Ex Parte Bui

Patent Trial and Appeal Board

Aug 28, 2017

11782934 (P.T.A.B. Aug. 28, 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.
11/782,934 07/25/2007 Hai M. Bui 58083-343429 (B494) 8429
72058 7590 08/30/2017
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAI M. BUI
Appeal 2015-001232
Application 11/782,9341
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
SHEILA F. MCSHANE, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hai M. Bui (Appellant) seeks our review under 35 U.S.C. § 134(a) of
the Final Rejection of claims 1—4, 6—8, and 10-33. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Adobe Systems Incorporated as the real party in
interest. Appeal Br. 3.
Appeal 2015-001232
Application 11/782,934
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
1. A computer-implemented method comprising:
providing an electronic advertisement from a computer device
associated with a first entity through a network to a recipient, the
electronic advertisement associated with an electronic voucher
offering a benefit to the recipient in return for completion of a
transaction using the electronic voucher, wherein the electronic
advertisement is provided under a fee arrangement between the first
entity and a second entity, the second entity agreeing to pay the first
entity an advertising fee based on completion of the transaction,
wherein the electronic voucher comprises information identifying the
first entity;
receiving, at a computer device associated with the first entity,
confirmation that the recipient completed the transaction to redeem
the electronic voucher, the transaction completed online and
comprising the recipient sending the electronic voucher through the
network to the second entity; and
using the electronic voucher sent through the network to the
second entity in completing the transaction to associate the transaction
with the first entity, wherein the information identifying the first
entity is obtained from the electronic voucher to associate the
transaction with the first entity.
The Examiner relies upon the following as evidence of
unpatentability:
appeal.
THE REJECTIONS
Kemahan
Duffield
Yuasa
US 2002/0128903 A1
US 2002/0161644 A1
US 2002/0198777 A1
US 2005/0209921 A1
US 7,013,286 B1
Sept. 12, 2002
Oct. 31,2002
Dec. 26, 2002
Sept. 22, 2005
Mar. 14, 2006
Roberts
Aggarwal
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Application 11/782,934
Amada US 2006/0136296 A1 June 22,2006
Khandelwal US 2007/0106608 A1 May 10,2007
The following rejections are before us for review:
1. Claims 1—4, 6—8, and 10-33 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
2. Claims 1—4, 6—8, 10, 11, 13—23, 27—29, 31, and 32 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Kemahan, Aggarwal,
and Khandelwal.
3. Claims 12, 25, and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kemahan, Aggarwal, Khandelwal, and Amada.
4. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kemahan, Aggarwal, Khandelwal, and Duffield.
5. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kemahan, Aggarwal, and Khandelwal, and Yuasa.
6. Claim 33 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kemahan, Aggarwal, Khandelwal, and Roberts
ISSUES
Did the Examiner err in rejecting claims 1—4, 6—8, and 10—33 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 1—4, 6—8, 10, 11, 13—23, 27—
29, 31, and 32 under 35 U.S.C. § 103(a) as being unpatentable over
Kemahan, Aggarwal, and Khandelwal?
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Application 11/782,934
Did the Examiner err in rejecting claims 12, 25, and 30 under 35
U.S.C. § 103(a) as being unpatentable over Kemahan, Aggarwal,
Khandelwal, and Amada?
Did the Examiner err in rejecting claim 24 under 35 U.S.C. § 103(a)
as being unpatentable over Kemahan, Aggarwal, Khandelwal, and Duffield?
Did the Examiner err in rejecting claim 26 under 35 U.S.C. § 103(a)
as being unpatentable over Kemahan, Aggarwal, and Khandelwal, and
Yuasa?
Did the Examiner err in rejecting claim 33 under 35 U.S.C. § 103(a)
as being unpatentable over Kemahan, Aggarwal, Khandelwal, and Roberts?
ANALYSIS
The rejection of claims 1-4, 6-8, and 10-33 under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
The Appellant argued these claims as a group. See Reply Br. 8—9. We
select claim 1 as the representative claim for this group, and the remaining
claims 2—4, 6—8, and 10-33 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(l)(iv).
Alice Corp. Party Ltd. v. CLS Bank International, 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. Step two 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
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[ineligible concept] itself.Alice, 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
72-73 (2012)).
In accordance with the Alice framework, the Examiner determined
that (per step 1)
[i]n the instant case, [independent] claims 1,6, 17, and 29, are
directed to a method, and [independent] claim 29 is directed to a
product; and in particular the claims are directed towards a computer-
implemented method of advertising over a network, which is
considered to be an abstract idea inasmuch as such activity is
considered a method of organizing human activity by managing and
displaying advertisement information and/or a fundamental economic
practice of advertising[,]
Ans. 3, and (per step 2)
[additional elements are: providing an electronic advertisement from
a computer device associated with a first entity through a network to a
recipient, the electronic advertisement associated with an electronic
voucher offering a benefit to the recipient in return for completion of a
transaction using the electronic voucher, wherein the electronic
advertisement is provided under a fee arrangement between the first
entity and a second entity, the second entity agreeing to pay the first
entity an advertising fee based on completion of the transaction,
wherein the electronic voucher comprises information identifying the
first entity; receiving, at a computer device associated with the first
entity, confirmation that the recipient completed the transaction to
redeem the electronic voucher, the transaction completed online and
comprising the recipient sending or the electronic voucher through the
network to the second entity; and using the electronic voucher sent
through the network to the second entity in completing the transaction
to associate the transaction with the first entity, wherein the
information identifying the first entity is obtained from the electronic
voucher to associate the transaction with the first entity; however, it is
noted, that these elements, when taken alone, each execute in a
manner routinely and conventionally expected of these elements. The
claims do not include limitations that are “significantly more” than the
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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 limitations beyond
generally linking the use of an abstract idea to a particular
technological environment. Note that the limitations in the instant
claims are done by the generically recited “computer” and “computer
device”. The limitations are merely instructions to implement the
abstract idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to
the industry.
Ans. 3^4.
For its part in challenging the rejection, rather than following the Alice
framework, the Appellant disagrees with the Examiner’s characterization
that the claims are directed to an abstract idea. According to the Appellant
the electronic voucher as claimed is concrete and new.
The claims of the present application are directed to use of electronic
vouchers, which are new, as discussed above. In addition, the
electronic vouchers of the claims are concrete and not abstract. An
embodiment of an electronic voucher as claimed has specific,
identifiable characteristics, such as including an identification of a
source of the vouchers. In addition, the electronic vouchers are
electronic. Therefore, they are physical. They exist in an electronic
memory and have physical and tangible properties and characteristics
which allow an electronic machine to tangibly interact with them
using physical mechanisms. As such, at least for these reasons, the
claims of the present application are directed to methods of using
concrete vouchers which are electronic and physical, and are,
therefore, directed to statutory subject matter.
Reply Br. 8—9.
The argument is unpersuasive.
Claim 1 calls for “an electronic voucher offering a benefit to the
recipient in return for completion of a transaction using the electronic
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voucher ... wherein the electronic voucher comprises information identifying
[a] first entity.”
To characterize the electronic voucher as claimed as being “concrete”
and “physical” is problematic. The electronic voucher as claimed comprises
nothing more than “information” (claim 1). Cf. Specification, para. 39 (“an
E-Voucher ... may be as simple as ... a simple text string.”). Information is
an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12
(2007); see also Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014) (“Data in its ethereal, non-physical form is
simply information that does not fall under any of the categories of eligible
subject matter under section 101.”).
Be that as it may, whether or not something as claimed is “concrete”
and “physical” is not the test for determining whether claimed subject matter
is judicially-excepted from patent-eligibility. If that were the case, claims to
computers would necessarily be patent eligible. But that is not the case. See
Alice, 134 S.Ct. at 2358-59:
The fact that a computer “necessarily exist[s] in the physical, rather
than purely conceptual realm” is beside the point. There is no dispute
that a computer is a tangible system (in § 101 terms, a “machine”), or
that many computer-implemented claims are formally addressed to
patent-eligible subject matter. But if that were the end of the § 101
inquiry, an applicant could claim any principle of the physical or
social sciences by reciting a computer system configured to
implement the relevant concept.
Whether or not the electronic voucher as claimed is new is also not
dispositive. A finding of novelty or nonobviousness does not necessarily
lead to the conclusion that subject matter is patentable eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
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satisfy the § 101 inquiry.” Ass ’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Indeed, “[t]he ‘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) (emphasis added); see also Mayo, 132 S. Ct. at 1303-04
(rejecting “the Government’s invitation to substitute §§ 102, 103, and
112 inquiries for the better established inquiry under § 101”). Here,
the jury’s general finding that Symantec did not prove by clear and
convincing evidence that three particular prior art references do not
disclose all the limitations of or render obvious the asserted claims
does not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
Given nothing more than to argue that the electronic voucher as
claimed is “concrete,” “physical,” and new, and that argument being
unpersuasive as a matter of law, the Appellant does not persuade us that the
rejection was made in error. Accordingly, the rejection is sustained.
The rejection of claims 1—4, 6—8, 10, 11, 13—23, 27—29, 31, and 32 under 35
U.S.C. § 103(a) as being unpatentable over Kernahan, Aggarwal, and
Khandelwal.
The rejection of claims 12, 25, and 30 under 35 U.S.C. § 103(a) as being
unpatentable over Kernahan, Aggarwal, Khandelwal, and Amada.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being unpatentable
over Kernahan, Aggarwal, Khandelwal, and Duffield.
The rejection of claim 26 under 35 U.S.C. § 103(a) as being unpatentable
over Kernahan, Aggarwal, and Khandelwal, and Yuasa.
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The rejection of claim 33 under 35 U.S.C. § 103(a) as being unpatentable
over Kernahan, Aggarwal, Khandelwal, and Roberts.
Ostensibly, the Appellant argued the claims in five groups: claims 1^4
and 31—33 (Appeal Br. 12); claims 6—8 and 10-16 (Appeal Br. 17); claims
17—26 (Appeal Br. 18); claims 27 and 28 (Appeal Br. 20); and, claims 29
and 30 (Appeal Br. 20). In actuality, only the rejection of claim 1 is
addressed. The Appellant relies on the argument challenging the rejection of
claim 1 in challenging the rejections of the other claims. Accordingly, we
select claim 1 as the representative claim, and the remaining claims 2—4, 6—
8, and 10-33 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The dispute is over the "electronic voucher"; specifically that it
“comprises information identifying [a] first entity” (claim 1).
Kernahan, which the Examiner relies upon, discloses “electronic
coupons.” See para. 6. Coupons are vouchers entitling a holder to a
discount. Kemahan's electronic coupon includes various elements (para. 75),
each of which contain different types of information in the form of, e.g.,
text. See e.g., para. 76. Redeeming Kemahan’s electronic coupons can
provide proof of advertising to an advertiser and thereby information on the
return on investment. See para. 42.
“Appellant respectfully submits that Kernahan does not teach that an
‘electronic voucher comprises information identifying the first entity,’ as
recited in claim 1,. . .”. Appeal Br. 14.
Paragraph [0042] of Kernahan discloses that the system ‘provides
proof of advertising to the advertiser (e.g. in the form of coupons that
have been redeemed), and therefore provide information on the return
on investment. ’ The system providing proof of advertising suggests
that the system has the identity of the advertiser, however, there is no
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suggestion that the identity of the advertiser is known through an
identification in the electronic coupon.
Appeal Br. 14.
The Appellant's position—that the instant voucher distinguishes over
that of Kemahan because it “comprises information identifying the first
entity—argues for distinguishing the voucher as claimed over that of
Kemahan for what the information communicates. But a difference based
on what the information communicates is a difference over non-functional
descriptive material. Non-functional descriptive material, however, is not
given patentable weight. “[N]on-functional descriptive material, being
useful and intelligible only to the human mind, is given no patentable
weight.” Ex parte Graf Appeal 2012-003941, 2013 WL 3873066, at *4
(PTAB July 23, 2013) (non-precedential), aff’d, In re Graf 585 F. App’x.
1012 (Fed. Cir. 2014) (non-precedential); cf In re DiStefano, 808 F.3d 845
(Fed. Cir. 2015); as explained in In re Xiao, 462 F. App’x. 947, 950-52 (Fed.
Cir. 2011) (non-precedential):
[T]he Board did not create a new “mental distinctions” mle in denying
patentable weight.... On the contrary, the Board simply expressed the
above-described functional relationship standard in an alternative
formulation—consistent with our precedents—when it concluded that
any given position label’s function ... is a distinction “discemable only
to the human mind.” Board Decision at 6; see In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (describing printed matter as “useful and
intelligible only to the human mind”) (quoting In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969)).
“The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations.” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010). Thus, the claim phrase “identifying the first entity”
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(claim 1) as a limitation on the information provided by the electronic
voucher is not patentably consequential. Accordingly, the Appellant’s
position that said limitation patentably distinguishes the claimed electronic
voucher from Kemahan’s electronic coupon is unpersuasive as to error in the
rejection.
The remaining arguments are unpersuasive as to error in the rejection.
CONCLUSIONS
The rejection of claims 1—4, 6—8, and 10-33 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed.
The rejection of claims 1—4, 6—8, 10, 11, 13—23, 27—29, 31, and 32
under 35 U.S.C. § 103(a) as being unpatentable over Kemahan, Aggarwal,
and Khandelwal is affirmed.
The rejection of claims 12, 25, and 30 under 35 U.S.C. § 103(a) as
being unpatentable over Kemahan, Aggarwal, Khandelwal, and Amada is
affirmed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Kemahan, Aggarwal, Khandelwal, and Duffield is
affirmed.
The rejection of claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Kemahan, Aggarwal, and Khandelwal, and Yuasa is
affirmed.
The rejection of claim 33 under 35 U.S.C. § 103(a) as being
unpatentable over Kemahan, Aggarwal, Khandelwal, and Roberts is
affirmed.
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DECISION
The decision of the Examiner to reject claims 1—4, 6—8, and 10—33 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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