Ex Parte Edwards

Patent Trial and Appeal Board

Jun 20, 2017

12546449 (P.T.A.B. Jun. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/546,449 08/24/2009 Duane S. Edwards 400094.401 3402
500 7590 06/21/2017
SFFD TNTFT T FFTT TAT PROPFRTY T AW GROT TP T T P
EXAMINER
701 FIFTH AVE VAN BRAMER, JOHN W
SUITE 5400
SEATTLE, WA 98104 ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
06/21/2017 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 DUANE S. EDWARDS1
Appeal 2016-007062
Application 12/546,449
Technology Center 3600
Before MAHSHID D. SAADAT, JOHN P. PINKERTON, and
ALEX S. YAP, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 7—13, which constitute all of the claims pending in
the application. Claims 1—6 and 14—20 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Globys, Inc. as the real party in interest. App. Br. 2.
Appeal 2016-007062
Application 12/546,449
STATEMENT OF THE CASE
Introduction
Appellant describes the disclosed and claimed invention as follows:
Embodiments are directed towards enabling
product and/or service providers to maximize sales of
products, services, and content to their existing customers.
In one embodiment, a process, apparatus, and system are
directed towards optimizing a selection of offers for any
customer touch-point to ensure the provider delivers the
best offer to the right customer at the most appropriate
time. Offers are optimized not only according to a
customer's interests and preferences but also according to
revenue and profitability potential using predictive
analytics.
Abstract.2
Claim 7 is representative and reproduced below:
7. A processor readable storage medium that includes data
and instructions for a network device comprising a
recommendation engine and an analytic modeling component,
wherein the execution of the instructions on a computing device
by enabling actions, comprising:
receiving, from a merchant, a request for an offer for a
product or service to be presented to a customer of the merchant;
receiving information about a plurality of available offers,
including at least one channel constraint, and a predicted revenue
for each available offer;
2 Our Decision refers to the Final Office Action mailed May 5, 2015 (“Final
Act.”); Appellant’s Appeal Brief filed Nov. 11, 2015 (“App. Br.”); the
Examiner’s Answer mailed May 11, 2016 (“Ans.”); Appellant’s Reply Brief
filed July 6, 2016 (“Reply Br.”); and the original Specification filed Aug. 24,
2009 (“Spec.”).
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determining a probability of acceptance of each offer for
each of a plurality of channels in which an offer could presented
to the customer using an analytical model from the analytic
modeling component to perform comparisons based at least in
part on a customer attribute or a context of an offering;
employing the analytical model to determine scores for
each of the offers by employing a revenue or profitability
maximization mechanism based in part on the probability of
acceptance, customer context information, and the received
information about each remaining offer; and
in response to the request, providing, to the merchant, an
optimal offer, wherein the optimal offer is that offer having a
highest score, wherein the optimal offer is presented by the
merchant to the customer using at least one channel that includes
a display on a computer device or a physical paper presentation.
App. Br. 17 (Claims App’x).
Rejections on Appeal
Claims 7—13 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 7—13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ramsey et al. (US 2006/0253309 Al; published Nov. 9,
2006) (“Ramsey”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Briefs. For the reasons discussed infra, we are not
persuaded by Appellant’s arguments that the Examiner erred in rejecting
claims 7—13 under 35 U.S.C. § 101; we are, however, persuaded by
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Appellant’s arguments that the Examiner erred in rejecting claims 7—13
under 35 U.S.C. § 102(b).
Rejection of Claims 7—133 under § 101
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court set forth an analytical “framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355 (citing Mayo Collaborative Svcs. v. Prometheus Labs., Inc., 566 U.S.
66, 75—77 (2012)). The first step in the analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
For example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355—57. If, at the
first stage of the Alice analysis, we conclude that the claim is not directed to
a patent-ineligible concept, it is considered patent eligible under § 101 and
the inquiry ends. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042,
1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
3 Appellant argues these claims as a group. See App. Br. 9-16; Reply Br. 7—
13. We select claim 7 as the representative claim for this group, and the
remaining claims 8—13 stand or fall with claim 7. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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In other words, the second step is to “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.’” Id. (brackets in original) (quoting Mayo, 566
U.S. at 72—73). The prohibition against patenting an abstract idea “‘cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted).
In determining whether a process claim recites an abstract idea, we
must examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm. Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758
F. 3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, “an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.” Diamond v. Diehr,
450 U.S. 175, 187 (1981). The “directed to” inquiry asks not whether “the
claims involve a patent-ineligible concept,” but instead whether, “considered
in light of the specification,. . . ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we
determine whether the claims “focus on a specific means or method that
improves the relevant technology” or are “directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
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Here, the Examiner finds claim 7 is directed to a patent-ineligible
concept — an abstract idea “for using algorithms to select and provide an
offer to a customer based on information about said customer.” Ans. 4—5.
The Examiner finds the claim limitations focus on: (a) receiving a request
for an offer for a product or service to be presented to a customer of the
merchant; (b) receiving information about a plurality of offers, including a
channel constraint; (c) determining a probability of acceptance of each offer
for each of a plurality of channels, which the Examiner finds is “using an
algorithm [or mathematical formula] to made a determination,” and as such
“is an abstract idea;” (d) employing an analytical model to determine scores
for each of the offers, which the Examiner finds is also an algorithm or
mathematical formula; and, (e) in response to the request, providing an
optimal offer, the one with the highest score, using at least one channel. Id.
at 5—6. The Examiner also finds that the claim limitations, considered
individually and in combination, do not contain an inventive concept to
transform the claimed abstract idea into patent-eligible subject matter
because “the claims simply instruct the practitioner to implement the
abstract idea with ‘routine, conventional activities’ using general purpose
computing devices which is insufficient to transform the patent-ineligible
abstract idea into patent-eligible subject matter.” Id. at 8.
Regarding step one of Alice, we agree with the Examiner, and
conclude, that claim 7 is directed to the abstract idea of using mathematical
formulas or algorithms to select and provide an offer to a customer based on
information about the customer. As recited in claim 7, after receiving a
request for an offer for a product or service, the limitations of claim 7 focus
on obtaining information or data about available offers, processing the
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information using mathematical formulas to determine “a probability of
acceptance” and “scores for each of the offers,” and outputting an optimal
offer having a highest score. It is well established that data analysis and
algorithms are abstract ideas. See, e.g., Alice, 134 S. Ct. at 2355; Parker v.
Flook, 437 U.S. 584, 589, 594—95 (1978) (“Reasoning that an algorithm, or
mathematical formula, is like a law of nature, Benson applied the established
rule that a law of nature cannot be the subject of a patent”); Gottschalk v.
Benson, 409 U.S. 63, 71—72 (1972). Thus, claim 7 is directed to an abstract
idea because it is focused on collecting information, processing the
information by mathematical algorithms, and presenting the results. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed.
Cir. 2016) (“The advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions.”). As discussed infra, Appellant argues claim 7 is directed to
“automated operations of computer systems to significantly improve
activities.” App. Br. 14; Reply Br. 8. We are not, however, persuaded by
this argument because “the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools.” See Electric Power, 830 F.3d at 1354.
Regarding step two of Alice, Appellant argues that, even if claim 7 is
directed to an abstract idea, “the Office has failed to satisfy its burden of
establishing that the claims do not recite significantly more than such an
abstract idea.” App. Br. 16. We are not persuaded by Appellant’s argument,
but instead agree with the Examiner’s finding that “the limitations do not
transform the abstract idea that they recite into patent-eligible subject matter
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because the claims simply instruct the practitioner to implement the abstract
idea with ‘routine, conventional activities’ using general purpose computing
devices which is insufficient to transform the patent-ineligible abstract idea
into patent-eligible subject matter.” Ans. 8; see Alice, 134 S. Ct. at 2358
(“[T]he mere recitation of a generic computer cannot transform a patent-in-
eligible abstract idea into a patent-eligible invention. . . . Stating an abstract
idea while adding the words ‘apply if” is not enough for patent eligibility)
(quoting Mayo, 566 U.S. at 72 (internal quotation marks omitted)). Thus,
considering the features of claim 7, individually and as an ordered
combination, we find there are no additional elements that transform the
nature of the claim into a patent-eligible application. Alice, 134 S. Ct. at
2355.
To overcome Alice, Appellant presents several arguments. First,
Appellant argues that “[i]n an analogous manner to subject matter of the
recent Veracode[4] and Trading Technologies[5] cases, the pending claims”
are directed to computer-implemented improvements to existing techniques
and “recite using automated operations of computer systems to significantly
improve activities that would be extremely difficult or impossible to perform
manually.” App. Br. 14; Reply Br. 8. This argument is unpersuasive
because it is conclusory and unsupported by specific analysis of the
technology in these cases and any persuasive evidence or argument
concerning any similarities of such technology with the subject matter of
4 Appellant did not provide a citation to this case, but we believe the case is
Veracode, Inc. v. Appthority, Inc., 137 F.Supp.3d 17 (D. Mass. 2015).
5 Appellant did not provide a citation to this case, but we believe the case is
Trading Techs. Int’l, Inc. v. CQG, INC., No. 2016-1616, 2017 WL 192716
(Fed. Cir. Jan. 18, 2017).
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claim 7. Appellant argues claim 7 is directed to automated functionality for
improving activities that would be extremely difficult or impossible to
perform manually, but does not explain how such automation is based on
improvements to computer technology, rather than the mathematical
algorithms to determine “a probability of acceptance” and scores for the
offers using the “analytical model.” Unlike Veracode, Appellant has not
provided persuasive evidence or argument that the process of claim 7
“improved] upon the unique properties and complex capacities of computer
technology.” Reply Br. 8; see Veracode, 137 F.Supp.3d at 53. Regarding
Trading Technologies, the Federal Circuit affirmed the district court’s
holding that the claims were not directed to an abstract idea because the
claims required “a specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user interface’s
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art.” Trading Techs., No. 2016-1616 at *3. Here, the
claims do not recite a graphical user interface and, therefore, are readily
distinguishable from the claims in Trading Technologies. Similarly,
Appellant has not provided any analysis of the similarities of the technology
in any of the other cases6 it cites with the subject matter of claim 7. See
App. Br. 13; Reply Br. 9-10.
Second, Appellant argues there is no supporting evidence in the
record that the subject matter of claim 7 qualifies as an abstract idea and
6 DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014);
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); and,
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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“thus the alleged abstract idea of the pending claims is merely an
unsupported opinion that is insufficient to render the claims unpatentable.”
App. Br. 15. Contrary to Appellant’s assertions, neither Alice, nor the
Board’s holding in Ex Parte Renald Possion, Appeal No. 2010-011084
(PTAB Feb. 27, 2015), stands for the proposition, that the Examiner must
provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea. There is no such requirement.
See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility” to 2014
Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg.
74618 (Dec. 16, 2014) (“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 added). Further, the Office did
not change the standard in the May 4, 2016 Memorandum, Formulating a
Subject Matter Eligibility Rejection and Evaluating the Applicant’s
Response to a Subject Matter Eligibility Rejection. Evidence may be helpful
in certain situations where, for example, facts are in dispute. However, it is
not always necessary, and it is not necessary in this case.
Third, Appellant argues the Examiner failed to follow the May 2016
Subject Matter Eligibility Update Memorandum by not citing a case (1) in
which analogous subject matter has been found to be non-statutory, except
for generic references to SmartGene and Cyberfone, and (2) in which
analogous subject matter for the combination of elements of claim 7 has
been found to be merely well-understood and routine activities of a generic
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computer. Reply Br. 11—13. We are not persuaded by this argument
because the USPTO guidelines are not legal requirements. Cf. In re Fisher,
421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not
binding on this court”’) (citations omitted).
Fourth, Appellant argues the Examiner has failed to provide any
support for the proposition that the pending claims recite the only possible
method of “‘providing an offer to a customer based on information about
said customer, ’ so as to provide a monopoly that preempts use of such an
alleged abstract idea in all possible fields.” App. Br. 15; Reply Br. 13. We
are not persuaded by this argument. “[Wjhile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” FairWarningIP, LLC, v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting 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 all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). Further, “[wjhere a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
Accordingly, we sustain the Examiner’s rejection of claim 7 under
§ 101, as well as dependent claims 8—13, which are not separately argued.
Rejection of Claims 7—13 under § 102(b)
Appellant argues that Ramsey does not anticipate claim 7 because
“Ramsey fails to disclose ‘determining a probability of acceptance of each
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offer for each of a plurality of channels.”7 App. Br. 10 (emphasis added);
Reply Br. 4. Appellant argues that the portions of Ramsey relied on by the
Examiner, paragraphs 23, 33, and 34, fail to disclose this limitation. App.
Br. 10. Appellant further argues that “Ramsey lacks any idea that different
channels could provide different probabilities of acceptance for a particular
customer.” Reply Br. 6. The Examiner finds that “Ramsey specifically
states that acceptance probability scores and/or rankings are computed for
each of a plurality of channels for the offer.” Ans. 2—A (citing Ramsey ]Hf 23,
33,34).
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478—79 (Fed. Cir. 1994)). Here, we
are persuaded by Appellant’s argument that the Examiner errs in finding
Ramsey anticipates claim 7 because, although paragraph 23 of Ramsey
specifically teaches computing “acceptance probability scores,” the
Examiner has not shown or explained that paragraph 23, or the cited portions
of Ramsey, describe computing acceptance probability scores “for each of a
plurality of channels,” as recited in claim 7.8
7 Although Appellant makes other arguments regarding this rejection, we
need not address them because we find this argument is dispositive.
8 In the event of further prosecution, we leave it to the Examiner to
determine whether it would have been obvious to one of ordinary skill in the
art, at the time of the invention, that a probability of acceptance of each offer
is determined “for each of a plurality of channels.”
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Thus, we do not sustain the Examiner’s rejection under § 102(b) of
independent claim 7, as well as dependent claims 8—13.
DECISION
We affirm the Examiner’s decision rejecting claims 7—13 under
35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 7—13 under
35 U.S.C. § 102(b).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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