Ex Parte Nayak et al

Patent Trial and Appeal Board

Sep 25, 2017

12954066 (P.T.A.B. Sep. 25, 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.
12/954,066 11/24/2010 Diganta Kumar Nayak 20100447 4663
7590 09/27/201725537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIGANTA KUMAR NAYAK, SHANKAR ARUMUGAVELU,
MAHMOUD MUHIEDDINE ELASSIR, VIVEK GURUMURTHY,
VELAMUR SRINIVASAN SUDHARSAN,
RAVI KANTH KALAVAGUNTA, RASESH YOGESH MANIAR,
SUNIL AVADHANAM, SRINIVASA REDDY PAKALA, and
KRISHNA P. YEMPARALA
Appeal 2016-002296
Application 12/954,0661
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 4—13, and 16—20. We have jurisdiction under 35
U.S.C. § 6(b).
1 Appellants identify Verizon Communications Inc. as the real party in
interest. Br. 3.
Appeal 2016-002296
Application 12/954,066
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants’ claims “relate to analyzing and tracking promotions
associated with customer orders” (Spec. |11).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method performed by a promotion analyzer device, the
method comprising:
receiving, by the promotion analyzer device via a
network from an ordering system, order information associated
with a customer order placed by a customer with a service or
product provider;
obtaining, by the promotion analyzer device via the
network, bundle information associated with the customer order
from a bundle management system, wherein the bundle
management system maintains information about groupings of
services or products offered by the service or product provider;
obtaining, by the promotion analyzer device via the
network, promotion information from a product catalog system,
wherein the promotion information includes order requirements
for available promotions, bundle requirements for the available
promotions, and billing balance requirements for the available
promotions;
determining, by the promotion analyzer device, whether
the customer order is eligible for a promotion, of the available
promotions, based on the received order information, the
obtained bundle information, and the obtained promotion
information, wherein the promotion includes a reward of a free
or discounted product or service to be provided to the customer
after placing the customer order;
requesting, by the promotion analyzer device via the
network, a balance amount for an account associated with the
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Application 12/954,066
customer from a billing system, in response to determining that
the customer order is eligible for the promotion;
receiving, by the promotion analyzer device via the
network, the balance amount, associated with the account, from
the billing system;
determining, by the promotion analyzer device, whether
the received balance amount is less than a balance threshold
specified in the billing balance requirements included in the
obtained promotion information; and
sending, by the promotion analyzer device via the
network, a message to a fulfillment system to fulfill the
promotion, in response to determining that the balance amount
is less than the balance threshold.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Williams US 2002/0049631 A1 Apr. 25, 2002
Gallon US 2003/0074305 A1 Apr. 17, 2003
Walker US 6,601,036 B1 July 29, 2003
Marshall US 2003/0233278 A1 Dec. 18,2003
Beck US 7,254,547 B1 Aug. 7, 2007
Chu US 2008/0270240 A1 Oct. 30, 2008
Posner US 2010/0161399 A1 June 24, 2010
The following rejections are before us for review.
Claims 1, 4—13, and 16—20 are rejected under 35 U.S.C. § 101.
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Claims 1, 4, 5, 9, 10, 13, 16, 19, and 20 are rejected under 35 U.S.C.
§ 103 as being unpatentable of Posner, Walker, Marshall, Williams, and
Gallon.
Claims 6—8, 17, and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Posner, Walker, Marshall, Williams, Gallon, and Chu.
Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Posner, Walker, Marshall, Williams, Gallon, and Beck.
ANALYSIS
35 U.S.C. § 101 REJECTION
Claims 1, 4—13, and 16—20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. We will sustain this rejection.
[The Supreme Court] set forth a framework for distinguishing
patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications
of those concepts. First, . . . determine whether the claims at
issue are directed to one of those patent-ineligible concepts. If
so, we then ask, “[w]hat else is there in the claims before us?”
To answer that question, . . . 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. [The
Court] described step two of this analysis as a 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-73 (2012)).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1, which claim is exemplary in scope of all the
independent claims before us, result in determining whether a received
balance amount is less than a balance threshold specified in the billing
balance requirements included in the obtained promotion information; and
sending a message to a fulfillment system to fulfill the promotion, in
response to determining that the balance amount is less than the balance
threshold. The Specification at paragraph 1 recites: “[mjoreover, different
types of services may be offered together in bundles at a discounted rate.
Additionally, customers may be provided with various incentives to sign up
for services.” The Specification states:
[a]n implementation described herein may relate to analyzing
an order with respect to promotion specifications to determine
whether the customer associated with the order is eligible for a
promotion, tracking changes in the order to determine whether
the customer is still eligible for the promotion, checking a
billing history associated with the order to determine whether
the billing history satisfies the promotion specifications,
fulfilling the promotion if the billing history satisfies the
promotion specifications, and disqualifying the promotion if the
billing history does not satisfy the promotion specifications.
Spec. 111. “Billing system 140 may provide information about a billing
history associated with the customer order (e.g., an outstanding balance) to
promotion analyzer system 110.” Spec. 118.
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Thus, all this evidence shows that claim 1 is directed to determining
whether a customer order is eligible for a promotion based on an account
balance of the customer. It follows from prior Supreme Court cases,
Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at
issue here are directed to an abstract idea. Determining whether a customer
order is eligible for a promotion based on account balance being below a
given threshold is a fundamental economic practice because it insures
solvency. “[A] balance threshold that must be satisfied in order for the
customer to remain eligible for the promotion.” Spec. |65. The patent-
ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental
economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355—1257.
Also, the effect of the scheme is to award responsible money management
by a customer, and thus represents a method of organizing human behavior,
which is not patentable subject matter. See Id. at 2355-56. Thus,
determining whether a customer order is eligible for a promotion based on
an account balance being below a given threshold is an “abstract idea”
beyond the scope of § 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of determining whether a customer order is eligible for a promotion based on
account balance being below a given threshold at issue here. Both are
squarely within the realm of “abstract ideas” as the Court has used that term.
That the claims do not preempt all forms of the abstraction or may be limited
to an incentive program, does not make them any less abstract. See OIP
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Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—61 (Fed. Cir. 2015).
Perhaps more to the point, claim 1 does no more than offer an incentive for
effecting a desired behavior. Incentive, as such, is a disembodied concept
that is the epitome of abstraction.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval—some of the most basic
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functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ claims add nothing that is not already present when the steps are
considered separately. Viewed as a whole, Appellants’ claims simply recite
the concept of determining whether a customer order is eligible for a
promotion based on account balance being below a given threshold. The
claims do not, for example, purport to improve the functioning of the
computer itself. Nor do they effect an improvement in any other technology
or technical field. Instead, the claims at issue amount to nothing
significantly more than instructions to determine whether a customer order is
eligible for a promotion based on account balance being below a given
threshold on a generic computer. Under our precedents, that is not enough
to transform an abstract idea into a patent-eligible invention. See Alice
Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
That claim 1 recites a promotional analyzer device does not make it
patent eligible because claim 1 does not recite any specific means
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constituting an improvement in the technical field or technology of computer
networking. SeeMcRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016).
We further disagree with Appellants’ assertion that “the claims solve a
technological problem in the communication services industry by enabling a
provider of communication services to keep track of the fulfillment of
promotions, for a large number of customers, when particular requirements
are satisfied.” (Appeal Br. 14-15). The question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case,
claim 1 as a whole is directed to awarding a customer with a promotion by
determining whether a customer order is eligible for a promotion based on
an account balance being below a given threshold, and not the computer
system on which the scheme is implemented.
35 U.S.C. § 103 REJECTION
Each of independent claims 1,13, and 20 requires in one form or
another;
receiving, by the promotion analyzer device via a
network from an ordering system...
obtaining, by the promotion analyzer device via the
network, bundle information associated with the customer order
from a bundle management system...
obtaining, by the promotion analyzer device via the
network, promotion information from a product catalog system,
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determining, by the promotion analyzer device, whether
the customer order is eligible for a promotion, of the available
promotions, based on the received order information...
requesting, by the promotion analyzer device via the
network, a balance amount for an account associated with the
customer from a billing system...
sending, by the promotion analyzer device via the
network, a message to a fulfillment system to fulfill the
promotion... .
(App. Br. 41, Claim App’x (emphasis added)).
The Examiner however found concerning the claim elements,
promotion analyzer device, ordering system, bundle management system,
that:
Posner discloses the concept of a utilizing a single server or
multiple servers to perform functions within a single system,
wherein each of the plurality of servers can be dedicated to
individual functions. While the claims include names for the
system such as ordering system, the bundle management
system, product catalog system, and billing system, the
Examiner notes these are merely titles, and as disclosed by
Posner, a single system can include multiple server systems
which are in communication.
(Answer 6).
Appellants however argue,
The Examiner has not explained 1) which specific device
or system of POSNER, WALKER, MARSHALL, WILLIAMS,
or GALLON allegedly corresponds to the promotion analyzer
device of claim 1; 2) which specific device or system of
POSNER, WALKER, MARSHALL, WILLIAMS, or
GALLON allegedly corresponds to the ordering system recited
in claim 1; 3) which specific device or system of POSNER,
WALKER, MARSHALL, WILLIAMS, or GALLON allegedly
corresponds to the bundle management system of claim 1; 4)
which specific device or system of POSNER, WALKER,
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MARSHALL, WILLIAMS, or GALLON allegedly corresponds
to the product catalog system of claim 1; 5) which specific
device or system of POSNER, WALKER, MARSHALL,
WILLIAMS, or GALLON allegedly corresponds to the billing
system of claim 1; 6) which device or system of POSNER,
WALKER, MARSHALL, WILLIAMS, or GALLON allegedly
corresponds to the fulfillment system of claim 1; and 7) how
these specific devices or systems would have been combined by
one of ordinary skill in the art at the time of the invention to
arrive at a combination of devices enabled to carry out the
specifically recited method of claim 1. Absent such an
explanation, Appellants respectfully submit that the Examiner's
allegations regarding "concepts" allegedly disclosed by the
cited references do not satisfy the requirements of establishing a
prima facie case of obviousness under 35 U.S.C. § 103(a).
(Appeal Br. 27—28)
We agree with Appellants. The claimed systems and associated
device components, albeit recited only generically in the claims, are still
claim limitations which need to be addressed and specifically accounted for
against the prior art to establish a prima facie case in a 35 U.S.C. § 103(a)
rejection. The nomenclature of these limitations also serves as markers in
the claim to establish the claimed sequencing of the “to and from” flow of
information as is illustrated by the italicized excerpt above, which
sequencing the Examiner’s findings also do not address. See Texas Instr.
Inc. v. United States Int 7 Trade Comm’n, 988 L.2d 1165, 1171 (Led. Cir.
1993) (claim language cannot be mere surplusage. An express limitation
cannot be read out of the claim); Unique Concepts, Inc. v. Brown, 939 L.2d
1558, 1563 (Led. Cir. 1991) (two distinct claim elements should each be
given full effect). Therefore we will not sustain the rejection of independent
claims 1, 13 and 20 under 35 U.S.C. § 103(a).
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Since claims 4—12 and 16—19 depend from claim 1 and 13
respectively, and since we cannot sustain the rejection of claims 1 and 13 the
rejection of claims 4—12 and 16—19 likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 4—13, and
16-20 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1, 4—13, and
16-20 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1, 4—13, and 16—20 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).
AFFIRMED
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