Ex Parte Ainsworth et al

Patent Trial and Appeal Board

Jul 17, 2017

13843651 (P.T.A.B. Jul. 17, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/843,651 03/15/2013 Richard Barber Ainsworth III ADS-001 5906
45588 7590 07/19/2017
ALLIANCE DATA C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVTT.T.E, CA 95076
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/19/2017 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):
patents @ wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BARBER AINSWORTH III, CHRISTINE HARDIN,
THOM-AUSTIN YOUNG, DANIEL PAUL FINKELMAN, and
DEAN LAWRENCE KOWALSKI
Appeal 2016-007513
Application 13/843,6511
Technology Center 3600
Before MAHSHID D. SAADAT, THU A. DANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—10, 14—35, 47—61, and 65—74, which constitute
the only claims pending. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The invention relates to recommending items in the context of a
1 The real party in interest is identified as Comenity LLC. App. Br. 1.
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specific collection built for a customer's specific preferences and employing
customer input that pertains to previously purchased items and future
preferences. Abstract. Claim 1, reproduced below, is exemplary of the
subject matter on appeal (disputed limitations emphasized):
1. A method for enhancing a retailer's revenue by making a
recommendation to a customer, the method comprising:
receiving, by a computer system, input that pertains to a
customer, wherein at least a portion of the input is received from
a customer specified social media in response to the computer
system logging into the customer specified social media using
social media settings provided by the customer;
receiving, by the computer system, rules pertaining to
valid or invalid combinations of items;
analyzing, by the computer system, the input that pertains
to the customer to build a correlation table based on the received
input; and
dynamically generating, by the computer system based on
the input, the correlation table, and the rules, a recommendation
for the customer that includes a collection of coordinated items
that provides a personalized ensemble that is personalized for the
customer.
App. Br. 25 (Claims App’x).
THE REJECTIONS
Claims 1—10, 14—35, 47—61, and 65—74 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final Act. 3—
4.
Claims 1, 17, 20, 21, 24, 26, 29, 47, 48, 51, 52, and 68 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Linh et al. (US
2014/0089135 Al; pub. March 27, 2014) (“Linh”) in view of Saul et al. (US
2009/0037295 Al; pub. February 5, 2009) (“Saul”). Final Act. 4-11.
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Claims 2-10, 14-16, 19, 22, 23, 27, 28, 30, 32, 33, 35, 49, 50, 53-61,
65—67, 70, and 71 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Linh, Saul, and McGovern et al. (US 2014/0067596 Al;
pub. March 6, 2014) (“McGovern”). Final Act. 12—27.
Claims 18 and 69 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Linh, Saul, and Cheng et al. (US 2009/0094260 Al);
pub. April 9, 2009) (“Cheng”). Final Act. 28-29.
Claims 25 and 34 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Linh, Saul, and Jessup et al. (US 2013/0268377 Al;
pub. October 10, 2013) (“Jessup”). Final Act. 30-31.
Claim 31 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Linh, Saul, and Heidel (US 2010/0228646 Al; pub.
September 9, 2010). Final Act. 32—33.
Claims 72—74 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Linh, Saul, and Song et al. (US 2010/0100455 Al;
pub. April 22, 2010). Final Act. 34—36.
ANALYSIS
The §101 rejection
The Examiner concludes:
[t]he claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Claims 1—10, 14—35, 47—61, and 65—74 are
directed to the abstract idea of recommending gifts, which is
considered to be a method of organizing human activity. The
concept of "recommending gifts" is described by the generating
step in claim 1.
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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 computer as recited is a generic computer
component that performs functions (ie., receiving input from a
customer, receiving rules, analyzing the input and generating a
recommendation for the customer). These are generic computer
functions (i.e., receiving data, receiving data, analyzing data and
generating data) that are well-understood, routine and
conventional activities previously known to the industry. The
claims also recite a computer system, which does not add
meaningful limitations to the idea of recommending gifts beyond
generally linking the system to a particular technological
environment, that is, implementation via computers. The claims
do not amount to significantly more than the underlying abstract
idea of recommending gifts. Accordingly, claims 1—10, 14—35,
47—61 and 65—74 are ineligible.
Final Act. 3.
Appellants contend the Examiner’s rationale and conclusion that the
claims are directed to a judicial exception and not patent eligible constitutes
error. App. Br. 8—14; Reply Br. 2—A. Appellants then present six specific
arguments. Id.
Appellants argue (1) there is no organizing human activity in the
claim because
while it might be an abstract idea to just take human generated
recommendations and somehow transmit them from one human
to another over a computer system, that is not what is being
claimed; [wjith respect to Claim 1, for example, a computer
system receives input about the customer, analyzes the input, and
then generates a recommendation.
App. Br. 9-10.
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We are not persuaded by Appellants’ argument and agree, instead,
with the Examiner that the claim “is considered a certain method of
organizing human activity” and “[t]his abstract idea describes concepts
relating to interpersonal and intrapersonal activities, such as managing
relationships between people, social activities, and human behavior.” Ans.
4. We also agree “[sjeveral cases have found concepts relating to managing
relationships between people to be abstract ideas, such as creating a
contractual relationship . . . and processing loan information.” Id. (citing
buySAFE, Inc. v. Google, Inc. 765 F.3d 1350 (Fed. Cir. 2014); Dealertrack,
Inc. v. Huber, 674 F.3d 1315, (Fed. Cir. 2012)). Moreover, we agree the
claim can be performed in the human mind, or by a human using a pen and
paper because it is the organization and comparison of data and is similar to
other concepts that have been identified as abstract by the courts, such as
using categories to organize, store and transmit information or comparing
new and stored information using rules to identify options. Id. (citing
Cyberfone Systems, LLC v. CNN Interactive Group, Inc. 558 Fed. Appx. 988
(Fed. Cir. 2014); SmartGene, Inc. v. Advanced Biological Laboratories, 555
Fed. Appx. 950 (Fed. Cir. 2014)).
Appellants argue (2) the claims require more than a generic computer
and the claims have been amended to include specific activities that are
performed by the recited computer systems e.g., “building a correlation table
based on the received input, and to recite dynamically generating a
recommendation, based on the input, the correlation table, and the rules
regarding valid and invalid combinations of items.” App. Br. 10. We are
not persuaded and agree, instead, with the Examiner’s conclusion that the
claim recites insignificant extrasolution activity that “links the judicial
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exception to a particular technological environment or field of use, which
has been found by the courts to be well-understood, routine and
conventional.” Ans. 5 (citing Alice Corp. Pty. Ltd. v. CLS BankInt'l, 573
U.S._, 134 S. Ct. 2347, 2356(2014); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716-17 (Fed. Cir. 2014)).
Appellants argue (3) the claims do more than “merely implement an
abstract idea on a computer” and, instead, improve the technical field by
“dynamically generating recommendations for customers which would not
otherwise be made or generated.” App. Br. 10. Moreover, Appellants argue
a prima facie case has not been made because no objective evidence is set
forth to support “[ajbstractness.” Id. at 11 (citing Alice).
We are not persuaded by Appellants’ argument as the claim is
addressed to a business problem of making item recommendations and this
problem “addresses a business challenge, not a technological challenge.”
Ans. 6. While “[t]he claimed invention may have solved business problems
associated with item recommendations . . . they are not claimed solutions
necessarily rooted in computer technology” and “[tjherefore, there is no
improvement to the technical field of computer-implemented
recommendation engines.” Id. at 5—6 (citing Spec. 11; DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Appellants’ argument regarding a prima facie case is not relevant to
whether the Examiner has given Appellants reasonable notice as to the basis
of the § 101 rejection. The notice requirement is set forth by
35U.S.C. § 132 and is sufficient here.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
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“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).
Appellants argue (4) the claims recite more than just the acts of
“receiving data, receiving data, analyzing data and generating data” and a
human is not able to perform the features of claim 1 without a computer. Id.
at 12. According to Appellants, “features of claim 1 necessarily require a
computer system functioning to dynamically perform complex
manipulations of data to achieve a personalized recommendation for a
customer.” Id. (citing Spec. 1116). Appellants further argue the claim
includes a computer system receiving a complex quantity of input which is
used to build correlation tables to dynamically and quickly generate
recommendations to the customer, and, therefore, does not fall into the
category in which a computer performs an activity that is already performed
by a human. Id. at 12—13.
Appellants argue (5) “Appellants’ [claimed] features definitively
demonstrate a method that is clearly more complicated than a basic method
of operation to be performed by a human and the complexity of which
prevents the method from being performed by a human.” Id. at 13.
According to Appellants, this is consistent with Mayo/Alice which
“describes the prevention of the patenting of concepts that are methods of
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organizing human activity in that Mayo/Alice prevents the patenting of
concepts that clearly should remain in the public domain as concepts that are
in themselves the basic functioning of a human's existence and/or mode of
operation.” Id. at 13.
Appellants argue (6) the Examiner’s approach is too simplistic and
relies on the preamble statement to reach a conclusory statement that claim 1
involves recommending gifts and therefore a method of organizing human
activity, an abstract idea. Id. at 13—14. Appellants also continue to argue
the features of claim 1 cannot be performed without the application of the
process to a computer system. Id. at 14.
We are not persuaded by Appellants’ arguments (4), (5), and (6) and
agree, instead, with the Examiner’s conclusions. Ans. 6—10. In particular,
the Specification describes the invention as “an efficient, cost-effective, and
near real-time alternative to what would otherwise be performed by a live
personal shopper.” Id. at 8 (citing Spec. 1150). Moreover, “the additional
elements of a computing system and social media, which do[] not render the
invention to be significantly more than the abstract idea because they are
well-understood, routine, and conventional elements.” Id. at 10.
Appellants additionally argue recent cases support patent eligibility
because some improvements in computer related technology are not
necessarily abstract and “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
Reply Br. 2-A (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016); Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)). According to Appellants, the claims
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do more than recite the abstract idea of recommendations to a customer,
constitute a technology based solution, and do not preempt the use of an
abstract idea.
We conclude each of Appellants’ claims on appeal is distinguishable
from the type of claim considered by the court in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016) and Bascom. We conclude none of
Appellants’ claims is “directed to an improvement in the functioning of a
computer,” as was found by the court regarding the subject claim in Enfish,
822 F.3d at 1338. To the extent that the recited steps or acts may be
performed faster or more efficiently using a computer, our reviewing court
provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[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.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added). See also Electric Power Grp., 830 F.3d at 1350, to
the extent that Appellants’ claims similarly collect information, analyze it in
some fashion, and present or communicate the result. The Court in Electric
Power guides: “we have treated 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.” 830 F.3d at
1354 (internal citations omitted).
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Applying this reasoning to Appellants’ claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
and/or computer related elements, rather than from Appellants’ claimed
steps or functions.
In summary, we are not persuaded by Appellants’ arguments. The
Supreme Court in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347
(2014) reiterated the framework set out in Mayo Collaborative Services v.
Prometheus Laboratories Inc., 132 S. Ct. 1289 (2012) for “distinguishing
patents that claim . . . 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 if the claim is directed toward a patent-ineligible
concept and, if so, the second step is 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 (citing Mayo, 132 S. Ct. at
1297—98). The second step searches for an inventive concept that is
sufficient to ensure that the patent amounts to significantly more than a
patent on the patent-ineligible concept. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294).
Applying the first step, we agree with the Examiner that the claim is
directed to the identified abstract ideas. In addition, we agree the Examiner
has considered the abstract ideas in the aggregate. Accordingly, we find that
the claim is directed to a patent-ineligible concept.
Having determined that the claim is directed to a patent-ineligible
concept, step 2 of the analysis considers whether the claim contains an
inventive concept such as additional limitations that narrow, confine or
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otherwise tie down the claim so that it does not fully cover the abstract idea
itself. See Alice, 134 S. Ct. at 2357. Here, we agree with the Examiner that
no inventive concept is present. Moreover, the hardware features are the
type of generic element that has been determined to be insufficient by the
Supreme Court to transform a patent-ineligible claim into one that is patent-
eligible. See Alice, 134 S. Ct. at 2358. The claim includes no limitations
that prevent it from covering the abstract idea itself. Therefore, we are
unpersuaded by Appellants’ argument that the claims constitute an inventive
concept that is significantly more than a patent on the patent-ineligible
concept.
In view of the above, we sustain the rejection of claim 1, and
independent claims 20, 47, and 52, which recite similar limitations as claim
1 and are argued together with claim 1. We also sustain the rejection of
dependent claims 2—10, 14—19, 21—35, 48—51, 53—61, and 65—74 as these
claims are not argued separately.
The § 103(a) rejections
Regarding the rejection of claim 1 over Linh and Saul, Appellants
argue neither reference teaches the claim 1 limitations:
receiving, by the computer system, rules pertaining to
valid or invalid combinations of items; and
analyzing, by the computer system, the input that pertains
to the customer to build a correlation table based on the received
input.
App. Br. 15—16.
According to Appellants, Linh is silent as to a correlation table or
rules pertaining to valid or invalid combinations of items in the correlation
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table. Id. at 16. In particular, “Linh compares a user's stated preference with
product descriptions and finds the best match” and Linh's focus is on finding
matches between a user's preference and a data store of products. Id. (citing
Linh 142). Appellants contend Linh does not teach “data store of rules
pertaining to a valid or invalid combination of items, such as that which
appears in a generated correlation table.” Id. Appellants further contend
“Saul also is silent with respect to a correlation table and rules therefore.”
Id. Appellants then argue, since neither reference teaches the disputed
limitations, the combination does not teach the disputed limitations. Id.
The Examiner finds the combination of Linh and Saul teaches the
limitations of claim 1, and, in particular, relies on the teaching of Saul for
the disputed limitations. Final Act. 4—6; Ans. 10— 14. The Examiner finds
Saul teaches a computer system that generates an outfit match set. Ans. 13.
In particular, the Examiner finds:
A receiver receives an item choice including a fashion item.
"Communicatively coupled to the receiver is a matching engine
to execute an algorithm to match the fashion item with an
additional fashion item selected from a style matrix, the matching
based upon an attribute." (Paragraph 32) Communicatively
coupled to the transmitter is a selection engine to select the
fashion item from a digital closet. The selection engine is a
processor that processes the fashion item to build an attribute
association matrix. Furthermore, a comparison engine is coupled
to the processor to compare the attribute association matrix and
the style matrix to determine a match of the fashion item and the
additional item. (Paragraph 32) Saul further teaches a filter which
is coupled to the comparison engine. The filter filters the fashion
item and the additional fashion item using a filter that includes at
least of a color-to color association filter, a price-to price
association filter, or a fabric-to-fabric association filter. The filter
may be used of filter attributes of fashion items. (Paragraph 33).
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Such computer system that generates an outfit match set;
receiver receives an item choice including a fashion item; a
matching engine to execute an algorithm to match the fashion
item with an additional fashion item selected from a style matrix,
the matching based upon attribute; selection engine to select the
fashion item from a digital closet, where the selection engine is
a processor that processes the fashion item to build an attribute
association matrix; filter filters the fashion item and the
additional fashion item are considered "receiving, by the
computer system, rules pertaining to valid or invalid
combination of items
Such generating an outfit match set; receiver receives an
item choice including a fashion item; matching engine to execute
an algorithm to match the fashion item with an additional fashion
item selected from a style matrix, the matching based upon an
attribute a selection engine to select the fashion item from a
digital closet, where the selection engine is a processor that
processes the fashion item to build an attribute association
matrix; and comparison engine to compare the attribute
association matrix and the style matrix to determine a match of
the fashion item and the additional item are considered
"analyzing, by the computer, the input that pertains to the
customer to build a correlation table based on the received
input".
Ans. 13—14 (emphasis added).
We are not persuaded by Appellants’ arguments and agree, instead,
with the Examiner’s findings. Appellants do not present sufficient
persuasive arguments that the claim terms should be limited to exclude the
teachings of Linh and Saul and present no persuasive argument that the
Examiner’s findings and claim interpretations are unreasonable or
overbroad. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the specification, as understood by
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one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004).
We agree the combination of the teachings of Linh and Saul teaches
the claim 1 limitations while Appellants argue Linh individually and present
only conclusory arguments regarding the teaching of Saul. In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.” (Citations omitted)); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[Sjome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness” .... [Hjowever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSRInt’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419-21).
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Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the foregoing, we sustain the rejection of claim 1, and
independent claims 20, 47, and 52, which are commensurate in scope with
claim 1 and argued together with claim 1. We also sustain the rejection of
dependent claims 2, 17, 21, 24, 29, 48, 51, and 68 as these claims are not
argued separately. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 18, 25, 31, 34, 69, and 12—1A stand rejected over Linh and
Saul in combination with additional cited references. Appellants rely on the
same arguments discussed, supra, regarding the combination of Linh and
Saul and argue the additional references do not cure the deficiency. App.
Br. 14— 17. As we find no deficiency regarding the teaching of the
combination of Linh and Saul, we also sustain the rejection of these claims.
DECISION
We affirm the Examiner’s decision rejecting claims 1—10, 14—35, 47—
61, and 65—74 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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