Ex Parte Tawakol et al

Patent Trial and Appeal Board

Apr 30, 2018

12399796 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/399,796 03/06/2009
51206 7590 05/02/2018
Kilpatrick Townsend & Stockton LLP/Oracle
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Omar Tawakol
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.
088325-1036632
(187100US)
CONFIRMATION NO.
2790
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte OMAR TAWAKOL, GRANT RIES, MICHAEL BIGBY, and
ALEXANDER HOOSHMAND
Appeal2017-001621
Application 12/3 99, 796 1
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-28, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest identified by Appellants is Blue Kai, Inc. App.
Br. 2. We note that Blue Kai has been acquired by Oracle Corporation. See
Oracle Press Release (February 24, 2014),
http://www.oracle.com/us/corporate/press/2 l 50812.
Appeal2017-001621
Application 12/399,796
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention relates generally to
brokering information about users through an auction that controls
distribution of the information to a top set of bidders. See Spec. 1:13-14.2
Claim 1 is representative and reads as follows (with the disputed
limitations emphasized):
1. A method for processing data with an exchange device in
communication with a plurality of computing devices over a
network, wherein the exchange device provides an exchange
service that performs actions comprising:
receiving from one or more data sellers an indication of
user data to be sold, the user data corresponding to user data
generated as a result of one or more website visitors loading one
or more websites of the one or more data sellers;
receiving from one or more data buyers campaign
information including one or more requested categories of user
data, the one or more data buyers providing the campaign
information data by logging into the exchange device;
receiving bids for the user data from the one or more data
buyers through the exchange device;
generating a range of bid prices that at least establish a
minimum price that must be met to win any amount of user data,
a buyer with an nth highest bid establishing the range minimum;
generating buyer rank data using at least the received bids
from the one or more data buyers, the buyer rank data being
2 Our Decision refers to the Final Office Action mailed October 29, 2015
("Final Act."), Appellants' Appeal Brief filed May 31, 2016 ("App. Br.")
and Reply Brief filed November 9, 2016 ("Reply Br."), the Examiner's
Answer mailed September 9, 2016, and the original Specification filed
March 6, 2009 ("Spec.").
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stored in a bid table having a series of entries that identify the
bids at least as large as the range minimum;
determining an amount of the user data to make available
to the one or more data buyers using the bid table such that a top
winning bidder is determined to have more of the user data made
available than successively ranked bidders, successively ranked
bidders are determined to have a percentage less of the same
user data made available, and percentages are correlated to the
bidder's rank;
allowing data buyers to adjust their bids;
receiving user data from the website visitors as a result of
the one or more website visitors loading one or more websites of
the one or more data sellers, the websites being configured to
trigger execution of a script by a web browser of the website
visitors when loaded by a website visitor, the execution of the
script causing the web browser to pass user data from the visitor
to the exchange device;
matching received user data with the categories requested
by the one or more data buyers; and
determining one or more winning data buyers based on the
received bids.
App. Br. 49--50 (Claims App.).
Rejections on Appeal3
Claims 1-28 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter.
Claims 1, 3-7, 10-14, 17, 18, 20, 21, 23, and 25-28 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over Khetrapal et al.
(US 2006/0195385 Al; published Aug. 31, 2006) ("Khetrapal"), in view of
3 The Examiner withdrew the rejection under 35 U.S.C. § 112, first
paragraph. See Ans. 2.
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Diana et al. (US 2006/0041500 Al; published Feb. 23, 2006) ("Diana"), and
further in view of Razletovskiy (US 2006/02003 60 A 1; published Sept. 7,
2006) ("Razletovskiy").
Claims 2, 16, and 19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Khetrapal, in view of Diana, in view of Razletovskiy, and
further in view of Longman et al. (US 2005/0114225 Al; published May 26,
2005) ("Longman").
Claims 8 and 22 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Khetrapal, in view of Diana, in view of Razletovskiy, and
further in view of Rose et al. (US 2008/0201205 Al; published Aug. 21,
2008) ("Rose").
Claims 9 and 15 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Khetrapal, in view of Diana, in view of Razletovskiy, and
further in view of Herman et al. (US 2005/0234811 Al; published Oct. 20,
2005) ("Herman").
Claim 24 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Khetrapal, in view of Diana, in view of Razletovskiy, and
further in view of Schultze (US 7,047,206 B 1; issued May 16, 2006)
("Schultze").
ANALYSIS
Rejection of Claims 1-28 under§ 101
Applicable Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
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to include an implicit exception: "Laws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (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 the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355-57. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
citations omitted). In that regard, we determine whether the claims "focus
on a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (citation omitted).
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent eligible
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under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'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).
In other words, the second step is to "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."' Id. (brackets in original) (quoting Mayo,
566 U.S. at 72-73). The prohibition against patenting an abstract idea
"'cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment' or adding 'insignificant postsolution
activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation
omitted).
Appellants' Arguments.±
Appellants contend the Final Office Action failed to establish a prima
facie case that claims 1-28 are directed to patent-ineligible subject matter.
See App. Br. 32. According to Appellants, in order for the Examiner to
establish a prima facie case of patent-ineligibility, the Examiner's
conclusion must be based on the evidence as a whole, as opposed to opinion
without supporting evidence in the record, where the Patent Office's Interim
4 Appellants argue claims 1-28 as a group, focusing on claim 1. See App.
Br. 32--47. We consider claim 1 to be representative of the claimed subject
matter on appeal and, therefore, we decide the rejection of claims 1-28 on
the basis of representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Guidance mandates that Patent Office personnel review the specification,
claims, and any relevant prior art before reaching a conclusion of whether
the claimed invention is directed to patent-ineligible subject matter. See
App. Br. 35. As argued by Appellants, rather than basing the conclusion on
the evidence as a whole and pointing to concrete evidence in the record in
support of the allegation that the claims are directed to patent-ineligible
subject matter, the Office Action merely contains generic and conclusory
allegations. See App. Br. 36-38; see also Reply Br. 13-14.
Appellants further contend the claims are directed toward an exchange
device that performs specific actions including generating a range of bid
prices and buyer rank data, determining respective amounts of user data
made available to buyers having different ranks, matching user data with
requested categories, and determining one or more winning buyers. See
App. Br. 39. As argued by Appellants, such a claimed exchange device
cannot reasonably be interpreted as merely processing data. See id; see also
Reply Br. 15-18. Appellants additionally argue the claims are similar to the
claims found to be patent-eligible in DDR Holdings, LLC v. Hotels.com
L.P., 773 F.3d 1245 (Fed. Cir. 2014), because the claims are directed to
technological arts to specifically address technological challenges such as
hidden, fragmented, and widespread user data on the Web. See App. Br. 39-
41. Appellants also argue the claims are similar to the claims found to be
patent-eligible in the Patent Trial and Appeal Board's decision of Ex Parte
Bush, Appeal No. 2013-001110, because the claims cover more than the
mere nominal recitation of a computer (i.e., an exchange device that
interconnects with "website visitors" client computing devices, computing
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systems of data sellers and computing systems of data buyers). See App.
Br. 41--43.
Additionally, Appellants contend the claims recite significantly more
than the alleged abstract idea and clearly provide an "inventive concept," as
the claims are deeply rooted in computer technology and are inextricably
tied with communications between multiple computing devices via network
elements. See App. Br. 43--46; see also Reply Br. 18-20. As argued by
Appellants, the claims do not merely recite a generic computer to perform
generic computer functions that are well understood, routine, and
conventional activities previously known to the industry. See App. Br. 46-
4 7. Further, Appellants contend there are no preemption concerns because
the claims do not attempt to preempt every application of the claimed
exchange device, and instead, recite a specific way to implement exchange
services that incorporate elements from multiple computing devices and
systems. See App. Br. 47.
Prima Facie Case
We are not persuaded by Appellants' argument that the Final Office
Action failed to establish a prima facie case that claims 1-28 are directed to
patent-ineligible subject matter. We agree with the Examiner that the
rejection follows the Alice framework of examining whether the claims are
directed to an abstract idea and whether the claims provide "significantly
more" than the abstract idea. See Ans. 6-7. Further, the Examiner has
identified an abstract idea by correlating the claimed invention to examples
of other inventions identified by the courts as being abstract ideas ( see
Ans. 8-17) and has determined that the claims do not provide "significantly
more" than the abstract idea by considering the claims as a whole and
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considering the claim limitations individually and as an ordered combination
(see Ans. 17-33). Contrary to Appellants' argument that the Examiner has
some heightened burden, the notice requirement is set forth by
35 U.S.C. § 132.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant . .. [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection." Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
For the reasons discussed above, we conclude the Examiner's
rejection is not so uninformative that it prevents Appellants from
recognizing and seeking to counter the grounds of rejection.
Step One of Alice
The Examiner finds the claims are directed to the abstract idea of
processing data in order to sell leads. See Final Act. 2. The Examiner
further finds as follows:
[T]he claimed invention is, indeed, directed to an abstract idea as
it is directed towards the abstract idea of processing data. The
claimed invention is directed towards performing the well-
understood, routine, and conventional activities in the technical
field of processing data.
The claims are considered to be a fundamental economic
practice, because they are directed to concepts relating to the
economy and commerce, such as agreements between people in
the form of contracts, legal obligations, and business relations.
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... [C]ases have found concepts relating to agreements between
people or performance of financial transactions abstract, such as
... hedging (Bilski). . . . Similarly to Bilski, the claims also
relate to performance of financial transactions, in that the
claims are selling user data.
The claims, which are directed to processing data, are also
considered to be certain methods of organizing human activity
as the claims include concepts relating to interpersonal and
intrapersonal activities, such as managing relationships or
transactions between people, social activities, and human
behavior; satisfying or avoiding a legal obligation; advertising,
marketing, and sales activities or behaviors; and managing
human mental activity . ... Several cases have found concepts
relating to managing relationships or transactions between
people abstract, such as . . . processing loan information
(Dealertrack) .... Like Dealertrack, the instant claims process
information.
They are also considered to be an idea "of itself' which is used
to describe an idea standing alone such as an uninstantiated
concept, plan or scheme, as well as a mental process (thinking)
that "can be performed in the human mind, or by a human
using a pen and paper. " . . . Several cases have found concepts
relating to processes of comparing data that can be performed
mentally abstract, such as . . . comparing new and stored
information and using rules to identify options (SmartGene) . ...
Like SmartGene, the claimed invention collects information
(relating to the data buyers and sellers) and uses rules to
identify options (the data winners).
The claims may also be considered to be directed to
mathematical relationships/formulas. The phrase
"mathematical relationships/formulas" is used to describe
mathematical concepts such as mathematical algorithms,
mathematical relationships, mathematical formulas, and
calculations. Several cases have found concepts relating to
performing mathematical calculations abstract, such as ...
computing a price for the sale of a fixed income asset and
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generating a financial analysis output (Freddie Mac) . .. Like
Freddie Mac, which computes a price for the sale of an item
and generates an output, the instant case determines which
bidder is the winning buyer, thereby determining the price for
the data.
Ans. 8, 10-13 (emphasis added).
Considering the focus of claim 1 as a whole, in view of Appellants'
Specification, we agree with the Examiner that claim 1 is directed to an
abstract idea (i.e., processing data related to an auction of user data).
Consistent with the Examiner's findings, we find method claim 1 recites the
following steps: (1) "receiving ... an indication of user data to be sold"; (2)
"receiving ... requested categories of user data"; (3) "receiving bids for the
user data"; (4) "generating a range of bid prices"; (5) "generating buyer rank
data using ... the received bids"; (6) "determining an amount of the user
data to make available ... using the [buyer rank data]"; (7) "allowing data
buyers to adjust their bids"; (8) "receiving user data"; (9) "matching
received user data with the categories requested"; and (10) "determining ...
winning data buyers based on the received bids". App. Br. 49--50 (Claims
App.). These various steps define collecting and processing data related to
an auction of user data, and matching requested categories of user data with
user data based on received bid and buyer rank data that is generated using
the received bids. We see no meaningful difference in claim 1 and similar or
analogous claims in other cases that our reviewing court has found are
directed to an abstract idea. See Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("[t]he
concept of data collection, recognition, and storage is undisputedly well-
known"); Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016) ( claims focus on the abstract idea of collecting information,
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analyzing it, and displaying certain results of the collection and analysis);
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341
(Fed. Cir. 2017) (holding that the claimed invention is directed to the
abstract idea of "collecting, displaying, and manipulating data of particular
documents").
We also agree with the Examiner that the steps recited in claim 1
could be "performed mentally" by a human with pen and paper. See
Ans. 11-12. In that regard, our reviewing court has held that "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category." Electric Power, 830 F.3d at 1354; see also
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016). "[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter." Bancorp Servs., LLC v. Sun Life Assurance Co.
of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). 5
We are also not persuaded by Appellants' argument that claim 1 is
similar to the claims in DDR Holdings. See App. Br. 39-41. In DDR
Holdings, the disputed claims solved an Internet-specific problem with an
Internet-based solution that was "necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks." DDR Holdings, 773 F.3d at 1257-58. That is not the case here.
Instead, consistent with the Examiner's findings, the claimed invention
5 See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson").
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merely performs various actions in the field of processing data ( e.g.,
receiving user data to be sold, receiving requested categories of data,
receiving bids for user data, generating a range of bid prices, generating
buyer rank data, determining an amount of data to make available, allowing
bid adjustment, matching user data with requested categories, and
determining winners of data) that have been previously performed outside of
a context of computer technology. See Ans. 18-19, 32-33.
Additionally, we are not persuaded by Appellants' argument that
claim 1 is similar to the claims found to be patent-eligible in the Patent Trial
and Appeal Board's decision of Ex Parte Bush. See App. Br. 41--43. We
note that Ex Parte Bush has not been made precedential, and thus, is not
binding on this panel. Further, consistent with the Examiner's findings, the
claims at issue in Ex Parte Bush are directed to techniques for accessing
computer resources, and thus, are distinguishable from the claims at issue in
this appeal. See Ans. 33.
Step Two of Alice
Regarding step two of the Alice analysis, the Examiner finds the
claims do not include additional elements that are sufficient to amount to
significantly more than an abstract idea because the additional elements or
combination of elements in the claims other than the abstract idea amounts
to no more than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that servers to perform
generic computer functions that are well understood, routine, and
conventional activities previously known to the industry. See Final Act. 3-
4. The Examiner further finds as follows:
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The Examiner asserts that the claimed invention does not further
or improve upon the technology or the technical field as merely
having a general purpose device to perform the steps of the
abstract idea is nothing more than having the general purpose
device perform the well-understood, routine, and conventional
activities already known in processing data, which results in the
claimed invention not amounting to being significantly more
than the judicial exception.
Further still, unlike Enfish where the claims were directed to a
specific improvement to the computer's functionality at the
time of the invention and where Enfish explicitly defined the
specific improvements along with the technical aspects of the
improvements to demonstrate the improvements to existing
technology, the Examiner asserts that the instant invention
does not.
In the case of the instant invention, the Examiner asserts that the
specification lacks any disclosure of evidence to demonstrate
that the invention is seeking to improve upon the technology or,
more specifically, that the claimed invention is directed towards
addressing and improving upon an issue that arose from the
technology, but merely demonstrating that the claimed invention
is directed towards the abstract idea and merely applying or
utilizing generic computing devices performing their generic
functions to carry out the well-understood, routine, and
conventional activities in the technical field of processing data
due to the benefits that computing devices provided, i.e.[,] faster,
more efficient, and etc.
Ans. 18-19, 22; see also Ans. 24--31.
We agree with the Examiner's findings. Appellants have not provided
persuasive evidence or arguments that the recited limitations of claim 1 do
anything more than recite automatic data collection and automatic data
analysis that is well-understood, routine, and conventional in the field of
computer systems. Further, Appellants have not identified any portions of
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Appellants' Specification that describe technological changes or
improvements to the features of claim 1. Thus, we agree with the Examiner
that the argued limitations do not add "significantly more" to the abstract
idea because they are no more than "generic computing devices performing
... generic functions." See Ans. 17, 22; see also Alice, 134 S. Ct. at 2356-
58 ("[T]he mere recitation of a generic computer cannot transform a patent
in-eligible abstract idea into a patent-eligible invention. Stating an abstract
idea while adding the words 'apply it' is not enough for patent eligibility")
(quoting Mayo, 566 U.S. at 72 (internal quotation marks omitted)).
Furthermore, as the Court explained in Electric Power, "merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas." Electric Power, 830 F.3d at 1355.
Preemption
We also are not persuaded by Appellants' arguments that claim 1 does
not seek to tie up or otherwise preempt an abstract idea. See App. Br. 47.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility. . . . Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs. Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("that the
claims do not preempt all price optimization or may be limited to price
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optimization in the e-commerce setting do not make them any less
abstract").
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101. For the same
reasons, we sustain the rejection of independent claims 14, 18, and 21, and
dependent claims 2-13, 15-17, 19-20, and 22-28, which are not separately
argued, under 35 U.S.C. § 101.
Rejection of Claims 1-28 under§ 103 (a)
Appellants contend the combination of cited references fails to teach
or suggest
determining an amount of the user data to make available to the
one or more data buyers using the bid table such that a top
winning bidder is determined to have more of the user data made
available than successively ranked bidders, successively ranked
bidders are determined to have a percentage less of the same user
data made available, and percentages are correlated to the
bidder's rank,
as recited in claim 1, and similarly recited in independent claims 14, 18, and
21. 6 See App. Br. 22; see also Reply Br. 3-10. More specifically,
Appellants argue Diana merely describes that a higher bidder or bidder
group has the highest probability of getting a lead, but that the next highest
bidder below might get the lead, even though the next highest bidder is not
at the top of the bidding heap in that particular. See App. Br. 23. Thus,
according to Appellants, Diana merely describes determining a percentage
6 Appellants provide additional arguments regarding claim 13, but we do not
reach these additional arguments because claim 13 depends upon claim 1,
and the issue raised by Appellants' argument regarding claim 1 is also
dispositive of the rejection of claim 13.
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of a bidder's probability of getting a lead, which does not teach or suggest
determining a percentage of user data (i.e., amount of user data) made
available to bidders having different ranks. See App. Br. 23-24.
We are persuaded by this argument. We agree with Appellants that
Diana's determining a percentage of a bidder's probability of getting a lead
based on the bidder's bidding rank is distinct from, and does not teach or
suggest, the recited step of determining a percentage of user data made
available to a bidder based on the bidder's bidding rank. Further, the
Examiner has not shown that any of the other cited prior art references cure
this deficiency of Diana.
Accordingly, on this record, we do not sustain the Examiner's
rejection of claims 1, 14, 18, and 21 for obviousness under
35 U.S.C. § 103(a). We also do not sustain the Examiner's rejection of
claims 2-13, 15-17, 19-20, and 22-28, which depend from one of claims 1,
14, 18, and 21.
DECISION
We affirm the Examiner's rejection of claims 1-28 under
35 U.S.C. § 101.
We reverse the Examiner's rejection of claims 1-28 under
35 U.S.C. § 103(a).
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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