Ex Parte Gilman et al

Patent Trial and Appeal Board

May 7, 2018

13793616 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/793,616 03/11/2013
21839 7590 05/09/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Andrea Christine Gilman
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.
007 6412-000097 9660
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA CHRISTINE GILMAN,
CHRISTOPHER ANDREW GUINEY, and LISA YATES
Appeal2017-000795
Application 13/793,616 1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-11, and 13-16, which are all of the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, MasterCard International Inc. is the real party in
interest. App. Br. 2.
2 Claims 4 and 12 have been canceled. App. Br. 39, 43 (Claims App'x).
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INVENTION
Appellants' application relates "to the distribution of offers to
consumers based on redemption history, specifically analyzing consumer
behaviors based on previous offer redemption history to identify new offers
to be distributed to the consumer." Spec. 1. Claim 1 reads as follows:
1. A method for distributing an offer to a consumer based on
redemption history, comprising:
storing, in a consumer database, a plurality of consumer
profiles, wherein each consumer profile is associated with a
consumer and includes at least a consumer identifier and offer
redemption data;
receiving, by a receiving device, a plurality of redeemed
offers associated with a consumer identification, wherein each
redeemed offer of the plurality of redeemed offers corresponds
to an offer redeemed by a consumer associated with the
consumer identification and is associated with at least one offer
category of a plurality of offer categories;
identifying, by a processing device, a specified consumer
profile, wherein the consumer identifier of the specified
consumer profile corresponds to the consumer identification;
storing, in the offer redemption data of the specified
consumer profile, the received plurality of redeemed offers;
generating, by the processing device, a behavioral profile
for the specified consumer profile based on the corresponding
offer redemption data, wherein the behavioral profile includes at
least a propensity to redeem an offer for each offer category of
the plurality of offer categories based on at least redeemed offers
of the plurality of redeemed offers associated with the respective
offer category; and
transmitting, by a transmitting device, an offer to a
consumer associated with the specified consumer profile, based
on a specific offer category associated with the offer and the
propensity to redeem an offer for the specific offer category of
the consumer associated with the specified consumer profile,
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wherein the offer transmitted to the consumer is associated with
a propensity to redeem threshold, and wherein the propensity to
redeem an offer for the specific offer category of the consumer
exceeds the propensity to redeem threshold.
REJECTIONS
Claims 1-3, 5-11, and 13-163 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patent
eligibility under § 101. Final Act. 6.
Claims 1, 2, 5, 6, 9, 10, 13, and 14 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over the combination of Main et al. (US
2013/0024261 Al; published Jan. 24, 2013) ("Main"), Beatty et al. (US
2012/0166267 Al; published June 28, 2012) ("Beatty"), and Wang et al.
(US 2012/0116875 Al; published May 10, 2012) ("Wang"). 4 Final
Act. 7, 25.
Claims 7 and 15 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Main and Wang. Final Act. 18.
Claims 3 and 11 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Main, Beatty and Toennis et al. (US
2010/0191598 Al; published July 29, 2010) ("Toennis"). Final Act. 23.
3 The Final Office Action, mailed July 16, 2015, rejected then-pending
claims 1-16. An amendment after final was entered for purposes of appeal
by the Examiner in the Advisory Action dated October 30, 2015, which
incorporated dependent claims 4 and 12 into independent claims 1 and 9,
respectively. For clarity, we do not identify canceled claims 4 and 12 above.
4 Due to an amendment after final, which incorporated dependent claims 4
and 12 into independent claims 1 and 9, respectively, Appellants and the
Examiner are proceeding as if Wang, which was used to reject cancelled
claims 4 and 12, is part of the rejection of amended claims 1 and 9. See
App. Br. 2, 26 ( citing Final Act. 25). We proceed accordingly and identify
Wang in the rejection above for clarity.
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Claims 8 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Main, Wang, and Beatty. Final Act.
26-27.
ANALYSIS
We have reviewed the rejections of claims 1-3, 5-11, and 13-16 in
light of Appellants' arguments that the Examiner erred. We have considered
in this decision only those arguments Appellants actually raised in the
Briefs. Any other arguments Appellants could have made, but chose not to
make, in the Briefs are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of Examiner error. We
agree with and adopt as our own the Examiner's findings of facts and
conclusions as set forth in the Answer (Ans. 2-7) and in the Action from
which this appeal was taken (Final Act. 6-28). We provide the following
explanation for emphasis.
Rejection of Claims 1-3, 5-11, and 13-16 under 35 U.S.C. § 101
Appellants first contend the Examiner failed to establish a prima facie
case of patent ineligibility under § 101. App. Br. 10. We disagree. The
Federal Circuit has repeatedly explained that "the prima facie case is merely
a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Examiner carries
the burden of establishing a prima facie case when its rejection satisfies
35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate and
informative manner. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). If
the Examiner "adequately explain[ s] the shortcomings ... the burden shifts
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to the applicant to rebut the prima facie case with evidence and/or
argument." Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 4---6. The Examiner's statements satisfy§ 132 because they apply
the Mayol Alice analytical framework and apprise Appellants of the reasons
for the§ 101 rejection under that framework. Appellants have recognized
the Examiner's Mayo/Alice analysis and have presented arguments regarding
each step. See App. Br. 10-24. Appellants have not responded by alleging a
failure to understand the rejection. Id.
Appellants next contend the Examiner erred in rejecting the pending
claims as directed to a judicial exception (i.e., an abstract idea) without
significantly more. See App. Br. 11. Appellants argue claims 1-3, 5-11,
and 13-16 as a group (App. Br. 8), and we choose claim 1 as representative
of the group. See 37 C.F.R. § 4I.37(c)(l)(iv).
In Alice, the Supreme Court sets forth an analytical "framework 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. Pty, Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts," such
as an abstract idea. Id. (citing Mayo, 566 U.S. at 77-78). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims "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.
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(quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to
"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.
(brackets in original) (quoting Mayo, 566 U.S. at 72-73). The prohibition
against patenting an abstract idea "'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) ( citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of the claims are directed to the abstract idea of
distributing offers to a consumer, which is a method of organizing human
activity. Final Act. 2-3. We also agree that customer profiling is essentially
a method that involves "the use of customer data to stay informed about
customer preferences" and, thus, is a method that can be performed mentally
or on paper. Ans. 4. The claims here are akin to ones our reviewing court
deemed abstract in Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1369-70 (Fed. Cir. 2015) (customizing and tailoring web
page content based on navigation history and known user information), Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
( collecting information and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, ...
[are] essentially mental processes within the abstract-idea category"), and
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1271 (Fed.
Cir. 2016) ( customizing a user interface to have targeted advertising based
on user information). Here, claim 1 involves nothing more than obtaining,
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constructing, and analyzing data of a specific content and/or from a specific
source, and presenting content based on the analysis, without any particular
inventive technology-an abstract idea. See Elec. Power, 830 F.3d at 1354.
Appellants' claims are also similar to the concepts of collecting and
comparing known information; intangible data; using categories to organize,
store and transmit information; and data recognition and storage that the
courts have previously found abstract. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); Content Extraction &
Transmission v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014),
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x. 950, 955
(Fed. Cir. 2014), and Classen Immunotherapies Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011)). The Examiner concluded the claims
recite storing, receiving, and transmitting offers to a consumer based on
offer redemption data, which is simply the organization and manipulation of
data that can be performed mentally and is an idea of itself. Ans. 3.
We are not persuaded by Appellants' argument that the present claims
"cover subject matter that can be analogized to that presented in" DDR
Holdings. App. Br. 13 (citing DDR Holdings, LLC v. Hotels.com, LP, 773
F.3d 1245, 1257 (Fed. Cir. 2014)). Appellants do not persuasively explain
how claim 1 is "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
See id.; App. Br. 18-21. The claimed steps do not rely on an inventive
device or technique for distributing offers to consumers, but rather constitute
a generic recitation of steps for mathematically manipulating historical
redemption data to obtain modified data. No technological advance is
evident in the present invention, and Appellants do not persuasively identify
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any problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. See App. Br. 11-16.
For these reasons, we are not persuaded of error in the Examiner's
conclusion that the claims are directed to the abstract idea of distributing an
offer, which involves the organization and manipulation of data that can be
performed mentally and is an idea of itself. See Ans. 3.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything "significantly more" to transform the abstract
concept of distributing an offer into patentable subject matter. Alice, 134 S.
Ct. at 2357.
Appellants' argument that the recited computers are special-purpose
computers (App. Br. 21-22) is not persuasive in light of the description in
the Specification that "[p ]rocessor device 1004 may be a special purpose or
a general purpose processor device," and "[t]he processing server 104 ...
may be any type of server configured to perform the functions as disclosed
herein." Spec. ,r,r 28, 79 (emphasis added). Simply programming a
computer to perform what would otherwise be an abstract idea is not
sufficient to impart patent eligibility. See Alice, 134 S. Ct. at 2359; App.
Br. 22.
We also are not persuaded by Appellants' arguments that the claims
recite technological improvements because Appellants have not identified
which elements recited in the claims are directed to any such specific
technical aspects. See App. Br. 11-24, Reply Br. 8.
For these reasons, we are not persuaded the Examiner erred in
concluding nothing in claim 1 adds "significantly more" to transform the
abstract idea into patentable subject matter.
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Additionally, Appellants contend claim 1 poses no risk of preempting
the abstract idea. See App. Br. 16-18. Appellants' argument is not
persuasive because, "' [ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."' FairWarning IP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016) (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015)). Further, "[w]here a patent's claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Ariosa, 788 F.3d at 1379.
For these reasons, we are not persuaded the Examiner erred in
concluding the subject matter of claim 1 is judicially-excepted from
patentability.
Accordingly, we sustain the Examiner's § 101 rejection of
representative, independent claim 1, as well as the Examiner's § 101
rejection of claims 2, 3, 5-11, and 13-16, not argued separately.
Rejection of Claims 1, 2, 5, 6, 9, 10, 13, and 14 under 35 U.S.C. § 103(a)
Claims l and 9
In rejecting the claims for obviousness, the Examiner relied on the
combination of Main and Beatty as teaching or suggesting the recited
"generating" step recited in claim 1. Final Act. 8. The Examiner relied on
Main as teaching or suggesting the limitation "generating, by the processing
device, a behavioral profile for the specified consumer profile based on the
corresponding offer redemption data, wherein the behavioral profile includes
at least a propensity to redeem an offer" and relied on Beatty for the
limitation "for each offer category of the plurality of offer categories based
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on at least redeemed offers of the plurality of redeemed offers associated
with the respective offer category," as recited in claim 1. Final Act. 8.
Appellants contend Beatty fails to teach or suggest the generating of a
behavioral profile, as claim 1 requires. App. Br. 26. The Examiner,
however, relied on Main as teaching "generating, by the processing device, a
behavioral profile for the specified consumer profile based on the
corresponding offer redemption data, wherein the behavioral profile includes
at least a propensity to redeem an offer." Final Act. 8 ( citing Main ,r 43).
Thus, Appellants' arguments are not persuasive at least because they are not
commensurate in scope with the Examiner's rejection.
Moreover, Appellants attack Beatty individually, even though the
Examiner relied on the combination of Main and Beatty in rejecting claim 1.
See Final Act. 8-9; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)
(citing In re Keller, 642 F.2d 413,425 (CCPA 1981)) ("The test [for
obviousness] is what the combined teachings of the references would have
suggested to those having ordinary skill in the art."). Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Furthermore, the Examiner concluded the phrase "redeemed offers" is
broad enough to encompass the "purchases" taught in Beatty. Ans. 6.
Appellants do not persuasively rebut the Examiner's conclusion by showing
the Examiner's claim interpretation is overly broad, unreasonable or
inconsistent with the Specification. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
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1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
197 4) ( attorney argument is not evidence).
Appellants next contend Wang does not teach or suggest the claim
limitations "propensity to redeem threshold" and "wherein the propensity to
redeem an offer for the specific offer category of the consumer exceeds the
propensity to redeem threshold," as recited in claim 1. App. Br. 27-28.
Appellants argue Wang measures a threshold amount of time browsing a
website and not a "propensity to redeem threshold." Id. at 27. Appellants
further argue Wang does not compare two different values (e.g., propensity
to redeem threshold and propensity to redeem an offer for the specific offer
category) to make a determination of whether to transmit an offer to a
consumer. Id. at 28.
We are not persuaded by Appellants' arguments. The Examiner
found Wang's determination of a specified likelihood of becoming a
customer teaches the disputed limitation. Ans. 6 (citing Wang ,r 20). In
particular, the Examiner interpreted the claim term "propensity" as broad
enough to encompass the "likelihood" taught in Wang. Id. The Examiner
found Wang's providing advertisements based on its determination of a
specified likelihood of becoming a customer teaches or at least suggests the
disputed limitations because a "specified likelihood" requires a comparison
of two values. Id. (citing Wang ,r,r 19, 60).
Appellants have not persuasively rebutted the Examiner's factual
findings and conclusions. Appellants argue only that "becoming customers
by purchase is only one way for offer redemption and, thus, the specified
likelihood of becoming customers is not a same concept as a propensity to
redeem an offer." Reply Br. 10. The test for obviousness, however, is not
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whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). In light
of Appellants' acknowledgement that Wang's teaching of becoming a
customer by purchase "is merely one of multiple ways to redeem an offer,"
(Reply Br. 9), we are not persuaded the Examiner erred.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Main, Beatty, and Wang teaches or suggests the disputed
limitations of claim 1.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, as well as the Examiner's§ 103(a) rejection of
independent claim 9, which Appellants contend is patentable for similar
reasons. See App. Br. 28.
Dependent claims 2, 6, 10, and 14
Claim 2 recites:
The method of claim 1, wherein the plurality of offer categories
includes at least one of: a particular merchant, a particular
manufacturer, a transaction amount, an offer amount, a particular
industry, an offer type, an offer quantity, and a length of
availability.
Appellants argue the Examiner erred because Beatty does not teach
that the plurality of offer categories recited in claim 2 are based on at least
one offer category corresponding to an offer redeemed by a consumer, as
claim 2 requires based on its dependency from claim 1. App. Br. 29.
Appellants argue the cited passages of Beatty relate to determining an
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attribute score and to types of categories of ads the consumer would like to
see as a result of stored preferences of the user. Id. at 28-29.
We agree with the Examiner that Beatty's purchases teach offer
redemptions. Ans. 6. The Examiner found that, if a consumer has
purchased a product belonging to a category, a consumer has necessarily
redeemed an offer for a product in that category. Id. at 6-7. Moreover,
Beatty' s categories of ads, based on variables such as the percentage of
discount, the price (Beatty ,r 117), and Beatty' s attribute scores, including
merchant category type, merchant distance, day of the week (id. ,r 10), teach
or at least suggest the categories recited in claim 2.
For these reasons, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of dependent claims 2 and 10, which Appellants argue are
patentable for similar reasons. App. Br. 29. We also sustain the rejection of
dependent claims 6 and 14, which recite commensurate limitations and for
which Appellants present similar arguments. App. Br. 32-33.
Claims 5, 7, 13, and 15
Regarding independent claim 5, Appellants rely on the same argument
made for claim 1 regarding the Examiner's reliance on Beatty' s purchasing
behavior and not the consumer's offer redemption history. App. Br. 30.
Appellants also argue Main does not create a "behavioral profile," as recited
in claim 5. App. Br. 31.
The Examiner construed the claim term "behavioral profile" as
broadly but reasonably encompassing any data about a customer. Ans. 7.
Appellants have not persuasively rebutted the Examiner's conclusion by
showing the Examiner's interpretation of the disputed term is overly broad,
unreasonable or inconsistent with the Specification. See Reply Br. 9-10.
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For these reasons, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of independent claim 5, as well as the§ 103(a) rejection of
independent claims 7, 13, and 15, which Appellants contend are patentable
for similar reasons. See App. Br. 31.
Claims 8 and 16
Regarding dependent claims 8 and 16, rejected under a separate § 103
rejection, Appellants present arguments similar to those presented for claims
2 and 10, above. App. Br. 35-36. For the same reasons we sustained the
rejection of claims 2 and 10, we sustain the Examiner's§ 103(a) rejection of
dependent claims 8 and 16.
Claims 3 and 11
Regarding dependent claims 3 and 11, rejected under a separate§ 103
rejection, Appellants do not present substantive arguments. App. Br. 36.
Arguments not made are waived. Accordingly, we sustain the Examiner's
§ 103(a) rejection of dependent claims 3 and 11.
DECISION
We affirm the decision of the Examiner rejecting claims 1-3, 5-11,
13-16.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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