Ex Parte Westphal et al

Patent Trials and Appeals Board

Mar 18, 2019

12850149 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/850,149 08/04/2010 Geoffry A. Westphal
34018 7590 03/20/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
31083.08US5 9231
EXAMINER
HAQ,NAEEMU
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFRY A. WESTPHAL and THOMAS JOHN CARROLL
Appeal 2017-011486 1
Application 12/850,1492
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
April 5, 2017) and Reply Brief ("Reply Br.," filed September 12, 2017), and
the Examiner's Answer ("Ans.," mailed July 12, 2017) and Final Office
Action ("Final Act.," mailed November 18, 2016).
2 Appellants identify W.W. Grainger, Inc. as the real party in interest. App.
Br. 2.
Appeal 2017-011486
Application 12/850,149
CLAIMED INVENTION
Appellants' claimed invention "generally relates to dynamic
merchandising and, more particularly, relates to a system and method for
directing a customer to additional purchasing opportunities" (Spec. 1,
11. 11-13).
Claim 1, reproduced below with bracketed notations added, is the sole
independent claim and representative of the claimed subject matter:
1. A computer-readable media embodied in a non-
transient, physical memory device having stored thereon
computer-executable instructions for presenting additional
purchasing opportunities to a consumer, the instructions
performing steps comprising:
[(a)] discerning within a plurality of purchase orders
pairings of products that were purchased together and that have
at least one product attribute which differ;
[ (b)] creating from the discerned pairings of products
ordered lists which contain data indicative of degrees to which
combinations of different product attributes appear within the
discerned pairings of products;
[ ( c)] in response to data provided by the consumer
indicative of a first product attribute, using the data to select from
the created ordered lists one or more second product attributes
wherein the one or more selected second product attributes are
different from the first product attribute and wherein the one or
more selected second product attributes occur in combination
with the first product attribute within the discerned pairings of
products; and
[ ( d)] presenting the one or more selected second product
attributes to the consumer whereby the consumer may interact
with the presented one or more selected second product attributes
to access information relevant to products having the one or more
selected second product attributes.
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Application 12/850,149
REJECTION
Claims 1--4 are rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more.
ANALYSIS
Appellants argue the pending claims as a group (App. Br. 3---6). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. §4I.37(c)(l)(iv).
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
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
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 (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 Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. 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 there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
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Application 12/850,149
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "presenting a
purchasing opportunity to a consumer," which the Examiner concluded is
similar to other concepts that the courts have held abstract (Final Act. 2-5).
The Examiner also determined that the claims do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea itself (id. at 5---6).
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36. Here, the Specification,
including the claim language, make clear that the claims focus on an abstract
idea, and not on any improvement to computer technology and/or
functionality.
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Appeal 2017-011486
Application 12/850,149
The Specification is entitled "SYSTEM AND METHOD FOR
DIRECTING A CUSTOMER TO ADDITIONAL PURCHASING
OPPORTUNITIES," and discloses that the invention generally relates to
dynamic merchandising (Spec. 1, 11. 11 ). The Background section of the
Specification describes that there are an increasing number of business to
customer ("B2C") websites that allow customers to purchase products
online, and that, at various times during the purchasing process, the website
may offer recommendations of other products that the customer may be
interested in purchasing (id. at 1, 11. 14--19). "These recommendations can
serve not only to increase sales, but also to drive awareness that the
merchant carries a particular product or brand" (id.). The Specification
describes that B2C websites use various product recommendation
techniques; for example, one such website provides product
recommendations by correlating product ratings provided by a customer
with product ratings provided by other customers within a purchasing
community (id. at 1, 1. 20 - 2, 1. 16). According to the Specification, these
website product recommendation techniques may be useful in the B2C
environment, but what is needed is an improved system and method for
providing product recommendations, especially in the business to business
("B2B") environment where "products may have less customer-demographic
sensitivity and where products do not have fads, trends, and/or fashions" (id.
at 2, 11. 17-21. ).
The claimed invention is ostensibly intended to address this need by
providing a system and method for recommending products which utilizes
product relationships that are considered independently of customer
demographics (id. at 3, 11. 1-3). Considered in light of the Specification, the
purported advance over the prior art is, thus, an improved technique for
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Application 12/850,149
formulating product recommendations to, thus, direct customers to
additional purchasing opportunities. In that context, claim 1 is directed to
( 1) examining a plurality of purchase orders to identify pairs of products that
were purchased together and that have at least one product attribute which
differs, e.g., a different brand name (step (a)); (2) creating, from the product
pairings, a listing containing information indicative of the extent to which
combinations of different product attributes appear in the product pairings
(step (b )); (3) receiving an attribute of interest, i.e., a first product attribute,
from the consumer, and selecting one or more second product attributes that
are different from the first product attribute and occur in combination with
the first product attribute in the product pairings ( step ( c) ); and ( 4) directing
the customer to additional purchasing opportunities, i.e., to products having
the second product attribute ( step ( d)) - in other words, to targeted
advertising/marketing, which is a method of organizing human activity,
considered to be an ineligible abstract idea. See 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
("Revised Guidance").
The Federal Circuit has consistently held that abstract ideas include
the concepts of collecting data, analyzing the data, and displaying the results
of the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting,
displaying, and manipulating data); (Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, when claimed in a particular way, as
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Application 12/850,149
matters within the realm of abstract ideas); see also SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As many cases
make clear, even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." (quoting Elec.
Power Grp., 830 F.3d at 1353, 1355 (citing cases)). Directing customers to
additional purchasing opportunities by providing product recommendations
also is a known marketing practice (see Spec. 1 ), and is substantially similar
to economic practices that the courts have found patent-ineligible. See, e.g.,
Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff'd,
622 F. App'x 915 (Fed. Cir. 2015) (concluding that claims directed to
"targeting advertisements to certain consumers" were no more than an
abstract idea); Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a
user based on particular information); Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user
interface to have targeted advertising based on user information).
The Specification discloses, as mentioned above, that product
recommendations serve to increase sales and drive customer awareness of
the products that the merchant markets, and describes that the claimed
invention is intended to address the need for an "improved system and
method for providing product recommendations, especially in the business
to business ("B2B") environment" (Spec. 2, 11. 17-19). It, thus, clearly
appears from the Specification that the focus of the claimed invention is on
addressing a business objective (i.e., increasing product sales and consumer
product awareness), and not on only any claimed means for accomplishing
that goal that improves technology.
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We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the Revised Guidance. 3
3 We note that Appellants' briefs were filed, and the Examiner's Answer
mailed, before the USPTO issued the Revised Guidance, which, by its terms,
applies to all applications, and to all patents resulting from applications, filed
before, on, or after January 7, 2019. In accordance with the Revised
Guidance, a claim is generally considered "directed to" an abstract idea if
( 1) the claim recites subject matter falling within one of the following
groupings of abstract ideas: (a) mathematical concepts; (b) certain methods
of organizing human activity, e.g., fundamental economic principles or
practices, commercial or legal interactions; and ( c) mental processes, and
(2) the claim does not integrate the abstract idea into a practical application
i.e., apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the clam is more than a
drafting effort designed to monopolize the judicial exception. See Revised
Guidance, 84 Fed. Reg. at 54--55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") §§ 2106.05(a}-(c)
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Application 12/850,149
Appellants assert that the present claims, when considered as a whole,
set forth, what Appellants characterize as a "programmatic structure," that
performs the steps, as recited, for example, in claim 1, and "creates ordered
lists which contain data indicative of degrees to which combinations of
different product attributes appear within the discerned pairing of products"
(App. Br. 4--5). Appellants argue that this claimed programmatic structure
"improves upon the functioning of technology as it provides a mechanism
for a B2B consumer to be presented with information about product[ s] that
is not influenced by customer-demographics, fads, trends, or fashion" (id.
at 5). But, we fail to see, and Appellants do not explain, how presenting a
customer with product information improves on the "functioning of
technology." As described above, it clearly appears from the Specification
that the focus of the claimed invention is on addressing a business objective,
i.e., increasing sales and/or consumer product awareness by directing
consumers to additional purchasing opportunities, and not on any claimed
means for achieving the goal that improves technology (see, e.g., Spec. 1-2)
Contrary to Appellants' assertion, we also are not persuaded that there
is any parallel between the present claims and those at issue in Trading
Technologies Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017)
(App. Br. 6 ("[T]he subject claims are directed to patent-eligible subject
matter for the same reasons that the claims in Trading Techs, Intl., Inc. v.
CQG, Inc. were determined to be directed to patent-eligible subject
and (e}-(h) in describing the considerations that are indicative that an
additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application. Id. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
"directed to" the judicial exception.
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matter.")). There, the Federal Circuit affirmed the district court's holding
that the patented claims ( which recited a method and system for displaying
market information on a graphical user interface) were not directed to an
abstract idea because the district court found, and the Federal Circuit agreed,
that the challenged patents did not simply claim displaying information on a
graphical user interface; instead, the claims required "a specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of the art." Id.
at 1004.4 The Federal Circuit, thus, found that the district court's ruling was
in accord with precedent that has recognized that "specific technologic
modifications to solve a problem or improve the functioning of a known
system generally produce patent-eligible subject matter." Id. at 1004---05.
Appellants assert that the present claims are patent-eligible for the
same reasons the claims in Trading Technologies were determined to be
patent-eligible (App. Br. 6). But, unlike the situation in Trading
Technologies, Appellants do not identify any problem with prior art user
interfaces that the present interface was specifically designed to resolve.
4 Specifically, the district court found that with prior art GUis, the best bid
and best ask prices changed based on updates received from the market;
therefore, there was a risk with these GUis that a trader would miss her
intended price as a result of prices changing from under her pointer at the
time she clicked on the price cell on the GUI. The patents-in-suit provided a
system and method whereby traders could place orders at a particular,
identified price level, not necessarily the highest bid or the lowest ask price
by keeping the prices static in position, and allowing the quantities at each
price to change. Trading Techs. Int'!, Inc. v. CQG, Inc., No. 05-cv-4811,
2015 WL 774655 *4 (N.D. Ill. Feb. 24, 2015).
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And, as described above, we are not persuaded that the claimed invention
constitutes a technological improvement.
Appellants also misapprehend the controlling precedent to the extent
that Appellants maintain that the Board, by reversing the prior art rejections
in its February 10, 2016 decision in this application, has determined that the
claims include "an inventive concept" under step two of the Mayo/Alice
framework (Appeal Br. 6; see also Reply Br. 2). Neither a finding of
novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayol Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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., 573 U.S. at 217-18 (citation omitted). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90;
see also Diamondv. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1--4 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
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DECISION
The Examiner's rejection of claims 1--4 under 35 U.S.C. § 101 is
affirmed.
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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