Bhushan Balani et al.

Patent Trials and Appeals Board

Sep 25, 2019

13957630 - (D) (P.T.A.B. Sep. 25, 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.
13/957,630 08/02/2013 Bhushan Balani 46477-124548 1074
23643 7590 09/25/2019
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BHUSHAN BALANI, ANDREW POWELL, and
SHRINEIL PATEL
Appeal 2018-007238
Application 13/957,630
Technology Center 3600
Before JOSEPH P. LENTIVECH, PHILLIP A. BENNETT, and
SCOTT RAEVSKY, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Meijer, Inc., appeals from
the Examiner’s decision to reject claims 1, 6–11, 15, 31, 32, 34–42, and 44–
51. Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a system for providing virtual coupons to a
customer which may be sequentially activated for redemption by the
customer. Spec., Abstract. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system for providing virtual coupons to a customer for
redemption at a retail enterprise, the system comprising:
a database associated with the retail enterprise and having
a plurality of virtual coupons stored therein, the database
including a plurality of virtual coupon repositories each
associated with a different one of a plurality of customers of the
retail enterprise such that virtual coupons stored therein are
redeemable by the retail enterprise only against matching items
purchased from the retail enterprise by that customer,
a plurality of point-of-sale systems associated with the
retail enterprise, and
a server associated with the retail enterprise and
communicatively coupled to the database and to each of the
plurality of point-of-sale systems, the server including a virtual
coupon module to select from the plurality of virtual coupons
stored in the database, based on one or more virtual coupon offer

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Meijer,
Inc. App. Br. 1.
2 The Final Office Action indicates that claims 1, 5–11, 15, and 31–51 are
rejected. On October 17, 2017, Appellant filed, and the Examiner entered
(Adv. Act. 1), amendments cancelling claims 5, 33, and 43.
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criteria, a parent virtual coupon, a first sequence of virtual
coupons and a second sequence of virtual coupons different from
the first sequence of virtual coupons, to store the parent virtual
coupon, the first sequence of virtual coupons and the second
sequence of virtual coupons in the one of the plurality of virtual
coupon repositories associated with the customer, to activate for
redemption at any of the plurality of point-of-sale systems the
parent virtual coupon stored in the one of the plurality of virtual
coupon repositories, to cause a display monitor of a remote
computing device to display the parent virtual coupon and each
of the virtual coupons in the first and second sequences of virtual
coupons in the one of the plurality of virtual coupon repositories,
to receive from the remote computing device, specified through
interaction by the customer with the remote computing device, a
selection of one of the displayed first and second sequences of
virtual coupons in the one of the plurality of coupon repositories,
to remove from the one of the plurality of virtual coupon
repositories the other of the first and second sequences of virtual
coupons not selected by the customer, to activate for redemption
at any of the plurality of point-of-sale systems a first virtual
coupon in the selected one of the first and second sequences of
virtual coupons after automatic redemption of the parent virtual
coupon in the one of the plurality of virtual coupon repositories
by one of the plurality of point-of-sale systems against an item
presented thereto by the customer for purchase that matches the
parent coupon, and to thereafter sequentially activate for
redemption at any of the plurality of point-of--sale systems each
successive virtual coupon in the selected one of the first and
second sequences of virtual coupons after automatic redemption
of a preceding virtual coupon in the selected one of the first and
second sequences of virtual coupons in the one of the plurality of
virtual coupon repositories by one of the plurality of point-of-
sale systems against an item presented thereto by the customer
for purchase that matches the preceding virtual coupon.
App. Br. 25–26 (Claims Appendix).
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REJECTION
Claims 1, 6–11, 15, 31, 32, 34–42, and 44–51 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. Final Act. 2–16; Ans. 3–7.

REJECTION UNDER 35 U.S.C. § 101
Legal Standard
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “[f]irst . . . determine whether the claims at issue are directed
to [a] . . . patent-ineligible concept[]” (id. at 217), and, in this case, the
inquiry centers on whether the claims are directed to an abstract idea. If the
initial threshold is met, we then move to the second step, in which we
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as a search for “an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (quoting
Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (Guidance, Step 2A, prong 1); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, 2018))
(Guidance, Step 2A, prong 2).
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.
Guidance (Step 2B).
Examiner’s Findings and Conclusion
Applying the first step of the Alice inquiry, the Examiner determines
the claims are directed to an abstract idea of “adding value to an account as
evidenced by the purpose and end result of the claims.” Final Act. 3. At
Alice step 2, the Examiner determines the claims do not recite elements
sufficient to amount to significantly more than the abstract idea because:
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The additional hardware elements or combination of hardware
elements in the claims other than the abstract idea per se amounts
to no more than: mere instructions to implement the idea on a
computer, and recitation of generic computer structure that
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry. Viewed as a whole, these
additional claim elements do not provide meaningful limitations
to transform the abstract idea into a patent eligible application of
the abstract idea such that the claim(s) amounts to significantly
more than the abstract idea itself.
Final Act. 4.
Appellant’s Contentions
Appellant asserts three primary errors in the Examiner’s abstract idea
analysis. App. Br. 11–14. First, Appellant argues the rejection lacks any
sufficient analysis that the claimed concept is an abstract idea. Id. at 11.
More specifically, Appellant argues the Examiner’s has failed to
demonstrate that the claims do not effect a technological improvement or an
improvement to the functioning of a computer itself. Id. Appellant contends
the claims “create a new type of virtual coupon structure” and that the new
structure “enables the retail establishment computer (i.e., server and/or
processor(s)) to do things it could not before such as utilizing new behavior-
based information . . . to modify and refine the virtual coupon structure that
will ultimately be used for automatic redemption.” Id. at 14.
Second, Appellant argues the Examiner failed to consider the claim as
a whole in determining whether it recites a concept similar to that previously
found abstract in court decisions. Id. Appellant asserts the Examiner failed
to cite any case in which a similar subject matter has been found to be
directed to an abstract idea. Id. Appellant asserts that the pending claims
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are similar to those found eligible in Finjan, Inc. v. Blue Coat Sys., 879 F.3d
1299 (Fed. Cir. 2018). App. Br. 14.
Third, Appellant argues the Examiner overgeneralizes the concept
covered by the claims in failing to acknowledge that “each of the
independent claims . . . require automatic redemption of the parent coupon
and each coupon in the selected sequence of coupons.” App. Br. 12.
Appellant argues “automatic redemption by the retail establishment
computer of the coupons in the refined virtual coupon structure improves the
function of the computer.” Id. at 15. Appellant argues the use of virtual
coupons obviates the need for physically scanning paper or images at the
point of sale, thereby reducing the computational burden on the retail
establishment computer. Id.
At Alice step 2, Appellant argues the ordered combination of elements
set forth in the claims recite an inventive concept that amounts to
significantly more than any abstract idea recited in the claims. Appellant
argues the Examiner improperly considered only a subset of claim elements
in the “significantly more” analysis and failed to consider the limitations as
an ordered combination. Id. at 15–16. Appellant specifically argues the
claims recite an inventive concept of:
[T]he combination of creating a novel virtual coupon structure,
communicating interactively with a customer to refine, i.e.,
modify the created virtual coupon structure, and controlling a
point-of-sale system to automatically and sequentially redeem
coupons in the refined virtual coupon structure against matching
items presented by the customer for purchase at a point-of-sale
system associated with the retail enterprise.
Id. at 18.
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Guidance, Step 2A, Prong One 3
The Judicial Exception
Applying the Guidance, we are not persuaded of Examiner error. The
Guidance instructs us first to determine whether any judicial exception to
patent eligibility is recited in the claim. The guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices, fundamental economic principles or practices, commercial or legal
interactions, and managing personal behavior or relationships or interactions
between people, and (3) mental processes. We focus here on the second
grouping—certain methods of organizing human activity such as
fundamental economic practices and commercial interactions.
Claim 1 recites the following limitations: (1) “a system for providing
virtual coupons to a customer for redemption at a retail enterprise,” (2) “a
database associated with the retail enterprise and having a plurality of virtual
coupons stored therein, the database including a plurality of virtual coupon
repositories each associated with a different one of a plurality of customers
of the retail enterprise such that virtual coupons stored therein are
redeemable by the retail enterprise only against matching items purchased
from the retail enterprise by that customer,” (3) “a virtual coupon module to
select from the plurality of virtual coupons stored in the database, based on
one or more virtual coupon offer criteria, a parent virtual coupon, a first
sequence of virtual coupons and a second sequence of virtual coupons

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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different from the first sequence of virtual coupons, to store the parent
virtual coupon, the first sequence of virtual coupons in the second sequence
of virtual coupons in the one or more of the plurality of virtual coupon
repositories associated with the customer, to activate for redemption at any
of the plurality of point-of-sale systems the parent coupon stored in the one
of the plurality of virtual coupon repositories,” (4) “to receive from the
remote computing device, specified through interaction by the customer with
the remote computing device, a selection of one of the displayed first and
second sequence is a virtual coupons in one of the plurality of coupon
repositories, to remove from one of the plurality of virtual coupon
repositories the other of the first and second sequence is a virtual coupons
not selected by the customer,” (5) “to activate for redemption at any of the
plurality of point-of-sale systems a first virtual coupon in the selected 1 of
the first and second sequence is a virtual coupons after automatic redemption
of the parent virtual coupon in the 1 of the plurality of virtual coupon
repositories by one of the plurality of point-of-sale systems against an item
presented thereto by the customer for purchase that matches the parent
coupon,” (6) “and to thereafter seek when shall he activate for redemption at
any of the plurality of point-of-sale systems each successive virtual coupon
in the selected one of the first and second sequences of virtual coupons after
automatic redemption of a proceeding virtual coupon in the selected 1 of the
first and second sequences of virtual coupons in the one of the plurality of
virtual coupon repositories by one of the plurality of point-of-sale systems
against an item presented thereto by the customer for purchase that matches
the preceding virtual coupon.” App. Br. 25–26 (Claims Appendix).
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These limitations, under their broadest reasonable interpretation,
recite a commercial interaction of providing virtual coupons to a customer
for redemption at a retail enterprise—which is a certain method of
organizing human activity under the Guidance. Guidance at 52 (identifying
certain methods of organizing human activity as including “commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations”)).4 These limitations, although detailed and specific in scope,
each encompass operations which carry out commercial interaction—
namely, a process of providing virtual coupons to customers for redemption.
For example, limitation (1) recites the intended use of the claimed system,
“providing virtual coupons to customers for redemption.” Limitation (2)
recites the use of a database to store information in such a way as to
maintain coupons for specific customers, while limitation (3) recites the use
of software which selects specific coupons for customers for redemption.
Limitation (4) recites receiving a customer selection of coupons to use, and
discards unselected coupons. Limitations (5) and (6) implement the use of
the coupons by automatically applying them against matching purchases.
Accordingly, we conclude the claims recite a commercial interaction, which

4 Our reviewing court has held that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). The Examiner describes the abstract
idea as “providing set(s) (e.g. an array, a sequence, series, a list etc.) of
coupons containing a parent (e.g. master) coupon any sequence of
progressive child coupons, which become usable only after redeeming the
parent coupon. Ans. 3. Although described at a different level of
abstraction, we discern no error in the Examiner's characterization of the
abstract idea.
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is a certain method of organizing human activity under the Guidance and
therefore an abstract idea.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See Guidance (citing MPEP § 2106.05(a)–(c), (e)–(h)). Under
the Guidance, 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 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);
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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 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
Appellant’s claim 1 recites various computer hardware and software
limitations. These include (1) “a database,” (2) “a plurality of virtual
coupon repositories,” and (3) “a plurality of point-of-sale systems,” (4) “a
server,” (5) and “a virtual coupon module.” We do not find these computer-
hardware and software limitations sufficient to integrate the judicial
exception into a practical application. These computer components are
included in the claim as “tool[s] to perform an abstract idea.” MPEP
§ 2106.05(f). As such, we do not find the computer hardware limitations are
sufficient to integrate the judicial exception into a practical application.
As we note above, Appellant asserts the claims improve the
performance of a computer because they “create a new type of coupon
structure” that allows a retail establishment computer to “do things it could
not before such as utilizing new behavior-based information . . . to modify
and refine the virtual coupon structure that will ultimately be used for
automatic redemption.” App. Br. 14. However, these purported
improvements are improvements to how coupons are delivered—an
improvement to the abstract idea itself—which is not sufficient to integrate
the abstract idea into a practical application. SAP America Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive
concept in the non-abstract realm.”); see also Mayo Collaborative Servs. v.
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Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012) (narrow embodiments of
ineligible matter are still ineligible).
Nor do we find persuasive Appellant’s argument that the pending
claims are similar to those found eligible in Finjan, Inc. v. Blue Coat Sys.,
879 F.3d 1299 (Fed. Cir. 2018). App. Br. 14. The claims in Finjan focused
on an improvement to a computer security system. Unlike the claims here
which are used in commercial interactions, there was no basis in Finjan for
concluding that the claims recited a certain method of organizing human
activity, as the subject matter recited in the claims sought to protect
computers from external threats.
We also do not find persuasive Appellant’s argument that the
“automatic redemption” features in the claims take the claims out of the
abstract realm. To the contrary, Appellant’s Specification acknowledges
that automatic redemption of virtual coupons was conventional (see Spec. ¶
3). Moreover, similar to the claims found impermissibly abstract in Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016), Appellant’s claims
“do not claim a particular way of programming or designing the software” to
perform automatic redemption, “but instead merely claim the resulting
systems.” Id. at 1241.
In sum, the additional limitations recited in Appellant’s claims do not
improve the functioning of a computer or any improvement to any other
technology or technological field. MPEP 2106.05(a). Rather, the additional
limitations are used merely as tools to implement the abstract idea. MPEP
§ 2106.05(f). Thus, the additional elements recited in claim 1 are not
sufficient to integrate the recited abstract idea into a practical application.
Accordingly, we conclude claim 1 is directed to a judicial exception.
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The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) 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 Guidance. We
agree with the Examiner that the claim does not add specific limitations
beyond what is well-understood, routine, and conventional.
As we noted above, the additional limitations in the claims—those
that do not recite an abstract idea—are the computer hardware and software
limitations. In the Background, Appellant’s Specification acknowledges that
a “retail outlet may include any number of point-of-sale systems via which
customers purchase items.” Spec. ¶ 2. The Background section further
acknowledges that “[r]etailers may further offer virtual coupons to
customers, and such virtual coupons may be stored in a database and
accessed by customers via a virtual customer coupon service to
automatically redeem the virtual coupons.” Id. ¶ 3. Thus, the Specification
provides evidence that these computer hardware and software limitations
were well understood, routine, and conventional.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the Guidance, we sustain the
rejection of claim 1 under 35 U.S.C. § 101. Appellant does not present
arguments pertaining to any other claim. Accordingly, we treat claim 1 as
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representative, and we sustain the rejection of the pending claims under
35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision to reject the claims under
35 U.S.C. § 101.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 6–11, 15, 31,
32, 34–42, and
44–51
§ 101 1, 6–11, 15, 31,
32, 34–42, and
44–51
None
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED