13926540 - (D) (P.T.A.B. Aug. 21, 2018)

Ex Parte DOBSON et al

Patent Trials and Appeals BoardAug 21, 2018

13926540 - (D) (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/926,540 06/25/2013 23494 7590 08/23/2018 TEXAS INSTRUMENTS IN CORPORA TED PO BOX 655474, MIS 3999 DALLAS, TX 75265 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR JOELL YNN DOBSON 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. TI-72013 7138 EXAMINER BARGEON, BRITTANY E ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): uspto@ti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOELL YNN DOBSON and CHRISTOPHER COOK Appeal2017-003208 1 Application 13/926,5402 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 2-7 and 9-14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("Br.," filed January 18, 2016), and the Examiner's Answer ("Ans.," mailed July 22, 2016), and Final Office Action ("Final Act.," mailed August 25, 2015). 2 Appellants identify Texas Instruments Incorporated as the real party in interest. Br. 3. Appeal2017-003208 Application 13/926,540 CLAIMED INVENTION Appellants' claimed invention relates "to electronic commerce-based recommending of products" (Spec. ,r 1 ). Claims 2 and 9 are the independent claims on appeal. Claim 9, reproduced below, is illustrative of the claimed subject matter: 9. An on-line method of recommending products during e- commerce, said method comprising: providing a computing device including a processor connected to a memory which controls operations at an on-line website; wherein said memory stores a cross sampling recommender algorithm (CSRA) and said computing device is programmed to implement said CSRA which includes at least a first statistical model; responsive to receiving information via a communications path including the Internet from a first customer including said customer selecting a first product from a plurality of products offered at said on-line website, said CSRA automatically: dividing historical customer' selection information for said plurality of products spanning a first period of time into a plurality of time ordered sub-periods of time; using said customer' selection information in said time ordered sub-periods of time as a time covariate, fitting logistic regressions to each of a plurality of cross-sampled pairs of said plurality of products involving said first product; using data obtained from said logistic regressions, identifying which of said plurality of cross-sampled pairs meets a slope selection criteria including both a non-zero slope based on a predetermined statistical significance measure comprising a p (probability)-value being below a predetermined level, wherein a null hypothesis corresponds to a zero slope, and wherein said null hypothesis is rejected to determine said non-zero slope is present only when said p-value is below said predetermined level, and said non-zero slope being a positive slope; and 2 Appeal2017-003208 Application 13/926,540 recommending to said first customer, via said internet, at least a first recommended product from said plurality of cross- sampled pairs provided at least one of said plurality of cross- sampled pairs meet said slope selection criteria. REJECTI0N3 Claims 2-7 and 9-14 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. ANALYSIS Patent-Ineligible Subject Matter Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, 3 The Examiner has withdrawn the rejection of claims 2-7 and 9-14 under 35 U.S.C. Â§ 102. Ans. 3. 3 Appeal2017-003208 Application 13/926,540 the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination"' to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S. at 79, 78). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine "whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Here, in rejecting the pending claims under 35 U.S.C. Â§ 101, the Examiner determined that the claims are directed to "using algorithms to provide product recommendations," which the Examiner concluded "is a fundamental economic practice and a mathematical relationship/formula and thus an abstract idea"; and that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception itself (Final Act. 4--5). Appellants summarily assert, without any supporting argument or technical reasoning, that "[ t ]he claims include a recommendation to a customer element" and "[ t ]hus the claims amount to significantly more than the abstract idea itself' (Br. 11 ). Yet, providing product recommendations to a customer is the abstract idea itself; it is not an additional element to be considered when determining whether the claims include additional 4 Appeal2017-003208 Application 13/926,540 elements or a combination of elements sufficient to amount to significantly more than the judicial exception. See Mayo, 566 U.S. at 72-73 (requiring that "a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself' ( emphasis added)). Appellants further cite Westlake Services, LLC. v. Credit Acceptance Corp, CBM2014-00008, 2014 WL 1440384 (PTAB March 31, 2014) (denying institution as to claims 10-12 and 14--33 of US Patent No. 6,950,807 B2 (the '807 patent)) as supporting that the present claims are patent-eligible (Br. 11-12). But Appellants' reliance on Westlake is misplaced. As an initial matter, the Board did not hold in its Institution Decision that claims 10-12 and 14--33 were patent-eligible as a matter of law. Instead, the Board found that the Petitioner had not shown that claims 10-12 and 14--33 were more likely than not directed to patent-ineligible subject matter under 35 U.S.C. Â§ 101. Westlake Services, 2014 WL 1440384, at *14 ("Based on the information presented in the Corrected Petition and supporting evidence, we are not persuaded that claims 10-12 and 14--33 are more likely than not unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. Â§ 101."). Three months after the Board issued its Institution Decision in CBM2014-00008, the Supreme Court issued its decision in Alice on June 19, 2014. Subsequently, Westlake Services filed an Amended Petition, and the Board instituted a covered business method patent review of claims 10-12 5 Appeal2017-003208 Application 13/926,540 and 14--33 of the '807 patent. Westlake Services, LLC. v. Credit Acceptance Corp, CBM2014-00176, 2015 WL 576798 (PTAB February 9, 2015). In its Final Written Decision, the Board held claims 10-12 and 14--33 unpatentable as directed to patent-ineligible subject matter. Westlake Services, LLC. v. Credit Acceptance Corp, CBM2014-00176 (PTAB January 25, 2016). Credit Acceptance appealed, and the Federal Circuit affirmed the Board's holding. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). We are not persuaded, on the present record, that the Examiner erred in rejecting claims 2-7 and 9-14 under 35 U.S.C. Â§ 101. Therefore, we sustain the Examiner's rejection. DECISION The Examiner's rejection of claims 2-7 and 9-14 under 35 U.S.C. Â§ 101 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6