Ex Parte Bernstein

Patent Trial and Appeal Board

Dec 19, 2016

12692930 (P.T.A.B. Dec. 19, 2016)

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.
304707-6 3050
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
12/692,930 01/25/2010 ROBERT BERNSTEIN
12/19/201624628 7590
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
12/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BERNSTEIN
Appeal 2014-008690
Application 12/692,93 01
Technology Center 3600
Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Bernstein (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Robert Bernstein as the real party in interest.
App. Br. 2.
Appeal 2014-008690
Application 12/692,930
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of identifying potential customers for delivery of
promotional materials, such method comprising:
a programmed transaction processor tracking purchases of
consumers based upon summaries of purchases from consumers and
vendors and upon preferences and buying habits provided by
consumers;
a third-party database receiving summaries of purchases from
the transaction processor,
the received summaries forming data files about customers
where the third-party database is separate from any vendor;
a programmed central processing unit of a vendor forming a
customer profile for cross-promoting a specific product of the vendor
that is functionally related in a context of use to a product sold by
another of the vendors by targeting delivery of the promotional
materials to potential customers, the customer profile including at
least, an identifier of the product of the other vendor and a locale of
purchase;
a programmed comparator of the database of the third party
searching the formed files within the database and identifying
customers which match the customer profile within the database of the
third party and that are making purchases in the locale of the vendor;
and
a programmed processor forwarding promotional materials to
the identified customers, the programmed processor detecting a
purchase by a customer of the identified customers and printing out
the promotional materials at a point of sale of the purchase.
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Application 12/692,930
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Katz 2002/0077901 A1 June 20, 2002
Oytac 2003/0018613 A1 Jan. 23,2003
Bezos 7,107,227 B1 Sept. 12,2006
The following rejections are before us for review:
1. Claims 1—20 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claim 1 is rejected under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
3. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oytac, Katz, and Bezos.
ISSUES
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. §101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention?
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C.
§103 (a) as being unpatentable over Oytac, Katz, and Bezos?
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Application 12/692,930
ANALYSIS
The rejection of claims 1—20 under 35 U.S.C. §101 as being directed to non-
statutory subject matter.
The Appellant argued these claims as a group. See Reply Br. 2. We
select claim 1 as the representative claim for this group, and the remaining
claims 2—20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According
to Alice step one, “[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134
S. Ct. at 2355.
The Examiner found the claimed subject matter directed to targeted
marketing. Ans. 10. The Examiner found targeted marketing to be a
fundamental economic practice and thus concluded the claimed subject
matter was directed to an abstract idea. Ans. 10. See Alice at 2356—57.
Step two of the Alice framework is “a 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. at 2355.
In that regard, the Examiner found the claim elements involved a
“generically recited programmed processor.” Ans. 10. Thus, according to
the Examiner,
[t]he claims do not include limitations that are “significantly more”
than the abstract idea because the claims do not include an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
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limitations beyond generally linking the use of an abstract idea to a
particular technological environment.
Ans. 10.
As a result the Examiner determined that the claimed subject matter is
judicially-excepted from patent eligibility under § 101.
The Appellant argues, in total, that
[(a)] [t]he fact that the claims could possibly be constructed to include
an abstract idea is not relevant, [(b)] What is relevant is that the claims
are directed to a very specific set of steps performed by processors
programmed in a very specific way. [(c)] Accordingly, the claims are
directed to very specific embodiments that are well-defined in their
scope and content. As such, the new rejections are improper and
should be overturned.
Reply Br. 2.
The argument is unpersuasive as to error in the rejection, (a) That the
claims could possibly be constructed to include an abstract idea is indeed
relevant. See Alice, (b) While the fact that claims are directed to a very
specific set of steps performed by processors programmed in a very specific
way would be relevant to a question of their patent-eligibility, in this case
the steps are insufficient to ensure that in practice the method amounts to
significantly more than the abstract idea of targeting marketing itself. Claim
1 sets out various computer elements and corresponding functions. No
evidence has been put forward that the invention is rooted in computer
technology. Rather, the Specification indicates that said elements are
common elements of a conventional computer system (see, e.g.,
Specification 4, “The third-party database 28 may be any database”). It is
the scheme for identifying potential customers for delivery of promotional
materials that is at the root of the invention, (c) While the claims may be
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directed to very specific embodiments that are well-defined in their scope
and content, this does not disturb the determination that in practice the
method does not amount to significantly more than the abstract idea of
targeted marketing itself.
The rejection is sustained.
The rejection of claim 1 under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
According to the Examiner, there is no antecedent basis for “the locale
of the vendor” (claim 1), notwithstanding that earlier in the claim “a locale
of purchase” is recited (as the Appellant has argued; see App. Br. 8). The
Examiner deems “locale of the vendor” and “locale of purchase” to be
different things that do not “equate” to each other. Ans. 11. Be that as it
may, the question is one of indefmiteness, not explicit antecedence. Explicit
antecedence is not required. Antecedent basis can be present by implication.
See SlimfoldMfg. Co. v. KinkeadIndus., Inc., 810 F.2d 1113, 1116 (Fed.
Cir. 1987).
“Lack of an antecedent basis in a claim could render it invalid under
35 U.S.C. § 112.” In reAltenpohl, 500 F.2d 1151, 1156 (CCPA 1974)
(emphasis added). “In Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed.
Cir. 2001) the court held that despite the absence of explicit antecedent
basis, ‘If the scope of a claim would be reasonably ascertainable by those
skilled in the art, then the claim is not indefinite.’” See Energizer Holdings
Inc. v. United States ITC, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006). Here
the Examiner has not explained whether the scope of claim 1 would be
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reasonably ascertainable by those skilled in the art. For that reason, the
rejection is not sustained.
The rejection of claims 1—20 under 35 U.S.C. §103 (a) as being unpatentable
over Oytac, Katz, and Bezos.
The Appellant argues that the cited combination of references does
not disclose or lead one of ordinary skill in the art to
a programmed central processing unit of a vendor forming a
customer profile for cross-promoting a specific product of the vendor
that is functionally related in a context of use to a product sold by
another of the vendors by targeting delivery of the promotional
materials to potential customers, the customer profile including at
least, an identifier of the product of the other vendor and a locale of
purchase;
a programmed comparator of the database of the third party
searching the formed files within the database and identifying
customers which match the customer profile within the database of the
third party and that are making purchases in the locale of the vendor
(claim 1; the other independent claims 7 and 15 include similar limitations).
The Examiner found that Katz (pages 10, 11, 17, 22 and 23) discloses
said claim limitations. Final Rej. 5. According to the Examiner, “Katz
discloses that a vendor forming a consumer profile includes a purchase
history, the location where the product was purchased and location of the
vendor, identifying relevant products to promote, identifying similar
products and complimentary products.” Ans. 11. But this does not establish
that Katz in fact discloses forming a customer profile for “cross-promoting a
specific product of the vendor that is functionally related in a context of use
to a product sold by another of the vendors ... [and] identifying customers
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which match the customer profile ... that are making purchases in the locale
of the vendorClaim 1.
The Examiner states that “Katz discloses cross-promoting products
including promoting products for a product related to a product sold by
another vendor.'’'’ Ans. 13 (emphasis added). But we have been unable to
find such express disclosure. While vendors, including “vendor location”
(para. 7), are discussed, there does not appear to be any disclosure in Katz of
“promoting products for a product related to a product sold by another
vendor'” (Ans. 13, emphasis added), let alone “forming a customer profile”
for “cross-promoting a specific product of the vendor that is functionally
related in a context of use to a product sold by another of the vendors ...
[and] identifying customers which match the customer profile ... that are
making purchases in the locale of the vendor” as claimed. The Examiner
also refers to Oytac and Bezos, but matching profiles and forming
collections, respectively, are inadequate as evidence that said limitations are
in fact disclosed.
We note the Examiner’s statement that “cross promoting a product is
not a positively recited step.” Ans. 12. That is true. However, the cross
promoting is recited functionally; therefore, the customer profile is capable
of performing said cross promoting. Accordingly, although the cited
references need not disclose a step of cross promoting, one ordinary skill in
the art would need to be led to a customer profile having characteristics
capable of performing the cross promoting as claimed. That has not been
adequately shown.
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For the foregoing reasons, we do not find that a prima facie case of
obviousness has been made out in the first instance by a preponderance of
the evidence.
CONCLUSIONS
The rejection of claims 1—20 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claim 1 is rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
reversed.
The rejection of claims 1—20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Oytac, Katz, and Bezos is reversed.
DECISION
The decision of the Examiner to reject 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
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