Ex Parte Crites

Patent Trial and Appeal Board

Oct 27, 2016

10015548 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/015,548 12/11/2001 Robert Crites
112978 7590 10/31/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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.
CAM920115006US1_8150-0146 4275
EXAMINER
STOLTENBERG, DAVID J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CRITES
Appeal2014-008858
Application 10/015,548 1
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Crites (Appellant) seeks our review under 35 U.S.C. § 134
from the final rejection of claims 1, 2, and 4--31. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
1 The Appellant identifies IBM Corporation as the real party in interest.
App. Br. 1.
Appeal2014-008858
Application 10/015,548
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method of determining a
prioritized list of offers for use to contact potential customers,
the method comprises:
receiving by a computer expected profits for each offer in
a set of offers for each potential customer in a group of
potential customers;
generating by the computer an ordered list of offers, by
which to contact a potential customer from the group of
potential customers, the offers in the ordered list of offers
selected from the set of offers based on expected, composite
profit of combinations of the offers for others of the potential
customers in the group of potential customers,
ordering by the computer offers in the list of offers
according to the expected profit;
repeating generating by the computer for subsequent
others of the potential customers to produce corresponding
ordered lists based on expected, composite profit of
combinations of the offers for the subsequent potential
customers independent from expected, composite profit of
combinations of the offers for others of the potential customers
in the group of potential customers; and
producing by the computer a second list of offers that is a
list provided from the ordered lists of offers from the one and
subsequent others of the potential customers, with the second
list based upon a budget for contacting the potential customers
in the group.
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Application 10/015,548
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Herz et al.
Kepecs
Galperin et al.
US 2001/0014868 Al
US 2001/0032128 Al
US 6,993,493 B 1
The following rejections are before us for review:
Aug. 16, 2001
Oct. 18, 2001
Jan. 31, 2006
1. Claims 20-27 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1, 2, 4--8, 15, 20, 21, 27, 28, and 31 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Herz and Kepecs.
3. Claims 9-14, 16-19, 22-26, 29, and 30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Herz, Kepecs, and Galperin.
ISSUES
Did the Examiner err in rejecting claims 20-27 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 2, 4--8, 15, 20, 21, 27, 28,
and 31 under 35 U.S.C. § 103(a) as being unpatentable over Herz and
Kepecs?
Did the Examiner err in rejecting claims 9-14, 16-19, 22-26, 29, and
30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Herz,
Kepecs, and Galperin?
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Application 10/015,548
ANALYSIS
The rejection of claims 20--27 under 35 U.S. C. § 1 OJ as being directed to
non-statutory subject matter.
This rejection is pending. Although this rejection does not appear
among the "Grounds of Rejection to be Reviewed on Appeal" (Ans. 2), it is
included in the Final Action (page 3) and there is no indication that it has
since been withdrawn.
The Examiner stated that "[a]dding 'a computer program product
residing on a non-transitory computer readable storage medium .... ' [to
claim 20] should fix this 101 issue." Final Act. 3. However, claim 20 (App.
Br. 30-31) does not appear to have been amended consistent with said
suggestion.
The Appellant has made no argument in the Brief challenging the
rejection. Rather, the Appellant states that
[a]n After-Final Amendment was submitted subsequent
to the imposition of the Eighth and Final Office Action dated
October 29, 2013 (hereinafter the Eighth Office Action). Since
this Amendment address matters not associated with the prior
art and would place this application is better condition for
appeal, Appellant proceeds under the assumption that this
Amendment will be entered.
App. Br. 2. However, we can find no record of such an amendment. And
there is no record of an after-final amendment having been entered. Be that
as it may, the record provides no indication that the rejection at issue has
been addressed to the Examiner's satisfaction.
The rejection is sustained.
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The rejection of claims 1, 2, 4-8, 15, 20, 21, 27, 28, and 31under35 U.S.C.
§ 103(a) as being unpatentable over Herz and Kepecs.
The independent claims are claims 1, 7, 20, and 28. The Examiner's
position is essentially the same as to all of them. See Final Act. 4.
As to claim 1, the Examiner finds that Herz discloses all that is
claimed but for the limitation "e. producing by the computer a second list of
offers that is a list provided from the ordered lists of offers from the one and
subsequent others of the potential customers, with the second list based upon
a budget for contacting the potential customers in the group," for which
Kepecs is relied upon. Final Act. 9.
As to claim 7, the Examiner finds that Herz discloses all that is
claimed but for the limitation "c. producing by the computer a second list of
offers that is a list provided from the ordered lists of offers from the one and
subsequent others of the potential customers, with the second list based upon
a budget for contacting the potential customers in the group," for which
Kepecs is relied upon. Final Act. 19.
As to claim 20, the Examiner finds that Herz discloses all that is
claimed but for the limitation "c. produce a second list of offers from the
ordered lists of offers from the one and subsequent others of the potential
customers, with the second list of offers based upon a budget for contacting
the potential customers in the group" for which Kepecs is relied upon. Final
Act. 27.
And, as to claim 28, the Examiner finds that Herz discloses all that is
claimed but for the limitation "c. produce a second list of offers from the
ordered lists of offers from the one and subsequent others of the potential
customers, with the second list of offers based upon a budget for contacting
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the potential customers in the group," for which Kepecs is relied upon. Final
Act. 35.
In each case, according to the Examiner, Kepecs discloses:
64 "A campaign designer may customize the minimum and/or
the maximum number of offers that may be presented to a
consumer via a particular channel," 65, 66 "Arbiter 122 may
then sort the offers based on their priority values (which may be
composite values) to generate a sorted list of offers such that
offers with higher priorities are placed higher up the list than
offers with lower priorities, with offers having [']special[']
priority values being placed at the top of the list (step 408).
Arbiter 122 then determines if the number of active offers for
the distribution channel selected in step 404 equals the
maximum number of active offers for that channel (step 410).
As indicated above, the maximum number of active offers for a
channel may be configured by the user of the present invention
or may alternatively be determined by the nature of the
distribution channel," 67-70, 77 "The processing may also be
terminated if marketing system 110 decides not to make any
offers to a consumer, for example, for budgetary reasons, due to
rules configured by the campaign designer, etc[.]," .... 94 " ..
. The value specified in target budget field 634 and/or 640
indicates the target amount of markdown dollars that the retailer
and the manufacturer, respectively, would like to spend on the
product promotion," Figs. 3, 4 ....
Final Act. 9-10, 19-20, 27, 35-36 (respectively).
In each case, the Examiner finds that
it would have been obvious to a person of ordinary skill in the
art at the time of the applicant's invention to modify Herz by
combining prior art elements according to known methods of
incorporating known data processing features into similar
systems to yield predictable results wherein producing by the
computer a second list of offers that is a list provided from the
ordered lists of offers from the one and subsequent others of the
potential customers, with the second list based upon a budget
for contacting the potential customers in the group.
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Final Act. 10-11, 20, 28-29, 36 (respectively).
The Appellant disagrees. According to the Appellant,
these figures and the Examiner's cited passages refers to
selecting offers from a customer (i.e., one customer). The
limitations at issue, however, refer to producing a second list
that is a list from ordered lists of offers from both the potential
customer and others of potential customers (i.e., a plurality of
customers). Therefore, to the extent that the Examiner's cited
passages refers to the creation of a list, this list does not
correspond to the claimed second list, since the second list
includes offer[ s] for a plurality of customers.
Ans. 62. We agree.
The relied-upon passages and Figures do not disclose producing "a
second list of offers that is a list provided from the ordered lists of offers
from the one and subsequent others of the potential customers" as claimed.
According to the claims, the offers of the ordered lists are "selected from the
set of offers based on expected, composite profit of combinations of the
offers for others of the potential customers in the group of potential
customers."
Kepecs discloses "a sorted list of offers such that offers with higher
priorities are placed higher up the list than offers with lower priorities, with
offers having 'special' priority values being placed at the top of the list (step
408)." Kepecs, para. 66. But the claims call for more. The second list as
claimed is not merely a prioritized list of offers but a list of offers that is
"provided from [ ] ordered lists of offers from [ ] one and subsequent others
of [ ] potential customers."
Furthermore, the claims require the ordered lists from which the
second list is produced to be "based on expected, composite profit of
combinations of the offers for others of the potential customers in the group
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of potential customers." As the Appellant argues, Kepecs does not disclose
or suggest a plurality of offers from a plurality of customers. Thus, Kepecs
does not meet the claim limitation that the second list of offers be a list
provided ''from the ordered lists of offers from the one and subsequent
others of the potential customers" as claimed (emphasis added).
Finally, the claims require "the second list [to be] based upon a budget
for contacting the potential customers in the group." While the Examiner is
correct that Kepecs discloses an activity that depends on budgetary reasons,
it does not disclose basing a list "upon a budget for contacting the potential
customers in the group" as claimed. Instead, Kepecs discloses the
possibility of terminating a campaign "if marketing system 110 decides not
to make any offers to a consumer, for example, for budgetary reasons."
Kepecs, para. 77.
For the foregoing reasons, a prima facie case of obviousness for the
claimed subject matter of the independent claims has not been made out in
the first instance by a preponderance of the evidence. Accordingly, the
rejection of the independent claims is not sustained. The rejection as to the
claims depending from the independent claims is also not sustained for the
same reasons.
The rejection of claims 9-14, 16--19, 22-26, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Herz, Kepecs, and Galperin.
Because the rejection of the independent claims is not sustained (see
above), this rejection of the claims depending from the independent claims is
also not sustained for the same reasons.
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Application 10/015,548
NEW GROUND OF REJECTION
Claims 1, 2, and 4--31 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 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 Corp.
Pty. Ltd., 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed, broadly-speaking, to list-creation. List-creation,
per se, is a fundamental building block of human knowledge, akin to a law
of nature. As such, it is directed to an abstract idea. Even if viewed more
narrowly, in that claim 1 is directed to a particular type of list-creation; that
is, prioritized-listing or contact-prioritization in a business environment that,
too, is an abstract idea because prioritized-listing or contact-prioritization in
a business environment are fundamental economic practices well known in
business. The well-known nature of prioritized-listing or contact-
prioritization is supported by the discussion in the Specification's
"BACKGROUND" section. See, e.g., Spec. 1:14--15 ("Techniques are
known to solve what is often referred to as contact optimization.").
Step two 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."' Alice Corp. Pty. Ltd., 134 S. Ct. at 2355 (citing Mayo
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Application 10/015,548
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of list-creation into an inventive concept.
Claim 1 presents a scheme by which information is gathered
(expected profits for each offer m a set of offers for each potential customer
in a group of potential customers"); the gathered information is put into a list
("generating ... an ordered list of offers, by which to contact a potential
customer from the group of potential customers, the offers in the ordered list
of offers selected from the set of offers based on expected, composite profit
of combinations of the offers for others of the potential customers in the
group of potential customers"); the list is put into an order (ordering ...
offers in the list of offers according to the expected profit"); more lists are
made ("repeating generating by the computer for subsequent others of the
potential customers to produce corresponding ordered lists based on
expected, composite profit of combinations of the offers for the subsequent
potential customers independent from expected, composite profit of
combinations of the offers for others of the potential customers in the group
of potential customers"); and, a second list is created ("producing ... a
second list of offers that is a list provided from the ordered lists of offers
from the one and subsequent others of the potential customers, with the
second list based upon a budget for contacting the potential customers in the
group"). The scheme employs common techniques like putting information
into an order based on other information to create various lists. The
employment of common techniques via the recited scheme in order to create
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a list is insufficient to ensure that in practice the scheme amounts to
significantly more than to be on the list-creation concept itself.
Finally, we note that claim 1 calls for the recited method to be
"computer-implemented" and all the recited steps involve a "computer."
But any general-purpose computer available at the time the application was
filed would have satisfied these limitations. The Specification supports that
view. See Spec. 4:25---6: 17. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea 'while adding the words "apply it'" is not
enough for patent eligibility." Alice Corp. Pty. Ltd. 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially-excepted from patent eligibility under § 101. The
other independent claims---claims 7, 20, and 28 parallel claim I-similarly
cover claimed subject matter that is judicially-excepted from patent
eligibility under § 101. The dependent claims relate to inputs and outputs
commonly associated with list-creation which do little to patentably
transform the list-creation abstract idea into a patent-eligible inventive
concept.
Therefore, we enter a new ground of rejection of claims 1, 2, and 4-31
under 35 U.S.C. § 101.
For the foregoing reasons, the rejections are affirmed-in-part but the
claims are newly rejected under § 101.
CONCLUSIONS
The rejection of claims 20-27 rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is affirmed.
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The rejection of claims 1, 2, 4--8, 15, 20, 21, 27, 28, and 31 under
35 U.S.C. § 103(a) as being unpatentable over Herz and Kepecs is reversed.
The rejection of claims 9-14, 16-19, 22-26, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Herz, Kepecs, and Galperin is
reversed.
Claims 1, 2, and 4--31 are newly rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1, 2, and 4--31 is
affirmed-in-part.
Claims 1, 2, and 4--31 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
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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 )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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