Ex Parte Shinnebarger et al

Patent Trial and Appeal Board

Dec 13, 2017

13154701 (P.T.A.B. Dec. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/154,701 06/07/2011 David Shinnebarger ARR-10002/29 1519
131270 7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
EXAMINER
CIV AN, ETHAN D
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
12/14/2017 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 DAVID SHINNEBARGER, BORA ARSLAN, and
JOSEPH VANEK
Appeal 2016-0050721
Application 13/154,7012
Technology Center 3600
Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 5, and 17. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed Sept.
8, 2015) and Reply Brief (“Reply Br.,” filed Apr. 12, 2016), the Examiner’s
Answer (“Ans.,” mailed Feb. 12, 2016) and the Final Office Action (“Final
Act.,” mailed Mar. 12, 2015).
2 Appellants identify “Array Card, Inc.” as the real party in interest. App.
Br. 1.
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Application 13/154,701
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ “invention relates generally to gift cards and, in
particular, to an information sharing system and methods to enhance the
utility and effectiveness of such cards.” Spec. 11. Claim 1, reproduced
below with added formatting and bracketed notations, is the sole
independent claim on appeal.
1. A method of providing gift card recipients with personalized
gift cards, comprising the steps of:
[(a)] establishing a website on a computer server providing a
search engine enabling a user to compile contact information
associated with a plurality of gift recipients and establish a gift
network including the gift recipients;
[(b)] entering information by a user at the website related to the
interests or preferences of the gift recipients in the gift network;
[(c)] providing specific manufacturers or merchants direct
access to the user’s network of gift recipients through the
website, thereby enabling the manufacturers or merchants to
recommend, on the website, product brands or services, or
provide notifications regarding events, deals or promotions
related to the interests and preferences of the gift recipients in the
user's gift network;
[(d)] obtaining a stored-value gift card for one of the gift
recipients, either by activating an existing physical card at the
website or by printing a gift card from the website; and
[(e)] wherein the stored-value gift card is personalized for the
gift recipient to purchase particular, recipient-specific goods or
services based on the interests or preferences of the recipient and
the recommendations or notifications provided by the
manufacturers or merchants through the website.
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Application 13/154,701
Rejections
Claims 1, 2, 4, 5, and 17 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 2, 5, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Morgenstem (US 2008/0189189 Al, pub. Aug. 7, 2008),
Perlow (US 2007/0075134 Al, pub. Apr. 5, 2007), and Isaacson (US
2011/0106698 Al, pub. May 5, 2011).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Morgenstem, Perlow, Isaacson, and Perrier (US 2006/0265290 Al, pub.
Nov. 23, 2006).
ANALYSIS
Non-Statutory Subject Matter
Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, we
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us?” To answer that question, we
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an ‘“inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)
(citing and quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)).
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Applying the framework set forth in Alice, and as the first step of that
analysis, the Examiner determined that “[t]he claims are directed to the
series of steps instructing how to provide personalized gift cards, which is a
fundamental economic practice and thus an abstract idea.” Ans. 2; Final
Act. 3. Under the second step of that analysis, the Examiner found:
The additional elements or combination of elements in the
claims other than the abstract idea per se amounts to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
elements do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea
such that the claims amount to significantly more than the
abstract idea itself.
Ans. 3; Final Act. 3.
Appellants dispute the Examiner’s characterization of the abstract
idea, asserting that “Appellants’ claims are directed to [a] method of
providing gift card recipients with personalized gift card involving websites,
search engines, specific manufacturers, and stored-value-card activation.
Such subject matter is not old or ‘well established,’ and Appellants’ claims
include structural limitations that transcend mere abstraction.” App. Br. 2.
We are unpersuaded by Appellants’ arguments because providing gift
card recipients with personalized gift cards, as acknowledged by Appellants,
is an abstract idea. Appellants’ Specification indicates that such
personalized selections are based on “previously stated profile and/or
preferences” (Spec. 151), and that “personalized recommendations [are]
provided by the gift card website.” id. 1 53. Personalizing and
recommending desirable products, such as gift cards, based on user
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information is similar to “customizing webpage content as a function of
navigation history and information known about the user.” Intellectual
Ventures ILLC, et alv. Capital One Financial, 792 F.3d 1363, 1368 (Fed.
Cir. 2015) (“Intellectual Ventures F). The Federal Circuit held:
This sort of information tailoring is a fundamental practice long
prevalent in our system. There is no dispute that newspaper
inserts had often been tailored based on information known about
the customer—for example, a newspaper might advertise based
on the customer's location. Providing this minimal tailoring—
e.g., providing different newspaper inserts based on the location
of the individual—is an abstract idea.
Id. at 1369 (citations omitted). The abstract idea here is similar: the claimed
website provides personalized gift card recommendations based on stored
user profile and preferences, such as the website in Intellectual Ventures I,
using stored personal information.3
Regarding Appellants’ assertion as to claim 1 ’s structural limitations,
although the Supreme Court noted, in Bilski v. Kappos, 130 S. Ct. 3218,
3227 (2010), that the machine-or-transformation test is a “useful and
important clue” for determining patent eligibility, the Court, in Mayo,
3 See Mors a v. Facebook, Inc., 77 F.Supp.3d 1007, 1014 (C.D. Cal. 2014),
affd, 622 F. App’x 915 (Fed. Cir. 2015) (claims directed to “targeting
advertisements to certain consumers, and using a bidding system to
determine when and how advertisements will be displayed” held to be
directed to an abstract idea). As noted by the court in Mors a, matching
consumers with a given product or service “has been practiced as long as
markets have been in operation.” Id. (quoting Tuxis Technologies, LLC v.
Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del.
Sept. 3, 2014)); see also OpenTV, Inc. v. NetflixInc., 76 F.Supp.3d 886, 893
(N.D. Cal. 2014) (“The 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.’”).
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Application 13/154,701
emphasized that satisfying the machine-or-transformation test, by itself, is
not sufficient to render a claim patent-eligible, as not all transformations or
machine implementations infuse an otherwise ineligible claim with an
“inventive concept.” See Mayo, 132 S. Ct. at 1301 (“[Sjimply implementing
a mathematical principle on a physical machine, namely a computer, [i]s not
a patentable application of that principle.”) (citing Gottschalk v. Benson, 409
U.S. 63, 64 (1972)). And the Court, in Alice, noted:
The fact that a computer “necessarily existfs] in the physical,
rather than purely conceptual realm” ... is beside the point.
There is no dispute that a computer is a tangible system (in § 101
terms, a “machine”), or that many computer-implemented claims
are formally addressed to patent-eligible subject matter. But if
that were the end of the § 101 inquiry, an applicant could claim
any principle of the physical or social sciences by reciting a
computer system configured to implement the relevant concept.
Alice, 134 S. Ct. at 2358—59. The Federal Circuit has also made clear that
the basic character of a process claim drawn to an abstract idea is not
changed by claiming only its performance by a machine or apparatus.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375—76 (Fed.
Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982)).
We also are unpersuaded by Appellants’ argument that:
Appellants’ claims include improvements to another technology
or technical field as well as meaningful limitations beyond
generally linking the use of an abstract idea to a particular
technological environment. In particular, by virtue of the
limitations regarding the use of a website on a computer server
to establish a network of gift recipients that specific
manufacturers or merchants can access directly, Appellants’
invention provides improvements related to product/service
marketing in general and targeted marketing in particular. This
enables a gift recipient to purchase particular, recipient-specific
goods or services based on the interests or preferences of the
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recipient and the recommendations or notifications provided by
the manufacturers or merchants through the website. Such
limitations do not simply link an abstract idea to a particular
environment.
Reply Br. 2—3.
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. The Federal Circuit applied this
distinction in Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir.
2016) in rejecting a § 101 challenge at the step one stage in the Alice
analysis because the claims at issue focused not on asserted advances in uses
to which existing computer capabilities could be put, but on a specific type
of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
storing and retrieving data. Id. at 1335—36. Here, Appellants acknowledge
that the claimed “invention provides improvements related to
product/service marketing in general and targeted marketing in particular.”
See Reply Br. 2. Appellants’ reliance on Enfish is misplaced because we
find no parallel between claim 1 and the claims in Enfish nor any
comparable aspect in claim 1 that represents “an improvement to computer
functionality.” The alleged advantages that Appellants tout do not concern
an improvement to computer capabilities, but instead relate to an alleged
improvement in marketing and sales practice, that simply instructs the
practitioner to implement the abstract idea on a generic computer.
There is no inventive concept or technological advance here that
would support patent eligibility. Claim 1 is not focused on an improvement
to the claimed “computer server.” Cf. In re TLI Communications LLC
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Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (The claims’ focus
“was not on an improved telephone unit or an improved server.”). And
merely limiting the scope of the claims to a particular technological
environment or application, without more, does not change the outcome.
Appellants’ arguments overlook the Court’s explicit guidance:
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “to a particular technological environment.”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent eligibility.
Alice Corp. v. CLS Bank Inti, 134 S.Ct. 2347, 2358 (2014).
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and dependent claims 2, 4, 5, and
17, which are not argued separately.
Obviousness
We are persuaded by Appellants’ arguments (App. Br. 4; Reply Br. 3)
that Morgenstem, on which the Examiner relies, does not disclose or suggest
(a) “establishing a website on a computer server providing a search engine
enabling a user to compile contact information associated with a plurality of
gift recipients and establish a gift network including the gift recipients,” as
required by independent claim 1. See claim 1 supra.
In rejecting claim 1, the Examiner found that Morgenstem discloses
process step (a) at paragraphs 44 and 45. Final Act. 4; Ans. 4. In response
to Appellants’ arguments disputing the Examiner’s finding as to step (a), the
Examiner asserts that “Morgenstem discloses a search engine in the form of
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a collective gift engine that allows a user to enter information including
contact information about gift recipients and establish a network of gift
recipients and to perform searches. Morgenstem, paragraphs 0044, 0045.”
Ans. 12.
Morgenstem is directed to a method for collectively purchasing a gift
in a social network environment, wherein money is received from a plurality
of contributing users for deposit into a gift account for purchasing the
selected gift for a recipient. Morgenstem, Abstract. Paragraph 44 of
Morgenstem describes a “collective gift engine 135 is configured to
facilitate purchase of an asset on behalf of the contributing users 102C, for
transfer to a recipient user 102B as a gift.” Referring to Figure 2 of
Morgenstem, paragraph 45 describes “a screen shot of an exemplary profile
200, representing a user 102 in the social network environment 100,”
wherein the profile 200 includes various fields relating to the user 102, such
as a user identification field 240 and a contact information field 260.
These relied-upon paragraphs in Morgenstem, however, do not
disclose “providing a search engine enabling a user to compile contact
information associated with a plurality of gift recipients,” as part of
performing the process recited in step (a) of claim 1. The broadest
reasonable interpretation of this limitation requires the ability of a user to
compile or collect contact information associated with a plurality of gift
recipients. The ability of Morgenstem’s user to enter her own contact and
personal information as part of creating her profile does not adequately
support the ability of a user to collect contact information associated with a
plurality of gift recipients or other users, as required by independent claim 1.
In other words, the fact that each user in Morgenstem’s social network has
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the ability to include her contact information as part of creating a profile
does not demonstrate that Morgenstem’s collective gift engine enables a
user of the social network to collect contact information associated with a
plurality of other users.
Accordingly, we do not sustain the rejection of independent claim 1,
and claims 2, 5, and 17 dependent therefrom. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the
independent claims from which they depend are nonobvious”).
The Examiner’s rejection of dependent claim 4 based on Perrier, in
combination with Morgenstem, Perlow, and Isaacson, does not cure the
deficiency in the Examiner’s rejection of independent claim 1. Therefore,
we also do not sustain the rejection of claim 4 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1, 2, 4, 5, and 17 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejections of claims 1, 2, 4, 5, and 17 under 35 U.S.C.
§ 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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