Ex Parte Johnson et al

Patent Trial and Appeal Board

Jan 16, 2018

13191583 (P.T.A.B. Jan. 16, 2018)

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.
13/191,583 07/27/2011 Bradley Johnson END920135006US1 4388
30449 7590 01/18/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY JOHNSON, JOHN D'AURIA,
and JASON GULLEDGE
Appeal 2016-0046231
Application 13/191,5 832
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, 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
rejection of claims 1, 2, and 21—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
October 5, 2015) and Reply Brief (“Reply Br.,” filed March 29, 2016), and
the Examiner’s Answer (“Ans.,” mailed February 2, 2016) and Non-Final
Office Action (“Non-Final Act.,” mailed May 6, 2015).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal 2016-004623
Application 13/191,583
CLAIMED INVENTION
Appellants’ claimed invention “relates to a system and method for
customer discount management” (Spec. 11).
Claim 1, reproduced below, is the sole independent claim, and
representative of the claimed subject matter:
1. A computer system comprising: at least one server
computer, wherein the at least one server computer includes at
least one program stored thereon, said at least one program being
capable of performing the following steps:
displaying a first web page in a web-based interface linked
to a web portal in an Internet, to an Internet visitor currently
logged into the web portal by a web browser, wherein the
displayed first web page comprises: (i) a list of servers providing
respectively associated Internet-based services currently
available to the Internet visitor from an Internet service provider
that provides the servers and the respectively associated Internet-
based services to the Internet visitor via the web-based interface
and (ii) a clickable cancellation link for each listed server, and
wherein the web-based interface is on a computer screen surface;
receiving a first click by the Internet visitor in the first web
page, on a first cancellation link for a first server selected from
the list of servers on the web-based user interface, wherein the
received first click communicates that a first Internet-based
service associated with the selected first server is being cancelled
by the Internet visitor;
in response to said receiving the first click on the first
cancellation link, automatically displaying to the Internet visitor,
on the web-based user interface, a second web page that includes
a service cancel link and a list of selectable reasons for cancelling
the first Internet-based service associated with the selected first
server;
after said displaying the second web page, receiving a
second click on the service cancel link, by the Internet visitor in
the second web page, and further receiving one or more reasons
for cancelling the first Internet-based service associated with the
selected first server, said one or more reasons having been
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selected by the Internet visitor from the list of selectable reasons
on the second web page;
in response to said receiving the second click on the
service cancel link: (i) automatically generating a service
cancellation request for cancelling the first Internet-based service
associated with the selected first server, (ii) automatically
creating a cancellation request record in a table of a cancellation
request database of the Internet service provider, wherein the
cancellation request record comprises a status of the service
cancellation request, and (iii) automatically generating a ticket
for tracking the service cancellation request;
storing a ticket record in a table of a ticket database of the
Internet service provider, wherein the ticket record includes
ticket information on content of the ticket and further includes a
status of the ticket, and wherein the cancellation request record
includes a foreign key that points to the ticket;
generating a cross reference lookup table that links the
ticket to the first Internet-based service associated with the
selected first server, wherein a service database of the Internet
service provider comprises information specific to the first
Internet-based service associated with the selected first server;
linking the first Internet-based service associated with the
selected first server to the cancellation request record;
creating a cancellation request item record in a table of a
cancellation request items database of the Internet service
provider, wherein the cancellation request item record comprises
a status of a billing item associated with the first Internet-based
service associated with the selected first server and further
comprises a requested cancellation date for cancelling the first
Internet-based service associated with the selected first server,
and wherein the billing item includes billing information
pertaining to the first Internet-based service associated with the
selected first server, wherein the cancellation request item record
comprises a first foreign key and a second foreign key, wherein
the first foreign key points to the cancellation request record,
wherein the second foreign key points to the billing item,
wherein records in the cancellation request item database are
used to link to records in a billing item database of the Internet
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service provider, and wherein the records in the billing item
database comprise a billing item record;
moving the ticket to a service queue;
after said moving the ticket to the service queue,
displaying to the Internet visitor, on the web-based user interface,
a third web page that presents to the Internet visitor a discount
offer of a discount amount for the first Internet-based service
associated with the selected first server;
after said displaying the third web page, receiving a third
click by the Internet visitor in the third web page denoting the
Internet visitor’s acceptance of the discount offer and in
response, displaying in another web-based interface on another
computer screen surface, to a customer service representative
assigned to the ticket, information pertaining to the discount
amount accepted by the Internet visitor;
after said displaying, in the other web-based interface, the
information pertaining to the discount amount, receiving an
entry, in the other web-based interface from the customer service
representative, data comprising the discount amount and
receiving a click by the customer service representative of a
checkbox in the other web-based interface which triggers
updating the ticket with the discount amount and generating an
invoice, reflecting the discount amount, for the Internet-based
service; and
after said updating the ticket with the discount amount and
said generating the invoice, closing the ticket.
REJECTION
Claims 1, 2, and 21—24 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
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
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to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’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 these 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,
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 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. 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, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
finds that the claims are directed to “managing customer discounts following
the receiving of a cancellation request by a customer,” i.e., to a fundamental
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economic practice and, therefore, to an abstract idea; and that the claims do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because “the generically recited computer
elements . . . would be routine in [any] computer implementation”
(Non-Final Act. 2).
Appellants argue that the § 101 rejection cannot be sustained because
the Examiner has presented no supporting evidence that the claims are
directed to a patent-ineligible abstract idea (App. Br. 9-11). Appellants,
thus, ostensibly maintain that because there is no evidentiary support of
record for the Examiner’s findings, the Examiner has failed to establish a
prima facie case of patent-ineligibility (id.).
We are aware of no controlling authority that requires the Office to
provide factual evidence to support a finding that a claim is directed to an
abstract idea. Nor, contrary to Appellants’ suggestion (id.), did this Board
hold, in Ex parte Renald Poisson, Appeal 2012-011084 (PTAB February 27,
2015), that there is any such requirement. Instead, the Federal Circuit has
repeatedly noted 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 court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, all that is required of the Office is that it set forth the statutory basis of
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the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when the rejection is
so uninformative that it prevents the applicant from recognizing and seeking
to counter the grounds for rejection.”).
Appellants do not contend that the Examiner’s rejection under § 101
was not understood or that the Examiner’s rejection, otherwise, fails to
satisfy the notice requirements of § 132. Indeed, Appellants’ understanding
of the rejection is clearly manifested by their response as set forth in the
briefs.
Appellants next argue that the claims cannot be directed to a
fundamental economic practice (and, therefore, cannot be directed to an
abstract idea) because “managing cancellation of an Internet-based service
provided to an Internet visitor by an Internet service provider ... is a
relatively recent practice that has not been long prevalent in our system of
commerce” {id. at 11—12). But, Appellants cannot reasonably deny that
providing financial incentives, e.g., discounts, to retain existing customers
has been practiced as long as markets have been in operation. That the
claims relate to managing the cancellation of an Internet-based service
merely limits the use of the abstract idea to a particular technological
environment, which the Court made clear in Alice is insufficient to transform
an otherwise patent-ineligible abstract idea into patent-eligible subject
matter. See Alice Corp., 134 S. Ct. at 2358.
Contrary to Appellants’ assertions, we also find no parallel between
the present claims and those in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Although Appellants ostensibly argue
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otherwise (App. Br. 13), the court did not conclude in DDR Holdings that
the claims were patent-eligible merely because the claims did not recite the
performance of a business practice known from the pre-Internet world along
with the requirement to perform it on the Internet. Instead, the Federal
Circuit held that the claims were directed to patent-eligible subject matter
because they claim a solution “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks,” and that the claimed invention did not simply use computers to
serve a conventional business purpose. DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d at 1257. Rather, there was a change to the routine,
conventional functioning of Internet hyperlink protocol. Id.
Appellants argue that, similar to DDR Holdings, the claimed invention
here addresses a problem (i.e., “how to manage a cancelled Internet-based
service provided to an Internet visitor by an Internet service provider”) that
specifically arises in the realm of computer networks (App. Br. 12—13). Yet,
managing a cancelled service is not a problem particular to computer
networks and/or the Internet. Offering financial incentives, e.g., discounts,
to entice a customer, who has decided to terminate a business relationship
with a service provider, i.e., cancel a service, to instead maintain the
business relationship, existed before and still exists outside of computer
technology and computer networks.
Rather than addressing a technical problem, the claimed method and
system are intended to address the business problem of customer retention
(see Spec. 12 (explaining that customers comparison-shop for lower prices
and are often willing to switch companies to get the cost savings;
accordingly, it becomes vital that a service provider company manage
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customer discounts in an organized and strategic manner)). And, unlike the
situation in DDR Holdings, there is no indication that the claimed “server
computer” is used other than in its normal, expected, and routine manner to
perform the abstract business practice of managing customer discounts
following receipt of a cancellation request, which, as the court in DDR
Holdings explained, is not patent-eligible. DDR Holdings, 773 F.3d at 1256
(“[T]hese claims [of prior cases] in substance were directed to nothing more
than the performance of an abstract business practice on the Internet or using
a conventional computer. Such claims are not patent-eligible.”).
Turning to the second step of the Mayo!Alice framework, Appellants
assert that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because they recite significantly more than the
abstract idea (App. Br. 13). Appellants present three alternative arguments
to support this position {id. at 13—25).
Addressing each of these arguments in turn, Appellants first argue that
the claims “amount to an inventive concept for resolving a particular
Internet-centric problem” {id. at 13—17; see also Reply Br. 9-11). Again,
referencing the decision in DDR Holdings, Appellants maintain that, like the
claims in DDR Holdings, the pending claims address the problem of
managing cancellation of an Internet-based service provided to an Internet
visitor by an Internet service provider that, “if adhering to the routine,
conventional functioning of clicking on options presented in a web page,
would complete processing of the cancellation which would end with
terminating the Internet visitor’s use of the Internet-based service” (App. Br.
at 14—15). Yet, not only is managing cancellation of a service not a problem
particular to computer networks and/or the Internet, but there also is no
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evidence of record to indicate that the “routine, conventional functioning of
clicking on options” would necessarily result in complete processing of the
cancellation, i.e., that the claimed invention, like the claims in DDR
Holdings, effects a change in the routine, conventional functioning of
Internet hyperlink protocol as opposed to a change in the routine functioning
of a service cancellation process so that instead of the user’s Internet-based
service being terminated after the user clicks “cancel,” another webpage is
presented to the user with a discount offer for the Internet-based service.
Rather than paralleling the claims in DDR Holdings, the pending
claims, in our view, are akin to those that the court, in Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), found patent-ineligible. There,
although the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was previously unknown
and never employed on the Internet before,” 772 F.3d at 714, the court found
that this alone could not render its claims patent-eligible where the claims
merely recited the abstract idea of “offering media content in exchange for
viewing an advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.” Id. at 715—16.
Similarly here, there is no indication that the invocation of the Internet
adds an inventive concept sufficient to transform Appellants’ otherwise
patent-ineligible abstract idea into patent-eligible subject matter. We find,
as did the Examiner, that claim 1 is directed to the abstract idea of
“managing customer discounts following the [receipt] of a cancellation
request by a customer.” As described above, narrowing that abstract idea to
Internet-based services merely limits the use of the abstract idea to a
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particular technological environment, which is not enough for patent-
eligibility. See Alice Corp., 134 S. Ct. at 2358.
Appellants further argue that the claims are patent-eligible because
they do not preempt “significant inventive activity” in the field of managing
cancellation of an Internet-based service (App. Br. 17—21; see also Reply Br.
11—14). That argument is similarly unpersuasive.
There is no dispute that the Supreme Court has described “the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption.” Alice Corp., 134 S. Ct. at 2354. But
characterizing pre-emption as a driving concern for patent-eligibility is not
the same as characterizing pre-emption as the sole test for patent-eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or 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, 134 S. Ct. at 2354). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
Finally, Appellants argue that claim 1 recites specific limitations that
quality as “significantly more” because these limitations are not well-
known, routine, and conventional in the field of managing cancellation of an
Internet-based service provided to an Internet visitor by an Internet service
provider (App. Br. 22—25). But, aside from quoting the claim language, in
its entirety, Appellants offer no persuasive argument or technical reasoning
to support their position.
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We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1,2, and 21—24 under 35U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1, 2, and 21—24 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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