Ex Parte Shinnebarger et alDownload PDFPatent Trial and Appeal BoardDec 13, 201713154701 (P.T.A.B. Dec. 13, 2017) Copy Citation 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. Appeal 2016-005072 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. 2 Appeal 2016-005072 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)). 3 Appeal 2016-005072 Application 13/154,701 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 4 Appeal 2016-005072 Application 13/154,701 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.’”). 5 Appeal 2016-005072 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 6 Appeal 2016-005072 Application 13/154,701 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 7 Appeal 2016-005072 Application 13/154,701 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 8 Appeal 2016-005072 Application 13/154,701 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 9 Appeal 2016-005072 Application 13/154,701 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 10 Copy with citationCopy as parenthetical citation