Ex Parte Barbieri et al

Patent Trial and Appeal Board

Mar 29, 2018

13925035 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/925,035 06/24/2013
21186 7590 04/02/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Danielle Barbieri
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.
3716.00lUSl 6131
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELLE BARBIERI and BRIAN LAWLER 1
Appeal 2016-008411
Application 13/925,035
Technology Center 3600
Before BRADLEY W. BAUMEISTER, BETH Z. SHAW, and
JON M. JURGOV AN, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1, 3-12, and 14--23. App. Br. 1.
Claims 1, 3-12, and 14--23 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3--4. 2
1 Appellants list Circupon as the real party in interest. Appeal Brief 2, filed
November 4, 2015 ("App. Br."); Revised Appeal Brief 2, filed
March 3, 2016 ("Revised App. Br.").
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
August 4, 2015 ("Final Act."); the Examiner's Answer mailed July 5, 2016
("Ans."); and the Reply Brief filed September 6, 2016 ("Reply Br.").
Appeal 2016-008411
Application 13/925,035
Claims 1, 3, 5-12, 14, and 16-23 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Moss et al. (US 2005/0160014 Al; published
July 21, 2005) (hereinafter "Moss"). Final Act. 4--42.
Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Moss and Wadell et al. (US 2014/0095285 Al; published April 3,
2014) (hereinafter "Wadell"). Final Act. 43--45.
We have jurisdiction under 35 U.S.C. § 6(b ).
We Affirm-in-Part.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b ), we
newly reject claim 11 under 35 U.S.C. § l 12(a) (pre-AIA 35 U.S.C. § 112,
i-f 1), and we newly reject claims 1, 3, 5-10, 12, 14, and 16-23 under
35 U.S.C. § l 12(b) (pre-AIA 35 U.S.C. § 112, i-f 2).
THE INVENTION
Appellants describe the present invention as follows:
Techniques for generating matchups of sale deals and
coupon deals based on identifying sale deals and coupon deals
that have matching brands and overlapping, and non-expired
validity periods are described. For example, deal data that
pertains to a plurality of deals including a sale deal published in
a circular and a coupon deal is received. A sale brand
identification and a coupon brand identification are identified
based on the deal data. A first set of deal data that includes the
sale brand identification and corresponds to the sale deal, and a
second set of deal data that includes the coupon brand
identification and corresponds to a coupon deal are determined
based on the deal data. A matchup of the sale deal and the
coupon deal is generated, using at least one computer processor,
based on matching the sale brand identification and the coupon
brand identification, detecting an indication of a sale deal type in
the first set of deal data and an indication of a coupon deal type
2
Appeal 2016-008411
Application 13/925,035
in the second set of data, and determining that a sale deal validity
period and a coupon validity deal period overlap and have not
expired, the sale deal validity period being calculated based on
the first set of deal data and the coupon deal validity period being
calculated based on the second set of deal data.
Abstract.
CLAIM 11
Claim 11 is reproduced below with added emphasis:
11. A method comprising:
receiving, at a matching system, at least one of a brand
identification, a store identification, a product identification, or a
product category identification;
generating a favorites list that includes the at least one of
the brand identification, the store identification, the product
identification, or the product category identification;
selecting, using the favorites list, a particular matchup of
a sale deal and a coupon deal from a plurality of matchups of
sales deals and coupon deals based on determining that the at
least one of the brand identification, the store identification, the
product identification, or the product category identification
included in the favorites list corresponds to a portion of deal data
that pertains to the particular matchup; and
presenting the particular matchup in a personal circular,
the personal circular including a user interface that displays at
least one of a shopping list, a sale deal, a coupon deal, the
matchup, or the favorites list, one or more modules incorporated
into the matching system to specifically[]configure the matching
system to perform the receiving, generating, selecting, and
presenting, the one or more module implemented by one or more
hardware processors of the matching system.
App. Br. 42--43.
3
Appeal 2016-008411
Application 13/925,035
The Patent Ineligible Subject Matter Rejection
The Examiner determines that all of the claims, including claim 11,
are directed to an abstract idea based upon the following rationale:
Claims 1, 3-12 and 14--23 are directed to the abstract idea of
crawling price information from weekly circulars and collecting
data from brand specific coupons then displaying the lowest
valid price. The inventive concept is a fundamental economic
practice that organizes human coupon searching for the
economic purpose of saving money and reducing the time it takes
to find the lowest price, which merely automates the long
standing practice of searching for the lowest price using sales and
coupons. For example, it is traditional to find a combinable sale
deal or a coupon deal by a person manually searching the
circulars or any other available sources of coupons or other
discounts, which is time consuming and tedious so the applicant
seeks to merely automate this traditional process using generic
computers.
Final Act. 3 (emphasis added). The Examiner also determines that the
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception. Id. at 3--4.
Appellants present multiple arguments as to why the Examiner has not
established that the concept of crawling price information from weekly
circulars and collecting data from brand specific coupons, then displaying
the lowest valid price, constitutes an abstract idea. App. Br. 14; see
generally id. at 13-30. For reasons explained below in the Conclusions
section of this Opinion, we only address the section 101 rejection as it
pertains to claim 11.
In determining whether the claims set forth patent-eligible subject
matter under 35 U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In
4
Appeal 2016-008411
Application 13/925,035
considering whether a claim is directed to an abstract idea, we acknowledge,
as did the Supreme Court, that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012 ). We therefore look to whether the claims focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016).
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, 772 F.3d at 714; Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2355 (2014).
In applying step two of the Alice analysis, we must
"determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract
idea into patentable subject matter. We look to see whether there
are any "additional features" in the claims that constitute an
"inventive concept," thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. Those
"additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) (citations omitted).
"[C]laims [that] merely require generic computer implementation[]
fail to transform [an] abstract idea into a patent-eligible invention." Id. (first
and fourth alterations in original) (quoting Alice, 134 S. Ct. at 2357).
5
Appeal 2016-008411
Application 13/925,035
Turning to the arguments as they pertain to claim 11, we need not
decide whether the act of web crawling constitutes an abstract idea. Web
crawlers aside, it is sufficient that the following steps constitute a method of
organizing human activity, and more particularly, a method relating to
tracking or organizing information (see MPEP 2106.04(a)(2) Part (II)):
receiving information including at least one of a brand identification,
a store identification, a product identification, or a product category
identification;
generating a favorites list that includes at least one of a brand
identification, a store identification, a product identification, or a product
category identification;
selecting, using the favorites list, a particular matchup of a sale deal
and a coupon deal from a plurality of matchups of sales deals and coupon
deals based on determining that the at least one of the brand identification,
the store identification, the product identification, or the product category
identification included in the favorites list corresponds to a portion of deal
data that pertains to the particular matchup; and
presenting the particular matchup in a personal circular, the personal
circular including at least one of a shopping list, a sale deal, a coupon deal,
the matchup, or the favorites list.
Appellants acknowledge in their Specification that it was traditional
for people to manually search sale deals and coupon deals and that people
sought to combine these deals when possible. Spec. i-f 3. Appellants'
invention entails using computer networks and web crawlers to automate
this manual activity so that the data gathering, sorting, matching, and
compiling would not be time consuming and tedious. Id.; see also Spec. i-f 7
6
Appeal 2016-008411
Application 13/925,035
("The subject matter described herein may allow a discount matching system
(also 'system') to generate combinations (also 'matchups') of deals offered
by retailers, manufacturers, suppliers, vendors of sale and coupon data etc.
based on determining that certain deals may be combined (or matched)").
Furthermore, Appellants' arguments do not persuade us that the
method of claim 11 requires anything more than implementation on generic
computer components. As such, we understand Appellants' invention to use
generic computers in their ordinary manner to improve a manual process-
not an improvement to the operation of a computer. Such a use of generic
computer components does not add significantly more to the abstract idea of
gathering, sorting, matching, and compiling information.
Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available
information in a particular field, stating those functions in
general terms, without limiting them to technical means for
performing the functions that are arguably an advance over
conventional computer and network technology. The claims,
defining a desirable information-based result and not limited to
inventive means of achieving the result, fail under § 101.
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016).
Accordingly, we sustain the rejection of claim 11 under 35 U.S.C.
§ 101 for being directed to patent-ineligible subject matter.
The Anticipation Rejection
The Examiner finds that Moss discloses every limitation of claim 11.
Final Act. 20-22. The Examiner specifically cites paragraph 269 of Moss
for teaching the limitation, "selecting, using the favorites list, a particular
matchup of a sale deal and a coupon deal from a plurality of matchups of
sales deals and coupon deals." Final Act. 21 (emphasis omitted).
7
Appeal 2016-008411
Application 13/925,035
Appellants argue that Moss does not disclose this selecting limitation:
[I]ndependent claim 11 recites, in part,
selecting, using the favorites list, a particular
matchup of a sale deal and a coupon deal from a
plurality of matchups of sales deals and coupon
deals based on determining that the at least one of
the brand identification, the store identification, the
product identification, or the product category
identification included in the favorites list
corresponds to a portion of deal data that pertains to
the particular matchup.
Moss, in its entirety, is silent with respect to a plurality of
matchups of sale deals and coupon deals. Moreover, Moss, in its
entirety, does not discuss "selecting, using the favorites list, a
particular match up of a sale deal and a coupon deal from a
plurality ofmatchups of sales deals and coupon deals," wherein
the selecting of the particular matchup is selected "based on
determining that the at least one of the brand identification, the
store identification, the product identification, or the product
category identification included in the favorites list corresponds
to a portion of deal data that pertains to the particular matchup,"
as claimed. Accordingly, Moss fails to disclose at least this claim
element of independent claim 11.
App. Br. 35-36.
In the Answer, the Examiner re-explains why Moss discloses selecting
a matchup using a favorites list. Ans. 10. We agree. See, e.g., Moss,
i-fi-1241, 269, 272; Fig. 26. But we understand Appellants to be arguing
something slightly different. We understand Appellants to be arguing that
claim 11 more particularly requires two steps: first creating a plurality of
matchups of sales deals and coupon deals without the aid of the favorites
list, and next using the favorites list to select a particular matchup from the
larger universe of matchups that was already created.
8
Appeal 2016-008411
Application 13/925,035
The Examiner does not explain how Moss teaches this more detailed
method step. Accordingly, we do not sustain the Examiner's rejection of
claim 11under35 U.S.C. § 102(a)(l).
New Rejection for Lacking Adequate Written Description
Section 112(a) of the patent laws reads, in part, as follows:
(a) IN GENERAL.-The specification shall contain a written
description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the same,
and shall set forth the best mode contemplated by the inventor of
carrying out his invention.
35 U.S.C. § 112(a) (pre-AIA § 112, if 1).
The test for determining compliance with the written description
requirement is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject
matter, rather than the presence or absence of literal support in
the specification for the claim language .... The content of the
drawings may also be considered in determining compliance
with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
As originally filed, claim 11 initially recited, in relevant part,
"identifying, using a favorites list, a matchup of a sale deal and a coupon
deal based on determining .... " Subsequent to filing the original
Specification, Appellants amended claim 11 to more narrowly recite
"selecting, identifying, using the favorites list, a particular matchup of a sale
deal and a coupon deal from a plurality of matchups of sales deals and
coupon deals based on determining .... " See Amendment and Response
Under 37 C.F.R. § 1.111 (filed June 15, 2015).
9
Appeal 2016-008411
Application 13/925,035
Appellants' originally filed Specification sets forth various example
embodiments of the invention. One of those example embodiments
discusses using a favorites list for performing matchups:
In some example embodiments, the system may provide a
user the choice to automatically receive sales, coupon, and
matchup alerts for the stores, brands, or products preferred by the
user. The user may provide the system the identifications of one
or more "favorites", such as brand names, categories of products,
or stores, about which the user is interested to receive sale and
discount notifications. In some example embodiments, the
system may periodically (e.g., hourly, daily, or weekly)
communicate recently announced sales, new coupons, and new
matchups to a user based on the list of favorites provided by the
user. Alternately, or additionally, the system may notify the user
of new sales, discounts, or matchups as soon as the system
identifies the new deals or matchups. This information, directed
to enhancing a user's shopping experiences and to saving the user
money, may be presented as part of a personal circular (also a
"pircular").
Spec. ,-r 27.
This portion of the Specification addressing the embodiment that uses
a favorites list does not additionally mention selecting a particular matchup
based on a plurality of matchups. The only portion of the Specification that
addresses this latter concept is the portion addressing a different
embodiment where matchups are based on receiving user-input queries:
In some example embodiments, upon receiving a query
(e.g., a search request from a user), the system may, based on the
query, identify and present the matchup as part of a user
interface of a search application. The interface may include at
least one of a visual representation of the sale deal and the
coupon deal, the sale deal description and the coupon deal
description, a matchup list container to store the matchup, a first
interface portion to initiate sharing the matchup, or a second
interface portion to initiate the transmittal of a communication
10
Appeal 2016-008411
Application 13/925,035
pertaining to the matchup. In certain example embodiments,
after receiving the query, the system may generate, based on
parsing the query, a query keyword token. Then, the system may
identifj; a matchup (from a plurality of matchups) based on
determining that the query keyword token corresponds to at least
one of a matchup brand (a sale deal brand or a coupon deal
brand), a product identification, a product category, or a product
subcategory included in the matchup, and based on determining
that the sale valid-to date and the coupon valid-to date have not
passed. Upon identifying the matchup, the system may display
the matchup in response to the query.
Spec. i-f 26 (emphasis added).
As such, the originally filed Specification does not reasonably convey
to the artisan that at time of the original filing, Appellants had possession of
the idea of using a favorites list to select a particular matchup from a
plurality of matchups of sales deals and coupon deals, as recited in amended
claim 11. Therefore, pursuant to our discretionary authority under 3 7 C.F .R.
§ 41.50(b), we newly reject claim 11under35 U.S.C. § 112(a) (or pre-AIA
§ 112, i-f 1) as lacking adequate written description.
CLAIMS 1, 3-5, 7-9, 22, and 23
Independent claim 1, reproduced below with added emphasis, is
illustrative of claims 3-5, 7-9, 22, and 23:
1. A method, comprising:
receiving, at a matching system, deal data that pertains to
a plurality of deals including a sale deal published in a circular
and a coupon deal from one or more crawlers;
generating a first plurality of key-value pairs pertaining to
the sale deal based on the deal data, each key-value pair of the
first plurality of key-value pairs pertaining to the sale deal
including an attribute that describes a characteristic of the sale
11
Appeal 2016-008411
Application 13/925,035
deal and a value of the attribute that describes the characteristic
of the sale deal;
generating a second plurality of key-value pairs pertaining
to the coupon deal based on the deal data, each key-value pair of
the second plurality of key-value pairs pertaining to the coupon
deal including an attribute that describes a characteristic of the
coupon deal and a value of the attribute that describes the
characteristic of the coupon deal;
identifj;ing a sale brand identification based on the first
plurality of key-value pairs pertaining to the sale deal and a
coupon brand identification based on the second plurality ofkey-
value pairs pertaining to the coupon deal; and
generating a match up of the sale deal and the coupon deal,
including a sale deal description and a coupon deal description,
based on
matching the sale brand identification and the
coupon brand identification,
detecting an indication of a sale deal type based on
the first plurality of key-value pairs and an indication of a
coupon deal type based on the second plurality of key-
value pairs, and
determining that a sale deal validity period and a
coupon validity deal period overlap and have not expired,
the sale deal validity period being calculated based on the
first plurality of key-value pairs, and the coupon deal
validity period being calculated based on the second
plurality of key-value pairs, one or more modules
incorporated into the matching system to specifically-
configure the matching system to perform at least the
receiving, generating, identifying, matching, detecting,
and determining, the one or more module implemented by
one or more hardware processors of the matching system.
App. Br. 39-40.
Appellants' Specification explains that a receiver module 202 receives
deal data that pertains to a plurality of deals, such as a sale deal or a coupon
12
Appeal 2016-008411
Application 13/925,035
deal. Spec. i-f 42. "The deal data received using a crawler 118 may be
unstructured (e.g., in the form of HTML text)." Id.; see also FIG. 3
(depicting unstructured deal data 302).
According to Appellants' Specification,
The identifier module 204 may identify, based on the received
unstructured deal data 302, a brand identification and may
determine that a first set of deal data (e.g., a certain portion of the
received unstructured deal data 302) corresponds to (or includes)
the brand identification. The identifier module may store the
brand identification as part of a key-value pair 312 in a brand
dictionary, for example, hosted by database 338. The identifier
module 204 may also store a part of or the entire first set of the
deal data as part of another key-value pair 314 in the database
338. The key value pairs 312 and 314 are stored in the database
33 8 as part of a document that is associated with (or pertains to)
the brand identification or the first set of deal data, or both.
Spec. i-f 64 (emphasis added); see also FIG. 3 (depicting structured deal data
310 including key-value pairs 312, 314).
Figure 4 of Appellants' Specification likewise depicts a series of steps
wherein deal data is received (step 402); sale brand identification and
coupon brand identification is identified "based on the deal data" (step 404);
and, subsequently, a first set of deal data corresponding to a sale deal, as
well as a second set of deal data corresponding to a coupon deal, is
determined "based on the deal data" (step 406). That is, Figure 4 also
indicates that the data of the key-value pairs corresponds to the sale brand
identification data and to the coupon brand identification data. But this
identification data is "based on" the unstructured deal data-not on the key-
value pairs.
Appellants' Specification states that the received deal data can be
structured, as opposed to unstructured. Spec. i-fi-1 42, 43. But this alternative
13
Appeal 2016-008411
Application 13/925,035
format of the deal data does not negate the fact that the identification data is
identified based on the received deal data, as opposed to a key-value pair.
The key-value pair is the structured resultant data, data of which the sale
brand identification data and the coupon brand identification data are a part.
Claim 1 recites, though, that the sale brand identification data, as well
as the coupon brand identification data is based on respective first and
second pluralities of key-value pairs. As such, this claim language
effectively requires that the identification data be identified based on itself-
the identified data.
Such an identification process is circular. One of ordinary skill would
not be reasonably apprised of how the identification data can be based on
respective pluralities of key-value pairs when the key-value pairs, in tum,
are made of portions of data after that data has been identified. As such, one
of ordinary skill in the art would not be reasonably apprised of the metes and
bounds of claim protection being sought. See 35 U.S.C. § 112(b) ("The
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the inventor or a joint
inventor regards as the invention").
Pursuant to our discretionary authority under 37 C.F .R. § 41.50(b ),
then, we newly reject claim 1 under 35 U.S.C. § 112(b) (or pre-AIA § 112,
i-f 2) as being indefinite. We likewise reject claims 3-5, 7-9, 22, and 23,
which depend from independent claim 1, on the same basis.
14
Appeal 2016-008411
Application 13/925,035
CLAIM 10
Independent claim 10 is reproduced below with added emphasis:
10. A method comprising:
receiving, at a matching system, deal data that pertains to
a plurality of deals including a sale deal published in a circular
and a coupon deal from one or more crawlers;
segmenting from the deal data,
based on identifying within the deal data a sale
brand identification and a sale deal type, a first set of data
that corresponds to the sale deal and,
based on identifying within the deal data a coupon
brand identification and a coupon deal type, a second set
of data that corresponds to the coupon deal;
determining,
based on the first set of data, a sale valid-from date,
a sale valid-to date, and a sale validity period that starts
at the sale valid-from date and ends at the sale valid-to
date, and
based on the second set of data, a coupon valid-
from date, a coupon valid-to date, and a coupon validity
period that starts at the coupon valid-from date and ends
at the coupon valid-to date; and
generating, using at least one computer processor, a
matchup of the sale deal and the coupon deal including a sale
deal description and a coupon deal description based on
matching the sale brand identification and the
coupon brand identification,
determining that the sale validity period and the
coupon validity period have a common time period, and
determining that the sale valid-to date and the
coupon valid-to date have not passed, one or more
modules incorporated into the matching system to
specifically[]configure the matching system to perform
the receiving, segmenting, determining, generating, and
15
Appeal 2016-008411
Application 13/925,035
matching, the one or more module implemented by one or
more hardware processors of the matching system.
App. Br. 41--42.
Claim 10 recites that the deal data pertains to sales deals and coupon
deals. Claim 10 also recites that first and second sets of data is identified
within and segmented from the sales deal data and coupon deal data. As
such, claim 10 indicates the first and second sets of data constitute the
identified, structured data of the key-value pairs, as explained further in the
analysis of claim 1.
Claim 10 then sets forth the step of "determining ... a sale valid-from
date, a sale valid-to date, and a sale validity period that starts at the sale
valid-from date and ends at the sale valid-to date," all of which data is
"based on the first set of data." Claim 10 also sets forth "determining ... a
coupon valid-from date, a coupon valid-to date, and a coupon validity period
that starts at the coupon valid-from date and ends at the coupon valid-to
date," all of which data is "based on the second set of data."
In summary, the determining step of claim 10 recites a circular
process of determining data based upon that same data after it has been
determined. As in the case of claim 1, one of ordinary skill would not be
reasonably apprised of how the determined data can be based on respective
first and second sets of data when these sets of data, in tum, are made of
portions of data after that data has been determined. As such, one of
ordinary skill in the art would not be reasonably apprised of the metes and
bounds of claim protection being sought.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b),
then, we newly reject claim 10 under 35 U.S.C. § 112(b) (or pre-AIA § 112,
i-f 2) as being indefinite.
16
Appeal 2016-008411
Application 13/925,035
CLAIM 12
Independent claim 12 is reproduced below with added emphasis:
12. A matching system comprising:
a computer memory including a database;
one or more hardware processors; and
one or more modules incorporated into the matching
system, the one or more modules implemented by the one or
more hardware processors of the matching system, the one or
more modules to specially-configure the matching system to:
receive deal data that pertains to a plurality of deals
including a sale deal published in a circular and a coupon deal
from one or more crawlers;
generate a first plurality of key-value pairs pertaining to
the sale deal based on the deal data, each key-value pair of the
first plurality of key-value pairs pertaining to the sale deal
including an attribute that describes a characteristic of the sale
deal and a value of the attribute that describes the characteristic
of the sale deal;
generate a second plurality of key-value pairs pertaining
to the coupon deal based on the deal data, each key-value pair of
the second plurality of key-value pairs pertaining to the coupon
deal including an attribute that describes a characteristic of the
coupon deal and a value of the attribute that describes the
characteristic of the coupon deal;
identify a sale brand identification based on the first
plurality of key-value pairs pertaining to the sale deal and a
coupon brand identification based on the second plurality ofkey-
value pairs pertaining to the coupon deal; and
generate a matchup of the sale deal and the coupon deal,
including a sale deal description and a coupon deal description,
based on
matching the sale brand identification and the
coupon brand identification,
17
Appeal 2016-008411
Application 13/925,035
detecting an indication of a sale deal type based on
the first plurality of key-value pairs and an indication of a
coupon deal type based on the second plurality of key-
value pairs, and
determining that a sale deal validity period and a
coupon validity deal period overlap and have not expired,
the sale deal validity period being calculated based on the
first plurality of key-value pairs, and the coupon deal
validity period being calculated based on the second
plurality of key-value pairs, one or more modules
incorporated into the matching system to
specifically[]configure the matching system to perform
the receiving, generating, identifying, matching, detecting,
and determining, the one or more module implemented by
one or more hardware processors of the matching system.
App. Br. 43--44.
The "identify" limitation of claim 12 sets forth a circular process of
identifying brand identification data based upon key-value pairs that, in tum,
are comprised of the brand identification data after it has been identified.
For reasons similar to those already explained in relation to the other
independent claims, we exercise our discretionary authority under 37 C.F.R.
§ 41.50(b), and we newly reject claim 12 under 35 U.S.C. § 112(b) (orpre-
AIA § 112, i-f 2) as being indefinite. We likewise reject claims 14--20, which
depend from independent claim 12, on the same basis.
CLAIM21
Claim 21 is reproduced below with added emphasis:
21. A non-transitory machine-readable medium comprising
instructions that, when incorporated as one or more modules into
a matching system, cause the matching system to perform
operations comprising:
18
Appeal 2016-008411
Application 13/925,035
receiving deal data that pertains to a plurality of deals
including a sale deal published in a circular and a coupon deal
from one or more crawlers;
generating a first plurality of key-value pairs pertaining to
the sale deal based on the deal data, each key-value pair of the
first plurality of key-value pairs pertaining to the sale deal
including an attribute that describes a characteristic of the sale
deal and a value of the attribute that describes the characteristic
of the sale deal;
generating a second plurality of key-value pairs pertaining
to the coupon deal based on the deal data, each key-value pair of
the second plurality of key-value pairs pertaining to the coupon
deal including an attribute that describes a characteristic of the
coupon deal and a value of the attribute that describes the
characteristic of the coupon deal;
identifj;ing a sale brand identification based on the first
plurality of key-value pairs pertaining to the sale deal and a
coupon brand identification based on the second plurality ofkey-
value pairs pertaining to the coupon deal; and
generating a match up of the sale deal and the coupon deal,
including a sale deal description and a coupon deal description,
based on
matching the sale brand identification and the
coupon brand identification,
detecting an indication of a sale deal type based on
the first plurality of key-value pairs and an indication of a
coupon deal type based on the second plurality of key-
value pairs, and
determining that a sale deal validity period and a
coupon validity deal period overlap and have not expired,
the sale deal validity period being calculated based on the
first plurality of key-value pairs, and the coupon deal
validity period being calculated based on the second
plurality of key-value pairs, one or more modules
incorporated into the matching system to specifically[]
configure the matching system to perform the receiving,
19
Appeal 2016-008411
Application 13/925,035
generating, identifying, matching, detecting, and
determining, the one or more module implemented by one
or more hardware processors of the matching system.
App. Br. 46-47.
The "identifying" limitation of claim 21 sets forth a circular process
of identifying brand identification data based upon respective pluralities of
key-value pairs that, in tum, are comprised of the brand identification data
after it has been identified.
For this reason and the reasons already explained in relation to the
other independent claims, we exercise our discretionary authority under
37 C.F.R. § 41.50(b), and we newly reject claim 21under35 U.S.C.
§ 112(b) (or pre-AIA § 112, i-f 2) as being indefinite.
CONCLUSIONS
We sustain the rejection of claim 11 as being directed to patent-
ineligible subject matter.
We do not sustain the rejection of claim 11 under 35 U.S.C.
§ 102(a)(l) as being anticipated by Moss.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
reject claim 11under35 U.S.C. § 112(a) (pre-AIA 35 U.S.C. § 112, i-f 1) as
lacking adequate written description support.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
reject claims 1, 3-10, 12, and 14--23 under 35 U.S.C. § 112(b) (pre-AIA
35 U.S.C. § 112, i-f 2) as being indefinite.
Because independent claims 1, 10, 12, and 21 are so indefinite that
"considerable speculation as to [the] meaning of the terms employed and
assumptions as to the scope of such claims" is needed, we do not address the
20
Appeal 2016-008411
Application 13/925,035
merits of the Examiner's rejection under 35 U.S.C. §§ 101, 102(b), 103. See
In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Examiner and
the Board were wrong in relying on what, at best, were speculative
assumptions as to the meaning of the claims and in basing a prior-art
rejection thereon). We therefore reverse these rejections proforma.
DECISION
The Examiner's decision rejecting claim 11 is affirmed.
The Examiner's decision rejecting claims 1, 3-10, 12, and 14--23 is
reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b ), we
reject claim 11under35 U.S.C. §§ 112(a) (pre-AIA 35 U.S.C. § 112, i-f 1),
and we reject claims 1, 3-10, 12, and 14--23 under 35 U.S.C. § 112(b) (pre-
AIA 35 U.S.C. § 112, i-f 2).
Rule 41.50(b) provides that "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Rule
41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
21
Appeal 2016-008411
Application 13/925,035
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
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)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
22