Ex Parte Drefs

Patent Trial and Appeal Board

Jul 27, 2017

12477733 (P.T.A.B. Jul. 27, 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.
12/477,733 06/03/2009 MARTIN J. DREFS PT1374US00 8045
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
ipdocket @ thompsonhine. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN J. DREFS
Appeal 2016-000675
Application 12/477,7331
Technology Center 3600
Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final rejection of claims 1—11 and 13—22, which constitute all
the claims pending in this application. Claim 12 has been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies Accenture Global Services Limited as the real party in
interest. Appeal Br. 4.
Appeal 2016-000675
Application 12/477,733
SUMMARY OF DECISION
We REVERSE; (37 C.F.R. § 41.50(b)).
THE INVENTION
Appellant states the application relates to presenting travel-related
offers by a travel reservation system. (Spec. 1).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented process for providing a travel-
related offer for a travel passenger, comprising:
receiving from an interface of a travel reservation system
a request for the travel reservation system to initiate a travel
reservation for a passenger, the travel reservation system
comprising passenger name records (PNRs) that each
correspond to a passenger and store reservation information for
the passenger;
in response to receiving the request, initiating a travel
reservation process;
in response to receiving the request, transmitting from the
travel reservation system a passenger identifier specifying the
passenger to a customer feedback module comprising customer
profiles which include data related to passengers' satisfaction
with past services, wherein the customer feedback module is
configured to:
identify a customer profile associated with the
passenger identifier;
access passenger satisfaction data associated with
the customer profile, wherein the passenger satisfaction
data indicates the passenger's amount of satisfaction or
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Application 12/477,733
dissatisfaction with a past service provided to the
passenger and indicates when the past service occurred;
assign a weight to the passenger satisfaction data based
on an amount of difference between a travel reservation for the
past service and travel schedule changes to a travel itinerary
associated with the past service, wherein greater changes are
correlated with greater dissatisfaction; and
generate a travel-related offer based at least in part on the
data related to the passenger's amount of satisfaction or
dissatisfaction with the past service provided to the passenger,
the past service having occurred before the initiation of the
travel reservation process, wherein an amount of the travel-
related offer is proportional to the passenger’s amount of
dissatisfaction with the past service and is inversely
proportional to a time elapsed since the past service occurred;
modifying content of the travel reservation system to
include the generated travel-related offer; and
presenting on the interface the content including the
generated travel-related offer, during a time when the travel
reservation process occurs.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Webber et al. “Webber”
Bayer et al “Bayer”
Klinkhammer et al.
“Klinkhammer”
Walker et al. “Walker”
US 5,331,546
US 2002/0103693 Al
US 2006/0240891 Al
US 7,383,200 B1
July 19, 1994
Aug. 1, 2002
Oct. 26, 2006
June 3, 2008
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Application 12/477,733
“Getting Bumped” published by www.faqs.org on August 17, 2004
(“Bumped”)
The following rejections are before us for review:
Claims 1—8, 11,21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bayer in view of Webber and Klinkhammer, and further
in view of Bumped.
Claims 9 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bayer in view of Webber and Klinkhammer, and further in view of
Bumped and further in view of Official Notice.
Claims 14—20 are rejected under § 103(a) over Bayer in view of
Webber and Klinkhammer, and further in view of Bumped and Walker.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
Independent claims 1,21, and 22 each requires in one form or
another:
assign a weight to the passenger satisfaction data based on an amount
of difference between a travel reservation for the past service and travel
schedule changes to a travel itinerary associated with the past service,
wherein greater changes are correlated with greater dissatisfaction; and
generate a travel-related offer based at least in part on the data
related to the passenger's amount of satisfaction or dissatisfaction with the
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Application 12/477,733
past service provided to the passenger, the past service having occurred
before the initiation of the travel reservation process,
wherein an amount of the travel-related offer is proportional to the
passenger ’s amount of dissatisfaction with the past service and is inversely
proportional to a time elapsed since the past service occurred;... .
The Examiner found that Bumped discloses this limitation citing to
page 4: “(Bumped teaches involuntarily bumped passengers are provided a
travel voucher, the travel voucher having an expiration date - once past the
expiration date/time elapsed since past service occurred, the value of the
travel voucher drops to zero).” (Final Act. 7).
Appellant argues,
Although Bumped goes on to discuss that “[s]ome folks have
reported success in getting vouchers extended a month or so
before expiration” (Bumped, page 1 ), simply providing
“vouchers” to passengers “willing to be bumped” is very
different than “generating a travel related offer” during the
reservation process based on claimed factors including “the
passenger’s amount of dissatisfaction with the past service” and
“a time elapsed since the past service occurred.”
We agree with Appellant. According to Bumped, “[tjhere are no rules
governing compensation for volunteers — airlines can offer as little or as
much as it takes to bid you off the flight. Delta restricts reservations using
volunteer bumped vouchers to two days in advance.” Bumped p. 4. Thus,
we find no disclosure in Bumped for the claimed rule, “an amount of the
travel-related offer is proportional to the passenger's amount of
dissatisfaction with the past service and is inversely proportional to a time
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Application 12/477,733
elapsed since the past service occurred;...” We do not agree with the
Examiner that the expiration of a travel voucher in Bumped corresponds to
the amount of the travel voucher being inversely proportional to a time
elapsed since the past service occurred because the former is merely the
expiration of a type of currency, and does not relate to an individual’s travel
routine.
Thus, we cannot sustain the rejection of independent claims 1,21, and
22.
Each of claims 9 and 13—20 depends, directly or indirectly, from
independent claim 1. The rejections of these dependent claims do not cure
the deficiency in the Examiner’s rejection of claim 1. Because we cannot
sustain the rejection of independent claim 1, the rejections of claims 9 and
13—20 likewise cannot be sustained.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1—11, and 13—22 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claim 1 is representative of the independent claims before us on appeal,
which contain similar limitations, and is a method claim of steps, viz.
identify a customer profile associated with the passenger
identifier;
access passenger satisfaction data associated with the customer
profile, wherein the passenger satisfaction data indicates the
passenger's amount of satisfaction or dissatisfaction with a past
service provided to the passenger and indicates when the past
service occurred;
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Application 12/477,733
assign a weight to the passenger satisfaction data based on an
amount of difference between a travel reservation for the past
service and travel schedule changes to a travel itinerary
associated with the past service, wherein greater changes are
correlated with greater dissatisfaction; and
generate a travel-related offer based at least in part on the data
related to the passenger’s amount of satisfaction or
dissatisfaction with the past service provided to the passenger,
the past service having occurred before the initiation of the
travel reservation process,
wherein an amount of the travel-related offer is proportional to
the passenger's amount of dissatisfaction with the past service
and is inversely proportional to a time elapsed since the past
service occurred;
Appeal Br. 20.
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 CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., 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.
Although 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 1 recites that it is for a process for providing a
travel-related offer for a travel passenger. The four steps in claim 1 result in
a generated travel-related offer, during a time when the travel reservation
process occurs. The Specification at paragraph 22 recites:
If the feedback was negative, the passenger can be presented
with a travel-related offer such as a voucher for complimentary
drinks or discounted travel for the current travel reservations.
Presenting an offer at a time when a reservation process is
occurring (instead of at the time of the complaint) may
encourage the redemption of the offer, and consequently,
engender goodwill toward the airline. If the feedback is
positive, the passenger can be presented with travel-related
offers that are similar or related to previously completed travel.
Thus, all this evidence shows that claim 1 is directed to anticipating a
complaint by presenting an offer before a dissatisfaction occurs so as to
engender goodwill to a customer(s). It follows from prior Supreme Court
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Application 12/477,733
cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the
claims at issue here are directed to an abstract idea. Like the algorithm in
Gottschalk, anticipating a complaint by presenting an offer in “an amount...
proportional to the passenger’s amount of dissatisfaction” with past service
and “inversely proportional to a time elapsed since the past service
occurred,” is a mathematical algorithm that utilizes two variables to
calculate the award, and that preempts all implementations and uses. Also,
the result engenders goodwill which is not only an abstraction, but it is a
fundamental economic practice. Also, since the scheme attempts to modify
the attitude of a customer and hence behavior, we find that it represents a
method of organizing through reward, human behavior. Thus, determining
when to engender goodwill in a sales environment is an “abstract idea”
beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355-
1257.
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 performing a mathematical algorithm in Gottschalk
and the concept of anticipating a complaint by presenting an offer through
calculation before a dissatisfaction occurs to engender goodwill, at issue
here. Both are squarely within the realm of “abstract ideas” as the Court has
used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. That the
claims do not preempt all forms of the abstraction or may be limited to the
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Application 12/477,733
abstract idea in the airline transportation setting, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360—61 (Fed. Cir. 2015). Perhaps more to the point, claim 1 does no more
than appease an otherwise disgruntled customer in advance of the expected
dissatisfaction to protect goodwill. Goodwill is a disembodied concept that
is the epitome of abstraction.
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 (alterations in original) (citations
omitted).
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Application 12/477,733
“[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 take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. 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
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of advising one of how to evaluate some impact
measure as performed by a generic computer. 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.
Instead, the claims at issue amount to nothing significantly more than an
instructions to apply the abstract idea of anticipating a complaint by
presenting an offer before a dissatisfaction occurs to engender goodwill to a
person, on a generic computer. Under our precedents, that is not enough to
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transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
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., 134 S. Ct._at 2360 (alterations in original).
The dependent claims add nothing more to the patent eligibility of the
independent claims, e.g., transmitting passenger information — claim 2;
modifying a profile — claim 4; recognizing a level change based on type or
frequency of travel — claim 5.
CONCLUSION OF LAW
We conclude the Examiner did err in rejecting claims 1—11 and 13—22
under 35 U.S.C. § 103.
DECISION
The Examiner’s rejections of claims 1—11 and 13—22 under 35 U.S.C.
§ 103(a) are reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
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Application 12/477,733
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellant, WITF1IN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner....
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
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).
REVERSED: 37 C.F.R, $ 41.50(b)
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