NOTE: This disposition is nonprecedential.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 

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2 IN RE: ELBAUM

affirmed. Mr. Elbaum appeals. We have jurisdiction under 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 describes the disclosed method as “enabling the sale of products 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 information 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 recites a method of selling items in a walk-in store by providing 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 addition 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. 

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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 directly 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 nonstocked 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 question 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 determine 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 

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“well-understood, routine, [and] conventional activity previously 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 determined 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 paying 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 organizing 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 computer functions of storing, receiving, analyzing, and processing 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 language 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 concluding the claim is directed to an abstract idea. He concedes 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 information and allowing customers to utilize that information 

to engage in a commercial transaction. See Content Extraction & 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 patent-eligible application. If anything, the claim recites generic 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 elements 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 patent 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.

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