Ex Parte DeMaranville et al

Patent Trial and Appeal Board

Jun 18, 2018

11069049 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/069,049 03/02/2005
27562 7590 06/20/2018
NIXON & V ANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Albia A. DeMaranville III
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.
723-1648 7621
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBIA A. DeMARANVILLE III, NORMAN G. HAUN,
MICHAEL K. HUTCHESON, RICHARD A. WYATT, and
WILLIAM E. REEVES
Appeal 2016-006632
Application 11/069,049
Technology Center 3600
Before BIBHU R. MOHANTY, MEREDITH C. PETRA VICK, and
JAMES A. TARTAL, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-10, 23-26, and 31--44, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2016-006632
Application 11/069,049
THE INVENTION
The Appellants' claimed invention is directed to a system for
facilitating the management of a retail marketing program in a networked
environment (Spec., page 1, lines 15-16). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A non-transitory computer-readable medium tangibly
embodying a program of computer-executable instructions that, when
executed by a computer, present a user interface for output to a
display device of a computer, the user interface including a
plurality of computer-generated components, at least some of the
components being dynamically and electronically manipulable by a
user to aid in managing a retail marketing program in which at least
one retailer earns credit from another entity to promote sale of the
another entity's products, the components comprising:
a product identification component configured to identify
products included in the retail marketing program in which the retailer
earns credit from the another entity to promote the sale of another
entity's products, the identified products being dynamically
and electronically retrieved and arranged for inclusion in the product
identification component in response to a user request for information
about the retail marketing program; and
a scenario calculations component configured to facilitate user
input of data relating to each of the products identified by the product
identification component;
wherein the product identification component and the scenario
calculations component are dynamically generated, responsive to user
interaction with the scenario calculations component, so as to form
and be included in at least a part of a single page view, the single page
view identifying an amount of credit earned or projected to be
earned by the retailer to promote the sale of the another entity's
products and being generated for presentation as at least a part of the
user interface for output to the display device of the computer.
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Application 11/069,049
THE REJECTION
The following rejections is before us for review:
Claims 1-10, 23-26, and 31--44 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claims are not directed to an abstract idea (App. Br. 9-15, Reply Br. 2-
8). The Appellants also argue that the claims are "significantly more" than
the alleged abstract idea (App. Br. 15-25, Reply Br. 8, 9).
In contrast, the Examiner has determined that rejection is proper
(Final Act. 2-9, Ans. 2-8).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/069,049
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id at 2358.
Here, we determine that the claim is directed to the concept of
identifying products and credits in a retail marketing program and
determining the credits earned or projected. This is a method of organizing
human activities and fundamental economic practice long prevalent in our
system of commerce and is an abstract idea beyond the scope of§ 101. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
( collecting information, analyzing it, and displaying results from certain
results of the collection and analysis was held to be an abstract idea).
The Appellants argue at pages 8-11 of the Appeal Brief that the
rejection in identifying claim 1 as both a "fundamental economic practice"
and "method of organizing human activities" is flawed for failing to clearly
articulate an abstract idea. However, abstract ideas can be characterized at
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Application 11/069,049
different levels of abstraction. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at
different levels of abstraction."). Thus we are not persuaded by this
argument put forth by the Appellants.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea over the using generic computer components. We conclude
that it does not.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. For example, the
Specification at pages 8 and 9 describes using known processor servers,
computing devices, and markup languages in a conventional manner for
their known functions.
We note the point about pre-emption (App. Br. 11 ). While pre-
emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws'" (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption
does not demonstrate patent eligibility" (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),
cert, denied, 136 S. Ct. 701, 193 (2015)("[T]hat the claims do not preempt
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Application 11/069,049
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
We note the Appellants also argue that the Decision of March 13,
2014, established as "fact" that "the claimed combination ... requires more
than just using applying a computer program to automate the portions of
Acer relied on by the Examiner" (App. Br. 16-23, Reply Br. 8, 9) and,
therefore, that the claim should pass prong 2 of the Alice test. It is also
argued that Footnote 4 of that Decision states that "the source of content
affects how the underlying computer substrate operates to form the single
page view," showing that the claims pass the second prong of the Alice test
(App. Br. 18-23, Reply Br. 8, 9).
We disagree with this contention in many regards. First, although the
second step in the Alice/Mayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Second, while the prior Decision used the phrase "more than just
using applying a computer program," it did not use the phrase "significantly
more," which is the standard used in the second prong of Alice. (Emphasis
added).
Thirdly, the Appellants have taken the cited language from the
Decision of March 13, 2014, out of context in relation to the issue at hand.
In the rejection of record, the Examiner acknowledged that portions of the
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claim were not disclosed by Acer, for which Official Notice was taken to
meet the requirements of the claim. In that Decision the term "requires more
than" merely refers to the portions of the claim language not shown by Acer
rather than making a determination of whether or not the claim was directed
to an abstract idea. The cited use of the term "requires more than" in that
Decision does not refer to the claim in regards to patent eligibility analysis.
With regard to the Footnote 4 of that Decision it is directed to the non-
functional material descriptive issues being addressed. The determination
there that the "underlying computer substrate operates to form the single
page view" goes to that issue rather than a determination under 35 U.S.C. §
101 that the claim is significantly more than the abstract idea.
For these reasons, the rejection of claim 1 is sustained. The
Appellants have presented the same arguments for the remaining claims and
the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-10, 23-26, and 31--44 under 35 U.S.C. § 101.
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DECISION
The Examiner's rejection of claims 1-10, 23-26, and 31--44 is
sustained.
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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