Ex Parte BernsteinDownload PDFPatent Trial and Appeal BoardDec 19, 201612692930 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 304707-6 3050 EXAMINER MUNSON, PATRICIA H ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 12/692,930 01/25/2010 ROBERT BERNSTEIN 12/19/201624628 7590 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 12/19/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT BERNSTEIN Appeal 2014-008690 Application 12/692,93 01 Technology Center 3600 Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Bernstein (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. 1 The Appellant identifies Robert Bernstein as the real party in interest. App. Br. 2. Appeal 2014-008690 Application 12/692,930 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of identifying potential customers for delivery of promotional materials, such method comprising: a programmed transaction processor tracking purchases of consumers based upon summaries of purchases from consumers and vendors and upon preferences and buying habits provided by consumers; a third-party database receiving summaries of purchases from the transaction processor, the received summaries forming data files about customers where the third-party database is separate from any vendor; a programmed central processing unit of a vendor forming a customer profile for cross-promoting a specific product of the vendor that is functionally related in a context of use to a product sold by another of the vendors by targeting delivery of the promotional materials to potential customers, the customer profile including at least, an identifier of the product of the other vendor and a locale of purchase; a programmed comparator of the database of the third party searching the formed files within the database and identifying customers which match the customer profile within the database of the third party and that are making purchases in the locale of the vendor; and a programmed processor forwarding promotional materials to the identified customers, the programmed processor detecting a purchase by a customer of the identified customers and printing out the promotional materials at a point of sale of the purchase. 2 Appeal 2014-008690 Application 12/692,930 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Katz 2002/0077901 A1 June 20, 2002 Oytac 2003/0018613 A1 Jan. 23,2003 Bezos 7,107,227 B1 Sept. 12,2006 The following rejections are before us for review: 1. Claims 1—20 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. 2. Claim 1 is rejected under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 3. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Oytac, Katz, and Bezos. ISSUES Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. §101 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claim 1 under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention? Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. §103 (a) as being unpatentable over Oytac, Katz, and Bezos? 3 Appeal 2014-008690 Application 12/692,930 ANALYSIS The rejection of claims 1—20 under 35 U.S.C. §101 as being directed to non- statutory subject matter. The Appellant argued these claims as a group. See Reply Br. 2. We select claim 1 as the representative claim for this group, and the remaining claims 2—20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014), identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355. The Examiner found the claimed subject matter directed to targeted marketing. Ans. 10. The Examiner found targeted marketing to be a fundamental economic practice and thus concluded the claimed subject matter was directed to an abstract idea. Ans. 10. See Alice at 2356—57. Step two of the Alice framework is “a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 2355. In that regard, the Examiner found the claim elements involved a “generically recited programmed processor.” Ans. 10. Thus, according to the Examiner, [t]he claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful 4 Appeal 2014-008690 Application 12/692,930 limitations beyond generally linking the use of an abstract idea to a particular technological environment. Ans. 10. As a result the Examiner determined that the claimed subject matter is judicially-excepted from patent eligibility under § 101. The Appellant argues, in total, that [(a)] [t]he fact that the claims could possibly be constructed to include an abstract idea is not relevant, [(b)] What is relevant is that the claims are directed to a very specific set of steps performed by processors programmed in a very specific way. [(c)] Accordingly, the claims are directed to very specific embodiments that are well-defined in their scope and content. As such, the new rejections are improper and should be overturned. Reply Br. 2. The argument is unpersuasive as to error in the rejection, (a) That the claims could possibly be constructed to include an abstract idea is indeed relevant. See Alice, (b) While the fact that claims are directed to a very specific set of steps performed by processors programmed in a very specific way would be relevant to a question of their patent-eligibility, in this case the steps are insufficient to ensure that in practice the method amounts to significantly more than the abstract idea of targeting marketing itself. Claim 1 sets out various computer elements and corresponding functions. No evidence has been put forward that the invention is rooted in computer technology. Rather, the Specification indicates that said elements are common elements of a conventional computer system (see, e.g., Specification 4, “The third-party database 28 may be any database”). It is the scheme for identifying potential customers for delivery of promotional materials that is at the root of the invention, (c) While the claims may be 5 Appeal 2014-008690 Application 12/692,930 directed to very specific embodiments that are well-defined in their scope and content, this does not disturb the determination that in practice the method does not amount to significantly more than the abstract idea of targeted marketing itself. The rejection is sustained. The rejection of claim 1 under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. According to the Examiner, there is no antecedent basis for “the locale of the vendor” (claim 1), notwithstanding that earlier in the claim “a locale of purchase” is recited (as the Appellant has argued; see App. Br. 8). The Examiner deems “locale of the vendor” and “locale of purchase” to be different things that do not “equate” to each other. Ans. 11. Be that as it may, the question is one of indefmiteness, not explicit antecedence. Explicit antecedence is not required. Antecedent basis can be present by implication. See SlimfoldMfg. Co. v. KinkeadIndus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). “Lack of an antecedent basis in a claim could render it invalid under 35 U.S.C. § 112.” In reAltenpohl, 500 F.2d 1151, 1156 (CCPA 1974) (emphasis added). “In Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001) the court held that despite the absence of explicit antecedent basis, ‘If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.’” See Energizer Holdings Inc. v. United States ITC, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). Here the Examiner has not explained whether the scope of claim 1 would be 6 Appeal 2014-008690 Application 12/692,930 reasonably ascertainable by those skilled in the art. For that reason, the rejection is not sustained. The rejection of claims 1—20 under 35 U.S.C. §103 (a) as being unpatentable over Oytac, Katz, and Bezos. The Appellant argues that the cited combination of references does not disclose or lead one of ordinary skill in the art to a programmed central processing unit of a vendor forming a customer profile for cross-promoting a specific product of the vendor that is functionally related in a context of use to a product sold by another of the vendors by targeting delivery of the promotional materials to potential customers, the customer profile including at least, an identifier of the product of the other vendor and a locale of purchase; a programmed comparator of the database of the third party searching the formed files within the database and identifying customers which match the customer profile within the database of the third party and that are making purchases in the locale of the vendor (claim 1; the other independent claims 7 and 15 include similar limitations). The Examiner found that Katz (pages 10, 11, 17, 22 and 23) discloses said claim limitations. Final Rej. 5. According to the Examiner, “Katz discloses that a vendor forming a consumer profile includes a purchase history, the location where the product was purchased and location of the vendor, identifying relevant products to promote, identifying similar products and complimentary products.” Ans. 11. But this does not establish that Katz in fact discloses forming a customer profile for “cross-promoting a specific product of the vendor that is functionally related in a context of use to a product sold by another of the vendors ... [and] identifying customers 7 Appeal 2014-008690 Application 12/692,930 which match the customer profile ... that are making purchases in the locale of the vendorClaim 1. The Examiner states that “Katz discloses cross-promoting products including promoting products for a product related to a product sold by another vendor.'’'’ Ans. 13 (emphasis added). But we have been unable to find such express disclosure. While vendors, including “vendor location” (para. 7), are discussed, there does not appear to be any disclosure in Katz of “promoting products for a product related to a product sold by another vendor'” (Ans. 13, emphasis added), let alone “forming a customer profile” for “cross-promoting a specific product of the vendor that is functionally related in a context of use to a product sold by another of the vendors ... [and] identifying customers which match the customer profile ... that are making purchases in the locale of the vendor” as claimed. The Examiner also refers to Oytac and Bezos, but matching profiles and forming collections, respectively, are inadequate as evidence that said limitations are in fact disclosed. We note the Examiner’s statement that “cross promoting a product is not a positively recited step.” Ans. 12. That is true. However, the cross promoting is recited functionally; therefore, the customer profile is capable of performing said cross promoting. Accordingly, although the cited references need not disclose a step of cross promoting, one ordinary skill in the art would need to be led to a customer profile having characteristics capable of performing the cross promoting as claimed. That has not been adequately shown. 8 Appeal 2014-008690 Application 12/692,930 For the foregoing reasons, we do not find that a prima facie case of obviousness has been made out in the first instance by a preponderance of the evidence. CONCLUSIONS The rejection of claims 1—20 under 35 U.S.C. §101 as being directed to non-statutory subject matter is affirmed. The rejection of claim 1 is rejected under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is reversed. The rejection of claims 1—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Oytac, Katz, and Bezos is reversed. DECISION The decision of the Examiner to reject claims 1—20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation