Ex Parte Khalil

Patent Trial and Appeal Board

Dec 13, 2018

13336003 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/336,003 12/23/2011
25537 7590 12/17/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Manah Mounir Khalil
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.
20110408 1902
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANAH MOUNIR KHALIL
Appeal2017-004366
Application 13/336,003
Technology Center 3600
Before ERIC S. FRAHM, JUSTIN BUSCH, and JAMES W. DEJMEK,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4---6, 8-11, 13, 15-19, and 22-29. Claims 3, 7, 12, 14, 20, and
21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the rejection of claims 1, 2, 4---6, 8-11, 13, 15-19, and 22-
29 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. We also affirm the obviousness rejections of (i) claims 1, 2, 4--6, 8-
11, 13, 15-19, and 22-24 over Rueter (US 2009/0248494 Al; published
Oct. 1, 2009) and Beyda (US 2005/0165644 Al; published July 28, 2005);
and (ii) claims 25-29 over Rueter, Beyda, and Seki (US 2002/0156731 Al;
1 According to Appellant, the real party in interest is Verizon
Communications, Inc. (Appeal Br. 3).
Appeal2017-004366
Application 13/336,003
published Oct. 24, 2002). With regard to the obviousness rejection of claims
25-29, to the extent we rely on different reasoning than applied by the
Examiner, we designate our decision affirming claims 25-29 as a new
ground of rejection.
Appellant's Disclosed and Claimed Invention
Appellant's application relates to web browsing on the Internet, and
specifically to the "Use of Service Address Identifier [i.e., street address or
SAID] for Anonymous User Interactions" (Title). As described by
Appellant, cookies with only street address information are used to
personalize website pages accessed by the user while ensuring privacy.
Spec. ,r 1, 17, 5 6; see also Abstract. Appellant describes the invention in the
following manner:
In embodiments described herein, a service provider may,
thus, associate a history of contacts between a consumer and the
service provider based on the physical service address of the
consumer, even when the consumer is establishing contacts
anonymously. Over multiple contacts between the consumer and
the service provider, the consumer contacts profile
can accumulate the consumer's contact history to link other
known identifiers for the same consumer to the consumer's
physical service address. The consumer contacts profile can give
the service provider better insight into the consumer's
preferences and may be used for possible service-related
recommendations, or for presenting advertisements to the
consumer.
Spec. ,r 20.
Claims 1, 10, and 17 are independent, and each recite a method or
network device for presenting a recommendation (i.e., targeting advertising
or website personalization) to users through the use of cookies and
anonymous user information which includes the user's street address ( and
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not other information). Claims 1 and 25 are illustrative of the subject matter
on appeal, and are reproduced below, with bracketed lettering and emphases
added to disputed portions of the claim, as follows:
1. A method, comprising:
receiving, via one or more web pages hosted by a
network device, a first anonymous contact from a consumer,
wherein the first anonymous contact identifies a plurality of
services or service-related products that are considered by the
consumer as candidates for purchase prior to the consumer
ordering a particular service or service-related product offered
by a service provider;
requesting, via the one or more web pages, a first street
address associated with the consumer;
receiving, by the network device from the consumer via
the one or more web pages, the first street address associated
with the consumer, and no other identifying or address
information associated with the consumer, wherein the first
street address comprises a residential or commercial street
address at which a service is provided by the service provider;
monitoring, by the network device, the consumer's online
activity with respect to the one or more web pages;
adding, by the network device, information associated
with the consumer's online activity to a consumer contacts
profile associated with the first street address;
storing, by the network device, the consumer contacts
profile in a tracking database; obtaining, by the network device,
a cookie associated with the consumer's online activity;
indexing, by the network device and subsequent to
receiving the first anonymous contact, the tracking database
with the first street address and the cookie to identify the
consumer contacts profile;
using, by the network device, the consumer contacts
profile to generate a recommendation, related to the identified
plurality of services or service-related products offered by the
service provider;
[A] receiving, by the network device via the one or more
web pages and subsequent to the first anonymous contact, one
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or more other anonymous contacts identifying the first
street address and without other identification o(the consumer;
and
presenting, by the network device via the one or more
web pages, the recommendation in response to the one or more
other anonymous contacts based on the cookie.
25. The method of claim 1, further comprising:
generating a first time stamp when the first street address
is received from the consumer;
combining the generated first time stamp with the first
street address to generate a first service address identifier
(SAID);
receiving, subsequent to the first contact, a second
contact from the consumer, wherein the second contact is
related to the service offered by the service provider;
receiving, by the network device from the consumer, a
second street address associated with the consumer, and no
other identifying information associated with the consumer;
generating a second time stamp when the second street
address is received from the consumer;
combining the generated second time stamp with the
second street address to generate a second service address
identifier (SAID); and
replacing the first SAID with the second SAID in a
service address database.
Support for the negative limitation found in limitation [A] of claim 1 is found
in paragraph 17 of the Specification:
Subsequent to initial anonymous contact 110 between
service provider( s) 115 and consumer 100, consumer 100 may
initiate one or more subsequent contacts 135 with service
provider( s) 115 in an anonymous manner. Consumer 100 may
provide physical service address 105 to service provider 115 in
conjunction with a contact 135, but may provide no
other identifying information to service provider 115.
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Spec. ,r 17 ( emphasis added); see also Appeal Br. 5 (Summary of Claimed
Subject Matter).
Appellant also describes the time stamps (see Fig. 1, 120; Fig. 4, 435;
Fig. 8, 805; Fig. 10, 1005) recited in claims 25-29 as consisting of either "a
date and a time" (Spec. ,r 16), or "the time, day and year" (Spec. ,r,r 43, 51 ).
See also Appeal Br. 8 (Summary of the Claimed Subject Matter, claim 25).
The time stamp can be combined with the street address to generate a service
address identifier (SAID) (see claims 25, 28, 29), which can be used to build
a consumer contacts profile ( anonymously identifying a user/ consumer and
the user's/consumer's time of access). The consumer contacts profile can
give a service provider better insight into the consumer's preferences (Spec.
i120).
REJECTIONS
The Examiner made the following rejections:
(1) The Examiner rejected claims 1, 2, 4--6, 8-11, 13, 15-19, and
22-29 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter (Non-Final Act. 3-9). The Examiner determined claims 1, 10, and 17
are drawn to a combination of abstract ideas, namely: organizing
information by category, and storing and transmitting information;
comparing new/stored information and using rules to identify options;
indexing information by comparison; and making a recommendation based
on a relationship between a profile and services offered (Non-Final Act. 4--5,
8-9). The Examiner also determined claims 1, 10, and 17 do not recite a
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technological improvement or otherwise claim significantly more than the
abstract ideas themselves (Non-Final Act. 5-9).
( 2) The Examiner rejected claims 1, 2, 4---6, 8-11, 13, 15-19, and
22-24 under 35 U.S.C. § 103(a) as being unpatentable over Rueter and
Beyda. Non-Final Act. 10-42. The Examiner relies upon Rueter (i1i118, 26)
as suggesting anonymous contacts (see Non-Final Act. 17-18; Ans. 8), and
Beyda (i1i1 44, 205, 212) as teaching or suggesting anonymous contact where
only street address information is collected, and privacy is protected (see
Non-Final Act. 18-21; Ans. 8-10).
(3) The Examiner rejected claims 25-29 under 35 U.S.C. § 103(a)
as being unpatentable over Rueter, Beyda, and Seki. Non-Final Act. 42-51.
The Examiner relies upon Seki (i-f 113) as teaching, inter alia, generating a
date stamp (Non-Final Act. 45--46).
Principal Issues on Appeal
Based on Appellant's arguments in the Appeal Brief (Appeal Br. 10-
24) and the Reply Brief (Reply Br. 4--13), the following principal issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 1, 2, 4---6, 8-11, 13, 15-
19, and 22-29 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter, because representative claim 1, taken as a whole in light of
the Specification, is directed to an abstract idea or combination of abstract
ideas implemented on generic computer equipment without reciting an
element or combination of elements that is significantly more than the
abstract idea(s) itself (themselves)?
(2) Did the Examiner err in rejecting claims 1, 2, 4---6, 8-11, 13, 15-
19, and 22-24 under 35 U.S.C. § 103(a) over the base combination of Rueter
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and Beyda because Beyda fails to teach or suggest the negative limitation
contained in limitation [A], and as recited in representative claim 1?
(3) Did the Examiner err in rejecting claims 25-29 under
35 U.S.C. § 103(a) as being obvious over the base combination of Rueter
and Beyda, as modified with Seki's teaching of a date stamp?
ANALYSIS
Issue (1): Patent-Ineligible Subject Matter
In Alice, the Supreme Court reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), for determining whether the claimed subject matter is
judicially-excepted from patent eligibility under § 101. Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim
nominally falls within one of the statutory categories of machine,
manufacture, process, or composition of matter, the first step in the analysis
is to determine if the claim is directed to a law of nature, a natural
phenomenon, or an abstract idea (judicial exceptions). Alice, 134 S. Ct. at
2355. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claim is directed to a judicial exception, such as an abstract idea, the
second step is to determine whether additional elements in the claim
"'transform the nature of the claim' into a patent-eligible application." Id. at
2355 ( quoting Mayo, 566 U.S. at 78). This second step is described as "a
search for an "'inventive concept"'-i.e., an element or combination of
elements that is ' ... significantly more than ... the [ineligible concept]
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itself."' Id. at 2355 (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73).
"[T]he first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314. In other words, a claim that defines the way by
which a computer-related result is achieved is distinguishable from a patent-
ineligible claim that simply describes a result.
The second step in the Alice analysis requires a search for an
"'inventive concept"' that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (2016) (quoting Alice, 134 S. Ct. at
2355). There must be more than "computer functions [that] are 'well-
understood, routine, conventional activit[ies]' previously known to the
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industry." Alice, 134 S. Ct. at 2359 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Based on Appellant's arguments (Appeal Br. 10-18; Reply Br. 4---6)
and our discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as
representative of claims 1, 2, 4--6, 8-11, 13, 15-19, and 22-29, and decide
the appeal of patent-ineligible subject matter rejection on the basis of
representative claim 1. We disagree with Appellant's arguments with
respect to claims 1, 2, 4---6, 8-11, 13, 15-19, 22-29. We highlight and
address specific findings and arguments regarding independent claim 1 for
emphasis as follows.
Step One of Alice
Regarding step one of Alice, Enfzsh held that the "directed to" inquiry
asks not whether "the claims involve a patent-ineligible concept," but instead
whether, "considered in light of the specification, ... 'their character as a
whole is directed to excluded subject matter."' Enfzsh, 822 F.3d at 1335
(internal citation omitted). Regarding improvements to computer-related
technology, the Court in Enfzsh held as follows:
We do not read Alice to broadly hold that all improvements in
computer-related technology are inherently abstract and,
therefore, must be considered at step two. Indeed, some
improvements in computer-related technology when
appropriately claimed are undoubtedly not abstract, such as a
chip architecture, an LED display, and the like. Nor do we think
that claims directed to software, as opposed to hardware, are
inherently abstract and therefore only properly analyzed at the
second step of the Alice analysis. Software can make non-
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to
conclude that all claims directed to improvements in computer-
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related technology, including those directed to software, are
abstract and necessarily analyzed at the second step of Alice, nor
do we believe that Alice so directs. Therefore, we find it relevant
to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea,
even at the first step of the Alice analysis.
Enfzsh, 822 F.3d at 1335. Thus, we determine whether the claims "focus on
a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, 837 F.3d at 1314.
We agree with the Examiner (Non-Final Act. 4--5, 8-9; Ans. 2--4)
claim 1, 10, and 17 are drawn to a combination of abstract ideas, namely:
organizing information by category, and storing and transmitting
information; comparing new/stored information and using rules to identify
options; indexing information by comparison; and making a
recommendation based on a relationship between a profile and services
offered (Non-Final Act. 4--5, 8-9).
Examining earlier cases can have a role in deciding whether a concept
that claims are directed to is an abstract idea. See Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a
definition [for what an 'abstract idea' encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided").
Courts have determined that similar concepts to those recited in claim
1 were directed to abstract ideas. See Morsa v. Facebook, Inc., 77 F. Supp.
3d 1007, 1013 (C.D. Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015)
( concluding that claims directed to "targeting advertisements to certain
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consumers" were no more than an abstract idea). As noted by the court in
Morsa, "targeted advertising is [a well-known] concept, insofar as matching
consumers with a given product or service 'has been practiced as long as
markets have been in operation."' Morsa, 77 F. Supp. 3d at 1013 (quoting
Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL
4382446, at *5 (D. Del. Sept. 3, 2014)). In other words, "[t]he concept of
gathering information about one's intended market and attempting to
customize the information then provided is as old as the saying, 'know your
audience."' Id. at 1013 (quoting OpenTV, Inc. v. Neiflix Inc., 76 F. Supp. 3d
886, 893 (N.D. Cal. 2014)).
In addition, the Federal Circuit has concluded that concepts similar to
the subject matter of claim 1 were directed to abstract ideas. See Affinity
Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
("tailoring of content based on information about the user--such as where the
user lives or what time of day the user views the content--is an abstract idea
that is as old as providing different newspaper inserts for different
neighborhoods") ( citing Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)); see also Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 712, 714-15 (Fed. Cir. 2014) (concluding claims
reciting steps receiving media content, associating the content with an
advertisement, providing the content for sale on the Internet while restricting
public access to the content, providing the content to a consumer without
charge in exchange for viewing an advertisement, and allowing access to the
content after viewing or interacting with the advertisement were directed to
the abstract idea of "showing an advertisement before delivering free
content").
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Our reviewing court has also concluded that abstract ideas include the
concept of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1372
(Fed. Cir. 2017) (concluding "claims directed to the collection, storage, and
recognition of data are directed to an abstract idea.").
Additionally, the collection of information and analysis of information
( e.g., recognizing certain data within the dataset) is also an abstract idea.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Similarly, "collecting, displaying, and manipulating data" is an
abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) ("merely presenting the results of
abstract processes of collecting and analyzing information ... is abstract as
an ancillary part of such collection and analysis") ( quotations omitted).
Moreover, our reviewing court recently has concluded that acts of
parsing, comparing, storing, and editing data are abstract ideas. Berkheimer
v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018); see also Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (holding that
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] mental processes within the
abstract-idea category" (citation omitted)). As in Electric Power, the
combination of various abstract ideas relating to data collection and analysis
is itself an abstract idea.
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Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, 855 F.3d at 1327 ("Adding
one abstract idea ... to another abstract idea ... does not render the claim
non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1094 (Fed. Cir. 2016) (determining the pending claims were directed
to a combination of abstract ideas).
In this light, the organizing information by category, and storing and
transmitting information; comparing new/stored information and using rules
to identify options; indexing information by comparison; and making a
recommendation based on a relationship between a profile and services
offered recited in the claims on appeal are a combination of abstract ideas.
Thus, claim 1 is drawn to a combination of abstract ideas.
Contrary to Appellant's arguments that the claims are similar to those
in Enfzsh (see Appeal Br. 13-14), Appellant has not demonstrated that the
claims "improve the way a computer stores and retrieves data in memory,"
as the claims in Enfish did via a "self-referential table for a computer
database." See Erifish, 822 F.3d at 1336, 1339. Appellant has also not
demonstrated that the claims provide an "unconventional technological
solution ... to a technological problem" that "improve[ s] the performance of
the system itself," as explained in Amdocs, 841 F.3d at 1300, 1302.
We note the similarity of claim 1 on appeal to the concept of
collecting information, analyzing it, and displaying results found ineligible
in Electric Power. In this regard, the claims of the instant application are
similar to the claims in Electric Power, which did "not go beyond requiring
the collection, analysis, and display of available information in a particular
field, stating those functions in general terms, without limiting them to
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technical means for performing the functions that are arguably an advance
over conventional computer and network technology." Elec. Power, 830
F.3d at 1351. Specifically, our reviewing court held that "collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas"
and that "analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category." Id. at 1353-54 (citations
omitted).
Our conclusion that claim 1 is directed to a combination of abstract
ideas is supported by analogy to the Federal Circuit's decision in Electric
Power, where the court concluded claims that focused on "gathering and
analyzing information of a specified content, then displaying the results"
were directed to an abstract idea. 830 F.3d at 1354.
Here too, Appellant's claim 1 recites no more than a generic network
device, database, and web pages to implement the claimed functions of
gathering and analyzing information, and then presenting recommendations.
Having concluded representative claim 1, as well as claims 2, 4---6, 8-
11, 13, 15-19, 22-29 grouped therewith, are directed to an abstract idea or
combination of abstract ideas that is/are patent-ineligible, we tum to step two
of the Alice test.
Step Two of Alice
Regarding step two of Alice, Appellant's contentions that the elements
of claim 1, taken as a whole, amount to significantly more than the abstract
ideas themselves (see Appeal Br. 15-18; Reply Br. 4---6), are unpersuasive.
Appellant's contentions that (i) the recited method for making
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recommendations "provides a service provider better insight into the
consumer's preferences, which are used for presenting service-related
recommendations to the consumer" (Appeal Br. 16 citing Spec. ,r 20); and
(ii) "the specific method of generating service-related recommendations
cannot be said to have been conventional or generic" (Appeal Br. 17), are
similarly unpersuasive.
Paragraphs 21 through 32 of the Specification describe the network
environment, devices, and database shown in Figures 2 and 3, and support
our understanding that the network device, service provider, and tracking
database recited in claim 1 on appeal are nothing more than standard, generic
computer components used for presenting recommendations via web pages.
Appellant has not demonstrated their claims provide a "solution ...
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as explained by the
Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014), or provide an "unconventional technological solution
... to a technological problem" that "improve[s] the performance of the
system itself," as explained in Amdocs, 841 F.3d at 1300, 1302.
We agree with the Examiner that claim 1 does not recite a
technological improvement or otherwise claim significantly more than the
abstract ideas themselves (Non-Final Act. 5-9; Ans. 4---6). Considering the
claimed elements individually and as an ordered combination, claim 1 does
no more than simply instruct the practitioner to implement the abstract idea
on a generic computer or processer. Alice, 134 S. Ct. at 2359; Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("Simply adding a
'computer aided' limitation to a claim covering an abstract concept, without
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more, is insufficient to render ... [a] claim patent eligible") (internal citation
omitted). And, merely making the practice of an abstract idea more effective
by implementing the idea on a computer does not suffice to meet the
inventive concept requirement of Alice. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible").
We are, therefore, not persuaded the Examiner erred by rejecting as
patent-ineligible independent claim 1, as well as claims 2, 4--6, 8-11, 13,
15-19, and 22-29 grouped therewith.
Issue (2): Obviousness of Negative Limitation [A] in Representative Claim 1
We have reviewed the Examiner's rejection of claims 1, 2, 4--6, 8-11,
13, 15-19, and 22-24 (Non-Final Act. 10-42) in light of Appellant's
arguments in the briefs (Appeal Br. 18-21; Reply Br. 6-9) that the Examiner
has erred, as well as the Examiner's response to Appellant's arguments
(Ans. 6-10).
Based on Appellant's arguments (Appeal Br. 18-21; Reply Br. 6-9)
and our discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as
representative of claims 1, 2, 4--6, 8-11, 13, 15-19, and 22-24, and decide
the appeal of the obviousness rejection over the combination of Rueter and
Beyda on the basis of representative claim 1. We disagree with Appellant's
contentions. With regard to representative independent claim 1, we adopt as
our own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Non-Final Act. 10-22), and (2) the reasons
set forth by the Examiner in the Examiner's Answer (Ans. 6-9) in response
to Appellant's Appeal Brief. We concur with the findings made by the
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Examiner as to Rueter and Beyda, and we provide the following for
emphasis.
"During examination, 'claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech.
Cir., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
1053-54 (Fed. Cir. 1997) (citation omitted). Negative limitations may be
claimed so long as the limitation is clear and supported by the original
disclosure, and the mere absence of a positive recitation of an element is not
a basis for a negative limitation. See MPEP § 2173 .05(i).
Disputed limitation [A] (see supra claim 1) is a negative limitation,
and recites "receiving, by the network device via the one or more web pages
and subsequent to the first anonymous contact, one or more other
anonymous contacts identifying the first street address and without other
identification of the consumer." This limitation is supported in part by
paragraph 17 of the Specification (see also Appeal Br. 5, Summary of
Claimed Subject Matter). Paragraph 17 of the Specification states, in
pertinent part, "[ c ]onsumer 100 may provide physical service address 105 to
service provider 115 in conjunction with a contact 135, but may provide no
other identifying information to service provider 115" (Spec. ,r 17)
( emphasis added). The purpose of not providing identifying information to
the service provider, while building a consumer contacts profile including a
physical street address and sites visited, is to "give the service provider
better insight into the customer's preferences and may be used for possible
service-related recommendations, or for presenting advertisements to the
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consumer" (Spec. ,r 20), via web pages (see claim 1 ). Inphi Corp. v. Netlist,
Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (holding that advantages or
disadvantages of each feature can constitute a "reason to exclude" under the
standard articulated in Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F .3d
1344, 1351 (Fed. Cir. 2012) ("Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation." A negative limitation is accorded the broadest reasonable
construction in light of the Specification and the "evidence before the
Board" (In re Morris, 127 F.3d at 1055).
Appellant's Specification at paragraphs 17 and 20 provide adequate
support for the negative limitation in claim 1 at issue before us, and it is
incumbent upon the Examiner to articulate sufficient findings and reasoning
in this regard in making a conclusion of obviousness. This the Examiner has
done (see Ans. 9--10). The Examiner finds (see Ans. 9--10), and we agree,
that inasmuch as Appellant's Specification describes a method that may
provide no other information than a physical address, so does Beyda (see
Beyda ,r,r 44).
Therefore, we agree with the Examiner (Non-Final Act. 10-22;
Ans. 6-9) that the combination of Rueter and Beyda teaches or suggests the
method recited in claim 1, including negative limitation [A].
Notably, Appellant's arguments (Appeal Br. 18-21) that Beyda fails
to disclose or suggest receiving anonymous contacts identifying a street
address without any other identification of a consumer do not address the
Examiner's reliance upon paragraphs 205 and 212 of Beyda (see Non-Final
Act. 18). Paragraph 205 of Beyda discloses collecting data associated with
an anonymous profile, as well as "identifying that visitor authoritatively
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upon visiting any site within the network" (i-f 205; see also ,r 211 ), and
paragraph 212 of Beyda amplifies this process by adding the feature of
doing so "in compliance with the publisher and network privacy policies"
(i-f 212). These teachings of Beyda provide perspective to the profile
information being collected from member computers 180 in databases 110 in
data warehouse 132, and which may include "home and work addresses"
(i-f 44), and/or "website pages visited" (i-f 46). This is especially true when
taken with the fact that both Rueter (i1i1 18, 26) and Beyda (i1i1205, 212)
teach the need for anonymity for users on a network, while continuing to
collect information about users (see Ans. 21 citing Rueter ,r 57; Beyda ,r,r 46,
47, 49).
In view of the foregoing, Appellant's contentions (Appeal Br. 18-27;
Reply Br. 6-9) that Beyda, and thus the combination of Rueter and Beyda,
fails to disclose or suggest a method including the receiving step (negative
limitation [A]) recited in claim 1, are unpersuasive. Accordingly, we sustain
the Examiner's obviousness rejection of claims 1, 2, 4---6, 8-11, 13, 15-19,
and 22-24 over the combination of Rueter and Beyda.
Issue (2): Obviousness of Time Stamp of Claims 25-29
Dependent claims 25-29 each recite generating time stamps and
combining the time stamps with street addresses to generate a service
address identifier (SAID). Appellant describes time stamps (see Fig. 1, 120;
Fig. 4,435; Fig. 8,805; Fig. 10, 1005) as consisting of either "a date and a
time" (Spec. ,r 16), or "the time, day and year" (Spec. ,r,r 43, 51 ). See also
Appeal Br. 8 (Summary of the Claimed Subject Matter, claim 25).
The Examiner relies upon Seki's disclosure of a "date stamp" (Seki
,r 113) as teaching or suggesting the recited "time stamp" (see Non-Final
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Act. 45; Ans. 11-13). We agree with Appellant that Seki's "date stamp, i.e.,
YYYY-MM-DD, cannot be reasonably construed to correspond to a
timestamp," and "the recited timestamp indicates a date and a time of day
(see Appellant's specification, para. 16)" (Appeal Br. 23; see also Reply
Br. 10). In this light, Appellant's contentions (Appeal Br. 22-23; Reply
Br. 9-12) that Seki's paragraph 113 only teaches a date stamp having a day
and year, and not a time of day, month, and year, are persuasive. We also
agree with Appellant (Reply Br. 10-11) that the recited timestamps are used
by a device that functionally changes the operation of the device, and thus
patentable weight must be given to the recited timestamps.
However, we do not agree with Appellant's contentions (Appeal
Br. 22-23; Reply Br. 11-12) that the combination of Rueter, Beyda, and
Seki does not disclose or suggest generating timestamps and combining the
timestamps with street addresses to generate service address identifiers
(SAIDs). We find, instead, that one of ordinary skill in the advertising art
would understand that associating a time with a website search is valuable to
making decisions regarding targeted advertising (i.e., presenting
recommendations to users about websites or advertisements based on a
customer's contact profile), and, therefore, it would have been obvious, in
view of the combination of Rueter, Beyda, and Seki (which teaches
generating a date stamp), to modify the date stamp of Seki to include a time
of day. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering
the disclosure of a reference, it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom" ( citation
omitted).).
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Therefore, we determine one of ordinary skill in the art would not
limit Seki' s teachings to generating dates, but would also include times of
day. "A reference may be read for all that it teaches, including uses beyond
its primary purpose." See In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir.
2012); EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
1985) ("A reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect."); In re Taylor Made Golf Company, Inc., 589 F.
App'x 967 (Fed. Cir. 2014) (the Board erred in failing to consider the prior
art in the context of the background knowledge that a person of ordinary
skill in the art would have had); Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013) ("[T]he [KSR] Court required an analysis that reads the
prior art in context, taking account of 'demands known to the design
community,' 'the background knowledge possessed by a person having
ordinary skill in the art,' and 'the inferences and creative steps that a person
of ordinary skill in the art would employ."' ( quoting KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398,418 (2007))).
Although there must be "a reason to combine prior art references"
(Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed.
Cir. 2012) (internal citations omitted)), and an obviousness determination
cannot rest upon impermissible hindsight reasoning, our reviewing court
"flexibly seeks evidence from before the time of the invention in the form of
some teaching, suggestion, or even mere motivation ( conceivably found
within the knowledge of an ordinarily skilled artisan) to make the variation
or combination" to guard against impermissible hindsight reasoning. Rolls-
Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010)
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(internal citations omitted). The motivation to combine references need not
be found in the references sought to be combined, but may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself. DyStar Textilfarben GmbH & Co.
Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006).
In the case before us, when tracking consumer behavior and website
access, it would have been obvious to one of ordinary skill in the art to track
exact times of day. For example, this information would be useful in
predicting what type of advertising to send to individual consumers ( e.g., a
consumer looking for food delivery at 3 a.m. in their area may be interested
in receiving recommendations for restaurants that are open at that hour or
that deliver to their neighborhood). Tracking a time, in addition to the date,
would improve accuracy of the information used to make recommendations
to users. This is similar to punching a time clock, which records a time, day,
month, and year to track employee work time-tracking the time of day, and
not just the date, provides much more accurate and useful information.
This is especially true when taken with (i) the understanding of one of
ordinary skill in the advertising art that associating a time with a website
search is valuable to making decision regarding targeted advertising (i.e.,
presenting recommendations to users about websites or advertisements
based on a customer's contact profile); and/or (ii) Seki's disclosure that it is
desirable to use cookies to identify a user terminal 40 (i-f 133) and to then
update a member profile database 125 with a customer's last date that the
profile ( containing personal information such as a street address as taught by
Beyda) was changed (see ,r,r 112, 113, 184).
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The combination of Rueter, Beyda, and Seki, taken with the
knowledge of the ordinarily skilled artisan, teaches or suggests the subject
matter of claims 25-29. Rueter (i1i1 104, 105), Beyda (i1i1205, 211 ), and
Seki (i-f 133) all teach using cookies in the realm of Internet usage, as well as
website visitor profiles (see Rueter Abstract, visitor profiles; Beyda ,r,r 44,
46, audience member profile information; Beyda ,r,r 205,211,212, visitor
profile information; Seki ,r 113, profile records). Further, both Rueter (i1i1
18, 26) and Beyda (i1i1205, 212) teach the need for anonymity for users on a
network, while continuing to collect information about users (see Ans. 21
citing Rueter ,r 57; Beyda ,r,r 46, 47, 49). Collecting information about
anonymous users as in Rueter and Beyda, such as a physical service address
(as in Beyda's ,r 44), as well as web sites visited (Beyda ,r,r 46) and times
visited (Seki ,r 113), would have been obvious to one of ordinary skill in the
art at the time of Appellant's invention and "logically would have
commended itself to an inventor's attention in considering" the problems
addressed by claims 25-29. See In re Icon Health and Fitness, Inc., 496
F.3d 1374, 1380 (Fed. Cir. 2007).
Moreover, modifying Rueter with Beyda, Seki, and/or the knowledge
of the ordinarily skilled artisan would merely produce predictable results and
would not be "uniquely challenging or difficult for one of ordinary skill in
the art" at the time of Appellant's invention (see Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citingKSRint'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007))).
We are, therefore, not persuaded the Examiner erred in rejecting
claims 25-29 as obvious over the teachings and suggestions of Rueter and
Beyda, and as modified by Seki's teaching of a date stamp (see Seki ,r 113).
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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 2, 4---6, 8-11,
13, 15-19, and 22-29 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
(2) The Examiner did not err in rejecting claims 1, 2, 4---6, 8-11,
13, 15-19, and 22-24 under 35 U.S.C. § 103(a) over the combination of
Rueter and Beyda.
(3) The subject matter of claims 25-29 would have been obvious to
one of ordinary skill in the art at the time of Appellant's claimed invention
under 35 U.S.C. § 103(a) over the combination of Rueter, Beyda, and Seki.
DECISION
(1) We affirm the Examiner's decision to reject claims 1, 2, 4---6, 8-
11, 13, 15-19, and 22-29 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
(2) We affirm the Examiner's decision to reject claims 1, 2, 4---6, 8-
11, 13, 15-19, and 22-29 under 35 U.S.C. § 103(a) as being obvious over
the base combination of Rueter and Beyda alone ( claims 1, 2, 4---6, 8-11, 13,
15-19, and 22-24), or taken with Seki (claims 25-29).
(3) To the extent that we have relied upon new findings and/or
reasoning not relied on by the Examiner as teaching or suggesting the time
stamp of claims 25-29, we also designate our affirmance of the obviousness
rejection of claims 25-29 as a new ground of rejection under 37 C.F.R. §
41.50(b ).
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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, 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. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, Appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
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AFFIRMED;
37 C.F.R. § 4I.50(b)
26