Filed: Sep. 02, 2021
Latest Update: Sep. 02, 2021
Case: 21-1719 Document: 17 Page: 1 Filed: 09/02/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: SAUL ELBAUM,
Appellant
______________________
2021-1719
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/948,447.
______________________
Decided: September 2, 2021
______________________
SAUL ELBAUM, Potomac, MD, pro se.
MICHAEL S. FORMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrew Hirshfeld. Also represented by MARY L.
KELLY, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA
YASMEEN RASHEED.
______________________
Before MOORE, Chief Judge, NEWMAN and O’MALLEY,
Circuit Judges.
PER CURIAM.
The Patent and Trademark Office rejected claims 48–
57 of Saul Elbaum’s patent application as patent ineligible
under 35 U.S.C. § 101. The Patent Trial and Appeal Board
Case: 21-1719 Document: 17 Page: 2 Filed: 09/02/2021
2 IN RE: ELBAUM
affirmed. Mr. Elbaum appeals. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A). We affirm.
I
Mr. Elbaum’s patent application number 15/948,447
relates to selling products or services on the internet using
physical retail locations. S.A. 28. 1 The specification de-
scribes the disclosed method as “enabling the sale of prod-
ucts or services which are available on the internet.”
S.A. 33. The disclosed method allows an internet seller to
provide a retail store with information about products or
services available on the internet. S.A. 28–29. The infor-
mation includes a website address and a code, wherein the
code is associated with that particular retail location.
S.A. 29. A customer entering the retail store who obtains
this information can then use the code to make a purchase
from an internet seller via a computer. Id. The computer
is comprised of a central processing unit, a main internal
memory, and output/input modules. S.A. 31. Because the
code is associated with the particular retail location, the
internet seller can then pay the retail location a finder’s
fee. S.A. 29–30.
Claim 48 is representative. Generally, that claim re-
cites a method of selling items in a walk-in store by provid-
ing information about items available for sale on the
internet, enabling internet sellers to recognize when a sale
is made, and then enabling the internet seller to pay the
walk-in store a finder’s fee for the sale:
48. A method of selling non-stocked items in addi-
tion to stocked items in a traditional walk-in store
comprising:
1 “S.A.” refers to the Supplemental Appendix filed
with the Director’s response brief.
Case: 21-1719 Document: 17 Page: 3 Filed: 09/02/2021
IN RE: ELBAUM 3
a) providing the store with photos of items which
are available for sale on the internet but not
stocked in the store;
b) providing the store with website addresses of the
sellers of the non-stocked items;
c) providing visitors to the store with discount
codes associated with the non-stocked items, said
discount codes applicable to purchases made di-
rectly from the sellers;
d) enabling the sellers of said non-stocked items to
recognize when a purchase is made with one of said
discount codes;
e) enabling the sellers of the non-stocked items to
identify the walk-in store in which the non-stocked
items were displayed; and
f) paying a finder’s fee from each seller of a non-
stocked item to the store.
II
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Samsung Elecs.
Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1380
(Fed. Cir. 2019). Eligibility under 35 U.S.C. § 101 is a ques-
tion of law, based on underlying facts. SAP Am., Inc. v.
InvestPic, LLC,
898 F.3d 1161, 1166 (Fed. Cir. 2018).
We apply the Supreme Court’s two-step framework to
determine patent eligibility. See Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 217 (2014). First, we deter-
mine whether the claim is directed to a “patent-ineligible
concept,” such as an abstract idea.
Id. If so, we 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.”
Id. at 221
(quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc.,
566 U.S. 66, 72, 79–80 (2012)). If the elements involve
Case: 21-1719 Document: 17 Page: 4 Filed: 09/02/2021
4 IN RE: ELBAUM
“well-understood, routine, [and] conventional activity pre-
viously engaged in by researchers in the field” they do not
constitute an inventive concept. Mayo,
566 U.S. at 72–73.
III
The Board assessed representative claim 48 under the
two-step Alice inquiry and held it was ineligible under
§ 101. At step one of the Alice inquiry, the Board deter-
mined that the claim recites “storing, receiving, analyzing,
and processing data” by any possible means without any
technological details for how to achieve the claimed results.
S.A. 8; see also S.A. 10. The Board further determined that
the claim is directed to the concept of “managing sales
transaction activity,” specifically the economic act of pay-
ing a finder’s fee for a purchase, “which is an act ordinarily
performed in the stream of commerce.” S.A. 9; see also
S.A. 10 (explaining the claim is directed to a “method of or-
ganizing human activity because managing sales activity
is a commercial interaction”). The Board concluded that
the claim is directed to an abstract idea, a commercial
transaction that amounts to a method of organizing human
activity. S.A. 11–12. 2
At step two of the Alice inquiry, the Board determined
that the claim elements recite purely conventional com-
puter functions of storing, receiving, analyzing, and pro-
cessing data. S.A. 15. Because the claim recites no more
than the abstract idea, the Board concluded the claim
lacked an inventive concept. S.A. 16.
We agree with the Board’s analysis. The plain lan-
guage of claim 48 recites a method for enabling an internet
seller to pay a finder’s fee to a retail store when a customer
2 Mr. Elbaum only argues the Board erred in con-
cluding the claim is directed to an abstract idea. He con-
cedes that the claim is not directed to any improvement in
computer functionality. Appellant’s Informal Br. 9.
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IN RE: ELBAUM 5
finds the internet seller’s product through advertising in
the retail store. Accordingly, the claim is directed to an
abstract idea, specifically a method of providing infor-
mation and allowing customers to utilize that information
to engage in a commercial transaction. See Content Extrac-
tion & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (“[C]laims directed to
the mere formation and manipulation of economic relations
may involve an abstract idea.”).
Regarding Alice step two, nothing in the claim recites
an inventive concept to transform the abstract idea into pa-
tent-eligible application. If anything, the claim recites ge-
neric computer functions, which the specification describes
are carried out by conventional computer components.
S.A. 31. Mr. Elbaum argues that the claim elements of
providing photos, website addresses, and discount codes
motivate customers to return to traditional retail stores
and that these additional elements provide an inventive
concept. Appellant’s Informal Br. 9. But these claim ele-
ments merely recite the abstract idea itself. See Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir.
2019) (“The abstract idea itself cannot supply the inventive
concept, no matter how groundbreaking the advance.”).
Accordingly, we agree with the Board that the claim does
not include an inventive concept that would render it pa-
tent eligible. Alice, 573 U.S. at 223–26.
IV
We have considered Mr. Elbaum’s other arguments
and find them unpersuasive. Because we agree with the
Board that the claims are not patent-eligible, we affirm.
AFFIRMED
COSTS
No costs.
