Ex Parte Desai et al

Patent Trial and Appeal Board

Jun 26, 2018

10999325 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/999,325 11130/2004
83902 7590 06/26/2018
AT & T LEGAL DEPARTMENT- G&M
ATTN: PA TENT DOCKETING
2A-207 ONE AT & TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Wealthy Desai
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.
040363 2597
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
MAILDATE DELIVERY MODE
06/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEAL THY DESAI and SANDEEP BET ARB ET
Appeal2017-000137
Application 10/999,325
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, 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 from the final
rejection of claims 1---6 and 8-21, 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.
Appeal2017-000137
Application 10/999,325
THE INVENTION
The Appellants' claimed invention is directed to providing service to a
subscriber of an advertising program (Spec. 1: 5-7). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A non-transitory computer-readable medium containing
computer-executable instructions which, when executed by a
processor, cause the processor to perform operations for
providing call feedback to at least one subscriber of an
advertising program, the operations comprising:
retrieving a report, the report including data associated
with at least one call associated with the at least one subscriber
of the advertising program;
generating a report message, the report message
associated with at least one rule, wherein the report message is
generated on a periodic basis without the need for the at least
one subscriber of the advertising program to request the report;
sending, via an electronic message over a communication
network, the at least one subscriber of the advertising program
the report message, the report message containing subscriber
specific information and the report;
determining whether the report message was received by
the at least one subscriber of the advertising program;
in response to determining that the report message was
not received by the at least one subscriber of the advertising
program:
determining a reason the report message was not received
by the at least one subscriber of the advertising program;
producing an alert comprising information associated
with the at least one subscriber and the reason the report
message was not received by the at least one subscriber of the
advertising program; and
enabling a best remedial action to be determined for
delivering the report message to the at least one subscriber
based on the reason the report message was not received by the
at least one subscriber of the advertising program, wherein if
the reason the report message was not received by the
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Application 10/999,325
subscriber is related to an electronic message address of the
subscriber, the best remedial action is determined to be
contacting the subscriber to obtain an alternate electronic
message address for sending the report message to the
subscriber, and if the reason the report message was not
received by the subscriber is related to an error in the
communication network, the best remedial action is determined
to be resending the report message to the subscriber.
THE REJECTION
The following rejection is before us for review:
Claims 1---6 and 8-21 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 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea and is instead rooted in
technology (App. Br. 10-12; Reply Br. 2-5). The Appellants also argue that
the claim contains limitations that are "significantly more" than the alleged
abstract idea (App. Br. 13, 14). The Appellants also argue that when
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 10/999,325
considered as an "ordered combination" that the claim recites more than an
abstract idea (App. Br. 14-16).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2-5; Ans. 4--7).
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: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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
tracking advertising messages sent and determining remedial actions if not
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Application 10/999,325
received. This is a method of organizing human activities or a fundamental
economic practice long prevalent in our system of commerce, and is an
abstract idea beyond the scope of§ 101. The preamble of the claim states
that processor "perform[ s] operations for providing call feedback to at least
one subscriber of an advertising program." In Two-Way Media Ltd. v.
Comcast Cable Comm., LLC, 874 F.3d 1329, 1337, 1338 (Fed. Cir. 2017), it
was held that the steps of sending information, directing sent information,
and monitoring and accumulating records about the receipt of sent
information are directed to an abstract idea. See also Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea.
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 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 both individually and as an ordered combination. Each step of
the claimed method does no more than require a generic computer to
perform a generic computer function. The Specification at pages 4 and 5
describes using generic computing devices such as a computing device,
system memory (RAM, ROM, flash memory), operating system, keyboard,
and display in a conventional manner.
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We note the point about pre-emption (App. Br. 10-12; Reply Br. 2).
Although 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)("[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.").
The Appellants in the Reply Brief at pages 5-7 have also cited to
Enfzsh, LLC v. Microsoft, 822 F.3d 1327, Fed. Cir. 2016) in attempting to
show the claim to be patent eligible. The scope of the claims there was
different than those at hand, which related to a self-referential data table.
Here, the claim is not rooted in technology but rather directed to the abstract
concept of tracking advertising messages sent and determining remedial
actions if not received, in which the additional elements fail to transform the
nature of the claim into a patent-eligible application of the abstract idea.
For these reasons the rejection of claim 1 is sustained. The Appellants
have provided the same arguments for the remaining claims which are
directed to similar subject matter and the rejection of these claims is
therefore sustained as well.
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CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1---6 and 8-21under35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F.R. § 1.13 6( a )(1 ). See 3 7 C.F.R.
§ 1.136(a)(l )(iv).
DECISION
The Examiner's rejection of claims 1---6 and 8-21 is sustained.
AFFIRMED
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