Ex Parte Krishnapuram et al

Patent Trial and Appeal Board

Jul 23, 2018

12916665 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/916,665 11/01/2010
124677 7590 07/25/2018
Russell Ng PLLC (IBM AUS)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
Raghuram Krishnapuram
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.
IN9201001 l 3US 1 1034
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAGHURAM KRISHNAPURAM, SUMIT NEGI,
DEEP AK S. PADMANABHAN, and
KARTHIK VISWESWARIAH
Appeal2017-001297
Application 12/916,665
Technology Center 3600
Before JEREMY J. CURCURI, HUNG H. BUI, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4--7, 10-13, and 16-24, which are all of the
pending claims. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corporation. (App. Br. 2.)
2 Appellants have canceled claims 2, 3, 8, 9, 14, and 15. (App. Br. 30, 32,
34 (Claims App'x).)
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Application 12/916,665
STATEMENT OF THE CASE
Introduction
According to Appellants, "[ t ]he present invention relates in general to
data processing, and in particular, to optimized customer targeting based on
template CRM offers." (Spec. ,r 1.) Appellants' Specification further states:
In some embodiments, a Customer Relationship Management
(CRM) offer template is established in data storage and includes
at least one variable field and having at least one offer attribute.
For each of a plurality of customer groups, a data processing
system calculates an expected benefit to be obtained by sending
an instantiated CRM offer to a customer based upon historical
responses, offer cost, and legal values of the at least one variable
field. The data processing system outputs a CRM offer instance
and target list of customers that maximizes the expected benefit.
(Id., ,I 3.)
Exemplary Claim
Claims 1, 7, 13, 19, 21, and 23 are independent. Claims 1 and 19,
reproduced below with the disputed limitations italicized, are exemplary of
the claimed subject matter:
1. A method of data processing useful in marketing via an
electronic communication network, the method comprising:
establishing in data storage a Customer Relationship
Management (CRM) offer template from which multiple
different CRM offers can be instantiated, wherein the CRM offer
template includes a fixed element specifying a first term common
to all CRM offers instantiated from the CRM offer template, a
first variable field having an associated plurality of alternative
legal values of a second term of CRM offers instantiated from
the CRM offer template, and a second variable field having an
associated plurality of alternative legal values of a third term of
CRM offers instantiated from the CRM offer template, wherein
CRM offers instantiated from the CRM offer template that target
different customer groups employ different ones of the plurality
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of alternative legal values and CRM offers instantiated from the
CRM offer template that target different customers within a same
customer group all employ common ones of the plurality of
alternative legal values for the first variable field and for the
second variable field, respectively;
for each of a plurality of customer groups, a data
processing system coupled to the data storage calculating an
expected benefit to be obtained by sending an CRM offer instance
instantiated from the CRM offer template to customers based
upon historical responses, offer cost, and the plurality of
alternative legal values of the first and second variable fields,
wherein the calculating includes adjusting the benefit obtained
by a positive response based upon the historical responses and
the adjusting includes applying a function to combine
probabilities associated with the first and second variable fields;
and
in response to the calculating, the data processing system
instantiating and outputting, via an electronic communication
network, a CRM offer instance including legal values for the first
and second variable fields identified by the calculating as
maximizing the expected benefit for a particular one of the
customer groups.
19. A method of data processing useful in marketing via an
electronic communication network, the method comprising:
establishing in data storage a Customer Relationship
Management (CRM) offer template from which multiple
different CRM offers can be instantiated, wherein the CRM offer
template includes a fixed element specifying a first term common
to all CRM offers instantiated from the CRM offer template, a
first variable field having an associated plurality of alternative
legal values of a second term of CRM offers instantiated from
the CRM offer template, and a second variable field having an
associated plurality of alternative legal values of a third term of
CRM offers instantiated from the CRM offer template, wherein
CRM offers instantiated from the CRM offer template that target
different customer groups employ different ones of the plurality
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of alternative legal values and CRM offers instantiated from the
CRM offer template that target different customers within a same
customer group all employ common ones of the plurality of
alternative legal values for the first variable field and for the
second variable field, respectively;
for each of a plurality of customer groups, a data
processing system coupled to the data storage calculating an
expected benefit to be obtained by sending an CRM offer
instance instantiated from the CRM offer template to customers
based upon historical responses, offer cost, and the plurality of
alternative legal values of the first and second variable fields,
wherein:
calculating the expected benefit includes
calculating the maximum expected benefit as P(G,O[vi])
* B(O[vi])- C(O[vi]); and
vi is one of the plurality of alternative legal values
of the variable field selected to yield the maximum
expected benefit, C(O[vi]) is a cost of delivering an
instance of the CRM offer O[vi], B(O[vi]) is the benefit
attained when CRM offer O[vi] is accepted by an
individual customer, and P(G,O[vi]) is the fraction of
positive historical responses of customers in customer
group G to CRM offer O[vi]; and
in response to the calculating, the data processing system
instantiating and outputting, via an electronic communication
network, a CRM offer instance including legal values for the first
and second variable fields identified by the calculating as
maximizing the expected benefit for a particular one of the
customer groups.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boyd et al. ("Boyd")
Thomas et al. ("Thomas")
US 7,072,848 B2
US 7,523,167 B2
4
July 4, 2006
Apr. 21, 2009
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Application 12/916,665
Rejections
(1) Claims 1, 4--7, 10-13, and 16-24 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter (abstract
idea). (Final Act. 2-3, 10-12.)
(2) Claims 1, 4--7, 10-13, and 16-24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Thomas and Boyd. (Final Act.
3-10, 12-13.)
Issues
( 1) Whether the Examiner erred in rejecting claims 1, 4--7, 10-13,
and 16-24 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
(2) Whether the Examiner erred in finding the combination of
Thomas and Boyd teaches or suggests
for each of a plurality of customer groups, a data processing
system coupled to the data storage calculating an expected
benefit to be obtained by sending an CRM offer instance
instantiated from the CRM offer template to customers based
upon historical responses, offer cost, and the plurality of
alternative legal values of the first and second variable fields,
wherein the calculating includes adjusting the benefit obtained
by a positive response based upon the historical responses and
the adjusting includes applying a function to combine
probabilities associated with the first and second variable
fields[,]
as recited in independent claim 1 and commensurately recited in
independent claims 7 and 13 .
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(3) Whether the Examiner erred in finding the combination of
Thomas and Boyd teaches or suggests
calculating the expected benefit includes calculating the
maximum expected benefit as P(G,O[ vi]) * B(O[ vi])- C(O[ vi]);
and
vi is one of the plurality of alternative legal values of the
variable field selected to yield the maximum expected benefit,
C(O[ vi]) is a cost of delivering an instance of the CRM offer
O[ vi], B(O[ vi]) is the benefit attained when CRM offer O[ vi] is
accepted by an individual customer, and P(G,O[ vi]) is the
fraction of positive historical responses of customers in customer
group G to CRM offer O[ vi][,]
as recited in independent claims 19, 21, and 23.
ANALYSIS
A. Section 101 Rejection
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber, 67 4
F.3d 1315, 1333 (Fed. Cir. 2012). The Supreme Court has set forth an
analytical two-step "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, 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. Alice, 134 S. Ct. at 2355. If not,
the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed.
Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. 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
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concept" sufficient to "'transform the nature of the claim' into a patent-
eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation
omitted).
Noting that "the two stages involve overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court 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
Enfzsh, 822 F.3d at 1336.
In rejecting claims 1, 4--7, 10-13, and 16-24 under§ 101, the
Examiner concludes the claims "are directed to the abstract idea of selecting
and providing a targeted offer to a customer[,] which is a fundamental
economic practice." (Final Act. 2.) The Examiner also finds:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: either mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure that
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serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry. Viewed as a whole, these
additional claim element( s) do not provide meaningful
limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim( s) amounts to
significantly more than the abstract idea itself.
(Id. at 2-3.)
Appellants argue all claims together. (App. Br. 13.) We select claim
1 as representative. Claims 4--7, 10-13, and 16-24 stand or fall with claim
I. See 37 C.F.R. § 4I.37(c)(l)(iv).
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellants argue the Examiner has failed to consider each claim
individually and as a whole. (App. Br. 12-14.) In particular, Appellants
argue the Examiner overly summarizes the claims by characterizing them as
directed to "selecting and providing a targeted offer to a customer," noting
that "such a phrase appears nowhere in exemplary Claim 1." (Id. at 15.) We
are not persuaded of error.
The Examiner explicitly points out that each claim was considered as
a whole (Final Act. 2; see also Ans. 14--21), and the Examiner's overall
analysis, provided in greater detail in the Examiner's Answer ( Ans. 16-21 ),
bears this out. The Examiner's characterizing the claims, as required by
Alice, by using phrasing not explicitly stated in the claims does not render
the Examiner's analysis improper. To the contrary, the Examiner's
characterization follows the first step of the Alice inquiry by looking at the
"focus" of the claims, an analysis that frequently results in distilling verbose
claims into simplified phrasing. For example, in Alice, the claims were
characterized by the Court as being directed to the abstract idea of
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"intermediated settlement," even though that simplified phrase appeared
nowhere in the claims. See Alice, 134 S. Ct. at 2355 & n.2. In addition, the
Examiner's characterizing the claims as directed to "selecting and providing
a targeted offer to a customer" (Final Act. 2, 10) is consistent with
Appellants' statement in the Specification that the "present invention relates
in general to data processing, and in particular, to optimized customer
targeting based on template CRM offers." (Spec. ,r 1.)
Appellants next argue claim 1 is "directed not to an abstract idea, but
to a specific method of data processing by which a data processing system
optimizes the values of fields to maximize an overall benefit." (App. Br. 15
(emphasis added).) In particular, Appellants insist the claimed calculation
"is not some generic process of calculating a 'benefit' in the abstract, but
instead a specific technique of calculating the benefit based upon specific
data, including 'historical responses, offer cost, and the plurality of
alternative legal values of the first and second variable fields."' (J d.
(emphasis added).) We are not persuaded of error.
The specificity of the technique claimed by Appellants does not, of
itself, remove Appellants' claims from the realm of abstract ideas. Even
limiting a claimed abstract idea to a particular content or context does not
render the claims patent eligible. For example, as many cases make clear,
even if a process of collecting and analyzing information is "limited to
particular content" or a particular "source," that limitation does not remove
the collection and analysis from the realm of the abstract. Electric Power,
830 F.3d at 1353, 1355 (citing cases). Nor is a claim to an abstract idea
rendered patentable because it is "[g]roundbreaking, innovative, or even
brilliant." See SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1018
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(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.
Thus, regardless of the specificity ( or alleged novelty) of Appellants'
claims, we agree with the Examiner's determination that the claims here are
directed to abstract ideas. In particular, as the Examiner determines, and we
agree, Appellants' claims are directed to the fundamental economic practice
of targeting information (e.g., advertisements) to consumers. (Final Act. 2,
10; Ans. 14, 16.) As such, Appellants' claims are similar to claims that have
been determined by courts to be directed to abstract ideas. See Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1369-70 (Fed. Cir.
2015) (finding the practice of tailoring advertising to individual customers to
be a "fundamental ... practice long prevalent in our system").
Also unpersuasive of Examiner error is Appellants' reliance on the
claims' recitation of numerous limitations to create the targeted
advertisements. (E.g., App. Br. 4.) As the Examiner determines, and we
agree, the various limitations recite only abstract concepts. In particular, the
Examiner determines the claims include limitations that amount to using a
mathematical formula or algorithm to obtain a result. (Ans. 18 (referring to
the formula recited in independent claims 19, 21, and 23).) Such subject
matter is not patent eligible. See Parker v. Flook, 437 U.S. 584, 595 (1978)
(noting that "'if a claim is directed essentially to a method of calculating,
using a mathematical formula, even if the solution is for a specific purpose,
the claimed method is nonstatutory,"' quoting In re Richman, 563 F.2d
1026, 1030 (CCPA 1977)). The Examiner further determines the claims
include limitations that amount to using categories to organize, store, and
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transmit information, such as, for example, establishing a template and
storing and collecting data to be included in the template. (Ans. 17-18.) In
that regard, the claimed "establishing in data storage a Customer
Relationship Management (CRM) offer template" is similar to claims
addressed in Wells Fargo, in which our reviewing court held that the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the recognized data, are abstract. See Content Extraction
and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343
(Fed. Cir. 2014) ( addressing claims including "interactive template creation
mode"), cert. denied, 136 S. Ct. 119 (2015).
Thus, as the Examiner determines, and we agree, the claims'
recitation of multiple abstract concepts, combined to carry out the overall
abstract idea of creating advertisements targeted to particular customers,
does not render them patent-eligible. As our reviewing court has held,
combining several abstract ideas does not render the combination any less
abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ...
does not render the claim non-abstract."); see also FairWarning IP, LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-
ineligible claims were directed to a combination of abstract ideas).
Finally, we are not persuaded of Examiner error by Appellants'
argument that the "[ c ]laim 1 does not attempt to preempt all possible uses of
the claimed method .... " (App. Br. 16.) We agree 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." Alice, 134 S. Ct. at 2354. But characterizing preemption as a
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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, "[ t ]he 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, 134 S. Ct. at 2354). And although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.
Moreover, "[ w ]here a patent's claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework ... , preemption
concerns are fully addressed and made moot." Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701 (2015)("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the ecommerce
setting do not make them any less abstract.").
Thus, at step one of the analysis, we are not persuaded that the
Examiner erred in determining that the claims are directed to a patent-
ineligible subject matter-that is, to an abstract idea.
Step Two: Whether Additional Elements Transform The Idea Into
Patent-Eligible Subject Matter
Having found that the claims are directed to one or more abstract
ideas, the Examiner also finds that the additional elements or combinations
of elements "do not add significantly more to the abstract idea of selecting
and providing a targeted offer to a customer." (Final Act. 12.) In particular,
with regard to representative claim 1, the Examiner finds the claim "merely
instructs the practitioner to implement the concept of selecting and providing
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a targeted offer to a customer with routine, conventional activity specified at
a high level of generality in a particular technological environment." (Id. at
11-12.) The Examiner further finds the claims "are similar to the
[ Ultramercial], and [Planet Bingo] cases in which the claims merely
describe management, organization, and/ or performance of a fundamental
economic practice using a general purpose computer in communication with
a network." (Id.) 3
We agree. Representative claim 1 recites storing data ("establishing
in data storage a Customer Relationship Management (CRM) offer
template"), manipulating data mathematically in a "data processing system,"
and outputting data "via an electronic communication network." (App. Br.
30 (Claims App'x).) As the Examiner finds, and we agree, the components
recited in these steps are general purpose computer components. (Ans. 19.)
This finding is consistent with Appellants' Specification, which describes
these components in generic terms. (See Spec. ,r 11 ("data storage 120");
,r 16 ("data processing system 11 O"); ,r 9 ("networks 104").) As the
Supreme Court has explained, "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention." Alice Corp., 134 S. Ct. at 2358. Thus, automating the recited
generation of targeted advertisements ( even based on the selection of
particular data and analysis of that data according to particular rules),
through the use of generic computing equipment, does not transform
Appellants' claims into patent-eligible subject matter. (See also Ans. 18-
21.)
3 See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); Planet
Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014).
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Appellants argue the Examiner's findings are in error because the
claims recite "unconventional steps that confine the claim to a particular
useful application." (App. Br. 17.) This argument is not persuasive of error.
Not only do Appellants fail to provide support for the assertion that the
claimed steps are "unconventional," but, as noted above, even
unconventional abstract ideas are not patent-eligible. See SAP, 890 F.3d at
1018. And to the extent Appellants maintain that the limitations of the
claims necessarily amount to "significantly more" than an abstract idea
because the claimed method is allegedly patentable over the prior art ( a point
addressed in the next section), Appellants misapprehend the controlling
precedent. Although the second step in the Alice/Mayo framework is termed
a search for an "inventive concept," "the concept of inventiveness [ under §
101] is distinct from that of novelty" and "[ t ]he inventiveness inquiry of
§ 101 should therefore not be confused with the separate novelty inquiry of
§ 102 or the obviousness inquiry of§ 103." See Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1312 (Fed. Cir. 2016). Instead, the
analysis is based on a search for "'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."' Alice, 134 S. Ct. at
2355. A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304. For similar
reasons, we are also not persuaded of error by Appellants' argument that the
Examiner's rejection is undermined by the Examiner's failure to "simply
take official notice that the claimed elements were well known in the art."
(App. Br. 18.)
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Appellants also argue the Examiner's rejection is contrary to the
Federal Circuit's decision in BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). (Reply Br. 5-6.) In
particular, Appellants assert BASCOM stands for the proposition that claims
may recite use of known conventional pieces ( such as known computer
components) and still qualify as patent eligible subject matter if they are
arranged in a non-conventional and non-generic manner. (Id. at 6-7)
Appellants' argument is not persuasive of Examiner error.
Appellants' claims stand rejected because they are directed to abstract ideas,
however allegedly novel or detailed, and, accordingly, the fact that the ideas
are implemented in software using generic computer components merely as
tools only further underscores the ineligibility of those claims. As the
Federal Circuit recently explained in SAP America: "In accordance with the
Supreme Court's conclusion in Alice, ... this court has ruled many times
that 'such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea."' SAP America, 890 F .3d at 1023 ( quoting
Electric Power, 830 F.3d at 1355; citing Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055-56 (Fed. Cir. 2017); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1374--75 (Fed.
Cir. 2017); Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d
905, 909 (Fed. Cir. 2017)). The court in SAP America further observed:
Under those decisions, an invocation of such computers and
networks is not enough to establish the required "inventive
concept" in application. Indeed, we think it fair to say that an
invocation of already-available computers that are not
themselves plausibly asserted to be an advance, for use in
carrying out improved mathematical calculations, amounts to a
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recitation of what 1s "well-understood, routine, [and]
conventional."
SAP America, 890 F.3d at 1024 (quoting Mayo, 566 U.S. at 73).
In that regard, the claims here are critically different from the claims
at issue in BASCOM, in which the claims were deemed patent-eligible
"because they were directed to improvements in the way computers and
networks carry out their basic functions." SAP America, 890 F.3d at 1022
(citing BASCOM, 827 F.3d at 1348--49). In particular, in BASCOM, an
inventive concept was found in the ordered combination of limitations
providing for "the installation of a filtering tool at a specific location, remote
from the end users, with customizable filtering features specific to each end
user." BASCOM, 827 F.3d at 1350. In contrast, Appellants' claims are
properly characterized as ones in which generic computer technology is used
merely as a tool to implement the claimed abstract ideas. Indeed, Appellants
make no attempt to argue that their claims represent an improvement to
computer functionality, nor do Appellants assert that the underlying
computer technology operates in an unconventional manner in carrying out
the claimed invention.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting the pending claims, which are all argued collectively, as directed to
patent-ineligible subject matter under 35 U.S.C. § 101.
B. Section 103 (a) Rejections
1. Claims 1, 4-7, 10-13, 16-18, 20, 22, and 24
The Examiner finds Thomas teaches most of the limitations of
representative claim 1 including "determining the dynamic component of the
offer" (Final Act. 3-5), but the Examiner further finds
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[Thomas] does not specifically state that the determining is done
by calculating an expected benefit to be obtained by sending an
CRM offer instance instantiated from the CRM offer template to
customers based upon historical responses, offer cost, and the
plurality of legal values of the first and second variable field,
wherein the calculating includes adjusting the benefit obtained
by a positive response based upon the historical responses and
the adjusting includes applying a function to combine
probabilities associated with the first and second variable fields.
(Id. at 5.) With regard to that limitation, the Examiner relies on Boyd for
teaching that "it is known to determine the dynamic components by
calculating an expected benefit to be obtained[,]" as recited in claim 1. 4 (Id.
at 6 (citing Boyd 4:8--46, 5:4--16, 5:45-54, 6:26-56, 14:45-16:24, 17:1-29);
see also Ans. 26-28 (citing 4:8--46, 4:64--5:3, 5:34--44, 5:45-54, 13:40-52,
6:64--7:23, 13:1-14:19).) We agree the Examiner's findings are supported
by the cited teachings, and we adopt the Examiner's findings as our own.
Appellants argue the Examiner's reliance on Boyd is in error because
the passages of Boyd cited by the Examiner "do not disclose: (1) that
probabilities are associated with first and second variable fields of a CRM
offer template or (2) that adjusting the benefit obtained by a positive
response includes 'applying a function to combine probabilities associated
with the first and second variable fields' as claimed." (App. Br. 25.) We are
not persuaded of error. Read in their entirety, Appellants' arguments
4 Appellants collectively argue the rejection of claims 1, 4--7, 10-13, 16-18,
20, 22, and 24 with regard to the Examiner's obviousness rejections of claim
1 under 35 U.S.C. § 103(a). (App. Br. 18-26.) Separate patentability is not
argued for independent claims 7 or 13 or dependent claims 4--6, 10-12, 16-
18, 20, 22, or 24. (Id.) Therefore, based on Appellants' arguments, we
decide the appeal of claims 1, 4--7, 10-13, 16-18, 20, 22, and 24 based on
claim 1 alone. See 37 C.F.R. § 4I.37(c)(l)(iv).
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amount to no more than large block quotes of the Examiner's cited portions
Boyd (id. at 19--25 (quoting Boyd 4:8--46, 5:4--16, 5:45-54, 6:26-56, 14:45-
16:24, 17: 1-29) ), followed by a conclusory statement that those passages
from Boyd do not disclose or render obvious the disputed limitation (Id. at
25; see also Reply Br. 7-12 (quoting Boyd 6:64--7:23, 13:1-14:19)). Such
conclusory attorney assertions have little or no value in identifying the
Examiner's alleged error, and, consequently, have little persuasive value.
See 3 7 C.F .R. § 41.3 7 ( c )(iv) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
And contrary to Appellants' protestations that "it is impossible to 'prove a
negative"' (App. Br. 26), Appellants fail to persuasively rebut the
Examiner's findings-which, as noted above, we agree are supported by the
cited teachings.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(s) rejection of claim 1 or of claims 4--7, 10-13,
16-18, 20, 22, and 24, argued collectively with claim 1. We, therefore,
sustain the rejection of those claims.
2. Claims 19, 21, and 23
In rejecting claim 19, 5 the Examiner applies similar reasoning as
applied to claim 1. (Final Act. 7-10.) With regard to the formula recited in
5 Appellants collectively argue the rejection of claims 19, 21, and 23 with
regard to the Examiner's obviousness rejections of claim 19 under 35 U.S.C.
§ 103(a). (App. Br. 26-29.) Separate patentability is not argued for
independent claims 21 or 23. (Id.) Therefore, based on Appellants'
arguments, we decide the appeal of claims 19, 21, and 23 based on claim 19
alone. See 37 C.F.R. § 4I.37(c)(l)(iv).
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claim 19, the Examiner states that it is interpreted "to be the expected
number of sales of a promotional item [P(G, O[ vi])*B( o[ vi])] minus the cost
of delivering the offer." (Id. at 10.) Appellants argue the Examiner's
interpretation of the formula is in error, stating: "[ A ]s explicitly defined in
the claim itself, 'P(G,O[vi]) is the fraction of positive historical responses of
customers in customer group G to CRM offer O[ vi],' and B(O[ vi]), the term
multiplied by P(G,O[ vi]), is 'the benefit attained when CRM offer O[ vi] is
accepted by an individual customer."' (App. Br. 28.)
We are persuaded of error. The Examiner's characterization of claim
19 as merely "claiming calculating the maximum expected benefit by taking
the price of the product times the expected sales and subtracting out the sales
cost and thus arriving at the expected profit (maximum expected benefit)"
(see Ans. 28 (emphasis added)) is not supported by the language of the
claims. As Appellants note, claim 19 requires multiplying the "fraction of
historical positive responses of customers in customer group G to CRM offer
O[ vi]" by "the benefit attained when CRM offer O[ vi] is accepted by an
individual customer." (App. Br. 36 (Claims App'x).) The Examiner does
not adequately explain how the claimed "benefit attained" when the
particular CRM offer is "accepted by an individual customer," as recited in
claim 19, reads on merely the price of the product, as purportedly taught by
Boyd.
Because the Examiner's findings regarding claim 19 are premised on
an untenable construction of the claims, we do not sustain the Examiner's 35
U.S.C. § 103(a) rejection of claim 19, nor do we sustain the rejection claims
21 and 23, which contain the same limitation and are rejected on the same
basis.
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DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 4--7, 10-13,
and 16-24 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 1, 4--7, 10-13,
16-18, 20, 22, and 24 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 19, 21, and 23
is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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