Ex Parte Brophy et al

Patent Trials and Appeals Board

Mar 7, 2019

11555853 - (D) (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/555,853 11/02/2006
26890 7590 03/11/2019
JAMES M. STOVER
TERADATA US, INC.
10000 INNOVATION DRIVE
DAYTON, OH 45342
FIRST NAMED INVENTOR
David Brophy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12393 7676
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/11/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
michelle. boldman @teradata.com
j ames.stover@teradata.com
td.uspto@outlook.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BROPHY, CHRISTIAN SEIFERT,
DAVID CARMER, JASON FIGGE,
HAROLD LEE and JENNIFER BALDWIN
Appeal2017-010892
Application 11/555,853
Technology Center 3600
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN and
DAVID J. CUTITTA II, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1-3, 6, 8, 9 and
12-18 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Introduction
The invention is directed to:
[T]echniques for managing relationships during communications
occurring with marketing activities are presented. According to
an embodiment, a method for managing relationships during a
communication of a marketing campaign is taught. Contacts
associated with a target are expanded for a communication of a
Appeal2017-010892
Application 11/555,853
marketing campaign in response to contact rules. The
communication is managed during the marketing campaign with
respect to the target and the contacts using treatment rules.
Specification ,r 8.
Illustrative Claim
1. A machine-implemented method implemented in a non-
transitory machine-readable medium and for executing on a
machine, comprising:
expanding, by the machine, contacts associated with a
target for a communication of a marketing campaign based on
contact rules, the contact rules are enforced to expand the
contacts for use with the target in the marketing campaign and
the target is an entity to which the marketing campaign is being
directed, the communication is a message, advertisement, sales
pitch, or offer that is being directed to the target for the
marketing campaign over multiple different communication
channels, the communication channels include instant
messaging, World-Wide Web (WWW), email, phone, and on-
demand television, and the contacts are entities that are related
to the target;
managing, by the machine, the communication during the
marketing campaign via treatment rules, the communication is
managed using the treatment rules when the target is contacted
via the contacts and the treatment rules are customized for the
target, the treatment rules drive how and to whom the
communication and any secondary communications are
processed, and wherein at least one treatment rule indicates that
some of the expanded contacts are to be communicated with in
an identical manner to that which is used for the target when
these particular contacts are directly related to the target and the
at least one treatment rule also indicates that other of the
expanded contacts are to be communicated with in an
independent manner from that which is used with the target
when these other contacts are indirectly related to the target and
identifying particular contacts as being indirectly related to the
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target when those particular contacts are members of a same
household as the target; and
suppressing or excluding, by the machine, a number of
the contacts that were expanded in response to suppression
rules.
Rejections on Appeal
Claims 1-3, 6, 8, 9 and 12-18 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to nonstatutory subject matter.
Final Action 7-12.
Claims 8, 9 and 12-18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Winner (US Patent Application Publication
2005/0278443 Al; published December 15, 2005), Hansen (US Patent
Application Publication 2008/0059283 Al; published March 6, 2008),
Kurtzman II (US Patent 6,144,944; issued November 7, 2000), Kublickis
(US Patent Application Publication 2007 /0067297 Al; published March 22,
2007) and Kim (US Patent Application Publication 2008/0262925 Al;
published October 23, 2008). Final Action 12-21.
Claims 1-3, 6, 8, 9 and 12-18 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Teague (US Patent Application Publication
2006/0212355 Al; published September 21, 2006), Hansen, Kurtzman II,
Kublickis and Gaito (US Patent Application Publication 2003/0171942 Al;
published September 11, 2003). Final Action 21-40.
Claims 8, 9 and 12-18 stand rejected under 35 U.S.C. §I03(a) as
being unpatentable over Teague, Winner, Hansen, Kurtzman II, Kublickis
and Kim. Final Action 41-53.
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ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief ( filed February 21, 2017), the Final Action
(mailed July 20, 2016) and the Answer (mailed May 22, 2017) for the
respective details.
35 U.S.C. §101 rejection
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101 because the claims are directed to an abstract idea comprising a
fundamental economic practice or organizing human activity, and do not
include additional elements that are sufficient to amount to significantly
more than the abstract idea. Final Action 8-12; see also Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217 (2014) (Describing the two-step
framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
After the mailing of the Answer and the filing of the Brief in this case,
the US PTO published revised guidance on the application of§ 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (hereinafter "Memorandum"). Under the Memorandum, the Office
first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellants argue the pending claims are not directed to an abstract
idea without reciting significantly more because:
[T]he Examiner has not provided significant evidence to support
the ineligibility rejection and therefore has not properly shifted
the burden to the Applicant to prove the claims are in fact
eligible. Secondly, the claims do include unconventional
processing steps, some of which are recited above, and
unconventional processing steps are an exception to ineligibility
and are evidence of "significantly more" under the PTO' s own
rules.
Appeal Brief 10.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Action 7-12. The Specification
discloses:
The relationship management service 302 interacts with the data
store 301 and services that process a marketing activity. The
relationship management service 302 queries the data store 301
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to acquire primary targets for a given communication of a given
marketing activity. Next, contact rules are acquired and used to
expand the contacts for the communication. The relationship
management service 3 02 then acquires treatment rules for the
communication and marketing activity. The treatment rules are
then used to drive the processing of the communication to the
target and to the expanded contacts.
Specification ,r 54.
The concept of marketing, as recited by the claims, is a fundamental
business practice long prevalent in our system of commerce. The use of
marketing is also a building block of ingenuity in attempting to stimulate
sales. Thus, a CRl\ti (customer-relationship management) system is an
example of a conceptual idea subject to the Supreme Court's "concern that
patent law not inhibit fmiher discovery by improperly tying up the future use
of these building blocks of human ingenuity." Alice, 573 U.S. at 216
( citations omitted). Claim 1 recites:
[A] target for a communication of a marketing campaign based
on contact rules, the contact rules are enforced to expand the
contacts for use with the target in the marketing campaign and
the target is an entity to which the marketing campaign is being
directed, the communication is a message, advertisement, sales
pitch, or offer that is being directed to the target for the marketing
campaign over multiple different communication channels, the
communication channels include instant messaging, World-
Wide Web (WWW), email, phone, and on-demand television,
and the contacts are entities that are related to the target.
These steps comprise fundamental economic principles or practices
and/or commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); thus the claim recites the abstract idea of
"[ c ]ertain methods of organizing human activity." Memorandum, Section I
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( Groupings of Abstract Ideas); see Specification ,r 1. Our reviewing court
has found claims to be directed to abstract ideas when they recited similar
subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (claims merely reciting abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
not patent eligible); see also Memorandum fn. 13.
Appellants argue, "The claims are directed to treatment of contacts
based on customization over multiple communication channels and the
claims include treating a contact the same and another contacted to which
the other contact is related. This is not conventional and the Examiner has
provided no evidence only option that such is conventional." Appeal
Brief 10. We do not find Appellants' argument persuasive because claim 1
appear to be merely using a conventional "processing device" to manage
communications over the multiple communication channels as a tool to
provide the targeted customer with targeted advertisements, sales pitches,
etc. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). ("[W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea ... the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer database)
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool."); see also Memorandum, 84 Fed.
Reg. at 55. The claims do not recite an additional element or elements that
reflect an improvement in the functioning of a computer, or an improvement
to other technology or technical field. See Final Action 10 ("These
additional elements are not sufficient to amount to significantly more than
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the judicial exception because they do not recite, for example: an
improvement to another technology or technical field"); Alice, 573 U.S. at
222 ("In holding that the process was patent ineligible, we rejected the
argument that 'implement[ing] a principle in some specific fashion' will
'automatically fal[l] within the patentable subject matter of§ 101. "')
(quoting Parker v. Flook, 437 U.S. 584, 593(1978)).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B)(Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) ("the 'inventive concept' cannot be the abstract idea
itself'). Other than the abstract idea itself, the remaining claim elements
only recite generic computer components that are well-understood, routine,
and conventional. See Final Action 10-12; Alice, 573 U.S. at 226;
Specification ,r,r 2, 12-13, 21, 39, 44, 47--49.
Accordingly, we agree with the Examiner that claims 1-3, 6, 8, 9 and
12-18, not argued separately, are not patent eligible. See Appeal Brief 10.
35 U.S.C. §103 rejections
Appellants contend:
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The Office has not established a prima facie case of obviousness
because these requirements have not been satisfied. Regarding
independent claims 1 and 8, each claim recites the limitation
"suppressing or excluding, by the machine, a number of the
contacts that were expanded in response to suppression rules".
Independent claim 15, similarly recites the limitation "to
suppress or exclude a number of the contacts that were expanded
in response to suppression rules." It is not seen that the cited
references, teach or suggest this limitation.
Appeal Brief 11.
Appellants state that support for the "suppressing or excluding, by the
machine, a number of the contacts that were expanded in response to
suppression rules" claim limitation is provided by paragraph 36 of the
Specification and Figure 1 step 130 for claims 1, 8, and paragraphs 30-46,
55 and Figures 1, 2 for the similarly recited limitation in claim 15. Appeal
Brief 4--7.
The Specification discloses:
If a targeted individual cannot be delivered the primary offer ( due
to optimization rules, suppression rules, etc.) then secondary
information packets must not be sent to any related entities.
Specification ,r 26.
[T]he relationship management service may actually be used to
suppress some contacts that were previously expanded in
response to suppression rules. For example, a particular target
may forbid that a particular contact be communicated with. In
such a situation, suppression rules may be used to override
normal processing and ensure that such contacts are not
communicated with. Specification ,r 36.
Next, the contacts may be filtered or suppressed out using
suppression rules, optimization rules, or if identified as being
part of a control group. Specification ,r 37.
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Appellants argue that neither Kim nor Gaita disclose "that contacts
were expanded are suppressed in response to suppression rules." Appeal
Brief 11-12.
The Examiner finds that Kim discloses:
Off er data stores also m communication with the
communications network store offers from merchants. A
narrowcasting engine includes an active data gathering module
to collect the user data, and an active learning module to
generate a user profile based on the user data. The
communication engine selects dynamically offers from the offer
data store based on the profile, and communicates the selected
offers in the offer data store to the users. The invention of Kim
is directed to gathering and collecting data.
Answer 12 (citing Kim ,r,r 25, 26 and 110).
The Examiner finds that Gaito discloses:
Gaito discloses adding a plurality of contacts to databases but
also either excluding them initially based on a suppress list or
putting them in a database and then flagging those that are on a
suppression list. The contact database ( the expanded list) can
generate a target list ( which exclude those from the suppression
list).
Answer 15 ( citing Gaito ,r,r 39-41, 44 and 45).
We agree with the Examiner's findings. "As our precedents make
clear, however, the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR Int'! v. Teleflex Inc., 550 U.S. 398,418 (2007).
We find the disputed limitations are directed to filtering contacts which is
the essence of targeted marketing and this is clearly supported by
Appellants' own Specification. See Appeal Brief 4--7. Accordingly, once
the Examiner has satisfied the burden of presenting a prima facie case of
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obviousness, the burden then shifts to Appellants to present evidence and/or
arguments that persuasively challenge the Examiner's prima facie case. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Subsequently,
Appellants did not particularly point out errors in the Examiner's reasoning
to persuasively rebut the Examiner's prima facie case of obviousness,
therefore the rejections are sustained.
DECISION
The Examiner's nonstatutory subject matter rejection of claims 1-3, 6,
8, 9, and 12-18 is affirmed.
The Examiner's obviousness rejections of claims 1-3, 6, 8, 9, and 12-
18 are 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 ). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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