Ex Parte Levy et al

Patent Trial and Appeal Board

Aug 13, 2018

11822144 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/822,144 07/02/2007 Michael Levy
20583 7590 08/13/2018
Jones Day
250 Vesey Street
New York, NY 10281-1047
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.
011847-0001-999 4223
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
08/13/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LEVY, MARCUS SLAGLE,
CHRIS JACOBSON, and JOHN KNODEL
Appeal2016-007783
Application 11/822, 144 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 3-11, 13-17, and 21-27. We have jurisdiction
under 35 U.S.C. § 6(b). Oral arguments were presented on July 26, 2018.
We AFFIRM.
1 The Appellants identify Whapps LLC as the real party in interest.
Appeal Br. 1.
Appeal 2016-007783
Application 11/822, 144
ILLUSTRATIVE CLAIM
21. A computer implemented system for creating and
maintaining a plurality of online catalogs by providing and
updating product data based on a selection process that selects
catalog items for inclusion in the plurality of online catalogs,
the computer implemented system comprising:
a computing system, comprising a processor and a non-
transitory computer readable medium;
a receiver interface implemented by the computing
system, the receiver interface being configured to receive
product provider data from a plurality of product provider
computing systems over a network via a data feed, and
a selector implemented by the computing system, the
selector configured to
(i) examine the product provider data and utilize
product data selection criteria to select product data, the
selection criteria being based on attributes of products
associated with the product provider data and
(ii) load the selected product data to a plurality of
product catalogs implemented by the computing system,
the product catalogs being accessible by users to select
product for purchase,
wherein the selector comprises a controller implemented
by the computing system, the controller comprising a search
query generator configured to generate search queries for
searching the product provider data for product data conforming
with the selection criteria,
wherein the controller comprises one or more search
robots configured to implement the search queries to
simultaneously populate a plurality of the product catalogs
databases with different product data; and
wherein the controller is configured to modify product
data to comply with business rules relating to price.
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Application 11/822, 144
CITED REFERENCES
The Examiner relies upon the following references:
Mancisidor et al. US 2002/0116243 Al Aug. 22, 2002
(hereinafter "Mancisidor")
King US 2002/0120497 Al Aug. 29, 2002
Musgrove et al. US 2004/0143600 Al July 22, 2004
(hereinafter "Musgrove")
Brothers US 7,035,817 Bl Apr. 25, 2006
REJECTIONS
I. Claims 3-11, 13-17, and 21-27 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.
II. Claims 3, 7-9, 11, and 21-27 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Brothers and Musgrove.
III. Claim 10 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Brothers, Musgrove, and Mancisidor.
IV. Claims 13-17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brothers, Musgrove, and King.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
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upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014). Accordingly, ascertaining ineligible subject matter
involves a two-step framework for "distinguish[ing] between patents that
claim the buildin[g] block[ s] of human ingenuity and those that integrate the
building blocks into something more, thereby transform[ing] them into a
patent-eligible invention." Id. (internal quotation marks and citation
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether any "additional elements" recited in the
claim ( either individually or as an "ordered combination") amount to
"significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
As to the first Alice step, the Final Office Action states:
[T]he claims are directed towards a computer implemented
method for creating and maintaining a plurality of online
catalogs by providing and updating product data based on a
selection process that selects catalog items for inclusion or
exclusion for in the plurality of online catalogs, which is
considered to be an abstract idea inasmuch as such activity is
considered a method of organizing human activity by managing
and displaying information and/or a fundamental economic
practice of advertising.
Final Action 3 (emphasis added). See also Answer 4--5.
As to the second Alice step, the Examiner regards the claimed
elements as no more than generally linking the abstract idea to a particular
technological environment using "a generic computer to perform generic
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computer functions that are well-understood, routine and conventional
activities previously known to the industry." Final Action 4. See also
Answer 6-9.
Disputing the rejection, the Appellants disagree with the Examiner's
"articulation of what the claims are directed to because it unnecessarily
conflates the limitations from the claims with the problem the claim[ s]
seek[ ] to address." Reply Br. 3. Yet, the first step of the Alice framework
"calls upon us to look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Thus, the effort to identify what a claim is
"directed to" necessarily involves describing the claimed subject matter, to
some extent. Here, the Examiner's description essentially restates the
preamble of independent claim 21. Although it does not include all the
details recited in the claim, it is also not an unfair encapsulation thereof.
After all, "[ a ]n abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016).
Further, the Appellants argue that independent claim 21 is not directed
to an abstract idea, under the first Alice step, because it "does not recite a
basic concept that is similar to any abstract idea previously identified by the
courts." Appeal Br. 8.
Yet, as the Examiner states, the claimed subject matter is a type of
"targeted marketing activity" that
aligns strongly with the ... long-standing concept for enabling
the success ( or improving the chances of success) of a
commercial transaction or commercial exchange between two
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or more parties ( certain methods of organizing human activity)
and a fundamental economic practice long prevalent in our
system of commerce (a building block in the modem economy).
Answer 4 (referring to Alice, Bilski v. Kappas, 561 U.S. 593 (2010), and
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)). Indeed,
"tailoring of content based on information about the user - such as where
the user lives or what time of day the user views the content - is an abstract
idea that is as old as providing different newspaper inserts for different
neighborhoods." Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016).
Turning to the second Alice step, the Appellants contend that
independent claim 21 recites elements "that are particularly tied to a
computer system and intimately involved with generating the concrete result
of a plurality of online catalogs," specifically:
• examining product provider data and utilizing product data
selection criteria to select product data based on attributes of
products associated with the product provider data[,]
• loading the selected product data to a plurality of product
catalogs that are accessible by users to select product for
purchase,
• generating search queries for searching the product provider
data for product data conforming with the selection criteria,
• utilizing search robots configured to implement the search
queries to simultaneously populate a plurality of the product
catalogs databases with different product data, and
• modifying product data to comply with business rules
relating to price.
Appeal Br. 9. See also Reply Br. 4. In addition, the Appellants point to the
significance of claim elements that "improve[] ... the manner in which on-
line product catalogs are generated and dynamically updated," specifically
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with respect to the use of "sources of data (in multiple formats) [that] can be
used to automatically generate a plurality of on-line product catalogues and
update the catalogs automatically and in real time." Reply Br. 3 (citing
Spec. ,r,r 8, 10, 39, 69, 104, 116-118, 170). Further, the Appellants argue
that the ordered combination of the claimed elements amounts to
significantly more than the identified abstract idea. Appeal Br. 9.
Yet, the Appellants' arguments rely upon features that are not set forth
in claim 21 - "dynamically updat[ing]" product catalogs, the use of
"sources of data (in multiple formats)," and updating catalogs "in real
time." Reply Br. 3 ( emphasis added). Additionally, the claim elements that
allegedly amount to significantly more than the identified abstract idea (see
Appeal Br. 9, Reply Br. 4) substantially include the identified abstract idea
of "providing and updating product data based on a selection process that
selects catalog items for inclusion or exclusion for in the plurality of online
catalogs" (Final Action 3). Further, some of the identified claim features -
such as "generating search queries" and "utilizing search robots" (see
Appeal Br. 9, Reply Br. 4) - essentially implement the identified abstract
idea in the technological environment of online catalogs, such that these
cannot give rise to patent eligibility under the second Alice step. See Alice,
134 S. Ct. at 23 5 8 ("[L ]imiting the use of an abstract idea to a particular
technological environment" is "not enough for patent eligibility.") (internal
citations and quotation omitted); Bilski, 561 U.S. at 610-11; Elec. Power
Grp., LLC v. Alstom, SA, 830 F.3d 1350, 1354 (Fed Cir. 2016) ("[L]imiting
the claims to the particular technological environment of power-grid
monitoring is, without more, insufficient to transform them into patent-
eligible applications of the abstract idea at their core."); Ultramercial,
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772 F.3d at 716 ("Narrowing the abstract idea of using advertising as a
currency to the Internet is an 'attempt[] to limit the use' of the abstract idea
'to a particular technological environment,' which is insufficient to save a
claim.") (quoting Alice, 134 S. Ct. at 2358).
Therefore, for the foregoing reasons, we are not persuaded of error in
the rejection of independent claim 21 for constituting ineligible subject
matter. Because the Appellants rely upon the same arguments, with respect
to independent claims 22 and 23, and because the Appellants do not argue
separately any dependent claim (see Appeal Br. 10), we sustain the rejection
of claims 3-11, 13-17, and 21-27 under 35 U.S.C. § 101.
Obviousness
The Appellants argue that the Examiner erred in rejecting independent
claim 21 because the cited art does not teach or suggest the claimed
"selector." Appeal Br. 10.
The "selector" claim 21 encompasses multiple features:
a selector implemented by the computing system, the
selector configured to
(i) examine the product provider data and utilize
product data selection criteria to select product data, the
selection criteria being based on attributes of products
associated with the product provider data and
(ii) load the selected product data to a plurality of
product catalogs implemented by the computing system,
the product catalogs being accessible by users to select
product for purchase,
wherein the selector comprises a controller implemented
by the computing system, the controller comprising a search
query generator configured to generate search queries for
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Application 11/822, 144
searching the product provider data for product data conforming
with the selection criteria,
wherein the controller comprises one or more search
robots configured to implement the search queries to
simultaneously populate a plurality of the product catalogs
databases with different product data; and
wherein the controller is configured to modify product
data to comply with business rules relating to price.
According to the Appellants, although Brothers concerns the creation
of online catalogs, Brothers is devoted to establishing a common format for
manually selected and assembled materials - i.e., without the automated
searching features referenced in claim 21. See Appeal Br. 10-11 ( citing
Brothers, col. 3, 11. 15-24, col. 9, 1. 43---col. 13, 1. 7). Further, although
Musgrove discloses search robots that collect product information from
various web pages to create a product catalog, the Appellants contend that
the combination of Brothers with Musgrove is silent as to how items are
selected for catalogs. Id. at 11-12 (citing Musgrove ,r,r 6, 24, 40-44, 66).
To the contrary, as the Examiner explains, Musgrove teaches the use
of techniques for selecting particular data items to be included in catalogs -
the features allegedly lacking in the identified combination. See Final
Action 6-7 (citing Musgrove ,r,r 6, 9, 10, 21, 23-25, 30, 31, 40-44, 64, 66,
Figs. 1, 6, 8). See also Answer 11-13 (citing Musgrove ,r 6, 24, 40-44, 66,
Figs. 1, 6, 8). Notably, Musgrove does not collect data indiscriminately, but
teaches the use of robots to perform searches based upon, e.g., keywords.
See Musgrove ,r,r 6, 24, 40-44.
In view of the foregoing analysis, we are not persuaded of error in the
rejection of claim 21. The Appellants rely upon the same arguments, with
respect to independent claims 22 and 23, and the Appellants do not argue
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separately any dependent claim. See Appeal Br. 12-13. Accordingly, we
sustain the rejection of claims 3-11, 13-17, and 21-27 under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 3-11, 13-17,
and 21-27 under 35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 3-11, 13-17,
and 21-27 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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