In a recent Patent Trial and Appeal Board (PTAB) decision, 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
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.
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.
[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.