Edmond Chow et al.

Patent Trials and Appeals Board

Jun 17, 2020

2019006142 (P.T.A.B. Jun. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/515,280 10/15/2014 Edmond Kwok-Keung Chow 101014.000020 6504
23377 7590 06/17/2020
BakerHostetler
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
JESSEN, DEREK
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/17/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMOND KWOK-KEUNG CHOW and
ELINA YUEN-WAI LUK
Appeal 2019-006142
Application 14/515,280
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 19–24, 30, 35, 36, 39, 40, and 43–50,
which are all the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real parties in interest as Edmond Kwok-
Keung Chow and Elina Yuen-Wai Luk. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s claimed invention “relates to methods, processes,
apparatuses and systems for advertising and promotion” (Spec. ¶ 2), and
more particularly to “a method for advertising an item for sale” (id. ¶ 5).
Claims 1, 19, and 20 are the independent claims on appeal. Claim 1,
reproduced below with bracketed matter added, is illustrative of the claimed
subject matter:
1. A computer-implemented method for transmitting a digital
advertisement to a terminal configured for electronic commerce,
the method comprising, by an information system comprising
circuitry:
[(a)] associating in one or more databases a first price with an
item;
[(b)] presenting an indication of the item and an indication of a
second price to the terminal, wherein the second price is higher
than the first price;
[(c)] receiving a commitment to pay for an amount from the
terminal, wherein the amount is determined in relation to the
second price;
[(d)] in relation to receiving the commitment, presenting the
first price to the terminal, wherein the first price is not presented
to the terminal until at least the commitment is received, and no
sufficient information for arriving at the first price is presented
to the terminal until at least the commitment is received; and
[(e)] in relation to presenting the first price, applying a charge
to an account associated with a user, thereby minimizing search
costs associated with obtaining a lower price than the second
price, the lower price being unpublished to the user prior to
receiving the commitment.
Appeal Br. 30 (Claims Appendix).
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REJECTIONS
1. Claims 1, 19–24, 30, 35, 36, 39, 40, and 43–50 are rejected
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
2. Claims 1, 19–22, 24, 30, 35, 36, 39, 40 and 43–50 are rejected
under 35 U.S.C. § 103 as unpatentable over Wiseman et al. (US
2008/0243628 A1, pub. Oct. 2, 2008) (“Wiseman”), Hecht (US
2014/0012647 A1, pub. Jan. 9, 2014), and Rampell et al. (US
2009/0292599 A1, pub. Nov. 26, 2009) (“Rampell”).
3. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable
over Wiseman, Hecht, Rampell, and Rajan et al. (US 2009/0061884 A1,
pub. Mar. 5, 2009).
OPINION
Standard of Review
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential). “Filing a Board appeal
does not, unto itself, entitle an appellant to de novo review of all aspects of a
rejection.” Id. (citations omitted). “[T]he Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.” Id.
at 1075–76 (citations omitted). The Board will not advocate for Appellant
by scouring the record to see if the Board can identify some flaw in the
Examiner’s findings of fact, articulated reasoning, or legal conclusions. See,
e.g., Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1250 n.2
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(Fed. Cir. 2008) (“A skeletal ‘argument’, really nothing more than an
assertion, does not preserve a claim.”).
Eligibility
Appellant argues independent claims 1, 19, and 20 together. Appeal
Br. 4–15; Reply Br. 1–3. We select independent claim 1 as representative.
Claims 19 and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
A. Section 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
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omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019
Update, 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) (“Step 2A, Prong One”); and

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. ANALYSIS
With regard to the first step of the Mayo/Alice framework and
Step 2A, Prong One of the 2019 Revised Guidance, 84 Fed. Reg. at 54, the
Examiner determines that exemplary independent claim 1 is “directed to
presenting a first price and a second price to a user.” Final Act. 2; Ans. 3–4.
The Examiner considers this to be an abstract idea, inasmuch as the claimed
concept is a method of organizing human activity. Id.

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. at 54–55.
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In response, Appellant disagrees and argues that the claims do not
recite methods of organizing human activity. Appeal Br. 6. Appellant
argues that the Examiner’s determination is flawed because the invention is
not identical to the inventions held ineligible in the cases cited by the
Examiner, namely Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016) and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014). Id. at 5–6. According to Appellant, the present claims
“inherently require a terminal communicatively coupled to a user, whether at
home or at a brick-and-mortar store, and pertain specifically to self-service
checkout systems, without ‘extra-solution’ activities” and “the claimed
invention withholds presenting on such a terminal the final price until after
a commitment to pay is received and requires presenting on the terminal a
higher price to which the commitment to pay corresponds.” Id. at 6.
Appellant argues that “[t]hese limitations or features find meanings only in
the domain of electronic systems enabling users to identify items and
perform self-checkouts and cannot exist in [a] vacuum as abstract ideas that
could be applied to any general problem.” Id.
We are not persuaded that the Examiner erred in determining that
independent claim 1 is directed to an abstract idea. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks
whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an “abstract idea” for
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which computers are invoked merely as a tool. See id. at 1335–36. Here, it
is clear from the Specification (including the claim language) that the claims
focus on an abstract idea, and not on any improvement to technology and/or
a technical field.
The Specification is entitled “ADVERTISING AND PROMOTION
METHOD AND SYSTEM” and states that the disclosure provides “a
method for advertising an item for sale.” Spec. ¶ 5. According to the
Specification, “[s]ellers, manufacturers, brands, businesses, and
marketplaces alike might be reluctant to make available a low price for a
product or service even in a competitive market or environment” due to
concerns about “not wanting to trigger price-cutting competitions from
competitors, restrictions from suppliers or wholesalers (e.g., minimum
advertised pricing agreements), and fear of brand image dilution.” Id. ¶ 3.
The Specification discloses that “[s]ome solutions in the art may include
hiding the low price until a consumer adds the product to his online
shopping cart, or asking the consumer to make a further inquiry to have the
low price revealed,” but these “approaches still reveal the low price enabling
[the consumer] to price compare before purchase, while imposing on him
what might amount to an extraneous effort.” Id. The Specification further
describes “an advertising scheme in the art may involve giving out discount
coupons for future purchases after a sales transaction,” but notes that “such
discount coupons provide, if any, little or weak association as discounts to
the purchase that might have resulted in their availability to the customer.”
Id. The Specification further discloses that “another advertising scheme
involves giving prospective customers at the store a coupon (e.g., a so-called
‘scratch-and-save’ coupon) whose discount is initially concealed and may
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vary from one customer to another” wherein “customers may then have the
coupon amount (and its terms and conditions) revealed prior to their
purchases.” Id. According to the Specification, “such a discount may be
made known to the customers prior to any commitment to pay from the
customers” and “[i]n addition, it may be determined without the customers
having chosen a particular item or group of items of interest.” Id. “As such,
this scheme is more like a draw or lottery for a store discount, rather than a
hidden discount associated with a particular item or group of items.” To
address these problems, the Specification discloses “a method for
advertising an item for sale” that involves associating a first price and a
second with an item and “receiving a commitment to pay for the first
amount, wherein the user does not know the second price (e.g., receiving
credit card information for the user with authorization to charge at least the
amount of the first total, without disclosing the further discounted price to
the user).” Id. ¶ 5.
Consistent with this disclosure, independent claim 1 recites a
computer-implemented method for transmitting a digital advertisement to a
terminal configured for electronic commerce, the method comprising, by an
information system comprising circuitry: (1) associating in one or more
databases a first price with an item (step (a)); (2) presenting an indication of
the item and an indication of a second price to the terminal, wherein the
second price is higher than the first price (step (b)); (3) receiving a
commitment to pay for an amount from the terminal, wherein the amount is
determined in relation to the second price (step (c)); (4) “in relation to
receiving the commitment, presenting the first price to the terminal”
(step (d)); and (5) in relation to presenting the first price, applying a charge
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to an account associated with a user (step (e)). Claim 1 also recites a
“wherein” clause in limitation (d) that specifies that “the first price is not
presented to the terminal until at least the commitment is received, and no
sufficient information for arriving at the first price is presented to the
terminal until at least the commitment is received.” Claim 1 further recites,
in limitation (e), “thereby minimizing search costs associated with obtaining
a lower price than the second price, the lower price being unpublished to the
user prior to receiving the commitment.”
Upon reviewing the Specification and independent claim 1, as
summarized above, we agree with the Examiner that independent claim 1
recites broadly a series of steps for “presenting a first price and a second
price to a user” (Ans. 4), which can be characterized as a certain method of
organizing human activity. Here, independent claim 1 associates a first price
with an item (step (a)), presents an indication of the item and a second price
of the item, (step (b)), receives a commitment to pay (step (c)), and then
presents the first price and charges an account. In other words, claim 1
broadly recites a method for presenting two different prices for an item,
specifically presenting a higher price prior to receiving a commitment to pay
and then presenting a lower price after receiving the commitment to pay.
Thus, it is clear that independent claim 1 recites a form of commercial
interaction that, under the 2019 Revised Guidance, falls under the category
of “[c]ertain methods of organizing human activity” and more specifically
“commercial or legal interactions (including agreements in the form of . . .
sales activities or behaviors; business relations).” 2019 Revised Guidance,
84 Fed. Reg. at 52. Accordingly, independent claim 1 recites an abstract
idea. Cf. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
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1314, 1324 (Fed. Cir. 2016) (“The claim limitations, analyzed individually
and ‘as a whole,’ recite nothing more than the collection of information to
generate a ‘credit grading’ and to facilitate anonymous loan shopping.”)
(citations omitted); LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991,
992–93 (Fed. Cir. 2016) (non-precedential) (holding ineligible claims
directed to “coordinating loans” using “a filter comprising the plurality of
selection criteria of the database to select without manual intervention each
one of said plurality of lending institutions associated with a match”); and
Ultramercial, 772 F.3d 709 (finding the claims at issue recited the abstract
idea of using advertising as a currency as applied to the particular
technological environment of the Internet).
We also decline to find error here to the extent Appellant argues that
the § 101 rejection cannot be sustained because the Examiner failed to
establish “an evidence-based prima facie case of ineligibility” (Appeal
Br. 15). Appellant argues that the rejection cannot be sustained because of
the “lack of evidence on the record for establishing that the claims are
directed to a patent ineligible subject matter under part one and/or part two
of the two-part test for judicial exceptions” (id. at 14–15). According to
Appellant, “examiners are required to present an evidence-based prima facie
case of ineligibility” (id. at 15) (citing Ex parte Renald Poisson, Appeal
2012-011084 (PTAB Feb. 27, 2015)).
The Federal Circuit has observed repeatedly that “the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
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prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for the rejection, “together
with such information . . . as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (alteration in original). Here, the Examiner set
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
And we find that, in doing so, the Examiner established a prima facie case of
patent ineligibility.
Appellant argues that “Appellants and the public do not know what
the abstract concept is that claims 1, 19 and 20 are allegedly directed to”
(Appeal Br. 14). Appellant’s argument is not persuasive because it ignores
the Examiner’s analysis set forth in the Final Office Action, where the
Examiner indicated that the claims are directed to, inter alia, “presenting the
first price, wherein the first price is not presented until at least the
commitment is received, and no sufficient information for reducing arriving
at the first price is presented until at least the commitment is received” (Final
Act. 2–3; see also Ans. 3–4 (“the claims are directed to presenting a first
price and a second price to a user . . .”)).
As to the allegation that the Examiner has not provided adequate
evidence to support the rejection, there is no requirement that an examiner
provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea. Nor, contrary to Appellant’s
suggestion (Appeal Br. 15), did this Board hold in Ex parte Renald Poisson,
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that there is any such requirement.4 Although evidence may be helpful, e.g.,
where facts are in dispute, it is not always needed. See Mortg. Grader, 811
F.3d at 1325-26 (“[I]t is also possible, as numerous cases have recognized,
that a § 101 analysis may sometimes be undertaken without resolving fact
issues.”). Appellant’s bare assertion that evidence is needed, without any
supporting reasoning, is insufficient to require the Examiner to provide
evidentiary support.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we turn to the Step 2A, Prong Two of the 2019 Revised
Guidance and determine whether the claim integrates the recited judicial
exception into a practical application of the judicial exception. Here we look
to see if, for example, any additional elements of the claim (i) reflect an
improvement in the functioning of a computer or to another technological
field, (ii) implement the judicial exception with, or by use of, a particular
machine, (iii) effect a transformation or reduction of a particular article to a
different state or thing, or (iv) use the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment. See 2019 Revised Guidance,
84 Fed. Reg. at 55; see also MPEP §§ 2106.05(a)–(c), (e)–(h).
Here, the only additional elements recited in claim 1 beyond the
abstract idea are “a terminal configured for electronic commerce,” “one or
more databases,” and “an information system comprising circuitry” which
performs steps (a)–(e). However, the additional elements are described
generically in the Specification (see, e.g., Spec. ¶¶ 22–26, 30, 44–47, 61, 67,

4 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
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69–71). We find no indication in the Specification, nor does Appellant
direct us to any indication, that the steps recited in claim 1 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the 2019 Revised Guidance.5
Appellant argues that independent claims 1, 19, and 20 “are integrated
into practical applications.” Appeal Br. 7. Appellant describes a “typical
self-checkout process” that comprises five numbered steps, including
“1. associate in a database a price with an item,” “2. present via a terminal

5 The 2019 Revised Guidance references MPEP §§ 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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an indication of the item and a price,” “3. present via the terminal a lower
price,” “4. receive a commitment to pay for an amount,” and “5. apply a
charge to an account.” Id. To contrast the invention with this typical self-
checkout process, Appellant describes “an embodiment of claim 1” which
includes the same five steps, but in a different order: “1. associate in a
database a price with an item,” “2. present via a terminal an indication of the
item and a price,” “3. receive a commitment to pay for an amount,” “4.
present via the terminal a lower price,” and “5. apply a charge to an
account.” Id. In particular, relative to the typical self-checkout process, the
embodiment of claim 1 moves the step of “receive a commitment to pay for
an amount” earlier in the process, before the step of “present via the terminal
a lower price.” Thus, Appellant argues, the claims recite additional
elements “such as association of a price with an item, presentation of a lower
price, and receiving of a commitment to pay,” that “integrate the alleged
judicial exceptions into a practical application (e.g., self-serve systems, self-
checkout processes).” Id. at 8.
We do not agree with Appellant that re-ordering the steps of a typical
self-checkout integrates the abstract idea into a practical application as that
phrase is used in the 2019 Revised Guidance. Citing the 2019 Revised
Guidance, Appellant contends that the claims “do not appear to have any
applicability outside the domain of self-serve systems and self-checkout
processes.” Id. at 8. Yet, the 2019 Revised Guidance makes clear that the
additional element or combination of elements must go “beyond generally
linking the use of the judicial exception to a particular technological
environment” in order to integrate the abstract idea into a practical
application. Although it may be true that the present claims link the abstract
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idea of presenting a lower price after the commitment to pay is received to
“the domain of self-serve systems and self-checkout processes,” that is not
sufficient to integrate the abstract idea into a practical application.
Moreover, the steps of the check-out process argued by Appellant are part of
the abstract idea itself; they are not additional elements to be considered
when determining whether claim 1 includes additional elements or a
combination of elements that is sufficient to integrate the judicial exception
into a practical application.
Appellant maintains that the claims include “additional elements” that
“implement the alleged abstract ideas with, or use alleged abstract ideas in
conjunction with, a terminal configured for electronic commerce or self-
checkout process, and such a terminal is evidently integral to each of the
claims.” Id. at 9. However, as described above, we find no indication in the
Specification that the operations recited in claim 1 improve the efficiency of
any computer or other device. Appellant does not explain how the claimed
“terminal” amounts to “a particular machine or manufacture.” As the
Examiner points out, “the presence of a terminal is only a means which is
applied to show the price to the user” (Ans. 4). The Specification does not
describe a new terminal or device. Instead, the Specification describes the
terminal in highly generic terms. See, e.g., Spec. ¶ 26 (“the user may present
a retail item at a POS [point-of-sale] system or its frontend (e.g., a self-
checkout terminal).” Thus, we find the focus of independent claim 1 is not
on any technological advancement, but rather on the implementation of the
abstract idea, “for which computers are invoked merely as a tool.” See
Enfish, 822 F.3d at 1336. Here, claim 1 requires performing a self-checkout
process “wherein the first price is not presented to the terminal until at least
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the commitment is received, and no sufficient information for arriving at the
first price is presented to the terminal until at least the commitment is
received.” Cf. Mortg. Grader, 811 F.3d 1314 (noting that claimed steps
“could all be performed by humans without a computer” including steps of
“borrower applies for a loan, a third party calculates the borrower’s credit
grading, lenders provide loan pricing information to the third party based on
the borrower’s credit grading, and only thereafter (at the election of the
borrower) the borrower discloses its identity to a lender”). Like the
borrower’s identity in Mortgage Grader, the first price is not disclosed until
a particular step in the process. And to the extent that the method of claim 1
may reduce “search costs incurred by consumers in their pursuit for lower
prices” (Appeal Br. 9), Appellant does not persuasively explain how that
amounts to a technological, rather than a business improvement. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(holding that claims are directed to “the abstract idea of offer-based price
optimization”).
Based on the above, we conclude that independent claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (alterations in original) (quoting
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Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
independent claim 1 is directed to an abstract idea.
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant argues that
claims 1, 19 and 20 are directed to an inventive process and
means of conducting a self-checkout via a terminal by at least
not presenting the final price for which the charge is to be made
before a commitment to pay for a higher price is received,
which is highly unconventional in the art at the time of the
invention.
Id. But, that argument is not persuasive at least because the limitation that
Appellant identifies as the inventive concept, i.e., “not presenting the final
price for which the charge is to be made before a commitment to pay for a
higher price is received” is part of the abstract idea; it is not an additional
element to be considered when determining whether claim 1 includes
additional elements or a combination of elements sufficient to amount to
significantly more than the judicial exception.
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It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (internal citation omitted)). In other
words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “a terminal configured for
electronic commerce,” “one or more databases,” and “an information system
comprising circuitry,” i.e., generic computer components used to perform
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generic computer functions (Final Act. 3; Ans. 7) — a determination amply
supported by, and fully consistent with the Specification (see, e.g., Spec.
¶¶ 22–26, 30, 44–47, 61, 67, 69–71).6
Appellant argues that the present claims are comparable to the patent-
eligible claims at issue in DDR Holdings (Appeal Br. 9–10). But, we can
find no parallel between the present claims and those in DDR Holdings.
In DDR Holdings, the claims were directed to retaining website
visitors, and in particular to a system that modified the conventional web
browsing experience by directing a user of a host website, who clicks an
advertisement, to a “store within a store” on the host website, rather than to
the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257–58.
The court determined that “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id. In particular, the claimed invention
manipulated interactions with the Internet “to yield a desired result – a result

6 The Berkheimer Memo, as described above, expressly directs that an
examiner may support the position that an additional element (or
combination of elements) is well-understood, routine or conventional with
“[a] citation to an express statement in the specification . . . that
demonstrates the well-understood, routine, conventional nature of the
additional element(s).” Berkheimer Memo at 3.
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that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” Id. at 1258 (Fed. Cir. 2014)
Appellant maintains here that “the unconventional combination or
arrangement recited in claims 1, 19 and 20 of otherwise conventional
elements that could be found in a self-checkout process, self-serve system,
or electronic commerce system is likewise inventive.” (Appeal Br. 10). Yet,
Appellant does not explain how claim 1 involves any unconventional
arrangement of the “terminal configured for electronic commerce,”
“information system,” and “one or more databases.” Unlike the situation in
DDR Holdings, there is no indication here that the claimed computer
components are used other than in their normal, expected, and routine
manner for receiving, analyzing, and displaying information. DDR
Holdings, 773 F.3d at 1256.
Appellant argues that the claimed “combination or arrangement
neither precludes others from continuing to practice in conventional ways,
nor preempts future alternatives or enhancements” (Appeal Br. 10).
Appellant’s preemption argument does not, however, alter our § 101
analysis. Preemption concerns are fully addressed and made moot where a
patent’s claims are deemed to disclose patent-ineligible subject matter under
the two-part framework described in Mayo and Alice. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Appellant further argues (Appeal Br. 12) that the situation here is
similar to that of the Board’s non-precedential decision in Ex Parte Hafner,
Appeal No. 2015-002200 (PTAB January 31, 2017). In that case, the Board
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noted that the Examiner had failed to consider claim limitations related to
charging electric vehicles. Appellant has not persuasively identified any
similar deficiency in the rejection before us.
Appellant further argues (Appeal Br. 12–14) that the claims before us
are similar to the claims in Classen Immunotherapies, Inc. v Biogen Idec,
659 F.3d 1057 (Fed. Cir. 2011). Yet, aside from conclusory statements,
Appellant offers no persuasive argument or technical reasoning to support
that assertion (id.).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and independent
claims 19 and 20, which fall with independent claim 1.
D. Dependent claims
Appellant argues that the Examiner erred in not assessing the
eligibility of each claim separately (Appeal Br. 16).
There is no dispute that examiners are to evaluate the patent eligibility
of each claim individually. But, consideration of each claim individually
does not require a separate written analysis for each individual claim.
Moreover, we agree with the Examiner (Ans. 10) that the claims here are all
directed to the same abstract idea, albeit at differing levels of specificity. Cf.
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are
directed to the same abstract idea, “addressing each claim of the asserted
patents [is] unnecessary.”).
Accordingly, we sustain the rejection of dependent claims 21–24, 30,
35, 36, 39, 40, and 43–50 under 35 U.S.C. § 101.
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Obviousness
Claims 1, 19–22, 24, 30, 35, 36, 39, 40, and 43–50
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claims 1, 19, and 20 under 35 U.S.C. § 103(a)
because the combination of Wiseman, Hecht, and Rampell fails to disclose
or suggest:
in relation to receiving the commitment, presenting the first price
to the terminal, wherein the first price is not presented to the
terminal until at least the commitment is received, and no
sufficient information for arriving at the first price is presented
to the terminal until at least the commitment is received.
Appeal Br. 20. More particularly, Appellant argues that “in Rampell, the
offer from the merchant, the so-called “primary offer,” is not the same as a
transaction offer that may come from an advertiser or transaction offer
offeror” (id. at 23). Appellant contends that in Rampell, “one or more
transaction offers are presented to the user upon the user’s commitment to
transact the primary offer, and the user is still required to accept any of
these add-on transaction offers, free or otherwise, in addition to the primary
offer committed by the user” (id.) (citing Figure 2 and ¶ 52 of Rampell).
According to Appellant, “there involves at least two offers (i.e., a primary
offer and one or more add-on transaction offers) in Rampell, and each
requires an explicit acceptance from the user” (id.). Appellant argues that, in
contrast to the multiple offers in Rampell, “there is only one offer recited
among the limitations of claims 1, 19 and 20” and “[t]he solution recited
therein pertains to a single offer . . .” (id. at 24).
Appellant’s argument is not persuasive at least because it is not
commensurate with the scope of the claim. As the Examiner points out
(Ans. 13), claim 1 does not recite any “offer” and claim 1 does not specify
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any particular entity that presents the first price to the user. Nothing in
claim 1 excludes a process that involves additional “add-on transaction
offers” presented by an advertiser or acceptance of such an additional offer
as disclosed in Rampell. Simply put, nothing in claim 1 limits the process to
only “a single offer” as argued by Appellant. Claim 1 merely requires that
“the first price is not presented to the terminal until at least the commitment
is received, and no sufficient information for arriving at the first price is
presented to the terminal until at least the commitment is received.”
Appellant does not dispute the Examiner’s finding that Rampell’s
transaction offers are presented after the commitment to pay. And the
Examiner’s finding in this regard is amply supported. For example, as
shown in Figure 2 of Rampell, a user commits to a primary offer in step 254,
where the user commits to the primary offer “such as by providing a form of
payment, or the like” (Rampell ¶ 52). Only after that commitment to pay
occurs, a transaction offer is presented to the user in step 264 (id.).
Appellant contends that “there is no evidence why a user in Rampell
would not know his or her benefits ahead of time for accepting a transaction
offer (i.e., an add-on offer to a primary offer), before ‘committing’ to it”
(Appeal Br. 25). Yet, Appellant misapprehends the rejection to the extent
that Appellant maintains that the “commitment to pay” equates to an
acceptance of a transaction offer. The Examiner finds the “commitment to
pay” in Rampell’s disclosure that “a user 154 may commit to transact the
primary offer 164 at step 254” (Final Act. 7) (quoting Rampell ¶ 52).
Subsequently, “the user may receive reimbursement against the current
transaction” by accepting a transaction offer (Rampell ¶ 347).
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In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1, 19, and 20 under 35 U.S.C. § 103(a). For the same
reasons, we also sustain the Examiner’s rejections of dependent claims 21,
22, 24, 30, 35, 36, 39, 40, and 43–50, which are not argued separately.
Claim 23
Claim 23 depends, indirectly, from independent claim 1. The
Examiner relies on paragraph 37 of Rajan as disclosing the subject matter of
claim 23 (Final Act. 17–18). According to the Examiner, it would have been
obvious for one of ordinary skill in the art to “reduce the credit after a period
of time has passed because it would be advantageous for a seller to provide a
time related discount based on the time a user buys a product as taught by
Rajan” (id. at 18).
Appellant disagrees and argues that “the value of the dynamic mobile
coupon [in Rajan] does not decline over time, but rather fluctuate[s]
periodically” (Appeal Br. 28). Appellant also argues that “the value of the
dynamic mobile coupon is not a pre-existing credit associated with a user
account, but rather something that changes independently of a user account”
(id.).
We agree with Appellant that Rajan does not disclose “determining
that a time period has passed since the time of associating the credit with the
account” as called for by claim 23. As Appellant points out, Rajan discloses
a determination based on time of day, and does not disclose any time period
that begins upon “associating the credit with the account.”
Accordingly, we do not sustain the Examiner’s rejection of claim 23.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 19–24,
30, 35, 36,
39, 40, 43–
50
101 Eligibility 1, 19–24,
30, 35, 36,
39, 40, 43–
50

1, 19–22,
24, 30, 35,
36, 39, 40,
43–50
103 Wiseman, Hecht,
Rampell
1, 19–22,
24, 30, 35,
36, 39, 40,
43–50

23 103 Wiseman, Hecht,
Rampell, Rajan
23
Overall
Outcome

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED