Ex Parte Page et al

Patent Trials and Appeals Board

Feb 27, 2019

13340919 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/340,919 12/30/2011
23370 7590 03/01/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
Alison Page
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.
095163.0810761 4807
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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 ALISON PAGE, LAWRENCE MAX MOTOLA,
CHARLOTTA NORDIN, and ANDREAS ALBERT PEREZ ALBA
Appeal2017-005667
Application 13/340,919 1
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 5, 7, 10-14, 16, 17, 33, and 36, which are all the
claims pending and rejected in the application. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Adidas AG as the real party in interest. App. Br. 3.
2 Appellants confirm claims 18-20 were withdrawn from consideration.
App. Br. 33. Therefore, Appellants' list of claims on appeal (App. Br. 3) is
incorrect, as it includes those claims.
Appeal2017-005667
Application 13/340,919
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
"customizing products over a network, and in particular to customizing a
collection of products over the Internet." Spec. ,r 3. Claim 1 is exemplary:
1. A method for pre-customizing products, comprising:
transmitting, by a group customization server to an
electronic computing device over a network, digital
representations of a plurality of products available for selection
by a first user operating the electronic computing device;
receiving, by the group customization server, a selection
of a subset of the plurality of products from the electronic
computing device, the subset including at least two of the
plurality of products;
receiving, by the group customization server, a selection
of a common feature of the subset of the plurality of products
from the electronic computing device;
simultaneously customizing, by the group customization
server, the subset of the plurality of products in response to an
input from the electronic computing device by manipulating the
common feature of the subset of the plurality of products;
storing, by the group customization server, a group
identifier with the customized subset of plurality of products,
the group identifier identifying the customized subset of the
plurality of products;
receiving, by the group customization server,
customization limits defining types of customizations available
to a second user for further customization of the customized
subset of plurality of products;
receiving additional selections from the electronic
computing device for associating, at the group customization
server, an individual identifier with the customized subset of
plurality of products, wherein the individual identifier
corresponds to an identity of the second user authorized to
further customize the customized subset of the plurality of
products, the second user different than the first user, and
wherein the individual identifier is associated with the
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Application 13/340,919
customization limits defining the types of customizations
available to the second user;
transmitting, by the group customization server to an
individual customization server, digital representations of the
customized subset of the plurality of products for further
customization by the second user operating a second electronic
computing device communicating with the individual
customization server, products;
wherein the individual identifier associated with the
customized subset of the plurality of products enables further
customizations to the customized subset of the plurality of
products by the second user, the types of customizations
available to the second user limited as defined in the
customization limits associated with the individual identifier.
Ritz
McCarthy
References and Rejections3
US 2008/0201603 Al
US 2010/0121739 Al
Aug. 21, 2008
May 13, 2010
Claims 1, 5, 7, 10-14, 16, 17, 33, and 36 are rejected under 35 U.S.C.
§ 101 because they are directed to patent-ineligible subject matter. Final
Act. 10-13.
Claims 12-14, 16, and 17 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over McCarthy and Ritz. Final Act. 13-19.
3 Throughout this opinion, we refer to the (1) Final Rejection dated January
5, 2016 ("Final Act."); (2) Appeal Brief dated April 5, 2016 ("App. Br.");
(3) Examiner's Answer dated December 16, 2016 ("Ans."); and (4) Reply
Brief dated February 16, 2017 ("Reply Br.").
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Appeal2017-005667
Application 13/340,919
ANALYSIS 4
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever 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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
4 Appellants raise additional arguments. Because the identified issues are
dispositive of the appeal, we do not need to reach the additional arguments.
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Application 13/340,919
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
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eligible application." Alice, 573 U.S. at 221 (citation omitted). "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. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(9th ed. 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B).
See Memorandum at 54--56.
Turning to Alice step one (Memorandum Step 2A, Prong 1 ), we agree
with Appellants that the Examiner has failed to identify an ineligible abstract
idea. See App. Br. 8-23; Reply Br. 2-12. Considering the claims as a
whole, we determine the claims are directed to customizing products. See
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claims 1, 5, 7, 10-14, 16, 17, 33, and 36. Our determination is supported by
the Specification, which states "[ t ]he platform allows the organization to
create customized merchandise by designing products for its members to
purchase or by defining parameters that enable its members or other
individuals to customize certain aspects of selected base merchandise."
Spec. ,r 3.
In light of the Memorandum, because customizing products is not a
mathematical concept, an identified method of organizing human activity, or
a mental process, we conclude the claims are not directed to an abstract idea.
See Memorandum at 52; see also id. at 53 ("Claims that do not recite matter
that falls within these enumerated groupings of abstract ideas should not be
treated as reciting abstract ideas, except" in rare circumstances.).
In particular, customizing products is not a mathematical concept,
because it is not a mathematical relationship, mathematical formula or
equation, or mathematical calculation. See Memorandum at 52. Further,
customizing products is not an identified method of organizing human
activity, as it is not (i) a fundamental economic principle or practice
(including hedging, insurance, mitigating risk), (ii) a commercial or legal
interaction (including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations), or
(iii) managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions). See Memorandum at 52. In addition, customizing products is
not a mental process, as it is not a concept performed in the human mind
(including an observation, evaluation, judgment, opinion). See
Memorandum at 52.
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Accordingly, we do not sustain the Examiner's rejection of claims 1,
5, 7, 10-14, 16, 17, 33, and 36 under 35 U.S.C. § 101.
35 us.c. § 103
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining the cited portions of
McCarthy teach "determining, from the group identifier, a subset of a
plurality of products previously customized by a first user, the subset of the
plurality of products determined from a larger set of products," as recited in
independent claim 1 ( emphases added). See App. Br. 24--28; Reply Br. 12-
15.
The Examiner acknowledges McCarthy does not teach the italicized
limitation. See Final Act. 17; Ans. 16. Then the Examiner determines-
without adequate explanation-that the italicized limitation constitutes non-
functional descriptive material and thus does not have patentable weight.
See Final Act. 1 7; Ans. 16. Because the Examiner fails to assign the
appropriate patentable weight to the italicized limitation, the Examiner erred
in determining McCarthy teaches "determining, from the group identifier, a
subset of a plurality of products previously customized by a first user, the
subset of the plurality of products determined from a larger set of products,"
as required by claim 1.
Further, as applied by the Examiner, the teachings of Ritz do not
remedy the deficiencies of McCarthy. See Final Act. 14.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 12.
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We also reverse the Examiner's rejection of corresponding dependent
claims 13, 14, 16, and 17.
DECISION
We reverse the Examiner's decision rejecting claims 1, 5, 7, 10-14,
16, 17, 33, and 36 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 12-14, 16, and
17 under 35 U.S.C. § 103.
REVERSED
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