Ex Parte Baughman et al

Patent Trial and Appeal Board

Jun 13, 2017

13743738 (P.T.A.B. Jun. 13, 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.
13/743,738 01/17/2013 Aaron K. Baughman CHA920110018US2 9992
45095 7590 06/15/2017
HOFFMAN WARNTOK T T C EXAMINER
540 Broadway
4th Floor
ROSEN, NICHOLAS D
ALBANY, NY 12207 ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON K. BAUGHMAN, BARRY M. GRAHAM,
RICK A. HAMILTON II, and BRIAN M. CONNELL
Appeal 2016-003761
Application 13/743,738
Technology Center 3600
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1,4, and 8—19 (see Ans. 3). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to making a recommendation
to a purchaser and/or member of a social network. See Abstract.
Appeal 2016-003761
Application 13/743,738
Claim 1 is illustrative:
1. A method of making a recommendation to a purchaser,
the method comprising:
determining a plurality of features of a first product
selected by a purchaser;
prioritizing the plurality of features of the first product
by:
comparing at least one of the plurality of features
to at least one feature of at least one previously-purchased
product;
calculating a correlation value for the compared
features; and
ranking the correlation values,
wherein a relatively low correlation value is
deemed indicative of an anomalous feature having purchasing
significance and is given a higher rank than a relatively high
correlation value;
broadcasting the plurality of features to a social network
to which the purchaser belongs using a computing device; and
making at least one recommendation to the purchaser, the
at least one recommendation being selected from a group consisting
of: a second product sharing at least one feature of the first product
and a social network connection determined to have purchased
another product sharing at least one feature of the first product.
Appellants appeal the following rejection:
Claims 1, 4, and 8—19 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (see Final Act.
2-3).
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, 1075 (BPAI 2010)
(precedential).
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Application 13/743,738
ANALYSIS
35 U.S.C. § 101: Claims 1, 4, and 8—19
With respect to independent method claim 1, and similarly, computer-
readable storage medium claim 11 and system claims 14 and 15, the
Examiner finds that these claims are directed to an abstract idea of “making
a recommendation to a purchaser” (Final Act. 2). The Examiner further
finds that “the claims as a whole do not amount to significantly more than
the abstract idea itself. . . because the claims do not amount to an
improvement to another technology or technical field, or to the functioning
of a computer itself’ {id. at 2—3).
Appellants contend because the Examiner also finds that the claims
are novel and non-obvious “the Examiner’s rejection under 35 USC 101 is
completely undermined” (App. Br. 4) and “the pending claims
independently satisfy the ‘significantly more’ standard and need not in
addition demonstrate the improvements the Examiner alleges” {id. at 5).
Appellants further contend “that something that is both novel and non-
obvious in the art necessarily is not ‘well-understood, routine and
conventional in the field’” (App. Br. 5; see also Reply Br. 2—3).
We disagree with Appellants’ contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Ans. 3—10). As such, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in the Answer. Our
discussions here will be limited to the following points of emphasis.
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
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Application 13/743,738
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLSBankInt'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 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., 132 S. Ct. 1289, 1293-94
(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.”’ Id. at
1294 (citation omitted).
In Alice, the 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, 132 S.
Ct. at 1298, 1297).
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
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Application 13/743,738
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant post-solution
activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that ‘“[sjimply
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, 132 S. Ct. at 1300, 1297, 1294).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 recites seven steps: (a) determining; (b) prioritizing; (c)
comparing; (d) calculating; (e) ranking; (f) broadcasting; and (g) making.
Each of these steps involve information. A first type of information is
determined and prioritized. The first type of information is compared to a
second type of information and a third information is calculated based on the
comparison. The third information is ranked. The first type of information
is broadcast using a computing device and a fourth type of information is
made as a recommendation. This is the essence of the information
processing and making a recommendation to a purchaser.
On the record before us, Appellants do not dispute that the claims are
directed to an abstract idea, but rather instead direct our attention to Alice’s
second test, i.e., whether the claims amount to significantly more (see App.
Br. 5). Thus, there is no controversy in the first Alice step.
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Application 13/743,738
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
To establish a prima facie case, the Examiner must next identify all of
the additional elements in each claim and explain why these elements,
individually or collectively, do not add significantly more than the abstract
idea. Here, the Examiner finds that “the present application [is] properly
rejected as patent-ineligible under 35 U.S.C. 101 even if non-obvious over
the prior art of record” (Ans. 6—7), and that “a human being could carry out
all the steps of claim 1 except ‘broadcasting . . . using a computing device’
without any use of technology” (Ans. 7). The Examiner further finds that
“[a]n ordinary computer could be programmed so as to be adapted to make a
recommendation . . . including the step of ‘ranking . . (id.) and that the
broadcasting step “can be viewed as extra-solution activity” (id. at 8). We
agree with the Examiner.
“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].”’ Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. at 610-11
(citation and internal quotation marks omitted). The recitations in claim 1
pertaining to conventional recommendations steps are analogous to the
recitation of a conventional “computer” discussed in Alice.
Here, Appellants improperly rely upon the fact that the Examiner has
not made any rejections under §§ 102 or 103 and contend “that something
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Application 13/743,738
that is both novel and non-obvious in the art necessarily is not ‘well-
understood, routine and conventional in the field’” (App. Br. 5; see also
Reply Br. 2—3). However, this is not the test for determining patent-eligible
subject matter under § 101, as the Supreme Court has set forth in Alice the
proper two step framework for distinguishing patents that claim abstract
ideas. Appellants’ contention supra that the Examiner has found the
invention novel and non-obvious, i.e., has found no prior art references that
teach/suggest all of the claimed features, does not apprise us of error in the
rejection under 35 U.S.C. § 101. An abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “‘useful clue’” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70, 93 S. Ct. 253).
Here, Appellants do not rebut that method claim 1 and its
corresponding medium and system claims 11, 14, and 15 are neither
sufficiently “tied to a particular machine or apparatus” nor involved in any
type of transformation of any particular article.1 Claim 1 does not specify
any particular entity that performs the recited “determining,” “prioritizing,”
“comparing,” “calculating,” “ranking,” and “making” steps, thus, such steps
1 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
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Application 13/743,738
could be practiced mentally. Adding a mental step cannot patentably
transform an otherwise abstract idea into an inventive concept. In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes —or
processes of human thinking-standing alone are not patentable even if they
have practical application”). As for the broadcasting step, we agree with the
Examiner that claim 1 simply incorporates a generic component, i.e., a
computing device, into the method/system to perform the abstract concept of
broadcasting the plurality of features to a social network.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (claims reciting “generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer” not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted)).
Limiting such an abstract concept of “making a recommendation to a
purchaser” to generic components, such as a computing device, does not
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Application 13/743,738
make the abstract concept patent-eligible under 35 U.S.C. § 101. Because
Appellants’ claims 1, 11, 14, 15 are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s rejection of these
claims as well as respective dependent claims 2, 4, 12, 13, and 16—19 under
35 U.S.C. § 101 as being directed to non-statutory subject matter in light of
Alice and its progeny.
Appellants’ contentions regarding the other independent claims are
unpersuasive for similar reasons. Like claim 1, claims 11, 14, and 15 are
similarly non-statutory because they are directed to the judicial exception of
abstract ideas. The Appellants have not separately argued the eligibility of
any of the dependent claims, which are similarly directed to various
information gathering and broadcasting schemes.
For the foregoing reasons, Appellants’ contentions are unpersuasive
as to error in the rejection. Under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s § 101 of claims 1, 4, and 8—19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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