Ex Parte Zamani

Patent Trial and Appeal Board

Jun 29, 2018

13037177 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/037, 177 02/28/2011
26379 7590 07/03/2018
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Pa yam Zamani
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.
353952-991004 6374
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAY AM ZAMAN!
Appeal2017-003572
Application 13/037,1 77
Technology Center 3600
Before ERIC B. CHEN, MONICA S. ULLAGADDI, and SCOTT E. BAIN,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review, under 35 U.S.C. § 134(a), of the
Examiner's final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-003572
Application 13/037,177
INVENTION
Appellant's invention is a "lead marketplace system and method."
Spec., title. A "lead" is information "about a transaction that a [prospective]
customer is interested in." Id. at 1, 11. 19--22. "Leads are not purchase
requests per se[;] rather they consist of the information necessary for a
Service Provider to contact a customer in an effort to acquire the customer's
business." Id. at 11. 23-25.
The independent claims on appeal are claims 1 and 13. Claim 13 is
reproduced below.
13. A computer implemented lead marketplace method
that stores a plurality of leads wherein each lead is an electronic
contact and transactional information that provides an
opportunity to sell a good or service to a prospective customer,
the method comprising:
storing, in a seller campaign table storage unit, one or
more selling campaigns for one or more Lead Sellers, each
selling campaign enabling the association of one or more leads
to be sold in a lead marketplace system;
storing, in a buyer campaign table storage unit, one or
more buying campaigns for one or more Lead Buyers, each
buying campaign including one or more parameters specifying
the characteristics of leads to be bought by the Lead Buyer
associated with the buying campaign, at least one buying
campaign further comprises one of a fixed buying campaign that
specifies a price and budget for buying a lead and a ping
campaign including one or more parameters specifying the
characteristics of leads to be bought by the Lead Buyer
associated with the ping buying campaign when a lead matches
the one or more parameters of the ping buying campaign so that
the Lead Buyer has the ability to bid on the first lead; and
providing, using a third party buyer ping computer, a
notification to the Lead Buyer that the first lead matches the one
or more parameters of the ping buying campaign wherein the
2
Appeal2017-003572
Application 13/037,177
notification includes consumer and transaction information
associated with the first lead; and
allowing the Lead Buyer to bid on the lead that matches
the ping buying campaign.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. (Final Act. 3-8.)
ANALYSIS
We are unpersuaded by Appellant's arguments (App. Br. 9-11; see
also Reply Br. 3-5) that independent claims 1 and 13 are directed to patent-
eligible subject matter under 35 U.S.C. § 101.
The Examiner found that
[t]he limitations of claims 1 and 13 as a whole describe the
concept of "selling information" (i.e. a lead), which is considered
to be an abstract idea inasmuch as such activity is considered
both a fundamental economic practice and a method of
organizing human activity by providing an opportunity for
parties to enter into a contractual relationship [i.e., buySAFE, Inc.
v. Google, Inc.]
(Ans. 3) and "the organization and comparison of data which can be
performed mentally and is an idea of itself, hence an abstract idea," 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
( Cyberfone ), or comparing new and stored information and using rules to
identify options (SmartGene)" (id. at 4). The Examiner further found that
"when considering the elements and combinations of elements, the claims as
3
Appeal2017-003572
Application 13/037,177
a whole, do not amount to significantly more than the abstract idea itself."
(Final Act. 4.) In particular, the Examiner found that
the claim does not amount to an improvement to another
technology or technical field; the claim does not amount to an
improvement to the functioning of a computer itself; the claim
does not move beyond a general link of the use of an abstract
idea to a particular technological environment; and the claim
amounts to nothing more than requiring a generic computer to
perform generic computer functions that are well-understood,
routine and conventional activities previously known to the
industry.
(Id.) We agree with the Examiner's findings and ultimate conclusion that
the claims are directed to non-statutory subject matter.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this "provision
contains an important implicit exception: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work."). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).
In Mayo, the Court stated that "to transform an unpatentable law of nature
into a patent-eligible application of such a law, one must do more than
simply state the law of nature while adding the words 'apply it."' Mayo, 566
U.S. at 72 (internal citation omitted).
4
Appeal2017-003572
Application 13/037,177
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "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." Id.
If the claims are directed to a patent-ineligible concept, then 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." Id. (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. (brackets in original) (quoting Mayo, 566
U.S. at 72-73). "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. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77-78). The prohibition against
patenting an abstract idea "cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11
(2010) (internal citation and quotation marks omitted). The Court in Alice
noted that "' [ s ]imply appending conventional steps, specified at a high level
of generality,' was not 'enough' [in Mayo] to supply an 'inventive
concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83,
5
Appeal2017-003572
Application 13/037,177
77-78, 72-73).
Alice Step one: Are the claims at issue
directed to a patent-ineligible concept?
Independent claim 13 is a method claim, which recites, in part, the
following: (i) "storing ... one or more selling campaigns for one or more
Lead Sellers ... a ping campaign including one or more parameters
specifying the characteristics of leads to be bought by the Lead Buyer"; (ii)
"storing ... one or more buying campaigns for one or more Lead Buyers";
(iii) "providing ... a notification to the Lead Buyer that the first lead
matches the one or more parameters of the ping buying campaign." Such
method steps of claim 13 are directed to a patent-ineligible abstract idea of
collecting, analyzing, and storing data. See, e.g., Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("a process of gathering and
analyzing information of a specified content, then displaying the results" is
"directed to an abstract idea"); Cybeifone Sys. v. CNN Interactive Grp., 558
Fed. Appx. 988, 993 (Fed. Cir. 2014) ("[n]or does the particular
configuration of steps---obtaining, separating, and then sending
information---confer patentability"); Digitech Image Techs., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
("[ w ]ithout additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible"); SmartGene, Inc. v. Advanced Biological
Labs., 555 F. App'x 950, 955 (Fed. Cir. 2014) ("the claim at issue here
involves a mental process excluded from section 101: the mental steps of
6
Appeal2017-003572
Application 13/037,177
comparing new and stored information and using rules to identify medical
options").
Independent claim 13 also recites "wherein each lead is an electronic
contact and transactional information that provides an opportunity to sell a
good or service to a prospective customer" in the preamble, along with the
following method steps of: (i) "each selling campaign enabling the
association of one or more leads to be sold in a lead marketplace system";
(ii) "each buying campaign including one or more parameters specifying the
characteristics of leads to be bought by the Lead Buyer associated with the
buying campaign, at least one buying campaign further comprises one of a
fixed buying campaign that specifies a price and budget for buying a lead
and a ping campaign including one or more parameters specifying the
characteristics of leads to be bought by the Lead Buyer associated with the
ping buying campaign when a lead matches the one or more parameters of
the ping buying campaign so that the Lead Buyer has the ability to bid on the
first lead"; (iii) "wherein the notification includes consumer and transaction
information associated with the first lead;" and (iv) "allowing the Lead
Buyer to bid on the lead that matches the ping buying campaign." Such
remaining method steps of claim 13 are directed to the patent-ineligible
abstract concept relating to sales, "a fundamental economic practice long
prevalent in our system of commerce" (see Alice, 134 S. Ct. at 2356) and the
creation of a contractual relationship (see buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)).
Accordingly, claim 13 is directed to a patent-ineligible abstract idea.
Claim 1, a corresponding system claim, recites limitations similar to those
7
Appeal2017-003572
Application 13/037,177
discussed with respect to claim 13. Thus, claim 1 is also directed to a
patent-ineligible abstract idea.
Alice Step two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent-ineligible concept?
Because claims 1 and 13 are directed to an abstract idea, the question
is whether these claims recite an element, or combination of elements, that is
enough to ensure that the claim is directed to significantly more than an
abstract idea.
Claim 13 is a computer-implemented method claim, which includes a
"storage unit" and "computer." Claim 1, a system claim, recites a "storage
system" and a "unit." The claimed hardware components, including a
"storage unit," "computer," "storage system," and "unit" are generic, purely
conventional computer elements. (See, e.g., Spec. 4:11-15.) Thus, the
claims do no more than require generic computer elements to perform
generic computer functions, rather than improve computer capabilities.
Accordingly, appending a conventional "storage unit," "computer,"
"storage system," and "unit" to an abstract idea is not enough to transform
an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at
2358 ("[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.").
First, Appellant argues that "like the Enfzsh case, the claims are
directed to an improvement in computer technology in that the claims are
directed to a lead marketplace that has the technology improvement of a
ping campaign unit [as claimed] . . . which is an improvements over the
known technology (evidenced by the fact that no prior art has been cited in
8
Appeal2017-003572
Application 13/037,177
the office action and the claims have been indicated as allowable over the
prior art in the final office action." (App. Br. 9.) However, other than
providing a conclusory statement that "the claims are directed to an
improvement in computer technology in that the claims are directed to a lead
marketplace that has the technology improvement of a ping campaign unit
[as claimed] ... which is an improvements over the known technology,"
Appellant has not provided any additional explanation or evidence to
support this position. For example, Appellant has not provided citations to
the Specification to demonstrate that the claimed invention is an
improvement of an existing technology or demonstrated a deficiency in the
prior art. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed.
Cir. 2016) ("[O]ur conclusion that the claims are directed to an improvement
of an existing technology is bolstered by the specification's teachings that
the claimed invention achieves other benefits over conventional databases,
such as increased flexibility, faster search times, and smaller memory
requirements"). Moreover, Appellant improperly conflates the requirements
for eligible subject matter with the independent requirements of novelty and
non-obviousness. "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." Diamond v. Diehr, 450 U.S. 175, 188-89
(1981 ).
Second, Appellant argues that "pursuant to Enfish, the examiner has
inappropriately described the claim at a high level of abstraction untethered
from the language of the claim." (App. Br. 10.) In particular, Appellant
argues that "the examiner has set forth a very broad alleged abstract idea
9
Appeal2017-003572
Application 13/037,177
(selling information) while the claims (and the claim language) show that the
claims are directed to more than the abstract idea." (Id.) Contrary to
Appellant's arguments, the Examiner found that "[t]he limitations of
claims 1 and 13 as a whole describe the concept of 'selling information' (i.e.
a lead) ... [as] a fundamental economic practice" (Ans. 3) and "the
organization and comparison of data which can be performed mentally and
is an idea of itself, hence an abstract idea" (id. at 4).
Third, Appellant argues that: (i) "the claims are directed to a
technology improvement and thus are directed to patent eligible subject
matter" because "the claims recite the ping campaign unit that provides a
notification to the Lead Buyer that the first lead matches the one or more
parameters of the ping buying campaign" (App. Br. 10); (ii) "[t]he claims
apply any alleged abstract idea with a machine that does not perform generic
computer functions" (id. at 10-11) because "the claims recite the ping
campaign unit that provides a notification to the Lead Buyer that the first
lead matches the one or more parameters of the ping buying campaign" (id.
at 11 ); and (iii) "[ t ]he claims also add meaningful limitations that amount to
more than generally linking the alleged abstract idea to a particular
technological environment" because "the claims recite the ping campaign
unit that provides a notification to the Lead Buyer that the first lead matches
the one or more parameters of the ping buying campaign" (id.). However,
Appellant has not adequately explained why the claim "purport[ s] to
improve the functioning of the computer itself' or "any other technology or
technical field." Alice, 134 S. Ct. at 2359. In particular, Appellant has not
explained why collecting, analyzing, and storing data, improves the function
of a computer or other technology.
10
Appeal2017-003572
Application 13/037,177
Fourth, Appellant argues that "[l]ike the McRO claims, the present
claims are directed to improving an existing technological process (lead
marketplace with ping campaigns) like the lip synchronization and facial
expression control of animated characters in McRo." (Reply Br. 3.) In
particular, Appellant argues that
the one or more buying campaigns . . . , each buying campaign
including one or more parameters specifying the characteristics
of leads to be bought by the Lead Buyer associated with the
buying campaign, at least one buying campaign further
comprises one of a fixed buying campaign that specifies a price
and budget for buying a lead and a ping campaign including one
or more parameters specifying the characteristics of leads to be
bought by the Lead Buyer associated with the ping buying
campaign when a lead matches the one or more parameters of the
ping buying campaign are like the set of rules in McRo
and "like McRO, it is the processes ... and not the use of a computer that
improved the existing technological process of lead generation using the
elements set forth in the claims." (Id. at 4.) However, other than providing
a general conclusory statement that claimed buying campaigns "are like the
set of rules in McRo" and "it is the processes ... and not the use of a
computer that improved the existing technological process of lead
generation," Appellant has not adequately explained how this case pertains
to the claimed invention.
Last, Appellant argues that "[ s ]imilar to the Bascom case, the present
claims are directed broadly to lead generation that may be an abstract idea
like the content filtering in Bascom." (Reply Br. 5.) In particular, Appellant
argues that
like Bascom, the present claims are a particular arrangement of
elements (including the store, the one or more buying campaigns,
the one or more ping campaigns and the ping campaign unit that
11
Appeal2017-003572
Application 13/037,177
provides a notification to the Lead Buyer that the first lead
matches the one or more parameters of the ping buying campaign
wherein the notification includes one of consumer and
transaction information associated with the first lead and that
allows the Lead Buyer to bid on the first Lead that matches the
ping buying campaign) that are a technical improvement and a
technical solution over the prior art ways of lead generation.
(Id.) However, other than providing a generalized conclusory statement that
claim buying campaigns "the present claims are a particular arrangement of
elements ... that are a technical improvement and a technical solution over
the prior art ways of lead generation," Appellant does not explain how this
case pertains to the claimed invention.
Accordingly, we sustain the rejection of independent claims 1 and 13
under 35 U.S.C. § 101. Claims 2-12 and 14--20 depend from claim 1 and
13, and Appellant has not presented any additional substantive arguments
with respect to these claims. Therefore, we sustain the rejection of claims 2-
12 and 14--20 under 35 U.S.C. § 101, for the same reasons discussed with
respect to independent claims 1 and 13.
DECISION
The Examiner's decision rejecting claims 1-20 is 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 )(iv).
AFFIRMED
12