Ex Parte Grigsby et al

Patent Trial and Appeal Board

Nov 9, 2018

12131084 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/131,084
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
05/31/2008
11/14/2018
FIRST NAMED INVENTOR
Travis M. Grigsby
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.
RSW920080220US 1 5159
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRAVIS M. GRIGSBY and SUNIL KUMAR MISHRA
Appeal2017-007505 1
Application 12/131,0842
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
December 16, 2016) and Reply Brief ("Reply Br.," filed April 11, 2017),
and the Examiner's Answer ("Ans.," mailed March 9, 2017) and Final
Office Action ("Final Act.," mailed August 30, 2016).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
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Application 12/131,084
CLAIMED INVENTION
Appellants' claimed invention "relates to customer experience with
sales associates, and more particularly to assessing the personality and mood
characteristics of a customer to enhance the customer's satisfaction with
his/her shopping experience and improve the chances of a sale" (Spec. 1,
11. 5-8).
Claims 1, 7, 12, and 17 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for enhancing customer satisfaction with
his/her shopping experience and improving the chances of a sale,
the method comprising:
capturing a facial image of a customer by a camera in a
store;
comparing, by a customer relationship management unit,
said captured facial image with a set of facial expressions stored
in a database to associate said captured facial image with an
emotional state;
analyzing, by said customer relationship management
unit, said captured facial image to assess personality and mood
characteristics of said customer; and
generating, by a processor of said customer relationship
management unit, a report recommending a sales approach to
obtain a sale from said customer, wherein said report is based on
said analysis of said captured facial image.
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-20 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention.
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ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
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(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner has failed to perform a proper § 101 analysis (App. Br. 6).
Appellants charge that the Examiner concludes that claims 1-20 are directed
to an abstract idea simply because the independent claims include the terms
"capturing," "comparing," and "analyzing," without providing any
articulated reasoning or legal analysis to support that conclusion, and that
the Examiner has, thus, failed to establish a prima facie case of patent-
ineligibility (id.). We disagree.
The Federal Circuit has repeatedly observed that "the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for the rejection, "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." See In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, all that
is required of the Office is that it sets forth the statutory basis of the rejection
in a sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
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Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims using the Mayo/Alice two-step framework,
consistent with the guidance set forth in the USPTO's "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014) and "July 2015 Update: Subject Matter Eligibility," 3 in
effect at the time the Final Office Action was mailed. Specifically, the
Examiner notified Appellants that the claims are directed to "analyzing
customer behavior in a store," and that the claims involve no more than
collecting and comparing known information, which the courts have held is
"An Idea of Itself," and, therefore, an abstract idea (Final Act. 20-21 ( citing
the July 2015 Quick Reference Sheet)). 4 The Examiner also determined that
the claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the "recitation of a
camera, a customer relationship management unit, and a database are
conventional computer or computerized elements" and "it is a routine and
nominal use of a computer to generate a document, i.e., a report" (id. at 21 ).
The Examiner, thus, set forth the bases for the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132. And we find that, in doing so, the Examiner set forth a prima facie
case of patent-ineligibility.
We also are not persuaded of Examiner error to the extent that
Appellants maintain that the claims are patent-eligible because, like the
claims held patent-eligible in Classen Immunotherapies, Inc. v. Biogen
3 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-qrs.pdf.
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IDEC, 659 F.3d 1057 (Fed. Cir. 2011), the present claims do not simply
collect and compare data but instead actually put the data to use, i.e., the
captured facial image is analyzed to assess customer personality and mood
characteristics and, based on the analysis, a report recommending a sales
approach is generated (independent claims 1, 7, and 12) or appropriate sales
professionals best suited to approach the customer are identified
(independent claim 17) (App. Br. 8-11 ). Classen was decided before Alice
and Mayo and, in view of these later and controlling precedent, cannot be
relied on to support the notion that putting information to practical use, e.g.,
immunizing a patient, in a claim otherwise directed to collecting and
comparing known information automatically transforms the claim into
patent-eligible subject matter.
The present claims, in our view, are substantially similar to the claims
that the Federal Circuit determined were patent-ineligible in Electric Power
Group, LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016), and
subsequently in FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089
(Fed. Cir. 2016). In Electric Power, the court found that the claims were
directed to an abstract idea because "[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions." Electric Power, 830 F.3d at 1354; see also
id. at 13 5 3-54 ( characterizing collecting information, analyzing information
by steps people go through in their minds, or by mathematical algorithms,
and presenting the results of collecting and analyzing information, without
more, as matters within the realm of abstract ideas). Citing Electric Power
in Fair Warning, the Federal Circuit held that the claims were directed to
collecting and analyzing information to detect misuse and notifying a user
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when misuse is detected, i.e., to a combination of abstract idea categories,
FairWarning, 839 F.3d at 1093-94, and that, as in Electric Power, "'the
focus of the claims is not ... on an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools."' Id.
at 1095 ( alteration in original) ( citation omitted)
Similarly here, the claims involve nothing more than (1) collecting
data (i.e., a captured facial image of a customer in a store); (2) analyzing the
data (i.e., comparing the facial image with a set of facial expressions to
associate the facial image with an emotional state and analyzing the facial
image to assess personality and mood characteristics); and (3) presenting the
results of the collection and analysis (i.e., generating a report recommending
a sales approach or identifying and assigning an appropriate sales
professional to approach the customer)- without any asserted inventive
technology for performing these functions. For example, there is no
indication in the record that the particular operations called for in the claims
require any specialized computer hardware or other inventive computer
components, invoke any assertedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components to perform the claimed method steps. Instead, the Specification
suggests just the opposite, i.e., that the claimed invention is implemented
using only generic computer components to perform generic computer
functions, e.g., receiving and processing information (see, e.g., Spec. 9-10),
which is not enough for patent-eligibility. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.").
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Addressing step two of the Mayol Alice framework, Appellants assert
that the claimed invention includes meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological environment
(App. Br. 26-28). But, aside from paraphrasing the claim language,
Appellants offer no persuasive argument or technical reasoning to support
that position (id.).
Appellants further maintain that the § 101 rejection cannot be
sustained because the claimed invention is directed to "an improvement in
computer capabilities or an improvement of an existing technological
process" (id. at 29). Yet, we are not persuaded that "enhancing [a]
customer's shopping experience by reducing the possibility of an unpleasant
shopping experience [and] increasing the chances of a consummated sale" is
an improvement to an existing technological process, as opposed to an
improvement in a marketing practice (id.). We also are not persuaded that
using computer technology in the manner claimed (e.g., to compare a
captured facial image to a set of facial expressions; analyze the facial image
to assess the customer's personality and mood characteristics; and generate a
report recommending a sales approach) is an improvement in computer-
related technology (id. at 31 ). For example, we fail to see how, and
Appellants do not explain how, enhancing a customer's shopping experience
in order to increase the chances of a sale somehow improves the way a
computer operates or otherwise enhances computer functionality. At best, in
our view, the claimed invention constitutes an improvement in a business
sales/marketing practice for which a computer is used as a tool in its
ordinary capability.
Finally, to the extent Appellants maintain that the claimed invention is
patent-eligible, i.e., that the claims amount to "significantly more" than an
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abstract idea, and/or that the recited functions are not "well-understood,
routine, and conventional activities," because the claims are allegedly novel
and/or non-obvious in view of the prior art (App. Br. 20-21), Appellants
misapprehend the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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., 134 S. Ct. at 2355 ( citation omitted). "Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the§ 101 inquiry."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013). A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-20 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
Written Description
Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
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Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
The Examiner maintains here that there is no written description
support in the Specification for the "analyzing"; "comparing"; "circuitry for
analyzing"; and "circuitry for comparing" limitations, as variously recited in
claims 1-20 (Final Act. 25-32). However, we agree with Appellants that the
Specification provides the requisite written description support such that a
person skilled in the art would understand that Appellants were in possession
of the claimed invention, including the limitations identified by the
Examiner, at the time the application was filed (see App. Br. 34--37
(identifying the portions of the Specification where the requisite written
description may be found)).
Therefore, we do not sustain the Examiner's rejection of claims 1-20
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Indefiniteness
In rejecting claims 1-20 under 35 U.S.C. § 112, second paragraph, the
Examiner takes the position that the metes and bounds of what constitutes
the "analyzing"; "comparing"; "circuitry for analyzing"; and "circuitry for
comparing" are not clear because the Specification fails to adequately
describe the structure and functionality of the circuitry responsible for
performing these functions (Final Act. 33). Therefore, according to the
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Examiner, "one of ordinary skill in the art would not be reasonably apprised
of what would infringe the circuitry and what would not infringe the
circuitry" (id.).
We agree with Appellants that a person of ordinary skill in the art
would understand from the Specification, particularly including the portions
of the Specification identified by Appellants in response to the written
description rejection, that the terms "comparing" and "analyzing" are used in
accordance with their ordinary and customary meaning, i.e., that comparing
refers, for example, to examining a captured facial image with a set of facial
expressions to identify resemblances or differences, and that analyzing
refers, for example, to studying or determining the nature or relationship of
the captured facial image to assess personality and mood characteristics
(App. Br. 39-42).
We are not persuaded that a person of ordinary skill in the art would
be unable to determine the metes and bounds of the claims, when read in
light of the Specification. See In re Zietz, 893 F.2d 319, 321-22 (Fed. Cir.
1989) (During examination, after applying the broadest reasonable
interpretation to the claim, if the metes and bounds of the claimed invention
are not clear, the claim is indefinite and should be rejected.); Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The
test for definiteness under 35 U.S.C. § 112, second paragraph is whether
"those skilled in the art would understand what is claimed when the claim is
read in light of the specification."). Therefore, we do not sustain the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, second
paragraph, as indefinite.
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DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112,
second paragraph, is reversed.
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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