Ex Parte Walker et al

Patent Trial and Appeal Board

Jun 29, 2018

11681441 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/681,441 0310212007
826 7590 07/03/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Jay S. Walker
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.
058407 /426786 7195
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY S. WALKER, ANDREW S. VAN LUCHENE,
JONATHAN OTTO, MAGDALENA MIK, DANIELE. TEDESCO,
ANDREW P. GOLDEN and RUSSELL PRATT SAMMON
Appeal2017-003999
Application 11/681,441
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI,
and SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner's Final Rejection of claims 1-70, constituting all claims currently
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 11/681,441
STATEMENT OF THE CASE
Appellants' invention is directed to "method and apparatus for
enabling a customer to indicate brand indifference within a product or
service category and then receive a benefit for purchasing a product or
service chosen by a third party from within the product or service category."
Spec. 1, 11. 25-28. Claim 1, reproduced below with the disputed limitations
in italics, is representative of the claimed subject matter:
1. A method, comprising:
receiving, by a controller device, a product category
created by a customer, wherein the product category defines a
number of different brands of a product;
receiving, by the controller device, an agreement from
the customer to purchase a product from the product category,
determining by the controller device, a brand
indifference of the customer based on the number of different
brands defined by the product category;
selecting, by the controller device and for the customer, a
product from the product category;
providing, by the controller device, an indication of the
selected product to the customer;
receiving, by the controller device, an indication of the
purchase of the selected product by the customer; and
providing a discount to the customer based at least in
part on the determined brand indifference of the customer.
REJECTIONS
Claims 1-70 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 4.
Claims 1-70 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker et al. (US 2002/0133426 Al; published Sep. 19,
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2002) ("Walker"), Elmer Sauerwein et al., The Kano Model: How to Delight
Your Customers, IX. International Working Seminar on Production
Economics (1996) ("Sauerwein"), Rivalto (US 5,482,139; issued Jan. 9,
1996), and Yuen (US 7,003,792 B2; issued Feb. 21, 2006). Final Act. 7.
ANALYSIS
35 US.C. § 101 Rejection
Appellants contend the "Streamlined Eligibility Analysis" should be
utilized when evaluating the claimed invention. See App. Br. 11 (citing
Section I.B.3 of the Interim Eligibility Guidance). Contrary to Appellants'
argument, the Examiner is not required to use the streamlined patent-
eligibility analysis; instead, it is at the Examiner's discretion. As the Interim
Eligibility Guidance cited by Appellants states, "a streamlined analysis can
be used" (emphasis added), but it does not state any circumstances when the
streamlined analysis must be used. Therefore, Examiner's decision to
perform a full section 101 analysis using the Alice/ Mayo framework is not
erroneous.
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claimed invention is directed to
receiving a product category, receiving an agreement, determining a brand
indifference, and then selecting, providing, and receiving a product and
purchase of that product and a discount, which is directed to the "abstract
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idea of using data to perform the fundamental economic practice of
advertising." Final Act. 5.
Appellants argue that the Examiner has oversimplified the claims, and
has improperly compared the claimed invention broadly to the abstract idea
of the fundamental economic practice of advertising without considering the
claims as a whole. App. Br. 10-11; see Reply Br. 3 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
We are not persuaded by Appellants' arguments. We agree with the
Examiner's determination that the claimed steps of receiving, transmitting,
storing, comparing, and displaying data are directed to the fundamental
economic practice of advertising. See Final Act. 5. Specifically, the claims
are directed to targeting advertisements to certain consumers (i.e., providing
a discount to a customer based on indifference determined from customer's
product category) and displaying the advertisement (i.e., providing the
discount to the customer after customer selects a product for purchase from
the product category). 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"'); Morsa v. Facebook, Inc., 622 Fed. App'x 915 (Fed. Cir. 2015)
("claims here are drawn to two abstract ideas: targeting advertisements to
certain consumers, and using a bidding system to determine when and how
advertisements will be displayed"); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 714--715 (Fed. Cir. 2014) ("showing an advertisement before
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delivering free content" is an abstract idea). Appellants have not
persuasively explained why the claimed are not directed to an abstract idea.
In the second step of Alice, we "consider the elements of each claim
both 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 Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78-79 (2012)). 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. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
The Examiner further determines the claimed elements do not provide
meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself. See Final Act. 5; Ans. 3--4. Specifically,
the Examiner concludes the claims do no "more than collect, store, display,
and compare data to optimize a firm's marketing objective on a generic
computer." Ans. 3. According to the Examiner, the claimed elements,
considered separately and as an ordered combination, simply recite "the
concept of analyzing/storing data, comparing/categorizing data, and
displaying the data," which are "well-understood, routine, conventional
activities previously known to the industry." Id.
Appellants argue "the claims amount to more than simply taking the
allegedly abstract idea and adding the words 'apply it,' or 'apply it with a
computer."' App. Br. 13. Appellants argue the claimed invention is
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implemented by a controller device and thereby apply the claimed concepts
using a particular machine. App. Br. 14.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Final Act. 5; Ans. 3--4.
Appellants have not adequately explained how or provided persuasive
evidence to show why the claims add meaningful limits to practicing the
abstract idea. We agree with the Examiner that the claims do not improve
another technology or technical field, or functioning of the computer itself,
and amount to no more "than an instruction to apply the abstract idea of
organizing and analyzing data using some unspecified, generic computer."
Ans. 3--4.
Rather than reciting additional elements that amount to "significantly
more" than the abstract idea, the pending claims, at best, add only a
"controller device." Appellants' Specification describes the controller as
"controller or computer 202" that "may include a processor, microchip, or
computer 302 that is in communication with or otherwise uses or includes
one or more communication ports 304 for communicating with customer
devices, retailer devices, seller devices and/or other devices." Spec. 28: 23-
27. Appellants' Specification further describes that a "conventional
personal computer or workstation with sufficient memory and processing
capability may be used as the controller 202." Spec. 30: 10-11 (emphasis
added). The claimed controller device, in light of Appellants' Specification,
describes a generic computer performing generic computer functions, and
does not satisfy the inventive concept. See, e.g., DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
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make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm is beside
the point." (citation and internal quotation marks omitted)).
We also disagree with Appellants' arguments that the claims are
similar to those in Enfzsh and BASCOM. See Reply Br. 3. In BASCOM, the
Court found the ordered combination of the limitations provided the
requisite inventive concept. BASCOM Global Internet v. AT&T Mobility
LLC, 827 F. 3d 1341, 1349--1350 (Fed. Cir. 2016). ("[A]n inventive concept
can be found in the non-conventional and non-generic arrangement of
known, conventional pieces"). In BASCOM, the patent extensively claimed
and explained how a particular arrangement of elements was "a technical
improvement over prior art ways of filtering such content." Id. at 1350
(E.g., "According to BASCOM, the inventive concept harnesses this
technical feature of network technology in a filtering system by associating
individual accounts with their own filtering scheme and elements while
locating the filtering system on an ISP server."). In Enfish, the patent was
"directed to a specific improvement to computer functionality" embodied in
a self-referential database table. Enfzsh, 822 F.3d at 1338-1399. In both
BASCOM and Enfzsh, there existed substantial argument and support from
the Specification concerning the "inventive concept." Here, Appellants offer
little more than attorney argument and conclusory statements. For example,
Appellants argue "the claims include an improvement to the technical field
because the limitations, at least in combination, necessarily lead to an
improvement to the commerce and computing arts that is not already taught
in the prior art." App. Br. 17. This is not persuasive.
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To the extent Appellants argue that a lack of prior art shows the
claimed invention improves upon the technical field of commerce and
computing arts with limitations that are not well-understood, routine, and
conventional in the field, Appellants misapprehend controlling precedent.
See App. Br. 13-14, 16-17; Reply Br. 3. Although the second step in the
Alice framework is termed a search for an "inventive concept," the analysis
is not an evaluation of novelty or non-obviousness. Alice, 134 S. Ct. at
2355. A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. 66 at 78-79.
Appellants further argue that the claims do not preempt all uses of the
broad concept of advertising. App. Br. 11. Although the extent of
preemption is a consideration, the absence of complete preemption is not
dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
13 71, 13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346
(Fed. Cir. 2013) ("[T]he Supreme Court has stated that, even if a claim does
not wholly pre-empt an abstract idea, it still will not be limited meaningfully
if it contains only insignificant or token pre- or post-solution activity- such
as identifying a relevant audience, a category of use, field of use, or
technological environment.") (citations omitted), vacated and remanded,
WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014) (remanding
for consideration in light of Alice, 134 S. Ct. 2347). Accordingly, even if the
claims do not preempt the abstract idea, that alone is not enough to render
the claims patent-eligible.
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The claims, when viewed as a whole, perform conventional
processing functions (receiving, analyzing, and displaying data) that courts
have routinely found insignificant to transform an abstract idea into a patent-
eligible invention. As such, the claims amount to nothing significantly more
than an instruction to implement the abstract idea on a generic computer -
which is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-70.
35 US. C. § 103 Rejection
Issue: Did the Examiner err in in finding that the combination of
Walker, Sauerwein, Rivalto, and Yuen teaches or suggests "receiving, by a
controller device, a product category created by a customer, wherein the
product category defines a number of different brands of a products,"
"determining by the controller device, a brand indifference of the customer
based on the number of different brands defined by the product category,"
and "providing a discount to the customer based at least in part on the
determined brand indifference of the customer," as recited in independent
claim 1, and commensurately recited in independent claims 30, 52, 56, 63,
and 67?
The Examiner relies on Yuen's determining indifference of a user
through the user's active categorization efforts to teach the claimed
determining a brand indifference based on the number of different brands
defined by the product category. See Ans. 2-3 (citing Yuen col. 15, 1. 65-
col. 16, 1. 26).
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Appellants argue none of the cited prior art references teaches a
product category created by a customer that defines a number of different
brands of a product and determines brand indifference based on the number
of different brands defined by the product category, as claimed. Reply Br. 2;
see App. Br. 19--23.
We are persuaded by Appellants' arguments. As Appellants point out
(App. Br. 20; Reply Br. 2), Yuen describes a "user's rating table" that
"includes a list of subject matters product types, brand names, and the like"
and "[ e Jach entry further includes a user rating given to the particular entry"
allowing users to "indicate their preferences or indifference for an entry."
Yuen col. 16, 11. 11-20. Yuen may teach that a user establishes brand
indifference by rating brands in a plurality of listed brands and product
types, but Yuen is silent to determining brand indifference based on the
number of different brands defined by the product category
We find the Examiner has not provided sufficient findings that Yuen
teaches or suggests the claimed "determining by the controller device, a
brand indifference of the customer based on the number of different brands
defined by the product category [created by a customer]."
Accordingly, we are constrained on the record before us to reverse the
Examiner's§ 103 rejection of independent claims 1, 30, 52, 56, 63, and 67,
as well as dependent claims 2-29, 31-51, 53-55, 57----62, 64----66, and 68-70.
DECISION
The Examiner's rejection of claims 1-70 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1-70 under 35 U.S.C. § 103(a) is
reversed.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
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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