Ex Parte Mitrovic

Patent Trial and Appeal Board

Dec 28, 2018

13282199 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/282,199 10/26/2011
49845 7590 01/02/2019
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Ivan Mitrovic
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.
2043.972US 1 2104
EXAMINER
BEHESHTI, BRENDON
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IV AN MITROVIC
Appeal2017-010148 1
Application 13/282, 1992
Technology Center 3600
Before ALLEN R. MACDONALD, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) the Examiner's decision
rejecting claims 1-5, 8, and 20-23. Final Act. 2. Claims 9-19 are
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
October 20, 2016); the Final Office Action ("Final Act.," mailed March 18,
2016); the Examiner's Answer ("Ans.," mailed March 23, 2017); and the
originally filed Specification ("Spec.," filed October 26, 2011 ).
2 According to Appellant, eBay, Inc. is the real party-in-interest. App.
Br. 2.
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Application 13/282,199
II. STATEMENT OF THE CASE
The recited methods, systems, and instructions stored on computer
readable media "relate[] generally to data processing within a network-based
system operating over a distributed network, and more specifically to
systems and methods to deliver location-aware offers based on missed
purchase opportunities." Spec. ,r 1; see id. Fig. 8 ("swim-lane chart
illustrating a method for providing location-aware offers based on missed
purchase opportunities"). As noted above, claims 1-5, 8, and 20-23 are
pending. Claims 1, 20, and 21 are independent. App. Br. 39, 40-42 (Claims
App 'x ). Claims 2-5 and 8 depend directly from claim 1; and claims 22 and
23 depend directly from claim 21. Id. at 39-40, 42--43.
Claim 1, reproduced below, is illustrative.
1. A method to deliver a location-aware offer, the method
compnsmg:
aggregating, on a network-based system, user profile data
of a user from a plurality of commerce systems separate from the
network-based system, the user profile data including a
demonstrated purchase action that includes a reference to an
item;
extracting, at the network-based system, the demonstrated
purchase action from the user profile data, the demonstrated
purchase action comprising an action indicating an interest in an
item without subsequent purchase of the item;
generating, on the network-based system, a demonstrated
purchase list based at least in part on the demonstrated purchase
action;
receiving, at the network-based system, current location
data specifying a current location of a client device associated
with the user;
determining that the client device is within a pre-defined
proximity to a merchant location based on the current location
data;
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accessing an inventory of the merchant location to
compare the inventory against the demonstrated purchase list;
identifying a matching inventory item within the inventory of the
merchant and the demonstrated purchase list, the matching
inventory item comprising the referenced item;
generating an offer for the matching inventory item in
response to the determining that the user is within the pre-defined
proximity to the merchant location and the identifying the
matching inventory item to the item referenced by the
demonstrated purchase action, the offer based on the
demonstrated purchase action; and
causing display of the offer to the client device.
Id. at 39.
III. REFERENCES
The Examiner relies upon the following prior art in rejecting the
pending claims:
DeWitt et al. ("DeWitt") US 2009/0076925 Al Published Mar. 19, 2009;
Filed Sept. 13, 2007
Samson et al. ("Samson") US 7,228,287 B 1 Issued June 5, 2007;
Filed Nov. 13, 2000
J.P. Manninen, "Geofencing" enables new location-based apps. raises
privacy concerns, VENTURE BEAT (Apr. 23, 2010),
http://venturebeat.com/2010/04/23/ geofencing-pushes-services-to-phones/
("Manninen").
IV. THE REJECTIONS
Claims 1-5, 8, and 20-23 3 stand rejected under 35 U.S.C. § 112, ,r 1,
as lacking written description (Final Act. 3--4); and claims 1-5, 8, and 20-
3 The Examiner finds that "[ d]ependent claims each inherit the deficiencies
of their respective parent claims and are thus also rejected." Final Act. 4.
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23 4 stand rejected under 35 U.S.C. § 112, ,r 2, as indefinite (id. at 4---6). 5
Claims 1-5, 8, and 20-23 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Id.
at 10-14. Claims 1-5, 8, and 20-23 also stand rejected under 35 U.S.C.
§ 103(a) as rendered obvious over the combined teachings of Samson and
De Witt, alone or in combination with Manninen. Id. at 14--21.
Unless otherwise indicated, we adopt the Examiner's findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis. We address these rejections below.
V. ANALYSIS
A. Adequate Written Description
The Examiner finds that
[t]he claim(s) contains subject matter which was not described in
the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor or a joint inventor, or
for pre-AIA the inventor(s), at the time the application was filed,
had possession of the claimed invention.
Final Act. 3. In particular, the Examiner finds that, although Appellant
amended the independent claims to recite "extracting the demonstrated
4 The Examiner finds that "[ d]ependent claims each inherit the deficiencies
of their respective parent claims and are thus also rejected." Final Act. 6.
5 The Examiner has withdrawn rejections to claim 20 under 35 U.S.C. § 112,
,r,r 2, 6. Ans. 6. The Examiner also objects to the drawing and to the
Specification. Final Act. 2 (citing 37 C.F.R. § 1.75(d)(l); MPEP
§§ 608.0l(o), 608.02(g)). The objections are not subject to review on
appeal. MPEP § 706.01; see App. Br. 28-29; Ans. 2-5. All MPEP citations
herein are to MPEP Rev. 08.2017, January 2018.
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purchase action from the user profile data, the demonstrated purchase action
comprising an action indicating an interest in an item without subsequent
purchase of the item," the Specification does not discuss "demonstrated
purchase action," and
[ t ]he only reference to extraction of information from the profile
data is in Spec ,r 19, which merely states that the extraction is
performed. There is no disclosure of how the claimed function
is specifically accomplished by the Applicant; rather the entirety
of the disclosure is presented in functional terms, wherein the
functions are performed by various modules or systems that are
disclosed merely as black-boxes.
Final Act. 3 (emphasis added); see Ans. 7-9.
Appellant disagrees and contends that, although the terms
"demonstrated purchase action" and "demonstrated purchase list," recited in
the independent claims, do not appear in the Specification, the terms are
supported by the Specification. Specifically, the Specification explains that:
In an example, a network-based publication system can maintain
an intended purchase list for each user that includes a list of
products and services that the user has demonstrated an interest
in purchasing (implicitly or explicitly). Table 1 contains an
example list of actions a network-based publication system can
analyze to populate an intended purchase list.
Spec. ,r 18; see id. ,r 19 ("[T]he network-based publication system 120 can
work with both merchandizing system 134 and inventory system 132 to ...
match merchandise on which the merchant wants to offer deals with missed
purchase opportunities extracted from user profile data associated with
user 110." (emphasis added)). Table 1, labeled "Demonstrated Purchase
Interest," lists numerous implicit and explicit actions "indicating an interest
in an item without subsequent purchase of the item." See Spec. ,r 18; see
also id. ,r,r 31, 59 ( describing hardware for accessing databases).
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The Federal Circuit has explained that "[t]he test for the sufficiency of
the written description 'is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date."' Vasudevan
Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015)
(quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane)). In Vasudevan Software, the court considered whether
disclosure in the patent's specification of "accessing a plurality of
incompatible source databases" provided written description for claim
recitations of "disparate databases." Id. at 682. The court concluded that
"[t]he fact that these portions of the specification do not speak in haec verba
of accessing 'disparate databases' does not eliminate as a genuine issue of
material fact the existence of at least some discussion, and, therefore,
possession, of the accessing of disparate databases, as claimed." Id. at 682-
83. For similar reasons, we conclude that Appellant has shown adequate
written description here. App. Br. 29-32 ( citing Spec. ,r,r 18, 31, 59).
Further, we note that 35 U.S.C. § 112, ,r 1, requires that the Applicant
provide both a written description and an enabling disclosure of the claimed
invention.
A specification must "enable" a person of skill in the art to make
and use the claimed invention. Enablement is a legal question
based on underlying factual determinations. A claim is
sufficiently enabled even if "a considerable amount of
experimentation" is necessary, so long as the experimentation "is
merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed."
Vasudevan Software, 782 F.3d at 684 (emphasis added; citations omitted;
quoting In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). The Examiner's
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emphasis on the Specification's alleged failure to explain "how" the claimed
function is accomplished suggests that the Examiner has conflated the
written description and enablement requirements.
We determine that the Examiner erred in rejecting claims 1-5, 8, and
20-23 under 35 U.S.C. § 112, ,r 1, as lacking adequate written description,
and we do not sustain that rejection.
B. Claims Sufficiently Definite
1. "extracting" step
Each of the independent claims recites the step of "extracting, at the
network-based system, the demonstrated purchase action from the user
profile data, the demonstrated purchase action comprising an action
indicating an interest in an item without subsequent purchase of the item."
In In re Packard, the Federal Circuit addressed indefiniteness in the context
of pre-issuance examination. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir.
2014). The court held that an examiner properly may reject a pending claim
as indefinite if it "contains words or phrases whose meaning is unclear." Id.
at 1310; see Tinnus Enter., LLC v. Telebrands Corp., 733 Fed. App'x 1011,
1020 (Fed. Cir. 2018) (finding claims not indefinite under either Packard or
Nautilus, Inc. v. Biosig Insts., Inc., 134 S. Ct. 2120 (2014)); Ex parte
McAward, Appeal No. 2015-006416 (PTAB Aug. 25, 2017) (Precedential)
(holding that Packard governs when determining indefiniteness during pre-
issuance examination).
With respect to this "extracting" step recited in the independent
claims, the Examiner finds that:
Applicant's original disclosure does not discuss "demonstrated
purchase action." The only reference to extraction of information
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from the profile data is in Spec ,r 19, which merely states that the
extraction is performed. There is no disclosure of how the
claimed function is specifically accomplished by the Applicant.
As such, the metes and bounds of the claims cannot be
reasonably ascertained.
Final Act. 4. The Examiner also finds that because there is no clear
definition of the term "demonstrated purchase action" in the Specification,
especially in view of the recitation of "intended purchase indicator" in the
original claims,
PHOSITA cannot reasonably understand what specifically must
be possessed or performed to infringe on the claims without
resort to undue conjecture or speculation (for example as to the
actual nature of the claimed data, how it differs from other types
of claimed data, or how the extraction of this type of data would
vary from the other types) and no reasonable metes or bounds
can be accorded to the claim limitation.
Ans. 11-12. Thus, the Examiner concludes that this claim limitation is
indefinite.
We begin our analysis with the language of the claim, which provides
an explanation of the term "demonstrated purchase action," namely, "an
action indicating an interest in an item without subsequent purchase of the
item. " 6 See Spec. ,r 18 (Table 1 listing thirteen actions exemplifying
demonstrated interest). However, "[the] Examiner interprets 'demonstrated
purchase action' to be merely a name or label for data or information, which
is processed by the computer as any other data according to programming."
Final Act. 7; see Cox Comms., Inc. v. Sprint Comms. Co., 838 F.3d 1224,
1232 (Fed. Cir. 2016) ("To be sure, we have generally acknowledged that an
6 As an initial matter, the Examiner contends that Appellant has failed to
respond to this rejection and, thus, has waived any response. Ans. 12. We
disagree. Appellant has contested this rejection. App. Br. 32-34.
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indefiniteness analysis under 35 U.S.C. § 112, ,r 2 is 'inextricably
intertwined with claim construction."' ( citation omitted)). Claim
interpretation is a question of law, which we review de novo.7 The
Examiner's interpretation of this term is overly broad and is divorced from
the plain language of the claim and the descriptions of the Specification.
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) ("While
the broadest reasonable interpretation standard is broad, it does not give the
Board an unfettered license to interpret the words in a claim without regard
for the full claim language and the written description." ( citations omitted)).
Specifically, Appellant contends that:
"Table 1 contains an example list of actions a network-based
publication system can analyze to populate an intended purchase
list [information stored in one or more databases]," one of
ordinary skill in the art, having knowledge of a database structure
and how information is stored and extracted from a database,
would be reasonably appraised of how to avoid infringement of
the claims.
App. Br. 33-34 ( quoting Spec. ,r 18); see Spec. ,r 31 ( describing means for
accessing databases directly and through a server), ,r 59 (describing the use
of hardware modules to receive and operate on information). Thus,
Appellant relies on the same Specification portions to respond to this
rejection as relied upon with respect to the lack of written description
rejection. App. Br. 32-34 (citing Spec. ,r,r 18, 31, 59); but see Ans. 8-9.
Appellant contends that the claim itself and the Specification describe the
type of information that would be extracted and the Specification explains
7 The Examiner asserts that Appellant has waived any challenge to the claim
interpretations. Ans. 19. We find that Appellant has presented alternative
interpretations where appropriate. See App. Br. 28-35.
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how that information would be extracted in a manner that is not unclear and
would "notify the public of what is within the protections of the patent, and
what is not" (Packard, 7 51 F .3d at 1313). App. Br. 33-34; see id. at 28-29.
The Examiner bears the burden of demonstrating indefiniteness. On this
record, the Examiner has not met that burden.
We conclude that, in view of the language of the claim and the cited
explanations from the Specification, the meaning of the "extracting" step is
not unclear.
2. "causing" step
Each of the independent claims recites the step of "causing display of
the offer to the client device." The Examiner finds that:
The specification alludes generally that causing of actions may
be done by computer instructions. (See Spec ,r 67, ,r,r 69-70).
Yet, the disclosure is devoid of any specific description of such
causing. As such, it is not clear what specifically must be
performed or provided to perform the claimed subject matter.
Therefore, one of ordinary skill in the art would not be
reasonably appraised of how to avoid infringement of the claim.
Final Act. 5. Specifically, the Examiner finds that "it is not possible to
determine what precludes the displaying, so that it could be determined
what, if anything, needs to specifically be provided or performed to 'cause'
the display." Ans. 12. Thus, Examiner finds that, although "delivering" an
offer to a client device or "displaying" the offer on the device would be
definite, "causing" display of an offer on the device is not. Id. n.6.
The Specification explains how a client device receives and displays
information. Spec. ,r 27, Fig. 3; see App. Br. 34--35. Further, referring to
Figure 9, the Specification explains, "FIG. 9 is a diagrammatic
representation of a machine in the example form of a computer system
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within which a set of instructions for causing the machine to perform any
one or more of the methodologies discussed herein may be executed." Spec.
,r 12 (emphasis added); see id. ,r 69 ("The disk drive unit 916 includes a
machine-readable medium 922 on which is stored one or more sets of
instructions and data structures (e.g., software) 924 embodying or used by
any one or more of the methodologies or functions described herein.").
"Causing display" may be broader than "delivering" an offer or "displaying"
the offer, but "[b ]readth is not indefiniteness." SmithKline Beecham Corp. v.
Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (alteration in original).
Appellant contends, "one of ordinary skill in the art, having
knowledge of client devices ( e.g., mobile devices), network signals, and how
information is received by a client device and displayed on a display of a
client device, would be reasonably appraised of how to avoid infringement
of the claims." App. Br. 34--35. The Examiner does not show that this
contention is incorrect. See Star Scientific, Inc. v. R.J. Reynolds Tobacco
Co., 655 F.3d 1364, 1373-74 (Fed. Cir. 2011). Again, the Examiner bears
the burden of showing indefiniteness. On this record, the Examiner has not
met that burden.
C. Patent Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The U.S. Supreme Court has "long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Court
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in Alice reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-
83 (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, 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," such as an abstract idea. Id.
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add--specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). 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. We,
therefore, look to whether the claims focus on a specific method or means
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. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016). If the claims are not directed to an abstract idea, the
inquiry ends. Id. at 1339. 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 the additional elements
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'transform the nature of the claim' into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
Initially, the Examiner finds that each of claims 1-5, 8, and 20-23 is
directed to a statutory category of invention. Claims 1-5, 8, and 20-23,
however, stand rejected under 35 U.S.C. § 101 because the statutory claims
are directed to a judicial exception. Final Act. 10-11. In particular, the
Examiner determines that "the claims are directed to receiving and
comparing information and rules to generate an offer." Id. at 11 (citing
Spec. ,r 15 (the invention seeks to solve the problem of "provid[ing]
merchants the ability to target customers based on past behavior and current
context ( e.g., location)"), ,r 18 ("utilizing any implicit or explicit actions
associated with a user that can be recorded and stored for future analysis"
(i.e., profile data) to sell merchandise to the user based on the user's detected
location)). The independent claims recite "the steps of aggregating user
profile data of a user; extracting [data] from the user profile data; receiving
current location data; accessing an inventory of the merchant location;
generating an offer in response to the determining that the user is within the
pre-defined proximity to the merchant location" to achieve this abstract idea.
Id. Further, "[t]his is simply the organization and comparison of data which
can be performed mentally" and
is similar to other concepts that have been identified as abstract
by the courts, such as using categories to organize, store and
transmit information in [ Cyberfone Sys. LLC v. CNN Interactive
Grp. Inc., 558 Fed. App'x 988 (Fed. Cir. 2014)]; data recognition
and storage in [ Content Extraction and Transmission LLC v.
Wells Fargo Bank, NA, 776 F.3d 1343 (Fed. Cir. 2014);
organizing information through mathematical correlations in
[Digitech Image Techs. LLC v Elecs.for Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014)]; comparing new and stored information
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and using rules to identify options in [ SmartGene Inc. v
Advanced Biological Labs., SA, 555 Fed. App'x 950 (Fed. Cir.
2014)]; collecting and comparing information in [Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011)].
Id.; see Ans. 16-18. Thus, the Examiner concludes that the pending claims
are directed to an abstract idea under the step one of the Alice analysis.
In addition, the Examiner finds that considered alone or as an ordered
combination, the limitations of the claims do not amount to significantly
more than the abstract idea. Final Act. 12-14. In particular, the Examiner
considers each of the limitations recited in the independent claims and finds
that these limitations describe no more than generic computer functions
performed on a generic computer or limitations that improve the functioning
of the abstract idea, rather than the computer technology used to achieve it.
Id. at 12-13; see Ans. 13-15; see also Spec. ,r 23 (known types of data
transfer and communication networks), ,r,r 57, 58 (describing "general-
purpose processor"), ,r 71 ("well-known transfer protocols"). The Examiner
further finds that the "causing" step of each claim represents insignificant
post-solution activity. 8 Final Act. 13-14. "The term 'extra-solution
activity' can be understood as activities incidental to the primary process or
product that are merely a nominal or tangential addition to the claim."
MPEP 2106.05(g).
8 Appellant relies on this limitation and two recent U.S. district court
decisions in support of the contention that this recited methods, systems, and
instructions stored on computer readable media could not be performed in
the human mind or with pen and paper. App. Br. 18-20. Because we find
this limitation to be insignificant post-solution activity and because the cited
cases neither are binding on the Board nor clearly distinguish binding
precedent, we find this contention unpersuasive.
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The Examiner determines that, considered as an ordered combination,
these limitations do "not add anything further than looking at the limitations
individually. Examiner notes that the disclosure does not present any
evidence that the particular ordered combination provides any variation as to
how any particular step would be conventionally expected to be performed."
Final Act. 14; see BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) ("The inventive concept inquiry
requires more than recognizing that each claim element, by itself, was
known in the art. As is the case here, an inventive concept can be found in
the non-conventional and non-generic arrangement of known, conventional
pieces."). On this record, we agree with the Examiner's determination that
the claims employ generic components that performing known and routine
computer functionalities.
Appellant contends that the Examiner erred in finding that the claims
are directed impermissibly to an abstract idea and in failing to find that the
claim limitations amount to significantly more than an abstract idea. App.
Br. 10-22. For the reasons set forth below, we are not persuaded that the
Examiner erred in rejecting claims 1-5, 8, and 20-23 under 35 U.S.C. § 101.
First, Appellant contends that the pending claims are not directed to
patent ineligible subject matter. Id. at 10-17. Appellant argues that the
Examiner incorrectly determined that the pending, independent claims are
directed to an abstract idea because the Examiner failed to consider each of
the claims' limitations in making this determination. Id. at 10-12.
However, as discussed above, the Examiner indeed did consider all of the
limitations of the pending, independent claims in determining that those
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claims are directed to an abstract idea. Final Act. 12-13; Ans. 13-16. Thus,
we find Appellant's contention unpersuasive.
Further, Appellant contends that the Examiner's comparison of the
concepts present in the pending claims with similar concepts identified by
the courts in other claims of other cases is deficient. App. Br. 12-15. In
particular, Appellant contends that the Examiner fails to show that any court
previously has found the abstract idea identified in these claims present in
another case. Id. However, as discussed above, the Examiner has identified
previous court decisions finding similar abstract ideas patent ineligible.
Final Act. 11; Ans. 16-18. As the Examiner correctly notes, the abstract
idea identified here
is also reasonably similar to the ideas considered by the courts to
be abstract, as discussed above. There is no requirement that the
words of the claims be match to the words of other claims found
to be abstract, and certainly, the courts that have found claims to
be ineligible under the Alice standard have not conducted such
an analysis.
Ans. 18. Moreover, even assuming that Appellant is correct, as the Federal
Circuit has explained, a "'claim for a new abstract idea is still an abstract
idea."' SAP America, Inc. v. InvestPic, LLC, 890 F.3d 1016, 1018 (Fed. Cir.
2018) (quoting Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016)). We find Appellant's contention unpersuasive.
Second, Appellant contends that, like the claims in Enfish, the
pending claims are directed to improvements in the functioning of a
computer. App. Br. 15-17, 20-22. In particular, Appellant contends,
the claims at issue in this case focus on a specific asserted
improvement in computer capabilities, particularly, in the
capability of the network-based system to communicate and
work with multiple websites and based on those
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communications, as well as the physical location of a client
device, generate and deliver content to the client device.
Id. at 17. Consequently, Appellant contends that either the claims are
directed to an improvement in computer functionality, rather than an
abstract idea (id. at 17), or to significantly more than an abstract idea (id. at
21-22). The Examiner finds, however, that the recited network-based
system and client device are generic computing devices. Ans. 18; see Final
Act. 7 ( citing Spec. ,r 19 ( describing a "client device"), ,r 30 ( describing
"network-based system 400")). The Examiner also finds
there is no evidence of record that shows a deficiency in the
computer or the computer technology that is resolved by the
invention. There is no actual evidence that any of the
communicative aspects or interaction between computing
elements is performed by anything other than routine and
expected industry standard means and protocols functioning
according to their routine capacity to transmit, receive and
process data.
Ans. 18-19. We agree.
We conclude the focus of the pending claims is not on an
improvement to the computer functionality itself, but, instead, the focus is
on an abstract idea that uses computers and networks as tools. See Enfzsh,
822 F.3d at 1336. That customer information may be gathered from
multiple sources (i.e., "commerce systems") and that the merchant may
identify an offer receiving customer by his or her proximity to the merchant,
neither alone nor in combination with the other claim limitations, amounts to
significantly more than the abstract idea. Final Act. 14; Ans. 18-19. As
Appellant acknowledges, the patent eligibility of dependent claims 2-5, 8,
22, and 23 falls with that of their base claims. App. Br. 12
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The Examiner did not err in determining that the recited methods,
systems, and instructions stored on computer readable media are patent
ineligible; and we sustain the Examiner's rejections under 35 U.S.C. § 101.
D. Obvious Over Samson and De Witt, Alone or in Combination with
Manninen
As noted above, claims 1-5, 8, and 20-23 stand rejected under 35
U.S.C. § 103(a) as rendered obvious over the combined teachings of Samson
and De Witt, alone or in combination with the teachings of Manninen. Final
Act. 14--21. Although the Examiner addresses each of the pending claims in
the Final Office Action, Appellant focuses its response to the rejections on
the limitations of independent claims 1, 20, and 21. See App. Br. 23-24, 28.
Because of the similarities between the limitations of independent claims 1,
20, and 21, we focus on the limitations of claim 1 in our discussion of these
rejections.
1. Teaching the Claim Limitations
The Examiner finds that Samson teaches or suggests almost all of the
limitations of independent claim 1. Final Act. 15-17. In particular, the
Examiner finds (1) that Samson teaches or suggests the step of "aggregating,
on a network-based system, user profile data of a user from a plurality of
commerce systems separate from the network-based system, the user profile
data including a demonstrated purchase action that includes a reference to an
item" and (2) that the combined teachings of Samson and De Witt teach or
suggest the step of "generating an offer for the matching inventory item in
response to the determining that the user is within the pre-defined proximity
to the merchant location and the identifying the matching inventory item to
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the item referenced by the demonstrated purchase action, the off er based on
the demonstrated purchase action." Id. at 16.
The Examiner finds that Samson teaches aggregating "consumer
information [having] at the least, information relating to bids on the auction
items." Id. at 16 (quoting Samson, 2:25-26); see Samson, Claims 1-20. In
particular, Samson teaches:
The present invention further provides a database for an
incentive program for bidders on auction items, including an
inventory file having at least one of detailed descriptions of an
inventory, a list of similar items of the inventory, and a list of
complementary items of the inventory, and a consumer profile
having at least one of bidding history, start bid, bid frequency,
bid increment, final bid, winning bid, target product, Internet
service provider, zip code, credit card type, and coupon
redemption rate.
Samson, 2:53---61 (emphases added); see id. at 4:34--40. However,
information aggregated by Samson is not limited to bid information.
Referring to Figure 2, Samson explains that "[ d]emographics,
psycho graphics, market conditions, and any other relevant information from
other databases 15 or any other relevant information identified through
contact with the consumer may also be recorded." Id. at 4:40-44 (emphasis
added). Further, Samson teaches that the consumer information may include
information on goods that the consumer has viewed from different
manufacturers, i.e., a consumer's product consideration set. Id. at 7:60-
8: 10; see also id. at 5:47-57 (describing inventory database system 35
including inventory data 33 of both retailers and manufacturers). Thus,
Samson teaches aggregating various types of consumer information from
various sources over the Internet. See id. at 4:24--29 ("Preferably, the
browsing behavior 11 has click stream information, which includes other
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components of the auction site that were visited by the consumer, number of
pages visited, time spent on each page during each visit per each auction,
number of auctions visited/participated, and frequency of revisiting
auctions."), 6:23-25 ("Based on the product attributes the consumer most
prefers, which are revealed in the browsing behavior 11 in the consumer
profile" (emphasis added)), 7:25--44 (describing information aggregated
from "auctions visited and/or participated").
With regard to the "extracting" step, the Examiner finds that "Samson
discloses aggregating user profile data, extracting a missed purchase
opportunity demonstrated by the user explicitly or implicitly indicating an
interest in making a purchase that was not completed (i.e. lost auction bid)."
Final Act. 17; see Samson, 1: 16-18 ("While many consumers may bid on
goods at a web site, those bidders willing to purchase merchandise, but
having unsuccessful bids, may not purchase any merchandise."), 4:38--40
("Preferably, the bidding and behavior values 12 also contain whether the
consumer's bid was a successful bid, which is the winning bid, or an
unsuccessful bid."). By comparison, referring to Table 1, the Specification
describes, "Losing an auction after placing a bid" as a "Demonstrated
Purchase Interest" action. Spec. ,r 18. Thus, we are persuaded that an
unsuccessful auction bid is a "demonstrated purchase action," and that
Samson teaches linking an unsuccessful bid to a particular good. See
Samson, 4:19-34, 8:2-10.
With regard to the "generating" step, the Examiner acknowledges,
"Samson does not disclose presenting the offer based on a determination of
the user's physical proximity to the physical location of inventory." Final
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Act. 17. The Examiner finds, however, that De Witt teaches this limitation.
Specifically, the Examiner finds that De Witt teaches:
(see at least [DeWitt] i-f6, "When the consumer is within a
predetermined distance from the merchant, the offer is made;";
i-f7, "sending a first transmission containing information
sufficient to derive ... the location of the portable consumer
device;" i-fi-f29-30, fig. 1; ,I47, "once it is determined that the
consumer is within the predetermined distance, the ROS may
generate and transmit an offer;" i-f64, " first set of matching
merchants is formed using the storage S( s) to signify that they
have the consumer requested inventory;" i-f85, "Consumer device
receives an offer ... where the merchant has a location that is
within a predetermined distance from the derived location of the
consumer device.").
Final Act. 17-18.
Appellant contends that the combined teachings of Samson and
De Witt fail to teach or suggest the "aggregating" and "generating" steps of
independent claim 1. App. Br. 24--27. With regard to the "aggregating"
step, Appellant contends that:
While Samson may teach "record[ing] the consumer's ... bidding
behavior," the recorded bidding behavior is in connection with
the auction house's own website. In contrast, claim 1 recites
"aggregating, on a network-based system, user profile data of a
user from a plurality of commerce systems separate from the
network-based system."
Id. at 24--25 (citing Samson, 3:38--40, 61---64) (alteration in original).
Further, Appellant contends that to the extent Samson teaches collecting data
from other sources, it is only "inventory data." Id. at 25 ( citing Samson,
3 :3 8--40, 61---64 ).
The Examiner asserts that Appellant misrepresents Samson's
teachings. Ans. 21-22. Referring to Figure 2, Samson teaches creating a
consumer profile 16 from information from distinct databases 11-15. Id.;
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see Samson, 4:44--45. Further, as discussed above, Samson teaches that the
user profile may be based on the user's "browsing behavior." See, e.g.,
Samson, 6:23-25. The Examiner has shown that Samson teaches
aggregating user profile data from a plurality of websites, i.e., "commerce
systems," separate from the network-based system. Moreover, the user
profile data may include a demonstrated purchase action that includes a
reference to an item. See Spec. ,r 18 (Table 1: "Losing an auction after
placing a bid" and "Researching a particular product or service"). Thus, we
are persuaded that the Examiner has shown that Samson teaches or suggest
the "aggregating" step of claim 1.
With regard to the "generating" step, Appellant contends that:
De Witt does not teach or suggest, at least, that the offer is
"generated ... in response to the determining that the user is
within the pre-defined proximity to the merchant location and
the identifying the matching inventory item to the item
referenced by the demonstrated purchase action, the offer
based on the demonstrated purchase action."
App. Br. 26. In addition, "while De Witt discloses an offer being specifically
tailored to a present location or past shopping behavior of the consumer, the
past shopping behavior is associated with purchases made by the
consumer." Id. Although it is correct that DeWitt discusses using
information regarding past purchases to predict future purchases (De Witt
,r 53), the Examiner relies on Samson, not DeWitt, to teach the limitations
Appellant contends are missing. Ans. 24. Thus, for the reasons set forth
above, we are persuaded the Examiner has shown that the combined
teachings of Samson and De Witt teach or suggest the "generating" step of
claim 1.
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2. Sufficient Reason to Combine
The Examiner further determines that a person of ordinary skill in the
art would have had reason to combine the teachings of Samson and De Witt
to achieve the method recited in independent claim 1. In particular, the type
of information aggregated in Samson is similar to the type of information
relied upon by De Witt, and the
presentation of offers when the user is within physical proximity
to the merchant location would provide better inventory
disposition option for the seller as well as greater likelihood for
the buyer to be incentivized to make the purchase due to the
physical convenience and the combination of old elements may
be made according to known methods to yield predictable results.
Final Act. 18; DeWitt ,r,r 42, 52, 70.
Appellant disagrees and contends that
De Witt does not contemplate offers based on demonstrated
purchase actions indicating an interest in an item without a
subsequent purchase, as would be necessary for the Examiner's
proposed combination. De Witt only discusses proximity based
offers tailored toward "present location" or "past shopping
behavior," where the past shopping behavior is associated with
purchases by the consumer.
App. Br. 27-28. Nevertheless, Appellant acknowledges, "DeWitt
contemplates tailoring an offer specifically to an attribute of the consumer."
Ans. 24 (citing App. Br. 27; DeWitt ,r 12). The Examiner concludes that:
The list of products [] calculated to be of interest to a customer,
as provided by Samson, would specifically be a type of consumer
attribute that [person of ordinary skill in the art] would wish to
use when the user is within physical proximity to the merchant
location as done in De Witt.
Id.; see also Samson, 4:34--37 ("The personal computer information 13
includes ... access location (work or home)"), 42--44 ("any other relevant
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information identified through contact with the consumer may also be
recorded."). We conclude that the Examiner has shown sufficiently that a
person of ordinary skill in the art would have had reason to combine the
teachings of Samson and De Witt to achieve the methods of claim 1.
The Examiner did not err in determining that the methods, systems,
and instructions stored on computer readable media, recited in claims 1, 20,
and 21, respectively, are rendered obvious over the combined teachings of
Samson and DeWitt. Further, Appellant does not argue the dependent
claims separately, and, on this record, we determine that the Examiner has
shown that claims 3-5, 8 and 23 are rendered obvious over the combined
teachings of Samson and De Witt, and claims 2 and 22 are rendered obvious
over the combined teachings of Samson and De Witt, and Manninen. Thus,
we sustain the Examiner's rejections of claims 1-5, 8, and 20-23 under 35
U.S.C. § 103(a).
Consequently, we are persuaded that the Examiner did not err in
rejecting claims 1-5, 8, and 20-23, and we sustain the rejections thereof
under 35 U.S.C. § 101 and§ 103(a).
VI. DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1-5, 8, and 20-23.
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.
§ 1.136(a)(l )(iv).
AFFIRMED
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