Ex Parte BENSON

Patent Trial and Appeal Board

Sep 12, 2018

13004724 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/004,724 01/11/2011
25883 7590 09/14/2018
MUNCK WILSON MANDALA L.L.P
P.O. Drawer 800889
DALLAS, TX 75380
FIRST NAMED INVENTOR
TODD BENSON
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.
TDBN-30,539 1051
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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):
admin@dalpat.com
eofficeaction@appcoll.com
IPdocketing@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD BENSON
Appeal2017-001479
Application 13/004, 724
Technology Center 3600
Before JUSTIN BUSCH, STACEY G. WHITE, and
MATTHEW J. McNEILL, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1 and 2, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellant's claimed invention is generally directed to providing
incentives for products and services to customers, including using customer
filters to narrow the products or services matched to customers, providing
the user with incentives based on the matches, allowing the user to select an
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Application 13/004,724
offer, and providing the user with a coupon or offer code. Spec. ,r,r 4, 7-9.
The claimed invention also provides alternate incentives if the initial
incentive was not redeemed. See Spec. ,r 16. Claim 1 is the only
independent claim and is reproduced below:
1. A method for incentivizing users of a system that are
potential customers to use services and products provided by a
retail provider at a retail provider location or service provider at
a service provider location through Point of Sale (POS) terminals
associated with the retail or service provider location based on
real-time inventory loading, wherein a potential customer is a
user that the retail or the service provider is able to interface with
through the system, the method comprising:
determining by the retail provider or service provider
associated with the retail or service provider location a level of
an incentive based on products and services provided by the retail
or service provider as a providing retail or service provider;
determining by the retail or service provider a time
window of the incentive determined by that retail or service
provider and associated with the products and services provided
by that retail or service provider;
determining by the retail or service provider a finite
quantity of the products and services associated with the
incentive to offer to designated ones of the potential customers
based upon at least one business condition of the retail or service
provider;
updating on a continuous basis through one of the POS
terminals associated with the retail or service providers a
database with the finite quantity of products and services
associated with the incentive and associated temporal aspects of
the determined and associated time window in order to provide a
continuously updated database of products and services for the
retail or service provider;
providing by each of the potential customers filtering
parameters of which one filtering parameter includes physical
distance of a mobile electronic device associated with each of the
potential customers at a customer location relative to the provider
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location within a predetermined proximity to the provider
location;
once the filtering parameters are in place, searching by
potential customers the continuously updated database of
products and services for the best matches and offers that will be
presented to the potential customers and automatically
determining a proximity of the potential customers to the
provider location to determine if the distance filtering parameter
has been matched, and then selecting from the potential
customers designated ones of the potential customers that match
the physical distance filtering parameter;
presenting to only the selected designated ones of the
potential customers a report of matching products and services
determined to match the filtering parameters to the selected
designated ones of the potential customers and also information
regarding the associated time window associated with the
matching products and services;
receiving from responding ones of the selected designated
ones of the potential customers a selection of matching products
and services associated with a stored incentive defined by the
retail or service provider;
sending by the retail or service provider an indication of
the selection by the potential customer of matching products and
services associated with the stored incentive to a POS associated
with the retail or service provider to register the potential
customer as desiring to use the products and services associated
with stored incentives;
sending a coupon associated with the selected products
and services associated with the stored incentive to the
responding ones of the selected designated ones of the potential
customers in the form of a bar code from the retail or service
provider to the mobile electronic device of each of the
responding ones of the selected designated ones of the potential
customers, which coupon is to be used within the associated time
window to be redeemed by the providing retail or service
provider;
using the coupon by less than all of the responding ones of
the selected designated ones of the potential customers to receive
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the products of services associated with the sent coupon sent by
the providing retail or service provider;
determining as non redeeming customers the number of
responding ones of the selected designated ones of the potential
customers that did not use the coupon; and
as a result of determining the non redeeming customers,
sending from the POS via an application running thereon
notifications of nonredemption to the non redeeming customers
in association with a different coupon for another service or
product of the providing retail or service provider.
REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 5---6.
Claims 1 and 2 stand rejected under 35 U.S.C. § 112 as being
indefinite for failing to particularly point out and distinctly claim the subject
matter. Final Act. 6-8.
Claim 1 stands rejected under 35 U.S.C. § 103 as obvious in view of
Altman (US 2008/0133336 Al; June 5, 2008), Koether (US 2008/0249840
Al; Oct. 9, 2008), and Liu (US 2008/0154714 Al; June 26, 2008). Final
Act. 8-19.
Claim 2 stands rejected under 35 U.S.C. § 103 as obvious in view of
Altman, Koether, Liu, and Turpin (US 2008/0189169 Al; Aug. 7, 2008).
Final Act. 19-20.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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THE§ 112 REJECTION
The Examiner rejects claims 1 and 2 as indefinite under 35 U.S.C.
§ 112. Appellant does not contest the Examiner's rejection and states only
that "the § 112 issues raised by the Examiner are minor issues that can be
addressed in a brief amendment following the conclusion of the present
appeal to place the application in condition for allowance." Accordingly, we
summarily affirm the Examiner's uncontested rejection of claims 1 and 2
under 35 U.S.C. § 112.
THE§ 101 REJECTION
The Examiner concludes claims 1 and 2 are directed to judicially
excepted subject matter. Final Act. 2--4; Ans. 12-17. Appellant argues
claims 1 and 2 are directed to eligible subject matter.
Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. There is no dispute that claims
1 and 2 are directed to one of these categories, a process.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that§ 101
"contains an important implicit exception" for laws of nature, natural
phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185
(1981 ). In Mayo and Alice, the Court set forth a two-step analytical
framework for evaluating patent-eligible subject matter: (1) "determine
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whether the claims at issue are directed to" a patent-ineligible concept, such
as an abstract idea; and, if so, (2) "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355;
Elec. Power, 830 F.3d at 1353. For an inventive concept, "more is required
than 'well-understood, routine, conventional activity already engaged in"'
by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80).
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner concludes
the concepts recited in the claims are both a fundamental economic practice
and a certain method of organizing human activity because the claims are
directed to providing coupons or advertisements based on user interest ( e.g.,
user location and user selection). Final Act. 3---6. The Examiner compares
the claims to a user signing up for a mailing list to receive location-based
advertisements or coupons and advertisers tracking the effectiveness of such
advertising campaigns when deciding how to target future campaigns. Final
Act. 3--4; Ans. 21.
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Appellant argues "[t]he idea, as set forth in the claims about the
process of providing incentives to consumers based on proximity, is directed
toward incentives as being a function of inventory loading." App. Br. 18.
Appellant then paraphrases various limitations and alleges such concepts are
"outside of any fundamental economic practice." App. Br. 18-19.
We initially note that claim 1 does not recite incentives "being a
function of inventory loading," as Appellant asserts. Rather, claim 1 recites
"determining ... a finite quantity of the products and services ... to offer
... based upon at least one business condition" and continuously updating
the finite quantity "in order to provide a continuously updated database of
products and services." Claim 1 makes no other reference to the recited
finite quantity, let alone basing an offered incentive on such a quantity.
Therefore, we disagree with Appellant that claim 1 is directed to providing
incentives as a function of inventory loading.
Appellant's other assertions relate to step 2 of the Alice analysis-i.e.,
whether any additionally recited limitations recite significantly more than
the abstract idea. To the extent Appellant asserts claim 1 is not directed to
providing incentives based on user interest or that such a concept is not an
abstract idea, we disagree.
Claim 1 recites determining various characteristics of an incentive to
offer potential customers (i.e., the level of the incentive, the time window of
the incentive, and the quantity of products of services and products
associated with the incentive, including continuously updating the quantity),
identifying potential incentives based on proximity, presenting incentive
offers that match a customer's proximity, receiving a customer selection of
an offered product or service, sending an indication of the customer's
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interest to a terminal to register the customer as interested and sending a
coupon to the customer, and sending an alternate coupon to customers who
indicated interest but did not use the initial coupon they received. Therefore,
we agree with the Examiner that claim 1 's character as a whole is providing
incentives to customers who have expressed interest because the focus of
claim 1 is on identifying incentives to offer customers, identifying customers
who may be interested in the incentives, and providing incentives to the
customers who expressed interest.
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, we may look to other decisions where similar concepts were
previously found abstract by the courts. See Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a definition
[for what an 'abstract idea' encompasses], then, the decisional mechanism
courts now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided."); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334--35 (Fed. Cir. 2016).
In that regard, targeting customers with particular incentives is a well-
known economic practice, and as such, an abstract idea. See Morsa v.
Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), ajf'd, 622 F.
App'x 915 (Fed. Cir. 2015) (concluding that claims directed to "targeting
advertisements to certain consumers" were no more than an abstract idea).
As noted by the court in Morsa, "targeted advertising is [a well-known]
concept, insofar as matching consumers with a given product or service 'has
been practiced as long as markets have been in operation."' Morsa, 77 F.
Supp. 3d at 1014 (quoting Tuxis Techs., LLC v. Amazon.com, Inc., 2014 WL
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4382446, at *5 (D. Del. 2014)). In other words, "[t]he concept of gathering
information about one's intended market and attempting to customize the
information then provided is as old as the saying, 'know your audience."'
Id. at 1013 (quoting OpenTV, Inc. v. Neiflix Inc., 76 F. Supp. 3d 886, 893
(N.D. Cal. 2014)).
The Federal Circuit has concluded similar concepts were directed to
abstract ideas. See Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016) ("tailoring of content based on information
about the user-such as where the user lives or what time of day the user
views the content-is an abstract idea that is as old as providing different
newspaper inserts for different neighborhoods.") ( citing Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015)); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712, 714--15
(Fed. Cir. 2014) ( concluding claims reciting steps receiving media content,
associating the content with an advertisement, providing the content for sale
on the Internet while restricting public access to the content, providing the
content to a consumer without charge in exchange for viewing an
advertisement, and allowing access to the content after viewing or
interacting with the advertisement were directed to the abstract idea of
"showing an advertisement before delivering free content").
To the extent Appellant contends claim 1 is not directed to an abstract
idea because it is a particular application of the abstract idea and does not
"tie up the entire idea," Reply Br. 2, Appellant provides insufficient detailed
argument or evidence explaining why the Examiner's conclusion is
incorrect. Moreover, although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
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patent eligibility .... Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the lviayo framework, as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("And [the fact] that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do[ es] not make them any less abstract.").
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. Claim 2 adds a particular detail regarding filtering
parameters and does not change the character of the claim. Therefore, we
tum to step 2 of the Alice analysis.
Step Two of Alice Framework
Next, we tum to step two of Alice to determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner concludes the additional elements, alone and in
combination, are simply instructions to implement the abstract idea on
computers and recite only generic computer structure performing generic
computing functions insufficient to transform the abstract idea into eligible
subject matter. Final Act. 4---6. In particular, the Examiner finds the concept
of providing alternate coupons when a user does not redeem an initially
provided coupon is part of the abstract idea because it is part of the
fundamental economic practice of providing incentives based on user
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interest. Ans. 21. The Examiner further finds the point of sale terminal
recited in claim 1 is simply generic computer structure and the claims
merely require implementing the abstract idea on such generic computing
components. Ans. 22.
Appellant paraphrases the limitations recited in claim 1 relating to
providing coupons, redeeming those coupons by only some users, and
providing new coupons to non-redeeming customers as being "outside of
any fundamental economic practice." App. Br. 18-19. Appellant also
contends claim 1 recites a "user must actually use the coupon in a
redemption operation, which is an operation that is in addition to the
operation of the computer that is recognized by the computer." App. Br. 19.
Appellant also concludes, without further explanation, that "[t]he claim as a
whole, and when considered as an ordered combination, thus provides a
particular application of an idea, while also linking the idea to, and
improving on the idea with, a system rooted in technology not found within
the idea itself."
Appellant's conclusory statements do not persuade us that the
Examiner erred. Appellant provides insufficient argument or evidence that
the additionally recited limitations demonstrate the system is rooted in
computer technology or is a particular application of an abstract idea.
Moreover, we agree with the Examiner, see Ans. 22, that the concept of
providing an alternate coupon to customers who did not redeem the first
coupon falls within the abstract idea of providing incentives or
advertisements based on user interest.
We do not agree with Appellant that claim 1 's additional limitations
add significantly more than the abstract idea. On the contrary, claim 1
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recites the routine use of conventional computer components to perform the
recited method steps that constitute the abstract idea. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible."); see also Intellectual Ventures
I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur
precedent is clear that merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea."); Alice, 134 S. Ct. at 2358-59.
Accordingly, the claimed limitations, considered both individually
and together, do not add significantly more to the abstract idea and,
therefore, do not render the subject matter patent eligible.
Summary
For the above reasons, Appellant has not persuaded us the Examiner
erred in rejecting claims 1 and 2 under 35 U.S.C. § 101 as being directed to
merely an abstract idea, rendering the claimed subject matter ineligible.
THE§ 103 REJECTION
The Examiner finds the combination of Altman, Koether, and Liu
teaches or suggests every limitation recited in claim 1 and provides a reason
for combining the asserted teachings. Final Act. 8-19. Of particular
relevance to our Decision, the Examiner finds Altman teaches or suggests
"updating on a continuous basis ... a database with the finite quantity of
products and services associated with the incentive," as recited in claim 1.
Final Act. 9 (citing Altman ,r,r 106-107, Fig. 16B). Among other arguments,
Appellant contends Altman fails to teach or suggest this limitation because
paragraphs 106 and 107 and Figure 16B of Altman merely disclose an
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interface that allows an advertiser to customize its campaign ads' particular
qualities or characteristic (e.g., name, type, location, target demographics),
but does not show anything related to a finite quantity of products or
services associated with the incentive, let alone updating such a quantity on
a continuous basis. App. Br. 20-22.
In response, the Examiner reiterates the finding that paragraphs 106
and 107 and Figure 16B disclose "that advertisers can edit information
associated with advertising campaigns" and "can create ads and update them
and make changes in real time." Ans. 23-24. The Examiner finds these
disclosures teach that an advertiser can update the finite quantity, pointing to
the exemplary discounts depicted in Figure 16B ( e.g., campaigns offering
50% off a Frappuccino or a free cookie with a coffee) and stating that the
advertiser could use the interface to update the coupon from one type of
discount to another. Ans. 24. The Examiner appears to equate a particular
coupon to the recited "finite quantity of products or services associated with
the incentive." See Ans. 24 ("The advertiser [could] update the coupon (e.g.
the finite qua[ n ]tity of the products or services) from" one offer to a coupon
with a different offer.).
On this record, Appellant has persuaded us the Examiner erred in
rejecting claim 1. More specifically, we agree with Appellant that updating
an offer (e.g., changing an offer from one coupon to another) does not teach
"updating ... the finite quantity of products and services associated with the
incentive," as recited in claim 1. We construe claim 1 's recitation of
updating a finite quantity to be a step of changing the inventory level (i.e.,
increasing or decreasing the number) of the products and services associated
with the incentive. We see nothing in Altman's cited sections related to
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updating a quantity of products and services and, therefore, agree with
Appellant that the Examiner has failed to demonstrate Altman teaches or
suggests the updating step.
For this reason, we are persuaded the Examiner erred in rejecting
independent claim 1 as obvious in view of Altman, Koether, and Liu. The
Examiner does not find Turpin, which is additionally cited in the rejection of
claim 2, cures this deficiency. Accordingly, for the same reason, we are
persuaded the Examiner erred in rejecting claim 2, which depends from
claim 1 and incorporates the updating step, as obvious in view of Altman,
Koether, Liu, and Turpin.
DECISION
We affirm the Examiner's decision to reject claims 1 and 2 under
35 U.S.C. §§ 101 and 112.
We reverse the Examiner's decision to reject claims 1 and 2 under
35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
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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