Ouimet, Kenneth J. et al.

Patent Trials and Appeals Board

Apr 29, 2020

13591710 - (D) (P.T.A.B. Apr. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/591,710 08/22/2012 Kenneth J. Ouimet 2734.0013 8231
84278 7590 04/29/2020
PATENT LAW GROUP: Atkins and Associates P.C.
123 W. Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
WHITAKER, JONATHAN J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH J. OUIMET and WAYNE C. NEALE
________________

Appeal 2019-005133
Application 13/591,710
Technology Center 3600
____________

Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 48–67, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as MyWorld,
Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates “in general to consumer purchasing
and, more particularly, to a commerce system and method of controlling the
commerce system by accepting bids and presenting value messages to
consumers.” Spec. ¶ 1. In one embodiment, the Specification describes that a
consumer service provider receives product information from retailers, and
presents search results and value messages to consumers, where “value
messages convey product features or benefits that increase the value to a
searching consumer.” Id. ¶ 107. The consumer service provider selects value
messages with the most valuable bids to present to consumers. Id. Claim 48
is illustrative of the appealed subject matter and reads as follows:
48. A method of controlling communication over an
electronic network including a first computing system and a
second computing system, comprising:
providing a database on the first computing system
including product information corresponding to a plurality of
products;
providing a first data structure on the first computing
system to organize the product information into a plurality of
product families based on related product attributes;
providing a second data structure on the first computing
system for a retailer to place a bid for a value message to be
presented to a consumer with a search result;
receiving a plurality of bids from a plurality of retailers
on the first computing system, wherein each bid corresponds to
one of the plurality of product families;
receiving a search query from a consumer using the
second computing system, wherein the search query
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corresponds to a first product family of the plurality of product
families;
accessing the second data structure to identify bids
corresponding to the first product family;
selecting a winning bid for the first product family using
the first computing system; and
transmitting the value message associated with the
winning bid to the consumer on the second computing system
for presentation on a display screen.
The Examiner’s Rejections
Claims 48–67 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Non–Final Act. 3–11.
Claims 48–67 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Gross (US 2008/0071775 A1; Mar. 20, 2008). Non-
Final Act. 11‒15.

ANALYSIS
Patent-Ineligible Subject Matter
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
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Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.” Id.
(citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “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. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Revised Guidance”). Under
that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claim 48 recites “[a]
method.” We agree with the Examiner’s conclusion that claim 48 falls
within one of the four statutory categories of patentable subject matter
because claim 48 falls within the process category. See Non-Final Act. 3.

Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance at 52. The Examiner concludes
claim 48 is directed to the abstract idea of “a bidding system for placement
of advertisements, which is a fundamental economic practice and/or a
method of organizing human activities.” Non-Final Act. 4; see also Ans. 5.
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Claim 48 recites “[a] method” that includes a number of steps,
including “receiving a plurality of bids from a plurality of retailers . . .
wherein each bid corresponds to one of the plurality of product families,”
“receiving a search query from a consumer . . . wherein the search query
corresponds to a first product family of the plurality of product families,”
“identify[ing] bids corresponding to the first product family,” “selecting a
winning bid for the first product family,” “transmitting the value message
associated with the winning bid to the consumer.” Under the broadest
reasonable interpretation, these steps provide a consumer with a “value
message”—i.e., a marketing message relating to product features or benefits
(see, e.g., Spec. ¶ 107)—based on a consumer’s search for a particular
product family and a winning retailer bid for a particular value message for
that product family. In other words, claim 48 recites advertising, marketing,
or sales activities, which fall within the certain methods of organizing
human activity category of abstract ideas identified in the Revised Guidance.
Thus, we agree with the Examiner that claim 48 recites an abstract idea.

Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
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thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See Revised Guidance.
Appellant argues claim 48 is directed to an improvement in computer
networks and technology. See Appeal Br. 13‒17; Reply Br. 4‒6. In
particular, Appellant argues claim 48 solves a problem inherent to computer
technology, namely, that with “the vast amounts of information and
resources available with computer search tools and electronic
communication links to almost every information source out there can make
the simplest of tasks quite complex.” Appeal Br. 13. Retailers, according to
Appellant, waste too many resources “trying to get the right message to the
right consumer, which is why the problem is specific to the realm of
computer networks and computer technology.” Id. at 14. Appellant has not
persuaded us of Examiner error.
Getting the right message to the right customer is an age old problem
in advertising, marketing, and sales. The solution embodied in claim 48—
gathering product data and bids for “value messages,” and selecting winning
bids for “value messages” to present to consumers interested in particular
product families—does not respond to a problem that has arisen specifically
in the field of computer technology. Rather, the use of computing systems in
claim 48 amounts to adding the words “apply it” to the abstract idea
discussed above. See MPEP § 2106.05(f).
Appellant also argues that “[t]he claim, taken as a whole, improves
the functionality of the computing systems by simplifying the transaction
between consumer and retailer while aligning the parties most likely to
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complete the transaction, i.e., transmitting the value message associated with
the winning bid.” Appeal Br. 16; Reply Br. 5. But this argument only
highlights the fact that alleged improvement in claim 48 focuses on
“simplifying the transaction between consumer and retailer” and “aligning
the parties most likely to complete the transaction” (id.)—goals that are not
necessarily computer-related. Claim 48 does not specifically define how any
computer components are improved in the achievement of these consumer-
retailer transaction goals. Accordingly, the additional limitations in claim
48—e.g., “a first computing system and a second computing system,” “a
database on the first computing system,” “a first data structure on the first
computing system,” “a second data structure on the first computing system,”
and “a display screen”—do not integrate the abstract idea into a practical
application.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance.

Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
There must be more than “computer functions [that] are ‘well-understood,
routine, conventional activit[ies]’ previously known to the industry.” Alice,
573 U.S. at 225 (second alteration in original) (quoting Mayo, 566 U.S. at
73).
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Appellant argues the Examiner fails to provide the necessary support
to establish the additional limitations in claim 48 are well-understood,
routine, and conventional. Appeal Br. 18. Appellant has not persuaded us of
Examiner error.
The Examiner specifically identifies elements in claim 48 that are
additional to the elements that recite the abstract idea: “A method of
controlling communication over an electronic network including a first
computing system and a second computing system”; “providing a database
on the first computing system including . . . information”; “providing a first
data structure on the first computing system to organize the . . .
information”; “providing a second data structure on the first computing
system”; “receiving . . . on the first computing system”; “receiving . . . using
the second computing system”; “accessing the second data structure”;
“selecting . . . using the first computing system,” and “transmitting to . . . the
second computing system for presentation on a display screen.” Ans. 13.
The Examiner finds “these additional elements, taken individually or in
combination, are well-understood, routine and conventional to those in the
fields of network communications and generic computer device operation.”
Id. at 15 (citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307 (Fed. Cir. 2016); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d
1306 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com Inc., 788 F.3d 1359
(Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014)). Moreover, the Specification confirms the generic, conventional
nature of these components. See, e.g., Spec. ¶¶ 25–26. Appellant has not
persuasively identified, nor have we found, an ordered combination of these
elements that amounts to significantly more than the claimed abstract idea.
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For these reasons, we agree with the Examiner that the claims do not
recite an “inventive concept” sufficient to transform the claims from an
abstract idea to a patent eligible application. We, therefore, sustain the
patent-ineligible subject matter rejection of claim 48. We also sustain the
rejection of independent claims 54 and 61, which Appellant argues are
patent-eligible for the same reasons. See Appeal Br. 20–29; Reply Br. 1–15.
We also sustain the rejection of dependent claims 49–53, 55–60, and 62–67,
for which Appellant relies on the same arguments. See id.

Anticipation
Claims 48–51, 53–58, 60‒64, 66, and 67
Appellant argues the Examiner erred in rejecting claim 48 as
anticipated by Gross. See Appeal Br. 30‒34; Reply Br. 15‒17. In particular,
Appellant argues that Gross does not disclose “providing a second data
structure on the first computing system for a retailer to place a bid for a
value message to be presented to a consumer with a search result.” Appeal
Br. 30–31; Reply Br. 15. Appellant has not persuaded us of Examiner error.
The Examiner finds, and we agree, that Gross’s bid table meets the
claimed “second data structure” limitation. Ans. 21 (citing Gross ¶ 60). In
particular, Gross describes a Category Bid Table 318 that “stores
information regarding the fees that vendors are willing to pay to the referral
computer administrator in connection with particular categories of products
or services.” Gross ¶ 60. A vendor can provide the information stored in the
Category Bid Table by “using the vendor interface module 210 of the
referral computer 120.” Id. ¶ 62. Accordingly, the Category Bid Table is “for
a retailer to place a bid,” as claimed. The bid information stored in the
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Category Bid Table relates to a “referral fee every time a consumer selects
an offering” (id.¶ 60), where an offering includes a Description field 580 and
is displayed in response to a consumer search. See id. ¶¶ 97–100; Fig. 5.
The Examiner finds, and we agree, that Gross’s offering meets the
claimed “value message” limitation. Ans. 21. Further, “the list of offerings
555 is preferably sorted and displayed based on the expected revenue
generated by each offering 555,” so a “ranking module 225 considers the bid
submitted by each vendor at the most specific level of categorization
application to the selected product or service when determining the rank of
each offering.” Gross ¶¶ 102, 124. In other words, the bids in Gross’s
Category Bid Table relate to “value messages to be presented to a consumer
with a search result,” as claimed, because the offerings (i.e., “value
messages”) are presented based on the expected revenue associated with the
bids. Thus, we agree with the Examiner’s finding that Gross discloses
“providing a second data structure on the first computing system for a
retailer to place a bid for a value message to be presented to a consumer with
a search result,” as recited in claim 48.
Appellant also argues Gross does not disclose “receiving a search
query from a consumer using the second computing system, wherein the
search query corresponds to a first product family of the plurality of product
families; accessing the second data structure to identify bids corresponding
to the first product family; [and] selecting a winning bid for the first product
family using the first computing system.” Appeal Br. 31–32; Reply Br. 15–
16. Appellant has not persuaded us of Examiner error.
As mentioned above, Gross discloses a consumer search. More
specifically, a “Web page 500 provides a variety of options to consumers for
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searching the information contained in the vendor product database 200,”
including “product categorization . . . by inputting the appropriate criteria
into . . . the Product Category checkboxes 515.” Gross ¶¶ 97–98. Thus, we
agree with the Examiner’s finding that Gross discloses “receiving a search
query from a consumer using the second computing system, wherein the
search query corresponds to a first product family of the plurality of product
families,” as recited in claim 48.
Gross also discloses that “the ranking module 225 accesses the click
value of the offering” based on information that “may be stored in the Click
Bid field 322 of the Category Bid table 318.” Id. ¶ 112. Gross further
discloses that “a rank value is assigned to each offering 555 by comparing its
expected revenue to that of the other offerings 555, and the offerings 555 are
ranked accordingly.” Id. ¶ 102. Thus, we agree with the Examiner’s finding
that Gross discloses “accessing the second data structure to identify bids
corresponding to the first product family; [and] selecting a winning bid for
the first product family using the first computing system.”
Appellant further argues Gross does not disclose “transmitting the
value message associated with the winning bid to the consumer on the
second computing system for presentation on a display screen.” Appeal
Br. 32–33; Reply Br. 16–17. Appellant has not persuaded us of Examiner
error. In particular, Gross discloses that “referral computer 120 displays to
the consumer a list of offerings from a plurality of on-line vendors that offer
the product or service identified by the consumer.” Gross ¶ 99.
We, therefore, sustain the Examiner’s rejection of independent claim
48 as anticipated by Gross. We also sustain the anticipation rejection of
independent claims 54 and 61, for which Appellant provides similar
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arguments (see Appeal Br. 34–42), and dependent claims 49–51, 53, 55–58,
60, 62–64, 66, and 67, for which Appellant provides no separate argument
(see id.). We note, that independent claims 54 and 61, and their respective
dependent claims, relate to a consumer search for a “product,” rather than a
“product family,” as in claim 48. Gross, however, discloses a Product Bid
Table, in addition to the Category Bid Table discussed above with respect to
claim 48.Gross ¶ 81. Gross also discloses that a consumer can search for a
specific product, not just a product category. See id. ¶¶ 97–99.
Claims 52, 59, and 65
Appellant argues Gross does not disclose “providing a third data
structure on the first computing system to organize the bids in a campaign
table,” as recited in claim 52. Appeal Br. 33–34. We are persuaded by
Appellant’s argument. For the disputed limitation, the Examiner cites to the
Gross paragraphs that discuss the Category Bid Table and Product Bid
Table. See Non-Final Act. 15; 24. The Examiner, however, does not
specifically explain which of Gross’s tables is the claimed “third data
structure.”2
Accordingly, we are constrained by the record to find the Examiner
erred in rejecting claim 52 as anticipated. We do not sustain the anticipation
rejection of claims 59 and 65 for similar reasons.

2 As the Examiner rejects the claims as anticipated, we make no finding as to
whether it would have been obvious, for example, for Gross’s system to use
one data structure to load bids from retailers and another data structure to
store the bids; that is, a data structure “for a retailer to place a bid,” as
recited in claim 48, and a data structure “to organize the bids in a campaign
table,” as recited in claim 52.
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CONCLUSION
We affirm the rejection of claims 48–67 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 48–51, 53–58,
60–64, 66, and 67 under pre-AIA 35 U.S.C. § 102(b).
We reverse the Examiner’s decision rejecting claims 52, 59, and 65
under pre-AIA 35 U.S.C. § 102(b).
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 48–67. See 37 C.F.R. § 41.50(a)(1) (2018).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
48–67 101 Eligibility 48–67
48–67 Pre-AIA
102(b)
Gross 48–51,
53–58,
60–64, 66,
67
52, 59, 65
Overall
Outcome
48–67
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED