Ex Parte Lewis et al

Patent Trial and Appeal Board

Apr 27, 2017

10430479 (P.T.A.B. Apr. 27, 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.
10/430,479 05/06/2003 Harry R. Lewis BLD920030014US1 3806
50441 7590 05/01/2017
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
docketing @ dbflaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY R. LEWIS and STEVEN M. GEBERT
Appeal 2015-0042741
Application 10/430,479
Technology Center 3600
Before JAMES A. WORTH, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL2
The Appellants3 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 66—89. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 We note that the Appellants did not discuss whether there are any related
appeals.
2 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Aug. 22, 2014), Reply Brief (“Reply Br.,” filed Feb. 26,
2015), and Specification (“Spec.,” filed May 6, 2003), and to the Examiner’s
Answer (“Ans.,” mailed Dec. 26, 2014) and Final Office Action (“Final
Act.,” mailed Feb. 24, 2014).
3 According to the Appellants, the real party in interest is Ricoh Company
Ltd. Appeal Br. 3.
Appeal 2015-004274
Application 10/430,479
STATEMENT OF THE CASE
The Appellants’ “invention relates to providing advertisements, and
more particularly to providing advertisements to users needing printing or
other output services for information.” Spec. 1.
Claims 66, 74, and 82 are the independent claims on appeal. Claims
66 and 82 are illustrative of the subject matter on appeal and are reproduced
below (with bracketing added for reference):
66. A method for including advertisements along with
print jobs for customers in a printed output, the method
comprising:
[(a)] receiving, by a printer, advertisements for a
plurality of merchants;
[(b)] receiving, by the printer, a baseline configuration
for each of the merchants that defines a starting amount that a
merchant will pay for including advertisements in a print job and
a rule for adjusting an amount that a merchant will pay for
including advertisements in a print job;
[(c)] receiving, by the printer, real-time data updates
from a merchant;
[(d)] adjusting, by the printer, the starting amount that the
merchant will pay based on the real-time data updates and the
rule for adjusting the amount that the merchant will pay;
[(e)] selecting, by the printer, an advertisement for the
merchant based on the adjustment to the starting amount that the
merchant will pay; and
[(f)] printing, by the printer, the advertisement for the
merchant and the print job for the customer to generate the
printed output.
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82. A system comprising:
a printer operable
[(a)] to receive advertisements for a plurality of
merchants,
[(b)] to receive a baseline configuration for each of the
merchants that defines a starting amount that a merchant will pay
for including advertisements in a print job and a rule for adjusting
an amount that a merchant will pay for including advertisements
in a print job, and
[(c)] to receive real-time data updates from a merchant;
the printer further operable
[(d)] to adjust the starting amount that the merchant will
pay based on the real-time data updates and the rule for adjusting
the amount that the merchant will pay,
[(e)] to select an advertisement for the merchant based on
the adjustment to the starting amount that the merchant will pay,
and
[(f)] to print the advertisement for the merchant and the
print job to generate a printed output.
Appeal Br. 15, 21 (Claims App.).
REJECTIONS
Claims 82—89 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Final Act. 3.
Claims 66, 73, 74, 81, 82, and 89 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dutta (US 6,891,635 B2, iss. May 10,
2005), Hobbs (US 2002/0082909 Al, pub. June 27, 2002), Veach
(US 2008/0167924 Al, pub. July 10, 2008), Kamel (US 2001/0014145 Al,
pub. Aug. 16, 2001), and Veach (US 2010/0293060 Al, pub. Nov. 18, 2010)
(hereafter “Veach ’060”). Id. at 4.
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Claims 67, 68, 75, 76, 83, and 84 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dutta, Hobbs, Veach, Kamel,
Veach ‘060, Chalstrom (US 2003/0234955 Al, pub. Dec. 25, 2003), and
Brackmann (US 6,714,837, iss. Mar. 30, 2004). Id. at 10.
Claims 69, 77, and 85 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dutta, Hobbs, Veach, Kamel, Veach ’060,
Chalstrom, and Marcus (US 2002/0092019 Al, pub. July 11, 2002). Id.
at 14.
Claims 70, 71, 78, 79, 86, and 87 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dutta, Hobbs, Veach, Kamel, Veach
‘060, and Stone (US 2007/0016486 Al, pub. Jan. 18, 2007). Id. at 17.
Claims 66—89 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Ans. 2
ANALYSIS
35 U.S.C. § 101 - Claims 82-894
The Examiner rejects claims 82—89 under 35 U.S.C. § 101 “since no
physical structures were included in the independent system claim 82 which
would enable a practitioner to make and use the system, the system claims
are considered to be non-statutory.” Final Act. 3.
We disagree. Claim 82 recites a system comprising a printer operable
to perform functions. Appeal Br. 21 (Claims App.). The Specification
provides that a printer device is an output device such as a printer or copier
that is in communication with a computer or electronic device, the computer
4 We address the rejections in the order presented by the Examiner in the
Final Action and subsequent Answer.
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comprising a microprocessor, input and output electronics, a data storage
device, and communication and networking components, and that runs
software to perform the tasks. Spec. 6—7. Further, the Specification
provides that the computer and printer device can be integrated into a single
unit or housing {id. at 7), and “the term ‘output device’ as used herein
generally includes the computer 14 or similar functionality” {id. at 8—9). As
such, the system of claims 82—89 comprises a structural component of a
printer that includes a computer, which would enable a practitioner to make
and use the system.
Thus, we do not sustain the Examiner’s rejection of claims 82—89
under 35 U.S.C. § 101.
35 U.S.C. § 103(a)
The Appellants argue independent claims 66, 74, and 82 as a group,
and direct the arguments to claim 82. See Appeal Br. 7. We note that
independent claims 66 and 74 recite limitations similar and parallel to the
limitations of independent claim 82. We consider claim 82 as representative
of the group consisting of claims 66, 74, and 82; claims 66 and 74 stand or
fall with claim 82. See 37 C.F.R. § 41.37 (c)(l)(iv).
After careful review of the Appellants’ Appeal and Reply Briefs, we
are not persuaded of error on the part of the Examiner for at least the reasons
below.
Limitation (c) — receiving real-time data updates
We find unpersuasive the Appellants’ arguments that the “cited art
fails to render the claim 82 limitation of a printer operable to receive real­
time data updates from a merchant [as recited in limitation (c)] obvious to
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one of ordinary skill in the art.” Appeal Br. 7 (emphases omitted); see also
id. at 8—11 and Reply Br. 4—5. The Appellants’ argument that “Dutta does
not suggest that either the web server or the printer receives real-time data
updates from a merchant” (Appeal Br. 7) is unpersuasive because it is an
argument against Dutta individually when the Examiner relies on the
combination of Dutta and Kamel for teaching the limitation. The test for
obviousness is not what any one reference would have suggested, but rather
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). The Examiner relies on Dutta for teaching a printer for printing an
advertisement whereby the printer receives data for printing (see Final Act.
4), and on Kamel for teaching receiving real-time data updates from a
merchant (see id. at 7). We find unsupported the Appellants’ arguments that
Dutta does not teach a printer that interacts with advertisers, i.e., that can
receive data from merchants. Id. Rather, we find that Dutta, at column 2,
lines 24-45, discloses a remote printing web server that interacts with
advertiser client computers, i.e., merchants, that provide to the server
advertisements to include in electronic documents, i.e., data. Thus, Dutta
teaches a printer capable of interacting with and receiving data from
merchants/advertisers.
We further find unpersuasive the Appellants’ argument that “one of
ordinary skill in the art would not be motivated to modify the printer in
Dutta to receive real-time data updates from a merchant, because the printer
in Dutta would not have a use for the data updates.” Appeal Br. 7—8.
Rather, Dutta discloses that advertisements, i.e., data received from
advertisers, i.e., merchants, are “included in appropriate electronic
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documents.” Dutta, col. 3,11. 24—30. Thus, we find supported the
Examiner’s reasoning that one of ordinary skill in the art would modify
Dutta’s printer to receive real-time updates as taught by Kamel in “order to
allow the merchant or seller [to] modify parameters or criteria associated
with the advertisement” (Final Act. 7) to be included in the “appropriate”
document.
The Appellants’ arguments that Dutta does not teach using the data to
adjust fees associated with the advertisement (Appeal Br. 7), that “it would
not be possible for the printer in Dutta to use this information [of real-time
data] to assign charges to a merchant, to select which advertisements to
include in the print job, etc.” {id. at 8), and that nothing in Dutta suggests the
printer is capable of using real-time data to adjust fees {id. at 10) are
unpersuasive at least because the Examiner relies on the combination of
Dutta, Kamel, and Veach ’060 for teaching limitations (d) and (e) of
adjusting fees based on data updates and selecting advertisements.
Furthermore, the feature of “assigning charges” is not recited in the claim
and is not commensurate with the scope of the claim. Moreover, the
Appellants’ statement that “it would not be possible in Dutta” is an attorney
argument that is not factually supported. Rather, Dutta discloses a printer
web server with software for handling the functions. Dutta, col. 3,11. 35—36.
The Appellants do not provide persuasive evidence that Dutta’s software
could not be modified to perform other functions, i.e., that this would not be
possible for Dutta’s printer, that Dutta’s printer would not be capable of
performing other functions, and that modifying Dutta’s printer to adjust
amounts would render Dutta’s printer inoperable for Dutta’s purpose of
providing advertisements in a printout {id., Abstract).
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We also find unpersuasive the Appellants’ argument that Kamel is
non-analogous art. Appeal Br. 8—9. The Appellants appear to state that the
field of endeavor is “printing.” Id. at 9. We disagree. The Specification
provides that the invention related to “providing advertisements” (Spec. 1)
and provides for “an apparatus and method for including advertisements in
output tasks” {id. at 3; see also Reply Br. 5). Thus, the field of endeavor for
the invention is “providing advertisements.” Kamel is similarly directed to
“deliver[ing] highly targeted advertisements and promotional messages to
groups and/or individuals” to output, such as video-phones. Kamel 129. As
such, Kamel is within the same field of endeavor as the Appellants’
invention and is analogous art.
We further find unpersuasive the Appellants’ argument that the
Examiner fails to provide “logical argument as to why one of ordinary skill
in the art would modify the printer in Dutta to receive real-time data
updates.” Appeal Br. 10; see also Reply Br. 4—5. The Appellants do not
provide adequate evidence or technical reasoning explaining why the
Examiner’s reason for combining (discussed above) is in error. Rather, we
agree with the Examiner that a person of ordinary skill would have been
motivated to modify parameters as necessary to provide up to date
information. See Final Act. 7 (“For example, an advertiser can change the
quoted promotional price or other terms in response to observed campaign
results”).
Limitation (d) — adjusting the starting amount
We find unpersuasive the Appellants’ arguments that limitation (d) of
adjusting the starting amount a merchant will pay based on the real-time data
and rule for adjusting “is not obvious to one of ordinary skill in the art.”
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Appeal Br. 11; see also id. at 12 and Reply Br. 6. As discussed above, the
Appellants do not provide persuasive evidence that the printer in Dutta
“would be unable” to perform the function of adjusting the amount and that
the modification to the software of Dutta would render the printer
inoperable. See Appeal Br. 11, 12; see also Reply Br. 6. Moreover, the
Appellants’ argument that “the printer in Dutta would not be able to
determine whether or not the combined document included ads from
advertiser A” (Appeal Br. 11, see also id. at 12) is not commensurate with
the scope of the claim; claim 82 recites selecting an ad based on the
adjustment, but does not require that the printer determine whether the
document included ads from the merchant. Appeal Br. 21.
Further, we find unpersuasive the Appellants’ argument that Dutta
does not teach the printer adjusting the amount because it is an argument
against Dutta individually when the Examiner relies on the combination of
Dutta, Kamel, and Veach ‘060 for teaching the limitation. As discussed
above, the Examiner relies on Dutta for teaching a printer for printing an
advertisement whereby the printer receives data for printing and on Kamel
for teaching receiving real-time data updates from a merchant. See Final
Act. 4, 7. The Examiner relies on Veach ’060 for teaching adjusting the
starting amount based on real-time data and the rule. Id. at 8. The
Appellants do not provide adequate evidence or technical reasoning why the
Examiner’s above findings are in error.
Similar to the argument above regarding limitation (c), we find
unpersuasive the Appellants’ argument that “[i]f the printer in Dutta is
modified in view of Veach ‘060 to accept bids and/or price changes for
advertisements, the printer in Dutta would not be able to use this information
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in any meaningful way” (Mat 12), because Dutta discloses that
advertisements, i.e., data received from advertisers, i.e., merchants, are
“included in appropriate electronic documents,” and that the advertiser uses
payment software to pay the owner of the printer server. Dutta, col. 3,
11. 24—30, 54—59. Thus, we find supported the Examiner’s reasoning that
one of ordinary skill in the art would modify Dutta’s printer to adjust the
amount the merchant would pay “in order to analyze and determine which
advertisements to present [in the appropriate document] based on the
modification of parameters or criteria.” Final Act. 8.
Based on the foregoing, we are not persuaded that the Examiner erred
in the rejection of claim 82 under 35 U.S.C. § 103. Therefore, we sustain
the rejection of independent claim 82 and claims 66 and 74, which fall with
claim 82. The Appellants provide no separate arguments for the rejections
of dependent claims 67—73, 75—81, and 83—89, but rely on their dependency
on the independent claims. Appeal Br. 12. Thus, we sustain the rejections
of dependent claims 67—73, 75—81, and 83—89 for the same reasons as for
the independent claims.
35 U.S.C. § 101 - Claims 66-89
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 Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
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Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., 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 Corp., 134 S. Ct. at 2355.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If so, the second
step is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether the additional elements
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to
“search 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.
(alteration in original) (citing Mayo, 132 S. Ct. at 1294). The Court
acknowledged in Mayo, that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo, 132 S. Ct. at 1293. 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.
Here, the Examiner rejects claims 66—89 as being directed to an
abstract idea, non-statutory subject matter under § 101. Ans. 5. The
Examiner finds that independent claim 66 (and dependent claims 67—73) is
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directed to the abstract idea of “managing and including advertisements in a
printed output associated with a print job received from a customer for the
purpose of enhancing revenue and increasing customer awareness of a
merchant’s products or services and promotions,” a fundamental economic
practice and method of organizing human activities. Id. The Examiner
further finds that the additional elements of the claims, individually or in
combination, are not “significantly more” than the abstract idea because they
are a mere instruction to apply the abstract idea[,] . . . there is no
improvement to another technology or technical field, no
improvements to the functioning of the computer itself, and no
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technical environment, and the claims
require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional.
Id. at 5—6. The Examiner finds that the same analysis applies to the medium
and system claims 74 and 82, and their dependent claims, because the
components “add nothing of substance to the underlying abstract idea.” Id.
at 6.
The Appellants contend the rejection is in error because the claims
“do not encompass a universally applicable abstract idea on par with a
fundamental economic practice, but rather describe a concrete set of actions
that are performed by a printer to decide which advertisements to include in
a printed output.” Reply Br. 3; see also Appeal Br. 13.
We find unpersuasive the Appellants’ arguments that the claims pass
the first part of the Alice test because “precisely defined limitations [] cover
a patent-eligible concept, and does not preempt a wide swath of
technological development, nor does it stifle progress in its field.” Reply Br.
3; see also Appeal Br. 13—14. To the extent the Appellants argue that the
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claims are not directed to the abstract idea of managing and including
advertisements in an output (see Reply Br. 3), we disagree. Independent
claims 66, 74, and 82 recite the steps or functions of presenting receiving
data of advertisements, a starting amount and a rule, and updates, adjusting
the starting amount, selecting an advertisement, and printing the
advertisement. Appeal Br. 15 (Claims App.). Further, according to the
Specification, the invention relates to “providing advertisements to users
needing printing or other output services of information.” Spec. 1. In that
context, we agree with the Examiner that the claims are directed to claims
are directed to managing and including advertisements in an output.
Our reviewing courts have held certain fundamental economic and
conventional business practices, such as using advertisement as currency
{see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713—14 (Fed.Cir.2014)),
intermediated settlement {see Alice, 134 S. Ct. at 2356—57), tailoring
information presented to a user based on particular information {see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015); see also Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)), and determining a
price {see Versata Development Group, Inc. v. SAP America Inc., 793 F.3d
1306, 1333 (Fed. Cir. 2015)), as being abstract ideas. The managing and
including of advertisements in an output of claims 66, 74, and 82 is similar
to these abstract ideas, and thus, we determine that claims 66, 74, and 82
(and their dependents) are directed to an abstract idea.
We also find unpersuasive the Appellants’ arguments that the claims
pass the second part of the analysis in that they add limitations that are
significantly more than the abstract idea. See Reply Br. 4; see also Appeal
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Br. 14. The Appellants’ “concrete” actions of receiving data and selecting
advertisements based on the data do not address a technological problem and
are not technological improvements. Rather, they are steps that further
elaborate on the abstract idea of managing and providing advertisements.
Any general purpose computer available at the time the application was filed
would have been able to perform the functions of claim 66. The
Specification supports this view. See Spec. 6, 7, Fig. 1 (discussing the
printer as including a computer or electronic device with “well-known
components”). The Appellants’ argument that the concept “alters the
technological process of printers” (Appeal Br. 14) is unpersuasive because
the Appellants do not provide adequate evidence or technical reasoning how
the steps change the technology of printers or improve the functioning of the
printer itself. Similarly, independent apparatus claim 74 recites a medium
causing a generic processor to perform the method of claim 66, and
independent apparatus claim 82 recites a system comprising a printer, i.e.,
generic computer, to perform the method of claim 66. The introduction of a
computer to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357—58. The computer implementation
here is purely conventional and performs basic functions. See id. at 2359-
60. The 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. See id. at 2359.
We also find unpersuasive the Appellants’ argument that the claims
do not preempt the “whole concept recited by the Examiner.” Reply Br. 4;
see also Appeal Br. 13—14. While pre-emption “might tend to impede
innovation more than it would tend to promote it, ‘thereby thwarting the
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primary object of the patent laws’” {Alice, 134 S. Ct. at 2354 {quoting Mayo,
132 S. Ct. at 1293)), “the absence of complete preemption does not
demonstrate patent eligibility” {Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2511, 195 L.
Ed. 2d 841 (2016); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir.), cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Based on the foregoing, we are not persuaded that the Examiner erred
in the rejection of claims 66—89 under 35 U.S.C. § 101. For similar reasons,
we sustain the rejection of independent claims 66, 74, and 82 and of
dependent claims 67—73, 75—81, and 83—89.
DECISION
The Examiner’s decision to reject claims 66—89 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)(l)(iv).
AFFIRMED
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