Ex Parte Lutnick

Patent Trial and Appeal Board

Aug 3, 2018

11616756 (P.T.A.B. Aug. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/616,756 12/27/2006
63710 7590 08/07/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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.
06-2049 3044
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/07/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD W. LUTNICK
Appeal2017-002837
Application 11/616,756
Technology Center 3600
Before JOHN A. JEFFERY, JOHN D. HAMANN, and MATTHEW J.
McNEILL, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 2, 4, 5, 50-53, and 60-68. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to purchasing a particular product or
service automatically based on reviews rating the quality of the product or
service. See generally Spec. ,r,r 505-515; Figs. 2, 4. Claim 1 is illustrative:
1 Appellant identifies the real party in interest as CFPH, LLC. App. Br. 3.
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Application 11/616,756
1. A handheld device for tailoring customer reviews to a
specific user, the handheld device comprising:
a query processor capable of receiving a query regarding
a group of targets,
in which the query is submitted by a user; and
in which each target comprises at least one of a product, a
service, a service provider and a merchant;
a retrieval processor capable of:
retrieving a plurality of reports that comprise at least
one report for each target in the group,
in which each of the plurality of reports comprises
a rating that corresponds to its respective quality;
a filtering processor for processing a request to filter
the plurality of reports in accordance to a relationship
between the user and each reviewer; and applying a filter
to the plurality of reports, in which the filter removes any
reports that are written by reviewers who do not have the
relationship with the user;
generate, in response to applying the filter, a set of
reports from the plurality of reports;
determine from the set of reports that a particular target
has a highest rating;
transmit a recommendation to purchase the particular
target;
automatically purchasing the particular target on behalf of
the user; and
transmit an indication that the particular target has been
purchased.
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THE REJECTIONS
The Examiner rejected claim 12 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2. 3
The Examiner rejected claims 1, 2, 4, 5, 50-53, and 60-68 under 35
U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 3--4.
The Examiner rejected claims 1 and 60-68 under 35 U.S.C. § 103 as
unpatentable over Ahn (US 2006/0271281 Al; publ. Nov. 30, 2006), Das
(US 2003/0023499 Al; publ. Jan. 30, 2003), and Horvitz (US 2004/0076936
Al; publ. Apr. 22, 2004). Final Act. 5-7.
The Examiner rejected claims 2, 4, and 5 under 35 U.S.C. § 103 as
unpatentable over Ahn, Das, Horvitz, and Calabria (US 2008/0195480 Al;
publ. Aug. 14, 2008). Final Act. 7-8.
The Examiner rejected claims 50 and 51 under 35 U.S.C. § 103 as
unpatentable over Ahn, Das, Horvitz, and Holden (US 2006/0167757 Al;
pub 1. July 27, 2006). Final Act. 8.
The Examiner rejected claims 52 and 53 under 35 U.S.C. § 103 as
unpatentable over Ahn, Das, Horvitz, and Drosset (US 6,662,231 B 1; iss.
Dec. 9, 2003). Final Act. 9.
2 Although the Examiner rejects only independent claim 1 as failing to
comply with the written description requirement, the dependent claims are
apparently also subject to this rejection despite their omission from the
rejection. See Final Act. 2. Nevertheless, we address only claim 1
consistent with the Examiner's rejection.
3 Throughout this Opinion, we refer to (1) the Final Office Action mailed
August 4, 2015 ("Final Act."); (2) the Appeal Brief filed September 7, 2016
("App. Br."); (3) the Examiner's Answer mailed October 14, 2016 ("Ans.");
and (4) the Reply Brief filed December 14, 2016 ("Reply Br.").
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THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that the recited query processor, retrieval
processor, and filtering processor are unsupported in the Specification that
only supports a generic processor. Final Act. 2; Ans. 3. As such,
independent claim 1 is said to not comply with the written description
requirement. Final Act. 2; Ans. 3.
Appellant argues that because it is undisputed that ordinarily skilled
artisans would understand that ( 1) Appellant possessed the recited querying,
retrieving, and filtering functions, and (2) the Specification supports using
multiple processors to execute associated instructions, ordinarily skilled
artisans would understand that Appellant possessed the three recited
processors despite the Specification lacking the processors' specific labels
recited in the claim. App. Br. 5---6; Reply Br. 2.
ISSUE
Has the Examiner erred in rejecting claim 1 by finding that the three
recited processors are unsupported in the Specification? This issue turns on
whether Appellant's original disclosure reasonably conveys to ordinarily
skilled artisans that Appellant possessed these processors and their
associated functionality when the application was filed.
ANALYSIS
It is well settled that to satisfy the written description requirement, the
disclosure must reasonably convey to skilled artisans that Appellant
possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
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That is the case here. As Appellant indicates (Reply Br. 2), it is
undisputed that ordinarily skilled artisans would understand that Appellant
possessed the recited querying, retrieving, and filtering functions, where
those functions are performed by a computing device. See App. Br. 3--4
(citing Spec. ,r,r 464--481, 505-515 4 in connection with these limitations in
the Briefs Summary of Claimed Subject Matter section).
Given these undisputed facts, along with the fact that various aspects
of the invention are executable by one or more processors, and may be
distributed among one or more computer systems as noted in the
Specification's paragraph 471, skilled artisans would reasonably understand
that Appellant possessed the three recited processors despite the
Specification lacking the processors' specific labels recited in the claim. See
also Spec. ,r,r 465, 579-580 (defining a "processor," in pertinent part, as one
or more processors). Accord App. Br. 5-6; Reply Br. 2.
That Appellant chooses to label the three recited processors consistent
with their respective functions is of no consequence here, despite
Appellant's acknowledgement that these particular labels do not appear in
the Specification. See Reply Br. 2. Not only are these labels consistent with
the functions for which Appellant had possession when the application was
filed as noted previously, but it is also well settled that Appellant can be his
own lexicographer particularly where, as here, the term "processor" does not
depart from its ordinary customary meaning in the art, and the terms
4 Although Appellant refers to these passages by page and line number (see,
e.g., App. Br. 3--4, 6), we nonetheless refer to these and other passages from
the Specification by their corresponding paragraph numbers for consistency
with the Specification's format.
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"query," "retrieval," and "filtering" merely refer to the processors'
respective recited functions. See Multiform Desiccants Inc. v. Medzam, Ltd.,
133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008). That the
Examiner acknowledges that these processor labels "add[] little, if anything,
to the claimed acts or steps" (Final Act. 5---6) only further underscores that
ordinarily skilled artisans would understand that the recited labeled
processors are reasonably supported by the original disclosure.
Therefore, we are persuaded that the Examiner's written description
rejection of independent claim 1 is erroneous.
THE INELIGIBILITY REJECTION
The Examiner finds that the claimed invention is directed to an
abstract idea, namely selecting a product to be purchased based on product
reviews. 5 See Final Act. 3. According to the Examiner, the recited
limitations merely compare new and stored information, use rules to identify
options, and display information. Id. The Examiner adds that the claimed
elements do not add significantly more to the abstract idea because, among
other things, the claims do not recite ( 1) an improvement to another
technology or field, (2) an improvement to the functioning of the computer
5 Notably, the Examiner finds that selecting a product to be purchased based
on product reviews uses the abstract ideas of ( 1) retrieving reports that
match a target, (2) filtering the reports based on a relationship between the
user and each reviewer, and (3) determining that a particular target has a
highest rating. Final Act. 3; Ans. 3--4. Nevertheless, we interpret-as does
Appellant (App. Br. 7; Reply Br. 3}-the Examiner's finding that the claims
are directed, more broadly, to the abstract idea of selecting a product to be
purchased based on product reviews.
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itself, or (3) meaningful limitations beyond generally linking using an
abstract idea to a particular technological environment. Final Act. 4.
According to the Examiner, the recited limitations are well-known, routine,
and conventional practices that require no more than a generic computer to
perform basic generic computer functions. Final Act. 3--4; Ans. 4. Based on
these findings, the Examiner concludes that the claims are ineligible under
§ 101.
Appellants argue, among other things, that the Examiner failed to
make a prima facie case of ineligibility by not providing evidence that the
recited limitations are (1) purely conventional, or (2) amount to nothing
more than requiring a generic computer to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the industry. App. Br. 7. According to Appellant, such
factual findings require substantial evidence in the form of references to
prior art showings that the recited limitations are well-understood, routine,
and conventional activities previously known to the industry. Id. Because
the Examiner is said to have provided no such evidence, Appellant contends
that the Examiner failed to meet the requisite burden of proof to establish a
prima facie case of ineligibility. Reply Br. 2--4.
ISSUE
Has the Examiner erred in rejecting claims 1, 2, 4, 5, 50-53, and
60-68 by concluding that they are directed to ineligible subject matter under
§ 101? This issue turns on whether the claimed invention is directed to a
patent-ineligible abstract idea and, if so, whether the claim's elements-
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considered individually and as an ordered combination-transform the
nature of the claim into a patent-eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of
nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so, we
then proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we find that the claimed invention is directed
to an abstract idea, namely purchasing a particular product or service based
on associated recommendations-a fundamental buying decision that is
informed by others' opinions of the quality of those products and services.
Independent claim 1 recites a handheld device comprising, in
pertinent part, ( 1) a query processor capable of receiving a query regarding a
group of "targets," namely products, services, service providers, and/or
merchants; (2) a retrieval processor capable of retrieving "reports"6 with a
6 Appellant's Specification defines "report," quite broadly, as "any
information concerning one or more products, services, merchants [and/or]
service providers." Spec. ,r 441 ( emphasis added).
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quality rating for each target in the group; (3) and a filtering processor that
can, among other things, filter the reports according to a relationship
between the user and each reviewer. According to the Specification's
paragraph 498, this relationship may include, for example, friends, family,
contacts, acquaintances, neighbors, and colleagues. See also claim 68
(reciting six different relationship types).
Claim 1 further recites that the filter is applied to the reports to
remove reports written by reviewers who do not have the recited relationship
with the user and, responsive to this filtering, a set of reports is generated
from which the highest-rated target is determined. Claim 1 also recites
(1) transmitting a recommendation to purchase this particular target,
(2) purchasing the particular target automatically on the user's behalf, and
(3) transmitting an indication that this target was purchased.
In essence, the claimed invention is directed to buying the highest-
rated product or service based on ratings from reviewers who have a certain
relationship with the user. Such fundamental economic and business
practices are often held to be abstract. See, e.g., Alice, 134 S. Ct. at 2356
(holding the concept of intermediated settlement is an abstract idea directed
to a "fundamental economic practice long prevalent in our system of
commerce") (internal quotations and citation omitted); see also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir. 2014) (citing cases
where contractual relations at issue constituted fundamental economic
practices, and noting that forming or manipulating economic relations may
involve an abstract idea); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining
that claims directed to "the mere formation and manipulation of economic
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relations" and "the performance of certain financial transactions" have been
held to involve abstract ideas).
That Appellant's claimed invention generates reports based on filtered
reports with ratings from reviewers who have a certain relationship with the
user is of no material consequence here, for it is well settled that
customizing information based on information known about a user is still an
abstract idea, as is filtering content. See Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); see also
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016) ("[F]iltering content is an abstract idea because
it is a longstanding, well-known method of organizing human behavior,
similar to concepts previously found to be abstract").
Therefore, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Alice Step Two
We are, however, persuaded of error in the Examiner's findings
regarding the second step of the Alice test, namely whether the recited
elements----considered individually and as an ordered combination-
transform the nature of claim 1 into a patent-eligible application of the
abstract idea to ensure that the claim amounts to significantly more than that
idea. See Alice, 134 S. Ct. at 2357.
According to the Examiner, the recited limitations are well-known,
routine, and conventional practices that require no more than a generic
computer to perform basic generic computer functions. Final Act. 3--4; Ans.
4. Appellant, however, argues that the Examiner provided no supporting
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evidence in this regard, and, therefore, failed to meet the requisite burden of
proof to establish a prima facie case of ineligibility. Reply Br. 2--4. In
responding to this argument, the Examiner finds that Appellant does not
explain why any specific limitations of the claimed invention are not purely
conventional. Ans. 3.
But, as Appellant indicates, it is not Appellant's burden to show that
the recited limitations are not well-understood, routine, and conventional
where, as here, the Examiner makes no specific factual findings in
that regard. See Reply Br. 2-3. Rather, it is the Examiner's burden to
show-with supporting facts-that the recited limitations are well-
understood, routine, and conventional where, as here, the Examiner relies on
such a basis for the ineligibility rejection. See Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination"). Because the Examiner failed to meet this burden,
the Examiner did not establish a prima facie case of ineligibility as
Appellant indicates. App. Br. 7; Reply Br. 2-3.
The prima facie case is a procedural tool of patent examination,
allocating the respective burdens between the Examiner and an applicant. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). First, the Examiner bears
the initial burden of presenting a prima facie case ofunpatentability. Id.
(citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)). If the
Examiner meets that burden, the burden then shifts to the applicant to rebut
the prima facie case with evidence or argument. Oetiker, 977 F.2d at 1445.
Then, patentability is determined on the totality of the record by a
preponderance of evidence with due consideration of persuasiveness of
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argument. Id. Accord MANUAL OF p ATENT EXAMINING PROCEDURE (MPEP)
§ 2106.07 (9th ed. Rev. 08.2017, Jan. 2018) (noting that the initial burden of
establishing a prima facie case of ineligibility under § 101 is on the
Examiner to explain clearly and specifically why claims are ineligible, so
that the applicant has sufficient notice and can respond effectively).
Here, the Examiner did not satisfy the initial burden of establishing a
prima facie case of ineligibility under § 101 by providing the requisite
factual support for limitations that are said to be well-understood, routine,
and conventional; consequently, the burden never shifted to Appellant to
rebut that case. Accord Reply Br. 2-3. But had the Examiner satisfied this
initial burden, the burden would have then shifted to Appellant to rebut those
findings with evidence or argument. See Oetiker, 977 F.2d at 1445. Even if
the Examiner's prima facie case in light of these findings could somehow be
considered weak in this instance, it would still be incumbent upon Appellant
to rebut this prima facie case-a rebuttal that would have then required the
Examiner to consider all evidence anew. See Piasecki, 745 F.2d at 1472.
But because no such factual findings were made on this record to establish a
prima facie case of ineligibility, the burden never shifted to Appellant.
We emphasize, however, that we are persuaded of error in the
Examiner's ineligibility rejection only to the extent that the Examiner failed
to establish a prima facie case of ineligibility under § 101 by not providing
the requisite factual support for limitations that are said to be well-
understood, routine, and conventional. Although we find that claim 1 is
directed to an abstract idea, we are nonetheless constrained by this record to
reverse the Examiner's ineligibility rejection given its factual deficiencies.
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Therefore, we are persuaded that the Examiner erred in rejecting
claims 1, 2, 4, 5, 50-53, and 60-68 under§ 101. Because this issue is
dispositive regarding our reversing the Examiner's rejection of these claims,
we need not address Appellant's other associated arguments regarding this
rejection.
THE OBVIOUSNESS REJECTION OVER AHN, DAS, AND HORVITZ
Regarding claim 1, the Examiner finds that Ahn discloses retrieving
reports with ratings in the form of positive and negative reviews about a
particular product or service, where the reviews are submitted by reviewers
who share a relationship with a user on a social network. Final Act. 5.
According to the Examiner, Ahn' s system ( 1) filters out reports by reviewers
who do not share that relationship, (2) generates reports, and (3) transmits
recommendations. Id. Although the Examiner acknowledges that Ahn's
system does not purchase products or services automatically based on a
highest rating or transmit associated recommendations, the Examiner cites
Das and Horvitz for teaching these respective features in concluding that the
claim would have been obvious. Final Act. 6.
Appellant argues that because Ahn is silent about purchasing any
recommended products or services, but rather displays geographic reference
data on maps, there is no reason to combine ( 1) Das' automatic product
purchasing functionality, and (2) Horvitz's recommending purchasing a
product with the highest predicted rating with Ahn as the Examiner proposes
apart from impermissible hindsight. App. Br. 9-11. As such, Appellant
contends that the Examiner failed to establish a prima facie case of
obviousness. App. Br. 11.
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ISSUES
( 1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Ahn, Das, and Horvitz collectively would have taught or
suggested (a) determining from the recited set of reports that a particular
target has a highest rating, (b) transmit a recommendation to purchase that
target, and ( c) automatically purchase the target on the user's behalf?
(2) Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
ANALYSIS
We begin by noting that it is undisputed that Das and Horvitz teach or
suggest the respective elements for which these references were cited,
namely (1) Horvitz for teaching recommending purchasing the highest-rated
target, and (2) Das for teaching purchasing a target automatically. See Final
Act. 6; App. Br. 11 (acknowledging that Das teaches automatic product
purchasing, and Horvitz describes recommending that the user purchase an
item with the highest predicted rating).
The question, then, is whether it would have been obvious to combine
these teachings with those of Ahn as the Examiner proposes. On this record,
we see no error in this proposed combination.
Despite Appellant's arguments to the contrary (App. Br. 10-11),
Ahn's paragraph 175 explains that a user (e.g., a doll collector) can receive
recommendations from a particular affinity network regarding what product
( doll) to buy or where to buy it. Therefore, Ahn contemplates purchasing
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particular recommended targets as the Examiner indicates. Ans. 5.
Although Ahn' s paragraph 175 does not teach buying recommended
products automatically as Appellant indicates (Reply Br. 5), the Examiner
cites Das-not Ahn-for teaching automatic purchasing as noted previously.
See Final Act. 6. Therefore, Appellant's arguments regarding Ahn's
individual shortcomings in this regard do not show nonobviousness where,
as here, the rejection is based on the cited references' collective teachings.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
On this record, we find no error in the Examiner's proposed
combination of the cited references, for the proposed enhancements to Ahn
use prior art elements predictably according to their established functions-
an obvious improvement. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). Nor has Appellant shown that the proposed enhancements to
Ahn would have been uniquely challenging or otherwise beyond the level of
ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007). In short, the Examiner's proposed
combination of the cited references is supported by articulated reasoning
with some rational underpinning to justify the Examiner's obviousness
conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 60-68 not argued separately with particularity.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 2, 4,
5, and 50-53. Final Act. 7-9. Because these rejections are not argued
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separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.
CONCLUSION
The Examiner erred in rejecting claim 1 under§ 112, first paragraph,
and (2) claims 1, 2, 4, 5, 50-53, and 60-68 under§ 101. The Examiner,
however, did not err in rejecting claims 1, 2, 4, 5, 50-53, and 60-68 under
§ 103.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4, 5, 50-53,
and 60-68. Because the Examiner's decision to reject each appealed claim
is affirmed on at least one ground, the Examiner's decision to reject the
above claims is affirmed. See 37 C.F.R. § 41.50(a)(l ).
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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