Ex Parte Nguyen et al

Patent Trial and Appeal Board

Mar 26, 2018

13935266 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/935,266 07/03/2013 John Nguyen
69849 7590 03/28/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
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.
34ZP-177778 7160
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN NGUYEN and FRANCO YUVIENCO
Appeal2016-006295
Application 13/935,266
Technology Center 3600
Before ALLEN R. MACDONALD, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-21. Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 1-21 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 7-9.
Claims 1--4, 6-14, and 16-21 are rejected under 35 U.S.C. § 103 as
obvious over Chanda (US 8,438,052 Bl; May 7, 2013) and Linden (US
6,266,649 B 1; Jul. 24, 2001 ). Final Act. 9-29.
Appeal2016-006295
Application 13/935,266
Claims 5 and 15 are rejected under 35 U.S.C. § 103 as obvious over
Chanda, Linden, and Orazi (US 2012/0240244 Al; Sep. 20, 2012). Final
Act. 29-31.
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to "dynamic primary product bundles."
Abstract. Claim 1 is illustrative and reproduced below:
1. A method comprising:
receiving, by a dynamic product bundler system, a request to
download a requested primary product from a requestor device;
creating a first static element in a product array that represents the
requested primary product;
retrieving other primary product data, the other primary product data
representing another primary product, the another primary product
associated with the requested primary product;
creating a second static element in the product array that represents
the another primary product;
creating conditions for the another primary product, the conditions
being based on the another primary product data and required to be met
before the another primary product is presented to a requestor through the
requestor device;
creating a dynamic primary product bundle from the product array and
the conditions for the another primary product, the dynamic primary product
bundle including the first static element in the product array that represents
the primary product, the second static element in the product array that
represents the another primary product and the conditions for the another
primary product, products presented to a requestor as part of the dynamic
primary product bundle capable of dynamically changing at runtime;
sending the dynamic primary product bundle to the requestor device.
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ANALYSIS
THE NON-STATUTORY SUBJECT MATTER REJECTION OF CLAIMS 1-21
Contentions
The Examiner finds claims 1-21 are directed to a judicial exception
without significantly more. Final Act. 7-8. In particular, the Examiner
finds
The claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Claim(s) 1-21 are directed to a product
recommendation dynamic[] bundling system for use by a
consumer. The steps for creating a bundle of products to
advertise to a consumer is a fundamental economic principle and
therefore an abstract idea. The claim( s) does/ do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because Claim 1 is directed to
an abstract idea with additional generic computer elements (i.e.,
the dynamic bundling system implemented on a generic
computer as described in Paragraph 0027 of the specification
and claim 1 ). The generically recited bundling system
implemented on a computer system plus the steps reciting the
process for creating the bundle of products does not add a
meaningful limitation to the abstract idea because they would be
routine in any computer implementation.
Final Act. 7-8; see also Ans. 2-5.
Appellants contend claims 1-21 are not directed to an abstract idea.
See App. Br. 7-10; see also Reply Br. 2-5.
For example, Appellants argue:
1.
The Examiner does not provide any support for the
characterization of dynamic product bundles being an abstract
idea, and the fundamental economic principle of advertising does
not include dynamic product bundling. Moreover, the record
fails to identify any evidence that anyone in the history of
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advertising managed to create dynamic product bundles as
claimed, so the creation of dynamic product bundles as claimed
is significantly more than the alleged "fundamental economic
principle."
App. Br. 9--10; see also Reply Br. 2-5.
11. "With respect to the current pending claims, the human mind
would be incapable of generating product bundles and during runtime
dynamically changing which products are presented to the user." App. Br.
10.
Our Review
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has 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 Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work"). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).
In Mayo, the Court stated that "to transform an unpatentable law of nature
into a patent-eligible application of such a law, one must do more than
simply state the law of nature while adding the words 'apply it."' Mayo, 566
U.S. at 72 (internal citation omitted).
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In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
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 patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 79, 78). 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. (brackets in original) (quoting
Mayo, 566 U.S. at 72-73). "A claim that recites an abstract idea must
include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Id. at 2357
(brackets in original) (quoting Mayo, 566 U.S. at 77-78). The prohibition
against patenting an abstract idea "cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding 'insignificant post-solution activity."' Bilski v. Kappas, 561 U.S.
593, 610-11 (2010) (internal citation and quotation marks omitted). The
Court in Alice noted that "' [ s ]imply appending conventional steps, specified
at a high level of generality,' was not 'enough' [in Mayo] to supply the
'inventive concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at
82-83, 77-78, 72-73).
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Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 is a method claim related to the basic concept of product
recommendations and bundled products. Claim 1 is a method claim
comprising multiple steps, each of which could, aside from nominal
recitations of a generic "requestor device" providing the request and
receiving the product bundle and a "dynamic product bundler system"
receiving the request, be performed in the human mind or by a human using
pen and paper. In particular, the steps could be performed by a person
reviewing a request for a primary product and presenting products to the
requestor, for example, on paper listing in writing the various products and
associated conditions.
Because all the method steps of claim 1 can either be performed by
human thought alone, or by a human using pen and paper, claim 1 is directed
to a patent-ineligible abstract idea. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("[U]npatentable
mental processes" include "steps [that] can be performed in the human mind,
or by a human using a pen and paper."). Further, we note the claims
primarily involve receiving data (receiving the request, retrieving other
primary product data), analyzing the data (various creating steps, including
creating the dynamic primary product bundle), and outputting results
(sending the dynamic primary product bundle to the requestor device). Such
claims have been found to be 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)
(holding that "collecting information, analyzing it, and displaying certain
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results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept").
Independent claims 11 and 21 recite limitations similar to those
discussed with respect to claim 1. Thus, claims 11 and 21 are also directed
to a patent-ineligible abstract idea.
Step two: Is there something else in the claims that ensures they are
directed to significantly more than a patent-ineligible concept?
Because claims 1, 11, and 21 are directed to an abstract idea, the
question to be settled next, according to Alice, is whether claims 1, 11, and
21 recite an element, or combination of elements, that is enough to ensure
that the claim is directed to significantly more than the abstract idea.
Claim 1 is a method claim, which includes "a dynamic product
bundler system" and "a requestor device. Claim 11 is a corresponding
system claim including "a primary product datastore" and "a dynamic
product bundler system." Claim 21 is a corresponding system claim
including various means-plus-function elements.
These various claimed hardware components are generic, purely
conventional computer elements. Thus, the claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities. There is no indication that the
computers used in the invention are anything other than general purpose
computers running conventional operating systems and being programmed
using conventional techniques. See Spec i-f 27 ("The computer-readable
medium 112, the dynamic product bundler system 116 and the other systems
and computer-readable mediums described in this paper can be implemented
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through computer systems, engines or a plurality of any combination of
computer systems and engines.").
Appending various combinations of conventional elements to an
abstract idea is not enough to transform the idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.").
Further, we are not persuaded of error on the part of the Examiner by
Appellants' argument (i) that the claims are not directed to an abstract idea
because we have determined that the claims are directed to the abstract idea
of product recommendations and bundled products, including method steps
that could be performed by human thought alone, or by a human using pen
and paper, which has been found to be an abstract idea. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
As well, we note the claims primarily involve receiving data, analyzing the
data, and outputting results, which has also been found to be an abstract
idea. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016).
Still further, we are also not persuaded of error on the part of the
Examiner by Appellants' argument (ii) because we find the human mind is
capable of performing the recited "creating" steps, and of changing which
products are presented to the user. In addition, the steps could be performed
by a person reviewing a request for a primary product and presenting
products to the requestor, for example, on paper listing in writing the various
products and associated conditions. There is no indication that the
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computers used in the invention to implement these method steps are
anything other than general purpose computers. See Spec. i-f 27.
We, therefore, sustain the Examiner's non-statutory subject matter
rejection of claim 1, 11, and 21. We also sustain the Examiner's non-
statutory subject matter rejections of claims 2-10 and 12-20, which are not
separately argued with particularity.
THE OBVIOUSNESS REJECTION OF CLAIMS 1--4, 6-14, AND 16-21 OVER
CHANDA AND LINDEN
Contentions
The Examiner finds Chanda and Linden teach all limitations of claim
1. Final Act. 9-12; see also Ans. 5-7. In particular, the Examiner finds
Linden teaches "products presented to a requestor as part of the dynamic
primary product bundle capable of dynamically changing at runtime" as
recited in claim 1. See Final Act. 11-12 (citing Linden col. 16, 11. 5-15).
The Examiner reasons
it would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to modify
Chanda to include products presented to a requestor as part of the
dynamic primary product bundle capable of dynamically
changing at runtime, as taught in Linden, in order to provide real
time recommendations at check out.
Final Act. 12 (citing Linden col. 16, 11. 5-15).
Appellants present the following principal arguments:
1.
Chanda teaches price, categorization, manufacturer, and/or other
attributes of the items to determine whether to include the
products together in creating a bundle. Chanda is silent as to
conditions that are required to be met before a product is
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displayed as part of a product bundle after the product bundle
has been created.
App. Br. 13; see also Reply Br. 8-10.
11. "Linden does not relate to product bundles. Linden teaches
recommending products that are not already included in a product bundle."
App. Br. 15; see also Reply Br. 6-8.
Our Review
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, Chanda discloses "identifying bundles of three or more items to
suggest to users." Chanda Abstract. Thus, Chanda teaches a product
bundle. The bundle in Chanda may contain multiple items, but the bundle
appears to be a fixed bundle rather than a bundle that dynamically changes at
runtime. See Chanda Abstract.
Turning to Linden, Linden discloses
The shopping cart recommendations service is preferably
invoked automatically when the user displays the contents of a
shopping cart that contains more than a threshold number (e.g.,
1) of popular items. The service generates the recommendations
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based exclusively on the current contents of the shopping cart.
As a, result, the recommendations tend to be highly correlated to
the user's current shopping interests. In other implementations,
the recommendations may also be based on other items that are
deemed to be of current interest to the user, such as items in the
recent shopping cart contents of the user and/ or items recently
viewed by the user.
Linden col. 16, 11. 5-15.
Thus, Linden teaches generating a recommendation based on items in
a shopping cart. Further, the recommendation may be based on other items,
such as recently viewed items or items recently in the shopping cart. The
recommendation in Linden for a given shopping cart content may change,
for example, as various items are viewed by the user but not placed in the
shopping cart. That is, while the shopping cart contents in Linden remain
fixed, the recommendations may change. Put another way, the
recommendations are capable of dynamically changing at runtime. See
Linden col. 16, 11. 5-15.
When Chanda's bundle is modified in light of the teachings of Linden,
Chanda's bundle contents are capable of dynamically changing at runtime in
the same way that Linden's recommendations are capable of dynamically
changing at runtime.
The Examiner articulated a reason to combine the references that is
rational on its face and supported by evidence drawn from the record. See
Final Act. 12 (citing Linden col. 16, 11. 5-15). On the record before us,
when reviewing the disclosures of Chanda and Linden, we are persuaded
that Chanda and Linden teach the argued claim limitations.
In particular, Chanda and Linden teach "creating conditions for the
another primary product, the conditions being based on the another primary
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product data and required to be met before the another primary product is
presented to a requestor through the requestor device" and further teach
creating a dynamic primary product bundle from the
product array and the conditions for the another primary product,
the dynamic primary product bundle including the first static
element in the product array that represents the primary product,
the second static element in the product array that represents the
another primary product and the conditions for the another
primary product, products presented to a requestor as part of the
dynamic primary product bundle capable of dynamically
changing at runtime
because Chanda's bundle, when modified in light of the teachings of Linden,
is capable of dynamically changing at runtime.
Regarding Appellants' arguments (i) and (ii), both of these arguments
do not persuade us of any Examiner error because the argued claim
limitations are taught by the collective teachings of the references for
reasons explained above. In reaching our decision, we recognize that the
claim language requires the bundle to include a product together with
conditions for its presentation. That said, Chanda and Linden teach a bundle
composed of Chanda's original bundle as well as potential recommended
items; a particular potential recommended item is presented when the
conditions are met for its presentation in accordance with Linden's
teachings.
We, therefore, sustain the Examiner's rejection of claim 1.
For independent claims 11 and 21, Appellants present the same
arguments as presented for claim 1. See App. Br. 15-23, Reply Br. 5-10.
We, therefore, sustain the Examiner's rejections of claims 11 and 21 for the
same reasons discussed above when addressing claim 1. We also sustain the
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Examiner's rejections of claims 2--4, 6-10, and 12-20, which are not
separately argued with particularity. See App. Br. 6, Reply Br. 2.
THE OBVIOUSNESS REJECTION OF CLAIMS 5 AND 15 OVER CHANDA, LINDEN,
AND0RAZI
Appellants do not present separate arguments for claims 5 and 15.
See App. Br. 6, Reply Br. 2. We, therefore, sustain the Examiner's
rejections of claims 5 and 15 for the same reasons discussed above when
addressing claim 1.
ORDER
The Examiner's decision rejecting claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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