Ex Parte REDWOOD

Patent Trial and Appeal Board

Dec 27, 2018

13586092 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/586,092 08/15/2012
54640 7590 12/31/2018
PERRY+ CURRIER INC.
1300 YONGE STREET
SUITE 500
TORONTO, ON M4T-1X3
CANADA
FIRST NAMED INVENTOR
Vernon REDWOOD
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.
P3349USOO 6208
EXAMINER
LEVINE, ADAM L
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
docketing@pckip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VERNON REDWOOD
Appeal2017-007712
Application 13/586,092
Technology Center 3600
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 4, 6, 7, 10, and 12. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
1 "The name of the real party in interest is marketPeek Inc." Br. 3.
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Application 13/586,092
Introduction
Appellant's invention "relates generally to data management, and
specifically to ... processing product and service data." Spec. ,r 1. In
Appellant's Figure 1, a promoter server (104) communicates over a network
with devices operated by consumers (140), product managers (144) (which
may be manufacturers (Spec. ,r 34)), and merchants (148). The promoter
server has a database of product information that includes merchant
restriction information, and the promoter server uses the product information
to provide relevant information in response to search requests from
consumer devices. See Spec. ,r,r 36, 52-53, 61-69; Figs. 4---6, 10.
Claim 1 is illustrative of the claims on appeal:
1. A method in a system including a promoter server
interconnected via a network with a manufacturer computing
device, a plurality of merchant computing devices each having a
merchant identifier, and a consumer computing device, the
method comprising:
sending, from the manufacturer computing device to the
promoter server, product data defining a plurality of products and
including a merchant restriction associated with at least one of
the plurality of products;
responsive to receiving the product data from the
manufacturer computing device, storing the product data at the
promoter server;
sending, from the merchant computing devices to the
promoter server, respective requests to associate respective
selected subsets of the product data with respective ones of the
merchant identifiers[;]
responsive to receiving the requests, determining at the
promoter server whether each request is permissible, based on a
comparison of the selected subset of the product data with the
merchant restriction;
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for each request determined to be permissible, storing an
association of the selected subset of the product data with the
merchant identifier at the promoter server;
sending, from the consumer computing device to the
promoter server, a search request for a portion of the product
data;
responsive to receiving the search request, at the promoter
server, selecting response data including the portion of the
product data and at least one of the merchant identifiers
associated with the portion of the product data, based on the
search request; and
transmitting the response data from the promoter server to
the consumer computing device.
Br. 19 (Claims App'x).
Rejections & References
Claims 1, 4, 6, 7, 10, and 12 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., an abstract idea), without reciting
significantly more. Non-Final Act. 8-11.
Claims 1, 6, 7, and 12 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) over Allsop (US 5,970,472; iss. Oct. 19, 1999) and Bellamy
(US 8,346,669 B2; iss. Jan. 1, 2013). Non-Final Act. 11-15.
ANALYSIS
The Board "reviews the obviousness rejection[ s] for error based upon
the issues identified by appellant, and in light of the arguments and evidence
produced thereon," and treats arguments not made as waived. Ex parte
Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ( cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
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1. The§ 101 Rejection
For the§ 101 rejection, Appellant argues all pending claims together
as a group. Br. 9--11. We select claim 1 as representative. 37 C.F.R.
41.37( C )(1 )(iv).
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterated the analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (2012), "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those 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," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir.
2017).
"An abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). In considering whether a claim is directed to an abstract idea, we
keep in mind that "all inventions at some level embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo,
566 U.S. at 71. Accordingly, we look to whether the claim focuses on a
specific means or method that improves the relevant technology or is instead
directed to a result or effect that itself is the abstract idea and, otherwise,
merely invokes generic processes and machinery. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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If the claims are directed to a patent-ineligible concept, 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." Alice, 134 S. Ct. at 2355 (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. ( quoting Mayo, 566 U.S. at 72-73).
We note the two steps of the Alice analysis "involve overlapping
scrutiny of the content of the claims," and the Federal Circuit has described
"the first-stage inquiry" as "looking at the 'focus' of the claims, their
'character as a whole,"' and "the second-stage inquiry (where reached)" as
"looking more precisely at what the claim elements add-specifically,
whether, in the Supreme Court's terms, they identify an 'inventive concept'
in the application of the ineligible matter to which (by assumption at stage
two) the claim is directed." Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (internal citations omitted).
Under current Federal Circuit precedent, an "inventive concept" under
Alice step two can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014);
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(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs (Israel)
Ltd. v. Openet Telecom, Inc. 841 F.3d 1288, 1300 (Fed.
Cir. 2016)).
A. Alice/Mayo Analysis, Step One
The Examiner determines in the first step that claim 1 is directed to
"[a]ssigning merchants and products for promotion together in a shopping
environment and preventing restricted distributors from marketing a product
that they are not permitted to market," which "is a fundamental economic
practice." Non-Final Act. 9. Appellant does not argue the Examiner errs in
this determination. See Br. 9--11. We also discern no error and, therefore,
we proceed to step two.
B. Alice/Mayo Analysis, Step Two
Appellant contends the Examiner errs in determining claim 1 does not
recite significantly more than the abstract idea because the rejection does not
consider "the centralized location of the claimed promoter server." Br. 10.
The effect of the specific claimed arrangement of the
promoter server, manufacturer computing device, merchant
computing devices and consumer computing devices, along with
the specific claimed division of the computing activities alleged
to be individually conventional, is to provide a technically
improved implementation of the above-mentioned abstract idea.
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By communicating directly with the centralized promoter server
to obtain data identifying merchants authorized to carry various
products, the consumer computing device need not query
multiple merchant or manufacturer devices to obtain the same
information.
Br. 10 (citing BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
This argument is unpersuasive. While "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces" (BASCOM, 827 F.3d at 1350), we agree with the
Examiner that such is not the case here. See Ans. 10-11. The court in
BASCOM determined in step two of the Alice/Mayo analysis2 that the
inventive concept was "the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user." 827 F.3d at 1350. Thus, the combined
limitations in the claims at issue in BASCOM recited a specific technological
improvement. Here, on the other hand, the combined limitations of claim 1
do not recite a specific technological improvement.
We agree with Appellant that claim 1 recites a method that uses a
"centralized" promoter server. Br. 10. We disagree with Appellant,
however, that this "centralized server" architecture is "an inventive step"
that transforms claim 1 into a patent-eligible application. The technological
elements recited in the individual steps of claim 1 are a server for the
2 In step one, the court stated it was a close call as to whether claims directed
to "filtering content on the Internet" were directed to an abstract idea, but
determined that "filtering content" was abstract and that "[ a ]n abstract idea
on 'an Internet computer network' or a generic computer is still an abstract
idea." 827 F.3d at 1348--49.
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"promoter" entity and the use of "computing devices" for the manufacturer,
merchant, and consumer entities. 3 Limiting the implementation of an
abstract idea to the use of networked computers, as recited, does not add
significantly more to the abstract idea(s) to which a claim is directed. See,
e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
("That a computer receives and sends the information over a network-with
no further specification-is not even arguably inventive.").
Appellant contends that the centralized server architecture of claim 1
constitutes an inventive step because it provides "a technically improved
implementation" for the abstract idea, and results in advantages over prior
art implementations directed to the same abstract idea. See Br. 10-11. This
argument is unpersuasive. Rather than improving anything technological,
the server and computer device limitations only serve to limit the abstract
idea(s) to a particular technological environment. Affinity Labs of Texas,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) ("limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract"); see also
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1366 (Fed. Cir. 2016) ("An abstract idea does not become nonabstract by
limiting the invention to a particular field of use or technological
environment, such as the Internet.").
We agree with the Examiner that these type of computer architecture
limitations (alone and in combination, as recited) are well-understood,
routine, and conventional (WURC) and insufficient "to transform the
3 Also, the preamble of claim 1 recites "a network" that interconnects the
promoter server with the computing devices of the other three entities.
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abstract idea into a patent eligible application." Non-Final Act. 10. The
advantages of a centralized server architecture have long been well known to
those of ordinary skill in the art. See, e.g., Spec. ,r 87 ( discussing WURC
advantages of a centralized architecture and that that ordinarily skilled
artisans understand the benefits of such an architecture).
Furthermore, the question in the second step of the patent-eligibility
analysis is not whether a claimed element is novel or non-obvious, but rather
whether the implementation of the abstract idea involves "more than
performance of' [WURC] ... activities previously known to the industry."'
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776
F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359).
Here, there is no indication that implementation of the claimed steps requires
something apart from generic computing components performing WURC
computer functions, such as sending, receiving, and processing data.
Paragraphs 18-33 of the Specification explain that the claimed invention
may be implemented using a variety of WURC computer-related hardware.
In other words, although using a central promoter server architecture with
distributed merchant, manufacturer, and consumer devices may be a unique
way to implement merchant and product promotion when compared to prior
art methods, the central server architecture is, nonetheless, a WURC
architecture. As such, even if the claims recite a novel method, we fail to
see how the claimed invention is something significantly more than the use
of WURC technology to carry out the abstract idea of a method for assigning
merchants and products for promotion together in a shopping environment
and preventing restricted distributors from marketing a product that they are
not permitted to market using generic computer technology. A WURC
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computer implementation of an abstract idea is insufficient for patent-
eligibility because the claim limitations do not, alone or in combination,
provide a technological improvement. See Enfzsh, 822 F .3d
at 1335.
Appellant further argues claim 1 does not preempt all ways of
implementing the abstract idea. Br. 11. This argument is unpersuasive. As
our reviewing court has explained: "The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc., v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
Thus, although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Id.; cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed.
Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may
be limited to price optimization in the e-commerce setting do not make them
any less abstract.").
As Appellant identifies, "[t]he court in BASCOM noted that a lack of
preemption along with technical advantages of the claimed subject matter in
support of a finding that the claims recited significantly more than the
abstract idea." Br. 11. Appellant contends that "[a]s in BASCOM, the
instant claims are directed to a specific, discrete implementation that
provides technical advantages over other implementations." Id. This is
unpersuasive because, as discussed above, unlike the claim in BASCOM,
which recited a technological improvement, claim 1 does not.
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Thus, we find no element or combination of elements recited in
Appellant's claim 1 that contains an "inventive concept" or adds something
"significantly more" to transform the abstract concept into a patent-eligible
application. Alice, 134 S. Ct. at 2357. Claim 1 's solution to the problems of
"[a]ssigning merchants and products for promotion together in a shopping
environment and preventing restricted distributors from marketing a product
that they are not permitted to market" (Non-Final Act. 9) is not rooted in
computer technology-as discussed above, claim 1 involves only routine
uses of conventional technology. Claim 1 does not (1) provide a technical
solution to a technical problem unique to the Internet, as was the case in
DDR Holdings; (2) provide any particular practical application that
transforms the idea, as in BASCOM; or (3) entail an unconventional
technological solution to a technological problem, as in Amdocs.
Accordingly, we sustain the § 101 rejection of claim 1. We also,
therefore, sustain the § 101 rejection of claims 4, 6, 7, 10, and 12, for which
Appellant offers no separate arguments. See Br. 16-17; 37 C.F.R.
§ 4I.37(c)(l)(iv).
The § 103 (a) Rejection
Appellant argues the Examiner errs in the§ I03(a) rejection of claim
1 as obvious over Allsop and Bellamy because "neither Allsop nor Bellamy
disclose," inter alia, the disputed limitation of "sending, from the merchant
computing devices to the promoter server, respective requests to associate
respective selected subsets of the product data with respective ones of the
merchant identifiers," as recited. Br. 12. As an initial matter, we note the
test is not whether either cited reference "discloses" the recited features.
"[T]he question ... is not merely what the references expressly teach but
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what they would have suggested to one of ordinary skill in the art at the time
the invention was made." Merck & Co., Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (internal quotation marks
and citation omitted). Further, each reference cited by the Examiner must be
read, not in isolation, but for what it fairly teaches in combination with the
prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Under the correct§ 103(a) standard, Appellant's argument is
persuasive.
The Examiner finds Allsop teaches the disputed limitation. Non-Final
Act. 12 (citing Allsop 2:20-52, 5:37----67, Abstract, Fig. 4); see also Allsop
1 :35-2:61, 3:50----65, 7:45----60, 8:31-50, 10:4--15, Fig. 8, claims 11-13 (cited
for teaching other limitations of claim 1 (see Non-Final Act. 11-15)).
Appellant contends, and we agree, that Allsop' s "dealer website 21" maps to
the disputed limitation's "merchant computing device" and Allsop's "server
22" maps to the recited "promoter server." Br. 13.
Appellant contends the Examiner errs because Allsop does not teach
that its dealer website sends the server a request to associate "selected
subsets of the product data" with merchant identifiers, as recited. Br. 15-16
("Allsop does not mention any ... part of the dealer's website 21 in creating
associations between dealers and manufacturers in the database 26 at the
server 22."). The Examiner responds that "creating associations," as argued
by Appellant, is not commensurate with the scope of the claim, which recites
"associating," and that "Appellant's disclosure describes the same
associating as the prior art, that is associating the merchant/ dealer with the
product data for manufacturer products they are permitted to sell." Ans. 14.
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We agree with the Examiner that Allsop' s disclosure related to its
shopping baskets teaches associating merchants with selected subsets of
product data. We agree with Appellant, however, that there is no finding in
the record to explain how or why Allsop' s disclosure teaches or suggests
that, consistent with claim 1, a request to associate a selected subset of
products with merchant identifiers is sent from a dealer website 21 ( a
"merchant computing device") to the server 22 (the "promoter server").
Br. 15-16. Instead, as illustrated, in Allsop Figure 3, Allsop teaches that the
merchant computing device (i.e., shopping basket application 25 of dealer's
website 21) sends requests to the user's computer 20--it is the browser 24
from the user's computer 20 that sends any requests to the server 22. The
plain meaning of the disputed limitation does not read on a user's computer
20 sending requests to associate product data with merchants in response to
accessing information on a Web page on the dealer's website 21
information. Thus, Allsop does not teach or disclose the disputed limitation.
Because there is no explanation in the record for how or why the disclosures
of Allsop and/or Bellamy suggest the disputed limitation (see Non-Final Act.
11-15; Ans. 6-10, 12-15), we do not sustain the Examiner's§ 103(a)
rejection.
We also do not sustain the rejection of independent claim 7, which
recites requirements similar to the disputed limitation (see Br. 20-21
(Claims App'x)), stands rejected on the same basis (see Non-Final Act.
11-15), and which Appellant argues together with claim 1 (see Br. 12, 17).
We likewise do not sustain the rejection of dependent claims 6 and 12.
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DECISION
We affirm the Examiner's rejection of claims 1, 4, 6, 7, 10, and 12
under 35 U.S.C. § 101.
We reverse the Examiner's rejection of claims 1, 6, 7, and 12 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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