Ex Parte Black et al

Patent Trial and Appeal Board

Jun 15, 2018

11492012 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/492,012 07/24/2006 Andre B. Black
112978 7590 06/19/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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.
CAM920115008US1_8150-0148 5237
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE B. BLACK, DAVID F. CHEUNG,
RUBY KENNEDY, YUCHUN LEE, and
PATRICK MARTIN
Appeal2016-004794
Application 11/492,012 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andre B. Black, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1-31. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify IBM Corporation as the real party in interest. App.
Br. 1.
Appeal2016-004794
Application 11/492,012
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for promotion management
compnsmg:
receiving, by one or more computers, a promotion template,
having a promotion code format specifying:
an immutable field portion; and
a mutable field portion to be populated with information
uniquely identifying a promotion instance that is generated
from the promotion template;
producing, by the one or more computers, the promotion
instance from the promotion template; and
generating, based on the promotion code format, a promotion
code for the promotion instance by:
populating by the one or more computers the mutable
field portion with information uniquely identifying the
promotion instance.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bibelnieks
Liu
US 2003/0208402 Al
US 2005/0075926 Al
The following rejections are before us for review:
Nov. 6, 2003
Apr. 7, 2005
1. Claims 1-31 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
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2. Claims 1, 3-11, 13-16, 18-26 and 28-31 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Liu.
3. Claims 2, 12, 17 and 27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Liu and Bibelnieks.
ISSUES
Did the Examiner err in rejecting claims 1-31 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 3-11, 13-6, 18-26 and
28-31 under 35 U.S.C. § 102(b) as being anticipated by Liu?
Did the Examiner err in rejecting claims 2, 12, 17 and 27 under 35
U.S.C. § 103(a) as being unpatentable over Liu and Bibelnieks?
ANALYSIS
The rejection of claims 1-31 under 35 U.S.C. §1 OJ as being directed to non-
statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 3-8.
We select claim 1 as the representative claim for this group, and the
remaining claims 2-31 stand or fall with claim 1. 37 C.F.R. §
4I.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
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According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that "the claims are directed
towards the concept of [serving advertisements in a virtual world]. [serving
online advertisements is considered a fundamental economic practice and is
simply a series of mathematical formulations in a computer application
installed on a generically recited processor], therefore the claims are drawn
to an abstract idea." Final Rej. 2-3.
The Appellants contend that "the Examiner mischaracterized the
invention to which the claims are directed." App. Br. 12. However, the
Appellants do not clearly explain what the claims are directed to.
In the Brief, the Appellants argue that "the claims involve the creation
of a web page and/or website, which is necessarily performed with a
computer." App. Br. 13. But as the Appellants themselves later concede "the
claims [do] not recite 'a website."' Reply Br. 2.
In the Reply Brief, the Appellants argue that
[w]hile the Examiner asserts that "[t]he claims as a whole
disclose only the abstract idea of providing advertising in
promotions," the claims do not even recite "providing advertising in
promotions." Instead, the claims are directed to generating a
promotion instance a promotion and to generating a promotion code
for the promotion instance. Thus, the Examiner has not accurately
characterized the claimed invention, as a whole. Both the promotion
code and promotion template are unnecessary for "providing
advertising," and thus, these aspects of the claimed invention are
substantially more than the alleged abstract idea.
Reply Br. 4.
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It is true that claim 1 does not recite "providing advertising in
promotions." Rather, it is more broadly "promotion management" - as
recited in the preamble. Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) ("we see no
error here in the district court citing to the preamble in its review of whether
the claims are directed to an abstract idea.")
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016), quoted in Apple, Inc. v. Ameranth, Inc., 7842 F.3d 1229, 1241
(Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which the Specification describes as "challenges in managing
promotions [that] can arise out of the various situations in which promotions
are used." 1 :3--4. The inventors appear to solve the problem by providing for
techniques for promotion management having various "aspects." One of
those aspects, relevant to what is claimed, comprises "producing a
promotion instance from a promotion template [ and] setting one or more
attribute fields of the promotion instance." 1: 13-14.
In light of Specification's description of the problem and solution, the
advance over the prior art by the claimed invention is, generally-speaking,
managing promotions. In more specific terms, one of the advances the
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Specification describes that is relevant to what is claimed lies in a technique
whereby a promotion instance is produced from a promotion template and
one or more attribute fields of the promotion instance are set. This is the
heart of the invention as claimed and, as such, claim 1 is properly
characterized as being directed to that. Cf Intellectual Ventures I LLC v.
Erie Indemnity Company, 850 F.3d 1315, 1328 (Fed. Cir. 2017)("the heart
of the claimed invention lies in creating and using an index to search for and
retrieve data ... an abstract concept.")
In any case, whether the concept to which claim 1 is directed to is
characterized generally as a technique for managing promotions or
specifically as a technique for managing promotions whereby a promotion
instance is produced from a promotion template and one or more attribute
fields of the promotion instance are set, in either case, the concept is an
abstract idea, differing only in their level of abstraction, the latter being the
less abstract one.
The Appellants argue, alternatively, that "the claims are directed to
generating a promotion instance a promotion [sic] and to generating a
promotion code for the promotion instance." Reply Br. 4 ( emphasis added).
But even if we were to accept this alternative wording of the concept to
which claim 1 is directed to, the thusly-worded concept is still an abstract
one. Its character is no less abstract than the concepts articulated above.
The Appellants challenge the Examiner's determination that the
concept to which claim 1 is directed to - as the Examiner characterized it
- is an abstract idea. (Presumably, the concepts we have laid out above, as
well as the one the Appellants have articulated, are subject to the same
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challenge.) According to the Appellants, the concept is not a fundamental
economic practice (App. Br. 14--15), idea of itself (App. Br. 15) or
mathematic relationships/formulas (App. Br. 15-16).
"However, a search for a single test or definition in the decided cases
concerning § 101 from this court, and indeed from the Supreme Court,
reveals that at present there is no such single, succinct, usable definition or
test. ... instead of a definition, 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." Amdocs (Israel) Limited v. Openet Telecom, Inc. 841 F.3d 1288,
1294 (Fed. Cir. 2016), cert. denied, Openet Telecom, Inc. v. Amdocs (Israel)
Ltd., 138 S. Ct. 469, 470 (U.S. 2017). In that regard, we see little difference
between the various concepts claim 1 is said to be directed to and the
"method of 1) extracting data from hard copy documents using an automated
digitizing unit such as a scanner, 2) recognizing specific information from
the extracted data, and 3) storing that information in a memory" involving
the use of templates that was at issue in Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1345
(Fed. Cir. 2014), cert denied, 136 S. Ct. 119 (2015) (cf e.g., claim 1 of US
5,768,416).
For the foregoing reasons, we are unpersuaded that the Examiner's
step one determination was in error.
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
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concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that
[t ]he claims do not recite limitations that are "significantly more" than
the abstract idea because the claims do not recite an improvement to
another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular
technological environment. [It should be noted the limitations of the
current claims are performed by the generically recited processor].
The limitations are merely instructions to implement the abstract idea
on a computer and require no more than a generic computer to
perform generic computer functions that are well-understood, routine
and conventional activities previously known to the industry.
Final Rej. 3.
The Appellants do not challenge the Examiner's determination under
step two.
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, because representative claim 1
and claims 2-31, which stand or fall with claim 1, are directed to an abstract
idea and there is no dispute over whether they otherwise present an
"inventive concept," we sustain the Examiner's determination that they are
directed to ineligible subject matter under 35 U.S.C. § 101. Cf
LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997 (Fed. Cir. 2016)
("We have considered all of Lending Tree's remaining arguments and have
found them unpersuasive. Accordingly, because the asserted claims of the
patents in suit are directed to an abstract idea and do not present an
'inventive concept,' we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101.").
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The rejection is sustained.
The rejection of claims 1, 3-11, 13-16, 18-26 and 28-31 under 35 U.S.C.
§102(b) as being anticipated by Liu.
The issue is whether Liu describes, expressly or inherently, a
"promotion code" "generat[ed], based on [a] promotion code format." Claim
1. The same limitation appears in the other independent claims 16 and 31.
The Examiner relies on "(figure 6a and para 97-101, example given as
offer tracking code)" (Final Rej. 4) as evidence that said promotion code is
described in Liu.
We have reviewed said disclosure. All we could find there is "Offer
Tracking Code-A unique number to identify the promotion." Para. 100. We
do not see there any discussion about a "promotion code" "generat[ ed],
based on [a] promotion code format" as that phrase is used in the claims.
Accordingly, the rejection is not sustained because a preponderance of
the evidence does not support the finding that the independent claims read
on Liu.
The rejection of claims 2, 12, 17 and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Liu and Bibelnieks.
This rejection relies on the finding that Liu describes, expressly or
inherently, a "promotion code" "generat[ed], based on [a] promotion code
format" as claimed. Because that finding is not supported by a
preponderance of the evidence, a prima facie case of obviousness for
dependent claims 2, 12, 17 and 27 has not been made out in the first
instance.
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CONCLUSIONS
The rejection of claims 1-31 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1, 3-11, 13-16, 18-26 and 28-31 under 35
U.S.C. §102(b) as being anticipated by Liu is reversed.
The rejection of claims 2, 12, 17 and 27 under 35 U.S.C. § 103(a) as
being unpatentable over Liu and Bibelnieks is reversed.
DECISION
The decision of the Examiner to reject claims 1-31 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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