Ex Parte Boal

Patent Trial and Appeal Board

Sep 24, 2018

13831716 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/831,716 03/15/2013
124871 7590 09/26/2018
Hickman Palermo Becker Bingham/ Quotient
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
FIRST NAMED INVENTOR
Steven R. Boal
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.
60202-0279 3783
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN R. BOAT
Appeal2017-009284
Application 13/831,716 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 10, 12-15, 17-19, and 21-23. We
have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies "Quotient Technology Inc. (NYSE:QUOT)" as the real
party in interest. (App. Br. 1.)
Appeal2017-009284
Application 13/831,716
THE INVENTION
Appellant claims the "[ e ]mbodiments relate generally to coupon
distribution, and, more specifically, to techniques for distributing coupons in
association with electronic receipts." (Spec. ,r 2.)
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer system comprising:
a transaction aggregator component comprising a first set
of one or more computer devices;
wherein the transaction aggregator component provides a
transaction application programming interface configured to
receive, over a first set of one or more network interfaces,
transaction data from a plurality of different retail data centers;
a user database storing records describing user entities;
a transaction database storing records describing the
transaction data;
wherein the transaction data comprises transaction logs
from stores that report to the plurality of different retail data
centers, each transaction log of the transaction data recording
details of a different transaction at a corresponding one of the
stores;
wherein the transaction aggregator component is
configured to associate and to store particular transaction logs
with particular user entities in the user database, normalize
disparate item identifiers in the transaction logs to canonical
item identifiers, and update the transaction database based on
the transaction data received from the plurality of different
retail data centers;
a receipt server comprising a second set of one or more
computer devices configured to send receipt data to customer
devices over a wide area network coupled to a second set of one
or more network interfaces, based on transaction logs;
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an offer server comprising a third set of one or more
computer devices;
wherein the offer server exposes an offer
recommendation application programming interface that is
configured to receive requests to distribute one or more offers;
wherein the offer recommendation application
programming interface is further configured to receive requests
for the one or more offers over a third set of one or more
network interfaces;
wherein the offer server is configured to match a
particular request of the requests to a particular user entity of
the user entities, based on context information in and/or
associated with the request;
wherein the offer server is configured to identify one or
more offers responsive to the request, based at least partially on
identifying particular transaction data in the transaction
database, from the plurality of different retail data centers, that
is associated with the particular user entity;
wherein the offer server is configured to provide
information describing the identified one or more offers in
response to the request.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Robinson
Perry
US 2004/0078282 Al
US 2007 /0073580 Al
Apr. 22, 2004
Mar. 29, 2007
The following rejections are before us for review. 2
Claims 1, 10, 12-15, 17-19, and 21-23 are rejected under 35 U.S.C.
2 The Examiner has withdrawn the rejection of claims 14 and 19 under
35 U.S.C. § 112, second paragraph. (Answer 2.)
3
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§ 101 because the claimed invention is directed to non-statutory subject
matter. (Final Act. 3-7.)
Claims 1, 10, 12-15, 17-19, and 21-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Robinson and in further view of Perry.
(Final Act. 8-19.)
Claims 1, 10, 12-15, 17-19, and 21-23 are provisionally rejected on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1 and 10-23 of copending Application Numbers:
13/944,514; 13/944,549; 13/944,543; 13/944,537 and 13/944,514. 3 (Final
Act. 20-22.)
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 3-7 of the
Final Action pertaining only to the 35 U.S.C. § 101 Rejection.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 10, 12-15, 17-19, and 21-
23 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First ...
3 Appellants state they "have deferred consideration of the issue, or
submission of a terminal disclaimer, until allowable subject matter is
indicated and until at least one of the cited applications is granted so that an
actual issue exists." Appeal Br. 6. Accordingly, we summarily affirm the
Examiner's provisional double patenting rejection.
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determine whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, we then ask, "[ w ]hat
else is there in the claims before us?" ... To answer that
question ... consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... [The Court]
described step two of this analysis as 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 concept]
itself."
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a finding as to what the claims were
directed to, we determine that the plain language of the claims and the
Specification provide enough information to inform one as to what they are
directed.
The steps in representative claim 1 result in4 :
identify[ing] one or more offers responsive to the request, based at
least partially on identifying particular transaction data in the transaction
database, from the plurality of different retail data centers, that is associated
with the particular user entity.
4 Our analysis is made based on considering the claims as a whole, but for
purposes of this discussion, we note the result phrase of the independent
claim to point to what the claims are directed to.
5
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The Examiner found that the claims are "are similar to the concept of
'comparing new and stored information and using rules to identify [medical]
options"' that a court has determined is an example of abstract idea in
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. App'x 950
(Fed. Cir. 2014). (Final Act. 5.) The Examiner further found that, "the
claims as a whole are directed to targeted advertising to specific users which
is a 'fundamental economic practice."' (Final Act. 5.)
The Specification states:
In general, a coupon is a certificate or other document that
entitles its holder to accept an offer described or referenced by
the coupon. The offer, also subsequently referred to as the
"coupon offer," may be any type of offer, but typically is an
offer by the coupon provider to provide a customer with one or
more goods or services at a particular price or discount, or to
provide the customer with a gift in exchange for the
performance of an act, such as purchasing a good or service. A
coupon often takes a "hard copy" form, such as a paper
certificate, with printed images and/or text describing terms of
the offer. The process of the customer accepting a coupon offer
by presenting, referencing, or otherwise providing a coupon
while purchasing, contracting, or otherwise transacting with
another party is "redeeming" the coupon. For example, a
customer may redeem a hard copy of a coupon by handing the
copy to a clerk during a purchase at a retail store. The clerk
may then provide the customer with the offered discounted
price or gift.
(Spec. ,r 4.) It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are
directed to an abstract idea. Based on the Examiner's findings and the
Specification, we find the claims are directed to matching promotional offers
to a customer's transaction history which is a fundamental economic
principle because meeting a customer's likings is a basic tenant of sales.
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The patent-ineligible end of the spectrum includes fundamental economic
practices. Alice, 134 S. Ct. at 2357.
Also, we also agree with the Examiner (Final Act. 4--5) that many of
the steps in representative claim 1, such as, "associate and to store particular
transaction logs with particular user entities", "normalize disparate item
identifiers in the transaction logs to canonical item identifiers" and "match a
particular request of the requests to a particular user entity of the user
entities, based on context information in and/ or associated with the request"
constitute "analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to
certain arrangements involving contractual relations are directed to abstract
ideas). Thus, matching promotional offers to a customer's transaction
history is an "abstract idea" beyond the scope of§ 101.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement, as discussed in Alice, and the concept of
matching promotional offers to a customer's transaction history, at issue
here. Both are squarely within the realm of "abstract ideas" as the Court has
used that term. That the claims do not preempt all forms of the abstraction
or may be limited to transaction histories, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ( citations omitted) ("And that the claims do not preempt all
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price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission,
calculation and linkage, and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation").
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen [ t ]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (internal citations omitted).
Instead, "the relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 134 S. Ct. at 2359. They do not.
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Taking the claim elements individually, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query, computation and
retrieval----one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the trading industry. See Elec. Power Grp., 830 F.3d
1354; see also In re Katz Interactive Call Processing Patent Litig, 639 F.3d
1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of
the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be
achieved by any general purpose computer without special programming").
In short, each step does no more than require a generic computer to perform
generic computer functions. As to the data operated upon, "even if a process
of collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018) (internal citation omitted).
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/ display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
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generation, display, and transmission was abstract); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. (See, e.g., Spec.
i-fi-f22-30, 80-94, 231, (paragraph 231 describing, "Hardware processor 904
may be, for example, a general purpose microprocessor;" paragraph 82
describing, "retail server 540, coupon server 510, or any other server
described herein may include or be coupled to a variety of different
components for implementing the techniques described herein"; paragraph
8 8 disclosing, "coupon server 510 is a general-purpose computer that
comprises one or more processors, and memory, mass storage device, or
other non-transitory computer-readable storage media storing instructions
which, when loaded and executed, cause the one or more processors to
perform the operations that are further described herein.") Thus, the claims
at issue amount to nothing significantly more than instructions to apply the
abstract idea of information access and computation using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
We have reviewed all the arguments (Appeal Br. 7-26; Reply Br. 1-
8) Appellant has submitted concerning the patent eligibility of the claims
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before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments which
have been made. But, for purposes of completeness, we will address various
specific contentions in order to make individual rebuttals of same.
Appellant argues, "The Office Action Fails to State a Prima Facie
Case of Ineligibility Under ... the Office's Own Guidance." (Appeal Br.
8.)
We disagree with Appellant. We understand the Examiner, through
citation to the July 2015 Update (Final Act. 6; Answer 5), to rely on prior
court decisions finding that certain computer functions are well-understood,
routine, and conventional functions. These prior court decisions adequately
support this finding to satisfy the requirement to set forth a prima facie case
ofunpatentability under 35 U.S.C. § 101. The Examiner's analysis was,
thus, sufficient to put Appellant on notice of the basis for the ground of
rejection and to allow Appellant to recognize and seek to counter the
grounds of rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
In this regard too, there is no requirement that Examiner must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., July 2015 Update: Subject
Matter Eligibility, USPTO (2014), https://www.uspto.gov/sites/default/files
/documents/ieg-july-2015-update.pdf ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings." (Emphasis
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added) (footnote omitted)). We agree that evidence may be helpful in
certain situations where, for instance, facts are in dispute. 5 But, it is not
always necessary. Based on the above analysis set forth by the Examiner
(Final Act. 3-7), we are unpersuaded it is necessary in this case.
As to Appellant's argument that
SmartGene cannot be to this case because the facts do not
uniquely match SmartGene. The Federal Circuit panel stated
unequivocally that the abstract idea there was limited to the
circumstances of the case, "in which every step is a familiar
part of the conscious process that doctors can and do
perform in their heads." Slip op. at 9. The court further
clarified that "Whatever the boundaries of the 'abstract ideas'
category, the claim at issue here involves a mental process
excluded from section 101." Id. Thus SmartGene is limited to
cases where the claimed process consists of mental steps.
(Appeal Br. 10.)
We disagree with Appellant. Whether a claim is found patent
ineligible based on one of either mental activity or abstraction is not
dispositive because in both cases the ultimate result is patent ineligibility.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
Cir. 2011). In fact, the Federal Circuit confirmed that Appellant's argument
is a distinction without a difference stating that it "recognized that 'mental
processes' and 'abstract ideas' ( whatever may be the precise definition and
relation of those concepts) are excluded from section 101." SmartGene, 555
Fed. App'x at 955.
5 See, e.g., MPEP § 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." (Citations omitted)).
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Appellant next argues, "' [ t ]here is no evidence of record that 'targeted
advertising to specific users' is the kind of 'fundamental economic practice'
involved in Alice, Bilski, buySAFE or Ultramercial and the Office Action
asserts no particularized facts to establish similarity." (Appeal Br. 11.)
We disagree with Appellant's characterization of the holding in Alice.
The test which Alice presented is not whether all claims thereafter, need to
be directed to "intermediated settlement", but rather whether the abstraction
is "'a fundamental economic practice long prevalent in our system of
commerce."' Alice, 134 S. Ct. at 2355-56. We find that matching seller
preferences to a promotion is, likewise, a fundamental economic practice for
the reason given supra. The Specification explicitly describes a sales driven
mission that the technical field involves "coupon distribution" (Spec. ,r 2)
and further describes that,
a coupon is a certificate or other document that entitles its
holder to accept an offer described or referenced by the coupon.
The offer, also subsequently referred to as the "coupon offer,"
may be any type of offer, but typically is an offer by the coupon
provider to provide a customer with one or more goods or
services at a particular price or discount, or to provide the
customer with a gift in exchange for the performance of an act,
such as purchasing a good or service.
(Spec ,r 4.)
Appellant argues, "if the claims recite limitations that are not generic
computer functions and go beyond the Alleged Abstract Idea, then the
claims cannot be rejected as lacking 'significantly more' than the abstract
idea." (Appeal Br. 20.)
As found supra, we fail to find anything in the claims before us which
shows that the claims recite limitations that are not generic computer
functions. A general purpose computer programmed to perform
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conventional functions does not amount to an inventive concept such that the
claims are significantly more than the abstract idea. See EON Corp. IP
Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015).
Appellant's Specification does not support a computer system which is
employed to effect the claimed ratings, as anything more than a generic
computer. See, e.g., Spec. ,r,r 7 4, 80-84, 90 (paragraph 7 4 describing
generically "[t]erminal 542 is a computing device operated by a retailer for
conducting in-store (i.e. 'point of sale' or 'brick and mortar')
transactions.").) Claim 1 recites at best only generically, computers with
components. The recitation of a practical application for an abstract idea is
not sufficient to transform the abstract idea into a patent-eligible invention.
See CyberSource, 654 F.3d at 1371 ("The Court [in Parker v. Flook, 437
U.S. 584 (1978)] rejected the notion that the recitation of a practical
application for the calculation could alone make the invention patentable.").
A claim for a new abstract idea is still an abstract idea. See Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Also, "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
On pages 21 through 25, Appellant sets forth a list limitations from
independent claims 1, 10, and 15 alleging that the "recitations are not
generic." (Appeal Br. 21, 23, 24.) Appellant maintains that, "[t]hese
limitations per se are recited specifically rather than generically, and
therefore qualify as 'significantly more'." (Appeal Br. 25.)
We disagree with Appellant because Appellant's recitations merely
comingle abstraction idea steps with generic computer processing which
cannot effect patent eligibility from an otherwise mental process. "[T]he
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mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Stating an abstract idea 'while
adding the words "apply it"' is not enough for patent eligibility." Alice, 134
S. Ct. 2358 ( citation omitted).
Nor do we agree with Appellant that the claims before are similar to
those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and
Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016) to warrant a finding of patent eligibility. (Appeal Br. 21, 25, 26.)
The court in Enfish put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-36. The
court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Enfzsh, 822 F.3d at
1336. Here we find and the Specification (e.g., ,r 2) supports that the plain
focus of the claims is to coupon distribution. The instant claims are not
similar to those as in Bascom, where an intermediary is inserted between two
otherwise conventional computer nodes to move the location where a
process is otherwise ordinarily executed. Bascom, 827 F.3d at 1350. In
Bascom it was filtering between computer nodes which was the plain focus
of the claims and the improvement is rooted in the ways of internet
technology. No such improvement in technology is apparent from the
claims or Specification.
Appellant argues,
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Limitations that are so specific as to distinguish all art of
record cannot properly be deemed as so generic that they
are a "generic computer function". While these features may
use a computer's inherent capabilities, using a computer
alone is insufficient to negate patentability. These features
cannot be characterized as "generic computer functions" any
more than controlling the process of curing synthetic rubber in
a novel and non-obvious way can be characterized as a generic
computer function.
(Appeal Br. 25.)
We disagree with Appellant. A claim for a new abstract idea is still
an abstract idea. See Synopsys, 839 F.3d at 1151. Also, "[a]n abstract idea
can generally be described at different levels of abstraction." Apple, 842
F.3d at 1240-41. A general purpose computer programmed to perform
conventional functions does not amount to an inventive concept such that the
claims are significantly more than the abstract idea. See EON Corp., 785
F.3d at 623. Appellant's Specification does not support a computer system
which is employed to effect the claimed offers, as anything more than a
generic computer. (See, e.g., Spec. ,r 88.)
Also, the standard for patentability under 35 U.S.C. § 103(a) is
obviousness, the standard for patentability under 35 U.S.C. § 102 is novelty,
and the standard for patent eligibility under 35 U.S.C. § 101 is abstract idea.
Each of these standards is separately required to be met before patentability
can be conferred on invention, which is not the case here based on the latter
standard. The question in step two of the Alice framework is not whether an
additional feature is novel, but whether the implementation of the abstract
idea involves "more than performance of 'well-understood, routine, [and]
conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
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1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). As
found supra, we find nothing, which takes the claimed implementation
outside of this standard.
Even still, Appellant's reference to Diamond (Appeal Br. 25) is
misplaced because no physical change occurs in the context of making a
promotional offer. In Diamond v. Diehr, 450 U.S. 175 (1981), the Court
established eligibility under section 101 for claims containing mathematical
formulas when the claim "implements or applies the formula in a structure
or process which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing)." Diamond, 450 U.S. at 176.
In contrast, we fail to see how generating an offer coinciding with a
customer's prior purchases transforms an article into a different state or
thing.
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims based on the record before us.
35 U.S.C. § 103 REJECTION
Independent claims 1, 10, and 15 recite in one form or another,
"wherein the transaction aggregator component is configured to associate
and to store particular transaction logs with particular user entities in the
user database, normalize disparate item identifiers in the transaction logs to
canonical item identifiers, .... "
The Specification describes translation log normalization in the
context:
The coordinating server may include one or more transaction
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log normalization components, to which transaction logs are
submitted as they are received. As a result of normalization,
the transaction logs all conform to a common format. However,
in an embodiment, retailers format transaction logs m the
common format before sending the transaction logs to the
retailer, and thus the logs do not require normalization.
Spec. ,r 196.
The Examiner found,
Robinson teaches normalizing via line item sequence and
using a UPC in at least paragraph 0052 where it mentions,
"[t]ransaction line item data comprises five attributes: sequence
number, item number, description, price, and category. The
sequence number attribute stores a sequential number assigned
to a given line item. . . . Robinson does not appear to specify
normalize disparate item identifiers in the transaction logs to
canonical item identifiers.
Perry teaches normalizing separate identifiers
(title/names) and associating other items to those canonical
titles (UPC, price, color, etc.) in at least paragraph 0084 where
it mentions, "[ c ]anonical titles are created from known product
titles by first normalizing common abbreviations into a standard
form.["]
(Final Act. 12-13.)
Appellant argues, however,
[ n ]othing in the cited section of Robinson discloses performing
a computer-implemented step of normalizing disparate item
identifiers in transaction logs to canonical item identifiers.
Robinson merely suggests taking a part of a UPC bar code-the
codes that appear ubiquitously on consumer packaged goods-
and storing it as part of a transaction line item to help identify
the item. But the numbers encoded in UPC bar codes are not
assigned, created or formed by Robinson's technique; they are
merely copied into a transaction line item as a tag. This is not a
normalizing step as claimed, which involves transforming
disparate item identifiers in transaction logs and forming
something new, namely canonical item identifiers. For
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Appeal2017-009284
Application 13/831,716
Robinson, the UPC code is static and determined by an external
system; Robinson simply copies it in as a tag but this is not an
active normalizing operation as claimed.
(App. Br. 27.) We agree with Appellant. Our review of Robinson at
paragraph 52 reveals:
The sequence number attribute stores a sequential number
assigned to a given line item. Continuing the above example,
the pair of shoes might be assigned sequence number one, the
first shirt sequence number two, and so on. The item number
generally stores a number or identification code (such as, but
not limited to, a UPC code) assigned to the line item by a store
or branch. Thus, the item number attribute may be viewed as
an identifier used by the store or branch to classify the subject
of the transaction.
We find that to the extent that the sequential number in Robinson can
be seen to normalize other item identifiers in the transaction logs of a given
merchant, nothing in either Robinson or Perry discloses doing this to
canonical item identifiers. The definition of "canonical" means "conforming
to a general rule or acceptable procedure." 6 Thus, nothing in the art cited by
the Examiner discloses a general rule applicable between the claimed
plurality of different retail data centers. As to the Examiner's reliance on
UPC codes to meet the normalize limitation (Final Act. 12, 13), we disagree
that this disclosure meets the above listed limitation. This is because the
claims call for normalizing "disparate item identifiers" and according to the
Examiner the UPCs are UNIVERSAL identifiers (Answer 14). Thus, the
UPCs being universal cannot be disparate 7.
6 MERRIAM-WEBSTER.COM, https://www.merriam-
webster.com/dictionary/canonical (last visited Sept. 10, 2018).
7 Containing or made up of fundamentally different and often incongruous
elements. MERRIAM-WEBSTER.COM, https://www.merriam-
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Appeal2017-009284
Application 13/831,716
Since claims 12-14, 17-19, and 21-23 depend from one of claims 1,
10, and 15 and since we cannot sustain the rejection of claims 1, 10, and 15,
the rejection of the dependent claims, likewise, cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 10, 12-
15, 17-19, and 21-23 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1, 10, 12-15, 17-
19, and 21-23 under 35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 1, 10, 12-
15, 17-19, and 21-23 on the ground ofnonstatutory obviousness-type
double patenting.
DECISION
The decision of the Examiner to reject claims 1, 10, 12-15, 17-19,
and 21-23 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
webster.com/dictionary/disparate (last visited Sept. 10, 2018).
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