Ex Parte Norman et al

Patent Trial and Appeal Board

Jun 25, 2018

13799851 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131799,851 03/13/2013 Timothy Darren Norman
23342 7590 06/27/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
08530-868827 1447
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY DARREN NORMAN and
BRYAN WILBOURNE PRUET
Appeal2017-000493
Application 13/799,851 1
Technology Center 3600
Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1--4, 6-8, 14, 17, 18, 20, 21, 23, 29--31,
and 35. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Lowe's Companies,
Inc. (Appeal Br. 2.)
Appeal2017-000493
Application 13/799,851
CLAIMED SUBJECT MATTER
Appellants' invention "relates generally to customized products and
more particularly to the ordering and/or management of customized products
and related information." (Spec. i-f 2.)
Claim 1 is the sole independent claim on appeal. It recites (paragraph
numbering added):
1. A method comprising:
[ 1] receiving, by a paint customization station in a retail
location of a retailer, a selection of a customized paint color;
[2] determining, by the paint customization station in the
retail location of the retailer, a unique product identifier
corresponding to the customized paint color;
[3] initiating, by a point-of sale device in the retail
location, a purchase of the customized product by a consumer in
the retail location;
[ 4] receiving, by the point-of-sale device in the retail
location of the retailer and as part of the purchase of the
customized paint color by the consumer in the retail location, the
unique product identifier, wherein the point-of-sale device is
different than the paint customization station;
[5] receiving, by the point-of-sale device in the retail
location of the retailer and as part of the purchase of the
customized paint color by the consumer in the retail location, an
account identifier corresponding to an online account of the
consumer purchasing the customized paint color, wherein the
online account corresponds to the retailer of the customized paint
color and the online account is accessible to the consumer
through a website of the retailer, wherein the unique product
identifier and the account identifier are received by the point-of-
sale device through at least one input device;
[ 6] as part of the purchase of the customized paint color or
thereafter, using the account identifier and the unique product
identifier to associate the customized paint color with the online
account of the consumer such that the customized paint color
purchased by the consumer in the retail location is viewable in
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the online account of the consumer when the consumer accesses
the online account through the website;
[7] as part of the purchase or thereafter, determining an
object in the online account to associate with the customized
paint color, the object representing a portion of a building;
[8] as part of the purchase or thereafter, using at least one
of the unique product identifier or the account identifier to
associate the object with the customized paint color in the online
account; and
[9] completing, by the point-of-sale device, the purchase,
[10] wherein each of the steps of the method is performed
by at least one processor.
REJECTION
Claims 1--4, 6-8, 14, 17, 18, 20, 21, 23, 29-31, and 35 are rejected
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
ANALYSIS
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims are "directed to associating information relating
to the purchase of paint with an object in [an] account of [a] customer, which
is considered an abstract idea." (Answer 6.) The Examiner further
determines that the claims are directed to concepts similar to those found in
several cases, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354--55
(Fed. Cir. 2014) (creating contractual relationships) and Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(collecting, analyzing, and displaying information, and organizing human
activities). (Answer 7-9.)
Appellants argue that the Examiner "provide[ s] no analysis with
respect to the Claims-at-Issue under the first step of the Alice test." (Reply
Br. 2.) Appellants further argue that"[ w ]ithout providing analysis as to why
the Claims-at-Issue are allegedly 'directed to' an abstract idea, the Examiner
cannot satisfy his initial burden of establishing a prima facie case for a
rejection under § 101 by a preponderance of the evidence under the first step
of the Alice test." (Id.)
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We are not persuaded of error. The USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, "'together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application."' In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration
in original) (quoting 35 U.S.C. § 132(a)). Here, pursuant to the first step of
the Alice test, the Examiner notified Appellants that the claims are directed
to a patent-ineligible abstract idea, i.e., that the claims are directed to
"associating information relating to the purchase of paint with an object in
[an] account of [a] customer." (Answer 6.) Thus, Appellants have been
notified of the reason for the rejection with such information "as may be
useful in judging of the propriety of continuing the prosecution of [the]
application." See 35 U.S.C. § 132(a).
In making the "directed to" inquiry under step one of the Alice
framework, we "look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353).
Thus, although we consider the claim as a whole, the "directed to" inquiry
focuses on the claim's "character as a whole."
The Specification provides evidence as to what the invention is
directed. The Specification discloses that the invention "relates generally to
customized products and more particularly to the ordering and/ or
management of customized products and related information." (Spec. i-f 2.)
Claim 1 recites "receiving, by a ... station ... a selection," "determining, by
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the ... station ... a unique product identifier," "initiating, by a ... device
... a purchase," "receiving, by the ... device ... the unique product
identifier," "receiving, by the ... device ... an account identifier
corresponding to an ... account of the consumer purchasing," "using the
account identifier and the unique product identifier to associate the
[selection] with the ... account of the consumer," "determining an object in
the ... account to associate with the [selection]," "using at least one of the
unique product identifier or the account identifier to associate the object with
the [selection] in the ... account," and "completing, by the ... device, the
purchase."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241. In short, we agree with the Examiner that the claims are directed
to an abstract idea; in this case, a method of associating information relating
to the purchase of a paint color with an object in an account of a customer.
(See Answer 6.)
Nonetheless, Appellants seek to analogize the claims to the claims in
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). (Reply
Br. 3 n.1.) Appellants argue that "the Claims-at-Issue provide computer-
functionality improvements. In Enfzsh, the claims improved upon traditional
databases and the Claims-at-Issue here improve upon traditional online
accounts." (Id.) We disagree. Unlike the present claims, the claims in
Enfzsh were "specifically directed to a self-referential table for a computer
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database." Enfzsh, 822 F.3d at 1337. That is, "the plain focus of the claims
[was] on an improvement to computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary capacity." Id. at
1336. The Federal Circuit noted that this was "an improvement of an
existing technology" as evidenced "by the specification's teachings." Id. at
1337. In other words, unlike the invention sought to be claimed here, the
invention claimed in Enfzsh does more than "simply instruct the practitioner
to implement the abstract idea with routine, conventional activity." See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Appellants also seek to analogize the present claims to the claims in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016). (Reply Br. 4.) Appellants argue that, like the claims in McRO,
"the Claims-at-Issue here focus on specific improvements to traditional
online accounts." (Id.) We disagree. In McRO, the court determined that
the claimed improvement here is allowing computers to produce
"accurate and realistic lip synchronization and facial expressions
in animated characters" that previously could only be produced
by human animators. As the district court correctly recognized,
this computer automation is realized by improving the prior art
through "the use of rules, rather than artists, to set the morph
weights and transitions between phonemes." The rules are
limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.
McRO, 837 F.3d at 1313 (citations omitted). Here, the asserted
improvement is to a business practice regarding what information is
associated with an account. In other words, "[ t ]hese claims in substance
[are] directed to nothing more than the performance of an abstract business
practice ... using a conventional computer. Such claims are not patent-
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eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014).
To the extent Appellants argue that the claims are directed to patent-
eligible subject matter because "the Examiner acknowledges that the
Claims-at-Issue are distinguished over the prior art" (Reply Br. 4), we do not
find this argument persuasive of error. "The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981).
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
We now look to step two of the Alice framework. Step two of the
Alice framework has been described "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, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo, 566 U.S. at 72-73).
The Examiner finds "that the claims merely recite generic computer
elements such as [a] paint customization station and POS device. Each of
these computer elements perform functions that are routine and convention
[sic] for computer elements to perform, such as gathering data and
correlating data together." (Final Action 3.)
Appellants disagree and argue that the Examiner
provides no argument or explanation as to why the claimed
"paint customization station" or "point-of-sale device" are
supposedly generically-recited computer elements. See Appeal
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Brief, pp. 9-12. A paint customization station involves
significantly more than a generic computer. Generic computers
can't mix paint or otherwise customize it without significantly
more. Generic computers don't communicate information
identifying a customized paint color a consumer purchases in a
retail location to a customer's online account ....
(Reply Br. 4.)
We are not persuaded of error. As an initial matter, Appellants do not
point to any claim language regarding mixing or customizing paint. Nor do
we see any step in method claim 1 reciting mixing or customizing paint.
Claim 1 recites, e.g., "receiving, by a paint customization station ... a
selection of a customized paint color" and "determining, by the paint
customization station ... a unique product identifier."
We find Appellants' argument that "[g]eneric computers don't
communicate information identifying a customized paint color" to also be
unpersuasive of error. "[W]e have treated collecting [and communicating]
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power Grp., 830 F.3d at 1353. Additionally, we note that Appellants'
Specification discloses that the disclosed method may be performed by
generic computer elements, e.g., "by one or more electronic devices, such as
a tablet computer, mobile phone, notebook computer, desktop computer,
point-of-sale system, or other computing device(s) comprising an input
device such as a mouse, trackpad, keyboard, touch-screen, barcode scanner,
or other input device." (Spec. i-f 17.)
Moreover, taking the claim elements separately, the computer
functions performed by the customization station and point-of-sale device at
each step are purely conventional. Receiving, determining, initiating, and
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using/processing information are basic computer functions. And, as noted
above, the Specification discloses that the method may be performed by
generic computer elements. (Id.) In short, each step does no more than
require a generic computer/processor to perform routine computer functions.
Considered as an ordered combination, the computer/processor
elements of Appellants' method add nothing that is not already present when
the steps are considered separately. The claims do not, for example, purport
to improve the functioning of the processor of the customization station or
point-of-sale device. Nor do they effect an improvement in any other
technology or technical field. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea. That is not
enough to transform an abstract idea into a patent-eligible invention. Alice,
134 S. Ct. at 2360.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim I. Dependent claims 2--4, 6-8, 14, 17, 18, 20, 21, 23, 29--31,
and 35 are not separately argued and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 1--4, 6-8, 14, 17, 18, 20, 21, 23,
29-31, and 35 under 35 U.S.C. § 101 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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