Ex Parte Lemphers et al

Patent Trial and Appeal Board

Jun 29, 2018

13830666 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/830,666 03/14/2013
909 7590 07/03/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
David Jonathan LEMPHERS
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.
034250-0437003 2389
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JONATHAN LEMPHERS, MATTHEW MATEY,
CHRISTOPHER COUHAULT, and ALEXANDROS SUV ACIOGLU 1
Appeal2017-003612
Application 13/830,666
Technology Center 3600
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
HUNG H. BUI, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 25-50. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as RetailMeNot, Inc., of
Austin, Texas.
Appeal2017-003612
Application 13/830,666
STATEMENT OF THE CASE
Appellants' invention is directed to "the field of online shopping, data
manipulation, and publication of online deals and coupons." (Spec. i-f 1 ).
Independent claim 25, reproduced below, is exemplary of the subject
matter on appeal.
25. A method, comprising:
obtaining, by one or more processors, deal content from a
plurality of deal providers, the deal content from each deal
provider including a plurality of deals or coupons, each deal or
coupon being described in the respective deal content by a
corresponding record having a plurality of fields of information,
including a text description of the respective deal or coupon and
an affiliate link corresponding to the deal provider from which
the respective deal or coupon was obtained;
for each deal provider, for each deal or coupon from the
respective deal provider, calculating, by one or more
processors, a corresponding hash code based on two or more of
the fields of information in the record corresponding to the
respective deal or coupon from the respective deal provider;
matching, by one or more processors, deals or coupons
from different deal providers by determining that the matched
deals or coupons have identical hash codes, the matching
producing groups of duplicate deals or coupons from different
deal providers and the same respective advertiser, wherein at
least some of the groups of duplicate deals or coupons contain
matched deals or coupons that are described differently, at least
in part, by corresponding records from the different deal
providers;
for each group of duplicate deals or coupons, scoring, by
one or more processors, the deals or coupons in the respective
group of duplicate deals or coupons based, at least in part, on
compensation terms offered by the deal provider from which
the respective deal or coupon was received;
for each group of duplicate deals or coupons, selecting,
by one or more processors, a deal or coupon within the group of
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duplicate deals or coupons based, at least in part, on the score of
the selected deal or coupon relative to the scores of other deals
or coupons in the respective group of duplicate deals or
coupons; and
designating, by one or more processors, the affiliate link
of the selected deal or coupon in memory for distribution to
consumers in place of affiliate links of unselected deals
coupons in each group of duplicate deals or coupons.
REFERENCES and REJECTIONS
The Examiner rejected claims 25-50 under 35 U.S.C. § 112 (a) or 35
U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
The Examiner rejected claims 25-50 under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
The Examiner rejected claims 25, 26, 32, 34--39, 45, and 47-50 under
35 U.S.C. § 103(a) based upon the teachings of Pastusiak (US 2006/0129501
Al; June 15, 2006), Tollinger (US 2010/0088166 Al; Apr. 8, 2010), and
Anavi (US 2001/0034644 Al; Oct. 25, 2001).
The Examiner rejected claims 27-31 and 40-44 under 35 U.S.C.
103(a) based upon the teachings Pastusiak, Tollinger, Anavi, and Davies
(US 2007/0129997 Al; June 7, 2007).
The Examiner rejected claims 33 and 46 under 35 U.S.C. 103(a) based
upon the teachings Pastusiak, Tollinger, Anavi, and Ramachandran (WO
2003/044711 Al; May 30, 2003).
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ANALYSIS
Rejection under 35 U.S.C. § 112
The Examiner finds "claims 25 and 38 recite, 'Calculating a
corresponding hash code based on two or more of the fields of information,'
and claims 27-33, and 40-46 recite, 'calculating the hash code,' but do not
recite how a corresponding hash code and the hash code are being
calculated" (Final Act. 3). Thus, the Examiner asserts the "specification
does not explicitly provide a description, equation, or table on how the hash
code is generated" (id.). The Examiner's Answer asserts Appellants'
Specification states the hash code is "generated" which is different from
calculating (Ans. 9-10).
Appellants contend the Examiner erred as hash codes are the result of
a calculation (the 'term 'hash code' necessarily connotes 'calculating"')
(App. Br. 12). We agree.
As Appellants allude, many different algorithms are used to generate
hash codes (for coupons or other various reasons) using a cryptographic
function (there are standard hash functions). We also agree, in this instance,
generating a hash code and calculating a hash code are synonymous, and
Appellants' Specification does explain how a hash code is generated for
each deal or coupon (see Spec.i-fi-f 57-59; App. Br. 13 (Fonar Corp. v. Gen.
Elec. Co., 107 F.3d 1543, 1549, (Fed. Cir. 1997) "As a general rule, ... flow
charts or source code listings are not a requirement for adequately disclosing
the functions of software."). Further, we note "what is conventional or well
known to one of ordinary skill in the art need not be disclosed in detail
(see Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384
(Fed. Cir. 1986); see also Capon v. Eshhar, 418 F.3d 1349, 1357, (Fed. Cir.
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2005) "The 'written description' requirement must be applied in the context
of the particular invention and the state of the knowledge .... As each field
evolves, the balance also evolves between what is known and what is added
by each inventive contribution.").
We, therefore, find there is written description support for the scope
of the claims and do not sustain the Examiner's rejection of claims 25-50
under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 1 OJ
Appellants contend the Examiner erred in finding the subject matter of
claims 25-50 are patent-ineligible under 35 U.S.C. § 101 for the reasons
that: the Examiner has not established a prima facie case of ineligibility
(App. Br. 5); the Examiner does not correctly identify the subject matter of
the claims (App. Br. 6); the claims are not directed to a fundamental
economic practice (App. Br. 1 O); the claims are directed to an improvement
in computer functionality (App. Br. 7); and the claimed solution is rooted in
computer technology (App.Br. 11). We do not agree.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[w]e must first determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Alice, 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible
concept, the second step in the analysis considers 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
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patent-eligible application." Id. (citing Mayo, 566 U.S. at 78-79). In other
words, the second step "search[ es] 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. (citing Mayo, 566 U.S. at 72-73
Initially we note claims 25-50 are argued together, thus we chose
independent claim 25 for our analysis.
The Examiner finds the claims are directed to "non-statutory subject
matter because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea ... of selecting a deal content which is considered a
fundamental economic practice" (Final Act. 4). The Examiner states the
claims are directed to "selecting a deal content, obtaining deal content from
a plurality of deal providers, calculating a corresponding hash code on two
or more fields ... , matching deals ... by determining that the matched deals
... has identical hash codes, scoring the deals ... , selecting a deal" (Ans.
3--4, citing SmartGene, Cyberfone, and Ultramercial). Thus, we find the
Examiner has correctly identified the invention and has provided a prima
facie case under 35 U.S.C. § 132, which sets forth a general notice
requirement whereby Appellants are notified of the reasons for a rejection
together with such information as may be useful in judging the propriety of
continuing with prosecution of the application (see, e.g., In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011); see also July 2015 Update 6 (setting forth
a general notice requirement whereby the Examiner should "clearly
articulat[ e] the reason( s) why the claimed invention is not eligible" when
rejecting on under 35 U.S.C. § 101); May 2016 Memorandum 2 ("the
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rejection ... must provide an explanation ... which [is] sufficiently clear
and specific to provide applicant sufficient notice of the reasons for
ineligibility.")). In this case, we find the Examiner has provided an adequate
explanation to meet the notice requirement.
We also disagree with Appellants that the claims are not directed to a
fundamental economic practice (App. Br. 10). We agree with the Examiner
that selecting a coupon and presenting it to a user to redeem is a fundamental
economic practice (Ans. 8). Additionally, we also agree the claims can be
performed between people (id.).
Appellants' claims are also not necessarily rooted in computer
technology (App. Br. 11-12). Rather, as the Examiner finds, matching
duplicate deals is similar to performing repetitive calculation on data, which
can also be done using pen and paper (Ans. 8).
Because we agree with the Examiner that the claims are directed to
selecting deal content (i.e., a fundamental economic practice) (see Final Act.
4), the claims at issue are directed to an abstract idea.
We now tum to the second step of the Alice framework:
Contrary to Appellants' contentions, we find the claims do not
improve the computer's functionality (App. Br. 7-10). As the Examiner
asserts, and we agree, the computer is routine and conventional and the
claims do not add any "meaningful limitations that amount to more than
generally linking the use of the exception to a particular technological
problem" (Ans. 5-7). Further, Appellants' Specification and claims describe
generic computing elements performing generic computing functions (Ans.
5, citing Appellants' Specification i-fi-138, 39, 41 (nothing more than generic
computer devices disclosed)).
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For the above reasons, we sustain the Examiner's rejection of claims
25-50 as directed to non-statutory subject matter under 35 U.S.C. § 101.
Rejection under 35 U.S.C. 103
The Examiner finds Pastusiak teaches most of the claim limitations,
except "Pastusiak does not explicitly teach that coupons are matched by
determining that they have identical hash codes. However, Tollinger, in
paragraph [0005], teaches that coupons are matches[ sic] together according
to certain features" (Final Act. 7-11). The Examiner then finds "Pastusiak
and Tollinger do not teach an affiliate link corresponding to the deal
provider" and designating the affiliate link of the selected deal for
distribution, but relies on Ana vi for these limitations (Final Act. 11 ).
Appellants contend Tollinger teaches matching coupon requested
coupon content to a plurality of coupons in a database, and not to a plurality
of duplicate coupons as claimed (App. Br. 13). That is, Appellants assert,
"Tollinger's matching is to a user query, not between duplicate coupons,"
which is not the same as matching deals or coupons from different deal
providers and the same advertiser as claimed (id.). Appellants also assert
Tollinger does not teach "determining that the matched deals or coupons
have identical hash codes" (id.).
The Examiner, in the Answer, explains Pastusiak was used to teach
codes assigned to a coupon and Tollinger was used to teach duplicate deals
of coupons (Ans. 10). We do not agree.
As Appellants assert in the Reply Brief, even with the Examiner's
newly added citations and explanation, Pastusiak discloses a "system that
stores cryptographic signatures of 'tokens' for security reasons in the form
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of hash values" and therefore, the "'coupons that are described differently'
would generate different hash values, which would not match" (Reply Br.
10-11). We also agree with Appellants that Tollinger does not cure this
deficiency (id.) nor does Ana vi.
Thus, we conclude the collective teachings of Pastusiak, Tollinger,
and Ana vi, do not render obvious Appellants claimed invention. We
therefore, do not sustain the Examiner's rejection of claims 25-50 under 35
U.S.C. § 103.
DECISION
The Examiner's decision rejecting claims 25-50 under 35 U.S.C.
§ 112 is reversed.
The Examiner's decision rejecting claims 25-50 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's decision rejecting claims 25-50 under 35 U.S.C.
§ 103 is reversed.
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).
AFFIRMED
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