Andrea Christine. Gilman et al.Download PDFPatent Trials and Appeals BoardNov 4, 201913455951 - (D) (P.T.A.B. Nov. 4, 2019) Copy Citation 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. Appeal 2018-009101 Application 13/455,951 2 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. Appeal 2018-009101 Application 13/455,951 3 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 Appeal 2018-009101 Application 13/455,951 4 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 Appeal 2018-009101 Application 13/455,951 5 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 Appeal 2018-009101 Application 13/455,951 6 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 Appeal 2018-009101 Application 13/455,951 7 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) Appeal 2018-009101 Application 13/455,951 8 (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 Appeal 2018-009101 Application 13/455,951 9 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 Appeal 2018-009101 Application 13/455,951 10 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 Appeal 2018-009101 Application 13/455,951 11 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 Appeal 2018-009101 Application 13/455,951 12 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 Appeal 2018-009101 Application 13/455,951 13 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. Appeal 2018-009101 Application 13/455,951 14 773 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 Appeal 2018-009101 Application 13/455,951 15 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. Appeal 2018-009101 Application 13/455,951 16 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 Appeal 2018-009101 Application 13/455,951 17 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 Appeal 2018-009101 Application 13/455,951 18 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. Appeal 2018-009101 Application 13/455,951 19 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. Appeal 2018-009101 Application 13/455,951 20 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 Appeal 2018-009101 Application 13/455,951 21 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 Appeal 2018-009101 Application 13/455,951 22 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. Appeal 2018-009101 Application 13/455,951 23 § 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 Copy with citationCopy as parenthetical citation