Heiser, Russel Robert. et al.Download PDFPatent Trials and Appeals BoardMay 20, 20202018002806 (P.T.A.B. May. 20, 2020) 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. 11/865,466 10/01/2007 Russel Robert Heiser II SEGM 200003US01 5353 27885 7590 05/20/2020 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER HENRY, RODNEY M ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 05/20/2020 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@faysharpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RUSSEL ROBERT HEISER II, NATHAN W. SHAHAN, and JOHN CALE ____________ Appeal 2018-002806 Application 11/865,466 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MATTHEW S. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 0F1 seeks our review under 35 U.S.C. § 134 of the Examiner’s non-final rejection of claims 2, 3, 5–11, 28, 31, and 33–42. We have jurisdiction under 35 U.S.C. § 6(b). Appellant appeared for oral hearing on April 27, 2020. SUMMARY OF DECISION We AFFIRM. 11 The Appellant is the “applicant” (e.g., “the inventor”) as defined in 37 C.F.R. § 1.42. The real party in interest is Segmint Inc. (Appeal Br. 1.) Appeal 2018-002806 Application 11/865,466 2 THE INVENTION Appellant claims a method of personalized consumer advertising placement. The invention relates to collection of consumer financial transaction expenditure for mining according to criteria provided by advertisers, ad agencies and other applicable organizations (Spec. ¶ 2, Title). Claim 36 is representative of the subject matter on appeal: 36. A method for selectively delivering consumer-unsolicited internet advertising by an advertising delivery provider to a set of consumers in a pre-existing association with a financial institution, wherein the ad is delivered through a website of the financial institution, including: the advertising delivery provider receiving anonymous records from the financial institution identified by anonymous codings comprising consumer records of financial activity and status and lacking personal identity information and an indication of a consumer preference or delivery of internet advertising, for forming an anonymous relationship between the consumers and the advertising delivery provider; the advertising delivery provider collating, via a processor, the anonymous records in response to a targeted advertising program received from a marketer including matching the anonymous records to the targeted advertising program and identifying the matches with corresponding ones of the plurality of anonymous codings by selecting indicators from the consumer records matching the targeted advertising program; the advertising delivery provider determining a plurality of the targeted corresponding anonymous codings for generating a market segment selected for receipt of an ad comprising the advertising campaign; the advertising delivery provider receiving a signal from the financial institution indicative that a determined anonymous coding corresponding to a consumer of the market segment is on the website; and, the advertising delivery provider communicating the ad back to the financial institution for display as the unsolicited Appeal 2018-002806 Application 11/865,466 3 advertisement to the corresponding consumer via the website in direct response to the financial institution signal and without consumer authorization therefor, and wherein the anonymous relationship is maintained during the communicating. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 2, 3, 5–11, 28, 31, and 33–42 under 35 U.S.C. § 101. The Supreme 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, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . 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, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. 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 Appeal 2018-002806 Application 11/865,466 4 as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). 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. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019). The Examiner determines that the claims are directed to communicating targeted information while ensuring the users’ personal data remains anonymous to the ad providers. (Non-Final Act. 4). The Examiner finds the additional limitations of “a processor,” “anonymous codings,” and “a website” are generic computer components that perform conventional computer functions, i.e., electronic recordkeeping and transmitting data, and do not impose any meaningful limit on the computer implementation of the abstract idea. (Non-Final Act. 6). The Specification discloses that the invention is a method of collection of consumer financial transaction data for mining for advertisers, ad agencies and other applicable organizations. (Spec. ¶3). The invention allows advertisers a more efficient means to allow their products/services to be advertised to consumers who are “ready” to purchase their products/services. (Spec. ¶4). The customer information is associated in the method with a unique customer identification code (UCIC) that associates Appeal 2018-002806 Application 11/865,466 5 the customer to the information while still maintaining the anonymity of the customer. (Spec. ¶ 33). Consistent with this disclosure, claim 36 recites “[a] method for selectively delivering consumer-unsolicited internet advertising . . . including,” “receiving a targeted advertising campaign from an advertiser and generating a targeted ad,” “receiving anonymous records from the financial institution identified by anonymous codings,” “collating . . . the anonymous records,” “determining a plurality of the targeted corresponding anonymous codings for generating a market segment selected for receipt of an ad comprising the advertising campaign,” “receiving a signal from the financial institution,” “communicating the ad back to the financial institution for display as the unsolicited advertisement to the corresponding consumer . . .” We thus agree with the Examiner’s findings that the claims are directed to communicating targeted information while ensuring the users’ personal data remains anonymous to the ad providers. This subject matter of claim 36 relates to advertising, which is a certain method of organizing human activity, specifically a fundamental economic practice, which is a judicial exception. Guidance 84 Fed. Reg. 52. Also, we find the steps of claim 36 constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the Appeal 2018-002806 Application 11/865,466 6 claims recite a judicial exceptions of a fundamental economic practice and in the alternative, a mental practice. Turning to the second prong of the “directed to test,” claim 36 requires a “website” and a “processor.” These recitations do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance 84 Fed. Reg. 53. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent claim 36 invoke any 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. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of a processor or website or other technology, does not recite a Appeal 2018-002806 Application 11/865,466 7 particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 36 is directed to judicial exceptions that are not integrated into a practical application, and thus, is directed to “abstract ideas.” Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). The introduction of a computer/processor into the claims does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. 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. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Appeal 2018-002806 Application 11/865,466 8 Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. They do not. Taking the claim elements separately, the function performed by the computer and website at each step of the process is purely conventional. Using a computer and website to retrieve, select, and apply decision criteria to data and modify the data as a result and display data, amounts to electronic data query, retrieval and display—which are basic functions of a computer and website. All of these functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions using a generic website. As to the data operated upon, “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.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims of a processor and a website add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis-access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for Appeal 2018-002806 Application 11/865,466 9 exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 36 does not, for example, purport to improve the functioning of the processor or the website. As we stated above, claim 36 does not affect an improvement in any other technology or technical field. Thus, claim 36 at issue amount to nothing significantly more than instructions to apply the abstract idea of targeting ads using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 16–23; Reply Br. 2– 5) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims comprise a system for filtering content analogous to the claims in BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). (Appeal Br. 18). Appellant argues that, in BASCOM, the Federal Circuit held a specific, discrete implementation of an abstract idea is patent-eligible even if the Appeal 2018-002806 Application 11/865,466 10 underlying process itself is an abstract idea not eligible for patent protection. As such, Appellant asserts that, like the claims in BASCOM, the present claims, recite filtering of data from an Internet computer network between remote users. Contrary to Appellant’s arguments, the Federal Circuit did not find that the claims in BASCOM recited an inventive concept because the claims recited filtering content from an Internet computer network between remote users. Rather, in BASCOM, the Federal Circuit followed the Supreme Court’s guidance for determining whether the claims recite an inventive concept set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2357-60(2014). In Alice, the Supreme Court explained that, under the second step of the patent-eligibility analysis, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer.” 134 S. Ct. 2347, 2359 (2014). The Supreme Court also provided examples of claims that represent more than instructions to implement an abstract idea on a generic computer, such as claims that purport to improve the functioning of the computer itself and claims that effect an improvement in any other technology or technical field. Id. at 2359–60. Turning to BASCOM, the Federal Circuit held “[t]he inventive concept described and claimed in the '606 patent is the installation of a filtering tool at a specific location, remote from end-users, with customizable filtering features specific to each end user.” 827 F.3d at 1350. In determining this feature to be an inventive concept, the Federal Circuit explained that the remote location of a filtering tool having customizable user-specific filtering features provides the filtering tool both the benefits of Appeal 2018-002806 Application 11/865,466 11 a filter on a local computer and the benefits of a filter on the ISP server and is a technical improvement over prior art ways of filtering content. Id. at 1350–51. Notably, the Federal Circuit specifically determined that “the claims may be read to ‘improve[] an existing technological process.’” Id. at 1351 (citing Alice, 134 S. Ct. at 2358). As we find above, there is no technical improvement to the computer or improvement to the way filtering is done or in where the filtering is performed recited in claim 36. Appellant also argues that the claims recite novel and patentable subject matter and therefore recite significantly more than the abstract idea. (Appeal Br. 18). To the extent Appellant maintains that the limitations of claim 36 necessarily amount to “significantly more” than an abstract idea because the claimed method is allegedly patentable over the prior art, Appellant misapprehend the controlling precedent. Although the second step in the Alice/Mayo 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, 573 U.S. at 217. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. We are not persuaded that the Examiner erred by Appellant’s argument that the instant claims are similar to the claims recited in Google v. Network-1 Technologies, CBM 2015-00113 (PTAB October 19, 2015) at least because this decision has not been designated as precedential by the Board and, therefore, we are not bound by it. See Patent Trial and Appeal Board, SOP 2 (rev. 9): Publication of opinions and designation of opinions as precedential, informative, representative, and routine, p. 4 (Sept. 22, Appeal 2018-002806 Application 11/865,466 12 2014), https://www.uspto.gov/sites/default/files/documents/sop2-revision-9- dated-9-22-2014.pdf (“Every Board opinion is, by default, a routine opinion until it is designated as precedential or informative . . . A routine opinion is not binding authority.”). In view of the foregoing, we will sustain the rejection as it is directed to claim 36. We will also sustain this rejection as it directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 2, 3, 5–11, 28, 31, and 33–42 under 35 U.S.C. § 101. CONCLUSION In summary: DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 3,5–11, 28, 31, 33– 42 101 Eligibility 2, 3,5–11, 28, 31, 33– 42 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation