Ex Parte Humes

Patent Trial and Appeal Board

Jun 25, 2018

14318694 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/318,694
7590
Christopher R. Humes
18 Pine Street
West Orange, 07052
06/30/2014
06/26/2018
FIRST NAMED INVENTOR
Christopher Rakestraw Humes
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.
9062
EXAMINER
SHANG, ANNAN Q
ART UNIT PAPER NUMBER
2424
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 CHRISTOPHER RAKESTRAW HUMES 1
Appeal 2017-011443
Application 14/318,694
Technology Center 2400
Before DENISE M. POTHIER, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claim 1, which is the only claim pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is the Christopher
Rakestraw Humes. Br. 3.
Appeal 2017-011443
Application 14/318, 694
STATEMENT OF THE CASE
Introduction
Appellant's application relates to creating custom discounts for
participants that watch advertising independent of programming content.
Spec. 6. Claim 1 illustrates the appealed subject matter and reads as follows:
1. A method for creating and awarding discounts for media
and multimedia services, and other items and services using a
multimedia device, comprising:
(a) factor in the number of non participants who are
subscribers,
(b) factor in the number of potential participants who are
subscriber participants,
( c) factor in the cost of applicable item and service being
discounted,
( d) factor in what is used for advertisement, marketing,
and promotion meaning what must be viewed, used, and
experienced to get the applicable discount, free item, and service,
( e) factor in the number of advertisements, marketing, and
promotions utilized,
(t) sell advertising time based on upfront number of
subscribers and the market value for television advertising, as if
the number of subscribers and participants are the viewing
audience and then sell ad time based on that number,
(g) offer and provide reprieve for participants who
participate but fall short of requirements for any applicable
discount, free items, and services,
(h) participants must view applicable commercials and
content on a media platform and take part in applicable
marketing and promotions,
(i) participant qualifies for and receives applicable
discount, free item, and service, whereby discount is created and
received.
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Appeal 2017-011443
Application 14/318, 694
The Examiner's Rejections2
Claim 1 stands rejected under 35 U.S.C. § 112(b) as indefinite. Final
Act. 5.
Claim 1 stands rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 5---6.
Claim 1 stands rejected under 35 U.S.C. § 102(a)(2) as anticipated by
Eklund, II et al. (US 8,832,760 B2; Sept. 9, 2014) ("Eklund"). Final Act.
6-8.
ANALYSIS
Indefiniteness
Appellant argues the Examiner erred in rejecting claim 1 as indefinite.
Br. 7. In particular, Appellant argues claim 1 "could not be [more] clear."
Br. 7.
Appellant has not persuaded us of Examiner error. Claim 1 recites a
method comprising, in relevant part, "factor in the number of non
participants who are subscribers," "factor in the number of potential
participants who are subscriber participants," "factor in the number of
advertisements, marketing, and promotions utilized," "sell advertising based
on upfront number of subscribers ... as if the number of subscribers and
participants are the viewing audience," and "then sell ad time based on that
number" (emphases added). We agree with the Examiner (see Ans. 3) that it
is unclear to which recited "number" the limitation "that number" refers.
2 In the Final Rejection, the Examiner rejected claim 1 under 35 U.S.C.
§ 112(a) for lack of enablement. Final Act. 4-5. However, the Examiner
withdrew this rejection in the Answer. Ans. 3. Accordingly, this rejection is
not presently before the Board.
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Application 14/318, 694
Specifically, "that number" could refer to any of the five previously recited
numbers, or some combination thereof. Accordingly, Appellant has not
persuaded us the Examiner erred in rejecting claim 1 as indefinite. We,
therefore, sustain the rejection of claim 1 under 35 U.S.C. § 112(b) as
indefinite.
Patent-Ineligible Subject Matter
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
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
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Application 14/318, 694
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. (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
Alice Step One
In the June 9, 2016 Final Rejection ("Final Action"), the Examiner
rejected claim 1under35 U.S.C. § 101 as directed to patent-ineligible
subject matter. In particular, the Examiner found "[c]laim(s) 1 is/are
directed to Abstract idea." Final Act. 5. The Examiner made no further
findings regarding Alice step one in the Final Action. Id. In the Answer, the
Examiner finds claim 1 is directed to a method for creating and awarding
discounts for media and multimedia services. Ans. 4-5.
Alice Step Two
In the Final Action, the Examiner found claim 1 does not recite
additional elements that "amount to significantly more than the judicial
exception because: nothing is significantly more in the claim limitations as
recited." Final Act. 5-6. The Examiner made no further findings regarding
Alice step two in the Final Action. In the Answer, the Examiner finds the
additional elements include various types of subscribers and participants and
none of these additional elements perform any functions that amount to
significantly more than the judicial exception. Ans. 5-6.
Appellant argues the Examiner erred in rejecting claim 1 as being
directed to patent-ineligible subject matter. Br. 8. Appellant argues the
Examiner relies on the claimed step "factor in the number of non
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Application 14/318, 694
participants who are subscribers" in concluding claim 1 is directed to an
abstract idea. Br. 8. Appellant concedes this phenomenon is something that
occurs in nature, but contends the claim covers the act of factoring in this
phenomenon, not the phenomenon itself. Id.
We consider Appellant's argument that the claim covers the act of
factoring in the natural phenomenon, not the natural phenomenon itself, as
an assertion that the claims recite something significantly more than the
abstract idea itself and address this argument under Alice step two.
However, we are not persuaded of Examiner error. Claim 1 is generally
directed to a method comprising a series of steps that include factoring
several numbers into the decision to sell advertising and offering reprieves to
users who fall short of an applicable discount. Appellant's argument is
unpersuasive because the act of factoring the various criteria into a
determination to sell advertising is merely one part of the abstract idea of
creating and awarding discounts for media and multimedia services.
Accordingly, we are not persuaded this act of factoring in the various criteria
amounts to "significantly more" than the abstract idea itself.
We, therefore, sustain the rejection of claim 1 as being directed to
patent-ineligible subject matter. To the extent that our decision could be
interpreted as going beyond the thrust of the Examiner's rejection in the
Final Action, we designate this rejection as a new ground to afford Appellant
an opportunity to respond.
Anticipation
Appellant argues the Examiner erred in rejecting claim 1 as
anticipated by Eklund. Br. 8-9. In particular, Appellant argues Eklund
discloses the general concept of people watching commercials to obtain free
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television programming. Id. According to Appellant, Eklund further
discloses a contest between participants competing for discounts. Id.
Appellant argues claim 1 does not feature a competition or contestants, and
Eklund is therefore different from the claimed invention. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Eklund discloses prearranged groups of users that
accept an invitation to compete against other users to obtain a discount for
multimedia services. Ans. 6. Eklund's teaching that the users compete for
discounts does not preclude Eklund from teaching the subject matter of
claim 1, which is silent regarding the presence or absence of competition in
the decision to sell advertising. In other words, Appellant's argument that
Eklund's teachings differ from claim 1 because the teachings incorporate a
competition between the participants is not commensurate with the scope of
the claims. Accordingly, Appellant has not persuasively rebutted the
Examiner's finding that Eklund discloses the recited claim limitations. 3 We,
therefore, sustain the rejection of claim 1 as anticipated by Eklund.
DECISION
Because we have affirmed at least one ground of rejection with
respect to claim 1 on appeal, the Examiner's decision is affirmed. See 3 7
C.F.R. § 41.50(a)(l).
We affirm the decision of the Examiner rejecting claim 1 under
§§ 112(b) and 102. Regarding the affirmed rejections, 37 C.F.R.
3 In the event of further prosecution, the Examiner may wish to provide
pinpoint citations to Eklund for the limitation "offer and provide reprieve for
participants who participate but fall short of requirements for any applicable
discount, free items, and services" to clarify the record.
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Application 14/318, 694
§ 41.52(a)(l) provides "Appellant may file a single request for rehearing
within two months from the date of the original decision of the Board."
In addition to affirming the above rejections of claim 1, this decision
contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) under
35 U.S.C. § 101. 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claim:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
37 C.F.R. § 41.50(b).
If Appellant elects to reopen prosecution before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l) and the prosecution does not result in
allowance of the application, abandonment, or a second appeal limited to the
37 C.F.R. § 41.50(b) rejection, this case should be returned to the Patent
Trial and Appeal Board so a decision making the original affirmance final
can be entered. See the Manual of Patent Examining Procedure (MPEP)4
§ 1214.0l(I).
4 MPEP (9th ed., Rev. 08.2017, 2018), available at
https://www.uspto.gov/web/offices/pac/mpep/index.html.
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Application 14/318, 694
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the time for filing a request for rehearing on the affirmance or
seeking court review runs from the date of the decision by the Board making
the original affirmance final. MPEP § 1214.0l(I).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±)(2016).
AFFIRMED
37 C.F.R. 41.50(b)
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