Ex Parte Abuelsaad et al

Patent Trial and Appeal Board

May 15, 2018

13276929 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/276,929 10/19/2011 Tamer E. ABUELSAAD
46583 7590 05/17/2018
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
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.
END920110149US1 6085
EXAMINER
MILLER, BRITTNEY N
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/1712018 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAMER E. ABUELSAAD, JASON L. ANDERSON,
GREGORY J. BOSS, and RICK A. HAMILTON II
Appeal2017-000407 1
Application 13/276,9292
Technology Center 3600
Before NINA L. MEDLOCK, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11, 16, 17, 26-30, and 32. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 7, 2016) and Reply Brief ("Reply Br.," filed October 6, 2016), and
the Examiner's Answer ("Ans.," mailed August 10, 2016) and Final Office
Action ("Final Act.," mailed October 7, 2015).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 13/276,929
CLAIMED INVENTION
Appellants' claimed invention "generally relates to gift giving, and
more particularly, to an approach for providing personalized results for gift
giving utilizing a database" (Spec. i-f 1 ).
Claims 1 and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method, comprising:
generating, by a processor, an item list of a recipient by at
least a third party server which detects items in a location using
sensors to read radio-frequency identification (RFID) tags
associated with each of the items;
reviewing, by the processor, the item list of the recipient;
determining, by the processor, an item to provide to the
recipient that is not on the item list of the recipient;
sending, by the processor, the item to the recipient;
providing, by the processor, a last gift alternative based on
the recipient rejecting the item sent to the recipient,
generating a giver list of one or more potential gifts when
a recipient's library is unavailable for direct query,
receiving the giver list through input from a giver device
by a giver, and
prioritizing the giver list of one or more potential gifts by
using at least one of a textual interface, a graphical interface, and
a gesture interface of the giver device,
wherein the last gift alternative is based on prioritized gifts
on the giver list, and further comprising:
comparing the giver list to the recipient's library and
extracting a highest priority item from the giver list;
determining whether the recipient has the highest priority
item based on the recipient's library;
gifting the highest priority item to the recipient when the
recipient does not own the highest priority item; and
gifting a next highest priority item to the recipient when
the recipient owns the highest priority item and does not own the
next highest priority item.
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REJECTION3
Claims 1-11, 16, 17, and 26-30, and 32 are rejected under 35 U.S.C.
§ 101 as directed to judicially-excepted subject matter.
ANALYSIS
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
Bankint'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 (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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination"' to determine whether there are additional elements that
3 The rejections of the claims under 35 U.S.C. § 112, first paragraph; § 112,
second paragraph; and§ 103(a) have been withdrawn. See Adv. Act. 2; see
also Ans. 6
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"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "suggesting and
shopping for gifts," i.e., to a fundamental economic principle and a method
of organizing human activities, and, therefore, to an abstract idea; and that
the claims do not include additional elements or a combination of elements
that is sufficient to amount to significantly more than the judicial exception
(Final Act. 2--4 ).
Independent Claim 1 and Dependent Claims 2-11, 26-30, and 32
Focusing first on claim 1, Appellants argue that claim 1 is not directed
to an abstract idea because the claim includes "technological features that
cannot be considered abstract ideas" (App. Br. 6; see also id. at 8-9 (arguing
that claim 1 cannot be considered a method of organizing human activity
and, therefore, an abstract idea because claim 1 requires certain
technology)). That argument is not persuasive at least because "not every
claim that recites concrete, tangible components escapes the reach of the
abstract-idea inquiry." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d
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607, 611 (Fed. Cir. 2016). Although claim 1 recites physical components,
e.g., a processor, sensors, and RFID tags, the focus of claim 1 is not on the
improvement of any technology or technical field, but rather on
implementation of the abstract idea, i.e., "suggesting and shopping for gifts."
The recited physical components merely provide the generic environment in
which to implement this abstract idea (see, e.g., Spec. i-f 21 (disclosing that
the claimed invention can be implemented on a general purpose computer);
i-f 29 (disclosing that the recipient device and giver device may include any
type of computing device). The Specification plainly supports this view,
disclosing that the object of the claimed invention is to provide a tool that
allows gift givers to avoid giving redundant gifts to their gift recipients, i.e.,
items the recipients already own or have purchased (see, e.g., Spec. i-f 1
("The present invention generally relates to gift giving, and more
particularly, to an approach for providing personalized results for gift giving
utilizing a database"); i-f 12 ("More specifically, aspects of the present
invention provide a gift tool which allows for electronic querying of item
libraries of gift recipients so that uniqueness and originality (e.g.,
personalized results) of gifts for the recipients may be ascertained."); i-f 13
("The gift tool may use the recipient's library so that a gift giver may avoid
giving redundant gifts to the recipient.")).
We also are not persuaded of Examiner error by Appellants' argument
that the claimed invention cannot be considered a fundamental economic
practice, and, therefore, an abstract idea because the claimed invention
"provides several advantages over traditional economic practices" (App.
Br. 7; see also Reply Br. 3--4, 6, 12-13, 15). Appellants assert that, in
contrast to a fundamental economic practice long prevalent in our system of
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commerce, the claimed invention "allow[ s] a giver to avoid giving a
recipient redundant gifts that the recipient already owns or purchased when
the recipient is not willing to share his or her library of personal inventory of
items" and also "allows a giver to select personalized gifts for the recipient
based on recipient preferences and a recipient's library when the recipient is
not willing to share his or her library of personal inventory of items to allow
the granted gift to be special" (App. Br. 7 (citing Spec. i-f 15)). But, these
advantages merely constitute an improvement in the fundamental economic
practice of "suggesting and shopping for gifts." And an improved abstract
idea, e.g., an innovative improvement on the abstract idea of suggesting and
shopping for gifts, is still an abstract idea. See Mayo, 566 U.S. at 90
(holding that a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible).
Appellants point to the Federal Circuit's decision in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), and argue that
claim 1, like the claims in DDR Holdings, is "'necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks"' (App. Br. 9--10; see also Reply Br. 8-10,
14--18). Yet, to the extent Appellants maintain that the claimed invention is
"necessarily rooted in computer technology" because claim 1 recites the use
of computer components, RFID tags, and sensors (see id.), we note that a
similar argument was expressly rejected by the Court in Alice. See Alice
Corp., 134 S. Ct. at 2358 ("the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention").
The problem to which claim 1 is directed (i.e., selecting a
personalized gift for a recipient based on the recipient's preferences while
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avoiding giving redundant gifts) existed before, and still exists outside of
computer technology and computer networks. We are not persuaded that
this is a technical problem or one rooted in technology. And, unlike the
situation in DDR Holdings, there is no indication here that a computer
network, or the Internet, in particular, is used other than in its normal,
expected, and routine manner, e.g., for receiving and transmitting
information.
Turning to the second step of the Mayol Alice framework, Appellants
argue that even if claim 1 is directed to an abstract idea, the claim is
nonetheless patent-eligible because it recites significantly more than the
abstract idea itself (App. Br. 10-12). Appellants assert that "the claimed
invention requires certain technology including a processor and sensors to
read radio-frequency (RFID) tags for the method of providing personalized
results for gift giving" and that "[t]his amounts to significantly more than the
Examiner's alleged abstract idea" (id. at 12). But, there is no indication in
the record, short of attorney argument (see id. at 11 ), that the operations
recited in claim 1 require any specialized computer hardware or other
inventive computer components, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform the claimed method steps, which is
not enough for patent-eligibility. DDR Holdings, 773 F.3d at 1256 ("[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.").
There also is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. Indeed, the Federal
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Circuit applied this distinction in Enfzsh, LLC v. Microsoft Corp., 822 F.3d.
1327 (Fed. Cir. 2016) in rejecting a§ 101 challenge at the step one stage in
the Alice analysis because the claims at issue focused on a specific type of
data structure, i.e., a self-referential table for a computer database, designed
to improve the way a computer carries out its basic functions of storing and
retrieving data, and not on asserted advances in uses to which existing
computer capabilities could be put. Id. at 1335-36.
Appellants argue here that "allow[ing] a giver to avoid giving a
recipient redundant gifts that the recipient already owns or [has] purchased
when the recipient is not willing to share his or her library of personal
inventory of items" and "allow[ing] a giver to select personalized gifts for
the recipient based on recipient preferences and a recipient's library when
the recipient is not willing to share his or her library of personal inventory of
items to allow the granted gift to be special" are "improvements in the area
of computer technology itself' (See App. Br. 9-11; see also Reply Br. 5-7,
9-10, 18-19). But, this alleged improvement is not an improvement in
computer capabilities or computer technology; instead, it is an alleged
improvement in selecting and shopping for gifts, for which a computer is
used as a tool in its ordinary capacity.
Responding to the Examiner's Answer in the Reply Brief, Appellants
ostensibly maintain that the Examiner has failed to comply with USPTO
guidance, specifically, the Office's May 4, 2016 Memorandum to the Patent
Examining Corps regarding "Formulating a Subject Matter Eligibility
Rejection and Evaluating the Applicant's Response to a Subject Matter
Eligibility Rejection," and has not set forth a proper rejection under§ 101
(Reply Br. 3). In fact, the Examiner, provided a reasoned analysis that
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identifies the judicial exception recited in the claims, i.e., an abstract idea,
and explains why it is considered a judicial exception, and also explains why
the additional elements in the claim do not amount to significantly more than
the judicial exception. As described above, the Examiner notified
Appellants that the claims are directed to "suggesting and shopping for
gifts," i.e., to a fundamental economic principle and a method of organizing
human activities, and, therefore, to an abstract idea; and that the claims do
not include additional elements or a combination of elements that is
sufficient to amount to significantly more than the judicial exception (Final
Act. 2--4). The Examiner, thus, set forth the statutory basis of the rejection
in a sufficiently articulate and informative manner as to meet the notice
requirement of 35 U.S.C. § 132. And we find that, in doing so, the
Examiner set forth a proper rejection under§ 101. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132).
Appellants cannot reasonably maintain that the rejection was not
understood or that the rejection otherwise fails to satisfy the notice
requirement of§ 132. Indeed, Appellants' understanding of the rejection is
clearly manifested by Appellants' response as set forth in the briefs.
Appellants further assert in the Reply Brief that the § 101 rejection
should be withdrawn because the claims includes features that are not well-
known, routine, and conventional, e.g., known gifting systems do not use a
processor, a third party server, sensors, and RFID tags and do not generate a
giver list when a recipient's library is unavailable for direct query (Reply
Br. 10-11; see also id. at 19-20). Yet, to the extent Appellants maintain that
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the recited features are not "well-understood, routine, and conventional"
because the claims are allegedly novel and/or non-obvious in view of prior
gifting systems, Appellants misapprehend the controlling precedent.
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 Mayo/Alice framework is termed a 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. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious 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.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1. We also sustain the rejection of
dependent claims 2-11, 26-30, and 32, which are not argued separately
except based on their dependence from independent claim 1 (App. Br. 20).
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Independent Claim 16 and Dependent Claim 17
Appellants' arguments with respect to claim 16 are substantially
similar to Appellants' arguments with respect to claim 1, and are similarly
unpersuasive. Therefore, we sustain the Examiner's rejection of claim 16
for substantially the same reasons set forth above with respect to claim 1.
We also sustain the rejection of dependent claim 17, which is not argued
separately except based on its dependence from independent claim 16.
DECISION
The Examiner's rejection of claims 1-11, 16, 17, 26-30, and 32 under
35 U.S.C. § 101 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
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