Ex Parte Cotton

Patent Trial and Appeal Board

Dec 20, 2018

14517566 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/517,566 10/17/2014
20995 7590 12/25/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Jeffrey S. Cotton
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.
AUTLT.001Cl2 1086
EXAMINER
WONG,ERICTAKWAI
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY S. COTTON
Appeal2018-004063
Application 14/517 ,566
Technology Center 3600
Before ERIC S. FRAHM, JOHN A. EV ANS, and CARLL. SILVERMAN,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 2-20. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellant states the real party in interest is the inventor, AutoAlert LLC.
App. Br. 5.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed October 20, 2017, "App. Br."), the Reply
Brief (filed March 5, 2018, "Reply Br."), the Examiner's Answer (mailed
January 4, 2018, "Ans."), the Final Action (mailed December 22, 2016,
"Final Act."), and the Specification (filed October 17, 2014, "Spec.") for
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Application 14/517 ,566
STATEMENT OF THE CASE
The claims relate to methods, systems and computer program products
for generating customer-specific vehicle proposals. See Abstract.
INVENTION
An understanding of the invention can be derived from a reading of
Claim 2, the sole independent claim in the application which is reproduced
below with some formatting added:
2. A data mining and analysis system for automotive
dealers comprising:
a computer system for automatically identifying which
past customers are candidates for new vehicle transactions on
terms favorable to the customers for presentation to the
candidates as new favorable deal proposals;
the computer system having access to a large database of
records of previously sold vehicles, the records including, for
each previously sold vehicle:
the customer for the previously sold vehicle and
that customer's contact information, the customer
comprising a past customer not currently shopping or
looking for a new vehicle;
a vehicle identification number of the previously
sold vehicle;
data from the deal that resulted in the previous sale to the
customer, the data sufficient to show or obtain:
the customer's current payment, which comprises
the customer's monthly payment for the previously sold
vehicle;
their respective details.
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Application 14/517 ,566
an estimated trade value of the previously sold
vehicle; and
an estimated payoff amount of the previously sold
vehicle;
the computer system configured to analyze the data from the
deals that resulted in the previous sales to the past customers
and automatically analyze a new deal proposal for all of a large
set of past customers to determine which past customers are
good prospects to offer a new vehicle on favorable financial
terms, where the favorable financial terms comprise at least the
same or lower monthly payment for the replacement vehicle,
the analysis comprising:
receive changed internal data and changed external data
on a periodic basis wherein the period comprises receiving the
changed data dynamically,
the changed data comprising data relating to financing data
for new suggested vehicles for past customers and values related
to the previously sold vehicles for past customers;
automatically determine for each of the past customers a
new suggested vehicle for the previously sold vehicle, wherein the
determining comprises algorithmically associating the previously
sold vehicle with one or more new suggested vehicles based on
category, classification, or grouping;
search an inventory of the automotive dealer for the new
suggested vehicle for the customer, thereby limiting use of
computer resources by analyzing one new suggested vehicle for
the determination of whether that customer is a candidate for
outreach; determine at least two new proposed payments by:
obtaining a price of the new suggested vehicle;
obtaining a net trade-in equity by combining the estimated
trade value with the estimated payoff amount of the previously
sold vehicle, wherein the trade-in equity may be either negative
equity or positive equity;
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Application 14/517 ,566
determining an amount to be financed by combining the
price of the new suggested vehicle with any obtained net trade-in
equity, whether positive or negative;
using the amount to be financed and currently-available rate
information for at least two different loan durations to
determine the new proposed payments;
comparing the customer's current payment and the new
proposed payments to determine one or more differences; and
analyzing the differences to determine if at least one of
them meets a criterion to identify the customer for outreach
because a new favorable deal proposal has been identified to get
that customer into an upgraded vehicle comprising at least one of
the new suggested vehicles;
the computer system being configured to adjust at least one
changed financing data parameter for suggested new vehicles; and
iteratively analyzing whether the at least one changed
financing parameter increases the number of customers who can
favorably get into an upgraded new suggested vehicle;
the computer system thereby identifying new revenue
opportunities from the past customers that are candidates for new
vehicle transactions, even when those candidates are not shopping
for a new vehicle, and, for each candidate, identifying at least one
specific and available new favorable deal proposal relating to a
specific new suggested vehicle; and
a visual alert system for notifying dealership personnel of
the new revenue opportunities automatically identified by the
computer system by collecting and, for each specific and available
proposal, displaying specific proposed transaction details to an
automobile marketer to assist in marketing outreach to the
candidates;
the visual alert system configured to allow a user to select
what is displayed and control the system to instantaneously switch
between views;
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the visual alert system including at least one deal sheet view
that arranges all of the following into a simultaneously-viewable
screen for display to a user to facilitate outreach regarding the
specific new suggested vehicle to each candidate customer:
the candidate customer's contact information;
the candidate customer's previously sold vehicle, its year,
and its vehicle identification number;
the candidate customer's current payment;
the estimated trade value of the previously sold vehicle, the
estimated payoff amount of the previously sold vehicle, and the
net trade-in equity;
the new specific suggested vehicle and its year; and
multiple options for the new proposed payment under the
different loan durations, arranged side by side;
each new proposed payment juxtaposed with the difference
between it and the customer's current payment.
Rejection
Claims 2-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2-8.
ANALYSIS
We have reviewed the rejections of Claims 2-20 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellant identifies reversible error. Upon
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consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner's Answer, to
the extent consistent with our analysis below. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis.
CLAIM 2: NON-STATUTORY SUBJECT MATTER
Prima Facie Case
Appellant contends the Examiner fails to make a prima facie case that
Claim 2 recites patent-ineligible subject matter. See App. Br. 45.
We conclude that the Examiner did initially set forth a prima facie
case of patent-ineligibility, i.e., the Examiner's reasons are sufficient to set
forth the basis for the rejection so as to put the patent applicant on notice of
the reasons why the applicant is not entitled to a patent. Cf In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Preemption
Appellant contends the claims do not seek to preempt or monopolize a
fundamental economic practice. App. Br. 39, 44--45.
While preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
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moot" by an analysis under the Mayo/Alice3 framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We conduct such an analysis below.
Improper Examination.
Throughout the Brief, Appellant argues the Examiner has improperly
applied various USPTO examination guidance documents. See, e.g., App.
Br. 51.
The Director of the United States Patent and Trademark Office, not
the Board, supervises examination and examiners. 4 If an examiner has
procedurally erred, the remedy lies exclusively in petitioning the Director for
supervisory review. 5 The Director has not delegated this supervisory
authority to the Board. 6
Mayo-Alice Step 1
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
3 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
4 35 U.S.C. § 3(a)(2)(A) & § I32(a).
5 37 C.F.R. § 1.181; cf 35 U.S.C. 6(b) (giving substantive review powers
directly to the board).
6 Cf 37 C.F.R. § 41.3 (delegating some petition authority to the Chief
Administrative Patent Judge, not the board) and § 41.50(b) ( delegating to the
board the discretion to enter a new ground, propose a curative amendment or
order additional briefing).
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concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id.
The Examiner finds the independent claims recite a marketing scheme
and are directed towards the automated determination of potential customers
associated with a particular product. Final Act. 2-3. With non-specific
citation of caselaw, the Examiner finds the claimed marketing scheme is
similar to a fundamental economic practice such as the performance of a
financial transaction which the courts have identified as an abstract idea. Id.
at 3.
Appellant contends the claims provide "unique solutions to problems
that specifically arise in the realm of computer networks," citing generally
DDR Holdings. 7 Br. 21. According to Appellant, computer searches of
automotive databases have become unwieldy because of the large number of
search results and because lesser candidate matches are not filtered yielding
an overinclusion of prospective results. Id. Appellant argues such
overinclusion is a problem arising specifically in the computer context. Id.
According to Appellant, the claims improve search algorithms by using
tailored search-terms. See id. ("to increase the quality of the search results,
the present inventor identified multiple inputs for the claimed computer
system and method").
We are not persuaded. As Appellant characterizes his claims, we find
they are similar to those discussed in Intellectual Ventures I. 8 "[T]he
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
8 Intellectual Ventures I LLC v. Capital One Financial Corporation, 850
F.3d 1332 (Fed. Cir. 2017).
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Appeal2018-004063
Application 14/517 ,566
underlying concept embodied by the limitations merely encompasses the
abstract idea itself of organizing, displaying, and manipulating data of
particular [customers and automobiles]." Id. at 1341. The collection of
information and analysis of information ( e.g., recognizing certain data
within the dataset) are also abstract ideas. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("[C]ollecting information
[ and] ... analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, [are] essentially mental
processes within the abstract-idea category."). Information, per se, is an
intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437,451 n.12
(2007).
At Step 1, we agree with the Examiner that the claims are directed to
abstract ideas. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) ("[ A ]ny novelty in implementation of the idea is a factor to be
considered only in the second step of the Alice analysis.")).
Mayo/Alice Step 2
Where, as here, the claims are found to be "directed to" a patent-
ineligible concept, we then "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
This analysis has been characterized as the search for an "inventive
concept"- something sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (quoting Mayo, 566
U.S. at 72).
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Application 14/517 ,566
Appellant contends "the present claims set forth a specific, structured
graphical user interface that resolves a specifically identified problem in
the prior state of the art." App. Br. 27 (analogizing the present claims to
those found valid in Trading Technologies). 9 Appellant argues the claimed
system focuses [customer's] attention directly on the most relevant
information and simplifies interactions with potential vehicle customers.
Appellant fails to draw our attention to how the recitations of the
claim better focus customer's attention as compared to the prior art.
Appellant argues a user "can rely on the 'visual alert system' to 'display[]
specific proposed transaction details"' and that the "visual alert system
further allows a user to 'instantaneously switch between views' with a
'simultaneously-viewable screen' of at least 6 different elements." App. Br.
27-8.
9 Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001
(Fed. Cir. 2017).
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Appeal2018-004063
Application 14/517 ,566
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Figure 1 A illustrates an example deal sheet generated by one
embodiment of a financial terms alert generation system.
Figure IA illustrates an example deal sheet generated by the claimed
financial terms alert generation system. We fail to see, nor has Appellant so
directed our attention, to how such an exemplary embodiment of the claims
focuses our attention in a superior manner to the prior art. We are not
persuaded the Examiner errs.
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Appeal2018-004063
Application 14/517 ,566
DECISION
The rejection of Claims 2-20 under 35 U.S.C. § 101 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
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