Ex Parte Montano

Patent Trial and Appeal Board

Nov 21, 2018

14061745 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/061,745 10/23/2013 Michael Montano
27189 7590 11/26/2018
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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.
119705-00lUTl 6221
EXAMINER
GLENNIE, DEBRA L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MONTANO
Appeal2017-006886 1
Application 14/061,7452
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
November 7, 2016) and Reply Brief ("Reply Br.," filed March 22, 2017),
and the Examiner's Answer ("Ans.," mailed January 26, 2017), Advisory
Action ("Adv. Act.," mailed June 17, 2016), and Final Office Action ("Final
Act.," mailed December 4, 2015).
2 Appellant identifies ReviewBuzz Inc. as the real party in interest. App.
Br. 2.
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CLAIMED INVENTION
Appellant's claimed invention relates "to obtaining and utilizing
online customer service reviews" and more particularly "to requesting and
utilizing online customer service reviews for an individual employee of a
service provider" (Spec. ,r 1 ).
Claims 1, 11, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of obtaining online customer service reviews for
a plurality of individual employees of a plurality of service
providers, comprising the steps of:
receiving a plurality of online customer service reviews of
the plurality of individual employees of the plurality of service
providers based on customer service received from the plurality
of individual employees;
identifying the associated service provider of the plurality
of service providers and the associated individual employee of
the plurality of individual employees in each of the received
plurality of online customer service reviews;
matching, using a computer with a processor and a
memory, the identified service provider and individual employee
in the received plurality of online customer service reviews with
a list of service providers and individual employees; and
transmitting the online customer service review to the
matched service provider.
REJECTIONS
Claims 1-19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-7 and 9-19 are rejected under 35 U.S.C. § I02(b) as
anticipated by Black (US 2011/0218930 Al, pub. Sept. 8, 2011).
Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Black and Graham (US 2007/0150537 Al, pub. June 28, 2007).
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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1-19 as a group (App. Br. 7-14; see also,
Reply Br. 4--5). We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
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 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 the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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Application 14/061, 7 45
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that "[ c ]laims 1-19 are directed to an abstract idea of
obtaining online customer service reviews, [ and] specifically, directed
towards receiving online customer reviews and matching the online
customer reviews with the service provider and the employee of the service
provider" (Final Act. 3); and that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception itself because "[ t ]he claim[ s] recite[ ] generic computer elements
( e.g. a computer, a server, customer device) which do not add a meaningful
limitation to the abstract idea because they would be routine in any
computer implementation" (id. at 4 ).
Appellant argues that the Examiner's analysis "simply summarize[s]
the entire claim at a high level of abstraction" (App. Br. 8); and Appellant
charges that the Examiner has, thus, failed to comply with USPTO
guidelines (id. at 8-12 (citing the USPTO's 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014), and
November 2, 2016 Memorandum to the Patent Examining Corps regarding
"Recent Subject Matter Eligibility Decisions"3)).
3 Available at https://www.uspto.gov/sites/default/files/documents/McRo-
Bascom-Memo. pdf
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Appellant's argument is not persuasive at least because there is no
requirement that the Examiner's formulation of an abstract idea must copy
the claim language. Instead, the Federal Circuit has explained that "the
'directed to' inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether 'their character as a whole is directed
to excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d.
1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d
at 1346).
Here, it is clear from the Specification, including the claim language,
that the character of the claims, considered as a whole, is directed to an
improvement to methods and systems for obtaining and utilizing online
customer service reviews for an individual employee of a service provider
(see, e.g., Spec. Title ("SYSTEMS AND METHODS FOR OBTAINING
AND UTILIZING ONLINE CUSTOMER SERVICE REVIEWS OF
INDIVIDUAL EMPLOYEES"); i15 ("The embodiments described herein
are directed to systems and methods for obtaining and utilizing online
customer service reviews for an individual employee of a service provider
such as a business."); ,r 20 ("The embodiments described herein provide for
an Internet-based system for obtaining and utilizing online customer service
reviews for an individual employee of a service provider.")). As such, we
see no legal difficulty with the Examiner's determination that the claims are
directed to "obtaining online customer service reviews," and "specifically,
directed towards receiving online customer reviews and matching the online
customer reviews with the service provider and the employee of the service
provider" (Final Act. 3).
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Appellant next argues that the claims are not directed to an abstract
idea because "[ t ]he claims of the present application improve upon the
conventional technology of verifying the authenticity of customer feedback
by claiming specific method of authenticating customer reviews" (App.
Br. 11-12). But that argument is not persuasive at least because it is not
commensurate with the claim language. Claim 1 does not recite "verifying"
or "authenticating."
We also are not persuaded of Examiner error by Appellant's argument
that "the claims do not preempt all ways of authenticating customer reviews;
rather, they recite a specific, discrete implementation of authenticating
customer reviews" (App. Br. 11 ).
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Turning to the second step of the Mayo/Alice framework, Appellant
argues that "the claims do more than merely automate customer reviews,
they in fact provide increased security and authentication of such reviews -
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Application 14/061, 7 45
and this is all that is required under§ 101" (App. Br. 13). According to
Appellant, "an inventive concept can be found in the ordered combination of
claim limitations that transform the alleged abstract idea of obtaining
customer feedback into a particular, practical application authenticating
customer feedback" (id. ( citing BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Yet, as discussed
above, claim 1 does not recite any "authenticating" or "authentication"; as
such, Appellant's argument is not commensurate with the scope of the
claims. 4
Moreover, information collection and analysis, including when
limited to particular content ( e.g., customer feedback), is within the realm of
abstract ideas. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) ("[W]e have treated collecting information,
including when limited to particular content ( which does not change its
4 We note that the Specification discloses an authentication feature (see
Spec. ,r 41 ("This authentication feature therefore provides an automatic
verification of the review since it is tied to the mobile payment process, and
may even be used to filter reviews based on whether they have been
authenticated or not.")). But that feature is not recited in the claims and,
therefore, cannot be relied on to provide an inventive concept. See
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013) ("[T]he complexity of the implementing software or
the level of detail in the specification does not transform a claim reciting
only an abstract concept into a patent-eligible system or method."); see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1322
(Fed. Cir. 2016) ("The district court erred in relying on technological details
set forth in the patent's specification and not set forth in the claims to find an
inventive concept." (citing Accenture, 728 F.3d at 1345, and Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1346 (Fed. Cir. 2014))).
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Application 14/061, 7 45
character as information), as within the realm of abstract ideas."); SAP
America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As
many cases make clear, even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
(quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)). The law
also is clear that the mere recitation of a practical application for an abstract
idea is insufficient to transform the abstract idea into a patent-eligible
invention. Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable .... ").
We conclude, as did the Examiner, that the only additional elements
in claim 1, beyond the abstract idea itself, are the recited "computer with a
processor and a memory" (Ans. 5). The Examiner determined that "the
claim simply cites common inputs to the processor without further
improving upon the processor or how a processor operates" (id.) - a
determination that is fully consistent with the Specification. 5
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 1, and claims 2-19, which fall with claim 1.
5 See Spec. ,r 42 ("The system 700 includes a computer/server platform 701
including a processor 702 and memory 703 which operate to execute
instructions, as known to one of skill in the art.").
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Application 14/061, 7 45
Anticipation
Independent Claim 1 and Dependent Claims 2-7, 9, and 10
We are persuaded by Appellant's argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 102(b) at least because Black, on which
the Examiner relies, does not disclose "identifying the associated service
provider of the plurality of service providers and the associated individual
employee of the plurality of individual employees in each of the received
plurality of online customer service reviews" and "matching, using a
computer with a processor and a memory, the identified service provider and
individual employee in the received plurality of online customer service
reviews with a list of service providers and individual employees," as recited
in claim 1 (App. Br. 15-17).
Responding to Appellant's arguments in the Answer, the Examiner
cites paragraphs 10 and 11 of Black as disclosing that "service providers can
include (but [are] not limited to) doctors, hospitals, nurses, dentist[ s] and the
like" (Ans. 6). According to the Examiner, "[t]he individual occupations
listed are individual employees and as such the invention of Black
perform[ s] matches to employees" (id.). The Examiner, thus, takes the
position that the claimed "service providers and the associated individual
employee" read on the service provider disclosed in Black. However, the
Examiner has not pointed to any disclosure in Black of identifying and
matching both (1) "service providers" and (2) "the associated individual
employee," as required by claim 1. The Examiner's position that a
particular service provider can be an individual employee does not address
both aspects of the claim.
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Application 14/061, 7 45
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 102(b ). For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 2-7, 9, and 10.
Independent Claim 11 and Dependent Claims 12-16
Independent claim 11 includes language substantially similar to the
language of claim 1. Therefore, we do not sustain the Examiner's rejection
under 35 U.S.C. § 102(b) ofclaim 11 and claims 12-16, which depend
therefrom, for the same reasons set forth above with respect to claim 1.
Independent Claim 17 and Dependent Claims 18 and 19
Appellant's argument for independent claim 17 is the same as for
claim 1 (App. Br. 16; Reply Br. 6). But that argument is not persuasive at
least because it is not commensurate with the scope of claim 17. Claim 1 7
does not require identifying and matching a service provider and an
individual employee. In fact, claim 17 does not require any matching
whatsoever. In the absence of any other argument, the rejection of
claims 17-19 under 35 U.S.C. § 102(b) is sustained.
Obviousness
Claim 8 ultimately depends from independent claim 1. The
Examiner's rejection of dependent claim 8 is based on the same rationale
with respect to Black applied in rejecting claim 1 under 35 U.S.C. § 102(b ).
See Final Act. 24--25. Therefore, we do not sustain the Examiner's rejection
of dependent claim 8 under 35 U.S.C. § 103(a) for substantially the same
reasons set forth above with respect to independent claim 1.
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Application 14/061, 7 45
DECISION
The Examiner's rejection of claims 1-19 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-7 and 9-16 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejection of claims 17-19 under 35 U.S.C. § 102(b) is
affirmed.
The Examiner's rejection of claim 8 under 35 U.S.C. § 103(a) 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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