Ex Parte England et al

Patent Trial and Appeal Board

Jul 31, 2017

13335295 (P.T.A.B. Jul. 31, 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.
13/335,295 12/22/2011 Aron England DC-19240 8621
33438 7590 08/02/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
tmunoz @ tcchlaw. com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARON ENGLAND, STEVEN TEDJAMULIA, MANISH C.
MEHTA, and RONALD VINCENT ROSE
Appeal 2016-004895
Application 13/335,295
Technology Center 3600
Before THU A. DANG, ERIC S. FRAHM, and JOHN P. PINKERTON,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1— 20, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-004895
Application 13/335,295
STATEMENT OF THE CASE
The Claimed Invention
According to Appellants, the claimed invention relates “generally to
information handling” and more specifically to “optimizing webpages and
managing campaigns in a syndicated commerce environment.” Spec. 12.
Claims 1,7, and 13 are independent. Claim 1 is illustrative of the invention
and the subject matter of the appeal, and reads as follows:
1. A computer-implementable method for managing
syndicated commerce campaigns, comprising:
automatically processing, via a computer system, social data
associated with a first user to generate market segment data, the
market segment data identifying the first user based upon a set
of characteristics;
automatically processing, via the computer system, the market
segment data to identify a set of second users corresponding to
a set of campaign data associated with a campaign goal, the set
of second users exhibiting the set of characteristics of the first
user; and
providing the set of campaign data to an endpoint, the campaign
data allowing the endpoint to achieve the campaign goal, the
campaign goal providing an online store owner an opportunity
to increase sales by creating, scheduling and executing a
marketing campaign that drives traffic to the online store.
The Rejections on Appeal
1. Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter.
2. Claims 1—20 stand rejected under pre-AlA 35 U.S.C. § 102(b) as
being anticipated by Kendall (US 2009/0119167 Al; published May 7,
2009).
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Application 13/335,295
ISSUES
The principal issues before us are whether the Examiner erred in
finding that:
1. The claimed “computer-implementable method for managing
syndicated commerce campaigns” (claim 1) is directed to patent ineligible
subject matter.
2. Kendall teaches “processing, via a computer system, social data
associated with a first user to generate market segment data,” “processing,
via the computer system, the market segment data to identify a set of second
users corresponding to a set of campaign data,” and “providing the set of
campaign data to an endpoint,” wherein “the set of second users exhibiting
the set of characteristics of the first user” (id.).
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Kendall
Kendall discloses a social networking website that logs information
about actions taken by members of the website, wherein the website
generates socially relevant ads for a particular member based on the actions
logged for other members on the website to whom the member is connected
(Abst.). In particular, a website operator, via the website, receives a number
of actions taken by a member, which then triggers social ads delivered to the
member’s friends (| 82).
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Application 13/335,295
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 U.S.C. §101
Appellants argue the Examiner erred in concluding the claims are
directed to an abstract idea and, therefore, constitute patent ineligible subject
matter. App. Br. 3—4.1 Specifically, Appellants contend “the elements of
the claims of the present application make it clear that the claims are
directed to significantly more than the general concept.” Id. at 3. However,
Appellants merely contend “the claims of the present application provide a
substantial improvement over the art in the field of managing syndicated
commerce campaigns” because they recite the additional claim limitations.
Id. at 4. Thus, Appellants argue “these additional limitations are sufficient
to ‘transform’ the claims into a patent-eligible application” whereby “the
claims of the present application are necessarily rooted in computer
technology rather than simply implement old ideas on a computer.” Id.
Based on the record before us, we are not persuaded of Examiner
error.
1 Appellants argue all claims as a group for purposes of the ineligible subject
matter rejection, and we choose claim 1 as representative of the group.
37 C.F.R. §41.37(c)(l)(iv).
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Application 13/335,295
Under 35 U.S.C. § 101, the Supreme Court 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). The Supreme Court, in Alice,
reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1300 (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, 134 S. Ct. at 2355. The first step is
to “determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea, as the Examiner concludes in
this case. If the claims are not directed to an abstract idea, 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.” Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297).
Here, the Examiner concludes the claims are directed to “steps for
generating market segment data based on social data characteristics in
common between two users.” Final Act. 4. According to the Examiner,
“[determining segments of a market is an abstract idea and does not require
the use of a computer to be accomplished as it is merely the manipulation or
analysis of data.” Id. We agree.
“Collecting information, including when limited to particular content”
is an abstract idea. Elec. Power Grp., LLC v. Alstrom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Further, “merely presenting the results of abstract
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Application 13/335,295
processes of collecting and analyzing information, without more ... is
abstract as an ancillary part of such collection and analysis.” Elec. Power,
830 F.3d at 1354. On this record, we are satisfied Examiner has established
a prima facie case as to step one of Alice.
As to Alice step two, Appellants argue the additional claim limitations
are “sufficient to ‘transform’ the claims into a patent-eligible application”
because they “are necessarily rooted in computer technology rather than
simply implement old ideas on a computer,” similar to the invention deemed
statutory subject matter in DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d
1245 (Fed. Cir. 2014). App. Br. 3^4. In DDR Holdings, however, the
Federal Circuit concluded the claimed invention “overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink” rather than employing mere ordinary use of a computer or the
Internet. DDR Holdings, 773F.3datl258.
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
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 “implement [t]” an
abstract idea “on ... a computer,” that addition cannot impart
patent eligibility. This conclusion accords with the preemption
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.”
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Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359.
Here, the Examiner finds, and we agree, “a generic computer system
and/or its components as claimed does not add a meaningful limitation to the
abstract idea because in any computer implementation these steps would be
routine.” Final Act. 4—5. As the Examiner explains, “[tjhere is no
improvement beyond a generic computer in the claims.” Ans. 3. That is,
contrary to Appellants’ contention, merely reciting that the steps of
processing information are “via a computer system” (claim 1) is not
“sufficient to ‘transform’ the claims into a patent-eligible application” (App.
Br. 3—4). Although Appellants contend that the claims are “necessarily
rooted in computer technology” (id.), we are unpersuaded of error in the
Examiner’s conclusion.
As set forth in Alice, abstract ideas have been identified by the courts
by way of example, including fundamental economic practices, certain
methods of organizing human activities, an idea ‘of itself,’ and mathematical
relationships/formulas. Alice, 134 S. Ct. at 2355—56. Appellants’ attention
is also directed to CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity
of a credit card transaction over the Internet to be nonstatutory as an abstract
idea capable of being performed in the human mind or by a human using a
pen and paper). Here, we also agree with the Examiner that “[t]he method
steps of segmenting market data to achieve a goal qualifies as an abstract
idea that does not require computer technology” because “these steps can
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exist outside of the computer technology,” wherein “[a]n analyst can
monitor user behavior” and “determine how to segment their markets and
implement marketing tactics with only the use of mental analysis or pen to
paper calculations and decision making.” (Ans. 4)
Thus, on this record, we sustain the ineligible subject matter rejection
of claims 1—20.
Rejection Under Pre-AIA 35 U.S.C. § 102(b)
Appellants merely contend “nowhere within Kendall is there any
disclosure or suggestion” of the contested claim limitations “as required by
claims 1,7, and 13.” App. Br. 5. That is, Appellants’ contentions merely
consist of repeating the claim language and stating that “nowhere within
Kendall” is there a disclosure or suggestion of the claimed invention (id.).
Such form of conclusory argument (merely contending that the prior art is
different) fails to comply with 37 C.F.R. § 41.37(c)(l)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”). That is, merely reciting
the language of a particular claim and asserting the cited prior art reference
does not teach or suggest the claim limitation, without more, fails to
constitute a separate issue of patentability. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
Nevertheless, as the Examiner finds, “Kendall at least discloses social
ads being delivered to members who have a relationship to the first member,
such as the same network or group.” Final Act. 3. In particular, Kendall
discloses processing data associated with a first member to generate
activities data related to the member, processing the activities data to
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identify other members related to the first member, and then providing
associated ads. FF.
Thus, we find no error with the Examiner’s reliance on Kendall for
teaching the claimed “processing, ... social data associated with a first user
to generate market segment data,” “processing, ... the market segment data
to identify a set of second users corresponding to a set of campaign data,”
and “providing the set of campaign data to an endpoint” wherein “the set of
second users exhibiting the set of characteristics of the first user” (claim 1).
On this record, we are unpersuaded of error in the Examiner’s rejection of
claim 1 over Kendall under 35 U.S.C. § 102(b), and claims 2—20 falling
therewith (App. Br. 5).
DECISION
We affirm the Examiner’s rejections of claims 1—20.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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