Ex Parte DOBSON et al

Patent Trials and Appeals Board

Aug 21, 2018

13926540 - (D) (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/926,540 06/25/2013
23494 7590 08/23/2018
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MIS 3999
DALLAS, TX 75265
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
JOELL YNN DOBSON
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.
TI-72013 7138
EXAMINER
BARGEON, BRITTANY E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOELL YNN DOBSON and CHRISTOPHER COOK
Appeal2017-003208 1
Application 13/926,5402
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, 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 2-7 and 9-14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed January 18,
2016), and the Examiner's Answer ("Ans.," mailed July 22, 2016), and Final
Office Action ("Final Act.," mailed August 25, 2015).
2 Appellants identify Texas Instruments Incorporated as the real party in
interest. Br. 3.
Appeal2017-003208
Application 13/926,540
CLAIMED INVENTION
Appellants' claimed invention relates "to electronic commerce-based
recommending of products" (Spec. ,r 1 ).
Claims 2 and 9 are the independent claims on appeal. Claim 9,
reproduced below, is illustrative of the claimed subject matter:
9. An on-line method of recommending products during e-
commerce, said method comprising:
providing a computing device including a processor
connected to a memory which controls operations at an on-line
website; wherein said memory stores a cross sampling
recommender algorithm (CSRA) and said computing device is
programmed to implement said CSRA which includes at least a
first statistical model;
responsive to receiving information via a communications
path including the Internet from a first customer including said
customer selecting a first product from a plurality of products
offered at said on-line website, said CSRA automatically:
dividing historical customer' selection information for
said plurality of products spanning a first period of time into a
plurality of time ordered sub-periods of time;
using said customer' selection information in said time
ordered sub-periods of time as a time covariate, fitting logistic
regressions to each of a plurality of cross-sampled pairs of said
plurality of products involving said first product;
using data obtained from said logistic regressions,
identifying which of said plurality of cross-sampled pairs meets
a slope selection criteria including both a non-zero slope based
on a predetermined statistical significance measure comprising a
p (probability)-value being below a predetermined level, wherein
a null hypothesis corresponds to a zero slope, and wherein said
null hypothesis is rejected to determine said non-zero slope is
present only when said p-value is below said predetermined
level, and said non-zero slope being a positive slope; and
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Application 13/926,540
recommending to said first customer, via said internet, at
least a first recommended product from said plurality of cross-
sampled pairs provided at least one of said plurality of cross-
sampled pairs meet said slope selection criteria.
REJECTI0N3
Claims 2-7 and 9-14 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
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. Alice Corp. v. CLS Bank Int '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,
3 The Examiner has withdrawn the rejection of claims 2-7 and 9-14 under
35 U.S.C. § 102. Ans. 3.
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Application 13/926,540
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
"'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 "using algorithms to
provide product recommendations," which the Examiner concluded "is a
fundamental economic practice and a mathematical relationship/formula and
thus an abstract idea"; and that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
itself (Final Act. 4--5).
Appellants summarily assert, without any supporting argument or
technical reasoning, that "[ t ]he claims include a recommendation to a
customer element" and "[ t ]hus the claims amount to significantly more than
the abstract idea itself' (Br. 11 ). Yet, providing product recommendations
to a customer is the abstract idea itself; it is not an additional element to be
considered when determining whether the claims include additional
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Application 13/926,540
elements or a combination of elements sufficient to amount to significantly
more than the judicial exception. See Mayo, 566 U.S. at 72-73 (requiring
that "a process that focuses upon the use of a natural law also contain other
elements or a combination of elements, sometimes referred to as an
'inventive concept,' sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself' ( emphasis
added)).
Appellants further cite Westlake Services, LLC. v. Credit Acceptance
Corp, CBM2014-00008, 2014 WL 1440384 (PTAB March 31, 2014)
(denying institution as to claims 10-12 and 14--33 of US Patent No.
6,950,807 B2 (the '807 patent)) as supporting that the present claims are
patent-eligible (Br. 11-12). But Appellants' reliance on Westlake is
misplaced.
As an initial matter, the Board did not hold in its Institution Decision
that claims 10-12 and 14--33 were patent-eligible as a matter of law.
Instead, the Board found that the Petitioner had not shown that claims 10-12
and 14--33 were more likely than not directed to patent-ineligible subject
matter under 35 U.S.C. § 101. Westlake Services, 2014 WL 1440384, at *14
("Based on the information presented in the Corrected Petition and
supporting evidence, we are not persuaded that claims 10-12 and 14--33 are
more likely than not unpatentable as claiming patent-ineligible subject
matter under 35 U.S.C. § 101.").
Three months after the Board issued its Institution Decision in
CBM2014-00008, the Supreme Court issued its decision in Alice on June 19,
2014. Subsequently, Westlake Services filed an Amended Petition, and the
Board instituted a covered business method patent review of claims 10-12
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Application 13/926,540
and 14--33 of the '807 patent. Westlake Services, LLC. v. Credit Acceptance
Corp, CBM2014-00176, 2015 WL 576798 (PTAB February 9, 2015). In its
Final Written Decision, the Board held claims 10-12 and 14--33
unpatentable as directed to patent-ineligible subject matter. Westlake
Services, LLC. v. Credit Acceptance Corp, CBM2014-00176 (PTAB
January 25, 2016). Credit Acceptance appealed, and the Federal Circuit
affirmed the Board's holding. Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044 (Fed. Cir. 2017).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 2-7 and 9-14 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 2-7 and 9-14 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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