Ex Parte Turner

Patent Trial and Appeal Board

Dec 20, 2018

13373856 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/373,856 12/02/2011
20350 7590 12/25/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
David Wayne Turner
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.
058489-1068720 3388
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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 DAVID WAYNE TURNER 1
Appeal2017-010184
Application 13/373,856
Technology Center 3600
Before CARL W. WHITEHEAD JR., JAMES B. ARPIN and
J. JOHN LEE, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the Non-Final rejection of claims 1, 2, 8, 10,
21, 22, 24--27, 29 and 30 under 35 U.S.C. § 134(a). Appeal Brief 6. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Introduction
The invention is directed to:
[A] system of incentive-based digital content and information
sharing platform through social media, and more particularly to
a business method of promotion which makes use of a
1 According to Appellant, the real party in interest is Parallel 6, Inc. See
Appeal Brief 2.
Appeal Number 2017-010184
Application Number 13/373,856
promotional platform and an application which is downloadable
to an electronic device, such as mobile phones, handheld devices,
tablets, PCs, Macs and the like such that a digital content or
information can be transmitted to the electronic device and
spread through the electronic device to a social network through
a social media connector.
Specification, paragraph 2.
Illustrative Claim
1. A system of delivering incentive-based digital
content, the system comprising:
a first device of a first user, the first device having installed
thereon a branded user application, the branded user application
configured to:
receive a first piece and a second piece of digital content;
provide, via a first user interface, the first piece and the
second piece of digital content to the first user; and
track a number of times the first user opened the branded
user application and a number of times the first user shared the
first piece and the second piece of digital content via the branded
user application; and
an information sharing platform comprising:
a storage medium;
at least one hardware processor; and
one or more software modules configured to, when
executed by the at least one hardware processor:
store a plurality of pieces of digital content including the
first piece and the second piece of digital content in the storage
medium;
provide at least one user interface for managing the
plurality of pieces of digital content transmit, via at least one
network, the first piece of digital content to the branded user
application on the first device;
2
Appeal Number 2017-010184
Application Number 13/373,856
receive, from the branded user application on the first
device, tracking data that includes the number of times the first
user opened the branded user application and the number of times
the first user shared the first piece and the second piece of digital
content via the branded user application by the first user;
determine to modify the first piece of digital content and
not the second piece of digital content and change at least one
delivery parameter associated with the first piece of digital
content to at least the first device based at least in part on the
tracking data received from the branded user application on the
first device; and
transmit, via at least one network, the modified first piece
of digital content to at least the first device in accordance with
the changed delivery parameter.
Rejections on Appeal
Claims 1, 2, 8, 10, 21, 22, 24--27, 29 and 30 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. The claimed invention is directed to non-statutory subject
matter because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea. Non-Final Action 3-5.
Claims 1, 2, 8, 10, 21, 22, 24--27, 29 and 30 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Caunter (U.S. Patent
Application Publication 2009/0299856 Al; published December 3, 2009),
Kalb (U.S. Patent Application Publication 2009/0150215 Al; published
June 11, 2009) and Knitowski (U.S. Patent Application Publication
2011/0320967 Al; published December 29, 2011). Non-Final Action 8-15.
Claims 24--27, 29 and 30 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Caunter, Kalb, Knitowski and Gutta (U.S. Patent
3
Appeal Number 2017-010184
Application Number 13/373,856
Application Publication 2011/0072107 Al; published March 24, 2011).
Non-Final Action 15-18.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed March 22, 2107), the Reply Brief (filed
July 24, 2017), the Answer (mailed May 23, 2017) and the Non-Final Action
(mailed February 24, 2016) for the respective details.
35 U.S.C. § 101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
4
Appeal Number 2017-010184
Application Number 13/373,856
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). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, 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. We, therefore, look
to: (1) whether the claims focus on a specific means or method that improves
the relevant technology, or (2) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellant contends:
Here, as is often the case with such Alice rejections, the
Action fails to properly identify the abstract idea through
analyzing and identifying the limitation or limitations that
describe or set forth the abstract idea. Not only is this an
incorrect application of the first step of the Mayo test, as noted in
Enfish, it prevents any meaningful application of the second step.
Moreover, the claims are not directed to an abstract idea, even if
the Mayo test is applied correctly.
Appeal Brief 9 (referring Non-Final Action 3-5).
Appellant further contends the Non-Final Action's entire analysis of
the claims is directed to an abstract idea and is contained entirely in the first
full paragraph of the rejection. Appeal Brief 9 (citing Non-Final Action 4).
5
Appeal Number 2017-010184
Application Number 13/373,856
Appellant argues the task of the Examiner is not to refer to broad categories
of abstract ideas, but to "go beyond the broad categories and determine
whether the claims are similar to an identified patent-ineligible concept."
Appeal Brief 9. Appellant further argues the claimed system is not one of
the examples provided in the Guidelines2 because the invention tracks the
number of times an application is opened and tracks the number of times a
user shares the application's digital content wherein the distinctive portions
of the digital content are modified in accordance to received tracking data.
Appeal Brief 9-10.
Appellant contends:
The step of "determin[ing] to modify the first piece of digital
content and not the second piece of digital content and change at
least one delivery parameter associated with the first piece of
digital content to at least the first device based at least in part on
the tracking data received from the branded user application on
the first device ... " alone goes beyond merely comparing
intangible data. Thus, and as in Enfish, the claims cannot
properly be said to be directed to an abstract idea when the first
step of the Mayo/Alice test is applied.
Appeal Brief 10.
In the Answer, the Examiner maintains the determination that the
claims are directed to an abstract idea by comparing the claims to those
featured in Cybersource (non-precedential), Electric Power Group, and
Intellectual Ventures I LLC v. Capital One Bank (USA), 793 F.3d 1363 (Fed.
Cir. 2015). Answer 4--5. The Examiner determines the "claimed steps of
the instant invention are even less concrete than those of Electric Power
Group which the CAFC described as 'the focus of the asserted claims ... is
2 2105 Interim Guidance
6
Appeal Number 2017-010184
Application Number 13/373,856
on collecting information, analyzing it, and displaying certain results of the
collection and analysis'" and concludes that the "claimed invention collects
and analyzes information, but does not display the results of the collection or
analysis." Answer 4. The Examiner finds, "[I]n the instant invention the
collecting step is the same as that mentioned above, there is no displaying
step and the determining step is manipulating the information." Answer 4--5
(citing Intellectual Ventures I, 793 F.3d 1363).
Appellant contends, "while the Supreme Court must tread carefully,
these certain art groups are under no similar restraint when applying
Supreme Court precedent," and that "there is no justification for applying
what should be an exception, and therefore rare, to the laws on patent
eligibility in order to find that the claims in this application are directed to
un-patentable subject matter." Reply Brief 3. Appellant further contends,
"[T]here was no justification previously as Applicant pointed out [see
Appeal Brief], and there is no supportable justification contained in the 8
new pages of rationale just provided [see Answer]," and that "no new
evidence has been presented or come to light that impacts the determination
of patent eligibility and that would lead to this late realization that the claims
are not patent eligible." Reply Brief 3.
We find Appellant's arguments that the claims go "beyond merely
comparing intangible data" unpersuasive. See Appeal Brief 10. As the
Federal Circuit stated in Enfzsh, "the first step in the Alice inquiry in this
case asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfzsh, 822 F.3d at 1335-36. We find the plain focus of the claim is
7
Appeal Number 2017-010184
Application Number 13/373,856
not on an improvement to the computer functionality itself, but instead the
focus is on an abstract idea that uses computers and networks as tools. See
id. at 1336.
We agree with the Examiner's finding that at step one of the Alice
analysis, the claims are directed to one or more abstract ideas. Thus, we tum
to the second step of the Alice analysis, in which we must determine whether
the additional elements of the claims transform them into patent-eligible
subject matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
"[Appellant] traverses the rejection because the above claims are not
directed to an abstract idea, and even if they were, they do add significantly
more." Reply Brief 3. Appellant contends, "At the heart of the rejection is
the allegation that certain claimed steps can be performed by the human
mind and are therefore an idea of itself." Reply Brief 4. Appellant argues
when the claims are read in the light of the Specification, the claims are not
simply an idea itself or a mental process but are clearly directed to an
improvement in conventional digital media systems that provides the:
[ A ]bility to track user interaction with digital content and then
based on that interaction provide rewards, new content, etc.,
improves older systems that don't provide such tracking and
therefore don't provide the ability to change the content in order
to keep the user engaged. This is not a trivial invention, nor is it
merely a mental process.
Reply Brief 4--5.
Appellant's argument that the claimed invention is novel and,
therefore, are not merely directed to a mental process is not persuasive
because, as the Federal Circuit has explained, a "'claim for a new abstract
8
Appeal Number 2017-010184
Application Number 13/373,856
idea is still an abstract idea.'" SAP Am., Inc. v. InvestPic, LLC, No. 2017-
2081, 2018 WL 3656048, at *4 (Fed. Cir. Aug. 2, 2018) (quoting Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)). Even
assuming the technique claimed was "'innovative, or even brilliant,"' that
would not be enough for the claimed abstract idea to be patent eligible. See
SAP Am., 2018 WL 3656048 at *4 (quotingAss'nfor Molecular Pathology
v. Myriad Genetics, Inc. 569 U.S. 576, 591 (2013)).
Appellant further argues that "even assuming the claims were directed
to an abstract idea, which they are not, an analysis of the remaining claim
limitations individually and as a whole shows that the claims do add
significantly more to any such abstract idea." Reply Brief 6. Appellant
argues the Examiner has not set forth "an opposing detailed reasoning or
evidence ( other than to say that the invention employs generic computer
functionalities)" that would support the Examiner's determination that the
claims do not add significantly more to the claims. Reply Brief 6. However,
the Examiner finds:
• Generic computer components recited as performing generic
computer functions that are well-understood, routine and
conventional activities amount to no more than implementing
the abstract idea with a computerized system.
• Thus, taken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea).
• Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually.
9
Appeal Number 2017-010184
Application Number 13/373,856
• There is no indication that the combination of elements
improves the functioning of a computer or improves any other
technology. Their collective functions merely provide
conventional computer implementation. The claimed invention
does not transform an article into another state or thing, nor are
there any unconventional steps.
• Thus, the claims do not include additional elements, taken
individually or as an ordered combination of elements, that
amount to significantly more than the judicial exception
because the additional elements are merely directed to
instructions to implement the idea on a computer and/or
computer implemented functions that are well-understood,
routine, and conventional activities previously known to the art.
Answer 5---6.
Appellant argues that the claims in the instant application involve a
technical improvement with regard to computational techniques of a
computer. See Reply Brief 7. Appellant contends, "the additional claim
limitations recite a system in which a server interacts with user devices to
track a number of times an application on a mobile device is opened, a
number of times digital content is shared by the mobile device, and based at
least in part on the above data modify the digital content," and, therefore,
"the claim recites significantly more than an abstract idea, i.e., detailed steps
to carry out a complex function." Reply Brief 8.
Appellant further contends, "As explained in the specification, the
pertinent limitations of the independent claims are novel advancements
designed to address the problem of treating and keeping track of the multiple
10
Appeal Number 2017-010184
Application Number 13/373,856
biological mechanisms associated with dementia-related diseases. See
Specification at 2." Appeal Brief 12. It is noted that Appellant does not
expressly challenge the Examiner's finding that the recited computer
structure and functions are well-understood, routine, and conventional.
Further, as discussed above, Appellant's argument that the claimed invention
is novel is not persuasive. SAP Am., Inc., 2018 WL 3656048, at *4 (.
Appellant further contends, the claims' "limitations are not generic
components configured to perform well-understood, routine, and
conventional activities previously known in the industry. They are novel and
innovative concepts that are significantly more than 'using categories to
organize, store, and transmit information' and 'comparing new and stored
information and using rules to identify options." Appeal Brief 13. The
Examiner, however, cites to Appellant's Specification, pages 3-5, to support
the determination that the claim limitations employs generic components
that perform well-understood, routine and conventional activities known in
the industry. See Answer 3--4. We agree with the Examiner's determination
that the claims employ generic components that perform well-understood,
routine, and conventional activities.
Appellant argues, "a preemption analysis similarly confirms that the
independent claims at issue are patent eligible. The claims do not preempt all
ways of 'using categories to organize, store, and transmit information' and
'comparing new and stored information and using rules to identify options."'
Appeal Brief 13-14. We agree the Supreme Court has described "the
concern that drives this exclusionary principle [i.e., the exclusion of abstract
ideas from patent eligible subject matter] as one of pre-emption." Alice, 134
S. Ct. at 2354. But characterizing pre-emption as a driving concern for
11
Appeal Number 2017-010184
Application Number 13/373,856
patent eligibility is not the same as characterizing the absence of complete
preemption as proof of patent eligibility. As our reviewing court has
explained, "[t]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability," and
"[f]or 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). And,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility." Id.
Moreover, "[ w ]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework ... , preemption
concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701 (2015)("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract.").
Accordingly, we are not persuaded the Examiner erred and sustain the
Examiner's 35 U.S.C. §101 rejection of claims 1, 2, 8, 10, 21, 22, 24--27, 29
and 30.
35 U.S.C. § 103 Rejections
Appellant contends the combination of Caunter, Kalb, and Knitowski
fails to teach or suggest "receiv[ing], from the branded user ... the first
piece and the second piece of digital content via the branded user application
by the first user" claim limitation. Appeal Brief 17. Appellant further
argues, "[T]he Office Action relies on Caunter to allegedly disclose these
features," and "Caunter fails to disclose or suggest the above-noted
12
Appeal Number 2017-010184
Application Number 13/373,856
features." Appeal Brief 17. The Examiner acknowledges that Caunter does
not specifically teach the disputed limitation. See Non-Final Action 10-11.
The Examiner, however, relies instead on the combination of Kalb and
Knitowski to teach this limitation. Non-Final Action 11-12.
Appellant further argues there is "nothing in Kalb [that] teaches or
suggests managing the plurality of pieces of digital content for a branded
user application on user devices." Appeal Brief 19. The Examiner finds,
"Kalb teaches providing one or more user interfaces for modifying digital
contents (Fig. 17 with paragraph 128 and Fig. 24 with paragraph 139, where
modifying the creative or text message is modifying digital contents since
the both [sic] the creative or text message exist and are modified in digital
form)." Final Action 11. Thus, it is apparent that the Examiner did not rely
upon Kalb to disclose "managing the plurality of pieces of digital content for
a branded user application," as Appellant argues. See Final Action 11; see
also Appeal Brief 18. Further, Appellant fails to address the Examiner's
findings that Kalb discloses in Figures 17 and 24, and paragraphs 128 and
139, "providing one or more user interfaces for modifying digital contents."
Final Action 11; see Appeal Brief 18-19. Appellant cites a portion or select
sentences from paragraph 128, but proffers no arguments as to why the
Examiner's specific findings are improper. See Appeal Brief 19.
Appellant contends the Examiner "asserts that Kalb, Caunter, and
Knitowski are obvious to combine since 'one of ordinary skill in the art
would have recognized that the results of the combination were predictable
since provision of the interfaces does not affect the underlying system.'"
Appeal Brief 19 (citing Non-Final Action 11-12.). The Examiner actually
determined:
13
Appeal Number 2017-010184
Application Number 13/373,856
[I]t would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the two and track both the
total number of times an application was opened and the total
number of times it was shared since "A person of ordinary skill
in the art is also a person of ordinary creativity, not an
automaton." (KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421,
82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle." (Id. at 420, 82 USPQ2d 1397).
Office personnel may also take into account "the inferences and
creative steps that a person of ordinary skill in the art would
employ." (Id. at 418, 82 USPQ2d at 1396). It would have been
obvious to one of ordinary skill in the art at the time of the
invention to include track both the total number of times an
application was opened and the total number of times it was
shared as taught by Knitowski in the system of Caunter, since the
combination provides metrics to be used in evaluating a
campaign. It would also have been obvious to one of ordinary
skill in the art at the time of the invention to include track both
the total number of times an application was opened and the total
number of times it was shared as taught by Knitowski in the
system of Caunter, since the claimed invention is merely a
combination of old elements, and one of ordinary skill in the art
would have recognized that the results of the combination were
predictable since adding metrics merely enhances the system
without adversely affecting it.
Non-Final Action 11-12.
The Examiner cited Knitowski as teaching "that a user may share
content (paragraph 26) and tracking the total number of times an application
was opened (paragraph 34)." Non-Final Action 11. We agree. We further
note that Knitowski discloses in paragraph 26, "[A] user may also sort, filter
and search through the content provided or share it via email or social
networks such as Facebook and/or Twitter." Knitowski also discloses in
paragraph 34, "[I]n addition, the application analytics may include real-time,
14
Appeal Number 2017-010184
Application Number 13/373,856
in-application user and usage statistics by application, including the total
number of times that the application was opened."
We do not find Appellant's arguments persuasive because they fail
to address the merits of the Examiner's rejection. Once the Examiner has
satisfied the burden of presenting a prima facie case of obviousness, the
burden then shifts to Appellant to present evidence and/ or arguments that
persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Appellant did not particularly point out
errors in the Examiner's reasoning to persuasively rebut the Examiner's
prima facie case of obviousness, the obviousness rejection of claim 1 is
sustained, as well as the obviousness rejections of claims 2, 8, 10, 21, 22,
24--27, 29 and 30 not argued separately. See Appeal Brief 14.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 2, 8, 10, 21,
22, 24--27, 29 and 30 is affirmed.
The Examiner's 35 U.S.C. § 103 rejections of claims 1, 2, 8, 10, 21,
22, 24--27, 29 and 30 are 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). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
15