Ex Parte Jacob Sushil et alDownload PDFPatent Trial and Appeal BoardAug 3, 201813554049 (P.T.A.B. Aug. 3, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/554,049 07/20/2012 75739 7590 08/07/2018 RYAN, MASON & LEWIS, LLP 2425 Post Road Suite 204 Southport, CT 06890 FIRST NAMED INVENTOR George T. Jacob Sushi! 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. IN920120129US 1 8561 EXAMINER YESILDAG, MEHMET ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/07/2018 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): CTOFFICE@RML-LA W.COM kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE T. JACOB SUSHIL and KALAPRIY A KANNAN 1 Appeal2017-001279 Application 13/554,049 Technology Center 3600 Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and AARON W. MOORE, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 7, 9, 10, 12, 18, 20, 21, and 23. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify International Business Machines Corporation as the real party in interest. Appeal Brief 1, filed May 9, 2016 ("App. Br."). Appeal2017-001279 Application 13/554,049 THE INVENTION Appellants describe the present invention as follows: Disclosed is a method, system and computer program product for deriving marketing strategy for at least one of a product and a service utility value from an associated utility value by collecting feedback from a user of at least one product or service, wherein the feedback provided by the user is available in multiple sources associated with the at least one product or service, computing a utility value for the at least one product or service based on the feedback of the user, and generating an appropriate marketing strategy for the at least one product or service based on the utility value. Abstract. Independent claim 1, reproduced below, illustrates the claimed invention: 2 1. A method for deriving marketing strategy for a product or a service from an associated utility value, the method compnsmg: collecting, from at least one social network accessed via the Internet, feedback generated by multiple users on the at least one social network, said feedback pertaining to at least one product or service associated with an enterprise over a period of time, wherein the feedback is associated with multiple features of the at least one product or service; computing a utility value ( u; ( t)) for the at least one product or service as a weighted ( w) sum of expected attribute utility values UIJ(t) calculated for the multiple features (k) for the period of time (t), wherein the expected attribute utility value for each of the multiple features is based on (i) the feedback of the multiple users (ak, bk) expressed over the period of time and (ii) a 2 Appellants argue the claims together as a group. See App. Br. 7-10; Reply Br. 2-8. Accordingly, we select independent claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). 2 Appeal2017-001279 Application 13/554,049 model expressing decay of value of the at least one product or service over the period of time as an exponential component (exp-rxPkj (x, t)dx), wherein the expected attribute utility value is calculated using the equation: 1 U[,lt) = ak + bk L=o exp-rxPkj(x, t)dx, and wherein the utility value for the at least one product or service is calculated using the equation: u;,j(t) = LkE{l,2, ... ,K} wk u;,j(t); and generating a strategy for marketing the at least one product or service based on (i) the utility value for the at least one product or service and (ii) an order of importance of the multiple features of the at least one product of service, wherein the order of importance is determined via a weight calculated as a function of a number of positive feedback entries collected versus a number of negative feedback entries collected for each of the multiple features divided by a total number of feedback entries collected for each of the multiple features; wherein the steps of the method are carried out by at least one computing device. THE REJECTION Claims 1, 7, 9, 10, 12, 18, 20, 21, and 23 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2--4. 3 The Examiner determines that computing a product utility value using mathematical relationships or formulas constitutes an abstract idea. 3 Rather than repeat the Examiner's positions and Appellants' arguments in their entirety, we refer to the above-mentioned Appeal Brief, as well as the following documents for their respective details: the Final Action mailed November 27, 2015 ("Final Act."); the Examiner's Answer mailed September 9, 2016 ("Ans."); and the Reply Brief filed October 27, 2016 ("Reply Br."). 3 Appeal2017-001279 Application 13/554,049 Ans. 4. The Examiner also determines that generating or deriving a marketing strategy involves a method of organizing human activity because those steps "can be performed by a [h ]uman mentally, with pen and a paper[,] and/or using a generic computer as a tool." Id. The Examiner additionally determines that "generating/deriving a marketing strategy [for] a product or a service using customer feedback [ was a] long known fundamental economic/commercial practice." Id. The Examiner further determines that after considering all claim elements, both individually and as an ordered combination, the claims do not amount to significantly more than the abstract idea itself. Id. 4--5. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Regarding the question of patent eligibility under 35 U.S.C. § 101, the Supreme Court has set 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. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine whether the claims at issue are "directed to" a judicial exception, such as an abstract idea. Id. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. 4 Appeal2017-001279 Application 13/554,049 Cir. 2016). If the claims are determined to be directed to an abstract idea, then we consider under step two whether the claims contain an "inventive concept" sufficient to "transform the nature of the claim into a patent- eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation omitted). In considering whether a claim is directed to an abstract idea, we acknowledge, as did the Supreme Court, 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. We therefore look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, 822 F.3d at 1336. If the claims are directed to an abstract idea, we then must consider whether the claim contains an element or a combination of elements that is sufficient to transform the nature of the claim into a patent-eligible application. Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 714 (Fed. Cir. 2014); see Alice, 134 S. Ct. at 2355. In applying step two of the Alice analysis, we must "determine whether the claims do significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patentable subject matter. We look to see whether there are any "additional features" in the claims that constitute an "inventive concept," thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Those "additional features" must be more than "well-understood, routine, conventional activity." Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017) ( citations omitted). 5 Appeal2017-001279 Application 13/554,049 Claims that "merely require generic computer implementation[] fail to transform [an] abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2357. CONTENTIONS AND ANALYSIS Appellants argue that "the claimed invention clearly *does* include significantly more' [ than an abstract idea] in accordance with relevant Supreme Court and Federal Circuit guidelines." App. Br. 7. But Appellants do not point out in their principal brief what limitations allegedly constitute significantly more. See App. Br. 7-10. As such, the principal brief merely sets forth arguments unsupported by facts or evidence. Appellants also argue that the claims are directed to patent eligible subject matter because the Examiner withdrew all prior-art rejections. Id. at 10. "Appellant[s] strongly assert[] that if a set of 'specific limitations' has been deemed not anticipated, taught, or even suggested by a field of available art, ( as is the case with the instant claims) then the same set of 'specific limitations' cannot plausibly be simultaneously argued as being 'well-understood, routine and conventional in the field." Id. This argument is unpersuasive because it improperly conflates the inquiry of patent eligibility under 35 U.S.C. § 101 with the separate and distinct inquiries of novelty and non-obviousness under 35 U.S.C. §§ 102 and 103. Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (Reyna, J., dissenting) ("The inventiveness inquiry of§ 101 should ... not be confused with the separate novelty inquiry of § 102 or the obviousness inquiry of§ 103."). 6 Appeal2017-001279 Application 13/554,049 Also, Appellants point to no specific element missing from the prior art that allegedly indicates the claims are directed to significantly more than an abstract idea. See App. Br. 7-10. The fact that the prior-art rejections were withdrawn may well, then, merely indicate that the Examiner determined the prior art did not reasonably teach or suggest the underlying abstract idea itself. However, a claim to an abstract idea is not rendered patentable even if it is "[g]roundbreaking, innovative, or even brilliant." See SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018). As our reviewing court has made clear, where, as here, "the advance lies entirely in the realm of abstract ideas," the claims to that advance are ineligible for patenting. See id. In the Reply Brief, Appellants do argue specific limitations: the instant claims do not merely "observe[] or identify[] the ineligible concept itself," but rather, the instant claims include actively "generating a strategy for marketing the at least one product or service based on (i) the utility value for the at least one product or service and (ii) an order of importance of the multiple features of the at least one product of service." (Emphasis added) Consequently, per the standard delineated by the Federal Circuit, the instant claims are not "directed to" a patent-ineligible concept because the claims encompass significantly (and specifically) more than merely "observing or identifying the ineligible concept itself." Reply Br. 3. This argument is unpersuasive because, as noted above, the Examiner does not determine that the abstract idea only entails the data collecting, or "observing" in Appellants' parlance. Rather, the Examiner additionally determines that actively generating a strategy for marketing also constitutes an abstract idea. Ans. 4. Appellants do not provide persuasive argument or evidence as to why the Examiner erred in determining (id.) that generating a 7 Appeal2017-001279 Application 13/554,049 marketing strategy for a product or a service using customer feedback was a long known fundamental economic/commercial practice. See Reply Br. Appellants instead merely argue that "the Examiner's characterization of the independent claims as being generally directed to 'the concept of generating/deriving a marketing strategy [for] a product or a service' is in error, and that the specific requirements of the independent claims include a significant number of substantive and novel active steps and limitations." Id. at 4. But again, Appellants do not allege what particular "substantive and novel active steps and limitations" of the claims are not reasonably interpreted as constituting abstract ideas. Appellants also argue that the instant claims recite significantly more than an abstract idea because the claims do not "preempt all ways of [carrying out the abstract idea] on the Internet." Id. at 8. This argument is unpersuasive. To be sure, the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." See Alice Corp., 134 S. Ct. at 2354. However, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. As our reviewing court has explained: "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[ fJor this reason, questions on preemption are inherent in and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. 8 Appeal2017-001279 Application 13/554,049 CONCLUSION Appellants' arguments do not establish that the Examiner erred in concluding that the claims are directed to patent-ineligible subject matter. DECISION The Examiner's decision rejecting claims 1, 7, 9, 10, 12, 18, 20, 21, and 23 under 35 U.S.C. § 101 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation