Ex Parte Maier et al

Patent Trial and Appeal Board

Sep 12, 2018

12357514 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/357,514 01/22/2009
46159 7590 09/13/2018
SUGHRUE MION PLLC
USPTO CUSTOMER NO WITH IBM/SVL
2100 PENNSYLVANIA A VENUE, N.W.
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Albert Maier
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.
DE920080189US1/Al0615 1854
EXAMINER
ANDERSON,FOLASHADE
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
09/13/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT MAIER, DIRK NOWAK, MARTIN OBERHOFER,
THOMAS SCHWARZ, and BAXTER R. Y AZBEK
Appeal2017-006331
Application 12/357,514
Technology Center 3600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7 and 10-12, which are all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation, as the
real party in interest. App. Br. 2.
Appeal2017-006331
Application 12/357,514
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to "a method and a system used to
generate real life leads for participants of virtual worlds and interact with
real world Customer Relationship Management (CRM) systems." Spec. ,r 1.
Exemplary Claim
Claim 1 is exemplary and illustrative of the invention and reads as
follows:
1. A method for turning virtual world participants
into real life leads, comprising:
presenting, by a processor, a virtual location within a
virtual world for access by an avatar, the avatar operated by a
real-world human user;
performing, by a processor, an interaction with the avatar
within the virtual world responsive to the avatar accessing the
virtual location;
identifying, by a processor, the avatar based on
characteristics of the avatar within the virtual world, including
avatar ID and avatar name;
determining, by a processor, whether the avatar is
associated with an existing customer registration, and
determining whether the existing customer registration for the
avatar identifies a real-world customer based on the identified
characteristics of the avatar, the existing customer registration
stored in a master data management (MDM) system tracking
customer registrations for a plurality of human users and
connected to a plurality of customer relationship management
(CRM) systems;
creating, by a processor, a customer registration within
the MDM system responsive to determining the avatar is not
associated with the existing customer registration stored in the
MDM system;
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Application 12/357,514
locating, by a processor, the existing customer
registration within the MDM system responsive to determining
the avatar is associated with the existing customer registration
stored in the MD M system;
collecting, by a processor, real-world information about
the real-world human user operating the avatar through the
interaction with the avatar;
storing, by a processor, the collected real-world
information in association with the existing customer
registration into a customer registration database within the
MDM system; and
communicating, by a processor, the real-world
information stored in the customer registration database within
the MDM system to the plurality of CRM systems,
wherein the existing customer registration in the MDM
system identifying the real-world customer is associated with a
plurality of avatars from a plurality of virtual worlds so the real-
world information of each of the real-world customers is
identified through the characteristics of the plurality of avatars
from the plurality of virtual worlds,
wherein the plurality of avatars from the plurality of
virtual worlds are connected to the MDM system by a plurality
of virtual world connectors, and the MDM system verifies,
standardizes and associates the incoming data, and detects a
duplicate of the data and removes the duplicate, and
wherein, in response to the determining indicating that a
new avatar is registered, triggering a dialog with the avatar
offering a first incentive to the avatar; and
wherein, in response to the determining indicating that
the avatar is registered in the MDM server and the determining
further indicating that none of the identified characteristics are
available for the real-world customer, triggering an offering of a
second incentive that is larger than the first incentive.
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Application 12/357,514
The Examiner's Rejection
Claims 1-7 and 10-12 stand rejected under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. See Final Act. 7-8.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the briefs that the Examiner has erred. We are unpersuaded by
Appellants' contentions and agree with and adopt the Examiner's findings
and conclusions in: (i) the action from which this appeal is taken (Final Act.
7-8); and (ii) the Answer (Ans. 5-17) to the extent they are consistent with
our analysis below.
Principles of Law
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. Pty. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the
Supreme Court explained that § 101 "contains an important implicit
exception" for laws of nature, natural phenomena, and abstract ideas. See
Diamondv. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court
set forth a two-step analytical framework for evaluating patent-eligible
subject matter: First, "determine whether the claims at issue are directed to"
a patent-ineligible concept, such as an abstract idea. Alice, 134 S. Ct.
at 2355. If so, "consider the elements of each claim both individually and
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'as an ordered combination' to determine whether the additional elements"
add enough to transform the "nature of the claim" into "significantly more"
than a patent-ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S.
at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, "an inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One
The Examiner rejects claims 1-7 and 10-12 under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter. See Final Act.
7-8; Ans. 3--4. The Examiner particularly determines that the claims are
directed to "the abstract idea of organizing human activities" and "the
abstract idea of gather and categorizing consumer data [which] is similar to
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the abstract idea of using categories to organize transactional information
(Cyberfones)." Final Act. 7; Ans. 3.
The Examiner further finds the claims use generic computer
components to perform generic computer functions, which "do not amount
to significantly more than the abstract idea." See id. The Examiner
particularly determines:
Without a computer, one may process data organization by
manually recording data points and mentally categorize them
according to a desired data representation (i.e. manually logging
customer data based on identity gathered via a general purpose
computer). Moreover, the steps of gathering, parsing, and
deduplicating data from virtual worlds do not satisfy this prong
because these activities are well-understood, routine and
conventional in the field of lead generation.
Final Act. 8; Ans. 4.
Appellants contend the Examiner erred. See App. Br. 12-27; see also
Reply Br. 4--10. Appellants argue that "[s]imilar to the analysis in Enfzsh,
the inquiry regarding the claims of the present application should be whether
the focus of the claims is on the specific asserted improvement in computer
capabilities." App. Br. 14--15. Appellants assert claim 1 recites:
[ d]etermining, by a processor, whether the avatar is associated
with an existing customer registration, and determining whether
the existing customer registration for the avatar identifies a real-
world customer based on the identified characteristics of the
avatar, the existing customer registration stored in a master data
management (MDM) system tracking customer registrations for
a plurality of human users and connected to a plurality of
customer relationship management (CRM) systems.
App. Br. 15-16. Appellants point to paragraph 51 of their Specification for
a description of the recited activities and their benefits and argue such
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Application 12/357,514
recitation is similar to those of the claims in Research Corp. Tech., Inc. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). App. Br. 16.
We disagree. The "abstract idea" category encompasses a variety of
concepts including, among other things, mathematical formulas and methods
of organizing human activity. See Alice, 134 S. Ct. at 2355-56; Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir.
2015) ( deeming the claim at issue is "not meaningfully different from the
ideas found to be abstract in other cases before the Supreme Court and our
court involving methods of organizing human activity"); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1351-55 (Fed. Cir. 2014) (creating a
contractual relationship); Fort Props., Inc. v. Am. Master Lease LLC,
671 F.3d 1317, 1318, 1322-23 (Fed. Cir. 2012) (enabling tax-free property
exchanges); Bancorp Servs., L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266,
1277 (Fed. Cir. 2012) (administering and tracking life-insurance-policy
values); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330-34 (Fed. Cir.
2012) (applying for credit); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1367---68, 1376-77 (Fed. Cir. 2011) (verifying credit-card
transactions); In re Comiskey, 554 F.3d 967, 970-71, 981 (Fed. Cir. 2009)
(conducting an arbitration); In re Schrader, 22 F.3d 290,291, 293-94
(Fed. Cir. 1994) (bidding at an auction).
Appellants argue the claims are not abstract because their focus is on
specific asserted improvements in computer capabilities as described in
paragraph 51 of the Specification. App. Br. 14--15. Appellants further
argue, unlike the claims in Cyberfone, the present claims recite "a specific
way to manage computer server ( or a customer relationship management
(CRM) system) across multiple virtual worlds" and include features that "are
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not generic computer functions that are well-understood, routine and
conventional activities previously known to the pertinent industry." App.
Br. 18.
Appellants' arguments do not persuade us of Examiner error.
Implementing an abstract idea using a "physical machine" does not impart
patent eligibility. See Mayo, 566 U.S. at 84; see also Ans. 2-3. "[N]ot
every claim that recites concrete, tangible components escapes the reach of
the abstract-idea inquiry." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d
607, 611 (Fed. Cir. 2016). The inability of a human to accomplish each step
"does not alone confer patentability." See FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). In Alice, for example,
"[a]ll of the claims [we]re implemented using a computer." 134 S. Ct.
at 2353, 2360.
We further observe Appellants' assertions disregard: (1) the
Examiner's explanation that the claims "are directed toward an abstract idea
consistent with the types of abstract ideas identified by the courts"; and
(2) the Examiner's discussion of Cyberfone. Final Act. 7; see Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014).
In Cyberfone, the Federal Circuit determined that claims for "using
categories to organize, store, and transmit information" were directed to an
abstract idea. 558 F. App'x at 990-92. Furthermore, adding one abstract
idea ("using categories to organize, store, and transmit information") to
another abstract idea ("comparing new and stored information and using
rules to identify options") does not render the claims non-abstract. See App.
Br. 16; RecogniCorp, 855 F.3d at 1327. See also McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Enfish, LLC v.
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Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). In Enfzsh, "the plain focus
of the claims is on an improvement to [the] computer functionality itself."
Enfzsh, 822 F.3d at 1336. In McRO, the claims "focused on a specific
asserted improvement in computer animation." McRO, 837 F.3d at 1314. In
contrast, we do not find a claimed focus on a specific technical improvement
here. Hence, we discern no error in the Examiner's analysis of court
decisions.
We also find unpersuasive Appellants' argument that
"collecting, by a processor, real-world information about the
real-world human user operating the avatar through the
interaction with the avatar; ... and communicating, by a
processor, the real-world information stored in the customer
registration database within the MDM system to the plurality of
CRM systems, ... wherein the plurality of avatars from the
plurality of virtual worlds are connected to the MDM system by
a plurality of virtual world connectors, and the MDM system
verifies, standardizes and associates the incoming data, and
detects a duplicate of the data and removes the duplicate" are
enough to qualify as "[a]dding unconventional steps that
confine the claim to a particular useful application", as set
forth in the Interim Guidance on Patent Subject Matter
Eligibility issued December 16, 2014.
Reply Br. 4. We also disagree with Appellants' assertion that their claims
recite subject matter that is similar to that of the claims in McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). "We
therefore look to whether the claims [here] 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.
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In McRO, the court determined that claim 1 "focused on a specific
asserted improvement in computer animation" for achieving automated lip
synchronization of3-D characters. Id. at 1314--15. Here, representative
claim 1 is directed to a process for verifying a user and collecting
information, which Appellants characterize as "improvements to computer
systems implementing virtual worlds" or "a problem and solutions related
generating real life leads for participants of virtual worlds and interact with
real world Customer Relationship Management (CRM) systems" (Reply Br.
6) by invoking a generic processor, rather than any improvement to
computer technology. In contrast to McRO, which focused on a specific
improvement in computer animation technology, Appellants' claim does not
concern an improvement to computer capabilities, but instead relates to an
alleged improvement in managing the interaction of virtual worlds'
participants with real world product marketing. In fact, the claims here
cover data collection, manipulation, and communication. App. Br. 29--37
(Claims App.).
In that regard, the Examiner correctly determines that
The Office finds that the claimed invention falls in to the
category of a process that qualifies as an "abstract idea" for
which computers are invoked merely as a tool. The claimed
invention is directed to "turning virtual world participants into
real life leads" via data collection and data categorization. See
Claims. It is readily apparent that performing lead generation is
a well-known type of commercial activity and an abstract idea.
For example, multiple vendors may reconcile their CRMs to
identify leads and award cross-sale loyalty points. See
Specification [0051].
Ans. 5---6. The Federal Circuit has ruled that claims covering data collection,
manipulation, and communication were directed to abstract ideas. See, e.g.,
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SAP Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 WL 2207254, at *2,
4--5 (Fed. Cir. May 15, 2018); Smart Sys. Innovations, LLC v. Chi. Transit
Auth., 873 F.3d 1364, 1368-73 (Fed. Cir. 2017); Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1047, 1054--56 & n.6 (Fed. Cir. 2017);
Elec. Power Grp., 830 F.3d at 1351-54.
Mayo/Alice Step Two
Appellants assert that the claims satisfy Mayo/Alice step two because
the claimed features "are necessarily rooted in computer technology in order
to overcome a problem and solution specifically arising in the realm of
virtual worlds" and "are specific limitations other than what is well-
understood routine and conventional in the field." App. Br. 19. Appellants
also assert that the claims here are similar to the claims in DDR Holdings,
and are thus drawn to patentable subject matter. See App. Br. 20-22 ( citing
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
DDR Holdings does not help Appellants.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied Mayo/Alice step two because "the claimed solution amount[ ed] to
an inventive concept for resolving [a] particular Internet-centric problem,"
i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59;
see Synopsys, 839 F.3d at 1151 (noting that "[i]n DDR Holdings, we held
that claims 'directed to systems and methods of generating a composite web
page that combines certain visual elements of a "host" website with content
of a third-party merchant' contained the requisite inventive concept"). In
DDR Holdings, the Federal Circuit explained that the patent-eligible claims
specified "how interactions with the Internet are manipulated to yield a
desired result ... that overrides the routine and conventional sequence of
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events ordinarily triggered by the click of a hyperlink." DDR Holdings,
773 F.3d at 1258. The court reasoned that those claims recited a
technological solution "necessarily rooted in computer technology" that
addressed a "problem specifically arising in the realm of computer
networks." Id. at 1257.
We also are not persuaded that the claimed features are rooted in
computer technology because "the claimed rules and algorithms expressly
focuses on the unique nature of the virtual worlds, which necessarily
requires post-internet and post-computer technology, in order to generate of
real life leads for participants of virtual worlds and interact with real world
Customer Relationship Management (CRM) systems." Reply Br. 8. We
also disagree with Appellants' reliance on DDR Holdings and the assertion
that the claim
relies on the unique nature of the virtual worlds, which has no
equivalent system in the brick and mortar context, to determine
whether the avatar is associated with an existing customer
registration, and determining whether the existing customer
registration for the avatar identifies a real-world customer based
on the identified characteristics of the avatar.
Reply Br. 9. In fact, the argued improvement is focused on an alleged
improvement to the abstract idea. See Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) ("[T]he focus of the claims is not
on such an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools."). Furthermore, according to the
Federal Circuit, "DDR Holdings does not apply when ... the asserted claims
do not 'attempt to solve a challenge particular to the Internet."' Smart Sys.,
873 F.3d at 1375 (quoting TL! Commc 'ns, 823 F.3d at 613). Similarly, the
claims here do not attempt to solve a challenge particular to managing
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computer servers across multiple virtual worlds. Among other things, they
do not require any unconventional network/ storage configurations or any
uncommon customer relationship management (CRM) systems.
Lastly, Appellants assert that the claims satisfy Mayo/Alice step two
because "the improvements to computer/internet technology offered by the
claimed features" such as "a specific way to solve problems arising in the
realm of computer network" transforms them into significantly more than a
patent-ineligible abstract idea. App. Br. 24--25. Appellants also assert that
"instead of the plurality of virtual world users, the system can specifically
provide marketing campaign/ advertisement to a single user in real world"
and produce "the effect of automatically reducing load of the computer
networks utilized in providing the marketing campaign/advertisements."
App. Br. 25.
Appellants' assertions do not persuade us of Examiner error. "The
search for a § 101 inventive concept is ... distinct from demonstrating § 102
novelty." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016); see Diehr, 450 U.S. at 188-89; Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
"[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016). "[A] claim for a new abstract idea is still an abstract idea."
Synopsys, 839 F.3d at 1151. Similarly, a claim for a beneficial abstract idea
is still an abstract idea. See Ariosa, 788 F.3d at 1379-80. Further, the
Federal Circuit has expressly rejected the notion that "abstract ideas remain
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patent-eligible under § 101 as long as they are new ideas, not previously
well known, and not routine activity." Ultramercial, 772 F.3d. at 714--16.
Thus, the claims' alleged novelty and improvements fail to provide an
inventive concept needed to satisfy Mayo/Alice step two.
The claims here do not achieve an improvement in computer
functionality. See Ans. 14. Appellants do not describe an advance in
hardware or software that, for example, causes a computer itself or a
database itself to perform the marketing functions more efficiently.
Appellants do not address the operation of a computer itself or a database
itself. Instead, Appellants discuss collecting real-world information about
users operating the avatar that allegedly solves "related generating real life
leads for participants of virtual worlds and interact with real world Customer
Relationship Management (CRM) systems." Reply Br. 6 (quoting Spec.
,r,r 2-12). Further, the claims here do not recite a technological solution to a
technological problem specific to computer algorithms and networks, e.g.,
because they do not require any unconventional network configurations.
App. Br. 29-37 (Claims App.). Rather, they require generic computer
components for collecting and verifying user data.
Preemption
Appellants contend that the claims do not seek to "tie up" any judicial
exception and instead recite "a specific way to manage computer server ( or a
customer relationship management (CRM) system) across multiple virtual
worlds" and do not "pre-empt or tie up all methods of generating leads (i.e.,
the purported abstract idea)." App. Br. 23-24.
Appellants' contentions do not persuade us of Examiner error. See
Ans. 13 (addressing monopolization and preemption). While preemption
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may denote patent ineligibility, its absence does not demonstrate patent
eligibility. See FairWarning, 839 F.3d at 1098. For claims covering a
patent-ineligible concept, preemption concerns "are fully addressed and
made moot" by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
CONCLUSION
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claims 1-7 and 10-12.
DECISION
We affirm the Examiner's decision to reject claims 1-7 and 10-12.
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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