Ex Parte Page et al

Patent Trials and Appeals Board

Apr 30, 2019

13340870 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/340,870 12/30/2011
23370 7590 05/02/2019
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.
095163-0810763 7793
EXAMINER
ROSS, SCOTT M
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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, PHILIP CLAS,
and STEPHANIE DE BODINAT 1
Appeal2018-002310
Application 13/340,870
Technology Center 3600
Before JASON V. MORGAN, ERIC B. CHEN, and
IRVINE. BRANCH, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1--4, 7, 8, 13-15, and 17-21. Claims 5, 6, 9-12, 16, and
22-34 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to a retail system that retrieves user
information from the device, determines the location of the user based on the
1 According to Appellants the real party in interest is Adidas AG.
(App. Br. 3.)
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Application 13/340,870
user information, and transmits a list of specials based on the user location.
(Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method comprising:
[i] retrieving user information from a device;
[ii] determining, by a server device, a location of a user based
on the retrieved user information;
[iii] comparing, by the server device, the user information and
the location of the user with one or more conditions for accessing
specials of a collection of specials stored in a data storage device, the
one or more conditions including at least a particular geographic
location;
[iv] compiling, by the server device, a list of available specials
unique to the location of the user by determining which of the specials
of the collection of specials satisfy the one or more conditions
necessary for accessing the respective specials;
[ v] transmitting the list of available specials to the device, the
list of available specials including a list of customizable products;
[ vi] transmitting, to the device, a list of customizable features
available for the one or more customizable products, the list of
customizable features unique to the location of the user, wherein the
list of customizable features include customizable design features of
the products and customizable functional features of the products;
[ vii] receiving, at the server device, a selection of one or more
customizable products from the list of customizable products and a
selection of customization features available for the one or more
customizable products;
[viii] storing, in the data storage device, information indicating
the selection of the one or more customizable products as customized
based on the selection of customization features; and
manufacturing the one or more customizable products as
customized based on the selection of customization features by
printing at least one customized element such that the at least one
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customized element is incorporated into the selected one or more
customizable products.
Claims 1--4, 7, 8, 13-15, and 17-21 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.
Claims 1, 7, 8, 13-15, 18, and 19 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Fields et al. (US 2013/0346117 Al, published
Dec. 26, 2013) ("Fields") and Paul et al. (US 2011/0004524 Al, Jan. 6,
2011) ("Paul").
Claims 2--4, 17, 20, and 21 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Fields and Weiss et al. (US 2011/0099047 Al, published
Apr. 28, 2011) ("Weiss"). 2
ANALYSIS
§ 1 OJ Rejection
We are persuaded by Appellants' arguments (App. Br. 18) that the
Examiner has not satisfied the proper burden for making a prima facie case
for patent ineligibility under 35 U.S.C. § 101.
The Examiner determined that the steps of independent claims 1, 13,
and 18 are "simply the organization and comparison of data which can be
performed mentally and is an idea of itself," which "is similar to other
concepts that have been identified as abstract by the courts, such as using
categories to organize, store and transmit information in Cyberfone, or
comparing new and stored information and using rules to identify options in
2 Appellants do not present any arguments with respect to the rejection of
claims 2--4, 17, 20, and 21 under 35 U.S.C. §I03(a). Thus, any such
arguments are deemed to be waived.
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SmartGene." (Non-Final Act. 4; see also Ans. 6.) Likewise, the Examiner
determined that:
[ s ]imilar to the claims at issue in Electric Power Group, the
pending claims receive data ( e.g., user information, location,
etc.), analyze that data ( e.g., comparing the user information and
location with one or more conditions for accessing specials, etc.)
and update information based on the analyzed data ( e.g.,
compiling a list of available specials, transmitting the list of
available specials; list of customizable features, etc.).
(Ans. 7.) We agree that the Examiner has not satisfied the proper burden for
a prima facie case.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 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 Bank Int '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.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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 (Gottschalkv. Benson, 409 U.S. 63, 67 (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 (1854))); 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. at 191 (citing Benson and Flook); see also, 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.").
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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-
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). 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
2019).
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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Step One
Are the claims at issue directed
to a patent-ineligible concept?
Claim 1 is a method claim having several steps, which falls within the
"process" category of 35 U.S.C. § 101. Likewise, claim 13 is a system claim
which falls within the "manufacture" category of 35 U.S.C. § 101, and
claim 18 is a computer readable medium claim, which also falls within the
"manufacture" category of 35 U.S.C. § 101. Although claims 1, 13, and 18
fall within the statutory categories, we must still determine whether the
claim is directed to a judicial exception, namely an abstract idea. See Alice,
573 U.S. at 217-18. Thus, we must determine whether the claims recite a
judicial exception, and fail to integrate the exception into a practical
application. See 84 Fed. Reg. at 54--55. If both elements are satisfied, the
claim is directed to a judicial exception under the first step of the Alice/Mayo
test. See id.
Step 2A-Prong One
Independent claim 1 is a method claim, which recites, in part, the
following: "[i] retrieving user information" and "[iv] compiling ... a list of
available specials." Such method steps of claim 1 are directed to a patent-
ineligible abstract idea of commercial interactions, such as a collecting
information. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
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1353 (Fed. Cir. 2016) ("collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.").
Independent claim 1 further recites: "[ii] determining ... a location of
a user," "[iii] comparing ... the user information and the location of the
user," and "[viii] storing ... information indicating the selection of the one
or more customizable products as customized." Such method steps of
claim 1 are directed to a patent-ineligible abstract idea of commercial
interactions, such as analyzing and storing information. See, e.g., Elec.
Power Grp., 830 F.3d at 1354 ("[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions."); Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
("collecting data, ... recognizing certain data within the collected data set,
and ... storing that recognized data in a memory" is an abstract idea).
Moreover, independent claim 1 recites: "[ v] transmitting the list of
available specials," "[ vi] transmitting ... a list of customizable features
available for the one or more customizable products," and"[ vii] receiving ..
. a selection of one or more customizable products." This method step is
directed to a patent-ineligible abstract idea of commercial interactions, such
as routing information. See Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1337 (2017) ("The claim requires the
functional results of ... 'routing,' ... but does not sufficiently describe how
to achieve these results in a non-abstract way").
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Claims 13 and 18 recite limitations similar to those discussed with
respect to claim 1. Thus, claims 13 and 18 are also directed to a judicial
exception.
Step 2A-Prong Two
Because claims 1, 13, and 18 are directed to an abstract idea, we next
determine if the claim recites additional elements that integrate the judicial
exception into a practical application.
In the "Background of the Invention" section, Appellants'
Specification discloses conventional retail shopping, in which the user is
limited by the retailer's catalog, as follows:
People often use the interactive capabilities of such
devices to search or products or retail locations. Traditionally,
these devices access a retail location's general or mobile website,
where the user then has to navigate the site in order to identify
retail location information and/or search through a catalog of
products to determine which of those products are available for
purchase in her location.
(Spec. ,r 4 (emphasis added).)
In the "Background of the Invention" section, Appellants'
Specification discloses the following needs:
It may be desirable to provide a location-based user
interface that automatically provides a list of retail locations that
are in the predefined radius of a user's device and/or a list of
products that are available in the predefined radius of the device,
based on location information obtained from the device, to
improve the efficiency of identifying and locating such items and
locations. It may also be desirable to provide customization
features through such a user interface that are accessible only in
certain locations, dates, and/or times based on information
obtained from the user's device. Customized sporting products,
such as customized sporting apparel and customized sporting
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equipment, can provide significant benefits when undertaking a
wide variety of activities. For example, customized sporting
items can help people adapt to different environmental
conditions. For some activities, customized sporting items can
contribute to, and even enhance, performance. For example,
customizing the size of a sporting item to an individual user, e.g.
to the specific size, weight or body measurements of an athlete,
results in a sporting item that has an optimal fit for this particular
athlete thereby leading to an improved usability during a sports
activity an hence to improved performance of the athlete.
(Id. ,r 5 (emphases added).)
In one embodiment, Appellants' Specification discloses the
following solution for the need of customization:
In other exemplary embodiments, specials for a college
may be stored in the data storage device 150, which may vary
depending on whether the user is an alumni, current student,
member of one of the college sports teams, academic teams, or
other criteria. If the system server 120 determines that the user
is located at the college through any of the location methods
described above, the system server 120 may access a list of
alumnae, registered students, team rosters, club rosters, or other
lists associated with various college affiliations, which may be
stored on the data storage device 150 or other storage location.
If the user's name or other identifying information corresponds
to one or more of the various lists, the system server 120 may
locate specials for the specific college affiliations stored on the
data storage device 150, which are then added to the list of
available specials.
(Id. ,I 80.)
With respect to the claimed hardware components, system claim 1
recites "[i] retrieving user information from a device," "[ii] determining, by
a server device, a location of a user based on the retrieved user
information," "[iv] compiling, by the server device, a list of available
specials unique to the location of the user by determining which of the
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specials of the collection of specials satisfy the one or more conditions
necessary for accessing the respective specials," and "[vi] transmitting, to
the device, a list of customizable features available for the one or more
customizable products, the list of customizable features unique to the
location of the user" ( emphases added).
Thus, the claimed user "device" and the claimed "server device"
functionally cooperate, such that the server device provides to the user "a list
of customizable features available for the one or more customizable
products, the list of customizable features unique to the location of the user."
Because independent claims 1, 13, and 18 overcome a problem in providing
customizable features to users, "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks," and accordingly, the claims are not
directed to an abstract idea. DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1258-59 (Fed. Cir. 2014).
Thus, independent claims 1, 13, and 18 recite additional elements that
integrate the judicial exception into a practical application.
Accordingly, we are persuaded by Appellants' arguments that:
Claim 1 thus provide a specific technological solution to a
problem that arises in the field of product presentation to remote
users. Specifically, the claimed limitations show how a product
server system can analyze remote device information to
determine user location, compare the location to one or more
conditions for accessing specials, and compile a unique
collection of specials and customization features from a data
storage device based on the analyzed location.
(App. Br. 16.)
Thus, we do not sustain the rejection of independent claims 1, 13, and
18 under 35 U.S.C. § 101. Claims 2--4, 7, 8, 14, 15, 17, and 19-21 depend
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from independent claim 1. We do not sustain the rejection of claims 2--4, 7,
8, 14, 15, 17, and 19-21 under 35 U.S.C. § 101 for the same reasons
discussed with respect to independent claims 1, 13, and 18.
§ 103 Rejection-Fields and Paul
We are unpersuaded by Appellants' arguments (App. Br. 19; see also
Reply Br. 5) that the combination of Fields and Paul would not have
rendered obvious independent claim 1, which includes the limitation
"manufacturing the one or more customizable products as customized based
on the selection of customization features by printing at least one customized
element such that the at least one customized element is incorporated into
the selected one or more customizable products."
The Examiner found that the personalized custom designed products
of Paul, for example, printing text or images to a product, correspond to the
limitation "manufacturing the one or more customizable products as
customized based on the selection of customization features by printing at
least one customized element such that the at least one customized element
is incorporated into the selected one or more customizable products."
(Ans. 29-30; see also Non-Final Act. 10.) We agree with the Examiner's
findings.
Paul relates to "[c]omputer based systems ... [that] allow designing
( e.g., customization) of consumer products, such as articles of footwear,
apparel, athletic equipment, etc." (Abstract.) In particular, Paul explains
that "[a]ny desired type of footwear design data may be controlled, altered,
or customized by a user of systems and methods according to this invention,
such as ... pictorial or other graphical data that may be printed or otherwise
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provided on the shoe." (i133.) Moreover, Paul explains that "[s]ome of the
custom designs may be afforded a special status or prize" and "[t]he selected
design may win prizes, entry to events, chances to meet a celebrity or
famous athlete, or the custom-designed footwear may be manufactured and
sold." (i183.) Because Paul explains that footwear custom designs can be
printed, Paul teaches the limitation "manufacturing the one or more
customizable products as customized based on the selection of customization
features by printing at least one customized element such that the at least one
customized element is incorporated into the selected one or more
customizable products."
Appellants argue that "Paul does not disclose, teach, or suggest
manufacturing customizable products by printing at least one customized
element such that the at least one customized element is incorporated into
the selected customizable products." (App. Br. 19 (emphasis omitted).)
Contrary to Appellants' arguments, Paul explains that "[a]ny desired type of
footwear design data may be controlled, altered, or customized by a user of
systems and methods according to this invention, such as ... pictorial or
other graphical data that may be printed or otherwise provided on the shoe."
(i133.)
Appellants further argue that "Weiss discusses electronically
capturing consumer location data for analyzing consumer behavior and
makes passing references to servers with printers, but no reference to 3D
printing materials, much less products in the manner claimed." (Reply
Br. 5.) However, the Examiner cited to Paul, rather than Weiss, for teaching
the limitation "customization features by printing at least one customized
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element such that the at least one customized element is incorporated into
the selected one or more customizable products." (Ans. 29-30.)
Thus, we agree with the Examiner that the combination of Fields and
Paul would have rendered obvious independent claim 1, which includes the
limitation "manufacturing the one or more customizable products as
customized based on the selection of customization features by printing at
least one customized element such that the at least one customized element
is incorporated into the selected one or more customizable products."
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 7 and 8 depend from claim 1, and Appellants have
not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 7 and 8 under 35
U.S.C. § 103(a), for the same reasons discussed with respect to independent
claim 1.
Independent claims 13 and 18 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any additional substantive arguments with respect to these claims.
Accordingly, we sustain the rejection of claims 13 and 18, as well as
dependent claims 14, 15, 17, and 19 for the same reasons discussed with
respect to claim 1.
DECISION
The Examiner's decision rejecting claims 1--4, 7, 8, 13-15, and 17-21
under 35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 1--4, 7, 8, 13-15, and 17-21
under 35 U.S.C. § 103(a) is affirmed.
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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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