Ex Parte Knorr

Patent Trial and Appeal Board

Mar 22, 2018

14134294 (P.T.A.B. Mar. 22, 2018)

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.
14/134,294 12/19/2013 John KNORR 124730.02 4650
759025944
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
03/26/2018 EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN KNORR
Appeal 2016-007566
Application 14/134,294
Technology Center 3600
Before JOHN A. EVANS, MATTHEW J. McNEILL, and
JASON M. REPKO, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of Claims 1 and 2. App. Br., Claims App’x.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 Appellant states the real party in interest is Super Internet Site System Pty.
Ltd. App. Br. 1.
2 Rather than reiterate the arguments of the Appellant and the Examiner, we
refer to the Appeal Brief (filed January 14, 2016, “App. Br.”), the Reply
Brief (filed August 3, 2016, “Reply Br.”), the Examiner’s Answer (mailed
June 3, 2016, “Ans.”), the Final Action (mailed April 24, 2015, “Final
Act.”), and the Specification (filed December 19, 2013, “Spec.”) for their
Appeal 2016-007566
Application 14/134,294
STATEMENT OF THE CASE
The claims relate to a method of managing the delivery of offers from
suppliers to members via a spatial marketplace system. See Abstract.
INVENTION
Claim 1 is independent. An understanding of the invention can be
derived from a reading of Claim 1, which is reproduced below:
1. A computer implemented method of establishing a
database of potential customers for delivery of offers, the
method including the following steps:
(a) defining a unique catchment area for suppliers by
specifying a geographical region via an Internet browser to
target members whose spatial identifiers and attribute profiles
correspond to criteria predetermined by the supplier in order to
minimize waste;
(b) third party organizations maintaining a membership
database to introduce members of the organizations to a spatial
marketplace system as members;
(c) third party organizations introducing members of the
organizations to the spatial marketplace system as members;
(d) providing a percentage of revenue to the third party
organizations for introducing members of the organizations to
the spatial marketplace system;
(e) offering members an incentive in exchange for
registering, providing a spatial identifier, nominating attributes
corresponding to commodities in relation to which the member
consents to receiving offers;
respective details.
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Appeal 2016-007566
Application 14/134,294
(f) each member registering with the spatial marketplace
and entering a physical address defining a geographic region
via an Internet browser upon registration to derive a spatial
identifier that is stored in the membership database, the spatial
identifier comprising a set of coordinates that define a three-
dimensional location;
(g) each member nominating one or more attributes
corresponding to a commodity in relation to which the member
is interested in receiving offers and each member requesting
offers the member is interested in receiving;
(h) granting suppliers access to a register of members
which are categorized according to their spatial identifiers and
attribute profiles via an Internet browser;
(i) using a time nominating component by a processor to
specify a point in time and a time interval when the member's
request for offers will be presented to suppliers; and
(j) associating a range of numeric qualifiers with one or
more attributes relating to the commodity the member is
interested in, the numeric qualifiers specifying a quantity, size,
or length of the one or more attributes;
(k) restricting the delivery of offers to members
associated with the identified database records that have
nominated attributes matching attributes nominated by the
supplier at the time when the member’s request for offers will
be presented to suppliers;
(l) further restricting the delivery of offers to members
that have nominated the numeric qualifier for the commodity
which matches or falls within the range of the numeric
qualifiers nominated for the commodity by the supplier; and
(m) targeting members whose spatial identifiers and
attribute profiles correspond to criteria predetermined by the
supplier.
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Appeal 2016-007566
Application 14/134,294
Rejections
Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Final Act. 5—8.
ANALYSIS
We have reviewed the rejections of Claims land 2 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellant identifies reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner’s Answer, to
the extent consistent with our analysis below. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis. We consider Appellant’s arguments seriatim, as
they are presented in the Appeal Brief, pages 5—15.
Claims 1 and 2: Non-Statutory Subject Matter.
Appellant argues these claims generally as a group. See App. Br. 5.
35 U.S.C. § 101.
35 U.S.C. § 101 provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme
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Application 14/134,294
Court has long recognized, however, that § 101 implicitly excludes “[l]aws
of nature, natural phenomena, and abstract ideas” from the realm of patent-
eligible subject matter, as monopolization of these “basic tools of scientific
and technological work” would stifle the very innovation that the patent
system aims to promote. Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294—97 (2012); Diamond
v. Diehr, 450 U.S. 175, 185 (1981).
Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
“distinguish[] 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. At the first step, we determine whether
the claims at issue are “directed to” a patent-ineligible concept. Id.
The Examiner finds Claims 1 and 2 are directed to the abstract idea of
providing revenue to a third party organization for introducing members to
join the spatial system in accordance with targeting geographic location
criteria. Final Act 3. The Examiner finds this abstract idea is similar in
concept to that of “creating a contractual relationship,” or “comparing new
and stored information and using rules to identify options” which the Court
has identified as abstract. Id. (citing SmartGene3); see Ans. 5.
3 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014) (non-precedential).
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Application 14/134,294
Appellant contends the claims address a business challenge that is
specific to the internet. App. Br. 7. Appellant argues the internet allows
businesses to reach customers globally, but local businesses may wish to
only target local traffic. Id. Appellant argues that one cannot determine the
geographical location of a user from an analysis of the customer’s internet
contact information (e.g., email address, username), thus determining the
geographical location of an internet user is a problem that is unique to the
internet, in analogy to the claims at issue in DDR Holdings.4 Reply Br. 2.
Appellant further argues that, similar to Enfish,5 the claims improve a
database on a server. Id.
The Examiner finds the claims do no more than collect, store, display,
and compare data, on a generic computer, in furtherance of the fundamental
economic practice of advertising to and incentivizing customers. Final Act.
7; Ans. 12, 15. The Examiner further finds the method claims do not purport
to improve the functioning of the computer itself, nor do they effect an
improvement in any other technology or technical field. Final Act. 7; Ans.
12, 15. Appellant argues the claims improve a database by “registering each
member with the spatial marketplace and entering a physical address
defining a geographic region via an Internet browser upon registration to
derive a spatial identifier that is stored in the membership database, the
spatial identifier comprising a set of coordinates that define a three-
dimensional location.” Reply Br. 3 (analogizing the claims to those of
Enfish).
4 DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Application 14/134,294
In Enfish, the Court found the claims were not simply directed to any
form of storing tabular data, but instead are specifically directed to a self-
referential table for a computer database. Enfish, 822 F.3d at 1337.
However, in contrast to Enfish, Appellant, here, characterizes the data that is
gathered into the database, but fails to characterize any improvement in the
database, per se. Appellant fails to persuade us that the claims are not
directed to an abstract idea.
Alice Step 2.
Where, as here, the claims are found to be “directed to” a patent-
ineligible concept, we then “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298,
1297). This analysis has been characterized as the search for an “inventive
concept”— something sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. (quoting Mayo, 132 S.
Ct. at 1294).
Appellant contends that, as discussed in the Appeal Brief, electronic
marketing via the Internet provides rapid and economical access to large
numbers of prospective customers, but, that a notable disadvantage of the
Internet, i.e., an Internet-centric problem, is that it does not provide a means
for effectively identifying and targeting local customers based on geographic
location and therefore does not provide a suitable marketing opportunity for
businesses relying on a local customer base. Reply Br. 4. Appellant argues
the claimed method improves an existing technological process by making it
possible to target only users in a specific geographic location. Id.
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Appellant argues the claims “register[] each member with the spatial
marketplace and entering a physical address defining a geographic region
via an Internet browser upon registration to derive a spatial identifier that is
stored in the membership database, the spatial identifier comprising a set of
coordinates that define a three-dimensional location.” Reply Br. 3
Appellant describes information. Information, per se, is an intangible.
See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007).
Accordingly, the courts treat “collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). The claims do not
require a new source or type of information, nor new techniques for
analyzing it, nor any arguably inventive programming. See Elec. Power,
830 F.3d, at 1355. We are not persuaded the claims require significantly
more so as to be removed from the ambit of abstract ideas. We, therefore,
sustain the rejection of Claims 1 and 2 under 35 U.S.C. § 101.
DECISION
The rejection of Claims 1 and 2 under 35 U.S.C. § 101 is
AFFIRMED.
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.
§ 1.136(a)(l)(iv).
AFFIRMED
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