. ¶ 4. The Specification further discloses that: “These systems also need
to provide tracking and reporting of offers and redemptions to ensure return
on investment (ROI) for merchants and offer distributors while
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simultaneously providing improved consumer and merchant experiences.”
Id. at ¶ 5. We find that, based upon these disclosures, the broadest
reasonable construction of the claim term “offer distributors” consistent with
the disclosures of the Specification is: “an entity distributing commercial
offers to consumers in the marketplace.” As such, we find that the
Examiner’s construction of the term “offer distributors” to include the casual
passing of an offer (such as a gift card or coupon) as a gift by one individual
to another in a noncommercial setting is not a reasonable interpretation in
view of the language of the claim and the disclosures of the Specification.
Furthermore, an individual who purchases a gift card, for example, and then
“gifts” the card to another has not provided the recipient’s “financial
transaction card number of a consumer as payment for an accepted offer,” as
required by claim 1, but has instead provided the financial transaction card
number of the purported “offer distributor,”
The Examiner points to no other evidence of record to support the
proposed interpretation of “offer distributors.” Consequently, we reverse the
Examiner’s rejection of independent claim 1. Furthermore, because claim 1
is the sole independent claim on appeal, we also reverse the dependent
claims before us, and we do not reach Appellant’s additional arguments.

CONCLUSION
The Examiner’s rejection of claims 1–3 and 21–26 under 35 U.S.C.
§ 101, second paragraph is affirmed
The Examiner’s rejection of claims 1–3 and 21–26 under 35 U.S.C.
§ 112, second paragraph is reversed
The Examiner’s rejection of claims 1–3 and 21–26 under 35 U.S.C.
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§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 21–26 101 Statutory

1–3, 21–26
1–3, 21–26 112 Second paragraph 1–3, 21–26
1–3, 22, 24–
26
103(a) Banerjee, Ocher 1–3, 22,
24–26
21 103(a) Banerjee, Ocher,
Postrel
21
23 103(a) Banerjee, Ocher,
Wolfe
23
Overall
Outcome
1–3, 21–26