Ex Parte L et al

Patent Trials and Appeals Board

Feb 25, 2019

13481407 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/481,407 05/25/2012
826 7590 02/27/2019
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
GASTON L'HUILLIER
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.
058407 /426788 4421
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GASTON L'HUILLER, EVAN MACMILLAN, FRANCISCO
LARRAIN, RICARDO ZILLERUELO, and SEBASTIAN KREFT
Appeal2017-007532
Application 13/481,407 1
Technology Center 3600
Before ERIC S. FRAHM, CATHERINE SHIANG, and
JOHN D. HAMANN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-10, 122-22, 24--30, and 32-37, which are all the claims
pending and rejected in the application. We have jurisdiction under 35
U.S.C. § 6(b ).
We reverse.
1 Appellants identify Groupon, Inc., as the real party in interest. App. Br. 2.
2 Because Appellants confirm claim 11 is cancelled (App. Br. 34), their
statement about pending claim 11 (App. Br. 9) is incorrect.
Appeal2017-007532
Application 13/481,407
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention "relates to how
to efficiently and effectively to identify early adopters and potential
influencers for merchants." Spec. ,r 2. Claim 1 is exemplary:
1. A method comprising:
receiving a set of transactional data associated with a plurality of
merchants and a plurality of customers, the set of the transactional data
comprising a plurality of ordered lists of elements, each ordered list of
elements defining a selected transaction of a plurality of transactions, the
ordered list of elements comprising a customer, a merchant and a timestamp,
receiving social data associated with the plurality of customers via an
application programming interface;
for each customer of the plurality of customers, generating, via a
processor, one or more networks,
wherein generation of each network of the one or more networks is
performed by:
( 1) determining transaction data for a selected customer of the
plurality of customers;
(2) determining one or more transaction merchants with whom the
selected customer has transacted based on the transaction data; and
(3) computing a set of additional customers, each of which having
subsequently transacted with the one or more transaction merchants with
whom the associated customer transacted with, wherein each network
compnses:
one or more merchant nodes, wherein the one or more merchant
nodes identify each of the one or more merchants with whom the
associated customer has transacted;
a plurality of customer nodes, each of the plurality of customer
nodes node identifying one or the set of additional customers;
one or more merchant-customer edges between at least one of
the one or more merchant nodes and at least one of the plurality of
customer nodes defined based on a first transaction occurring between
the merchant and the customer as indicated in the transactional data;
one or more customer-customer edges between two or more
customer nodes of the plurality of customer nodes defined based on
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Application 13/481,407
each of the two or more customer nodes being associated with at least
one transaction with a same particular merchant; and
a plurality of weight values each associated with at least one of
the merchant-customer edges or the one or more customer-customer
edges, wherein the plurality of weight values are derived based at least
in part on the social data;
generating, via the processor, a network ranking of a particular
customer node of the plurality of customer nodes based at least in part on a
centrality of the particular customer node within at least one of the one or
more networks, and wherein the centrality is determined at least in part
based on the plurality of weight values; and
utilizing the network ranking of the particular customer node to
determine whether to transmit a promotion to the selected customer,
wherein utilization of the network ranking of the particular customer
node to determine whether to transmit the promotion to the associated
customer comprises:
determining if the network ranking of the particular customer node
meets a predetermined threshold; and
in an instance in which the particular customer node satisfies the
predetermined threshold, transmitting the promotion.
Kumar et al.
("Kumar")
Elliott Jr. et al.
("Elliott")
Darr
Wen et al.
("Wen")
References and Rejections3
US 2011/0137994 Al
US 2009/0307049 Al
US 2007 /0226248 Al
US 2006/235810 Al
June 9, 2011
Dec. 10, 2009
Sept. 27, 2007
Oct. 19, 2006
3 Throughout this opinion, we refer to the (1) Final Rejection dated
February 22, 2016 ("Final Act."); (2) Appeal Brief dated November 22,
2016 ("App. Br."); (3) Examiner's Answer dated February 16, 2017
("Ans."); and ( 4) Reply Brief dated April 17, 2017 ("Reply Br.").
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Application 13/481,407
Teague et al.
("Teague")
Gross
US 2006/0212355 Al Sept. 21, 2006
US 2006/0010029 Al Jan. 12,2006
Claims 1-10, 12-22, 24--30, and 32-37 are rejected under 35 U.S.C.
§ 101 because they are directed to patent-ineligible subject matter. Final
Act. 3-9. 4
Claims 1, 6-9, 12, 13, 18-21, 24, 25-29, and 32 are rejected under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Kumar, Darr, and
Gross. Final Act. 9-35.
Claims 2-5 and 14--17 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Kumar, Darr, Gross, and Teague. Final Act. 35-
44.
Claims 10, 22, and 30 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Kumar, Darr, Gross, and Wen. Final Act. 44--47.
Claims 33-37 are rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Kumar, Darr, Gross, and Elliot. Final Act. 47-50.
4 Because Appellants confirm claim 11 is cancelled (App. Br. 34), their
statement about pending claim 11 (App. Br. 9) is incorrect.
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ANALYSIS 5
35 us.c. § 101
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
5 Appellants raise additional arguments. Because the identified issues are
dispositive of the appeal, we do not need to reach the additional arguments.
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under the guidance set
forth in the Memorandum, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) (9th ed.
2018).
Only if a claim ( 1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum at 54--56.
Turning to the Alice analysis, "[ t ]he second step of the Alice test is
satisfied when the claim limitations 'involve more than performance of
[]well-understood, routine, [and] conventional activities previously known
to the industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir.
2018) (quoting Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and Alice,
573 U.S. at 225).
In this case, Appellants argue with respect to the Alice step-two
analysis, the Examiner "provides no evidence in support of the implication
that the additional elements are all well-understood, routine, and
conventional." App. Br. 20.
The Examiner does not respond with the requisite evidence. Because
the Berkheimer court held "[ w ]hether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination" (Berkheimer, 881 F.3d at 1369), the Examiner erred with
respect to Step 2B of the Memorandum (correlating to (3) and (4) of the
Memorandum discussed above).
Therefore, we are constrained by the record to reverse the Examiner's
rejection of claims 1-10, 12-22, 24--30, and 32-37 on procedural grounds.
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Application 13/481,407
35 us.c. § 103
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining the cited portions of
Kumar, Darr, and Gross collectively teach "utilizing the network ranking of
the particular customer node to determine whether to transmit a promotion to
the selected customer," as recited in independent claim 1. See App. Br. 24--
26; Reply Br. 2-3.
The Examiner finds "Kumar in view of Darr may not explicitly
disclose" the disputed limitation, and cites Gross' paragraph 59 instead.
Final Act. 13. In response to Appellants' arguments, the Examiner further
cites Darr's paragraphs 43 and 61. Ans. 21.
We have reviewed the cited prior art excerpts, and they do not provide
sufficient details to teach "utilizing network ranking of the particular
customer node to determine whether to transmit a promotion to the selected
customer," as required by claim 1. 6 Absent further explanation from the
Examiner, we do not see how the cited prior art portions teach the disputed
claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1.
6 If prosecution reopens, we leave it to the Examiner to determine whether
with additional reasoning, the cited prior art references ( or alternatively,
together with an additional reference) collectively teach the disputed
limitation.
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Each of independent claims 13 and 25 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 13 and
25. Therefore, for similar reasons, we reverse the Examiner's rejection of
independent claims 13 and 25.
We also reverse the Examiner's rejection of corresponding dependent
claims 2-10, 12, 14--22, 24, 26-30, and 32-37. Although the Examiner cites
additional references for rejecting some dependent claims, the Examiner has
not shown the additional references overcome the deficiency discussed
above in the rejection of claim 1.
DECISION
We reverse the Examiner's decision rejecting claims 1-10, 12-22,
24--30, and 32-37.
REVERSED
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