Lee, Adam et al.

Patent Trials and Appeals Board

Sep 11, 2019

13470097 - (D) (P.T.A.B. Sep. 11, 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.
13/470,097 05/11/2012 Adam Lee BOKU-P071 3232
17169 7590 09/11/2019
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
ariana@matterlightip.com
stephen@matterlightip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM LEE and AMIT GAUR1
___________

Appeal 2018-008244
Application 13/470,097
Technology Center 3600

____________

Before CARL W. WHITEHEAD JR., JAMES B. ARPIN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1–10, 16–26 and
32 under 35 U.S.C. § 134(a). Appeal Brief 13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Introduction
The invention is directed to a “transactions network and to a method
and system for managing electronic transactions.” Specification ¶ 1.

1 Appellants identify Boku, Inc., as the real party-in-interest. Appeal Brief 3.
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Representative Claim
1. A server computer system for combining data and then
bidding on said data, comprising:
a processor;
a computer-readable medium connected to the processor;
a network interface device connected to the processor; and
a set of instructions on the computer-readable medium, the set of
instructions being executable by the processor and including:
a data store;
transaction data of consumers stored in the data store;
a plurality of merchant accounts stored in the data store, each
merchant account having a merchant account identifier;
a merchant account management system receiving an offer
entry over the network interface device from each of a plurality of merchant
computer systems, the merchant offer being stored in the data store in
association with the merchant account having the respective merchant
account identifier;
a plurality of consumer accounts stored in the data store, each
consumer account having a respective consumer account identifier;
a consumer account identifier push module transmitting the
consumer account identifier of the consumer account via a network interface
device to a network computer system;
a transaction data retrieval module retrieving transaction data
from the network computer system, the transaction data that is received from
the network computer system including the consumer account identifier and
being received due to transmission of the consumer account identifier via a
network interface device to the network computer system;
a consumer account setup module receiving preferences and
details from a consumer computer system and storing the preferences and
details in the consumer account having the consumer account identifier;
a mapping module storing the transaction details received from
the network computer system in the consumer account having the consumer
account identifier at the server computer system;
a consumer profile building module building a consumer profile
for the consumer account having the consumer account identifier based on
the transactions stored in the consumer account having the consumer
account identifier and the preferences and details of the consumer account
having the consumer account identifier;

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a bulk transaction data retrieval module receiving bulk
transaction data from the network computer system including transaction
data that is not associated with any consumer account identifier transmitted
from the server computer system to the network computer system; and
a bulk profile building module building a bulk profile utilizing
the bulk transaction data including the transaction data that is not associated
with any consumer account identifier retrieved from the network computer
system;
a target profile attribute system, the consumer profile for the
consumer account having the consumer account identifier being fed into the
target profile attribute system and the bulk profile including the transaction
data that is not associated with any consumer account identifier being fed
into the target profile attribute system;
a campaign management system transmitting at least a
representation of the transaction data based on a combination of the
preferences and details of the consumer profile for the consumer account
having the consumer account identifier and the bulk profile including the
transaction data that is not associated with any consumer account
identifier in the target profile attribute system over the network interface
device to each of a plurality of the merchant computer systems, receiving a
bid from each of a plurality of the merchant computer systems for the
transaction data, comparing the bids, and associating an activation level of at
least one of the offer entries based on the comparison of the bids; and
an offer push module transmitting the offer entry over the
network interface device to at least one consumer device, the transmission of
the offer entry being dependent on the activation level of the offer entry.
Rejections on Appeal
Claims 1–10, 16–26 and 32 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent ineligible subject matter.
Final Action 2–7.
Claims 1–10, 16–26 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carlson (US Patent Application Publication
2010/0274625 A1; published October 28, 2010), Zollino (US Patent
Application Publication 2008/0086365 A1; published April 10, 2008) and
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Purvis (US Patent Application Publication 2013/0013502 A1; published
January 10, 2013. Final Action 7–15.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed January 23, 2018), the Final Action
(mailed November 30, 2017) and the Answer (mailed May 18, 2018), for the
respective details.
35 U.S.C. § 101 Rejection
The Examiner determines, “Claims 1–10, 16–26 and 32 are rejected
under 35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., an abstract idea) without ‘significantly more.’” Final Action
2; see Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014)
(describing the two-step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Memorandum”). Under the Memorandum,
the Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., (a) mathematical concepts, (b) certain
methods of organizing human activity such as a
fundamental economic principles and practice,
commercial or legal interactions, managing personal
behavior, relationships, interpersonal interactions, (c)
mental processes; and

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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. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See Memorandum.
Appellants contend, “the claims at issue are not directed to an
abstract idea within the meaning of Alice. Rather, they are directed to a
specific improvement to the way computers operate, embodied in consumer
preferences combined with non-consumer bulk data profiles for target
profiling and distribution to merchants for bidding.” Appeal Brief 20–
21.
Appellants’ argument is not persuasive. Instead, we agree with the
Examiner’s determination that the claims are directed to an abstract idea.
Final Action 2.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
The Specification discloses, “[T]he invention provides a server
computer system for managing electronic transactions, including a
processor, a computer-readable medium connected to the processor, a
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network interface device connected to the processor and a set of instructions
on the computer-readable medium, the set of instructions being executable
by the processor.” Specification ¶ 4.
Claim 1 recites a “server computer system for combining data and
then bidding on said data” wherein:
1. a merchant account management system receiving an offer entry over
the network interface device from each of a plurality of merchant computer
systems, the merchant offer being stored in the data store in association with
the merchant account having the respective merchant account identifier;
2. a transaction data retrieval module retrieving transaction data
from the network computer system, the transaction data that is received from
the network computer system including the consumer account identifier and
being received due to transmission of the consumer account identifier via a
network interface device to the network computer system;
3. a consumer profile building module building a consumer profile
for the consumer account having the consumer account identifier based on
the transactions stored in the consumer account having the consumer
account identifier and the preferences and details of the consumer account
having the consumer account identifier;
4. a target profile attribute system, the consumer profile for the
consumer account having the consumer account identifier being fed into the
target profile attribute system and the bulk profile including the transaction
data that is not associated with any consumer account identifier being fed
into the target profile attribute system;
5. receiving a bid from each of a plurality of the merchant computer
systems for the transaction data, comparing the bids, and associating an
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activation level of at least one of the offer entries based on the comparison
of the bids; and
6. an offer push module transmitting the offer entry over the network
interface device to at least one consumer device, the transmission of the
offer entry being dependent on the activation level of the offer entry.
These steps comprise fundamental economic principles or practices
and/or commercial or legal interactions; thus, the claim recites the abstract
idea of “certain methods of organizing human activity,” such as advertising,
marketing, and sales activities. See Memorandum, Section I (Groupings of
Abstract Ideas); see also Specification ¶ ¶4-5; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (concluding
that claimed concept of “offer-based price optimization” is an abstract idea
“similar to other ‘fundamental economic concepts’ found to be abstract ideas
by the Supreme Court and this court”); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed Cir. 2014) (holding that claim “describe[ing] only the
abstract idea of showing an advertisement before delivering free content” is
patent ineligible).
Therefore, we conclude the claims recite an abstract idea pursuant to
Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(1)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).
Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” It is noted 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
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the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Memorandum, Section
III(A)(2).
Appellants contend, “[T]he plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Appeal Brief 20.
Appellants argues, “[T]he claims at issue are not directed to an abstract idea
within the meaning of Alice. Rather, they are directed to a specific
improvement to the way computers operate, embodied in consumer
preferences combined with non-consumer bulk data profiles for target
profiling and distribution to merchants for bidding.” Appeal Brief 20–
21. Appellants further contends, “[T]he claims are directed to an
improvement of an existing technology is bolstered by the specification’s
teachings that the claimed invention achieves other benefits over
conventional systems, such as consumer preferences combined with non-
consumer bulk data profiles for target profiling and distribution to
merchants for bidding.” Appeal Brief 24.
In McRO2, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allowed
computers to produce accurate and realistic lip synchronization and facial

2 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed.
Cir. 2016).

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expressions in animated characters that previously could only be produced
by human animators; and the rules were limiting because they defined
morph weight sets as a function of phoneme sub-sequences. McRO, 837
F.3d at 1313.
We do not find Appellants’ arguments persuasive. We find no
evidence of record here that the present situation is like the one in McRO
where computers had been unable to make certain subjective determinations,
e.g., regarding morph weight and phoneme timings, which could only be
made prior to the claimed invention by human animators. The Background
section of one of the patents at issue in McRO, Rosenfeld (US Patent
6,307,576 B1; issued Oct. 23, 2001), includes a description of the admitted
prior art method and the shortcomings associated with that prior method.
See McRO, 837 F.3d at 1303–06. There is no comparable discussion in
Appellants’ Specification or elsewhere of record.
In addition, we find Appellants’ claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system. See, e.g., DDR
Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer
processor for serving “composite web page” were patent eligible because
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259
(Fed. Cir. 2017) (holding that claims directed to “an improved computer
memory system” having many benefits were patent eligible).
The recited limitations do not reflect an improvement in the
functioning of a computer or other technology or technical field. See
Memorandum, 84 Fed. Reg. at 55; cf. Trading Techs. Int’l, Inc. v. IBG LLC,
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No. 2017-2257, 2019 WL 1716242, at *3 (Fed. Cir. Apr. 18, 2019) (“This
invention makes the trader faster and more efficient, not the computer. This
is not a technical solution to a technical problem.”). Further, we do not find
Appellants’ arguments persuasive because the claims utilize general purpose
hardware (processor, computer readable medium, network interface device
and networking) as a tool to market, advertise and manage electronic
transactions. See Specification ¶ ¶ 4–5; see also Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (“[W]e find it relevant to
ask whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea . . . the focus of the
claims is on the specific asserted improvement in computer capabilities (i.e.,
the self-referential table for a computer database) or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.”).
Subsequently, we detect no additional element (or combination of
elements) recited in Appellants’ representative claim 1 that integrates the
judicial exception into a practical application. See Memorandum,
Section III(A)(2). For example, Appellants’ claimed additional elements
(e.g., processor, computer readable medium and network interface device)
do not: (1) improve the functioning of a computer or other technology;
(2) are not applied with any particular machine (except for generic
hardware); (3) do not effect a transformation of a particular article to a
different state; and (4) are not applied in any 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(a)–(c), (e)–(h).
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Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See Memorandum,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
We find the claim does not include a specific limitation or a
combination of elements that amounts to significantly more than the judicial
exception itself. See Memorandum, Section III(B)(Step 2B: If the Claim Is
Directed to a Judicial Exception, Evaluate Whether the Claim Provides an
Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software,
Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (“the ‘inventive concept’ cannot
be the abstract idea itself”). Other than the abstract idea itself, the remaining
claim elements only recite generic computer components that are well-
understood, routine, and conventional. See Final Action 2, 5–7;
Specification ¶ ¶ 4–5; Alice, 573 U.S. at 226.
Accordingly, we conclude claims 1–20 are directed to a fundamental
economic practice, which is one of certain methods of organizing human
activity identified in the Memorandum and thus an abstract idea. Further,
the claims do not recite limitations that amount to significantly more than
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the abstract idea itself. We sustain the Examiner’s 35 U.S.C. § 101 rejection
of claims 1–10, 16–26 and 32.
35 U.S.C. § 103 Rejection
Appellants argue that Purvis fails to address the noted deficiency of
the Carlson/Zollino combination as set forth by the Examiner. Appeal Brief
36; see Final Action 12.
Appellants argue:
Purvis thus fails to teach or suggest the same limitations that are
absent from Carlson and Zollino, namely that preferences and
details for the consumer profile for the consumer account having
the consumer account identifier can be combined with a bulk
profile including the transaction data that is not associated with
any consumer account identifier for purposes of a campaign
management system as claimed.
Appeal Brief 37.
Appellants’ Specification discloses:
The bulk transaction data push module 506 initially
transmits details of all the transactions in the transaction details
data store 504 to the server computer system 12. The only data
that is removed are the PANs that are used for the respective
transactions. As such, at 512, the bulk transaction data push
module 506 transmits bulk data including the time, amount,
merchant account ID and location of each transaction to the
server computer system 12.
Specification ¶ 60.
The Examiner relies3 upon Zollino to disclose claim 1’s limitation of
“a bulk transaction data retrieval module receiving bulk transaction data
from the network computer system including transaction data that is not

3 See Final Action 11.
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associated with any consumer account identifier transmitted” wherein
Zollino ¶ 56 discloses:

The bulk transaction data file may comprise the transaction
records of the complete (or of a predetermined time period)
history of each of a plurality of customers’ card swipes for a
multiplicity of customers, and will typically contain such data
fields as merchant name, merchant ID code (i.e. a unique code
that enables a debit or credit card transaction to be properly
credited to a particular merchant), store number (if available),
industry code (e.g., merchant customer code (MCC), North
American industry classification system (NAIC) codes, or the
like), merchant address (city or DMA code, state, zip code), date
of transaction and dollars spent, and preferably anonymous
identifying information for the customer to whom each
transaction relates.
The Examiner finds, “[T]he reference of Purvis discloses at [00021] a
combination of preferences and details.” Answer 9. Purvis discloses:
Account information 54 represents any information regarding
user and/or commercial accounts handled by financial institution
device 14. For example, account information 54 includes account
numbers, nicknames for accounts, account identifiers associated
with an account, balance information of an account, limits of an
account, disclaimers associated with an account, customer
preferences, any other suitable data, or any suitable combination
of the preceding.
Purvis ¶ 21.
We do not find Appellants’ arguments persuasive. “As our precedents
make clear, however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 418 (2007). We agree with the Examiner’s findings that the combined
teachings of Carlson, Zollino, and Purvis discloses the recited systems and
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methods because the disputed limitation only requires transmitting a
combination of various data content associated with electronic transactions
in which the cited references discloses. See Final Action 11–12.
Accordingly, we sustain the Examiner’s obviousness rejection of claim 1, as
well as, independent claim 17 and dependent claims 2–10, 16, 18–26 and 32
not argued separately with distinction. See Appeal Brief 38.
DECISION
The Examiner’s patent ineligible subject matter rejection of claims 1–
10, 16–26 and 32 is affirmed.
The Examiner’s obviousness rejection of claims 1–10, 16–26 and 32
is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED