Ex Parte Hochstatter et al

Patent Trial and Appeal Board

Jul 2, 2018

13029760 (P.T.A.B. Jul. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/029,760 02/17/2011
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
07/05/2018
FIRST NAMED INVENTOR
Thomas Hochstatter
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.
6857-27200 1302
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/05/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS HOCHSTATTER, JOHN LEONARD, and
CHRISTOPHER MCKINZIE 1
Appeal2017-004192
Application 13/029,760
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4--8, and 21-33, which are all the claims pending in this application. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is III Holdings 1, LLC.
App. Br. 2.
2 Claims 3 and 9-20 were canceled by amendment on September 2, 2015.
Appeal2017-004192
Application 13/029,760
STATEMENT OF THE CASE
Introduction
Appellants' application relates to automatically providing customized
promotional offers to customers. Spec. i-f 1. Claim 1 illustrates the appealed
subject matter and reads as follows:
1. A computer based method, comprising:
assigning, by a computer based system, a first transaction
account to a first population of a plurality of populations based
on first transaction account data associated with the first
transaction account, wherein each of the plurality of populations
includes one or more transaction accounts associated with
respective members and with respective transaction account
data, and wherein the plurality of populations are stored in a
database of the computer based system;
receiving, by the computer based system and from an
offeror, an offer comprising one or more offer criteria, wherein
the one or more offer criteria include a weather-based criterion;
obtaining, by the computer based system, respective
weather conditions corresponding to real-time locations of one
or more members of the plurality of populations;
selecting, by the computer based system, particular
members of the one or more members based on the obtained
respective weather conditions and the one or more offer criteria;
and
communicating, by the computer based system, the offer
to the particular members.
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Application 13/029,760
The Examiner's Rejections
Claims 1, 2, 4--8, and 21-33 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
Claims 1, 2, 4--8, and 21-33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Amaro (US 2011/0087547 Al; Apr. 14, 2011)
and Ramer (US 8,156,128 B2; Apr. 10, 2012).
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue all of claims 1, 2, 4--8, and 21-33 together with
respect to the Examiner's patent-ineligible subject matter rejection. See
App. Br. 12. Accordingly, we select independent claim 1 as representative
of all claims in addressing Appellants' arguments below. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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
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Application 13/029,760
patent-eligible applications of those concepts." Alice, 134 S.Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, 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 the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. at 2355 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
A Prima Facie Case of Patent-Ineligibility
At the outset, we address Appellants' contention that the Examiner
did not carry the procedural burden of "making specific findings of fact and
providing an explanation of the rationale for its decision," particularly with
respect to the dependent claims. App. Br. 8. We treat Appellants'
contention as asserting the Examiner failed to make a prima facie case of
patent-ineligibility. We disagree.
The Federal Circuit has repeatedly explained that "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
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2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
"PTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in 'notify[ing] the applicant ... [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."' In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original) (quoting 35
U.S.C. § 132). The PTO violates § 132 "when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). But if the PTO "adequately explain[s] the shortcomings it
perceives ... the burden shifts to the applicant to rebut the prima facie case
with evidence and/or argument." Hyatt, 492 F.3d at 1370.
The Examiner's rejection under§ 101 satisfies§ 132 because it
reflects the Alice analytical framework by identifying an abstract idea and
finding the claims do not amount to significantly more than the abstract idea
itself (Final Act. 2-3; Ans. 3-11 ), thus apprising Appellants of the reasons
for the § 101 rejection under that framework. Further, the fact that the
Examiner groups the dependent claims together with the independent claims
for the Alice analysis does not show the Examiner failed to establish a prima
facie case. Rather, the grouping expresses the Examiner's intent to reject all
claims for similar reasons. See Final Act. 2-3; Ans. 8. As discussed in more
detail below, Appellants recognize the Examiner's Alice analysis and present
arguments reflecting this analysis. See App. Br. 9-12. Appellants do not
respond by alleging a failure to understand the rejection. See id.
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Alice Step One
"The first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, 822 F.3d at 1335-36.
"The abstract idea exception prevents patenting a result where 'it matters not
by what process or machinery the result is accomplished."' McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We
therefore look to whether the claims ... focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, 837 F.3d at 1314.
Appellants assert the claims focus on "the technology of effective
computer-based identification and electronic communication of relevant
offers to consumers" and "include various specific features that improve
upon previous techniques for identification and electronic communication of
relevant offers," and contend the claims are analogous to the patent-eligible
claims in McRO. Reply Br. 2-3. However, claim 1 broadly recites a
"computer based system" for performing the claimed steps, without
specifically defining the system or reciting limitations that distinguish the
technology involved from other computer-based technology. The
Specification provides support for broadly interpreting claim 1 as
implementing non-specific computer-based technology by stating that
"[ u ]seful machines for performing the operations in the present disclosure
may include general-purpose digital computers or similar devices." Spec.
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i-f 77. Accordingly, claim 1 does not "focus on a specific means or method
that improves the relevant technology." McRO, 837 F.3d at 1314.
Appellants also contend the Examiner has oversimplified claim 1 by
characterizing the claim as a series of five steps. Reply Br. 3. However,
claim 1 is in fact comprised of five steps, and the Examiner takes note of
each step (see Ans. 4) in determining that the claim as a whole is directed to
an abstract idea, i.e., "generating rule-based tasks for presenting
advertising," or put differently, "selecting based on generating first data and
second data using mathematical techniques and combining the first and
second data into a matching offer." See Ans. 6; Final Act. 2. We note that
"[a]n abstract idea can generally be described at different levels of
abstraction," and a "slight revision of [the] abstract idea analysis does not
impact the patentability analysis." Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240-41 (Fed. Cir. 2016). We, therefore, are not persuaded the
Examiner erred in finding claim 1 is directed to an abstract idea.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
activit[ies]' previously known to the industry." Alice, 134 S.Ct. at 2359
(second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellants contend that the ordered combination of limitations in the
claims amounts to an inventive concept. See App. Br. 10-11. Specifically,
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Appellants assert that "previous software and hardware technologies in the
prior art lacked technological features that allowed for effective computer-
based identification and electronic communication of relevant offers to
consumers." App. Br. 10. In contrast, Appellants argue, "the present
system, similarly to the system in BASCOM, improves upon various aspects
of prior art electronically implemented offer programs," and "the specific
combination of elements recited in the claims cannot be said to be
conventional or generic when viewed in relation to the prior art." App.
Br. 11. We are not persuaded by Appellants' arguments.
We note, with respect to Appellants' highlighting of the alleged
differences between the claims and the prior art (see App. Br. 10-11), that
although the second step of the Alice framework is described as a search for
an "inventive concept," 134 S. Ct. at 2355, the analysis is not an evaluation
of novelty or non-obviousness. A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at
90; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) ("[A] claim for a new abstract idea is still an abstract idea.
The search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty.").
Turning to the inventive concept inquiry, we see claim 1 recites "a
computer based system" for performing the various claimed steps, including
"assigning" an account to a population, "receiving" an offer from an offeror,
"obtaining" weather conditions of members' locations, "selecting" members
based on weather conditions, and "communicating" the offer to members.
Claim 1 is unlike the claims in Bascom, where the claim limitations resulted
in a non-conventional arrangement. 827 F.3d at 1349. Here, whether
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considered individually or in combination, the computer-based steps of
claim 1 are merely conventional. That is, the Specification provides that the
system used for performing the claimed computer activities can include
"general-purpose digital computers or similar devices," i.e., conventional
computers. Spec. i-f 77. Further, the claimed computer activities essentially
comprise receiving, manipulating, and sending data, which are functions the
Specification provides can be implemented in conventional manners. For
example, the Specification states "conventional data networking, application
development and other functional aspects of the systems (and components of
the consumer operating components of the systems) may not be described in
detail herein" (Spec. i-f 15), and "system 100 may employ any number of
conventional techniques for data transmission, signaling, data processing,
network control, and/or the like." Spec. i-f 46.
Moreover, the Federal Circuit has held that computer activities
performed by generic computers that amount to no more than receiving,
manipulating, and sending data fail to provide significantly more than an
abstract idea. See, e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1356 (Fed. Cir. 2016) (finding the claims did not contain an inventive
concept where they did not require "performing the claimed functions of
gathering, analyzing, and displaying in real time by use of anything but
entirely conventional, generic technology"); Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (finding that
"merely adding computer functionality to increase the speed or efficiency
of' presenting a "pre-designed ad more quickly than a newspaper could send
the user a location-specific advertisement insert" was not an inventive
concept); OIP Technologies, Inc. v. Amazon.com, 788 F.3d 1359, 1363-64
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(Fed. Cir. 2015) (finding "present[ing] [offers] to potential customers" and
"gathering ... statistics generated during said testing about how the potential
customers responded to the offers" to be "well-understood, routine,
conventional data-gathering activities").
Accordingly, claim 1 amounts to simply applying an abstract idea on a
conventional computer-based system, and thus does not contain an inventive
concept. See Bascom, 827 F.3d at 1349.
Preemption
Finally, we note that preemption is the concern that drives the
exclusionary principle of judicial exceptions to patent-eligible subject
matter. Alice, 134 S.Ct. at 2354. However, preemption is not a separate test
of patent-eligibility, but is inherently addressed within the Alice framework.
See Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) ("While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility."). Accordingly, Appellants' argument that claim 1 does not
preempt "all systems and methods of 'selecting based on generating first
data and second data using mathematical techniques and combining the first
and second data into a matching offer"' (App. Br. 12), is not, by itself,
persuasive of patent-eligibility.
We, therefore, sustain the Examiner's patent-ineligibility rejection of
claim 1, and claims 2, 4--8, and 21-33 grouped therewith.
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Obviousness
We have reviewed the Examiner's obviousness rejection in light of
Appellants' contentions that the Examiner has erred. We disagree with
Appellants' contentions. Except as noted below, we adopt as our own: (1)
the findings and reasons set forth by the Examiner regarding the obviousness
rejections in the Final Office Action from which this appeal is taken; and (2)
the reasons set forth by the Examiner regarding the obviousness rejection in
the Examiner's Answer in response to Appellants' Appeal Brief. We
highlight the following additional points.
Appellants contend neither Amaro nor Ramer teaches "selecting, by
the computer based system, particular members of the one or more members
based on the obtained respective weather conditions and the one or more
offer criteria." In particular, Appellants argue that although "Amaro teaches
providing 'an advertising network ... based on a transaction handler to
present personalized or targeted advertisements/ offers on behalf of
advertisers,"' "Amaro is entirely silent regarding 'obtained respective
weather conditions." App. Br. 13. Further, Appellants argue that while
"Ramer teaches ... 'using the parameters of geographic location and time,
the automatically generated search query may return results containing the
current day's weather conditions for that location,"' "Ramer fails to teach or
suggest 'selecting ... particular members ... based on the obtained
respective weather conditions' as recited by claim 1." App. Br. 13-14. In
other words, Appellants argue, "Ramer fails to teach or suggest using
weather as a criterion for selecting users or advertisements." Reply Br. 5.
Appellants have not persuaded us of Examiner error. We note that the
Examiner relies on both Amaro and Ramer for collectively disclosing the
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claim 1 limitation of "selecting, by the computer based system, particular
members of the one or more members based on the obtained respective
weather conditions and the one or more offer criteria." See Final Act. 5.
Amaro describes "an advertising network ... to present personalized or
targeted advertisements/offers on behalf of advertisers" that uses
"intelligence information about individual customers, or certain types or
groups of customers." Amaro, i-f 25. Accordingly, we find Amaro teaches
"selecting ... particular members ... based on ... the one or more offer
criteria," as recited in claim 1. Ramer teaches using criteria, such as user
location, for delivering content, such as local restaurant information and
local weather. Ramer, col. 24, 11. 28-31. Accordingly, we find Ramer
teaches "obtained respective weather conditions," as also recited in claim 1.
Further, Amaro suggests using obtained weather conditions as a
criterion for selecting members to receive a particular offer. Specifically,
Amaro describes correlating transactions with non-transactional data such as
"news, conferences, shows, announcements, market changes, natural
disasters, etc. to establish cause and effect relationships to predict future
transactions or spending patterns." Amaro, i-f 57 (emphasis added). Amaro
further describes that "when the cause and effect relationships between the
transactions and non-transactional events [e.g., natural disasters] are known
(e.g., based on prior research results, domain knowledge, expertise), the
relationships can be used in predictive models to predict future transactions
or spending patterns, based on events that occurred recently or are
happening in real-time." Amaro, i-f 58. Moreover, "the non-transactional
data relates to events that happened in a geographical area local to the user
(101) that performed the respective transactions." Amaro, i-f 59. In other
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words, Amaro describes determining what local customers buy when a
natural disaster occurs, and we find one of ordinary skill in the art would
have understood natural disasters to include weather events. Accordingly, in
light of Amaro' s teaching of selecting customers for targeted advertising
(Amaro, i-f 25), and Ramer's teaching of obtaining local weather based on a
user's location (Ramer, col. 24, 11. 28-31 ), the combination teaches or
suggests the claim 1 limitation of "selecting, by the computer based system,
particular members of the one or more members based on the obtained
respective weather conditions and the one or more offer criteria."
We, therefore, sustain the rejection of claim 1 as unpatentable over
Amaro and Ramer. We also sustain the obviousness rejection with respect
to claims 2, 4--8, and 21-33, which are not specifically argued separately.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 2, 4--8, and
21-33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
41.50(f).
AFFIRMED
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