Ex Parte WALKER et al

Patent Trial and Appeal Board

Jul 31, 2018

13036189 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/036, 189 02/28/2011 JAYS. WALKER
91230 7590 08/02/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0362 4449
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAYS. WALKER, ANDREWS. VAN LUCHENE,
and MAGDALENA M. FINCHAM
Appeal 2016-006759
Application 13/036, 189
Technology Center 3600
Before MARC S. HOFF, JOHN A. EVANS, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, 4, 7-9, 12-15, 19-26, and 28, which are all of
the claims pending in this application. 2 We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 3.
2 Claims 2, 5, 6, 10, 11, 16-18, and 27 have been canceled. App. Br. 20-24
(Claim App'x).
Appeal2016-006759
Application 13/036, 189
INVENTION
Appellants' invention relates to a method and apparatus for product
display. Abstract. Claim 1 is illustrative and reads as follows:
1. A method comprising:
by one or more computers, receiving an indication of a
product category from a user;
by one or more computers, determining a product based
on the product category;
by one or more computers, identifying a set of substitute
products, wherein the particular substitute products are identified
based on the product category, and wherein each substitute
product in the set is associated with information comprising:
a payment that a respective manufacturer has agreed
to pay each time the substitute product is purchased,
a payment that the respective manufacturer has
agreed to pay each time the substitute product is displayed
and
an offer to be provided to the user for purchasing
the substitute product from the product category;
by one or more computers, selecting a substitute product
from the set of substitute products, wherein selecting the
substitute product is based at least in part on the payment that the
respective manufacturer has agreed to pay each time the
substitute product is purchased and on the payment that the
respective manufacturer has agreed to pay each time the
substitute product is displayed, and wherein selecting the
substitute product is further based on a substitution success rate
for the selected substitute product, the substitution success rate
being calculated with respect to the substitute product being
substituted for the determined product; and
by one or more computers, sending the selected substitute
product with the associated offer to the user for display, wherein
the selected substitute product and the associated offer are
displayed adjacent to the determined product on a check-out
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webpage to provide an incentive to the user to purchase the
substitute product at check-out, and wherein the check-out
webpage provides functionality to complete the purchase of the
substitute product.
REJECTIONS
Claim 28 stands rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor or a joint inventor regards as the
invention. Final Act. 7-8.
Claims 1, 3, 4, 7-9, 12-15, 19-26, and 28 are rejected under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more). Final Act. 8-12.
ANALYSIS
We have reviewed the rejections of claims 1, 3, 4, 7-9, 12-15, 19-26,
and 28 in light of Appellants' arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made, but chose
not to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-6) and in the Action (Final Act. 7-12) from
which this appeal was taken. We provide the following explanation for
emphasis.
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Rejection of Claim 28 under 35. U.S. C. § 112, Second Paragraph
The Examiner rejected claim 28 on the ground of indefiniteness. Final Act.
7-8. Because Appellants do not contest the merits of the Examiner's
rejection, we proforma, sustain the Examiner's rejection of claim 28 under
35 U.S.C. § 112, second paragraph. See 37 C.F.R. § 41.3 l(c) ("An appeal,
when taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office."); 37 C.F.R. § 4I.37(c)(iv) ("[A]ny arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal."); MPEP § 1205.02 (9th ed.
March 2014) ("[T]he Board may summarily sustain any grounds of
rejections not argued.").
Rejection of All Pending Claims under 35 U.S.C. § 101
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 83 (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 that analysis is to "determine whether the claims at
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issue are directed to one of those patent-ineligible concepts" (id.), for
example, to an abstract idea. If the claims are directed to one of the patent-
ineligible concepts, the inquiry proceeds to the second step where the
elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether the additional elements "'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78).
Here, the Examiner concluded that the claims, as reasonably and
broadly construed, are directed to the abstract concept of influencing a user
to purchase a selectable substitute product at checkout-a fundamental
economic practice-and, thus, are directed to a patent-ineligible abstract
idea. Final Act. 11. The Examiner concluded that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. Id.
With regard to the first step of the Alice inquiry, Appellants argue in a
conclusory manner that the claims are directed to "selection of a substitute
product for insertion into an online check-out webpage based on specific
criteria and manipulating the check-out webpage in order to facilitate online
purchase of the substitute product," which "is not an abstract idea" or a
fundamental economic practice. App. Br. 13.
The claims are directed to the fundamental economic idea of
advertising. Specifically, claim 13 is directed to identifying a substitute
product (i.e., sending the selected substitute product with the associated offer
3 Appellants argue claims 1, 3, 4, 7-9, 12-15, 19-26, and 28 as a group (see,
e.g., App. Br. 13), and we choose claim 1 as representative of the group. See
37 C.F.R. § 4I.37(c)(l)(iv).
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to the user for display) in order to influence the user to purchase the
substitute product at checkout. See Affinity Labs. of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) ("we hold that the
concept of delivering user-selected media content to portable devices is an
abstract idea"); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369-70 (Fed. Cir. 2015) (the practice of tailoring advertising to
individual customers is a "'fundamental ... practice long prevalent in our
system'"); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir.
2014) ("showing an advertisement before delivering free content" is an
abstract idea). Appellants have not persuasively explained why the claims
are not directed to an abstract idea.
Appellants further contend the Examiner erred because, as in DDR
Holdings, the present claims do not "broadly and generically claim use of
the Internet to perform an abstract [idea]." App. Br. 12 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (2014)).
Appellants argue that, instead, independent claims 1, 3, and 15 are directed
to selection of a substitute product for insertion into an online check-out
webpage based on specific criteria and manipulating the check-out webpage
in order to facilitate online purchase of the substitute product. Id.
According to Appellants, in particular, the claims "specify how interactions
with the Internet are manipulated to yield a desired result," namely by
"identifying a set of substitute products." Id. Appellants argue that "one of
skill in the art would recognize that the claimed invention is 'necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.'" Id. at 13.
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Appellants' arguments are not persuasive. We disagree that claim 1 is
like the claims in DDR Holdings. Here, no technological advance is evident.
Claim 1 involves nothing more than obtaining and analyzing information in
order to identify a selectable, substitute product for purchase at checkout,
without any particular inventive technology. Unlike the situation in DDR
Holdings, Appellants do not identify any problem particular to computer
networks and/or the Internet that claim 1 allegedly overcomes. To the
contrary, rather than addressing a technical problem, the method of claim 1
is used to solve the business problem of influencing a user to purchase a
substitute product. See Ans. 4. We agree with the Examiner that here, as in
Ultramercial, there is no indication that a computer network, or the Internet,
in particular, is used other than in its normal, expected, and routine manner
for receiving, processing, and displaying data. See Ans. 4 ( citing
Ultramercial, 772 F.3d at 709.
For these reasons, we are not persuaded the Examiner erred in
concluding claim 1 is directed to an abstract idea.
Turning to Alice step two, Appellants contend "one of skill in the art
would understand the invention to provide at least improvements to another
technology or technical field or improvements to the functioning of the
computer itself." App. Br. 14. Appellants further contend the claims relate
to "a computer-implemented method to transform data in a particular
manner by" the recited "receiving," "determining," "identifying,"
"selecting," and "sending" steps of claim 1. Id. Appellants rely on PNC
Bankv. Secure Axcess, LLC, CBM2014-00100, 2014 WL 4537440 (PTAB
Sept. 9, 2014) to argue that claims that require a transformation of data are
not directed to abstract ideas. App. Br. 14.
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Appellants' arguments are not persuasive. Appellants do not point to
anything in the Specification, or otherwise identify the technological
improvements one of ordinary skill would allegedly understand the claims to
recite. Nor do Appellants point with particularity to the data that is allegedly
transformed in a particular manner. Selecting and displaying a substitute
product in a user interface to convey information to a user is not sufficient to
transform the nature of the claim under the second step of Alice. See, e.g.,
Intellectual Ventures I, 792 F.3d at 1370 (finding that the recited "interactive
interface" was not a "specific application of the abstract idea that provides
an inventive concept"); Affinity, 838 F.3d at 1262 (characterizing a
"graphical user interface" as a "generic feature" of the invention).
Moreover, the claims in PNC Bank are not comparable to the claims
at issue here. In PNC Bank, the claims involved authenticating a web page.
Appellants have not shown how the facts in PNC Bank are relevant to the
present Appeal, and PNC Bank is not precedential or binding on this panel in
this Appeal. In addition, there are significant differences between the
attorney arguments presented in a post-grant AIA-CBM proceeding such as
PNC Bank and the findings and conclusions of an Examiner. See Icon
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042--44 (Fed. Cir.
201 7) ( discussing differences between attorney arguments and the
Examiner's findings).
Appellants next contend claim 1 contains an "inventive concept"
because the claim is patentably distinct from the prior art. App. Br. 15.
We disagree. A finding of novelty or non-obviousness does not
automatically lead to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Alice framework is termed a
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search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for "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 Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at
72-73). "Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
(1981) ("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").
For these reasons, we are not persuaded the Examiner erred in
concluding no additional elements transform the nature of claim 1 into a
patent-eligible application.
Finally, Appellants contend the Examiner failed to establish a prima
facie case that the claims are directed to an abstract idea because the
Examiner presented no evidence that "selecting substitute products to offer a
user on a check-out screen of a web browser" is a fundamental economic
practice. App. Br. 15-16 (citing PNC Bank v. Secure Axcess, CBM2014-
00100, 2014 WL 4537440 (PTAB September 9, 2014)). Appellants also
argue "there is no evidence on the record that the invention as defined by the
particular claim limitations is simply an abstract method for 'influencing a
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user to purchase a selectable substitute product at check-out' as asserted by
the Examiner." Id. at 16.
Although we do not consider PNC Bank either controlling or
germane, that panel's consideration of evidence in making a determination
under the first step of the Alice framework is not without merit. A similar
approach was taken in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed.
Cir. 2016). But these cases do not stand for the proposition that examiners
must provide evidentiary support in every case before a conclusion can be
made that a claim is directed to an abstract idea. There is no such
requirement. See, e.g., MPEP 2106.07(a)(III) [R-08.2017] ("The courts
consider the determination of whether a claim is eligible (which involves
identifying whether an exception such as an abstract idea is being claimed)
to be a question of law.") Evidence may be helpful in certain situations
where, for instance, facts are in dispute, but it is not always necessary.
Appellants have not persuaded us it is necessary in this case.
Moreover, the Federal Circuit has repeatedly explained that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner carries the burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370.
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The Final Office Action adequately explains the § 101 rejection. See
Final Act. 8-12. The Examiner's statements satisfy§ 132 because they
apply the Alice analytical framework and apprise Appellants of the reasons
for the§ 101 rejection under that framework. Appellants have recognized
the Examiner's Alice analysis and have presented arguments regarding each
step. See App. Br. 10-18. Appellants have not responded by alleging a
failure to understand the rejection. Id.
For these reasons, we are not persuaded the Examiner failed to make a
prima facie case of patent ineligibility under § 101.
Accordingly, we sustain the Examiner's § 101 rejection of
representative claim 1, as well as the Examiner's§ 101 rejection of grouped
claims 3, 4, 7-9, 12-15, 19-26, and 28, not argued separately. See App. Br.
13, 18.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 3, 4, 7-9,
12-15, 19-26, and 28.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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