Michael Tienken

Patent Trials and Appeals Board

Sep 4, 2019

14036647 - (D) (P.T.A.B. Sep. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/036,647 09/25/2013 Michael TIENKEN 0502-006 7034
113648 7590 09/04/2019
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL TIENKEN
____________

Appeal 2018-006851
Application 14/036,647
Technology Center 3600
____________

Before MAHSHID D. SAADAT, JENNIFER L. McKEOWN, and
JASON M. REPKO, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is THE MEYERS
PRINTING COMPANIES, INC. App. Br. 3.
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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention relates “[s]ystems and
methods of distributing promotions involve distributing unique Uniform
Resource Locators (URLs) that can be redeemed as part of a promotion.”
Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method, comprising:
receiving, by a promotion server from a user’s device, a
Uniform Resource Locator (URL)
searching, by the promotion server, a database of unique
URLs for a match with the received URL, wherein each of the
unique URLs is associated with a unique promotional reward;
determining, by the promotion server, the unique
promotional reward associated with the received URL; and
providing, by the promotion server, the user's device with
a web page containing the unique promotional reward or a
mobile application as the unique promotional reward.

THE REJECTIONS
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Final Act. 6–9.
The Examiner rejected claims 1, 2, and 4–20 under 35 U.S.C. § 103 as
unpatentable over Gillenson (US 2010/0250356 A1; Sept. 30, 2010), Kogure
(US 2008/0027813 A1; Jan. 31, 2008), and Gilman (US 2010/0174596 A1;
July 8, 2010). Final Act. 10–17.
The Examiner rejected claim 3 under 35 U.S.C. § 103 as unpatentable
over Gillenson, Kogure, Gilman, and Vidya Sagar (US 2007/0043879 A1;
Feb. 22, 2007; “Vidya”). Final Act. 17–18.

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ANALYSIS
THE § 101 REJECTION
Claims 1–20
Based on the record before us, Appellant has not persuaded that the
Examiner erred in rejecting claims 1–20 as directed to patent ineligible
subject matter.
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 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. 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 Supreme Court’s two-step 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);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
Supreme 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 Supreme 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. (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 (citation omitted). “A claim
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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. (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.
The PTO recently published revised guidance on the application of
section 101. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
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); 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.
2018)).
See Memorandum, 84 Fed. Reg. at 52, 55–56. 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
are 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.
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See Memorandum, 84 Fed. Reg. at 56.
Analysis – Revised Step 1
In step one we consider whether the claimed subject matter falls
within the four statutory categories of patentable subject matter identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
The claimed invention here recites a process including a number of steps.
Accordingly, the claimed invention falls within the process category.
Analysis – Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claimed invention includes
“receiving, by a promotion server from a user’s device, a Uniform Resource
Locator (URL);” “searching, by the promotion server, a database of unique
URLs for a match with the received URL, wherein each of the unique URLs
is associated with a unique promotional reward;” “determining, by the
promotion server, the unique promotional reward associated with the
received URL;” and “providing, by the promotion server, the user's device
with a web page containing the unique promotional reward or a mobile
application as the unique promotional reward.” Claim 16 additionally
recites “wherein the URL is a multi-use URL, the method further
comprising: incrementing, by the promotion server, a number of
redemptions of a URL in the database matching the received URL, wherein
the number of redemptions of the URL are limited to a predetermined
number of redemptions.”
At a high level, the claimed invention recites using a URL to
determine a unique promotional reward to provide to a user. The claimed
invention, thus, recites commercial interactions, e.g., providing advertising
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or promotions to users. See also Spec. ¶ 1 (discussing how “[v]arious types
of promotions have been used to drive sales of products and services.”). As
such, the claimed invention recites certain methods of organizing human
activity, which is an abstract idea. See, e.g., Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (finding the claimed “idea of
showing an advertisement before delivering free content” abstract);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015) (finding that “tailoring content based on the viewer’s
location or address” or navigation data was abstract and further noting that
“[t]here is no dispute that newspaper inserts had often been tailored based on
information known about the customer—for example, a newspaper might
advertise based on the customer’s location. Providing this minimal
tailoring—e.g., providing different newspaper inserts based upon the
location of the individual—is an abstract idea.”); see also Ans. 3 (identifying
the claimed abstract idea as “correlating online user purchase activity with
location information, which amounts to a certain method of organizing
human activity.”). With respect to claim 16, the claimed invention also
tracks the use of the promotion by incrementing a number. Incrementing a
number is a mathematical calculation and, thus, claim 16 recites a
mathematical concept, which is an abstract idea.
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by: (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
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The claimed invention additionally recites “a promotion server” and a
“user device.” We determine that these limitations individually and with the
claimed invention in combination does not integrate the exception into a
practical application. As the Examiner explains, the claimed invention does
no “more than collect, store, display, and compare data to optimize a firm’s
marketing objective on a generic computer.” Final Act. 4. Further, “[t]he
method, system, and/or computer readable medium claims do not, for
example, purport to improve the functioning of the computer itself. Nor do
they effect an improvement in any other technology or technical field.” Id.
Appellant, in particular, alleges that the claimed invention is similar to
the claims found eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). Namely, Appellant argues that:
In DDR Holdings, the claims were “directed to automatically
generating and transmitting a web page in response to activation
of a link using data identified with a source web page having
certain visually perceptible elements.” Similarly, the pending
claims are directed to providing a web page, which necessarily
involves generating and transmitting the web page, in response
to activation of a URL using visually perceptible data obtained
from a user’s device.
App. Br. 14 (citations omitted).
We disagree. The Federal Circuit explains that the claims at issue in
DDR Holdings specified
how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click
of a hyperlink. Instead of the computer network operating in its
normal, expected manner by sending the website visitor to the
third-party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
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product information from the third-party and visual “look and
feel” elements from the host website. When the limitations of
the [disputed claims] are taken together as an ordered
combination, the claims recite an invention that is not merely the
routine or conventional use of the Internet.
DDR Holdings, 773 F.3d at 1258–59. In other words, the claimed invention
in DDR Holdings did not merely use the internet but rather provided a novel
way for how interactions on the internet operated. In contrast, the claimed
invention uses the computer as tool to receive URL data, compare it to a
database to find corresponding promotion, and transmit the corresponding
promotion along with a webpage. As such, the claimed invention does not
provide a solution to a technical problem and merely uses the computer as a
tool to implement the abstract idea. See, e.g., Spec. ¶¶ 2–3 (describing the
known process of supplying promotional codes to users and merely
replacing the provided code with a URL).
With respect to claim 2, we note that the steps of transmitting data,
such as receiving a URL, and processing data, such as comparing data, are
insignificant extra-solution activity. Specifically, the claimed invention’s
receiving and processing data is merely conventional data gathering and
analysis. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the record
before us, we determine that the claimed invention is not integrated into a
practical application.
Analysis – Revised Step 2B
Under step 2B, we determine that the claimed invention does not add
significantly more to the abstract idea.
As the Examiner explains, the claimed limitations of
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[u]sing a computer to obtain data, using data to identify other
data, and filtering data are some of the most basic functions of a
computer. All of these computer functions are well-understood,
routine, conventional activities previously known to the
industry. In summary, each step does no more than require a
generic computer to perform generic computer functions.
Final Act. 4. See also Elec. Power Grp., 830 F.3d at 1355 (finding that use
of “conventional computer, network, and display technology for gathering,
sending, and presenting the desired information” does not add significantly
more to the claimed abstract idea); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(discussing that data collection, recognition, and storage is well-known);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“[T]he incidental use of a computer to perform the [claimed process]
does not impose a sufficiently meaningful limit on the claim’s scope.”).
We note that Appellant also argues that the Examiner only consider
claim 1 and fails to consider the limitations of dependent claims 3–15 and
17–20. Appellant, however, fails to explain persuasively how any
limitations alone, or in combination, implements the recited abstract idea
into a practical application or adds significantly more. Appellant’s blanket
assertions, without more, are unavailing.
Therefore, based on the record before us, we are not persuaded of
error in the Examiner’s determination that the appealed claims are directed
to patent ineligible subject matter. Accordingly, we affirm the Examiner’s
decision to reject claims 1–20 as directed to patent ineligible subject matter.

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THE § 103 REJECTION BASED ON GILLENSON, KOGURE, AND GILMAN
Claims 1, 2, and 4–20
Based on the record before us, we are persuaded that the Examiner
erred in finding that claims 1, 2, and 4–20 are unpatentable over Gillenson,
Kogure, and Gilman.
As an initial matter, we note that the Examiner does not identify each
limitation of the claimed invention and explain how the cited references
teach that particular limitation. Instead, the Examiner generally describes
that Gillenson teaches a system of delivering unique promotional awards,
but does not “rely entirely on the use of URL’s for the comparisons and
additional steps.” Final Act. 10 (citations omitted). The Examiner refers to
Kogure as disclosing “a system of distributing advertisements based on URL
monitoring, comparing, storing (database) in a manner similar to the
Applicant” and Gillman as teaching “a method of mobile content and
advertisement distribution that will initiate a download of a mobile
application initiated by a URL.” Id. at 10–11 (citations omitted). The
Examiner then points to “the competitive business climate” as “a profit-
driven motive” as to why the cited combination would be obvious. Id. at 12.
Appellant argues that there is insufficient evidence in the record to
support the conclusion of obvious (App. Br. 16) and further argues that the
Examiner’s “generic motivation relied upon for the obviousness rejections
does not provide evidence that one skilled in the art would have made the
proposed modifications” to render the claimed invention obvious. App. Br.
25. We agree. As Appellant points out, generally identifying “a profit
driven motive to maximize the profitability of goods and services that are
provided or marketed to customers” does not “explain how Kogure's
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disclosure of advertisement display [with URLs printed on fuel cartridges]
would be incorporated into Gillenson. Id. at 17.
Moreover, it is not clear how the Examiner is modifying the prior art
to arrive at the claimed invention. As noted above, the Examiner only
generally discusses each cited prior art reference, for example, pointing out
similarities with the claimed invention. See, e.g., Final Act. 10–12. In order
for us to sustain the Examiner’s rejection, we would need to resort to
impermissible speculation or unfounded assumptions or rationales to supply
deficiencies in the factual bases of the rejection before us. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). As such, based on the record before us,
we are persuaded of error.
Accordingly, we reverse the Examiner’s decision to reject claims 1, 2,
and 4–20 as unpatentable over Gillenson, Kogure, and Gilman.

THE § 103 REJECTION BASED ON GILLENSON, KOGURE,
GILMAN, AND VIDYA
Claim 3
Based on the record before us, we are persuaded that the Examiner
erred in finding that claim 3 are unpatentable over Gillenson, Kogure, and
Gilman. For the reasons discussed above, we similarly find that the
Examiner fails to sufficiently support the rejection of claim 3. As such, we
reverse the rejection.

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DECISION
We affirm the Examiner’s decision to reject claims 1–20 as directed to
patent ineligible subject matter, but reverse the Examiner’s decision to
rejection claims 1–20 as obvious over the cited prior art combinations.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED