Ex Parte Black et al

Patent Trial and Appeal Board

Aug 15, 2017

11491695 (P.T.A.B. Aug. 15, 2017)

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.
11/491,695 07/24/2006 Andre B. Black CAM920115007US1_8150-0147 6243
112978 7590 08/17/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, EL 33498
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE B. BLACK,
DAVID F. CHEUNG,
RUBY KENNEDY,
and YUCHUN LEE
Appeal 2016-003266
Application 11/491,695
Technology Center 3600
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Andre B. Black, David F. Cheung, Ruby Kennedy, and Yuchun Lee
(Appellants) seek review under 35U.S.C. § 134 of a Final Rejection of
claims 26-43, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 5, 2015) and Reply Brief (“Reply Br.,” filed February 4,
2016), and the Examiner’s Answer (“Ans.,” mailed December 4, 2015), and
Final Action (“Final Act.,” mailed March 5, 2015).
Appeal 2016-003266
Application 11/491,695
The Appellants invented a way of producing a promotion. Specification
1:12-16.
An understanding of the invention can be derived from a reading of
exemplary claim 26, which is reproduced below (bracketed matter and some
paragraphing added).
26. A computer—implemented method, comprising:
[1] generating, by one or more computers,
a promotion template having a static attribute and a
parameterized attribute;
[2] generating, from the promotion template,
a promotion instance using a default value for the
parameterized attribute;
and
[3] generating, from the promotion template
and
using a permutation of the default value [sic, promotion
instance] for the parameterized attribute,2
2 This limitation appears to mean a permutation of the promotion instance.
It is unclear what a permutation of the elements in a single value would
accomplish in this context. The Specification refers to permutations in
Specification 8:1—10; 11:1—3; 11:28—29; and 18:14—17 only. The originally
filed claims and drawings did not refer to permutations at all. As a matter of
claim construction, the Specification does not define permutation, but the
ordinary meaning in the context of a set of elements is a rearrangement or
recombination of those elements. Thus, the limitation as recited calls for a
rearrangement of the elements making up a default value. All of the
references to permutation in the Specification instead refer to rearranging the
elements of the promotion instance, not the default value. None of the
arguments depend on this construction, so its actual resolution does not
affect this Decision.
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Application 11/491,695
a new promotion version of the promotion
instance,
wherein the permutation of the default value is
based upon a group in a marketing campaign to
which the new promotion version is assigned.
The Examiner relies upon the following prior art:
Bibelnieks et al. US 2003/0208402 A1 Nov. 6, 2003
Liu et al. US 2005/0075926 Al Apr. 7, 2005
Shi et al. US 2006/0095321 Al May 4, 2006
Claims 26-43 stand rejected under 35U.S.C. § 101 as directed to non—
statutory subject matter.
Claims 26, 27, 29, 30, 32, 33, 35, 36, 38, 39, 41, and 42 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Liu.
Claims 28, 34, and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Liu and Bibelnieks.
Claims 31, 37, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Liu and Shi.
ISSUES
The issues of eligible subject matter turn primarily on whether
generating a software instance of a marketing promotion is no more than
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Application 11/491,695
generating an abstraction. The issues of novelty and obviousness turn
primarily on whether Liu describes any field in its template that has a
default, and whether the contents of such a field describe a group.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“permutation.”
02. The ordinary meaning of a permutation in the context of a set of
elements, such as values or characters, is a rearrangement or
recombination of elements.3
03. The disclosure contains no lexicographic definition of
“default.”
04. The ordinary meaning of a default in a computer context is a
particular setting or value for a variable that is assigned
automatically by an operating system and remains in effect unless
canceled or overridden by the operator.4
3 American Heritage Dictionary
https: //www. ahdictionary. com/ word/ search, html? q=permutation
4 American Heritage Dictionary
https://www. ahdictionary. com/word/search. html?q=default
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Facts Related to Appellants ’ Disclosure
05. Parameterized attributes are assigned default values when a
promotion instance is produced, but when the promotion instance
is assigned to a group in a marketing campaign, its value can be
changed. Multiple promotion versions can exist if the promotion
instance was produced from a promotion template including at
least one parameterized attribute 86. Each permutation of
parameterized attributes for a promotion instance produces a
separate promotion version. The promotion attributes can be
hashed to determine when a unique permutation exists requiring
the production of a new promotion version, where unique
instances are stored across campaigns thus reduces storage and
computation overhead associated with a normalized history. Spec.
8:1-10.
06. The promotion management system treats promotion versions
124, 126, 128 as permutations of a common promotion instance,
for example, promotion instance 120. Spec. 11:1—3.
07. Thus, promotion versions 148 154 are permutations of a
promotion instance 146. Spec. 11:28—29.
08. Thus, promotion instances can produce promotion versions,
which are permutations of the promotion instances depending on
variations of parameterized attributes of the promotion instances.
Spec. 18:14—17.
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Facts Related to the Prior Art
Liu
09. Liu is directed to creating and distributing promotions across a
computer network. Liu para. 2.
10. Liu describes assigning a default value to the merchants field
in its promotion template as all merchants in Inform f ink as
participatory merchants. Liu para. 109.
11. Liu describes assigning a default value to geographic areas of
targeted consumers. Liu. Fig. 6M.
ANALYSIS
Claims 26—43 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two of this
analysis as 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.”
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Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
are directed to generically recited computer elements in a computer software
implementation of a marketing presentation. Final Act. 3.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 26 does not recite what the claim is directed to,
but the steps in claim 26 result in generating data representing a marketing
promotion. The Specification at 1:12—13 recites that the invention relates to
producing a marketing promotion. Thus, all this evidence shows that claim
26 is directed to generating data representing a marketing promotion, i.e.
marketing promotion. This is consistent with the Examiner’s finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of marketing
promotion is a fundamental business practice long prevalent in our system of
commerce. The use of marketing promotion is also a building block of
market economies. Thus, marketing promotion, like hedging, is an “abstract
idea” beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
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As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of marketing
promotion at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
generation and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
generating data.
The remaining claims merely describe variations of claim 26 with some
additional storage steps and parameter refinements. We conclude that the
claims at issue are directed to a patent-ineligible concept.
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The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to generate data amounts to electronic data query and retrieval—
one of the most basic functions of a computer. The limitation of the
permutation of the default value as based upon a group in a marketing
campaign to which the new promotion version is assigned is not a step, but a
recitation of an attribute of the default value, viz. a data attribute, which is
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outside the scope of the steps. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of marketing promotion as performed by a generic
computer. To be sure, the claims recite doing so by advising one to generate
a software template and then data from the template. But this is no more
than abstract conceptual advice on using a template for such promotion and
the generic computer processes necessary to process such data, and do not
recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 37 pages of specification spell
out different generic equipment and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of marketing promotion under different template
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of using a
template for marketing promotion using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
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As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants’ argument that
[t]he Examiner has produced no evidence or analysis that what
the Examiner has identified is a "fundamental economic
practice." While "generating a promotion" is a business
practice, it is not an economic practice comparable to the
hedging and use of shadow accounts respectively described in
Bilski and Alice Corp. Moreover, to the extent that "generating
a promotion" is an economic practice, the Examiner has
produced no evidence or analysis to support a finding that this
is a fundamental economic practice.
App. Br. 6. We find supra that the claims and Specification provide
sufficient evidence that the claims are directed to market promotion.
Appellants’ contention that it is not comparable to hedging as an abstract
concept is entirely conclusory. Anyone of ordinary skill in the professional
business art, who would necessarily have had experience and education in
marketing, as it is a generally required course in both undergraduate and
graduate business administration curricula, would be aware of the notoriety
and longevity of market promotion as a business practice. To generate a
promotion is identical with creating a promotion to practice, as taught in
such courses.
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We are not persuaded by Appellants' argument that
the claims are not "directed to" generating a promotion. The
generation of "a new promotion version of the promotion
instance" is only but one aspect of the claimed invention. The
Examiner's analysis has impermissibly ignored the remainder of
the claimed limitations. As stated by the Supreme Court, it is
improper to dissect a claimed invention into discrete elements
and then evaluate the elements in isolation. Instead, the claim
as a whole must be considered.
App. Br. 7. Appellants conflate the stages of the Alice test. Step one
asks what the claims are directed to, which is to say what they achieve. Step
two then looks to how that is achieved to see if there is an inventive concept.
Here one must look at the claims as a whole. As we find supra, the claims as
a whole create a marketing promotion by generating a software template and
then data from that template. Simply generating data is insignificant generic
computer activity. They do not improve the functioning of the computer.
We are not persuaded by Appellants' argument that the Examiner has not
identified a judicially recognized exception to which the claims are directed.
App. Br. 8. As we find supra, the claims are directed to the judicially
recognized exception of abstract ideas, in this case that of marketing
promotion.
Claims 26, 27, 29, 30, 32, 33, 35, 36, 38, 39, 41, and 42 rejected under 35
U.S.C. § 102(b) as anticipated by Liu
We are not persuaded by Appellants' argument that the art fails to
describe generating, from the promotion template, a promotion instance
using a default value for the parameterized attribute. App. Br. 15. Liu
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describes a default value for the set of merchants and a set of geographic
locations to target consumers used for generating an instance of a promotion
from a template. The set of merchants and locations are the parameters for
the merchant and location attributes.
We are not persuaded by Appellants’ argument that the art fails to
describe “a group in a marketing campaign.” App. Br. 15. Liu describes a
set of merchants, which is a group, in which the promotion is assigned.
As to claim 27, Appellants argue the art fails to describe “a second group
in the marketing campaign.” App. Br. 19. Claim 27 recites running the
steps in claim 26 a second time. As Liu describes a template in the form of a
graphic interface that is used plural times, Liu inherently repeats its steps,
thus circumscribing a second group. Whether the second run is in the same
campaign is a matter discemable only in the human mind and afforded no
patentable weight. In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
The remaining claims are argued on the basis of claims 26 and 27.
Claims 28, 34, and 40 rejected under 35 U.S.C. § 103(a) as unpatentable
over Liu and Bibelnieks
These are argued on the basis of claims 26 and 27.
Claims 31, 37, and 43 rejected under 35 U.S.C. § 103(a) as unpatentable
over Liu and Shi
These are argued on the basis of claims 26 and 27.
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CONCLUSIONS OF LAW
The rejection of claims 26-43 under 35 U.S.C. § 101 as directed to non—
statutory subject matter is proper.
The rejection of claims 26, 27, 29, 30, 32, 33, 35, 36, 38, 39, 41, and 42
under 35 U.S.C. § 102(b) as anticipated by Liu is proper.
The rejection of claims 28, 34, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Liu and Bibelnieks is proper.
The rejection of claims 31, 37, and 43 under 35 U.S.C. § 103(a) as
unpatentable over Liu and Shi is proper.
DECISION
The rejection of claims 26-43 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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