Ex Parte Aihara et al

Patent Trial and Appeal Board

Sep 21, 2018

14057221 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/057,221 10/18/2013 ToruAihara
30449 7590 09/25/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
JP920120098US1 7582
EXAMINER
EZEWOKO, MICHAEL I
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORU AIHARA, NOBORU KAMIJO,
KAZUMASA OCHIAI, and HIDEKAZU TANAKA1
Appeal2017-006844
Application 14/057 ,221
Technology Center 3600
Before JASON V. MORGAN, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 2-5, 12-15, and 17-20. See Final Act. 1. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 2-5, 12-15, and 17-20 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Final Act. 2--4.
1 Appellants identify the real party in interest as International Business
Machines Corp. App. Br. 1.
2 After the Final Action, Appellants amended claims 2, 12, and 17 to
incorporate the limitations of claims 1, 11, and 16, respectively, and
canceled claims 1, 11, and 16. See Advisory Action dated September 27,
2016.
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Application 14/057 ,221
Claims 2-5, 12-15, and 17-20 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Aihara (US 2010/0287057 Al; Nov. 11, 2010),
Rolf(US 7,917,402 B2; Mar. 29, 2011), and Rempe (US 2007/0265921 Al;
Nov. 15, 2007). Final Act. 5-27.
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to "processing requests to buy items or
services through use of affiliates." Spec. 1 :4--5. Claim 2 is illustrative and
reproduced below:
2. A method for processing shopping information,
said method comprising:
receiving, from a dedicated shopping mobile device by
one or more hardware units, shopping information pertaining to
a purchase of an item by a user through use of the mobile
device that scanned the shopping information from an item tag
attached to the item, said item relating to another user, said one
or more hardware units being special purpose hardware units
specific to the method for processing shopping information; and
said one or more hardware units determining, from
analysis of the shopping information, a set of affiliates wherein
each affiliate of the set of affiliates is entitled to receive a
reward due to the purchase of the item, and wherein said
determining the set of affiliates comprises:
determining that the set of affiliates comprises one
or more affiliates identified by respective affiliate information
included within the shopping information and included on the
item tag; or
analyzing associations between affiliates and
unique identification information denoted as a unique ID and
included in the shopping information and on the item tag, in
affiliate information external to the shopping information, to
determine the set of affiliates as comprising one or more
affiliates associated with the unique ID, wherein the unique ID
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is unique to the item tag or is unique to the item to which the
item tag is attached.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 2-5, 12-15, AND 17-20
Contentions
The Examiner concludes claims 2-5, 12-15, and 17-20 are directed to
a judicial exception without significantly more. See Final Act. 2--4. In
particular, the Examiner concludes
Claim 1 is directed to the very simple abstract marketing idea
and fundamental economic practice of promulgating a
multilevel scheme substantially similar to a pyramid scheme, in
that the money made by an affiliate is associated with and
dependent on the number of recruits an affiliate produces;
similar to the fact pattern depicted in OPEN TEXT SA v.
ALFRESCO SOFTWARE LTD, which depicted said marketing
idea as, an abstract idea. As with the aforementioned case, the
instant application merely "uses generic computer and Internet
technology", and contain no additional inventive concept."
Therefore, because claim 1 is directed to an abstract idea, the
claims must be reviewed under Part II of the Mayo analysis to
determine whether the abstract idea has been applied in an
eligible manner. As noted above, fundamental economic
practices are examples of abstract ideas explicitly referenced in
Alice Corp.
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The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the steps or acts performed ( utilizing a
computer program product and system) in independent claims
11 and 16 and as depicted on page 2 of the applicant's
specification, are merely instructions to apply the abstract idea.
Specifically, there is no improvement to another technology or
technical field, no improvements to the functioning of the
computer itself, and no meaningful limitations beyond
generally linking the use of an abstract idea to a particular
technical environment, and the claims require no more than a
generic computer to perform generic computer functions that
are well-understood, routine and conventional: here, the
elements of claim 1, "reading" (i.e., storing/receiving) ... and
to "collect. " and "determining " (i.e.,
storing/sending) ... ". Therefore, based on the two-part Alice
Corp. analysis, there are no meaningful limitations in the claims
that transform the exception (i.e., abstract idea) into a patent
eligible application. Consequently, claim 1 and dependent
claims 2-5, and 8--10 are rejected as ineligible subject matter
under 35 U.S.C. 101 based on a rationale similar to the claims
from which they depend.
Alice Corp. also establishes that the same analysis should
be used for all categories of claims ( e.g., product and process
claims). Therefore, independent computer readable claims 11
and 16 are also rejected as ineligible subject matter under 35
U.S.C. 101 for substantially the same reasons as independent
method claim 1 above. The components, utilizing a computer
program product and system, as depicted in the claims and on
page 2 of the applicant's specification, add nothing of substance
to the underlying abstract idea. At best, the system, computer
readable program and apparatus recited in the claims are merely
providing an environment to implement the abstract idea.
Dependent claims 12-15 and 17-20 are consequently
rejected as ineligible subject matter under 35 U.S.C. 101 based
on a rationale similar to the claims from which they depend.
Final Act. 2--4; see also Ans. 5-10.
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Appellants present the following principal arguments:
1. "[T]he presently pending claims are directed to processing
shopping information as stated in the preamble, which is not an economic
practice but rather is a data processing practice." App. Br. 12; see also App.
Br. 13 (distinguishing the claims from OPEN TEXT) and Reply Br. 2-3.
11. The claims amount to significantly more than any abstract idea
because the claims recited special purpose hardware and a dedicated mobile
shopping device. See App. Br. 14--15; see also App. Br. 16-17 and Reply
Br. 3--4.
111. The claims amount to significantly more than any abstract idea
because the recited "determining that the set of affiliates ... " and "analyzing
associations between affiliates and ... " are not well-understood, routine, and
conventional. See App. Br. 17-19 and Reply Br. 4--5.
1v. The claims amount to significantly more than any abstract idea
because the claims improve the technology of processing shopping
information. See App. Br. 19 and Reply Br. 5.
Our Review
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
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scientific and technological work."). Notwithstanding that a law of nature or
an abstract idea, by itself, is not patentable, the application of these concepts
may be deserving of patent protection. Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the Court
stated that "to transform an unpatentable law of nature into a patent-eligible
application of such a law, one must do more than simply state the law of
nature while adding the words 'apply it."' Mayo, 566 U.S. at 72 ( citation
omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these 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. If the claims are directed to a patent-
ineligible concept, then 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." Id. (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. ( quoting Mayo, 566 U.S. at 72-73).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. at 2357 (quoting Mayo, 566 U.S. at 77-
78). The prohibition against patenting an abstract idea "cannot be
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circumvented by attempting to limit the use of the formula to a particular
technological environment or adding 'insignificant post[-]solution activity.'"
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). The Court
in Alice noted that "' [ s ]imply appending conventional steps, specified at a
high level of generality,' [was] not 'enough' [in Mayo] to supply an
'inventive concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at
82-83, 77-78, and 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
In particular, independent claim 2 is directed to determining a set of
affiliates to receive a reward due to the purchase of an item by receiving and
analyzing shopping information from an item tag.
Determining a set of affiliates to receive a reward due to the purchase
of an item by receiving and analyzing shopping information from an item
tag is a fundamental economic practice, long prevalent in our system of
commerce, like the risk hedging in Bilski (see Bilski v. Kappas, 561 U.S. 593
(2010)), the intermediated settlement in Alice (see Alice, 134 S. Ct. at 2356-
57), verifying credit card transactions in CyberSource (see CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)),
collecting and analyzing information to detect and notify of misuses in
FairWarning (see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093-94 (Fed. Cir. 2016)), and guaranteeing transactions in buySAFE (see
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)).
Thus, determining a set of affiliates to receive a reward due to the
purchase of an item by receiving and analyzing shopping information from
an item tag, like the fundamental economic practices above, is an "abstract
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idea" beyond the scope of§ 101. See Alice 134 S. Ct. at 2356. Accordingly,
we do not see error in the Examiner's conclusion that the claims are directed
to a fundamental economic practice. See Final Act. 2-3; see also Ans. 5-10.
Regarding Appellants' argument (i), this argument does not show any
error in the Examiner's conclusion because, for reasons discussed above, we
conclude that claim 2 is directed to a fundamental economic practice rather
than a data processing practice as argued by Appellants.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101"). Similarly, the Federal Circuit
has found claims directed to "collecting information, analyzing it, and
displaying certain results of the collection and analysis" as directed to a
patent-ineligible abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016).
Accordingly, determining a set of affiliates to receive a reward due to
the purchase of an item by receiving and analyzing shopping information
from an item tag is an abstract idea because it can be performed by human
thought alone, or with pen and paper. The abstract idea, even when
automated to reduce the burden on the user of what once could have been
done with pen and paper, remains an abstract idea. In addition, determining a
set of affiliates to receive a reward due to the purchase of an item by
receiving and analyzing shopping information from an item tag is an abstract
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idea because it is the basic concept of collecting information, analyzing it,
and displaying certain results of the collection and analysis.
Step two: Is there something else in the claims that ensures they are directed
to significantly more than a patent-ineligible concept?
Because claim 2 is directed to an abstract idea, the question to be
settled next, according to Alice, is whether claim 2 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than the abstract idea.
Claim 2 recites "receiving, from a dedicated shopping mobile device
by one or more hardware units, shopping information," "said one or more
hardware units being special purpose hardware units specific to the method
for processing shopping information," and "said one or more hardware units
determining."
The claimed dedicated shopping mobile device is a generic, purely
conventional element. Although the device is recited as "dedicated," the
"dedicated" device remains a generic, conventional element. Appellants'
Specification confirms this. See Spec. 14:2--4 ("[I]t may be a dedicated
shopping mobile device, such as the one having already been used in self
scanning shopping in European countries.").
Similarly, the claimed special purpose hardware units are generic,
purely conventional elements. Although the hardware units are recited as
"special purpose," the "special purpose" hardware units remain generic,
conventional elements. Appellants' Specification confirms this. See Spec.
38--40 (describing a generic, conventional computer shown in Fig. 21). We
recognize that the Specification does disclose "[t]he present invention may
be achieved by hardware in its entirety or may be achieved by software in its
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entirety," but there is still no description of the hardware units as anything
other than generic, conventional elements. Spec. 39:4--5.
Thus, the claims do no more than require generic computer elements
to perform generic computer functions, rather than improve computer
capabilities. Put another way, looking beyond the abstract idea of
determining a set of affiliates to receive a reward due to the purchase of an
item by receiving and analyzing shopping information from an item tag, we
do not see any inventive concept in the remaining claim limitations
individually or in combination. Claiming various combinations of
conventional computers is not enough to transform the idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.").
Regarding Appellants' arguments (ii) and (iv), these arguments do not
show any error in the Examiner's conclusion because, for reasons discussed
above, we conclude the claims do no more than require generic computer
elements to perform generic computer functions, rather than improve
computer capabilities.
Regarding Appellants' argument (iii), this argument does not show
any error in the Examiner's conclusion because determining the set of
affiliates is part of the abstract idea. The claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities. Put another way, "[t]he '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
[section] 101 categories of possibly patentable subject matter." Intellectual
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Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(quoting Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)).
Conclusion
We sustain the Examiner's rejection under 35 U.S.C. § 101 of claim 2.
We also sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 3-
5, 12-15, and 17-20, which are not separately argued with particularity. See
App. Br. 8-19, see also Reply Br. 2-5.
THE OBVIOUSNESS REJECTION OF CLAIMS 2-5, 12-15, AND 17-20 OVER
AIHARA, ROLF, AND REMPE
Contentions
The Examiner finds Aihara, Rolf, and Rempe teach all limitations of
claim 2. Final Act. 6-8.
In particular, the Examiner finds
Aihara may not disclose the elements below, and if so, the
aforementioned elements are disclosed as follows:
b) said one or more hardware units determining, from
analysis of the shopping information, a set of affiliates wherein
each affiliate of the set of affiliates is entitled to receive a
reward due to the purchase of the item (i.e., having an affiliate
scheme wherein a parent referrer's commission value is
proportional to the number of hierarchical child referrer's
under said parent; in other words, a parent referrer who
produces child referrers, children A, B, C, D, may receive
less a reward than child D if D hierarchically produces child
referrer's, children E, F, G, and H, grandchildren to the
parent referrer). [Rempe, ,r 0022; Rolf, as cogently
summarized in the Abstract and further detailed in column 1,
line 33---67, and column 2, lines 4---67, which describe
hierarchically cascading referral structures represented by levels
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with affiliates at each level attached to comm1ss10n regimes
related to design choices of the invention]
Final Act. 6-7; see also Ans. 11-12.
Appellants present, among arguments, the following principal
argument:
A second example of why claims 2, 12 and 17 are not
unpatentable over Aihara in view of Rolf and Rempe is that
Aihara in view of Rolf and Rempe does not teach or suggest the
feature: "said one or more hardware units determining, from
analysis of the shopping information, a set of affiliates
wherein each affiliate of the set of affiliates is entitled to
receive a reward due to the purchase of the item" ( emphasis
added).
App. Br. 22.
In response, Appellants assert that Rempe, Par. [0022]
discusses a hierarchical referral system, but is totally silent as to
determining a set of affiliates from analysis of the shopping
information.
In further response, Appellants assert that Rolf, Abstract
discusses allocating a commission to a person based upon
purchases made at a source as a result of access to the source
via a link to the source, but is totally silent as to determining a
set of affiliates from analysis of the shopping information.
In further response, Appellants cannot find, in Rolf, col.
1, line 33 - col. 2, line 67, the limitation of determining a set of
affiliates from analysis of the shopping information.
Therefore, Aihara in view of Rolf and Rempe does not
disclose the preceding feature of claims 2, 12 and 17.
App. Br. 22-23; see also Reply Br. 8-9 ("[The cited portions of Rempe and
Rolf] discuss affiliates but are totally silent as to shopping information
scanned from an item tag attached to the item, and are totally silent as to
determining a set of affiliates from analysis of the shopping information
scanned from an item tag attached to the item.").
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Our Review
Rempe discloses
The hierarchical referral system is designed to allow
members in the referral network of another member to be at the
top of their own referral network hierarchy. A member does not
have to be at the top of a hierarchy to earn commissions. It is
very possible, due to the reduction in percentage commission
earned as levels increase, that a member at the top of a referral
network could make less commission than a member several
levels below in the same referral network. For this reason,
everyone has an incentive to recruit additional individuals, no
matter where they are in the hierarchy of the referral network.
Rempe ,r 22.
Thus, we agree with Appellants that Rempe' s disclosure discusses a
hierarchical referral system, but is totally silent as to determining a set of
affiliates from analysis of the shopping information (scanned from an item
tag attached to the item) as recited in claim 2. The Examiner does not
explain how or why Rempe's disclosure would have suggested determining
a set of affiliates from analysis of the shopping information ( scanned from
an item tag attached to the item) as recited in claim 2.
Rolf discloses
A method for developing a direct person-to-person multilevel
direct affiliate marketing network using electronic
communications makes a first person an affiliate member of an
affiliate marketing program via an online registration process.
An electronic communication is generated that has a unique
hyperlink that, when selected, links to a source associated with
the affiliate marketing program and identifies the first person so
that a commission can be allocated to the first person based
upon purchases made at the source as a result of access to the
source via the link. The first person can forward the electronic
communication to others who can use the link to access the
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source and purchase products or services and/ or become an
affiliate member. A person that becomes a new affiliate
member as a result of accessing the source via the link is placed
in a developing network organization of the first person. The
process repeats by generating a unique hyperlink for the second
person, thereby allowing the new affiliate member to forward
electronic communications having his or her unique identifying
link to others.
Rolf Abstract.
Thus, we agree with Appellants that Rolfs disclosure discusses
allocating a commission to a person based upon purchases made at a source
as a result of access to the source via a link to the source, but is totally silent
as to determining a set of affiliates from analysis of the shopping
information (scanned from an item tag attached to the item) as recited in
claim 2. The Examiner does not explain how or why Rolfs disclosure would
have suggested determining a set of affiliates from analysis of the shopping
information (scanned from an item tag attached to the item) as recited in
claim 2.
We, therefore, do not sustain the Examiner's obviousness rejection of
claim 2. We also do not sustain the Examiner's obviousness rejections of
claims 3-5, which depend from claim 2.
For the same reasons discussed with respect to claim 2, we do not
sustain the Examiner's obviousness rejection of claim 12, which recites the
same argued limitation discussed above. We also do not sustain the
Examiner's obviousness rejections of claims 13-15, which depend from
claim 12.
For the same reasons discussed with respect to claim 2, we do not
sustain the Examiner's obviousness rejection of claim 17, which recites the
same argued limitation discussed above. We also do not sustain the
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Examiner's obviousness rejection of claims 18-20, which depend from
claim 17.
ORDER
Because we sustain one ground of rejection for all claims, the
Examiner's decision rejecting claims 2-5, 12-15, and 17-20 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).
AFFIRMED
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