PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject Matter

Takeaway: The PTAB reversed an Examiner's rejection under 35 U.S.C. § 101 of claims to a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services. In part, the PTAB focused on the specific limitations of the claims to find that the claims do not preempt the abstract idea as defined by the Examiner. (Ex parte Barous, Appeal No. 2016-003320, PTAB, August 1, 2016).

Details:
Ex parte Barous
Appeal 2016-003320; Application No. 10/397,778; Technology Center 3600
Decided: August 1, 2016

In Ex parte Barous, the PTAB reversed an Examiner’s rejection of claims that recited utilizing a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services  under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

The PTAB identified claims 14 and 43 as being representative of the claimed subject matter:

14. A system for distributing third-party coupons by a retailer on the Internet, the Internet including a computer with a monitor and a printer, the third-party coupons being associated with goods or services of a third-party retailer, which goods or services are unrelated to the goods or services of the retailer and wherein the third-party retailer purchases advertising from the retailer, the system comprising:

a server configured to:

cause a graphical user interface (GUI) to be displayed on the monitor;

display an advertisement associated with a third-party coupon of the third-party retailer;

display a threshold value in the GUI;

calculate a value of a transaction based on a purchase of goods or services made from the retailer by a consumer;

display the value of the transaction in the GUI; and

enable the computer to print the third-party coupon when the value of the transaction exceeds the threshold value;

wherein the third-party coupon is redeemable for the goods or services of the third-party
retailer; and

wherein goods or services of the third-party retailer are unrelated to the goods or services sold by the retailer and therefore are unpurchaseable from the retailer.

43. A checkout system for a retail outlet for distributing third- party discount coupons associated with one or more third-party retailers comprising:

a printer; and

a point-of-sale register having a processor configured to:

add prices of items purchased by a shopper to reach a total sale ST;

compare the total sale ST of the shopper to a threshold sale value T; and

print one or more third-party coupons for use with a respective third-party retailer to purchase goods or services unrelated to the goods or services offered by the retail outlet if the total sale ST of the shopper exceeds the threshold sale value T.

 

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue, and the Appellant did not dispute the Examiner's characterization.  However, during its analysis, the PTAB disagreed with the Examiner and found that the Examiner's characterization of the abstract idea as being too broad.  Instead, the PTAB found that the claims were directed to "much more limited systems and methods distributing only coupons redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions."

Regarding step two, the Examiner stated "[t]he steps or acts performed (utilizing a processor) in independent method claims 27 and 50 are not enough to qualify as 'significantly more' than the abstract idea itself, since the claims are a mere instruction to apply the abstract idea. Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional."  The Appellant argued that, in the prior art, retailers commonly distributed coupons to enhance sales of goods or services provided by the retailer.  The Appellant contrasted the prior art with the claimed invention by stating the claimed subject matter:

entails systems and methods that enable a retailer to distribute coupons in a different way. For example, the retailer's point- of-sale (POS) register distributes a so-called third-party coupon that is redeemable for a discount on the goods or services sold by some other retailer. These goods or services of the third- party retailer are unrelated to the goods or services offered by the retailer distributing the coupon. The retailer's POS register is configured to print this coupon for a shopper when the register determines that the value of the goods or services purchased by the shopper from the retailer exceeds a threshold value. This enhances the retailer's revenue because the shopper increases his or her purchase from the retailer in order to receive discount coupons for a third-party retailer.

 

The Appellant further argued that the claims meet the specific threshold set forth in step two because the claims "add specific limitations to what is known in the art" because:

[i]t is unconventional for a retailer's POS register to print a coupon for the purchase of a third-party retailer's unrelated goods or services. It is especially unconventional for the retailer's POS register to condition doing this on a shopper's total purchase from the retailer exceeding a certain threshold sale value. None of this is routine or well understood. In fact, twelve years of prosecution reveals that nothing in the prior art teaches these additional features or even renders them obvious. Nothing of record demonstrates that this sort of activity has ever been previously engaged in by those in the field.

 

In its analysis, the PTAB relied upon the specific limitations of the claims to find that the claims do not preempt the "abstract idea" as defined by the Examiner.  To support this conclusion, the PTAB related upon the 2014 Interim Guidance on Patent Subject Matter Eligibility to identify that “specific limitations other than what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application” qualify under the "significantly more" exception of step two.  The PTAB went on to state that these guidelines require that if an Examiner decides the limitations do not add "significantly more" to the claim, the Examiner must identify the limitations and explanations provided as to why this is the case.  The PTAB found that the Examiner failed to provide persuasive arguments or evidence as to why the limitations were not "significantly more" (i.e., the argument “are generic computer functions (e.g. adding, comparing and printing) that are well-understood, routine and conventional activities previously known to the industry” did not suffice.)

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter finding that the claims did add "significantly more" to the abstract idea.

My two cents:  Appellants may look to contrast specific limitations within the claim with the prior art to illustrate that those claims limitations add "significantly more" to the alleged abstract idea.  Additionally, these types of limitations may be utilized to argue that the claimed subject matter is an "unconventional" arrangement of elements.